27 May 2021
Download – Copyright update – 2 of 4 Insights
The CJEU's decision in VG Bild-Kunst (Case C-392/19) and the English Court of Appeal's judgment in TuneIn ( EWCA Civ 441) have developed what it means to communicate a copyright work to the public. We consider that development and focus on how rightsholders can try to define when there will be a communication to the public. This is particularly important when assessing whether a transmission after the rightsholder's initial transmission can be considered a communication to a "new public" and therefore an infringing act.
This is most relevant to services which provide users with access through linking and framing to content that is made freely available by rightsholders without technical access restrictions, but where rightsholders seek to prevent such linking and framing through contractual wording (eg on their websites on which content is freely available).
This is an important case both from:
This was a dispute between a German visual arts copyright collecting society (VG Bild-Kunst) and a cultural digital library operator (SPK) that operates the Deutsche Digitale Bibliotek (DDB).
VG Bild-Kunst refused to enter into a licence agreement with SPK for DDB to use its catalogue works as thumbnails unless SPK agreed to undertake to implement effective technological measures to prevent third parties from embedding them on other websites. SPK brought proceedings in the German courts for a declaration that VG Bild-Kunst had to grant the licence without imposing any requirement for SPK to implement anti-framing technical measures.
The question was whether the embedding of a work – which is freely accessible on a website with the consent of the rightsholder – constitutes a communication to the public where it occurs through circumvention of protection measures taken, or imposed on a licensee, by the rightsholder. This question was important to the parties because, if the answer was yes, then VG Bild-Kunst, as a collecting society, would be able to insist that SPK implement such measures.
It is well established that, where a rightsholder makes a work available online, it can limit the "initial" public to whom the work is communicated by implementing technical measures to restrict access to the work only to a limited subset of people (rather than all internet users at large). In this case the CJEU considered for the first time whether a rightsholder can limit the "initial" public not through implementing technical measures itself but by requiring a licensee to implement measures as a condition to the licence –ie by contract.
The answer the CJEU gave was 'yes'.
We explain the outcome and consequences of the judgment and then comment on its reasoning.
The CJEU in VG Bild-Kunst found that the embedding – by means of the technique of framing in a third party website – of copyright protected works that are freely accessible to the public with the authorisation of the rightsholder on another website, where that embedding circumvents measures adopted or imposed by that rightsholder to protect from framing, constitutes a communication to the public.
The position in relation to linking and framing after VG Bild-Kunst is as follows:
The case therefore largely follows established principles of CJEU case law. Although it acknowledges a means by which rightsholders can define the scope of the initial public by contract, this is limited only to the imposition of a requirement for licensees to apply technical measures to restrict access.
The reasoning of the case does, however, bring to the fore a number of principles relevant to the question of whether rightsholders should be able to restrict the initial public by contract more broadly, and whether a court (including in the UK) may find in a future case that they are able to do so.
How did this reasoning influence the UK Court of Appeal's decision in Warner Music v TuneIn?
In the UK, the issue of whether rightsholders can restrict the initial public, to prevent subsequent acts of linking or framing to works made freely available online, using contract rather than technical measures, has been considered in Warner Music v TuneIn.
This case involved consideration of whether radio stream aggregator TuneIn committed infringing acts of communication to the public by providing access by means of hyperlinks to radio streams made freely available online. Some of these streams were licensed by the appropriate music rightsholders in the UK, some were licensed only outside the UK and some were not licensed at all.
In the High Court the case was decided following established principles of CJEU case law. As a result, following the principles in Svensson, it was held that TuneIn did not infringe copyright in the music contained in radio streams by linking to streams that were licensed by the relevant music rightsholders in the UK and freely available online. The judge considered that this analysis would not change even if there were contractual clauses "buried" in the agreement by which the rightsholder consented to the initial making available of the streams online, in which the rightsholder purported not to consent to any linking.
This makes sense in view of the concern expressed by the CJEU in its case law (including VG Bild-Kunst) that users should not be in a position where they cannot ascertain whether rightsholders intend to oppose the framing of works made freely available with their consent.
The judgment did not address the question of whether any user-facing contractual language (for example in an RSS feed or website terms and conditions), which made clear that the rightsholder does not consent to linking or framing, could be effective in rendering any linking or framing a copyright infringing act.
The point discussed above was not expressly re-visited in the Court of Appeal. However, the application of VG Bild-Kunst by Arnold LJ appears to leave open the possibility that contractual language that is apparent to the user could be effective in preventing linking and framing.
Specifically, Arnold LJ noted that the CJEU's decision that rightsholders can only define the initial public by applying, or imposing a requirement for licensees to apply, technical measures to restrict access arose in the context of a dispute over whether a rightsholder was entitled to impose such a contractual requirement. The decision should not be extrapolated beyond this context. Instead, Arnold LJ noted the observations of the CJEU in VG Bild-Kunst regarding the inexhaustible nature of the communication to the public right, and the fact that rightsholders cannot be faced with the choice of either tolerating unauthorised use of their work or surrendering the use of their work. He appeared to contemplate that circumstances might exist in which a rightsholder's public can be defined other than by technical measures and that, in any given case, an individualised assessment would be necessary.
The Court of Appeal's decision in TuneIn is also notable for its consideration of whether to depart from CJEU case law. The Court declined to depart from the CJEU's jurisprudence on communication to the public, and (on TuneIn's alternative case) from GS Media alone. We discuss the reasons given in more detail here.
We now impatiently await the 26th communication to the public decision – YouTube/Cyando (Case C-683/18) – in June 2021. The case will address whether YouTube carries out acts of communication to the public in relation to user generated content. Depending on the outcome, the case could have significant implications for UGC services operating in the EU and – on the basis that the case may, like VG Bild-Kunst, be considered "highly persuasive" – in the UK.
To discuss the issues raised in the article in more detail, please reach out to a member of our Copyright & Media Law team.
by Multiple authors