On March 9, 2021, the Court of Justice of the European Union (“CJEU”) ruled on the request for a preliminary ruling in case C-392/19. Once again asked to take a stand on the scope of the right of communication to the public, the CJEU issued what appears to be the latest installment in a rich strand of case law on the subject, affirming that rightsholders can restrict linking by contract, imposing the adoption of technological measures.
Background and facts of the case
The question was referred by the Bundesgerichtshof (the German Federal Court of Justice) in the context of proceedings between VG Bild-Kunst (“Bild-Kunst”), a German visual arts copyright collecting society, and Stiftung Preußischer Kulturbesitz (“SPK”), a German cultural heritage foundation. SPK acts as the operator of the Deutsche Digitale Bibliothek (“DDB”), a digital library devoted to culture and knowledge that networks German cultural and scientific institutions.
The main proceedings originated from the refusal of Bild-Kunst to enter into a license agreement with SPK for the use of its catalogue of works unless such agreement contained an undertaking by SPK, as licensee, to implement effective technological measures to prevent third-party framing of the works covered by that agreement and displayed as thumbnails on the DDB website.
In fact, the DDB website (operated by SPK) contained links to digitized content (that is, the original images that ought to be licensed by Bild-Kunst) stored on the Internet portals of institutions participating in the DDB network. More specifically, the DDB website featured only thumbnails, i.e., smaller versions of the original images, as well buttons containing direct links to the websites of the institutions providing such images.
SPK believed that the undertaking that Bild-Kunst was trying to impose upon it was not reasonable in light of copyright legislation and brought an action before the Landgericht Berlin (Regional Court of Berlin, Germany) seeking a declaration that Bild‑Kunst was required to grant SPK that license without any condition requiring SPK to implement such technological measures.
First, the action was dismissed by the Landgericht Berlin (Regional Court of Berlin). SPK appealed the dismissal of the Landgericht Berlin, whose decision was invalidated in the second instance by the Kammergericht Berlin (Higher Regional Court of Berlin). Bild-Kunst appealed the dismissal of SPK’s action on a point of law: the Bundesgerichtshof (German Federal Court of Justice) pointed out that (i) pursuant to the national provision transposing Article 16 of Directive 2014/26/EU, a collecting society (such as Bild-Kunst) must grant a license to use the rights whose management is entrusted to it to anyone who so requests, on reasonable terms; (ii) it accepted that collecting societies could, exceptionally, refuse to grant such a license, provided that that refusal did not constitute an abuse of monopoly power and that overriding legitimate interests could be objected.
To weigh the interests of the parties and assess whether such an exception to the CRM Directive could apply, the German Federal Court of Justice believed it was necessary to address the issue of whether embedding a work available on a freely accessible website (such as the DDB website) with the consent of the rightsholder in a third-party website by means of framing constitutes an act of communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29/EC, if such framing sidesteps protection measures adopted by the rightsholder or imposed by the rightsholder upon the licensee. This was essentially the question referred to the CJEU in the case in question. Should the answer be in the affirmative, rightsholders would be affected, and Bild-Kunst (representing them as a collecting society) could impose upon SPK—as a condition to grant the license—an obligation to enter into an undertaking to implement such protection measures.
The reasoning of the CJEU
The aim of Article 3(1) InfoSoc Directive is to ensure that authors have the exclusive right to authorize any communication to the public of their works, including their being made available to the public in such a way that they can be accessed by users from a place and at a time that are individually chosen. So, as a rule of thumb, to be lawful such acts must occur with the consent of the author, and without it they may be prohibited.
As the CJEU noted, the case in question concerns the digital reproduction (in the form of thumbnails) of protected works (namely, images belonging to the catalogue managed by Bild-Kunst), the size of which was reduced in comparison with the original. The fact that the publication of such thumbnails on the DDB website amounted to an act of communication to the public by SPK was not disputed by the parties. What was disputed, however, was whether the framing of these thumbnails on third-party websites could constitute communication to the public, as SPK refused to implement technical measures to prevent it. This question needed to be answered in order to ascertain the legitimacy of the undertaking that the collecting society was trying to impose upon the licensee.
In this context, before getting into the details of the matter referred, the CJEU once again pointed to the recitals of the InfoSoc Directive and reiterated its main objectives. According to recital 23, the notion of communication to the public shall be understood as “in a broad sense, covering all communication to the public not present at the place where the communication originates and, thus, any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting.” Such broad interpretation is of essence to establish the “high level of protection” of copyright and related rights sought by the InfoSoc Directive (recital 9). The broad reach of the rights granted under Article 3(1) is strengthened by the express exclusion of the so-called “principle of exhaustion” when it comes to communication to the public, meaning that any such act shall be authorized by the rightsholder (Article 3(3)).
Having set the scene, the CJEU goes on to analyze the conditions (as developed in its past case-law, widely and resourcefully cited in the decision) needed for an act to constitute “communication to the public”: first, the act must be carried out by a user in full knowledge of the consequences of what he or she is doing, thereby giving access to a protected work; secondly, such protected work must be communicated to a public, meaning that the communication should be targeted to an indeterminate number of potential recipients and involve a fairly large number of people. Further, the protected work must be communicated either using different technical means from those previously used or to a new audience, i.e., an audience that was not already taken into account by the copyright holder when the initial communication to the public was authorized. The assessment of these conditions shall be carried out on a case-by-case basis, as specified by the CJEU.
The CJEU has previously had occasion to rule on the technique known as framing (i.e., the posting of content in a clickable or embedded link placed and shown in a “frame” within a web page, though it comes from another web page, hiding the environment where the content was originally uploaded). In one of the leading cases on the subject, the court ruled that framing constitutes an act of communication to the public insofar as it makes the posted content available to all potential users of that website.
However, when the technical means used on the “framing” web page are the same as those used for upload to the web page being “framed”—such as the Internet—though a communication does take place, that act would not be directed at a “new public,” as it is available to Internet users in general. In this scenario, given that one of the conditions cited above for application of Article 3(1) InfoSoc Directive does not exist, framing would not need to be authorized by the copyright holder.
The past decisions of the CJEU on framing had been rendered under the assumption that access to the protected works originally made available on the “framed” web page was not subject to restrictive measures. That is why, in those instances, the court reasoned that the rightsholders had considered all Internet users the public to which they were giving free access to their works from the very beginning. This is the case whenever an author provides prior, explicit, and unqualified authorization to publish their work on a website that does not use technological measures restricting access to such work (e.g., paywalls).
The opposite conclusion should be reached for rightsholders who subject the publication of their work to restrictive measures in the first place, as in the event of a clickable link allowing users of the “framing” website to sidestep the restrictions put in place on the “framed” website (where the protected work was originally published, e.g., to subscribers only). In this case, the public reached by means of the framing activity would be new, and the act of communication would therefore need to be authorized by the copyright holder.
In the case in question, Bild-Kunst intended to limit the public that could be given access to the images belonging to its catalogue by including a contractual undertaking in the license agreement with SPK, under which the latter would then be required to implement technical measures to prevent third-party framing. This way, the copyright holders (here represented by Bild-Kunst as a collecting society) were not consenting to make their works freely accessible to anyone. Rather, they expressed their clear intention to the contrary—that is to say that they intended to provide qualified authorization to communicate those works exclusive of the users of the DDB website operated by SPK. The requested undertaking, the court held, is needed to ensure legal certainty and the smooth functioning of the Internet, since copyright holders cannot be allowed to limit their consent by means other than effective technological measures, under the meaning of Article 6(1) and (3) InfoSoc Directive.
As stated by AG Szpunar in his opinion, the public that was taken into account by Bild-Kunst when authorizing the communication of its works excluded the users of any third-party website on which the work could subsequently be framed without the authorization of the copyright holders, or other Internet users. In these circumstances, the court concluded that the embedding (by means of framing) in a third-party website of a work protected by copyright amounts to communication the public within the meaning of Article 3(1) InfoSoc Directive. Indeed, the public reached by this act is a “new public”, separate from the one that the copyright holders wished to authorize: disregarding their intention to control future framing of their work would conflict with the prohibition of exhaustion of the right under Article 3(3) of the InfoSoc Directive.
 Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market (“CRM Directive”).
 Directive 200 1/29/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 (“InfoSoc Directive”).
 CJEU, judgment of 2 April 2020, Stim and SAMI, C‑753/18, paragraph 32 and the case-law cited; CJEU, judgment of 28 October 2020, BY (Photographic evidence), C‑637/19, paragraph 23 and the case‑law cited.
 CJEU, judgment of 19 December 2019, Nederlands Uitgeversverbond and Groep Algemene Uitgevers, C‑263/18, paragraph 66 and the case-law cited.
 CJEU, judgment of 29 November 2017, VCAST, C‑265/16, paragraph 45 and the case-law cited.
 CJEU, judgment of 19 December 2019, Nederlands Uitgeversverbond and Groep Algemene Uitgevers, C‑263/18, paragraph 70 and the case-law cited.
 CJEU, judgment of 14 June 2017, Stichting Brein, C‑527/15, paragraph 23 and the case-law cited.
 CJEU, judgment of 13 February 2014, Svensson and Others, C‑466/12, paragraphs 20, 22 and 23.
 CJEU, Judgment of 13 February 2014, Svensson and Others, C‑466/12, paragraph 26; CJEU, order of 21 October 2014, BestWater International, C‑348/13, paragraphs 16 and 18.