Remember the days of popping down to Blockbuster to pick up a DVD or, as was often the offer, 3 DVDs for a special price and an extra night to watch them? Then it all went online and you could rent DVDs through the post or – and this was revolutionary – pay to watch the film through your TV or other device. All of these modes required you getting out your wallet and not once did you question that because you pay for what you consume. Then the creep began. Before too long, file sharing was out there and wallets were staying in pockets.
Rightly, the creative industries have thrown their collective hands up in horror as, by law, it is the rights holders who have the exclusive right to authorise or prohibit any communication to the public of their works. After all, if there is no control on communication, the ability to monetise those endeavours is severely impacted and potentially lost.
The courts have responded through a catalogue of cases considering what activities by third parties amount to a ‘communication to the public’ and the boundaries continue to be tested. The most recent in a long line of such decisions is the European Court of Justice (CJEU) decision in Filmspeler (C-527/15, 26 April 2016).
Following the Opinion of the Advocate General, the CJEU has now held that it is an infringement of copyright to sell a multimedia player with pre-installed add-ons allowing the user to access streaming websites giving free access to audiovisual works protected by copyright without the consent of the rights holders. In this case, the seller of the multimedia player went beyond the mere provision of physical facilities by providing direct access through hyperlinks to websites broadcasting counterfeit works.
This decision will be welcomed by rights holders but those who manufacture and sell such multimedia streaming devices may now be drawn into litigation in the chain of communicating copyright protected material to the public despite not being the source of the illegal content or transmitting that content.
Stichting Brein, a foundation that protects the interests of copyright holders in the Netherlands, brought proceedings in the Dutch courts against Mr Wullems, the seller of a multimedia player under the name “Filmspeler” (literally translated as “movie-player” in English). Stichting Brein objected to the sale of the Filmspeler device which Mr Wullems advertised as allowing its users to freely and easily watch audiovisual content available on the internet without the consent of the rights holders. To achieve this, the Filmspeler includes an open source software which allows the user to play files through a user-friendly interface and integrated add-ons giving access to certain third party websites which make protected content available to internet users. All the user had to do was buy the Filmspeler, plug it into a TV, retrieve the desired content from streaming websites through the add-ons provided and, with a simple click, make it play.
Past case law from the CJEU on the interpretation of the ‘communication to the public’ right did not, in the view of the Dutch court, give sufficient guidance on how the case before them should be decided. It therefore sought clarification from the CJEU on the following (in brief):
- Whether it is a “communication to the public” to sell a media player in which add-ons have been installed by the seller containing hyperlinks to infringing third party websites?
- Does it make any difference: (i) if the copyright protected work had not previsouly been made available on the internet at all or only through subscription services; (ii) if the add-ons are freely available and could have been installed by the users; or (iii) if the websites containing the infringing material are accessible without using the media player?
- Is the streaming of broadcasts of copyright works from an illegal source through the media player covered by the temporary copies defence under the Copyright Directive (Directive 2001/29)?
The CJEU stressed that the objective of the Copyright Directive is to “establish a high level of protection for authors, allowing them to obtain an appropriate reward for the use of their works, including the occasion of communication to the public” and the ‘communication to the public’ right must therefore be interpreted broadly.
The CJEU affirmed its earlier decisions that the posting of hyperlinks on a website to protected content which has been made freely available on another website with the rights holder’s consent does not constitute a ‘communication to the public’ nor does it constitute communication to a new public (Svensson C-466/12, GS Media C-160/15). However, the situation was different here and it was necessary to apply what it described as several complementary and interdependent criteria which had been developed through its previous decisions to establish what amounted to a ‘communication to the public’; namely:
- Has there been an intervention, in full knowledge of the consequences of his action, to give access to a protected work to his customers and, without that intervention, such access would not, in principle, be enjoyed by his customers?
- Has the communication been to the “public” meaning an indeterminate number of potential viewers, which implies a fairly large number of people? Further, that communication must either be achieved using specific technical means different from those previously used or to a ‘new public’ which had not been taken into account when authorising the initial communication to the public by the rights holder.
- Is the communication to the public of a profit-making nature?
The CJEU stressed that Mr Wullems moved from merely providing physical facilities for enabling or making a communication. Rather, he had provided an intervention which allowed a direct link to be established between the offending websites and the purchasers of the Filmspeler. It would have been difficult to find the infringing content without that intervention particularly as the majority of the websites in issue frequently change. Further, on the facts, the Filmspeler was marketed and sold in the full knowledge that the add-ons contained hyperlinks which gave access to illegally published content and it was sold to make money for Mr Wullems. The CJEU also found that there had been a communication to the public as that included anyone who could buy the media player and had an internet connection. This large and indeterminate number of potential recipients was also a ‘new public’.
Having been found to have infringed copyright by making a communication to the public, Mr Wullems was then denied his get of out jail card. In the second part of its decision, the CJEU noted that for a defendant to be able to rely on the temporary copies exemption set out in Article 5(1) of the Copyright Directive, it had to statisfy the following five conditions of Article 5(2):
- the act must be temporary
- it must be transient or incidential;
- it is an integral and essential part of the technological process;
- the sole purpose of that process is to enable a transmission in a network between third parties by an intermediary or a lawful use of a work or protected subject matter; and
- that act does not have any independent economic significance.
The CJEU emphasised that these conditions are cumulative, must be interpreted strictly and only apply in certain special cases. On the facts, the CJEU found that the exemption could not apply to the temporary acts of reproduction on the Filmspeler of illegal copies of copyright protected. In reaching its conclusion, the CJEU approved the General Advocate’s conclusion that obtaining the copyright protected works through streaming websites would adversely affect the normal exploitation of those works and cause unreasonable prejudice to the rights holders.
Comment - and there is yet more law to come
This decision is to be welcomed by rights holders who are enjoying what seems like an ever-broader interpretation of “communication to the public”. For manufacturers and retailers, they need to exercise caution regarding what is preloaded on to their devices. With little opportunity to get relief under the temporary copies exemption, if links are included to illegal content websites, liability for direct copyright infringement rather than providing a means to facilitate infringement by others will likely follow.
Stichting Brein will be hoping that the CJEU delivers yet more good news to them when it rules on its application to require ISPs in the Netherlands to block access to the BitTorrent peer-to-peer (P2P) file sharing website, Pirate Bay (Stichting Brien v Ziggo BV C-610/15). The Advocate General has already given his Opinion in that matter, and concluded that:
- it should be held to be a ‘communication to the public’ when a website operator makes it possible to find files containing copyright work (through indexing and providing a search engine) and which are offered for sharing if the operator was aware the rights holder’s had not consented and took no action to block access; and
- even if the CJEU does not agree with him on the point above, rights holders should be entitled to request that ISPs block its users from accessing such a P2P network if (i) the website operator be held liable for copyright infringements committed by the users of that network under national law could and (ii) such a blocking injunction was proportionate, which is a matter for national courts to decide.
We will need to see if the CJEU follows the Advocate General’s Opinion. In any event, it is anticipated that the CJEU’s forthcoming decision will provide greater guidance on the boundaries of when an intermediary will be liable for primary copyright infringement under the ‘communication to the public’ right.