Copyright: communication to the public

Summary
The European Court of Justice (ECJ) has held that the concept of communication to the public in Article 3(1) of the Copyright Directive (2001/29/EC) (Article 3(1)) covered the posting on one website of an unauthorised copy of a photograph which had been previously published, without restriction and with the copyright owner's consent, on another website.

Background
Article 3(1) requires EU member states to provide authors with the exclusive right to authorise or prohibit any communication to the public of their works.
In Svensson v Retriever Sverige AB, the ECJ held that no communication was made to a "new public" by creating a hyperlink to a copyright work already made freely available on a website with the consent of the rightholder (C-466/12).

Facts
A school pupil used, without authorisation, a photograph taken by a photographer, R, which was freely accessible on an online travel portal without any restrictive measures. The pupil copied the photograph from that website without permission and used it to illustrate a school presentation, acknowledging the website from which it was downloaded but not the photographer whose name was not recorded on the website. The presentation was posted by the pupil's school on another website.

R claimed that the school's re-posting of the photograph infringed his copyright.

There was no doubt that the reproduction right had been infringed by making an unauthorised copy. However, the German Federal Court sought a preliminary ruling on whether the concept of communication to the public in Article 3(1) covered the posting on one website of a photograph, which had been previously published without restriction and with the copyright owner's consent, on another website.

Decision
The ECJ held that the concept of communication to the public within Article 3(1) covered the unauthorised posting on one website of a photograph previously posted, without any restriction preventing it from being downloaded and with the consent of the copyright holder, on another website.

Svensson established that the concept of "communication to the public" included two cumulative criteria: an act of communication of a work; and communication of that work to a public. The protected work had to be communicated using different specific technical means from that previously used or, failing that, communicated to a "new public", that is, a public not already taken into account by the copyright holders when they authorised the initial communication to the public of their work.

Here, the posting on one website of a photograph previously posted on another website, after it had been previously copied onto a private server, was an act of communication within Article 3(1). This posting gave visitors to the website on which it was posted the opportunity to access the photograph on that website. The key issue was whether the photograph had been communicated to a new public. Svensson had held that the public targeted by the rightholder's initial communication and the hyperlink were the same, so there was no new public. Here the ECJ held that Svensson did not apply because communicating a work by means not of a hyperlink, but by a new posting on a different website from that on which it was initially communicated with the copyright owner's consent, should be treated as a new communication to the public, in particular because it meant that the copyright owner was no longer in a position to exercise their power of control over the initial communication of that work.

To hold that the posting on one website of a work previously communicated on another website, with the consent of the copyright holder, did not constitute making available to a new public would deprive the copyright owner's preventative right under Article 3(1) of its effectiveness, since it might make it impossible, or at least much more difficult, for the rights-holder to require the cessation of that communication. In particular, even if the copyright owner removed their work from the website on which it was initially communicated with their consent, that work would remain available on the website on which it had been newly posted. It would also deprive the copyright owner of the opportunity to claim an appropriate reward for the use of his work.

The public taken into account by the copyright holder when they consented to the communication of their work on the website on which it was originally published was composed solely of users of that site and not of users of the website on which the work was subsequently published without the consent of the rights-holder, or other internet users. It was irrelevant that the copyright holder did not limit the ways in which internet users could use the photograph.

Svensson did not apply here because re-posting on a website without the copyright owner's consent of a work which was previously communicated on another website with their consent did not contribute to the sound operation of the internet to the same extent as hyperlinks enabled the dissemination of information. Also, where there was a hyperlink to a work previously communicated with the copyright owner's authorisation, the nature of authors' preventative rights under Article 3(1) were preserved, while this was not the case where a work was posted on another website. In addition, unlike Svensson, where there was no involvement by the administrator of the site on which the hyperlink had been inserted, here the user of the work at issue reproduced that work on a private server and then posted it on a website other than that on which the work was initially communicated. So that user played a decisive role in the communication of the work to a public which was not taken into account by its author when they consented to the initial communication.

Comment
This decision provides important confirmation of copyright owners' rights to control the communication of copyright works which they post online, even if they do not impose explicit restrictions on the re-use of those works. Conversely, for third parties wishing to exploit online works, such as online newspapers and other websites, the decision underlines the importance of obtaining clearances, even if clear restrictions on re-use have not been imposed. Displaying freely available third-party content by downloading and re-posting on another website, without owning the rights or having a licence to use such content, may attract liability both for infringement of the reproduction right and as a new communication to the public. Embedding links to the original content may be lawful according to Svensson on the basis it does not constitute a communication to a new public of the content of that webpage as long as the content subject to the link is already freely accessible online.

Here, the ECJ cited its key reasons for drawing a distinction between hyperlinking and re-posting as: the loss of control for copyright owners where works are independently reproduced by means of re-posting, since they cannot be removed by the owner alone if he withdraws consent; and the decisive role in the communication by the user involved in downloading and re-posting as opposed to providing a clickable link. The case law in this area is likely to develop further.

Case: Case: Land Nordrhein-Westfalen v Dirk Renckhoff C-161/17.

First published in the October 2018 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.