Hyperlinking: new guidance on copyright infringement | Practical Law

Hyperlinking: new guidance on copyright infringement | Practical Law

The issue of whether hyperlinking falls within the scope of copyright protection is of fundamental importance to all those who use the internet. In a recent case, Advocate General Wathelet has opined that if copyright works put online without the rights holder’s consent are freely available on the internet through third-party websites with no restricted access, hyperlinks to those works are not an infringement of copyright.

Hyperlinking: new guidance on copyright infringement

Practical Law UK Articles 9-627-0604 (Approx. 4 pages)

Hyperlinking: new guidance on copyright infringement

by Susie Middlemiss and Laura Balfour, Slaughter and May
Published on 28 Apr 2016 • European Union, United Kingdom
The issue of whether hyperlinking falls within the scope of copyright protection is of fundamental importance to all those who use the internet. In a recent case, Advocate General Wathelet has opined that if copyright works put online without the rights holder’s consent are freely available on the internet through third-party websites with no restricted access, hyperlinks to those works are not an infringement of copyright.
The issue of whether hyperlinking falls within the scope of copyright protection is of fundamental importance to all those who use the internet. Advocate General Wathelet (AG) has taken the view that if copyright works put online without the rights holder’s consent are freely available on the internet through third-party websites with no restricted access, hyperlinks to those works do not constitute an act of communication to the public under Article 3(1) of the Copyright Directive (2001/29/EC) (Article 3(1)) and are not therefore an infringement of copyright (GS Media BV v Sanoma Media Netherlands BV and others C-160/15).
The European Court of Justice (ECJ) has previously addressed the question of the legality of hyperlinks and held that the provision of clickable links is not an act of communication to the public that gives rise to a copyright infringement (Nils Svensson and Others v Retriever Sverige AB C-466/12, see News brief "Linking and framing copyright material: guidance at last"). Interestingly the AG’s analysis on the question of what constitutes an act of communication in GS Media departs from that of the ECJ in Svensson. In GS Media, the ECJ was asked to determine whether linking to content which has been placed on a website without permission is unlawful. In reaching his conclusion, the AG argued that if hyperlinks are not indispensable in making the works available, they do not amount to an act of communication of the works under Article 3(1) and it is therefore immaterial that the works are unauthorised.
If the ECJ were to follow the AG’s opinion, copyright owners will be unable to take action against those that link to freely available works even where that content is unauthorised but may have other remedies available to them.

The dispute

GS Media BV published on its GeenStijl website a hyperlink directing viewers to another website, Filefactory.com, where photographs of Britt Dekker, a Dutch television personality, were available to download. These photographs were due for publication in a 2011 issue of Playboy magazine but had been leaked online before they were published.
Sanoma Media Netherland BV, the publisher of Playboy, brought proceedings against GS Media claiming that the use of the hyperlinks on the GeenStijl website infringed copyright.

The AG’s opinion

Under Article 3(1), EU member states must 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.
ECJ case law has established that a "communication to the public" for the purposes of Article 3(1) includes two cumulative criteria:
Act of communication. The AG considered that an act of communication means in a broad sense that the communication is "made available to the public". In his opinion, hyperlinks to protected works that are freely accessible on a third-party website do not make available those works to a public. Rather, they merely make the finding of those works easier. Following Football Association Premier League Ltd and others v QC Leisure and others; Karen Murphy v Media Protection Services Ltd, a hyperlink would only be an act of communication if the intervention of the hyperlinker is vital or indispensable in order to access the works (joined cases C-403/08 and C-429/08, see News brief "Pubs, football and decoders: the end of exclusive content licences?").
In Svensson, the ECJ held that the provision of hyperlinks does "make available" a copyright work to the public and is an act of communication. Therefore, where a work was already freely available on the internet, infringement would only arise when a hyperlink made it available to a "new public". Unlike the AG in GS Media, the ECJ did not apply a test of indispensability when assessing this first criterion and instead, in the AG’s view, this test formed part of the ECJ’s assessment of whether the hyperlink made available the work to a new public.
The AG in GS Media concluded that if the photographs were freely accessible on Filefactory.com and the hyperlinks only facilitated the finding of those photographs, GS Media’s intervention could not be considered indispensable and therefore there was no act of communication. Consequently, the question of whether the copyright owner had authorised the work being placed on the other websites was immaterial.
Communication to a public. Having concluded that there was no act of communication, the AG examined the requirement of communication to a new public in the alternative. Previous case law has made it clear that this criterion, as required in Svensson, only applies where the copyright owner has authorised the initial communication to the public (Football Association Premier League; Svensson). As there was no permission in this case, the requirement of a new public was not applicable.
The AG said that even if the ECJ in GS Media were to rule that the criterion is applicable, it is clear from Svensson that, on the premise that the photographs were already freely available to the general internet public on Filefactory.com, hyperlinking to those works would not make them available to a new public and therefore would not satisfy this criterion.
The evidence, however, was unclear as to whether the photographs were in fact freely accessible on Filefactory.com (and subsequently another third-party website) or were subject to some kind of restricted access. As is clear from Svensson, if the intervention had been indispensable to making the work available, for example, by allowing internet users to circumvent access restrictions put in place on Filefactory.com, the hyperlinks would constitute acts of communication to a public requiring the consent of the copyright owner.
Motive and knowledge. The AG concluded that in the absence of an act of communication within the meaning of Article 3(1), the motives and knowledge of the hyperlinker are irrelevant.

Practical implications

If the ECJ follows the AG’s opinion, copyright owners will be prevented from taking action against website operators that post hyperlinks to freely available content, even where that content is unlicensed. The AG opined that such hyperlinks should not be within the scope of copyright protection, stressing the importance of hyperlinks in the current internet architecture, and that users (who cannot check whether the initial communication was authorised) should be free to post hyperlinks.
While this position will be welcomed by website operators and internet users generally, copyright owners will be frustrated that they are unable to take action against entities that willfully and flagrantly link to their unlicensed content and make access to this content much easier.
As the AG noted, a rights holder is not left without remedies and action against intermediaries may be more effective (see box "Remedies"). However, in practice, other remedies may be elusive. Bringing proceedings against the entity that unlawfully posted the copyright work in the first place may be difficult. As was the situation in these proceedings, the identity of that person may, in many cases, be impossible to establish.
The AG has invited the ECJ to depart from its approach in Svensson on the assessment of what constitutes an act of communication. The ECJ’s ruling in Svensson on this point was controversial and many commentators at the time questioned the ECJ’s analysis. Although the same outcome is likely to be achieved on either analysis, that is, that the act does not fall within Article 3(1), it will be interesting to see if the ECJ affirms its reasoning in Svensson when, in due course, it gives judgment in this case.
Susie Middlemiss is a partner, and Laura Balfour is a professional support lawyer, at Slaughter and May.

Remedies

Given the Advocate General’s opinion that the copyright owner is unable to sue the website operator (in this case, GS Media BV) for posting the hyperlinks, the other following options may be available to the rights holder:
  • An action against the entity that published the initial work without authorisation.
  • An injunction against intermediaries (in this case, Filefactory.com) under Article 8(3) of the Copyright Directive (2001/29/EC) and Article 11 of the Intellectual Property Rights Enforcement Directive (2004/48/EC).
  • An action under national law against intermediary websites for storing on their servers information provided by users of those websites.