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Is embedding or framing a communication to the public?
26/11/2014
IP & IT analysis: Does the embedding or framing of a video which is already freely available on another website
constitute an act of 'communication to the public'? Dr Gregor Schmid, partner at Taylor Wessing in Berlin,
considers the decision in BestWater in context with the Svensson case.
Original news
BestWater International GmbH v Mebes: C-348/13
What was the factual background to this CJEU referral?
The plaintiff, BestWater International, is a producer of water filtering systems. It created a brief commercial video relating
to water pollution. The video was freely accessible on YouTube. BestWater claimed that it had been uploaded without its
consent.
The defendants are sales representatives for a competing company. They run their own website. However, they also
embedded the plaintiff's commercial video in their own website in a way that users of their website could click a link so
that the plaintiff's video could be watched in a 'frame', which thus appeared to originate directly from their website.
BestWater sued, among other things, for damages on the basis of copyright infringement, claiming that the defendants
had made the video publicly available without the plaintiff's consent. The lower courts found partly in favour of the plaintiffs
who appealed. (In the appeal stage, the parties were merely arguing about the costs.)
On appeal, the German Federal Supreme Court (Bundesgerichtshof (BGH)) argued that the video had already been
available on the internet and therefore was not made available to a 'new' public by the defendants. However, the court
referred the case to the CJEU for a preliminary ruling on the question of whether embedding, as in the case at hand (ie by
way of 'framing'), nevertheless constituted an act of 'communication to the public' within the meaning of Directive
2001/29/EC, art 3(1) (the Copyright Directive), even if the work is neither made available to a new public nor a new
technical means differing from the original communication is used.
What is the legal background to the series of cases dealing with linking, framing and
embedding communication to the public?
The Copyright Directive, art 3(1) provides for the 'right of communication to the public' of protected works, 'by wire or
wireless means, including the making available to the public in such a way that members of the public may access them
from a place and at a time individually chosen by them'. The BestWater case and the recent Svensson case (Svensson
and other v Retriever Sverige AB: C-466/12 [2014] All ER (D) 123 (Feb)) deal with the related questions of whether
embedding/framing and linking constitute a 'communication to the public' within the meaning of that provision.
According to the case law of the Court of Justice of the European Union (CJEU), an 'act of communication' of a work must
be interpreted broadly as the making available to a public in such a way that the persons forming that public may access
it, irrespective of whether they avail themselves of that opportunity (cf Svensson , para [16] et seq). The court had decided
in Svensson that the provision of a clickable link to protected works is to be considered to be 'making available' and
therefore an 'act of communication'. Further, the protected work must be made available to a 'public', which is to be
interpreted as an indeterminate and fairly large number of potential recipients (cf Svensson, para [21] et seq), which was
equally the case here. In addition, however, to fall within the meaning of the Copyright Directive, art 3(1), it is necessary
that the work in question must either be made available by a 'different technical means' (as compared to the initial
communication), or be directed to a 'new public' not taken into account by the rights' holder when he authorised the initial
communication to the public (cf BestWater, para [14] et seq, Svensson, para [24] et seq, ITV Broadcasting Ltd and others
v TVCatchup Ltd: C-607/11 [2013] All ER (D) 116 (Mar), para [31] et seq).
In Svensson, the CJEU had decided that the provision of a website with clickable links to works already freely available on
another website does not constitute an act of communication to the public, as the linked works in question had not been
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communicated to a new public. The court had, however, not expressly ruled on the technique of linking by embedding
(framing) content.
In BestWater, the CJEU now decided that embedding (framing) of a work already available on another website in itself
does not constitute a communication to the public if the work in question is neither made available to a new public nor by
a new technical means different to the initial communication (cf BestWater, para [15] et seq). The court did not discuss the
question of whether embedding/framing is to be seen generally as an act of communication to the public, but it must be
assumed that this is the case. As the video had, however, already been freely available on another website for all users of
the internet, there was neither a new technical means nor a new public involved (cf BestWater, para [16] et seq).
The court further emphasised that it is irrelevant whether the embedded work appears to originate from the framing
website, while in truth it originates from another website (cf BestWater, para [17] and Svensson, para [29] et seq).
Although this technique might be covered by the right of reproduction (see the Copyright Directive, art 2), it did not qualify
as a communication to the public, as the rights' holder who initially made the work available had already anticipated that
all internet users could be the potential 'public', and thus no 'new public' was involved (BestWater, para [18]).
Another reference for a preliminary ruling made by the Swedish Högsta domstolen also relating to clickable links is still
pending before the CJEU (C More Entertainment AB v Linus Sandberg C-279/13).
Can you explain the reasoning behind the CJEU releasing an order and not a judgment?
According to the Rules of Procedure of the Court of Justice, art 99, the CJEU may decide to rule by reasoned order
instead of a 'full' judgment, if the question referred to the court for a preliminary ruling:
'is identical to a question on which the court has already ruled, where the reply to such a question may be clearly deduced from existing
case-law or where the answer to the question referred for a preliminary ruling admits of no reasonable doubt.'
The court expressed its view that the question referred by the BGH indeed was clearly deductible from existing case law,
in particular from the recent Svensson decision on linking.
What do Bestwater and Svensson mean for rights' holders and linkers and framers?
The court's decision is clear on the question of what constitutes a communication to the public. In Svensson, the court
also made it clear that if the work initially has not been made 'freely' available, but was technically protected against
unauthorised access by the originating website, and the clickable link makes it possible for users of the (linking) site to
circumvent such restrictions, such users would be considered as a 'new public'--ie such links would constitute an
infringement of the right of communication to the public (cf Svensson, para [31]). Although the court in BestWater did not
expressly rule on this question, it is safe to assume that the decision would be the same if the embedding (framing) would
lead to circumvent a technical restriction put in place by the originating website. It is, however, unclear whether the
restriction needs to have been put in place by the original rights' holder, or whether a technical restriction on any
originating website would be sufficient to make the act an infringement.
The court did however not expressly decide whether there is an infringement if the work initially has been made available
on the internet without the rights holder's consent. Although the plaintiff in BestWater had argued that the work had been
uploaded without its consent, the court did not discuss this question any further (arguably because the question referred
to the CJEU did not strictly require it to be answered). Thus, this question arguably remains open, although the CJEU's
reasoning in BestWater and Svensson seems to indicate that technical restrictions on the originating website will be the
decisive factor.
As a consequence, linking and embedding (framing) will be seen as an infringement if technical restrictions applied by the
originating website are circumvented ('new public' argument). On the other side, rights holders who do not desire their
works to be linked or framed will need to establish technical restrictions (eg paywalls). As a further consequence to
BestWater and Svensson, linking and embedding content which is available unrestricted, but without the rights holder's
consent (a situation which often is of high practical relevance for users of social networks and user-generated content
(UGC) platforms), currently remains somewhat a 'grey area'.
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What does this mean for those who link to content that sits behind a paywall or is illegal?
Linking to content that sits behind a paywall, therefore, is seen as an act of communication to the public and consequently
as a copyright infringement, if the link allows circumventing the paywall. It is not yet clear whether linking to 'illegal' content
(which is however freely available on the originating website) constitutes a copyright infringement, which may be the
object of a future referral to the CJEU. At least there is a risk that such links may be seen as infringing.
Dr Gregor Schmid, LLM (Cambidge), is a partner at Taylor Wessing in Berlin, where he specialises on all aspects of
copyright and media law, IT and e-commerce. His core areas of practice also include advising on film, TV, games and
internet portals. He is a lecturer at Humboldt University Berlin and at MHMK Macromedia University for Media and
Communication in Munich. He is also a member of the Telecoms, Internet and Media Steering Committee of AmCham
Germany, of the BITKOM working group on IPTV, of the German Association for Law and Information Technology and the
German Association for Intellectual Property and Copyright.
Interviewed by Jane Crinnion.
The views expressed by our Legal Analysis interviewees are not necessarily those of the proprietor
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