Case Summary and Outcome

The insertion of another website via a link using the technique of “transclusion” (“framing”) is not a “communication to the public” within the meaning of Article 3, Paragraph 1 of Directive 2001/29/EC and therefore does not violate the sole rights of the copyright holder.

Facts

BestWater International (‘BestWater’) manufactured and marketed water filtration systems and produce a short two minute film about water pollution over which it had exclusive exploitation rights. This video was posted to YouTube which BestWater said was done without its consent. Mebes and Potsch were independent sales agents for a competitor of BestWater. They each had a website where they promoted their clients products and these websites allowed visitors to view the film produced by BestWater through a clickable link that using the technique of “transclusion” or “framing” whereby when users clicked the link, the film created by BestWater on YouTube would pop up and appear on their  website giving the impression it was created by Mebes and Potsch. BestWater therefore brought an action to obtain stop its use and seeking damages.

The court of first instance decided for BestWater and ordered the defendants to pay €1,000 in damages and to reimburse €555.60 in development costs. The appellate court reversed the trial courts decision ordering equal distribution of costs. BestWater appealed this decision to the Bundesgerichtshof Court which noted, in particular, that where work has already been the subject of a “communication to the public” within the meaning of Article 3(1), then a new act of communication performed according to the same technique can not be described as “communication to the public” under this provision based only on the fact that the act is applied to a new audience. The Bundesgerichtshof Court observed that the technique of “transclusion” allowed the manager of a website to appropriate a work, while avoiding having to copy it and therefore avoiding falling into the scope of the provisions concerning the right of reproduction. The Bundesgerichtshof decided to stay proceedings and referred to the ECJ the following question:

“Can the work of a third party made available to the public on a website or inserted on another Internet site in circumstances such as those at issue here be called a ‘communication to the public’ within the meaning of Article 3(1), even when the work in question is not transferred to a new public nor communicated in a different technical mode than the original communication?”

Decision Overview

Article 3(1) states “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 everyone can access from a place and at a time individually chosen by them.” The ECJ held that it was settled case law that in order to be a “communication to the public” within the meaning of Article 3(1), a copyrighted work had to be communicated according to a specific technical mode, different from those previously used or, failing that, to a new public that was not already taken into account by the rights holder when he or she authorised the initial communication of their work to the public.

The court pointed out that it had held in Svensson and Others  that the insertion of a link into a website by a third party using a web link to a copyrighted work that is already freely available to the public on another website would be called a “communication to the public” within the meaning of Article 3(1), if made ​​to a new audience. It was further held in the case that this conclusion would not called into question by the fact that when users click on the link in question, the copyrighted work gives the impression that it is comes from site where the link is found even though it actually comes from another site.

The ECJ agreed with the Bundesgerichtshof Court that the ‘transclusion’ technique can be used to make a work available to the public whilst avoiding copying and interference with the rights holders reproduction rights. However, the question is still whether the work in question is communicated to a new public. The court held that whenever and as long as a work is freely available on the site pointed to by an internet link, it must be considered that when the copyright holders authorised the communication, they took into account all internet users as the public.

In conclusion, it was held that the mere fact that a protected work, which is freely available on an Internet site, is inserted on another website via a link using the technique of “transclusion” (“framing”), as in this case, it can not be described as a “communication to the public” within the meaning of Article 3(1), to the extent that the work in question is not transferred to a new public nor communicated following a specific technical mode that is different to the original communication.