BestWater practice for linking or framing content

BestWater International GmbH v Michael Mebes and Stefan Potsch, C-348/13

There is no need to obtain rights-holder consent to provide a link to content openly available on a third-party website, whether by providing clickable links or framing the content. On a reference from the Bundesgerichtshof, Germany, the Court of Justice of the European Union (CJEU) has confirmed this principle, but subject to two conditions, i.e. that the content is not, by that linking or framing, either:

1. made available by different technical means from the original communication to a public; or
2. communicated to a public not contemplated by the original communication (generally referred to as a “new public”).

The order made by the CJEU follows the rules that it set out in the leading case of Svensson v Retriever Sverige AB, Case C-466/12 in relation to online copyright infringement.  The order does not provide further detailed guidance on the application of Article 3(1) of the Copyright Directive (2001/29/EC), but it does serve as a useful indication of the view that the CJEU is likely to take in response to any further similar referrals.

Facts

The dispute in BestWater arose from the display of a short video on the defendants’ websites.   The rights in the video were owned by BestWater International GmbH.

The defendants had used a technique called “transclusion” or “framing” on their websites.  The technique enables site operators to show content that is available on third-party websites without being obvious to an internet user that the content is coming from a third-party site (rather than forming part of the site that the internet user has chosen to visit).  Here, BestWater’s video was available on YouTube.  “Framing” does not redirect a user to a third-party site via a clickable link.  Instead, the content in question appears in a section or “frame” of the site that the internet user is already viewing.  The technique is used by many websites, often to show content available on YouTube.

Referral

The German court asked whether, where there is no transmission to a new public and no use of different technical means, the technique used by the defendants could amount to a communication to the public under the Copyright Directive and in a way that would require the rights-holder’s consent.

Order

The CJEU answered the referral in BestWater by way of a “reasoned order”.  The CJEU’s rules of procedure (Rules) provide a means for the CJEU to reply to a referral by a national court by reasoned order only (not a hearing and detailed judgment) in limited circumstances.  Those circumstances include where the question referred by the national court is “identical to a question on which the Court has already ruled” (Rules, Article 99).

In Svensson the CJEU had considered whether, if a party supplies a clickable link to a copyright work available on another website, the supply of that link constitutes a communication to the public within the meaning of Article 3(1) of the Copyright Directive.  Article 3(1) requires Member States to provide authors with the exclusive right to authorise the communication of their work to the public by wire or wireless means.  The usual doctrine of exhaustion of rights does not apply to the Article 3(1) right (see Article 3(3)): the doctrine would otherwise prevent a rights-holder from using copyright to prohibit, for example, redistribution of works once an initial supply into the EU has been made.

In Svensson, the relevant copyright works were freely available on the website to which the clickable links directed an internet user.  Following a string of CJEU case law, including the Spanish Hotels case (Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA, Case C-306/05) and TV Catchup (ITV v TV Catchup Ltd, Case C-607/11), the CJEU held that, where the communication is by the same technical means as the means originally authorised, there is only a communication to the public within Article 3(1) if the unauthorised communication is to a new public.

The CJEU considered that the technique used by the defendants in BestWater raised the same issues in terms of copyright infringement as the provision of clickable links in Svensson.  On that basis, the CJEU found that the question referred to it by the German court was identical to the question already considered by the CJEU in Svensson.  On that basis it used the Article 99 procedure described above.

The CJEU’s order is therefore limited to restating and applying the principles set out in detail in its judgment in Svensson.  BestWater’s video was available to all internet users before the defendants’ alleged “communication” because it was freely accessible on YouTube.  There was no “new public” to which the work was communicated as a result of the defendants’ actions.  Nor was there a different technical means, as the communication remained via the internet.  There was no infringing copying because the defendants were making the video available directly from YouTube.

Comment

The CJEU was not required to engage again in applying the difficult “new public” question, which it had considered in Svensson, Spanish Hotels and TV Catchup.  Indeed, it was clear from the referring court’s question that it considered there was no new public in this instance.

BestWater stated that it had not in fact consented to make its video available on YouTube.  It is not clear from the CJEU’s order whether the German court found, as a fact, that BestWater had indeed not consented.  What seems clearer is that the CJEU probably did not view that consent as relevant to the question that it had been asked.  It would, presumably, have been open to BestWater to pursue an infringement claim for the copying of its video that resulted in its availability on YouTube via a party other than the defendants.

Laura Mazzola, Associate, Michael Simkins LLP, London