AG Szpunar advises CJEU to rule that quotation exception is not limitless and that there is no fair use in the EU

After the late 2018 Opinions in Funke Medien [here] and Pelham[here], yesterday Advocate General Maciej (AG) Szpunar - IPKat's copyright person of the year 2018 - issued his Opinion in Spiegel Online, C-516/17 [background here], the third German referral asking the Court of Justice of the European Union (CJEU) to weigh in on, among other things, the interplay between copyright and other fundamental rights.

The Opinion, which is not yet available in English, advises the CJEU to rule that, among other things:

1. The exception within Article 5(3)(d) of the InfoSoc Directive requires one to consider the purpose of the quotation at issue, and 
2. Fundamental rights like freedom of expression do not allow EU Member States to go beyond the catalogue of exceptions in Article 5 therein to envisage new exceptions or even introduce a general fair use clause.

Background

Volker Beck 

(photo by Mathias Schindler

CC-BY-SA)

As readers might remember, this referral originated in the context of litigation initiated by a German politician (Volker Beck) who, in 1988, authored a work about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

The publisher also released a press report on its own portal, Spiegel Online, to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The politician argued successfully at both first instance and on appeal that all this would amount to copyright infringement.

The case is currently pending before Germany's Federal Court of Justice, which has stayed the proceedings and asked the CJEU to clarify, among other things, how far the 'quotation' exception can go and what discretion EU Member States enjoy when transposing and applying relevant EU copyright directives.

The AG Opinion

AG Szpunar started by noting the relevance of freedom of expression (which has been recognized as a fundamental freedom since the 1789 Declaration of the Rights of the Citizen) and freedom of the press in a democratic society. However, the drafters of the 1789 Declaration itself were also aware of how freedom of expression could limit third-party rights and freedoms. As such, Article 4 therein provides that

 Liberty consists in being able to do anything that does not harm others: thus, the exercise of the natural rights of every man has no bounds other than those that ensure to the other members of society the enjoyment of these same rights. These bounds may be determined only by Law.

Freedom of EU Member States

This said, the AG tackled the question of Member States' discretion when transposing relevant exceptions within Article 5 of the InfoSoc Directive into their own laws, and noted how this is a similar issue to the one at stake inPelham.

Like in his Opinion in that case, AG Szpunar reiterated that - while EU Member States are free to determine the means for transposing relevant EU directives into their own laws - they are bound to achieve the objectives of those directives. In the case of the InfoSoc Directive, these include providing a 'high level of protection' of economic rights.

Article 5(3)(c)

The referral also includes a question concerning the exception within Article 5(3)(c) of the InfoSoc Directive, in particular whether the making available to the public of copyright works on the web portal of a press undertaking does not fall within its scope because it was possible and reasonable for the press undertaking to obtain the author’s consent before making his works available to the public (this is the approach under the German news reporting exception).

According to the AG, such a limitation of the exception would not be problematic from an EU law standpoint because it is Article 5(3)(c) itself that limits reproductions 'to the extent justified by the informatory purpose'. Accordingly [the translation from Italian is mine]

 It is my view that such limitation does not only concern the extent of the authorized reproduction and communication, but also those situations in which the exception applies, that is those in which the author of the report could not be reasonably required to request the authorization of the author of the work reproduced and communicated in the context of said reporting. As such, in my view, a limitation of the exception at issue like the one under German law, not only does not contravene the relevant provision in Directive 2001/29, but is actually in line with the nature and objective of said exception. 

According to the AG, the reason why this exception would not apply in the present case is different, and lies in the fact that the EU provision should be read in light of Article 10bis(2) of the Berne Convention. This provision states that:

It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public. 

The exception is limited to 'works seen or heard in the course of the event' subject to the reporting. This is not the case of the background proceedings, as the work reproduced is a literary work which one needs to read, rather than just view or hear.

Kat quotation

Article 5(3)(d)

This said, the key issue in this case relates to the scope of the quotation exception. The AG noted that:

The exception in principle is not limited to certain types of work only, and  The methods for including a qutotation into one's own work and identifying the quotation might differ depending on the situation. Also the provision of a link might be appropriate for the sake of making a quotation.

• 
  

The problem is not, however, how that quotation may be realized but - rather - the extent of what may be quoted. In the present case what the defendant reproduced is the entirety of the claimant's work.

Although the CJEU appears to have allowed the possibility of quoting a photographic work in its entirety (inPainer), it has also spoken of 'reproduction of extracts' (Painer, para 135). The Berne Convention originally spoke of short quotations, while the current text states that the extent of a quotation must not exceed what is justified by the purpose. A similar formulation can be found in Article 5(3)(d). It follows that a quotation may be also of a work in its entirety, insofar as the aim pursued justifies it.

In any event, a quotation must not compete with the original work. Holding otherwise would allow one to elude the economic rights of an author over their work, rendering them devoid of any content thereof:

 the quotation exception may not be applied in situations in which, lacking the authorization of the author, a work is made available to the public on the internet, in its entirety, in the form of an accessible and autonomously downloadable file.

In addition, allowing a quotation that was a substitute for the original would also be contrary to the three-step test in Article 5(5) of the InfoSoc Directive and Article 9(2) of the Berne Convention, notably the requirement that an exception does not conflict - whether actually or even just potentially - with a normal exploitation of the work. 

Fundamental rights: no fair use in Europe

Having excluded that the exceptions within Article5(3)(c) and (d) would apply, the AG considered whether the use made by the defendant of the claimant's work might be nonetheless justified in light of Article 11 of the Charter of Fundamental Rights of the EU (freedom of expression/information and freedom of the press). This is also a question at issue in Funke Medien and Pelham.

In line with his Opinions in those cases, the AG proposed to rule that normally it is necessary to respect the choices made by legislature, considering that copyright already contains limitation and exceptions aimed at reconciling the exclusive rights of authors with third-party freedoms and rights, including freedom of expression/information.

Holding that it might be possible to supplement the exceptions and limitations provided for in Article 5 of the InfoSoc Directive with further exceptions and limitations would also run contrary to the harmonization objectives of the EU. Above all:

 such possiblity would be tantatmount to introducing into EU law some sort of "fair use clause", in that basically any use of a work that infringes copyright could rely, in one way or another, on freedom of expression. This way, the protection actually available to the rights of authors would depend on the sensitivity of the judges in each Member State towards freedom of expression, thus transforming any harmonization effort into an unattainable goal.

Comment

The Opinion of AG Szpunar might appear restrictive to some - especially with regard to the scope of quotation and the take on fair use - but it is not at all surprising, also considering earlier CJEU case law and the wording of the InfoSoc Directive.

That quotation is not borderless appears correct, considering the wording of the Berne Convention and the InfoSoc Directive, as well as the three-step test. This said, consideration of the circumstances at issue is key: the AG was correct in reiterating that a quotation might be also of a work as a whole, but whether that might be the case depends on the purpose of said quotation. 

Finally, the fundamental rights assessment also appears correct and - even if the Opinion does not mention it, it is in line with the case of law of the European Court of Human Rights which has tackled the interplay between copyright and freedom of expression, eg Ashby Donald [here], The Pirate Bay [here] (see also here). 

Let's now see what the CJEU rules. One will have an idea of the fate of Funke Medien, Pelham and Spiegel Online as soon as the first of these three decisions is out.

By Eleonora Rosati writing on the IPKat 

Excluding Designs (and Shape Marks) - Where is the CJEU going?

Professor Uma Suthersanen (Queen Mary University of London) is giving a lecture at the City Law School on the 27th November, exploring the EU's design right jurisprudence

"The EU design regime adopted a new “market-based approach”, which protects both functional and aesthetic designs. Nevertheless, it is recognised that certain types of functional designs can give rise to unduly restrictive effects on legitimate competition, within certain product sectors. Accordingly, Art.8(1) Community Design Regulation expressly excludes "features of appearance of a product which are solely dictated by its technical function”; the paramount rationale being the protection of competitive innovation. The past decade has spawned three separate interpretations of the functionality exclusion, the most paradoxical being the linkage drawn between aesthetic considerations and functional presence. A further layer of analysis derives from the functionality exclusion within the Community Trademark Regulation. A final challenge to juridical coherence is the EU Court’s earlier Flos decision widening national copyright law to embrace all sorts of designs, and presumably functional designs. It is submitted that the CJEU's decision in Doceram (2018) is perhaps the right approach - whereby it rejects all three previous interpretations, but weaves one which marries them all. The approach is also logical if one accepts that the functionality exclusions within design, trade mark and copyright laws must be interpreted in pari materia within an increasingly-aligned EU IP law"

This is free, but you need tor register and you can SIGN UP HERE 

27th November 2018 at 15.00

R203
City, University of London
Northampton Square
London

EC1V 0HB

CJEU rules that unauthorized re-posting of protected content may be an infringement

First posted by Eleonora on the IPKat on 7th August 2018

The Cordoba photo at issue in Renckhoff

Today the Court of Justice of the European Union (CJEU) issued its last copyright judgment [but also - incredibly - the first copyright judgment of 2018] before the summer break. 

In Renckhoff, C-161/17 it ruled - contrary to the Opinionof Advocate General Campos Sanchéz-Bordona [here and here; ALAI thought it was very bad, and criticized it here] - that in a situation like the one at issue the unauthorized re-posting of a copyright work would be an act of communication to the public within Article 3(1) of the InfoSoc Directive.

Background

As readers might remember, this case had a fairly odd factual background. The national 
proceedings relate in fact to copyright litigation that a photographer has brought in Germany
against a school over the use, by one of the pupils, of copyright-protected material without 
authorization. 

More specifically, one of the pupils found an image of the city of Cordoba online 
and used it for an assignment for her Spanish class, providing acknowledgment 
of the website from which she had downloaded the photograph (though not of the 
photographer, because the website where the photograph appeared did not provide any). 

Upon finishing her work, she and her teacher uploaded it on the school's
website, but the photographer came forward claiming infringement of his copyright in
the photograph, and that he had just granted a licence to use to the image to the website 
from which the pupil had downloaded it.

Litigation has gone all the way up the German Federal Court of Justice, which 

decided to stay the proceedings and refer this question to the CJEU:

Does the inclusion of a work — which is freely accessible to all internet users on a 
third-party website with the consent of the copyright holder — on a person’s own 
publicly accessible website constitute a making available of that work to the public 
within the meaning of Article 3(1) of [Directive 2001/29] if the work is first 
copied onto a server and is uploaded from there to that person’s own website?

The CJEU response

Today the Court answered in the affirmative, noting that:

1. The reposting of protected content freely available with the rightholder's consent on a third-party website is a new act of communication to the public (I'd also add that it is also an act of reproduction, and in fact this has been already established in the national proceedings) and no analogy with linking to lawful and freely accessible content in a Svensson sense may be drawn. Here the point is not - as it was, instead, in Svensson whether there is a communication to a new public, because there is a new communication to the public tout court.
2. Holding otherwise would mean that a copyright owner would lose any control over their work once this has been made available online the first time. This would basically amount to an undue exhaustion of the right of communication to the public, contrary to Article 3(3) of the InfoSoc Directive, and would also be in breach of the principle according to which economic rights are preventive in nature (in a Souliersense)
3. The fact that a work has been initially published online and made available with no restrictions is irrelevant: holding otherwise would be akin to imposing formalities to the enjoyment and exercise of copyright, and this would go against the prohibition in Article 5(2) of the Berne Convention.

If that was ever possible, 
now school may become even more stressful

The Court also recalled that copyright
protection in a photograph only arises when 
the photograph is its author's own 
intellectual creation, in the sense that it 
results from the making of free and 
creative choices and carries the author's 
personal touch, in the sense clarified 
in Painer. Readers will remember that 
the AG doubted that the one at issue 
would be a copyright-protected 
photograph. However, Article 6 of the 
Term Directive leaves EU Member States free to protect sub-original photos.

Implications

Overall, the judgment is good news for copyright owners, in that it gives them reassurance 
that the control over their works is not reduced over the internet. 

The ruling is also interesting in relation to the practice of certain websites (including newspapers) 
that directly host third-party video content in respect of which they neither own the rights nor 
do they have a licence, in lieu of displaying such videos by means of embedded links. While 
the latter might be lawful (depending on whether the requirements set in Svensson and
 GS Media are fulfilled), the former might pave the way to a finding of liability. This 
may be something that we knew already, but that now the CJEU has confirmed.

AG Campos provides reasonable interpretation of the right of communication to the public in his Opinion in Renckhoff

The work at the centre of this litigation

Does the inclusion of a work [the photograph on the right hand side] — which is freely accessible to all internet users on a third-party website with the consent of the copyright holder — on a person’s own publicly accessible website constitute an act of communication to the public within Article 3(1) of the InfoSoc Directive if the work is first copied onto a server and is uploaded from there to that person’s own website?

This is the question that the Court of Justice of the European Union (CJEU) has been asked to address in Land Nordrhein-Westfalen v Renckhoff, C-161/17.

This morning Advocate General (AG) Campos Sánchez-Bordona delivered his Opinion [not yet available in English], and answered in the negative.

Let’s see what happened.

Background

Well, the background is quite ... ridiculous (in the sense that it is ridiculous that litigation is brought in the first place in instances like the present one), and also the AG seemed to agree.

At the very outset, in fact, he observed that not long time ago, school research and work on posters used to be accompanied by photographs, prints and drawings published on books and journals/magazines and hanged on the walls of schools (so to allow parents to view them), “without the authors of those images seeking compensation for their use” [NOTE: all direct quotes are my own translations from the Italian version of the Opinion]. Things have changed and, nowadays, the images used are digital and the resulting school work/research is uploaded on freely accessible websites.

This is indeed what happened in this case to a schoolgirl, who found an image of the city of Cordoba online and used it for an assignment for her Spanish class, providing acknowledgment of the website from which she had downloaded the photograph (though not of the photographer, because the website where the photograph appeared did not provide any). Upon finishing her work, she and her teacher uploaded it online … but the photographer [in my view it might be even questionable that the work is protected by copyright in the first place; although the parties to the national litigation agreed that the photograph is protected, the AG also had his doubts: see further below] came forward claiming infringement of his copyright in the photograph, and that he had just granted a licence to use to the image to the website from which the pupil had downloaded it.

Litigation has ensued all the way up the German Federal Court of Justice [!!], which has decided to stay the proceedings and refer the question above to the CJEU.

The AG Opinion

Preliminary remarks

Before even starting his own substantial analysis, the AG noted that the notion of communication to the public has been “already subject to several decisions of the Court”. Yet, “the current reference shows that the interpretative questions of national courts have not been fully solved yet” [this is indeed true … in terms of numbers, the CJEU is fast approaching its 20th decision on Article 3(1) of the InfoSoc Directive].

Then, the AG noted that the way the referring court has phrased the question requires the CJEU to only consider the construction of the right of communication to the public, not also the issue of reproduction [of course, by downloading the photograph and re-uploading it, the schoolgirl made acts of reproduction].

As mentioned, the AG did not find it straightforward to say that a photograph like the one at issue would be protected by copyright. Nonetheless, pursuant to the freedom left to Member Sates [but not all took advantage of this possibility, an example being the UK] by Article 6 of the Term Directive to protect ‘simple photographs’, it would appear that – at least under German law – such photograph would be protected.

Notion of communication to the public: an ‘act of communication’

The AG then turned to the construction of Article 3(1) of the InfoSoc Directive.

In relation to the need for an ‘act of communication’, the AG noted that one should consider “the indispensable role played by the user and the deliberate nature of its intervention” [here the AG directly referred to GS Media, on which see here]. Such criterion requires to consider both subjective elements relating to the behaviour of the user [the AG referred to GS Media to highlight how the Court has been taking into account also such elements] and objective circumstances, as the user’s act must give access to or facilitate access [this is a very important point relating to Article 3(1), which the CJEU has particularly elaborated in its judgments in Filmspeler – a case in which the AG was once again Campos; see my take here – and Ziggo, on which see here] to a work.

Whilst it is true that both the schoolgirl and her teacher were aware of the consequences of their behaviour when they posted the photo online, ie granting access to a work, it would be wrong not to consider: (1) the accessory character of the photograph as an element of a broader work; (2) the fact that the photograph was already freely accessible and had been published with the author’s consent; and (3) the educational context in which the act of communication occurred, ie without any customers or profit-making intention.

The AG observed that in a case like the one at issue, unlike GS Media, one should not consider whether the pupil and her teacher knew that the original photograph had been published or not with the consent of the author, but rather whether they should know that, to reproduce a third-party photograph, they needed the author’s consent. The AG answered in the negative, holding that one should bear in mind that: A) those who act without a profit-making intention do not usually act with full knowledge of the consequences of their behaviour; and B) the work communicated by the user was already lawfully and freely accessible on another website.

If the factors to which the arguments above refer to subsist, then “there is no communication to the public”. However, this is NOT the case when the the righholders notifies the user that the work to which it gives access is unlawfully available online or when the access granted by the suer circumvents protection measures.

All this considered, the AG found that:

·       There was no mention of who the author of the photograph was on the website from which the pupil had downloaded the photograph;

·       The photograph was easy to obtain, as there were no restrictions (whether technical or related to the terms of use) on such website.

These elements might have led the pupil and her teacher to believe that the photograph was free to use by the public.

This conclusion is not the same as thinking that there are no rights on such photograph. However, in cases like the one at issue, the user “may presume that the author does not object to the limited use of such images, for educational purposes” [para 78 – this is correct both in light of CJEU case law and, more banally but not necessarily a given, in terms of common sense]

The AG continued, holding that any different conclusion would lead to “limiting the use of most information available online. Such limitation could affect freedom of expression and information as per Article 11 of the EU Charter. Furthermore, in the present case such limitation would affect the right to education as per Article 14(1) of the Charter.” [para 79]

AG Campos Sánchez-Bordona

The AG also held the view that lack of a profit-making intention is more relevant than what the referring court appears to think. Here the AG recalled the GS Media presumption as applied to for-profit link providers to hold that – in case there were any doubts – for users without a profit-making intention it is necessary to demonstrate their knowledge of the unlicensed character of the work linked to. And the lack of any warning should be read, according to the AG, as reinforcing the idea that neither the pupil nor her teacher had full knowledge of the protected character of the work and the need to seek the author’s authorization.

Notion of communication to the public: same technical means and a new public

The AG then turned to consideration of whether in the present case the work has been made available to a ‘new public’, in that the technical means used for the original and the allegedly infringing communication was the same.

The AG ruled out that there would be a new public in this case: “As the photograph is easily and lawfully (ie with the consent of the rightholder) available to all internet users, it is unclear how the intervention of a pupil and her teacher may be decisive so that a greater number of persons access” the work [para 100].

The AG also rejected the idea – advanced by some commentators – that the ‘new public’ criterion would amount to an undue exhaustion of the right of communication to the public, which would be as such contrary to Article 3(3) of the InfoSoc Directive: “It is, instead, the logical consequence of the way in which the holder of the rights to the photograph has consented to its use, knowing or having to know that lack of any protection against the reproduction of the image could lead internet users to believe that it was freely available to the public” [para 104].

It is not too much to ask a professional, when he/she publishes a work online, personally or through third parties, to adopt the appropriate measures, also of a technical nature, in order to clarify his/her copyright and the will to control the circulation of his/her own work” [para 105]. This does not reduce the high level of protection that authors are entitled to.

In any case, one can always seek the removal of one’s own work if he/she believes that its use is prejudicial [para 107 - here the AG does not elaborate further, but it seems that this is an argument to strengthen the conclusion that the online publication of a work does not amount to a weakened copyright protection, or even the ‘exhaustion’ of one’s own rights].

Also applicable to copyright protection ...
possibly one of the main points
of the AG Opinion

The role of exceptions

The AG then recalled that, in any case, educational exceptions might be available. If Germany has transposed Article 5(3)(a) into its own law, then account should be given of the fact that the EU Charter recognizes the right to education as a fundamental right. This should guide the correct application of the relevant exception, including ensuring that this fundamental right is not unduly compressed. In any case, in the case at issue, also compliance with the three-step test appears ensured.

Comment

This looks like a reasonable Opinion in the context of a fairly unreasonable claim, as well as a good interpretation of CJEU case law on the right of communication to the public. 

Two particular points are worth making.

The first one is that the AG Opinion is a helpful reminder that copyright protection should be balanced against other fundamental rights, including the right to education.

The second point relates to the construction of the right of communication to the public, and in particular the 'new public' criterion. It will be important to see if the Court, like the AG, addresses the criticism that the 'new public' criterion has resulted in an exhaustion of the right of communication to the public. The interpretation provided by AG Campos appears sensible, and suggests that - similarly to the case of other IP rights (eg trade marks and the steps to be taken against 'genericide') also copyright protection comes with certain 'responsibilities' on the side of rightholders. 

Let’s see if the Court agrees …