EU's Court of Justice rules on the making available right

 By Emmanuel Legrand

The Court of Justice for the European Union (CJEU) has ruled that displaying links to copyrighted material required the permission from rights holders if copyright holders have adopted measures to prevent their works from being embedded on third-party websites.

  The CJEU ruling, which focuses on the interpretation of the making available right under European law, came after the Bundesgerichtshof (Germany's Federal Court of Justice) asked the European high court to determine whether framing or embedding links constituted a communication to the public. 

  The Bundesgerichtshof asked for this clarification in the case between visual arts society VG Bild-Kunst and virtual library Stiftung Preußischer Kulturbesitz (Prussian Cultural Heritage Foundation or SPK). 

Terms not reasonnable

  As part of the licensing negotiations between Bild-Kunst and SPK, the Foundation was seeking an agreement allowing it to display thumbnails of Bild-Kunst’s works on its site. Bild-Kunst's response was that licensing agreement required SPK to adopt technical measures preventing third parties from integrating the thumbnails via framing/embedding.

  VG Bild-Kunst refused to conclude with SPK a license agreement for the use of its catalogue of works unless the agreement contained a provision obliging SPK, as a licensee, to implement, when using protected work and subject matter covered by that agreement, effective technological measures to prevent the framing, by third parties, of such protected work or subject matter.

  SPK considered that such a term in the agreement was not reasonable in the light of German and European legislation relating to copyright, and brought an action before the Landgericht Berlin (Regional Court of Berlin) seeking a declaration that VG Bild‐Kunst was required to grant SPK that license without any condition forcing SPK to implement such technological measures.

Circumventing protection measures

  The action was dismissed by the Berlin Regional Court of Berlin and SPK appealed the judgment with the Kammergericht Berlin (Higher Regional Court of Berlin). The appeals court ruled that framing could not be considered a communication to the public under the law.

  VG Bild-Kunst decided then to take the case before the Federal Court of Justice. In its ruling, the CJEU wrote that the outcome of the appeal on a point of law "depends on the issue whether, contrary to what was held by the appeal court, the embedding of a work – which is available on a website, in this instance that of the DDB, with the consent of the right holder – in the website of a third party by means of framing constitutes a communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted by the right holder or imposed by him or her on a licensee."

  For the CJEU, if that were the case, "the rights of the members of VG Bild-Kunst would be affected and VG Bild-Kunst could properly subject the grant of a license to SPK to the condition that SPK undertake, in the license agreement, to implement such protection measures."

Framing needs to be authorised

  The Bundesgerichtshof was uncertain as to the response to that question, and decided to stay the proceedings and to refer the following question to the CJEU for a preliminary ruling: "Does the embedding of a work – which is available on a freely accessible website with the consent of the right holder – in the website of a third party by way of framing constitute communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted or imposed by the right holder?"

  In its ruling the CJEU noted: “Where the copyright holder has adopted, or obliged licensees to employ, measures to restrict framing so as to limit access to his or her work from websites other than that of his or her licensees, the initial act of making available on the original website and the secondary act of making available, by means of the technique of framing, constitute different communications to the public, and each such act must, consequently, be authorised by the rights holders concerned."

  On these grounds, the CJEU ruled: "Article 3(1) of 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 must be interpreted as meaning that the embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public within the meaning of that provision."

Ensure legal certainty

  Analysing the ruling, Eleanora Rosati, from law firm Bird & Bird, noted in her IP Kat blog that it was "an important one that substantially adds to the construction of the (not-always-idyllic) relationship between linking and the right of communication to the public."

  She added: “The CJEU explicitly said that consent can be only limited by adopting technological measures. This ensures legal certainty and the proper functioning of the internet."

  The matter will now return to the German court