On 9 March 2021, the Court of Justice of the European Union handed down an eagerly anticipated judgment in the case of VG Bild-Kunst v Stiftung Preußischer Kulturbesitzanother, which clarifies EU law on framing content on a website by a third party. The Court reached the conclusion that “where the copyright holder has adopted or imposed measures to restrict framing, the embedding of a work in a website page of a third party, by means of that technique, constitutes making available that work to a new public”¹. Thus such a communication must be authorized by the copyright holder.

Background

SPK is a German cultural heritage foundation, which networks museums, libraries and archives in and around Berlin. It also operates the Deutsche Digitale Bibliothek, a digital library containing links to works of participating institutions and storing thumbnails (smaller versions of the original images of the subject matter). 

VG Bild-Kunst is a German visual arts copyright collecting society. VG Bild-Kunst has granted SPK a license conditional on the licensee implementing effective technological measures that prevent third parties from framing thumbnails the licensed content. SPK claimed that this condition is unreasonable in copyright agreements and sought a requirement to grant a license to display the relevant content without the condition.

Question referred for a preliminary ruling

The main legal issue in disputed was, in essence, what constitutes a communication to the public within the meaning of Article 3(1) of Directive 2001/29² (“Directive”). It was to be clarified by the Court whether the embedding of a work – which is available on a freely accessible website with the consent of the right holder – on the website of a third party, by way of framing, constitutes communication to the public of that work within the meaning of Article 3(1) of the Directive where it circumvents protection measures against framing adopted or imposed by the right holder.³

This question has already been addressed by Advocate General Szpunar, who focused his interpretation on the differentiation between clickable links and the embedding of content on third party websites with the use of automatic/inline links.⁴  

As regards clickable links using the framing technique to works that have been made freely available to the public, AG Szpunar determined that no authorization from the right holder is necessary, as it is presumed that the works already form part of the public domain, which was taken into account by that right holder when those works were initially made available. In addition it does not constitute a communication to the public requiring authorization, even where the embedding circumvents protection measures against framing taken or imposed by the copyright holder.

According to the AG, automatic/inline linking on the other hand, which makes the embedded content appear no different from the content of the host page - in such a way that the content is automatically displayed on that page as soon as it is opened - does require the authorization of the right holder, as it in fact communicates the works to a new public, other than that originally intended by the right holder when they initially made the works available.

The judgment

While the differentiation between two methods of embedding content through the technique of clickable links and automatic links was central to the AG’s reasoning, the Court concentrated on the exclusive right of a right holder to authorize or prohibit any communication to the public of their works and the principle that the authorization of the inclusion of protected works in a communication to the public does not exhaust the right to authorize or prohibit other communications to the public of such works.

The Court held that the concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29,⁵   should be understood in a broad sense as covering all communication to the public not present at the place where the communication originates. Nevertheless, in order to fall under the ‘communication to the public’ restrictions, a protected work must be communicated using specific technical means, different from those previously used or, failing that, it must be communicated to a new public.⁶

The Court uphold previous case law, which emphasized that communication does not satisfy the condition of being made available to a new public if the technical means used by the technique of framing are the same as those previously used to communicate the protected work to the public on the original website, namely the Internet. However, based on Svensson⁷  this applies only insofar as access to the works concerned on the original website is not subject to any restrictive measure (including restricting access to site’s subscribers only).⁸

The Court also held that if a right holder has authorized their copyrighted works to be freely accessible to the public on a website and has implemented or imposed upon a licensee measures which limit access to these works from other websites, then the copyright holder has expressed his or her intention to confine the public for those works solely to the users of one particular website. The same applies when that right holder has adopted, or obliged licensees to employ, technological measures.⁹

Therefore the embedding of such works in a third party website, by means of framing, constitutes a communication to the public requiring authorization. The opposite approach would not only create a rule on exhaustion of the right of communication, but also potentially deprive the right holder of the opportunity to claim an appropriate reward for the use of his or her work by a third party online.

However, in order to safeguard a balance within the digital world between the protection of intellectual property of copyright holders on one hand and the fundamental rights and freedoms of users of content online on the other, the Court established that only implementing effective technological measures, within the meaning of Article 6(1) and (3) of Directive 2001/29¹⁰ , will have the effect of limiting consent to framing. Such measures are crucial in determining whether the right holder truly intended to oppose the framing of their works by third parties.

Impact

The Court’s ruling is an extension of its earlier ruling in Svensson¹¹ where the Court held that, in the case of clickable links, authorization by the copyright holder is needed if there are access restrictions employed on the original website. The Court’s decision in the present case rightly strengthens the position of copyright holders also with reference to works that are freely accessible to the public with the authorization of the copyright holder, where the copyright holder has adopted or imposed technological measures to restrict framing.

Following the Court’s interpretation of article 3(1) of the Directive¹² right holders who have safeguarded their works against framing will have a new bargaining chip when negotiating licensing agreements for their works. They will be able to impose on the licensee the implementation of ETMs preventing further framing of the licensed works from their website, and any such use will require the right holder’s permission.

On the other hand, the converse also holds true: where the right holder has not specifically adopted or imposed any ETMs preventing or restricting framing of their works when they were initially made available, such re-use by a third party will not constitute a communication to the public within the meaning of article 3(1) requiring authorization by a rights holder. This line of thinking rings a little alarm bell when examined against the Berne Convention principle that copyright is an automatic right and its enjoyment and exercise should not be subject to formalities,¹³  which may indeed be the effect with ETMs.

Admittedly, the Court shared the AG’s opinion that the public which was taken into consideration by the copyright holder on the website on which that work was initially published consists solely of the users of that site, and not the users of the website on which the work was subsequently framed without the authorization of the copyright holder, nor other internet users. Relying on Renckhoff¹⁴  the Court held that the embedding, by means of framing, on a third party website page of a work protected by copyright and made freely available to the public with the authorization of the copyright holder on another website must be classified as an act of ‘making that work available to a new public’.¹⁵ On the other hand, the Court did not explicitly confirm the AG's position that in the case of automatic links, authorization by right holders is always needed, despite the use, or lack thereof, of technological measures. Taking into account the importance of freedom of expression and information, the Court emphasized the need to guarantee the exclusive rights of right holders who take measures to protect their work.

Consequently, the law calls for increased awareness among copyright holders of the onus placed on them to technologically protect their works and introduce access restrictions at the point of initial communication to the public, if they wish to exercise and enjoy the right to restrict the framing of said works in future.

Ten principles of linking

Case law has progressively developed rules to govern the sharing of online content. While early judgments emphasized the importance of access to information, subsequent judgments have defined the boundaries beyond which the balance between the rights governing the digital world and copyright protection breaks down. These principles are summarized below.

Authors: Julia Kasprzyk

1. Court of Justice of the European Union Press Release No 36/21, Luxembourg, 9 March 2021, available here.↩
2. 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, available here.↩
3. VG Bild-Kunst v Stiftung Preußischer Kulturbesitzanother C-392/19, para. 18, 9 March 2021, available here.↩
4. See Opinion of Advocate General Szpunar delivered on 10 September 2020, VG Bild-Kunst v Stiftung Preußischer Kulturbesitz, available here.↩<
5. Directive 2001/29/EC, (n. 2)↩
6. C-392/19, (n. 3) para. 26 – 32.↩
7. Svensson and Others C‑466/12, 13 February 2014, available here.↩
8. C-392/19, (n. 3) para. 36 – 40.↩
9. C-392/19 (n. 3) para. 42 - 45↩
10. Directive 2001/29/EC (n. 2).↩
11. C‑466/12, (n. 7).↩
12. Directive 2001/29/EC (n. 2).↩
13. The Berne Convention for the Protection of Literary and Artistic Works of September 9 1886, art. 5(2), available here.↩
14. Renckhoff C-161/17, 7 August 2018, available here.↩
15. C-392/19 (n. 3) para. 47-48.↩