The Overcomplication of the 'Communication to Public' Right in Copyright Law

Kitchen J describes the emergence of the current ‘communication to public’ right in Copyright Designs and Patents Act (CDPA),^[1] as ‘an effective transposition of Art 3 (1) of the InfoSoc Directive (ISD) 2001/29/EC’.^[2]

This absolute right has been undefined in legislation, whether it be the UK,^[3] EU^[4] legal systems or from its roots in the Berne Convention.^[5] To analyse the interpretation of the right with respect to the UK, a critical analysis of case law by the CJEU is crucial as it still applies to s20 CDPA, as reiterated by Arnold LJ post-Brexit in TuneIn.^[6] Attempting to interpret this right, the CJEU has provided abundant, albeit unsatisfactory, precedent due to the right’s ‘broad interpretation’. Furthermore, Husovec describes interpreting Art 3 as ‘complex and sometimes inscrutable, especially in the digital environment’.^[7] This essay argues that the right has become overly complicated and currently lacks coherency in reasoning. Moreover, the essay also highlights easier ways to interpret the right, which juxtaposes the issues with the current interpretation.

For an effective analysis we need to understand the subject matter, protected by the legislation and different components of its interpretation. CDPA s20,^[8] recognises the right of a copyright owner to communicate the work to the public, by ‘broadcast’^[9] or by ‘making available of works’.^[10] Arnold LJ highlighted that for this ‘broadcast’ or ‘making available of works’ to be infringing it must be ‘an act of communication’ and that communication needs to be to a ‘public’.^[11] This essay peruses through Arnold LJ’s summary of CJEU principles in TuneIn,^[12] particularly ‘communication’ and ‘new public’, while the approach taken towards the rights interpretation is critiqued. Although the CJEU jurisprudence emphases on the criteria are to be carried out interactively,^[13] a step-by-step analysis, highlights the problems that start with ‘communication’ and have a snowball effect into ‘public’.

Act of Communication

This section shows how the interpretation of ‘communication’ has been inconsistent throughout case law, leading to diverging definitions which have been conflated. Moreover, it has led to overlaps due to incoherencies with the true meaning of the legislation. Arnold LJ, in citing SGAE and FAPL highlighted the two different definitions constituting an act of communication.^[14] To elaborate, SGAE provides the ‘access approach’, where the CJEU held that ‘communication to the public involves an intervention, in full knowledge of the consequences, to give access to the protected works’.^[15] However, FAPL gave a contrasting definition where communication ‘means any transmission of the protected works, irrespective of the technical means or process used’.^[16] Not only do the divergent definitions cause legal uncertainty, the approach in FAPL conflates the definitions, as the CJEU also mentioned that, ‘a hotel proprietor carries out an act of communication when he gives customers access’.^[17] Nevertheless, Justin Koo puts forth that ‘the divergent definitions are acceptable until the cases have factual certainties, all involving traditional transmission and retransmission’.^[18] Conversely, the conflation showcases that ‘the court has been more concerned with the outcome to be achieved, rather than providing a compelling reasoning for it’.^[19] Moreover, had the Court not conflated the approaches it would have been easier to reconcile the approach for simple transmissions/retransmissions post-Svensson.^[20]

To elaborate, the use of ‘access approach’^[21] in Svensson spills into acts of ‘hyperlinking’ and has erroneously broadened the scope of ‘making available of transmissions’ of works.^[22] Although, some argue this was a modernisation attempt by the CJEU, it is contrary to WIPO’s ‘communication always involving transmission’ approach.^[23] Nevertheless, ALAI argues that ‘acts of hyperlinking are communications to the public because they give access to protected works’, invoking ‘intervention’ to justify the argument.^[24] To the contrary, most of these communications under the ‘broader access approach’, do not constitute an ‘indispensable intervention’ as argued by Advocate General (AG) Wathelet.^[25] Case in point being GS Media, where the hyperlink didn’t provide access to ‘protected works’,^[26] and Ziggo where torrent aggregation only made access easy to already available works.^[27]

Moreover, ‘his broad interpretation would confuse rights with other rights such as the distribution and lending right’^[28] as they also provide access. This showcases an inconsistent use of ‘indispensable intervention’ criteria for the access approach, wherein the threshold for intervention is higher for access provided to transmission by hotels in SGAE. In hyperlinking cases like Svensson, Ziggo and GS Media, the threshold devised by CJEU is excruciatingly low, leading to incoherent emphasis on intervention. Additionally, Bently and Sherman argue that ‘the Supreme Court should revisit and change the low threshold afforded to ‘intervention’ criteria’.^[29]

Furthermore, failing to exclude hyperlinks that are not an ‘indispensable intervention’, the technological obsolescence of the CJEU followed by the English courts introduces the ‘new public’ doctrine. This wouldn’t be necessary, if the only works crossing the threshold for communication were ones ‘broadcasting’ or ‘making available ‘protected’ works. To demonstrate this, Arnold LJ in TuneIn should have argued that because the hyperlinks brought the ‘transmissions’ to TuneIn’s page, it was an ‘indispensable intervention’, unlike in GS Media where only the hyperlink was provided. This differentiation would exempt simple hyperlinks altogether and only involve communication of works that ‘make available transmission’, correcting the interpretative incoherency with s20 (2) (b) CDPA.

So, from this analysis we notice the problems with ‘communication’, in the form of ‘broad access’ and ‘transmission’ approach. Quintais argues that these two approaches are an intentional attempt by the court to differentiate between the ‘linear’ and ‘interactive’ acts of communication.^[30] This can be seen in the facts of Svensson, where the interactive act of hyperlinking provided access, compared to FAPL where a satellite decoder was used to transmit football matches. Moreover, Dr Birgit Clark says ‘CJEU’s attempt to create sui generis case groups is to be welcomed since it should in time provide more legal certainty and underpin the decision-making process with more logic’.^[31] Although this provides some certainty as to the categories in which the CJEU interprets the rights, this essay counter-argues that this approach is not always monotonous. There are major disadvantages in differentiating definitions of communication for different methods as is witnessed by VCAST.^[32] The CJEU misconstrued an act of recording TV broadcast and uploading to the ‘cloud’ for later viewing as retransmission,^[33] but this would instead be an act of providing ‘access’. This conflation can also be seen in AG Campos Sanchez-Bordona’s opinion in Renckhoff, where he argued ‘transmission’ for an act of ‘reposting photographs on a website’^[34] which clearly falls under ‘access approach’. Thus, this proves the incoherencies, which develop into the next criterion of ‘new public’.

‘New – Public’

Moving to the next criterion, Arnold LJ in TuneIn, summarises the ‘new public’ as:

‘where there is a communication of works by the same technical means as a previous communication, it is necessary to show that the communication is to a new public, that is to say, a public which was not considered by the right holder when it authorised the original communication’.^[35]

There are three important phrases/words to consider in this definition: ‘same technical means’, ‘public not being considered’ and ‘authorised’. All these riddle this definition with incoherencies and complications.

First, ‘same technical means’ highlights the ITV exception where the use of a ‘new technical means’ (dominantly for acts of retransmission), would amount to a communication regardless of a ‘new public’.^[36] However, the ‘new public test’ provided by Arnold LJ cited AKM,^[37] which is inconsistent to the exception in ITV. The crux of the issue is that in AKM there was a use of a ‘new technical means without authorisation’, which should amount to a communication but the Court nonetheless evaluated ‘new public’. This threatens the intelligibility of the ITV exception, where according to AKM ‘even if new technical means are used, if the public is ‘considered’ there would be no communication’.^[38]

Second, the ‘public not considered’ criterion cited by Arnold LJ and introduced in Renckhoff,^[39] overly complicates and moves the test away from the characteristics of an ‘absolute right’. P. Bernt Hugenholtz argues that the test attempts to ascertain the impossible distinction between ‘original’ and ‘new public’ which are practically non-existent in internet situations.^[40] Furthermore, in a practical sense the internet is vast and it would be difficult for any user to judge what ‘public’ the right holder had ‘considered’ when the works are already freely available. These problems can be alleviated if the interpretation was crafted in ‘precise and objective terms, the meaning of which ought not depend on contractual dealings or right holders’ intentions that cannot normally be known by third parties’.^[41] Moreover, the decision in Renckhoff is incoherent compared to Svensson which held that ‘freely available works on the internet wouldn’t amount to a ‘new public’.^[42] Briss J reconciles this by differentiating between ‘reposting’ of freely accessible works in Renckhoff and ‘hyperlinking’ it in Svensson.^[43] However, this Kafkaesque ‘outcome-oriented’ approach which introduces ‘exceptions for exceptions’ in every judgement showcases a lack of consistency in the reasoning of the test, which is already practically complicated to fulfil. Arguably, the use of the ‘new public’ criterion by the CJEU is to deal with the complexity created by the broad test of ‘acts of communication’.

Third, the use of ‘authorised’ implies that there would be communication if the ‘works made freely available through interactive communication are not authorised’. As highlighted in GS Media, this distinction in works is achieved by putting the onus on whether the communicator ‘knew or ought to have known’ whether the communication was authorised by right holder.^[44] This creates conceptual incoherencies due to its subjective nature, as ‘it is possible that there is an act of ‘communicaiton’ made to a ‘public’, yet no ‘communication to the public’.^[45]

Moreover, ‘knowledge’ was introduced to limit the Art 3 (3)^[46] exhaustion in Svensson to works made freely available and its application to general retransmission cases is still uncertain. In theory this creates a distinction between different technologies used for communication, which is problematic as argued above and incoherent. In the UK context, there is an inconsistency on the emphasis placed on ‘knowledge’ in determining infringement, evident from Paramount, where instead the emphasis was on ‘how the communication is perceived by end-users’.^[47] Nevertheless, Arnold LJ in TuneIn emphasised the use of the ‘knowledge’ criterion for interpretation of the right and expressly disregarded the contentions that it overlaps with accessory liability.^[48] However, this essay respectfully disagrees with Arnold LJ and argues that, use of knowledge in primary infringement will distinguish s20 from other exclusive rights. This would provide excess protection to right holders contrary to the user’s fundamental rights of expression.

Moreover, ‘the use of knowledge has no dogmatic basis, as copyright is usually a strict liability tort’.^[49] As Tanya Aplin argues, the criterion should only be relevant to provision 22-26 CDPA dealing with accessory liability.^[50] Furthermore, IPO in its 2022 guidance on ‘Piracy’ held that acts of ‘password sharing’ may amount to secondary infringement.^[51] This is arguably contradictory to TuneIn and incoherent as people would have knowledge of sharing the password and these acts should fall under the broad ‘access approach’ and constitute a primary infringement. Additionally, there are some practical issues as knowledge introduces a ‘duty of care’ for users to monitor content right holders share, making the internet’s functioning complicated. Arnold LJ also took guidance from VG Bild Kunst (a post-Brexit case).^[52] If this approach towards post-Brexit guidance is followed, ‘knowledge’ would become sporadic, as the recent case of YouTube demonstrates with the reduced emphasis it places on ‘profit making’.^[53] This would mean that the courts will not presume knowledge from ‘profit making’ acts,^[54] which clearly portrays the incoherency compared to GS Media, complicating the interpretation. Thus, the emphasis placed on ‘knowledge’ has been incoherent, it also overlaps with ‘accessory liability’ and its effect on retransmission cases is legally uncertain. Lastly, the ‘new public’ criterion is not found in CDPA or ISD but in the internationally disregarded opinion of AG Sharpston.^[55] Dr Makeen argues that the use of ‘new public’ criterion in retransmission cases is contrary to Art 11bis1 (ii) of the Berne Convention^[56] and the ‘organisation other than original’ test should apply.^[57] Continuing from the above hypothetical judgment by Arnold LJ in TuneIn after holding the communication to be an ‘indispensable intervention’. The Court would only question ‘whether there was a third-party communicator’ and rid the test of the ‘new public’ incoherencies and complications showcased above.

Inconsistencies as to the ‘place of communication’

The interpretation of communication to public right encompasses some acts that would be ‘performance to the public’ under s19 CDPA.^[58] The EU defines place of communication for Art (3) as ‘where the public is not present at the place of origin’.^[59] Thus, acts such as those in FAPL, namely broadcasting of football matches in pubs, would be ‘communication to public’ under the CJEU jurisprudence. Nonetheless, it would also fall under s19 CDPA, as ‘performance’ is defined to include broadcasts.^[60] Additionally, for acts like ‘public karaoke’ involving lyrics and sound recording, it would be hard to distinguish what approach to adopt in the UK under s19 or s20. Nevertheless, the High Court followed the CJEU preliminary ruling and held that it doesn’t matter where the act falls, as the exceptions under s 72 apply to both s19 and s20 CDPA.^[61] On the contrary, the CJEU and the High Court in FAPL misunderstand the role of Art 11bis (1)(iii) in Berne which deals with ‘reception in public’ and is ‘erroneously included in Art 11bis for convenience and not unitary interpretation’.^[62] The Court should have differentiated in the acts to provide legal certainty and avoid the overlap with the ‘performance in public right’.

Conclusion

In conclusion, through critically evaluating the interpretation for the ‘communication to public’ this essay showcases its incoherency and complicated nature in two ways. First, the broad nature of the interpretation of ‘communication, involves acts which would not be regarded as communication. Moreover, the inconsistent emphasis placed on ‘indispensable intervention’, shows incoherency in reasoning and balloons the acts that amount to communication. This should ideally be towards the narrower end of the spectrum to at least exclude ‘simple hyperlinks’ from primary infringement to avoid complications. Second, the ‘new public’ criterion is an attempt to constrain the overzealous interpretation of ‘communication’. This leads to an inconsistent approach to the ITV exception, the ‘knowledge’ criterion and overcomplication by introducing ‘consideration’. The knowledge criterion also overlaps with secondary infringement in the UK and is burdensome and unfair towards third parties. Moreover, the ‘new public’ criterion is not the proper test according to international standards and this attempt by CJEU to broadly interpret the right overlaps with other exclusive rights in UK. This shows the problems that start with ‘communication’, snow balling into an avalanche of incoherencies interpreting the right which the Supreme Court should revisit.

[1] Copyright, Designs and Patents Act 1988, s 20.

[2] FAPL v QC Leisure (No 3) [2012] EWHC 108 (Ch), [2012] FSR 12 (‘FAPL 3’) [57] (Kitchen J).

[3] Copyright, Designs and Patents Act 1988.

[4] 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.

[5] Berne Convention for the Protection of Literary and Artistic Works 1971.

[6] TuneIn v. Warner Music UK [2021] EWCA Civ 441 [77] (Arnold LJ).

[7] Husovec M, ‘Intellectual property rights and integration by conflict: The past, present and future’ (2016) Cambridge Yearbook of European Legal Studies, 18, 239–269.

[8] (n 1).

[9] ibid, s 20 (2) (a).

[10] ibid, s20 (2) (b).

[11] TuneIn v Warner Music (n 6) [70] (Arnold LJ).

[12] ibid [70] – [71].

[13] Case C-135/10 Società Consortile Fonografici (SCF) v Del Corso [EU:C:2012:140] para 79.

[14] TuneIn v Warner Music (n 6) [70] (Arnold LJ); Case C-306/05 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I- 11519 (SGAE); Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd v QC Leisure [2011] ECR I-9083 (FAPL).

[15] SGAE (n 14), para 42.

[16] FAPL (n 14) para 193.

[17] ibid, para 194.

[18] Justin Koo, The Right of Communication to the Public in EU Copyright Law (Hart Publishing 2019) 44.

[19] Eleonora Rosati, 'Linking and copyright in the shade of VG Bild-Kunst' (2021) Common Market Law Review 58, 1893.

[20] Case C- 466/12 Svensson v Retriever Sverige AB [EU:C:2014:76] (Svensson).

[21] ibid, paras 19–20.

[22] CPDA (n 1), s 20 (2) (b).

[23] WIPO, Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to be Considered by the Diplomatic Conference (CRNR/DC/4) (1996) 46, para 10.15.

[24] ALAl, ‘Opinion Proposed to the Executive Committee and adopted at its meeting, 17 September 2014 on the criterion ‘New Public’, developed by the Court of Justice of the European Union (CJEU), put in the context of making available and communication to the public’ (2014) 1.

[25] Opinion of A.G. Wathelet in Case C-160/15 GS Media BV v. Sanoma Media Netherlands BV and others, EU:C:2016:221, paras 57–60.

[26] Case C-160/15 GS Media BV v Sanoma Media Netherlands BV [EU:C:2016:644] (GS Media).

[27] Case C-610/15 Stichting Brein u Ziggo BV and XS4All Internet BV [2017] ECLI:EU:C:2017:456 (Ziggo).

[28] European Copyright Society, ‘The Reference to the CJEU in Case C-466/12 Svensson’ (2013)

<https://europeancopyrightsocietydotorg.files.wordpress.com/2015/12/european-copyright-society-opinion- onsvensson-first-signatoriespaginatedv31.pdf> accessed December 2022.

[29] Lionel Bently and Brad Sherman, Intellectual Property Law (6th edn, Oxford University Press 2022) 175.

[30] J. P. Quintais, Copyright in the age of online access: Alternative compensation systems in EU law (Alphen aan den Rijn:

Kluwer Law International, 2017).

[31] 'Communication to the public" under EU copyright law: an increasingly Delphic concept or intentional fragmentation?' (2016) 38(12) European Intellectual Property Review, 717.

[32] Case C- 265/16 VCAST Ltd v RTI SpA [EU:C:2017:913] (VCAST).

[33] ibid, para 40.

[34] Opinion of AG Campos Sanchez – Bordona’s in Case C-161/17 Land Nordrhein-Westfalen v Renckhoff [EU:C:2018:634] paras 60 & 62.

[35] TuneIn v Warner Music (n 6) [70] (13) (Arnold LJ).

[36] Case C-607/11 ITV Broadcasting Ltd v TVCatchup Ltd [EU:C:2013:147] (ITV) para 39.

[37] Case C-138/16 Staatlich genehmigte Gesellschaft der Autoren, Komponisten und Musikverleger registrierte Genossenschaft mbH (AKM) v Zürs.net Betriebs GmbH [EU:C:2017:218] (AKM).

[38] ibid, para 25.

[39] (n 34).

[40] P Bernt Hugenholtz and Sam C Van velze, 'Communication to a New Public? Three reasons why EU copyright law can do without a ‘new public’' (2016) 47(7) IIC 807.

[41] ibid.

[42] (n 20) paras 25–28.

[43] Warner Music UK Ltd v TuneIn [2019] EWHC 2923 (Ch) [99].

[44] (n 26), para 37.

[45] Justin Koo, ‘Away we Ziggo: the latest chapter in the EU communication to the public story’ (2018) 13(7) Journal of Intellectual Property Law & Practice, 552.

[46] Directive 2001/29/EC.

[47] Paramount Home Entertainment International Ltd and Others v British Sky Broadcasting Ltd and Others [2013] EWHC 3479 (Ch) [34].

[48] TuneIn v Warner Music (n 6) [88] (Arnold LJ).

[49] Targosz, T, ‘A new chapter in the linking saga’ (2016) Kluwer Copyright Blog

<https://copyrightblog.kluweriplaw.com/2016/09/09/a-new-chapter-in-the-linking-saga-its-becoming-a- horror/> accessed January 2023.

[50] ‘The Impact of the Information Society Directive on UK Copyright Law’ (July 1, 2018) in forthcoming, Brigitte Lindner and Ted Shapiro (eds), Copyright in the Information Society: A Guide to National Implementation of the EU Directive 2nd edition (Edward Elgar 2018), King's College London Law School Research Paper No. 2019-16, 12.

[51] IPO, 'Guidance, The effect of piracy' (Intellectual Property Office, 19th December 2022)

<https://www.gov.uk/government/publications/meta-counterfeit-and-piracy-campaign/the-effect-of-piracy > accessed January 2023. Clarified in a statement to Torrent Freak

<https://www.malwarebytes.com/blog/news/2022/12/sharing-netflix-disney-passwords-is-illegal-according- tonew-guidance> accessed January 2023.

[52] 52 TuneIn v Warner Music (n 6) [90] – [91].

[53] Joined Cases C-682/18 Youtube and C-683/18 Cyando, EU:C:2021:503.

[54] ibid, para 84.

[55] Opinion of AG Sharpston in Case C-306/05 Sociedad General Autores y Editores (SGAE) u Rafael Hoteles SA (2006), ECLI: BU:C:2006:479, para 50.

[56] Berne Convention (n 5), Art 11bis (1) (ii).

[57] F. Makeen, Copyright in a Global Information Society: The scope of copyright protection under international, US, UK and French law (Kluwer 2000) 241-242.

[58] (n 1).

[59] FAPL (n 14).

[60] (n 1), s 19 (2) (b).

[61] FAPL 3 (n 2).

[62] Berne Convention (n 5), Art 11bis (1) (iii).