Copyright: Primary Infringement - Communicating a Work to the Public

Jane Lambert











Copyright is defined by s.1 (1) of the Copyright, Designs and Patents Act 1988 ("the CDPA") as  "a property right" which subsists in accordance with Part I of the Act in original artistic, dramatic, literary and musical work, broadcasts, films and sound recordings and typography. A work in which copyright subsists is known as "a copyright work" pursuant to s.1 (2). The owner of a copyright in a copyright work has the exclusive right to do certain acts that are restricted to the copyright owner (see s.2 (1) CDPA). More importantly, the copyright owner has the exclusive right to prevent others from doing those acts which are often referred to as "restricted acts".

There are two categories of restricted acts:
In Copyright: What is meant by "Primary Infringement" I listed those restricted acts. I also wrote a short article on copying entitled Copyright: Primary Infringement - Copying but I did not discuss the others, I have written this post because the Court of Justice of the European Union ("the CJUE") considered what is meant by communicating a work to the public in Case C‑527/15 Stichting Brein v  Wullems ECLI:EU:C:2017:300, [2017] EUECJ C-527/15, EU:C:2017:300.

The restricted act of communicating a work to the public was introduced into our law by reg 6 (2) of
The Copyright and Related Rights Regulations 2003 SI 2003 No. 2498. It replaced the act of broadcasting a work or including it in a cable programme service which had been restricted to the copyright owner by the act as originally enacted (see s.16 (1) (d) and s.20 of the CDPA as enacted.

  • communication to the public of works and 
  • making available to the public other subject-matter.
The Council adopted the directive to implement art 8 of the WIPO Copyright Treaty into EU law and the laws of each of the EU member states.

Art 3 (1) of Directive 2001/29/EC provided:

"Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them."

That requirement was implemented by reg 6 (1) of the 2003 Regulations which inserted a new s.20 into the CDPA:

Infringement by communication to the public
20—(1) The communication to the public of the work is an act restricted by the copyright in—
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(2)  References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include—
(a) the broadcasting of the work;
(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.”.

At para [24] of Stichting Brein v  Wullems,  the CJUE noted that art 3 (1) of the directive requires Member States are to provide authors with the exclusive right

"to authorize or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them."

Referring to its previous case law the CJUE added at [25] that such right was "preventive in nature" and allows authors "to intervene between possible users of their work and the communication to the public which such users might contemplate making, in order to prohibit such communication".

As art 3 (1) of the directive does not define the concept of ‘communication to the public’, its meaning and its scope must be determined in light of the objectives pursued by that directive and the context in which the provision being interpreted is set. According to paras [9] and [10] of the recitals to the directive, its objective is to establish a high level of protection for authors, allowing them to obtain an appropriate reward for the use of their works which use includes the communication of their works to the public. That means that the words ‘communication to the public’ must be interpreted broadly. That appears to be confirmed by para [23] of the recitals and such a broad interpretation has been applied in previous cases.

In those cases, the Court had held that the concept of ‘communication to the public’ includes two cumulative criteria, namely an ‘act of communication’ of a work and the communication of that work to a ‘public’. Those criteria must be applied individually and in their interaction with one another, since they may, in different situations, be present to widely varying degrees. 

Among those criteria, the CJUE has emphasized the essential role played by the user. The user makes an act of communication when he intervenes, in full knowledge of the consequences of his action, to give access to a protected work to his customers and does so, in particular, where, in the absence of that intervention, his customers would not, in principle, be able to enjoy the broadcast work. 

The public, in this context, means "an indeterminate number of potential viewers and implies, moreover, a fairly large number of people."

Finally, the CJUE has considered in previous cases that an intention to make a profit is not an irrelevant factor.

The CJUE applied all these principles in Stichting Brein v  Wullems.  This was a request for a preliminary ruling under art 267 of the Treaty on the Functioning of the European Union by the Rechtbank Midden-Nederland (the District Court for the Central Netherlands). The claimant, Stichting Brein, sued Jack Frederik Wullems in the District Court for the Central Netherlands for copyright infringement under the legislation that implemented Directive 2001/29/EC into Dutch law. The claimant alleged that Mr Wullen had infringed its members' copyrights by selling a multimedia device called a "Filmspeler" (literally film player) which enabled film and other media to be played on a TV set. Mr Wullems installed software which contained a number of preset links to several pirate websites as well as to some legitimate sites. He promoted his device by stating that it was possible to watch films and TV programs that had not been licensed by the owners of the copyrights in those materials. The claimant sought an injunction to restrain Mr Wullems from selling multimedia players such as the ‘Filmspeler’ and offering hyperlinks that give users illegal access to copyright works.

The claimant argued that the sale of the Filspeler amounted to a communication of its members' copyright works to the public. The defendant denied that such sale was a communication or, if it was, it was covered by art 13 (a) of the Dutch Copyright Act which exempts:

"Reproduction of a literary, scientific or artistic work shall not include a temporary act of reproduction which is transient or incidental, and an integral and essential part of a technological process and whose sole purpose is to enable
(a) the transmission in a network between third parties by an intermediary, or
(b) the lawful use
of a work, and which has no independent economic significance.’

That exception derived from art 5 (1) of the directive.

The Dutch court referred the following questions to the CJEU:

‘(1) Must Article 3(1) of Directive 2001/29 be interpreted as meaning that there is “a communication to the public” within the meaning of that provision, when someone sells a product (multimedia player) in which he has installed add-ons containing hyperlinks to websites on which copyright-protected works, such as films, series and live broadcasts are made directly accessible, without the authorisation of the right holders?
(2) Does it make any difference
– whether the copyright-protected works as a whole have not previously been published on the internet or have only been published through subscriptions with the authorisation of the right holder?
– whether the add-ons containing hyperlinks to websites on which copyright-protected works are made directly accessible without the authorisation of the right holders are freely available and can also be installed in the multimedia player by the users themselves?
– whether the websites and thus the copyright-protected works made accessible thereon — without the authorisation of the right holders — can also be accessed by the public without the multimedia player?"

The Dutch court also asked whether the Filmspeler fell within the art 5 (1) exemption. As this post focuses on the communication to the public restricted act provided by s.16 (1) (d) and s.20 of the CDPA I shall leave discussion of the exception to a future article or maybe a case note on Stichting Brein v  Wullems.

On the main question of what constitutes "communication to the public" the CJEU replied:

"The concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, must be interpreted as covering the sale of a multimedia player, such as that at issue in the main proceedings, on which there are pre-installed add-ons, available on the internet, containing hyperlinks to websites — that are freely accessible to the public — on which copyright-protected works have been made available to the public without the consent of the right holders."

The Court reached its decision by the following route.  It considered first whether the sale of a multimedia player, such as the Filmspeler, is an ‘act of communication’, within the meaning of art (1) of Directive 2001/29.  It noted that the author’s right of communication to the public covers "any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting". Furthermore, for there to be an ‘act of communication’, it is sufficient, in particular, that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether or not they avail themselves of that opportunity. The Court had already held in Case C-466/12 Svensson and Others v Retriever Sverige AB [2014] EUECJ C-466/12, EU:C:2014:76, ECLI:EU:C:2014:76, [2014] WLR(D) 67, [2014] 3 CMLR 4, [2014] ECDR 9, [2014] Bus LR 259, [2015] EMLR 5 and C‑348/13, BestWater International v Mebes and another  ECLI:EU:C:2014:2315, [2014] EUECJ C-348/13_CO, EU:C:2014:2315 that the provision, on a website, of clickable links to protected works published without any access restrictions on another site, affords users of the first site direct access to those works. The same rule must apply to the sale of a multimedia player, such as the Filmspeler.

The CJEU observed that although para [27] of the recitals makes clear that the mere provision of physical facilities for enabling or making a communication does not in itself amount to ‘communication’ within the meaning of that directive such provision can infringe if coupled with the means of accessing copyright works without the licence of the copyright holder. That was the case with the TV sets in the hotel bedrooms in Case C-306/05 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SL [2007] Bus LR 521, [2006] EUECJ C-306/05, [2006] ECR I-11519, [2007] ECDR 2, EU:C:2006:764, ECLI:EU:C:2006:764.

In this case. the defendant with full knowledge of the consequences of his conduct, pre-installed onto the ‘Filmspeler’add-ons that specifically enabled purchasers to have access to copyright works without the consent of the copyright owners on streaming websites and enable those purchasers to watch those works on their television screens. That intervention enabling a direct link to be established between websites broadcasting counterfeit works and purchasers of the multimedia player, without which the purchasers would find it difficult to benefit from those protected works, is quite different from the mere provision of physical facilities, referred to in recital 27 of Directive 2001/29. In that regard, it is clear from the observations presented to the Court that the streaming websites at issue in the main proceedings are not readily identifiable by the public and the majority of them change frequently.

Consequently, it follows that the provision of a Filmspeler enables, in view of the add-ons pre-installed on it, access via structured menus to links that those add-ons which, when activated by the remote control of that multimedia player, offer its users direct access to protected works without the consent of the copyright holders and must be regarded as an act of communication within the meaning of Article 3(1) of Directive 2001/29.

As for the second requirement that the work must be communicated to the public, the device facilitated access to copyright works to people who would not otherwise have enjoyed such access.

Drawing these strands together, communicating a copyright work to the public must mean facilitating access to a copyright work to people who would not otherwise enjoy such access directly by running a pirate website, supplying software that enables the public to access unlicensed matter that has been posted by third parties or by supplying equipment to enable users to access such matter.

Anyone wishing to discuss this article or copyright law, in general, should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Further Reading

Date
Author
Title
Publication
27.05.2010
Jane Lambert
NIPC Law
08.08.2016
Jane Lambert
NIPC News
21.09.2007
Jane Lambert
NIPC Law

Comments

Popular posts from this blog

Were we to go - what would Brexit mean for IP?

The Draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016

The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important