On 9 March 2021, the European Court of Justice (CJEU) ruled on the latest case concerning the boundaries of the "communication to the public" right in the online environment.1 The decision clarifies that:
- Embedding copyright works on third party websites by means of "framing" can constitute an infringing communication where this circumvents restrictions
- Licensees can be required to implement technical measures under contractual arrangements in order to prevent infringement.
The dispute involved SPK, the operator of a digital library devoted to culture and knowledge, and VG Bild-Kunst (VGB), a German visual arts copyright collecting society.
The parties had been negotiating a licence agreement to enable SPK to display thumbnail images of VGB’s catalogue of works on its website. VGB claimed that this licence agreement should include an obligation on SPK to implement effective technological measures against the framing by third parties of the thumbnails. The technique of framing involves dividing a web page into several frames and posting within one of them content coming from another website.
SPK considered this an unreasonable and costly requirement and sought a declaration via the German courts that VGB should be obliged to grant the licence without this condition. These issues were subsequently referred to the CJEU.
Ruling in favour of VJB, the CJEU held that "embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public".
The basis of this decision can be summarised as follows:
- Where the copyright holder has implemented (or obliged its licensees to implement) measures to restrict framing and limit access to the work to authorised websites, the initial publication on the original website and the secondary act of framing this work on a third party site constitute different communications. Each act must therefore be authorised.
- By embedding a work on a third party website in a manner that circumvents restrictions, this involved communicating such work to a "new public" not taken into account by the copyright holder.
- If such embedding did not amount to an infringement, this would effectively create a rule on exhaustion of the right of communication. It would also deprive the copyright holder of the opportunity to claim an appropriate reward for the use of their work.
- However, in order to maintain legal certainty and the "smooth functioning of the Internet", a copyright holder cannot limit consent by means other than effective technological measures. This would otherwise make it very difficult for individual Internet users to ascertain whether the copyright owner intended to oppose framing of their works.
With this CJEU decision arriving after the Brexit transition period, it remains to be seen whether the English courts will continue to adopt the same position over time.
However, a particular point of interest is the recognition that licensees of copyright works can be required, under contractual arrangements, to implement technical measures to safeguard against infringement. This will largely be seen as strengthening the position of copyright owners, although there will be a certain amount of vigilance required to ensure that effective technical restrictions are in place (e.g. to prevent "framing" of their content on other websites).
1. C‑392/19 VG Bild-Kunst v Stiftung Preussischer Kulturbesitz