M. Estrella Gutiérrez: Hyperlinking to protected works may be an act of communication to the public not subject to authorization of copyright holders

2095María Estrella Gutiérrez David, Invited Professor at the Carlos III University of Madrid has written an inspiring comment to the ECJ Svensson Judgement

Many thanks, dear Estrella, for this valuable contribution.

Pedro Herrera

Hyperlinking to protected works may be an act of communication to the public not subject to authorization of copyright holders

ECJ Judgment of 13 January 2014, Case C-466/12, Svensson and others v Retriever Sverige. Hyperlinks, intellectual property, exclusive rights, communication to public, making available.

The claimants in the domestic proceedings were all journalists who had written press articles published and freely accessible by Internet users on the Göteborgs-Posten website. Retriever Sverige operated a website that provides its clients, according to their needs, with clickable internet links (hyperlinks) to articles published on other websites, including the site of the Göteborgs-Posten.

The claimants brought an action for infringement of intellectual property rights before the Stockholm District Court (Stockholms tingsrätt) in order to obtain compensation on the ground that Retriever had made use, without their authorisation, of the said articles, by making them available to its clients.

In addition, the claimants contended that, when Retrievers’ users clicked on hyperlinks, it was not apparent to them that they were being redirected to Göteborgs-Posten website. By contrast, Retriever Sverige alleged that it did not carry out any transmission of any copyrighted work as its action was limited exclusively to indicating to its clients where to find the information which was of interest to them.

After the claim’s dismissal at first instance, the Swedish Court of Appeal (the Svea hovrätt) referred the issue to the Court of Justice for a preliminary ruling to ascertain whether the establishment of hyperlinks constitutes an act of communication to the public within the meaning of article 3(1) of Directive 2001/29/EC, on the harmonisation of certain aspects of copyright and related rights in the information society (hereinafter the “Directive”), which provides that:

“Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.”

In essence, the question at issue is whether “the provision, on a website, of clickable links to protected works available on another website constitutes an act of communication to the public […] where, on that other site, the works concerned are freely accessible[paragraph 14].”

To answer this question, the ECJ examines the concept of “communication to the public”. The said concept includes two cumulative criteria, namely, an “act of communication” of a protected work and the communication of that work to a “public”.

In regard to the first criterion, the Court observes that “for there to be an ‘act of communication’, it is sufficient, in particular, that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether they avail themselves of that opportunity [paragraph 19]” (Emphasis added). In consequence, “the provision of clickable links to protected works must be considered to be ‘making available’ and, therefore, an ‘act of communication’, within the meaning of [the Directive].” [19-20]

In respect of the second criteria, by the term ‘public’, the Directive refers to “an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons”. In this sense, an act of communication by means of clickable hyperlinks must be deemed to be “aimed at all potential users of the site […] that is to say, an indeterminate and fairly large number of recipients.” In such circumstances, and on a case-by-case basis, the ECJ held that the provision of hyperlinks, on a site, to protected works freely accessible, on another site, constitutes an act of communication to a public [paragraphs 21-23].

But the ECJ seems to introduce an additional criterion so that the establishment of hyperlinks to protected works is covered by the concept of ‘communication to the public’. In particular, it is necessary that the act of communication “concerning the same works as those covered by the initial communication and made, as in the case of the initial communication, on the Internet, and therefore by the same technical means, must also be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders when they authorised the initial communication to the public [paragraph 24]” (Emphasis added).

Comments

Some commentators have questioned the ECJ ruling for the implications it might have in relation to the problem of links to infringing content by links-listing websites or P2P links.  Where an infringing content is freely accessible online, it would follow that providing a link to such illegal content is not a communication to the public as there is not a new public in the alleged sense ruled in the Svensson decision.

Nevertheless, the ECJ seems to suggest, though not very clearly and expressly, that the concept of ‘communication to the public’ must be put in relation to the provision contained in Article 3(3) of the Directive. The said provision sets forth that the exclusive right of the authors to authorise or prohibit any communication to the public of their works “shall not be exhausted by any act of communication to the public or making available to the public […]”

Put it in another way, the exclusive right of the author shall not be exhausted with the initial communication to the public of a protected work –and, therefore, another authorization of the copyright holder must be required, provided that an act of communication is addressed to a new public different from that of the initial communication. Thus, the Gordian knot in the online environment is to determine whether a subsequent act of communication to the public entails a new public when copyrighted works are made available to public over networks.

In this sense, the Court observes that, when the public targeted by the initial communication consisted of all potential visitors to the site concerned, and given that, in absence of restrictive technical measures, all Internet users could therefore have free access to the disputed works, it must be concluded that “there is no new public”. Consequently, “the authorisation of the copyright holders is not required for a communication to the public such as that in the main proceedings [paragraphs 26; 28].”

In other words, the Court is not saying that hyperlinking is not to be deemed as an act of communication to the public. That hyperlinking to protected works is an act of communication to the public is clearly stated in paragraph 20 of the decision. What the Court fails to explain clearly is that hyperlinking to freely accessible protected works, when no restrictive measures have been applied to limit public access, does not require the authorisation of the copyright holder.

Importantly, the ECJ considers that its finding cannot be called in question, regardless the hyperlinks give the impression that the protected works appear on the site on which those links are established, whereas in fact the works come from another site. Is the Court referring to acts like “framing” or “embedded links”? This question remains unclear and should be tested in future litigation as implications for intellectual property rights could be different.

By contrast, the Court suggests that the nature of the hyperlink is an “additional circumstance” to the case that “in no way alters the conclusion that the provision on a site of a clickable link to a protected work published and freely accessible on another site has the effect of making that work available to users of the first site and that it therefore constitutes a communication to the public. However, since there is no new public, the authorisation of the copyright holders is in any event not required for such a communication to the public.” (cf paragraph 30).

What the Court does make clear is that hyperlinks which circumvent restrictions applied by the site on which the protected works appear in order to restrict access to such works only to its subscribers would constitute an act of communication to a new public. In effect, such new public would be constituted by all those users who are able to access to protected works thanks to the circumventing hyperlinks, and who were not taken into account by the copyright holders when they authorised the initial communication. Accordingly the holders’ authorisation is required for such a communication to the new public (paragraph 31).

María Estrella Gutiérrez David

Visiting Professor at the Carlos III University

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