Abstract
Hyperlinks, or more simply links, represent a fundamental instrument for programmers to build websites and for users to navigate the web. The internet, as we know it today, is a complex and interrelated net of contents at the disposal of surfers: in this scenario, hyperlinks represent the wires through which this net is weaved. Indeed, thanks to links, websites interrelate to one another making it possible for users to gather, with a simple click, information scattered around several locations on the web. Moreover, linking has become today a crucial tool for the provision of old as well as new services. Think about search engines of all kinds whose functioning is based on links leading users to the webpages containing information that matches the keywords inserted in the query. Last but not least, linking has become an ordinary communication practice in social platforms where users post all kinds of digital content they wish to share with friends through the technique of so-called “inline” links.
While the crucial role of linking within the structure and functioning of the internet is beyond doubt, linking practices have immediately attracted lawyers’ attention for their intrinsic capability of infringing third parties’ intellectual property rights of various kinds. As far as copyright is concerned, linking may present liability issues in several instances. On the one hand, liability could be found when the link itself is infringing: for example, when the link (i.e. the pointer) contains a set of words that together can be protected by copyright (for example, headline news) or when the pointer is represented by a clickable thumbnail image protected by copyright. On the other hand, liability issues may arise when the link is used as an instrument to point users to certain digital content which has not been released on the web with the author’s consent or it has not been released by the author at all.
For the purpose of this paper, we will restrict this analysis to the question of whether the act of hyperlinking can amount to a direct infringement of copyright on the internet, specifically by violating the making available right introduced by Art. 3 of the Information Society Directive, a question recently referred to the Court of Justice of the EU by several national judges. The answer to this question is of paramount importance to the development of new online services for the benefit of internauts, but also to the protection of the freedom of expression which has always characterized the internet as we know it today.
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Notes
In antitrust parlance, the term essential facility refers to a tangible or intangible asset, or infrastructure to which access is essential in order to compete in (hence, have access to) a certain market. Despite its north-American origin, the doctrine has been harshly criticized by American scholars. The most relevant critiques come from Areeda (1990). Broadly on the subject, see Cotter (2010). For a comparative analysis of the American vis-à-vis European application of such doctrine, see Stratakis (2006); with specific regard to a different application of the doctrine to intangible facilities on the two sides of the Atlantic, see Arezzo (2006).
See Dogan (2002), at 837.
On the specific role of hyperlinks in the construction of a hypertext, see Musso (1998), at 215 ff.
Generally, on the functioning of the web and HTML, see Cerina (1999).
As we will see, search engines and their linking activity have been subject to several infringement actions. See infra at 5.
In fact, social networking sites are specifically built to allow users to share content online. On this subject, see Nordemann (2011), at 500.
On this specific kind of linking technique, see infra in the following paragraph.
Strowel and Hanley (2009), at 72.
For a detailed technical explanation of the functioning of hypertext markup language, see Strowel and Ide (2000–2001), at 405.
Strowel and Ide (2000–2001), at 406.
Tosi (2002), at 382.
Hilberg (2002), at 1.
A similar distinction has been drawn by A. Cruquenaire who distinguishes between “invoke-to-load” links and “auto-load” links, where the first kind of links requires direct action by the user (who has to click on the link), while the second runs automatically with no need of intervention by the user and without him noticing the linking. See Cruquenaire (2001), at 330.
From a technical point of view, inline linking allows a webmaster to insert certain content without making a reproduction of such material, since a copy is only made in permanent form on the server where the information was originally stored and a temporary reproduction is made on the user’s browser once he loads the website embedding the linked content. See Strowel and Hanley (2009), at 73.
On the specific theme of trademark infringement, see Bond (1998), at 202 ff.
See infra the cases examined at 5.1 and 5.2.
More broadly on the subject, see Musso (1998), at 248 ff.
Cantwell (2002), at 880.
In this regard, it is interesting to compare the judgment of the Munich District Court (Landgericht München), 10 January 2007, 21 O 20028/05 (Nutzung eines Werks im Internet mittels Framing), a case of inline linking regarding an image embedded in such a way that users could not identify its actual origin, where the court ruled in favour of a violation of the making available right, with the judgment of the Austrian Supreme Court (Oberster Gerichtshof, OGH), 17 December 2002, 4 Ob 248/02b (MeteoData), where, conversely, the linking page showed a clear copyright notice with the origin of the inline image and the Court ruled against finding infringement. The cases have been briefly commented on by Peguera (2012), at 175.
See infra the cases discussed at 5.
In this sense see, for example, the Italian case Coolstreaming, Italian Supreme Court, Third Criminal Chamber, 4 July 2006, No. 33945, where the Court found direct copyright infringement not only for the unauthorized uploading on the web of protected material, but also for third parties’ conduct aimed at facilitating the enjoyment of such works. More specifically, the Court found unlawful the linking activity performed by two web managers who made available on their web portals electronic connections leading to Chinese broadcasts of Italian league football matches, in violation of SKY Italia transmission rights. Similarly see the judgment of the England and Wales High Court, Dramatico Entertainment Ltd and others v. British Sky Broadcasting Ltd and others (2012) 268 (Chancery Division), where Mr. Justice Richard Arnold ruled that both users and operators of the famous website “The Pirate Bay” infringed copyright: the former for having uploaded protected works; the latter because they “induce, incite or persuade its users to commit infringements of copyright”.
Spanish Supreme Court, 3 April 2012, Megakini.com v. Google Spain, No. 172/2012. The text of the judgment is available at http://pdfs.wke.es/8/6/1/5/pd0000078615.pdf (in Spanish). The case involved the Google search engine and the owner of a website providing online betting services, who contested the alleged unlawfulness of (1) Google’s acts of reproduction and display – right below the links shown in response to the user’s query – of short excerpts of text (so-called “snippets”) taken from his website, and (2) Google’s making and displaying of cached pages throughout its so-called “cached links” (i.e. links leading users to the copy of the original page saved by Google’s robots when crawling the web), arguing that they amounted to an infringement of both his reproduction and making available rights.
In favour of a theorization of a freedom to link because it represents a “normal use” of the web which is not capable of causing economic prejudice to the owner of the linked site, see A. Musso, “Ipertesti e thesauri nella disciplina del diritto d’autore”, supra note 17, at 239 ff. The author argues for the superiority of such theorization over the implied licence doctrine (which will be discussed at length infra at 4.2), as the former would succeed in overturning defences based on disclaimers often displayed on internet websites intended at preventing linking.
Spanish Supreme Court, 3 April 2012, Megakini.com v. Google Spain, No. 172/2012, supra note 22, point 5.5. Extensively interpreting the three-step test, the Court held that tribunals should always assess whether the alleged copyright infringement actually causes harm to the legitimate interests of the rightholder and/or is likely to hamper the normal exploitation of his creation, or rather whether the claim is only a pretext and the conduct benefits, rather than damages, the rightholder’s interest in a broader dissemination of his work. Broadly on this case, see Arezzo (2014).
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society (hereinafter: “Information Society Directive”), OJ L 167/11 (22 June 2001).
See reference for a preliminary ruling from the Swedish Court of Appeal (Svea hovrätt) lodged on 18 October 2012 – Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v. Retreiver Sverige AB, case C-466/12, OJ C 379/31 (8 December 2012). The case regarded a controversy between a journalist (whose articles had been published in both the printed and online versions of a newspaper) and a company, named Retriever Sverige AB, which provided to customers logging into its website, among other things, a news search engine releasing links matching the users’ requests. The defendant claimed that the provision of links to its customers did not infringe Svensson’s right of communication to the public nor any other form of making available because the activation of the link caused the opening of a new window containing the desired content, while it never stored unauthorized copies of the content on its own website.
See request for a preliminary ruling from the Swedish Supreme Court (Högsta domstolen) lodged on 22 May 2013 – C More Entertainment AB v. Linus Sandberg, case C-279/13, unreported.
See Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v. Retreiver Sverige AB, case C-466/12, supra note 26, at para. 3.
On the specific sub-theme of embedded links, a third preliminary ruling has been referred to the Court of Justice of the European Union in the case BestWater International GmbH v. Michael Mebes, Stefan Potsch. Here the German Supreme Court (Bundesgerichtshof) asked the CJEU whether the embedding, within one’s own website, of another person’s work made available to the public on a third-party website may constitute an act of communication to the public pursuant to Art. 3(1) of Directive 2001/29/EC. See request for a preliminary ruling from the German Supreme Court lodged on 25 June 2013 – BestWater International GmbH v. Michael Mebes, Stefan Potsch, case C-348/13, unreported. The case has been stayed pending Svensson.
See C More Entertainment AB v. Linus Sandberg, case C-279/13, supra. In this case the copyright content was broadcast by satellite or cable TV whose access was restricted only to subscribers of the service.
As vividly pointed out by M. Ricolfi, the circulation of works on the internet without their tangible support and the possibility of easily and quickly making copies qualitatively identical to the originals has the effect of turning each single web-surfer into a potential copyright infringer. See Ricolfi (2000), at 445 ff. Along the same lines, see also Lemley and Reese (2004) and Auteri (2006), at 35.
For a critical assessment of the Directive’s provisions, see Dusollier (2005).
Goldstein and Hugenholtz (2013), at 335 ff.
See recital 25 of the Information Society Directive.
See WIPO Copyright Treaty (“WCT”) adopted by the Diplomatic Conference in Geneva on 20 December 1996, Art. 8. It is interesting to point out that the parallel Treaty signed in Geneva (the WIPO Performers and Phonograms Treaty) has shaped a different architecture of rights as the expression “make available” pertains, on the one hand, to the distribution right (contained in Arts. 8 and 12) and, on the other, it has formed an autonomous exclusive right (Arts. 10 and 14). Only the latter feature has been followed by European legislators who have only created an autonomous making available right for holders of neighbouring rights. See Art. 3(2) of the Information Society Directive.
Goldstein and Hugenholtz (2013), at 336.
As explained in recital 24 of the Directive, the making available right should be understood as covering all acts of making available protected subject-matter “to members of the public not present at the place where the act of making available originates”.
The coincidence between the concept of communication and transmission has been endorsed by the jurisprudence of the European Court of Justice which has explained that the scope of the right of communication to the public must be construed broadly (Sociedad General de Autores y Editores de España (SGAE) v. Rafael Hoteles SA, judgment of the Court, Third Chamber, 7 December 2006, case C-306/05, 2006 ECR I-11543, at 36), in such a way as to encompass “any transmission of the protected works, regardless of the technical means or process used”. See Football Association Premier League Ltd. (FAPL) v. QC Leisure and Karen Murphy v. Media Protection Services Ltd., judgment of the Court, Grand Chamber, 4 October 2011, joined cases C-403/08 and C-429/08, 2011 ECR I-09083, at 193. The Court found support for its interpretation directly in the statutory provisions of the Directive where it is stated that the right of communication to the public “should be understood in a broad sense covering all communication to the public not present at the place where the communication originates” and “this right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting”. See recital 23 of the Information Society Directive.
In this sense, Musso (2008), at 249 ff.
A further confirmation of the coincidence of the two terms can be found in the preparatory documents for the WCT where it was explained that the signatories of the Treaty chose to keep the term “communication” (instead of “transmission”) simply because it was used in all relevant provisions of the Berne Convention, however, “as communication always involves transmission, the term ‘transmission’ could have been chosen as the key term to describe the relevant act”. See “Records of the diplomatic conference on certain copyright and neighbouring right questions” 206 (vol. 1, Geneva 1996). See also Ricketson and Ginsburg (2006).
This distinction is important because certain legal traditions, such as in Italy, France and Germany, used to refer to a broad common category of the right of communication to the public comprising both direct forms of communication (to a public that is present in the place where the communication takes place) and indirect kinds of communication, intended to cover acts of transmission of the work to a distant public. In this sense, see Ohly (2009), at 224–225, Auteri (2012).
In this sense, see Ricolfi (2002), at 59, 61, further explaining that the core feature common to the different kinds of communication to the public is given by the circumstance that the work is potentially receivable by users. In a similar sense, see Association Littéraire et Artistique Internationale (ALAI), “Report and opinion on the making available and communication to the public in the Internet environment – focus on linking techniques on the Internet”, available at http://www.alai.org/en/assets/files/resolutions/making-available-right-report-opinion.pdf. Point (i), where it is further specified that the making available right covers all kinds of on-demand access “whether or not the access results in a retention copy”.
See SGAE v. Rafael Hoteles where the European Court of Justice stated that “for there to be communication to the public it is sufficient that the work is made available to the public in such a way that the persons forming that public may access it. Therefore, it is not decisive […] that customers who have not switched on the television have not actually had access to the works” (italics added). See SGAE v. Rafael Hoteles, supra, at paras, 42–43. The case involved the unauthorized transmission of TV signals in hotel rooms (through installation of TV sets) and unauthorized playing of ambient music within social spaces of the hotel by Rafael Hoteles.
See Mediakabel BV v. Commissariaat voor de Media, judgment of the Court, Third Chamber, 2 June 2005, case C-89/04, 2005 ECR I-4891, para. 30; Lagardère Active Broadcast v. Société pur la Perception de la remuneration Équitable (SPRE) and Gesellschaft zur Verwertung von Eistungsschutzrechten MBH (GVL), judgment of the Court, Third Chamber, case C-192/04, 2005 ECR I-07199, para. 31.
In this sense, see Guglielmetti 2010, at 151 ff., explaining that the act of making available takes place at the precise moment the public is put in the position of accessing the work, regardless of whether one or more people have actually accessed it; and Goldstein and Hugenholtz (2013), at 336, explaining that the right applies regardless of whether and how often the work is actually accessed. In a similar sense, see ALAI opinion where, interpreting the making available right contained in Art. 8 WCT, it is explained that what is crucial is the offering to the public of the work for individualized streaming or downloading, regardless of whether the streaming or downloading has actually taken place. See ALAI, “Report and opinion on the making available and communication to the public in the Internet environment – focus on linking techniques on the Internet”, supra note 42, point (i). For a contrary view, however, see the position expressed by the European Copyright Society, “Opinion on the reference to the CJEU in case C-466/12 Svensson”, available at http://www.ivir.nl/news/European_Copyright_Society_Opinion_on_Svensson.pdf, paras. 25–26, claiming that such construction of the right risks turning the communication to the public right into an access right.
See Ercolani (2004), at 148 ff.
See supra at 3.1.
In this sense, Musso (2008), at 249.
See ITV Broadcasting Limited and others v. TVCatchup Limited, judgment of the Court, Fourth Chamber, 7 March 2013, case C-607/11, OJ C-123/6 (27 April 2013) (request for a preliminary ruling from the High Court of Justice (Chancery Division), United Kingdom), paras. 34–36, where the Court held that “it is irrelevant whether the potential recipients access the communicated works through a one-to-one connection. That technique does not prevent a large number of persons having access to the same work at the same time”.
See Mediakabel v. Commissariaat voor de Media, supra note 44, para. 30; Lagardère Active Broadcast v. SPRE and GLV, supra note 44, para. 31; SGAE v. Rafael Hoteles, supra note 38, paras. 37–38; Società Consortile Fonografici (SCF) v. Marco Del Corso, judgment of the Court, Third Chamber, 15 March 2012, case C-135/10, OJ C-133/3 (5 May 2012), para. 84.
SGAE v. Rafael Hoteles, supra note 38, para. 39.
SCF v. Marco Del Corso, supra note 51, para. 87.
SGAE v. Rafael Hoteles, supra note 38, paras. 40–43.
FAPL v. QC Leisure and Karen Murphy v. Media Protection Services Ltd, supra note 38, para. 197. Similarly see Airfield NV and Canal Digitaal BV v. Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (Sabam) (C-431/09) and Airfield NV v. Agicoa Belgium BVBA, judgment of the Court, Third Chamber, 13 October 2011, joined cases C-431/09 and C-432/09, 2011 ECR I-09363, para. 76.
See Art. 11bis(1)(i) of the Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886, as last amended on 28 September 1979.
See SGAE v. Rafael Hoteles, supra note 38, para. 41.
Indeed, according to the Court, the broadcast of TV programs in hotel rooms and common spaces contributed to improving the service provided by the hotel owner to his customers. The Court of Justice adopted an analogous reasoning in the aforementioned FAPL case where, following SGAE, it found that the public showing in a bar of football matches through the use of a TV receiver and a licence acquired for private purposes (the licence and TV equipment bought at a lower price from a different Member State) amounted to an unauthorized act of communication to the public. See FAPL v. QC Leisure and Karen Murphy v. Media Protection Services Ltd, supra note 38, paras. 195–200.
TVcatchup indeed used to transmit the programmes in streaming mode, restricting access only to people located in the United Kingdom and holding a TV licence to watch such shows. For a detailed analysis of this case, see Colangelo (2013), at 367.
In this case the Court pointed out that “the situations examined in the cases which gave rise to the abovementioned judgments [i.e. referring to the circumstances underlying the cases SGAE, FAPL and Airfield and Canal Digitaal, where the Court elaborated the ‘new public’ concept] differ clearly from the situation at issue in the case in the main proceedings. In those cases, the Court examined situations in which an operator had made accessible, by its deliberate intervention, a broadcast containing protected works to a new public which was not considered by the authors concerned when they authorised the broadcast in question. By contrast, the main proceedings in the present case concern the transmission of works included in a terrestrial broadcast and the making available of those works over the internet. […] each of those two transmissions must be authorised individually and separately by the authors concerned given that each is made under specific technical conditions, using a different means of transmission for the protected works, and each is intended for a public. In those circumstances, it is no longer necessary to examine below the requirement that there must be a new public, which is relevant only in the situations on which the Court of Justice had to rule in the cases giving rise to the judgments in SGAE, Football Association Premier League and others and Airfield and Canal Digitaal”. See ITV Broadcasting Limited and others v. TVCatchup Limited, case C-607/11, supra note 50, paras. 38–39.
See ITV Broadcasting Limited and others v. TVCatchup Limited, case C-607/11, supra note 50, para. 24. This point is also shared by academic scholars. See, ex multis, Ricolfi (2002), at 62–63.
See infra at 5.1.
See Art. 3(3) of the Information Society Directive.
The Information Society Directive provides a very broad definition of the term “technological protection measure” defined as any technology, device or component aimed at impeding or limiting acts not authorized by rightholders [see Art. 6(3)]. The language of the Directive makes clear that protection extends to both measures controlling mere access to the protected work and measures preventing copying. On the different kinds of TPMs, see Dusollier (1999).
See in this sense also the recent judgment of the European Court of Justice in the case ITV Broadcasting v. TVCatchup where the Court explained that “it is apparent from Article 3(3) of that directive that authorising the inclusion of protected works in a communication to the public does not exhaust the right to authorise or prohibit other communications of those works to the public”. See ITV Broadcasting Limited and others v. TVCatchup Limited, case C-607/11, supra note 50, para. 23.
Ercolani (2004), at 151, 182–183, referring to recital 29 of the Information Society Directive which, regarding the provision of online services, explains that the principle of exhaustion does not also apply to the material copies of a work or other subject matter made by the user of an online service without the rightholder’s consent. In the same sense, see, more recently, Bertani (2011), at 241.
The inapplicability of the principle of exhaustion to the making available right has been criticized by several scholars because it provides an imbalance not only between the circulation regime of works in digital and analogue form, but because it discriminates even between the treatment of works in digital form, as it applies only to works distributed on the internet, and not to those eventually saved on tangible mediums (such as DVDs, CDs, etc.). In this sense, see Montagnani (2012), at 91 ff. A similar compression of the north-American “first sale doctrine” in the digital environment has been lamented, for analogous reasons, by Perzanowski and Schultz (2010–2011).
According to recital 53: “The protection of technological measures should ensure a secure environment for the provision of interactive on-demand services, in such a way that members of the public may access works or other subject-matter from a place and at a time individually chosen by them”.
Because the presence of technical measures constrains users’ ability to fully enjoy the intellectual work, the Directive has tried to strike a balance between the interests of rightholders and consumers. To that purpose, it has placed a duty on the former to provide consumers entitled to benefit from an exception or limitation with the means necessary to benefit from such limitations. If rightholders fail to take such action, the duty shifts to Member States which shall take appropriate measures to make sure that consumers benefit from the copyright exception. Such duty, however, is not envisaged for all exceptions and limitations but only for those expressly listed in Art. 6(4) and a further condition is that such exceptions have been implemented into national laws. Broadly on the subject, Arezzo (2007), at 453 ff.
Trying to circumscribe the breadth of this provision, T. Vinje has proposed interpreting the wording “works or other subject-matter made available to the public on agreed contractual terms in such a way that members of the public may access them from a place and at a time individually chosen by them” [Art. 6(4) fourth sentence] as referring only to content made available by streaming technologies whereby users would access and experience the work without downloading it onto a hardware device. Although this interpretation would be absolutely appropriate in that it would strike a reasonable balance between different methods of experiencing copyright content, there seem to be no insights in the Directive or its recitals that might confirm such a reading. See Vinje (2000).
Several authors have expressed critical opinions on the provisions concerning TPMs introduced by the Directive, arguing that they would indirectly aim at controlling access to protected works. In this sense, see, inter alia, Heide (2001), Vinje (2000), Burk (2003) (with regard to similar provisions contained in the US DMCA); Ricolfi (2001), at 132 ff., arguing that the EU legislature has compelled Member States to adopt a complex legislative framework which would permit rightholders to combat any third party’s action aimed at annulling their technological control over copyrighted works.
See judgment of the Court (Fourth Chamber) of 13 February 2014, Nils Svensson and others v. Retriever Sverige AB, case C-466/12, reference for a preliminary ruling: Swedish Court of Appeal, unreported.
Judgment of the Court, Nils Svensson and others v. Retriever Sverige AB, case C-466/12, supra note 26, paras. 19–20.
In this case the search engine used to provide users with hyperlinks leading to articles whose content matched the keywords inserted in the search engine’s window. In doing this, the search engine bypassed the news website’s homepage, directing users straight to the second page containing the news (so-called “deep linking”). The news aggregator was sued by the German publisher of a business magazine (running both an analogue and a digital online version) for copyright infringement under several headings related mostly to the linking activity performed by Paperboy. See Paperboy, case I ZR 259/00, 17 July 2003, 35 IIC 1097 (2004).
For an illustration of how news aggregators work, see Isbell (2010).
See Paperboy, case I ZR 259/00, supra note 76, para. 42.
Paperboy, case I ZR 259/00, supra note 76, para. 43. Please note, however, that this case did not involve a caching function normally performed by search engines. As will be shown below (see infra at 5.4), the provision of cached links may turn out to be quite problematic. In a similar sense, see the Canadian case Crookes v. Newton, 2011 SCC (Supreme Court of Canada), 47 SCR 269 (2011), at paras. 26–30, explaining that the act of linking does not imply the transmission of the work, which is the sine qua non of the right of communication to the public.
See Napster.no, decision of the Supreme Court of January 2005, TONO et al . v. Bruvik, 37 IIC 120, at 121 (2006), para. 48. The Court, however, held such an activity to amount to a contributory infringement of copyright.
Napster.no, decision of the Supreme Court of January 2005, TONO et al . v. Bruvik, supra note 80, para. 46. The fact that these courts have excluded liability for copyright infringement in the form of violation of the right to communication to the public or the making available right does not mean that they all exclude that linking may raise different kinds of liability issues. Like the Supreme Court of Norway (see Napster.no, 37 IIC 120 (2006), supra note 80, paras. 63–73), several lower courts of European Member States have indeed found – when the linked website contained unlawfully uploaded material or other links allowing the unauthorized downloading of copyright material – the person/entity providing links responsible for contributory infringement of copyright law. See Rome District Court (Tribunale di Roma), Intell. Prop. Chamber, 2 July 2010, Warner Chappel Music Italiana s.r.l., Warner Bros Music Italy s.r.l., Edizioni Chappel s.r.l., Fonit Cetra Music Publishing s.r.l. v. One Italia s.p.a., 2011 AIDA, Annali italiani di diritto d’autore 779, with a comment by Sappa. Similarly see Rome District Court, Intell. Prop. Chamber, 22 March 2011, injunction order, PFA Films s.r.l. v. Yahoo Italia s.r.l., 7 Danno e Responsabilità 753 (2011).
Judgment of the Court, Nils Svensson and Others v. Retriever Sverige AB, case C-466/12, supra note 26, para. 24.
See supra note 38, para. 3.2.
Judgment of the Court, Nils Svensson and Others v. Retriever Sverige AB, case C-466/12, supra note 26, paras. 25–26.
For an in-depth analysis of the jurisprudence on the implied licence doctrine, see Arezzo (2014).
The case involved, on the one hand, Google’s image search engine and, on the other, a German artist who displayed samples of her work on her website and claimed she did not want her artistic work to be indexed by Google and displayed, in the form of thumbnail images, as search results following users’ queries. The original text of the decision, together with a summary in English is available in Zimbehl (2010), at 190, para. 1.
Thumbnail images (in German: Vorschaubilder) are downscaled pictures derived from the original file (hence, with a smaller pixel size). Google’s image search function allows web-users to search image files by inserting search terms. Thumbnails are nothing more than search result links (but in image form) which allow the user to find the image he is looking for and then be directed, by clicking on it, to the website containing the full-scale image.
Please note that the finding of infringement of the making available right was highly influenced in this case by the circumstance that Google not only provided links, in the form of thumbnail images, but its search robots, in order to make the search quicker, also stored the original images on its servers, made thumbnail copies from the original files, and then made the latter available on the internet at the time and place chosen by the users.
It is worth noting that the Court drew a distinction between the concept of implied licence and that of implied consent. According to the Supreme Court, the concept of implied licence, which had earlier been accepted by the lower court, could not be embraced as licensing as a disposition of a right in rem and this, in the Court’s point of view, requires showing an objective intention of the copyright holder to license the use of the work. Such intention could not be inferred from the mere act of uploading certain copyright content on a website. On the contrary, such conduct was sufficient to infer an exculpatory consent which, according to the Court, would be sensibly different from an implied licence because it does not grant third parties an enforceable title or contract but only provides justification for the single (unauthorized) use performed. More broadly, see Arezzo (2014).
On the functioning of web crawlers, see Garje (2012).
More extensively on the subject, see Leistner (2011), at 428–430.
See Cruquenaire (2001), at 335 ff. The author recognizes that the acceptance of such doctrine might lead to the extreme consequence that authors would be obliged to use all the technical means available in order to preserve their rights on the internet. Nonetheless, in consideration of the specific role performed by search engines, he calls for a mediation of interests among service providers and copyright holders and looks with interest at the US model where the DMCA provides a safe harbour for internet service location tools (but only for contributory liability).
According to some authors, this reasoning could be valid particularly in the context of news aggregator services where the online journal has not made use of any exclusion protocol to avoid linking. See Strowel and Hanley (2009), at 87–88. Some other authors seem to imply that the doctrine might be more easily applied in instances where the linking activity can happen only if there is an active action on the part of the content-owner. This is the case, for example, of services based on RSS techniques where linking is possible only if the rightholder has put RSS feeds on his webpage. See Pihlajarinne (2012), at 703.
The Court ruled that in the specific circumstances of the Svensson case the linking activity did not reach a different public from the one initially targeted by the rightholder when she authorized the first act of making available, therefore the conduct could not amount to an infringement of the making available right. See judgment of the Court, Nils Svensson and others v. Retriever Sverige AB, case C-466/12, supra note 26, para. 28.
Judgment of the Court, Nils Svensson and others v. Retriever Sverige AB, case C-466/12, supra note 26, para. 27.
Judgment of the Court, Nils Svensson and others v. Retriever Sverige AB, case C-466/12, supra note 26, para. 31.
This conclusion, indeed, had already been put forward in 2002 by Professor Marco Ricolfi. See Ricolfi (2002), at 77–78.
See Art. 6(1) of the Information Society Directive. Protection against circumvention is, however, on condition that “the person concerned carries out [the circumvention] in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective”.
Please note that even in this specific case the Court affirmed that the provision of the link amounts to an act of communication, but it is not infringing because the “new public” element is not satisfied. See judgment of the Court, Nils Svensson and Others v. Retriever Sverige AB, case C-466/12, supra note 26, paras. 29–30.
See European Copyright Society, “Opinion on the reference to the CJEU in case C-466/12 Svensson”, supra note 45, paras. 53–55. For a contrary view: Cruquenaire (2001), at 330 (who deems it crucial to focus on the kind of technique used in order to properly assess copyright infringement); and ALAI, “Report and Opinion on the making available and communication to the public in the Internet environment – focus on linking techniques on the Internet”, supra note 42, point (iv), lit. (b), maintaining that more intrusive technologies, such as framing and embedding, may well raise issues of direct copyright infringement.
In this sense, Pihlajarinne (2012), at 706, explaining that linking activity performed by most internet users, which is of fundamental value for the social interaction and exchange of information on social media, takes the form of embedded linking, which according to a technical-based approach, would be the most detrimental.
See supra at 1.
For a contrary view, see Paperboy, case I ZR 259/00, supra note 76, para. 42, where the German Federal Supreme Court, as further proof of its theory that linking is only a reference to an online location of a protected work (which has indeed been uploaded by someone else), explained that if the material is removed after a while, the link will not work.
Idem, last sentence of the paragraph.
See judgment of the Court, Nils Svensson and Others v. Retriever Sverige AB, case C-466/12, supra note 26, para. 31, last sentence.
Vorschaubilder II, German Supreme Court, I ZR 140/10, 19 October 2011. The case is summarized by Clark (2012).
In the reasoning of the Court, since the latter had agreed to the storing of his copyright photographs on a certain website and had not objected to the circumstance that the website owner did not adopt any technical protection measures to prevent linking, he could not further complain about Google’s indexing and displaying of thumbnail images, even if they were taken from a derivative unauthorized source (in contrast, he could certainly sue the unauthorized website owner for copyright infringement for having stored the content on its website and then made it available to the public without authorization by the rightholder).
In Vorschaubilder II, the German Supreme Court applied the implied licence doctrine on the assumption that search engines are not capable of distinguishing between images that have been lawfully or unlawfully uploaded on the internet; the implied consent to crawl and link materials contained on the authorized website automatically extended to the same content unlawfully exported to other online locations. More extensively, see Arezzo (2014).
The German Copyright Law (Urheberrechtsgesetz) has recently been amended to introduce new sections (new Art. 87f–87h) which will grant press publishers an exclusive neighbouring right to commercially exploit their content. The right, which will last 1 year, will prevent search engines – and in particular news aggregators – from displaying news excerpts without a licence from publishers. See Bundesgesetzblatt No. 23 (14 May 2013), available at http://www1.bgbl.de/. On the subject, see the editorial by Rosati (2013).
Recently, the Italian Government has approved a legislative package, informally called “Destinazione Italia”, linked to the annual financial law (2014), composed of a law decree (L.D. 23 December, No. 145, named “Interventi urgenti di avvio del piano ‘Destinazione Italia’ per il contenimento delle tariffe elettriche e del gas, per la riduzione dei premi RC-auto, per l’internazionalizzazione, lo sviluppo e la digitalizzazione delle imprese, nonché misure per la realizzazione di opere pubbliche ed EXPO 2015”, published in Italian O.J. 23 December 2013, No. 300) and a draft law (still unpublished). The legislative package aims at introducing, among other things, a set of measures to protect news publishers by an increase of copyright protection of journalistic articles and content. More specifically, the law decree establishes that once copyright is expressly claimed for certain journalistic content, each act of exploitation of the work, including acts of aggregation or indexation, is subject to the condition that an agreement must be found between rightholders and the user (literally “l’utilizzatore”).
For a different approach, however, see the Irish Copyright Committee in the aforementioned report for the modernization of Irish Copyright Law where it is recommended that the legislature clarify that “the act of providing a ‘link’ to news articles does not infringe copyright on the basis that the link conveys that an article exists but does not, of itself, amount to publishing, reproducing or communicating the content of the article”. See “Modernising copyright, a report prepared by the Copyright Review Committee for the Department of Jobs, Enterprise and Innovation” 174 (Dublin 2013). The report further recommends that for “marshalling activities” – such as indexing, syndication, aggregation and managing of online content – a very narrow exception be created under copyright law in order to permit the use of a very small snippet of the linked work (generally 140 characters, or 2.5 %; subject to a cap of 40 words) reasonably adjacent to the link.
See in this regard, Romano (2010), at 163 ff., noting that it is the functioning of the internet and digital technology in general that presupposes processes involving the making of several copies of the work. It is therefore the challenge of today’s legislators and lawyers to distinguish which acts of reproduction relevant from a technological point of view must be reserved to the copyright holder and which ones should remain free.
European Commission, Public Consultation on the review of the EU copyright rules, launched in December 2013, available at http://ec.europa.eu/internal_market/consultations/2013/copyright-rules/index_en.htm, section B.1.
This creates problems for the collective administration of digital works. On the subject, see Arezzo (2013), passim.
In this sense, see, once again, the European Commission, Public Consultation on the review of the EU copyright rules, supra note 114, section B.1, explaining that the Information Society Directive has left important aspects of the making available right in the shadows: for example, it has not specified what exactly it covers (e.g. the act of uploading, the accessibility by the public, and the actual reception by the public of the work).
Romano (2010), at 170.
See Ercolani (2004), at 148 ff.
In this regard, see Ricolfi (2002), at 51 ff., observing that the making available right, as introduced by the Information Society Directive, is responsible for the introduction of an incomplete regulation of (online) interactive transmissions as it fails to take into account conduct which is intrinsically linked to it, such as the preliminary and intermediate acts which precede the transmission of the work, as well as all kinds of actions that may take place once the work has been accessed (such as making unauthorized copies and storing in a permanent memory). In a similar sense, arguing that in the digital scenario it makes no sense to distinguish between the reproduction right and the communication right as they are two exclusive entities would no longer correspond to different kinds of exploitation of the work, see Mazziotti (2010–2011), at 760–761.
See the recent German case Myvideo v. CELAS (MyVideo Broadband S.R.L. v. CELAS GmbH, Munich District Court (Landgericht München), No. 7 O 4139/08 (25 June 2009)) where the court annulled the agreement between EMI Publishing and CELAS whereby the former had granted to the latter the right to administer its online reproduction rights, while the corresponding communication rights, belonging to the authors, stayed with GEMA (the German collecting society for authors). The court held that a separation of the two exclusive rights regarding the online exploitation of works was not admissible: on the one hand, because, for technical reasons, the making available right is not actionable without a simultaneous and preceding reproduction of the work; on the other, and even more interestingly, according to the court, a fragmentation of the online rights would not be admissible because an act of online reproduction without an act of making available would not amount to any form of commercial exploitation of the work. An English summary of the case is available at http://www.klgates.com/files/Publication/7f1d2609-940e-470e-a22e-23116314b599/Presentation/PublicationAttachment/b6762a28-143f-4681-9f3c-5492d20d4752/Alert_TMT_CELAS.pdf. The original German text is available at http://openjur.de/u/31093.html. More broadly on the case, see Arezzo (2013), at 103 ff.
So-called cached pages are “temporary” in the sense that they are periodically replaced by new ones each time search engines’ robots re-check the web. However, it is worth pointing out that they may not only look slightly different from the original one at the moment of the user search, as the page may have changed since the last time web-crawlers visited it, but they also remain in the memory of the search engine’s servers should the original webpage be removed. In this latter instance, the cached copy would keep making available copyright content that the author had withdrawn from the web. See Laurent (2007).
Google Inc. v. Copiepresse, Brussels Court of Appeal (Cour d’Appel de Bruxelles, 9 ème chamber), 5 May 2011, available in English at http://www.copiepresse.be/pdf/Copiepress5mai2011.pdf, confirming in part Google Inc. v. Copiepresse, Sofam, S.A.J., S.C.A.M., Assucopie and Pressbankin, Brussels Court of First Instance (Tribunal de Première Instance de Bruxelles), 12 February 2007, No. 06/10.928/C, 38 IIC 849 (2007). For an in-depth discussion of the decision of the court of first instance, see Klein (2008).
See Google Inc. v. Copiepresse, supra note 122, para. 26.
The court referred to the recent EU jurisprudence according to which to be qualified as “transient” an act of reproduction must have a duration that is limited in time to what is necessary for the completion of the technological process “it being understood that that process must be automated so that it deletes that act automatically, without human intervention, once its function of enabling the completion of such a process has come to an end”. See Infopaq International A/S v. Danske Dagblades Forening, judgment of the Court, Fourth Chamber, 16 July 2009, OJ C 220 (12 September 2009), p. 7, para. 64.
See Google Inc. v. Copiepresse, supra note 122, para. 25. The court also excluded the possibility of exempting Google’s conduct in light of the safe harbour introduced for ISPs (in particular the exemption for “proxy caching”) by the E-Commerce Directive. See para. 9 of the judgment, in particular paras. 53–54. More extensively on this point, see S. Dusollier, arguing that when the search engine makes directly available to users the pages hosted on its cache server, the temporary reproduction of such pages “excède l’objectif de «caching» immunisé par la directive européenne sur le commerce électronique”, Dusollier (2007), at 71.
See Peguera (2012), at 188.
See Google Inc. v. Copiepresse, supra note 122, sec. 4 of the judgment, in particular para. 22.
The court drew an important distinction between normal web search engine functioning, which uses hyperlinks to lead to a certain existing webpage, and the service provided by Google News through its cache function whereby Google provides access to its archive of cached pages. Indeed, the court pointed out that the cached pages could either appear different from the ones currently shown by the publisher or could even show copyright content that the author no longer displays on his website (as often happens with regard to websites containing news and information in general). See Google Inc. v. Copiepresse, supra note 122, para. 23, sec. 4 of the judgment.
Note, however, that the Report has not excluded a likely finding of indirect liability where “the provider of the link knew or ought to have been aware that it connects with an infringing copy” (italics added). See “Modernising copyright, a report prepared by the Copyright Review Committee for the Department of Jobs, Enterprise and Innovation” 11, 52–57, 117–118 (Dublin 2013).
See “Regolamento in materia di tutela del diritto d’autore sulle reti di comunicazione elettronica e procedure attuative ai sensi del decreto legislativo 9 aprile 2003, n. 70”, available at http://www.agcom.it/default.aspx?DocID=12173, enacted on December 2013, entering into force on 31 March 2014. An unofficial English translation of the text can be found at http://www.portolano.it/wp-content/uploads/2013/12/English-translation-of-the-IT-Regulation-on-the-copyright.pdf.
The regulation has attracted harsh criticism, on the one hand, because of the alleged lack of competence of the Italian Communication Authority to legislate on digital copyright matters (see in this sense, Pirruccio (2012) at 2617 ff.; De Martin et al. (2011)) and, on the other, for the inadequacy of the remedies it envisaged (in this regard, Bertoni and Montagnani (2013) at 577 ff.).
The regulation explicitly lists: (1) “website managers”, described as information service providers (unlike those delivering mere conduit or host services, as per Directive 2000/31/EC) managing a digital space, on the internet, where digital works are stored or where hypertextual links connecting to the latter are provided; and (2) “web-page managers”, similarly described as information service providers (unlike those described above) managing, within a website, a certain space where digital works are stored or where hypertextual links connecting to the latter are provided. See Art. 1, lits. (g) and (h), of the aforementioned regulation. Note that in both cases the text of the law specifies that the measures can be applied even if the link to a protected work has been uploaded by a person other than the website or webpage manager. The regulation also lists the “uploader”, described as any natural person or legal entity that uploads digital works on an electronic communication network making them available to the public also by means of specific links or torrents or by any other linking means. See Art. 1, lit. (aa) of “Regolamento in materia di tutela del diritto d’autore sulle reti di comunicazione elettronica e procedure attuative ai sensi del decreto legislativo 9 aprile 2003, n. 70”, supra note 130.
For example, some authors have suggested that weight should be given to the circumstance that linking is performed by simple cybernauts and for mere communication purposes, such as within social platforms, or rather by a person/entity using linking in order to provide commercial services, for an economic return, to web-users. In this regard, one may take into account whether the linking activity is occasional or systematic, or the circumstance that the linked content is arranged and organized by the service provider and then presented to the user, the latter’s role being severely limited, or else whether it is the user who actively performs the search and directs the service provider to retrieve the desired material. This latter aspect might be relevant to distinguish between pure search engines and service providers which use linking techniques as means for content production, such as second generation aggregation services. Pihlajarinne (2012), at 709–710.
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Arezzo, E. Hyperlinks and Making Available Right in the European Union – What Future for the Internet After Svensson? . IIC 45, 524–555 (2014). https://doi.org/10.1007/s40319-014-0234-7
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DOI: https://doi.org/10.1007/s40319-014-0234-7