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In the wake of an important ruling for copyright owners and their licensees handed down by the Court of Justice for the European Union (CJEU), IP lawyers have told WIPR that the decision is likely to have significant ramifications for rights owners.
The society successfully argued that its licensee SPK should adopt technical measures preventing third parties from integrating thumbnails displaying copyrighted works via framing. Framing, known as embedding, allows third-party content to be included within an online web page.
The court sided with the society, holding that a copyright owner can restrict linking by imposing a contractual obligation on a licensee to implement technological measures to protect works against infringement.
A new opportunity for rights owners
Viktoria Kraetzig, IP attorney at German law firm Nordemann which represented VG Bild- Kunst, described the ruling as a “landmark” one for copyright law.
“Framing not only infringes authors' exploitation rights but can also seriously interfere with their moral rights. Rights owners now finally have the opportunity to take legal action against the framing of their works, provided they have taken technical protective measures against it,” she said.
Tom Collins, senior associate at Stevens & Bolton agreed that that the ruling will be seen as strengthening the tools available to EU rights owners to combat online copyright infringement, particularly from a contractual perspective.
“It provides some further clarification on the boundaries of the ‘communication to the public’ right in the digital environment, an area which has been subject to extensive CJEU analysis in recent years,” said Collins.
But he pointed out that there is now an increased onus on rights owners to ensure licensees implement the correct measures to prevent infringement.
“The judgment does highlight the significance of implementing effective technical measures, for example, to prevent ‘framing’ of electronic works on other websites. Without implementing such technical restrictions, it will be increasingly difficult for rights owners to show that they intended to oppose the communication of their copyright works to other internet users,” warned Collins.
This ruling “adds another stone to the edifice of the CJEU’s case law regarding the application of the right of communication to the public in hyperlinking activities”, noted Tatiana Synodinou, associate professor at the law department of the University of Cyprus.
She explained that the court’s contention that the copyright holder can only limit his or her consent by means of effective technological measures was “seminal”.
“In the chaotic dematerialised Internet ecosystem, where works are accessed, viewed, used in multiple ways, the only means to make access restrictions visible and enforceable is to impose restrictions, technological ‘fences’ or ‘walls’,” said Synodinou.
According to Nils Rauer, partner at Pinsent Masons, which represented SPK, the ruling places an undue emphasis on these technological measures and is potentially unfair to authors who wish for their works to be widely seen.
“While we appreciate and support a high level of protection for copyright, the question is whether these technical means of protection are the preferred way to safeguard copyright to such level,” he said.
“The internet rests on linking technology. This includes also types of linking that lead to thumbnails being embedded in third-party websites. This is how search engines compile their result pages and we must not forget that a great number of creatives want to be found on the net.”
Rauer argued that the CJEU has taken the perspective of an individual author expressing his or her wish to have his or her work communicated to the public only under the condition that framing / inline linking is technically prevented.
“Such an author shall have the right to limit access to the work accordingly and to ask any licensee to act accordingly. If that is the right holder’s will, we absolutely accept and appreciate this,” he said.
But he contended that, in this case, it mattered that it is a collective management organisation (CMO) that has insisted on the implementation of technical measures.
“Such a CMO speaks on behalf of thousands of authors with very diverse views as to whether technical measures are good or bad. So, it will be for the German Supreme Court to pick up today’s ruling and to assess whether in the constellation of a CMO technical measures can be made a pre-condition for a licence to be handed out.”
Deviation from AG’s opinion
Cristina Creţu, senior privacy and technology consultant at MPR Partners, noted that it was interesting to see the CJEU’s reasoning diverged from Advocate General Maciej Szpunar's opinion delivered in September 2020.
“With regards to the type of used hyperlinks (clickable versus non-clickable), Szpunar held that they should be viewed differently, but the CJEU decided not to depart from its traditional interpretation that all types of hyperlinks are to be treated the same,” she said.
“By treating all kinds of linking techniques alike, the CJEU adopted a straightforward, one for all approach and a technologically neutral legal assessment. The need for legal certainty has appeared to prevail,” said Synodinou.
A sensible approach
Miryam Boston, associate at Fieldfisher, argued that while Szpunar's distinction between different types of links would have been an interesting opportunity to address how the existing case law fits with the operation of the internet, his approach could have proved challenging to enforce and explain to users.
The CJEU, she argued, had adopted a sensible approach. “This CJEU decision highlights the importance of creating legal certainty and takes a more practical position focused on the steps taken by the rights owner prior to the publication of the works.
“The court confirmed that the rightsholder can implement (or require to be implemented) technical measures to prevent publication on other websites without their consent. This maintains the strength of protection for rights owners in having control over where their content can be published and to whom, but also ensures that the position is also clear for internet users accessing the works.”
According to Chris Haywood, associate at Ashfords, the decision to deviate from the AG’s opinion will be welcomed by lawyers, who “will be spared from having to go through the potentially agonising and technical process” of categorising the various mechanisms by which apps and sites link to or embed copyright works. “No doubt many of the categories set out by Szpunar will be obsolete in a year or two,” he said.
It will also be welcomed by news aggregators and content linkers more generally, noted Haywood, but the situation would be “trickier” for self-publishers or small publishers.
“Their risk exposure can now be fairly well determined by asking the question: ‘did I get around any technical measures in linking to or embedding this work?’ Copyright holders, however, will need to refocus their efforts in contractual negotiations with publishers on ensuring that technical measures are in place to delineate the extent of any permitted communications,” he said.
Haywood added that small publishers are now faced with being entirely responsible for the protection of their own works; whether or not they have the technical skills necessary to do so.
Concluded Creţu: “The decision offers valuable insight for how copyright holders may better protect their content online, namely by means of implementing effective technological measures and not contractual ones.
“However, the extent to which most content providers will apply such measures remains to be seen in practice.”
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CJEU, copyright, SPK, VG Bild-Kunst, rights holder, infringement