Kahiu v. Mutua
Closed Contracts Expression
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The Court of Justice of the European Union (CJEU) issued a judgment interpreting the meaning of “communication to the public” within a provision of an EU Directive on the harmonisation of certain aspects of copyright and related rights. The Court ruled that the unauthorized re-posting of photographs constitutes a communication to the public and thus an infringement of copyright. In March 2009 a secondary school in Germany published a student’s presentation on its website which included a photograph downloaded from an online travel portal. Although the student included a reference to the travel portal, the photographer sued the city where the school is located for copyright infringement. The German Federal Court of Justice referred the case to CJEU seeking clarifications regarding the concept of “communication to the public”, and the CJEU held that the posting of the photograph on the school website constituted the communication of the work to a different audience than the audience of the travel portal and that, therefore, it was an infringement of the photographer’s copyright.
From March 25, 2009, the website of the Waltrop Secondary School in North Rhineland-Westphalia, Germany provided access to a presentation by one of its pupils which included a photograph taken by Dirk Renckoff, a photographer. The photograph had initially been posted on an online travel portal with no restrictions on the ability to download the photograph, and the Waltrop pupil had downloaded the photograph from this portal and provided a reference to the portal in the presentation.
Renckoff believed that he had given a right of exclusive use of the photograph to the travel portal only and so the use of the photograph on the school’s website was an infringement of his copyright. He approached the Hamburg Regional Court which upheld Renckoff’s claim against the Land of North-Rhineland-Westphalia in part and ordered the school to remove the photograph from its website and pay Renckoff €300 (plus interest). [para. 9] The Land of North-Rhineland-Westphalia was responsible for educational supervision and for the employment of the teachers at the school.[para. 6]
Both Renckoff and the Land of North-Rhineland-Westphalia appealed the decision of the Hamburg Regional Court to the Higher Regional Court in Hamburg. This Court held that the photograph was protected by copyright and that posting it on the school website was an “infringement of the reproduction right and the right to make available to the public held by Renckoff.” [para. 10] That Court found that the fact that the photograph had initially been publicly available was irrelevant.
The Land of North-Rhineland-Westphalia appealed the Higher Regional Court’s decision to the Federal Court of Justice. On February 23, 2017 the Federal Court of Justice referred a question on the interpretation of article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council (the Directive) to the Court of Justice of the European Union (CJEU). Article 3(1) protects the rights of a copyright holder and 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 members of the public may access them from a place and at a time individually chosen by them.” [para. 4]
The question put to the CJEU was: “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 website constitute a making available of that work to the public within the meaning of article 3(1) if the work is first copied onto a server and is uploaded from there to that person’s own website?” [para. 12]
The central issue for the CJEU to determine was whether the term “communication to the public” in article 3(1) should be interpreted to cover the posting of the photograph on the school’s website when that photograph had been previously published without restriction and with Renckoff’s consent on the travel portal. If the pupil’s use of the photograph did constitute “communication to the public” then it would be an infringement of Renckoff’s copyright.
The Land of North-Rhineland-Westphalia argued that the pupil’s actions in publishing the photograph were protected by the right to education under article 14 of the European Union Charter of Fundamental Rights, and that the Court should balance the rights to education and to intellectual property.
The Land of North-Rhineland-Westphalia and the Italian government (which was admitted as an interested party in the case) argued that the case turned on whether the communication of the photograph by the pupil was to the same “public” as the communication of the same photograph by Renckoff [para. 27], and submitted that because of the reference (via hyperlink) in the pupil’s presentation to the travel portal the communication was to the same public.
Renckoff, the French government (which had also been admitted as an interested party) and the European Commission argued that because the photograph was posted on a different website from the website to which Renckoff (as the copyright holder) had given consent to – the travel portal – the communication of the photograph on the school’s website should be seen as a communication to a new public [para. 28]. These parties stressed that because of this new communication, Renckoff was unable to “exercise his power of control over the initial communication of that work.” [para. 28]
The Court discussed the nature of article 3(1) and stressed that it obliged member states to give authors an exclusive right to both authorize and prohibit publication of their own work to members of the public. Accordingly, with reference to Soulier and Doke C-201/15, EU:C:2016:878 (16 November 2016), the Court held that “any use of a work carried out by a third party without such prior consent must be regarded as infringing the copyright in that work.” [para. 16]
The Court noted that the Directive does not define what it means by “communication to the public”, and so the meaning of that phrase had to be interpreted in light of the Directive’s broader objectives to ensure a high level of protection for authors [para 17]. With reference to its decision in Stichting Brein C-610/15, EU:C:2017:456, the Court stressed that it had consistently held that “communication to the public” has two cumulative criteria: there must be an act of communication; and the communication of that work must be to the public [para. 19]. The Court referred to Svensson and Others C-466/12, EU:C:2014:76, where it had noted that the mere fact of making work accessible to the public is sufficient to meet the first criteria irrespective of whether the public does, in fact, access the work. [para. 20] The Court held that the posting of Renckoff’s photograph on another website did constitute “making available” the work and was therefore an act of communication.
In determining the second element of communication to the public, the Court reiterated that “public” “refers to an indeterminate number of potential recipients” [para. 22] and found that as the present act of communication covers all users of the website this criterion was also filled. [para. 23] However, the Court explained that the case law in Svensson, Stichting Brein and GS Media C-160/15 EU:C:2016:644 made it clear that in order to be treated as “communication to the public” any work that is related to a previously published work must be “communicated using specific technical means, different from those previously used” or the communication must be to a “new” public. [para. 24] In the present case, the communication of the work by Renckoff and then by the Waltrop Secondary School pupil was “made with the same technical means” as the communication in both cases was made on a website. [para. 25] The main issue therefore was whether the communication by the pupil was to a “new public.”
The Court noted that its case law confirmed that any reproduction of work or a communication by a third party requires the author’s prior consent, and stressed that authors have a right to prohibit communication. The Court referred to the Soulier case which had held that an author must be able to end the exercise of rights by a third party over work to which the author holds the rights of exploitation and to prohibit future use of work [para. 31], and referred to this right as “preventative in nature.” [para. 29]. The Court held that the efficacy of this preventative right would be negated if “the posting on one website of a work previously posted on another website with the consent of the copyright holder did not constitute a communication to the public.” [para. 30] This is because of the difficulties the copyright holder might face in seeking to prevent that communication by removing the work from the website.
Accordingly, the Court held that the posting of work on one website which had previously been communicated on another website must constitute the communication to a “new public.” It defined the public that the copyright holder envisioned when he consented to the communication of his work on the original website as being only the users of that specific website, and so distinct from the public to which the work on the new website is communicated. [para. 35] The Court noted that this interpretation gives effect to the Directive’s objective of allowing a copyright holder the opportunity to claim appropriate reward for the use of their work. [para. 34]
The Court distinguished the present case from the Svensson case and Bestwater International (C-348/13, not published, EC:C:2014:2315) which had held that the use of a clickable link to the original website did not constitute the communication to a new public. It held that those cases dealt with hyperlinks to the original posting whereas the present case concerned the publication on a separate website of the actual work of the copyright holder (with the hyperlink to the original website serving only as a reference). The Court noted that hyperlinks “refer to protected works previously published with the consent of the copyright holder,” [para. 39] and referred to the GS Media case, noting that hyperlinks “contribute to the sound operation of the internet by enabling the dissemination of information in that network characterised by the availability of immense amounts of information.” [para. 40] The Court held that the way the information was shared in the present case – “the publication on a website without the authorisation of the copyright holder of a work which was previously communicated on another website with the consent of that copyright holder” [para. 40] – could not be seen as furthering the same objective.
The Court held that allowing the posting of a communication without requiring the consent of the copyright holder denies the copyright holder’s rights and so would not constitute a fair balance between the interests of the copyright holder and users’ right to freedom of expression and information under article 11 of the Charter of Fundamental rights. The Court rejected the Land of North-Rhineland-Westphalia’s argument that the posting of the photograph was protected by the right to education and held that its finding that the communication by the pupil was to a “new public” was not based on whether or not the use of the photograph was educational but on the fact that the posting of the photograph on the school website made it accessible to all visitors to that website.
The Court stressed the fact that the effect of posting the communication on a new website removed the ability of the copyright holder to withdraw consent: even if the copyright holder withdrew consent on the initial website, the communication on the second website would still be accessible. It also emphasized that the actions taken by the pupil in posting the photograph on the school’s website constituted a decisive action in communicating the work to a public that the photographer had not considered when he consented to the initial communication. [para. 46]
Accordingly, the Court held that “the concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29, must be interpreted as meaning that it covers the posting on one website of a photograph previously posted, without any restriction preventing it from being downloaded and with the consent of the copyright holder, on another website.” [para. 47] As a result, the pupil’s posting of Renckoff’s photograph did constitute an infringement of Renckoff’s copyright.
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