The Authors' Take - Communication to the public online: protecting copyright or breaking the Internet?

Communication to the public online: protecting copyright or breaking the Internet?

by Andrew McWhirter

The exclusive right to communicate a copyright work to the public under Article 3(1) of the InfoSoc Directive has been considered in detail by the CJEU. In the context of online communications, the decisions of the CJEU illustrate a tension between the interests of copyright owners and the right to access information and freedom of expression online.

The leading CJEU case of Svenssonv Retriever Sverige AB [2014] 2 WLUK 451 concerned hyperlinking to copyright works online without the specific authorisation of the copyright owner. The CJEU held that by consenting to the work being freely accessible online, a rights holder had authorised worldwide communication of that work provided the subsequent communications took place by the same technical means, namely online. Any hyperlink to the work was not making the work available to a new public and so was not copyright infringement.

In the recent case of WarnerMusic v TuneIn Inc [2019] EWHC 2923 (Ch), the High Court considered the right of communication to the public in the context of a radio aggregator website which hyperlinked to streams from over 100,000 radio stations worldwide. TuneIn's website relied on hyperlinks to the streams from the radio stations. The streams were freely available online and so could theoretically be accessed by anyone worldwide provided that they knew where to look. However, the TuneIn site was very different to the type of hyperlinking considered by the CJEU in Svensson. The TuneIn site allowed its users to access streams either through a search function, through recommendations based on the user's listening history or by searching by artist. Warner Music and others claimed that this was copyright infringement.

TuneIn argued that any decision that went against it would risk breaking the Internet as hyperlinking, particularly in search engines, is crucial to the functioning of the Internet. The copyright owners argued that a decision in TuneIn's favour risked undermining copyright. The Court engaged in a detailed analysis of the CJEU authorities and determined that the majority of TuneIn's activities did amount to copyright infringement. The primary reason for that was that TuneIn was not hyperlinking to a work in the traditional sense and had a much more active role in recommending radio streams, and therefore the copyright works, to users.

This article examines the reasoning in the TuneIn case with reference to the CJEU authorities and asks whether the reasoning does in fact "break the internet" as suggested by TuneIn.

The article concludes that the nature of TuneIn's activities was clearly very different to the type of hyperlink relied on by search engines. Instead of simply linking to a work, TuneIn aggregated, simplified access to and recommended streams for its users.

However, the court also concludes that by making a work available in a different territory, a new public is reached. There is difficulty with this conclusion given the worldwide nature of the internet. A linker would need to be sure that the rights holder had authorised their work to be published in the particular territory. Ascertaining the rights holder's intention would be extremely difficult, particularly where the work is freely accessible online without any technical territorial restriction. The article suggests how this could be mitigated to ensure that there is no chilling effect on freedom of expression or access to information online.  

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

CJEU on communication to the public and national systems of collective rights management

Author: Eleonora Rosati (e-LAWnora—Copyright Law & Policy Consultancy)

Case C-351/12 Ochranný svaz autorský (OSA) pro práva k dílům hudebním o.s. v Léčebné lázně Mariánské Lázně a.s. (not yet published), 27 February 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu096, first published online: May 22, 2014

In this ruling the Court of Justice of the European Union held that TV and radio transmissions in spa guest rooms fall within the scope of the right of communication to the public, and that EU law does (or rather, did) not preclude per se national legislation that reserves the exercise of collective management of copyright and related rights in the territory of a certain Member State to a single copyright collecting society.

Legal context

This reference for a preliminary ruling from the Czech Republic concerned the following issues: (1) whether communication of protected works by a spa establishment through the intentional distribution of a signal by means of TV or radio sets in the bedrooms of its guests constitutes a communication to the public within the meaning of Article 3(1) of Directive 2001/29 (the ‘InfoSoc Directive’); (2) whether national legislations that exclude the right of authors to authorize or prohibit the communication of their works by a spa establishment, ie a business, through the intentional distribution of a signal by means of television or radio sets in the bedrooms of the establishment's guests are compliant with the InfoSoc Directive; (3) whether EU law—notably Article 16 of Directive 2006/123 and Articles 56 and/or 102 of the Treaty on the Functioning of the European Union—precludes national laws that reserve the exercise of collective management of copyright and related rights in the territory of a certain Member State to a single copyright collecting society, thus preventing users of works to choose a collecting society from another EU Member State.

Facts

Ochranný svaz autorský (OSA) is an authorized musical works copyright collecting agency in the Czech Republic. It also acts on behalf of other collecting agencies established in both the Czech Republic and a number of other Member States. Litigation ensued when a local health spa refused to pay the fees claimed by OSA in respect of works that the spa broadcast in its guest rooms by means of TV and radio sets. Among other things, the spa's refusal was based on the grounds that OSA had abused its monopoly position in the Czech Republic by charging fees that were higher than those charged in other Member States. The Plzeň Regional Court decided to stay the proceedings and seek guidance from the Court of Justice of the European Union (CJEU).

Analysis

After observing that the principal objective of the InfoSoc Directive is to provide a high level of protection of authors, the CJEU reviewed earlier case law on communication to the public. It concluded that communication of protected works by a spa establishment through the intentional distribution of a signal by means of television or radio sets in the bedrooms of its patients falls within the scope of Article 3(1) of the InfoSoc Directive.

The Court then held that the exhaustive nature of the Article 5 list of exceptions and limitations precludes national legislation that excludes the right of authors to authorize or prohibit the communication of their works by a spa establishment, ie a business, through the intentional distribution of a signal by means of TV or radio sets in the bedrooms of its guests.

Finally, the CJEU considered whether national monopolies for the collective management of copyright and related rights are compatible with EU law. Among other things, the court held that, although legislation of this kind constitutes a restriction on the freedom to provide services, such restriction may be justified to protect IP rights. Further, legislation of this kind also permits the effective management of rights and an effective supervision of their respect in a given territory by means of reciprocal representation agreements. Overall, the court believed that, as EU law stood at the time of this reference, there was no other method that would allow the same level of protection as territory-based protection and territory-based supervision of copyright and related rights.

Practical significance

The CJEU decision further clarifies the scope of the right of communication to the public under Article 3(1) of the InfoSoc Directive. This has been at the centre of numerous references for a preliminary ruling in recent times. It is sufficient to recall the decisions in Case C-466/12 Nils Svensson and Others v Retriever Sverige AB, 13 February 2014; Case C-607/11 ITV Broadcasting and Others v TVCatchup Ltd, 7 March 2013; Case C-135/10 SCF v Del Corso, 15 March 2012; and Case C-162/10 Phonographic Performance (Ireland) Ltd v Ireland and Attorney General, 15 March 2012.

The most interesting part of the judgment, however, concerns collective management of rights. Although the court upheld the validity of laws like the Czech law in respect of EU law, this judgment per se does neither invalidate earlier decisions, such as that of the General Court in Case T-442/08 International Confederation of Societies of Authors and Composers (CISAC) v European Commission, 12 April 2013 (although in her Opinion, Advocate General Sharpston somehow re-assessed—if not scaled down—the overall relevance of the decision), nor prevent the emergence of new legislative solutions that would allow for more effective collective management.

Following the vote of the European Parliament, the Council formally adopted Directive 2014/26 of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market (the ‘CRM Directive’). Member States have until 10 April 2016 to transpose this directive into their national laws. This new piece of EU legislation sets requirements that are necessary to ensure the proper functioning of the management of copyright and related rights by collective management organizations. To this end, it intends to increase the transparency and efficiency of these organizations. The directive also provides for multi-territorial licensing by collective management organizations of authors′ rights in musical works for online uses.

Article 5 of the CRM Directive imposes on Member States an obligation to ensure that right holders have a number of rights, including the right ‘to authorise a collective management organisation of their choice to manage the rights, categories of rights or types of works and other subject-matter of their choice, for the territories of their choice, irrespective of the Member State of nationality, residence or establishment of either the collective management organisation or the rightholder.’ This means that national legislation like the Czech law at stake in OSA will be no longer allowed under EU law once the deadline for the national implementations of the CRM Directive has passed. Thus, while the CJEU decision might have saved the legitimacy and position of traditional collecting societies that operate in a monopoly regime granted by national laws, this scenario is bound to be short-lived.

Making available, communication to the public and linking measures: the ALAI's view

The following is a short explanation by Victor Nabhan, President of ALAI, which provides some background to that organisation's recent and highly-publicised pronouncement on a matter of acute importance both to the intellectual property community and beyond it:

"The International Literary and Artistic Association (ALAI) is an independent learned society dedicated to studying and discussing legal issues raised by literary and artistic property in the modern world. ALAI’s membership brings together eminent copyright scholars and practitioners. Its Executive Committee holds meetings twice a year and deals with topical issues at each of them. At its meeting in March 2013 the Committee decided to form a study group to analyse the rights of making available to the public and communication to the public with particular reference to linking techniques. The Study Group’s Report and Opinion were unanimously approved by the Executive Committee at its meeting in Cartagena, Colombia, on 16 September 2013.

The Report and Opinion were worked out recognizing that the use of linking techniques, be it hypertext links or inline links, is prominent in almost any Internet activity, thus fundamental for the well-functioning of the web environment. Just as important is the fact that links may be used for addressing protected works and related subject matter to the public. The Report and Opinion is therefore built on a need to clarify how and to what extent linking measures may be embraced by the fundamental making available or communication to the public rights".

The ALAI's  Report and Opinion on the making available and communication to the public in the internet environment – focus on linking techniques on the Internet can be read in full here

JIPLP proposes to follow closely the judicial and legislative developments that attend this subject and welcomes Current Intelligence notes and articles that discuss their many legal, economic and practical ramifications. Submissions from all sectors of industry and commerce are welcome.

The dental surgery, the hotel bedroom and ‘communication to the public’

Author: Alex Freelove and Joel Smith (Herbert Smith LLP, London)

Società Consortile Fonografici (SCF) v Marco Del Corso (Case C-135/10) and Phonographic Performance (Ireland) Ltd v Ireland and another (Case C-162/10), Court of Justice of the European Union (ECJ), 15 March 2012

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps100, first published online: July 23, 2012

The ECJ has ruled in two cases on the meaning of ‘communication to the public’, finding that the free broadcasting of phonograms as background music in a private dental practice was not a ‘communication to the public’, but that the broadcasting of phonograms in a hotel bedroom was.

Legal context

The ECJ handed down judgment on the same day in relation to two cases, which required the ECJ to discuss the concept of ‘communication to the public’. The concept of ‘communication to the public’ appears not only in Article 8(2) of the Rental Directive (Directive 92/100), which provides for users of commercial phonograms to pay remuneration when they communicate them to the public, but also in Article 3(1) of the Copyright Directive (Directive 2001/29), which provides authors with the exclusive right to authorize or prohibit any communication to the public of their works.

The ECJ highlighted that the concept of ‘communication to the public’ in these two provisions is used in differing contexts and pursues objectives which, while similar, are different to some extent: Article 8(2) of Rental Directive is compensatory in nature, whereas Article 3(1) of the Copyright Directive is preventative in nature.

Facts

Società Consortile Fonografici v Marco Del Corso

This case was referred to the ECJ by the Turin Court of Appeal, Italy, following a dispute between a royalty collection agency for phonogram producers, Società Consortile Fonografici (‘SCF’), and Mr Del Corso, the owner of a private dental practice in which background music was played whilst patients were being treated.

SCF brought proceedings against Mr Del Corso seeking a declaration that his playing of background music constituted a ‘communication to the public’ of phonograms for the purposes of Article 8(2) of the Rental Directive and that therefore this activity required a royalty to be paid to SCF for distribution to its members.

Phonographic Performance (Ireland) Limited v Ireland and another

Phonographic Performance (Ireland) Limited (‘PPL’) is a collecting society which represents the rights which phonogram producers hold over sound recordings or phonograms in Ireland. PPL brought an action against Ireland seeking a declaration that Ireland had acted in breach of Union law in exempting hotel operators from the obligation to pay equitable remuneration for the use of phonograms in hotel bedrooms in Ireland.

The Irish High Court referred several questions, which required the ECJ to consider the concept of ‘communication to the public’ in relation to Article 8(2) of the Rental Directive in relation to sound recordings and phonograms heard by guests in hotel bedrooms.

Analysis

Società Consortile Fonografici v Marco Del Corso

As mentioned above, the ECJ highlighted that the concept of ‘communication to the public’ in Article 8(2) of the Rental Directive and in Article 3(1) of the Copyright Directive is used in differing contexts and pursues objectives which, while similar, are different to some extent.

Even though the reference from the Turin Court of Appeal related to Article 8(2) of the Rental Directive, the ECJ relied on recent ECJ judgments on Article 3(1) of the Copyright Directive to highlight relevant criteria in the assessment of whether a communication to the public has taken place:

• The indispensable role of the ‘user’: in light of ECJ judgments in SGAE v Rafael Hoteles (Case C-306/05) and FAPL v QC Leisure (Case C-403/08), the ECJ established that the operator of a hotel or public house makes a communication to the public within the meaning of Article 3(1) of the Copyright Directive when it intervenes, in full knowledge of the consequences of its action, to give access to a broadcast containing the protected work to its customers.
• The concept of ‘public’: the term ‘public’ (a) refers to an indeterminate number of potential listeners and (b) implies a fairly large number of persons. The ECJ suggested that the concept of ‘public’ encompasses a certain de minimis threshold, which excludes groups of persons which are too small or insignificant. In determining such a threshold, it is relevant not only to know how many persons have access to the same work at the same time, but also it is also necessary to know how many of them have access to it in succession.
• The profit-making nature of the communication: as the ECJ had previously held in FAPL v QC Leisure, this was a relevant consideration in determining whether a ‘communication’ had taken place. It is not enough for the communication to ‘catch’ the public by chance, the public must be both targeted by the user, and receptive to that communication.

In light of these criteria, the ECJ found that a dentist who broadcasts phonograms, free of charge, in dental practices for the benefit of his patients and enjoyed by them without any active choice on their part is not making a ‘communication to the public’. Such broadcasts did not therefore entitle the phonogram producers to the payment of remuneration.

Phonographic Performance (Ireland) Limited v Ireland and another

As seen in the ECJ's approach in SCF v Del Corso, even though reference from the Irish High Court related to the Rental Directive, the ECJ relied on its previous judgments that were based on Article 3(1) of the Copyright Directive in reaching its decision.

The ECJ referred to the criteria highlighted in SCF v Del Corso (above) and held that whether a hotel operator provided guest bedrooms with (a) televisions and/or radios to which it distributes a broadcast signal or (b) apparatus other than a television or radio and phonograms in a physical or digital format capable of being broadcast or heard by means of that apparatus, the hotel operator, in each case, was a ‘user’ making a ‘communication to the public’ of a phonogram.

The hotel operator was therefore obliged to pay ‘equitable remuneration’ under Article 8(2) of the Rental Directive for the transmission of those phonograms.

Practical significance

The ECJ handed down judgment on two cases brought by collecting societies representing phonogram producers that sought to collect equitable remuneration for the playing of phonograms. Whilst the playing of background music in a dental surgery was found not to be a communication to the public, the provision of televisions and/or radios to which a hotel operator distributes a broadcast signal was.

These cases, the latest in which the ECJ has discussed the concept of ‘communication to the public’ following the ECJ's decision in FAPL v QC Leisure in October 2011, show that ‘communication to the public’ should be construed broadly and that the courts are robust in finding that copyright infringement is established where a business is exploiting the work by communicating it to a number of people.

'Communication to the Public’ in FAPL v QC Leisure and Murphy v Media Protection Services: the Advocate General's Opinion

Author: Enrico Bonadio

City University London

Football Association Premier League v QC Leisure YouTube and Karen Murphy v Media Protection Services Ltd (Joined Cases C-403/08 and C-429/08), Court of Justice of the European Union, Opinion of Advocate General Professor Juliane Kokott, 3 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr032, first published online 26 March 2011

Advocate General Professor Juliane Kokott gave her interpretation of ‘communication to the public’ under Article 3(1) of the Info Society Directive and concluded that the showing of live Premier League matches in pubs does not amount to such communication.

Legal context

On 3 February 2011 Advocate General Juliane Kokott released her much awaited opinion in Football Association Premier League v QC Leisure YouTube and Karen Murphy v Media Protection Services Ltd (Joined Cases C-403/08 and C-429/08). Among the many issues dealt with (including conditional access devices, temporary storage and reproduction rights, free movement of services and competition aspects), she gave her interpretation of communication to the public under Article 3(1) of the Directive 2001/29 (the Info Society Directive).

Other relevant provisions quoted and commented by the Advocate General include Recital 23 of the Info Society Directive and Article 11bis(1) of the Berne Convention. Recital 23 states that communication to the public must be interpreted broadly and should cover all communication to the public not present at the place where the communication originates. Article 11-bis(1) of the Berne Convention provides that authors are given the exclusive right to authorise ‘(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images; (ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one; (iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sound or images, the broadcast of the work’.

Facts

A first set of proceedings was instituted in the UK by inter alia the Football Association Premier League Ltd (FAPL), which organizes the filming of Premier League matches and the licensing of the rights to broadcast them. These proceedings refer to the use of foreign decoder cards in the UK to access foreign satellite transmissions of live Premier Leagues football matches. FAPL is convinced that this activity infringes its copyrights on various works embodied in the matches. Two actions had been instituted against suppliers of foreign decoder cards to bars and pubs and another action had been brought against licensees and publicans who showed live matches broadcast on the channels of a foreign broadcaster. A referral was then made to the ECJ (Football Association Premier League v QC Leisure YouTube, Case C-403/08).

A second proceeding was instituted by Media Protection Services Ltd against a publican, Ms Karen Murphy, who showed Premier League football matches in her pub by using a Greek decoder card. The latter was fined on the ground that the above decoder card was an illicit access device. Ms Murphy appealed to the High Court, which then referred the case to the ECJ (Karen Murphy v Media Protection Services Ltd, Case C-429/08).

The ECJ deemed it appropriate to hear the cases jointly.

Analysis

One question posed to the ECJ (question 6 in Case C-403/08) demands clarification as to whether the showing of live Premier League matches in pubs violates the exclusive right to communicate to the public copyright works under Article 3(1) of the Info Society Directive. The Advocate General considered it necessary to verify whether this activity effectively amounts to communication to the public under Article 3(1) of the Info Society Directive. She found it does not. It would follow that no infringement of communication to the public right can be claimed here under the Info Society Directive, as such communication does not occur at all.

Professor Kokott first noted that the presentation of radio or TV programmes in places where people gather (such as bars, restaurants, hotels, cafes, trains, etc.) fall within Article 11bis(1)(iii) of the Berne Convention which—as shown above—expressly covers the public communication by loudspeaker or any other analogous instrument transmitting the broadcast of the work. She makes reference to the 1978 WIPO Guide to the Berne Convention which clarifies that this provision is intended to cover the above activities (paragraph 122 of the opinion).

The Advocate General considered that this sub-provision of the Berne Convention has not been transposed into EU law, and specifically into the Info Society Directive. This is buttressed, the argument goes, by the fact that Article 8 of the WIPO Copyright Treaty does not mention communication to the public by means of public presentation. Article 3(1) was inserted into the Info Society Directive with the purpose of implementing Article 8 of the WIPO Copyright Treaty (the two provisions have almost identical wording). Further, Recital 23 of the Info Society Directive, Professor Kokott added, confirms this finding, as such provision does not expressly mention the communication to the public by means of public presentation: she added that this issue was discussed within the Council and in particular that the Council Presidency stressed that the acts other than those mentioned in Recital 23, such as making a computer with internet connection available in an Internet café or library, would not be covered by the Info Society Directive (see Council document 5168/00 of 10 January 2000, p. 4, paragraph 9, quoted in the opinion at paragraph 135, note 42).

Professor Kokott also held that the showing of TV programmes in a pub does not fall within the other category of communication to the public, i.e. communication to the public not present at the place where the communication originates (this act is expressly covered by the Info Society Directive: see again Recital 23). In her eyes, where pub landlords show TV programmes to their customers, the relevant public is present at the place where the communication originates: the communication originates on the TV screen (paragraph 144 of the opinion).

Thus, according to the Advocate General, showing TV programmes in a pub does not fall within any communication to the public envisaged by the Info Society Directive: as indicated above, it follows that no infringement of the ‘communication to the public’ right can be claimed here.

Practical significance

These findings of the Advocate General seem to be at odds with the previous case law of the ECJ. In a similar case (SGAE v Rafael Hoteles, Case C-306/05) the ECJ supported a broad interpretation of the restricted act in question and held that the distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, is to be considered as communication to the public under Article 3 of the Info Society Directive.

Further, Recital 23 of the Info Society Directive clearly states that ‘communication to the public’ must be interpreted broadly and, as emphasised in the opinion (paragraph 129), the explanatory memorandum on the Commission's proposal for a directive clarifies that Article 3(1) of the Info Society Directive is intended to cover all forms of public communication (COM 97 628, Article 3, paragraph 1, p. 25 of the English version). Therefore, should the ECJ accept the interpretation given by the Advocate General—the author believes—the Court should better distinguish this case from SGAE v Rafael Hoteles and give more detailed explanations on the relevant technical issues.

The ECJ should also explain why the fact that the football matches in the pub are showed free of charge supports the finding that the act in question does not constitute communication to the public, as suggested by Professor Kokott. This author believes that such fact should not affect the decision whether the acts in question amount to communication to the public. Also the guests of a hotel watch TV programmes in their room free of charge: and this did not impede the ECJ from considering the distribution of a signal by means of hotel TV sets as communication to the public (SGAE v Rafael Hoteles).

The practical result of such findings is clear. Copyright owners should not be entitled to enforce their communication to the public rights under the Info Society Directive against publicans, bar owners and the like who show TV copyright programmes to their customers. Yet, even if the ECJ confirms the findings of the Advocate General, this would not have a particular impact in those EU Member States which have implemented or will implement Article 11bis(1)(iii) of the Berne Convention: this provision grants copyright owners the right to prohibit the public communication of radio or TV programmes in places where people gather including bars, restaurants, hotels, cafes, trains, etc. Thus in those Member States copyright owners will still be able to enforce their exclusive rights against that identified category of infringers.