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CJEU clarifies circumstances in which embedding copyright works from other websites by framing can constitute copyright infringement

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On 9 March 2021, the CJEU handed down its decision in the latest case regarding the law on 'communication to the public' in VG Bild-Kunst v Stiftung Preußischer Kulturbesitz(Case C‑392/19) (See also the press release).
 

Background

The case arose following a complaint to the German court in 2016 by Stiftung Preußischer Kulturbesitz ("SPK"), which operates a digital library for culture and knowledge in Germany, the Deutsche Digitale Bibliothek ("DDB").
SPK sought a declaration that Verwertungsgesellschaft Bild-Kunst ("VG Bild-Kunst"), a copyright collecting society for visual arts, was required to grant a licence allowing SPK to display thumbnails of VG Bild-Kunst's individual works on the DDB website without any conditions that would require SPK to take technological measures restricting the framing by third parties of the thumbnails of the protected works. SPK argued that framing should be viewed in line with hyperlinking, which does not constitute copyright infringement under German or EU law.

In 2018, the Berlin Court of Appeal held that framing does not constitute a communication to the public and is therefore not an act of infringement in the absence of the consent of the rights holder, under Article 3 of Directive 2001/29. It found that the request made by VG Bild-Kunst was unreasonable and required them to grant rights of use to the thumbnails without the proposed technical restrictions.

VG Bild-Kunst appealed this decision to the Federal Court of Justice in Germany. The German court sought guidance from the CJEU on how 'communication to the public' should be interpreted and particularly whether these acts of framing should be considered a 'communication to the public' under Article 3 of Directive 2001/29.
Advocate General Szpunar gave his opinion in September 2020, which we covered in a previous blog – Embedding or linking? AG considers when authorisation is required. The AG sought to create a distinction between different types of links and advised the CJEU to rule that authorisation of the copyright holder should only be required if works from other websites were made available by means of automatic inline linking. However, consent should not be required if the works were made available using the framing technique because the rights holder gave consent to the work being made available on the original website and this was all that was being accessed.

Decision

In its decision, the CJEU rehearsed the key case law on the interpretation of "communication to the public" and focussed on the high level of protection granted to authors in Directive 2001/29. The CJEU did not follow the AG's distinction between the different types of linking. The focus was on the ability of the rights holder to take steps at the point they originally granted authorisation to require technical measures to be put into place to prevent infringement.   

The CJEU warned that authorising one communication should not exhaust the right to authorise or prohibit other communications of the same work.

The CJEU summarised the position from Svensson and other key cases on communication to the public, confirming that framing, whether by a clickable link or an embedded inline link that hide the original site, constitutes a communication. However, if the technical means used by the framing technique is the same as the original communication of publishing the work on the internet, this would not be to a new public, so additional authorisation would not be required. This position, however, only applies where the original publication was not subject to any restrictive measures and is freely accessible.

Therefore, in a situation such as in the present case, where the grant of a licence was subject to the implementation of measures to restrict framing, the rightsholder cannot be regarded as having consented to third parties being able to freely communicate the work to the public. Where a rightsholder has adopted (or obliged licensees to adopt) restrictive measures against framing to limit access to the work, the act of making content available on the original website and secondarily, making that content available by means of framing constitute different communications to the public and therefore each act of communication must be authorised individually.

This ruling makes it clear that a rightsholder is permitted to impose such measures in respect of the initial communication to ensure that its work can only be communicated to users of the original website. However, the court emphasised the need to ensure legal certainty and the smooth running of the internet, so the rightsholder could only limit the consent by the use of technological measures, which would make it clear that they were opposed to subsequent uses of the work through framing.

In summary, the court held (emphasis added) 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 within the meaning of that provision".

Comment

In this ruling, the CJEU has adopted a sensible position based on the facts and has enabled rightsholders the possibility to retain a high level of control over the circumstances in which they allow their content to be published. However, it puts the onus on them to ensure this is dealt with at the time of the original publication. If they fail to do so, or are not in a sufficiently strong negotiating position, then it may be challenging to impose effective technological measures to restrict third party framing as part of the original consent.

With special thanks to Monique Caprice, trainee legal executive, co-author of this blog.

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