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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Wheat v Google LLC  EWHC 27 (Ch) (15 January 2020)
Cite as:  ECDR 12,  2 All ER (Comm) 153,  FSR 24,  3 All ER 153,  EWHC 27 (Ch)
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
CHANCERY APPEALS (Ch.D.)
On appeal from HC-2016-002540 (Chief Master Marsh)
Intellectual Property List (Ch.D.)
Judgment dated 26 March 2018 –  EWHC 550 (Ch)
Order dated 31 July 2018
Fetter Lane, London, EC4A 1NL
B e f o r e :
sitting as a Judge of the High Court
| CHRISTOPHER WHEAT
|- and –
Jaani Riordan (instructed by Pinsent Masons LLP) for the Respondent
Hearing date: 28 November 2019
Crown Copyright ©
JUDGE KEYSER QC:
Service out of the Jurisdiction
"In any proceedings to which rule 6.32 or 6.33 does not apply, the claimant may serve a claim form out of the jurisdiction with the permission of the court if any of the grounds set out in paragraph 3.1 of Practice Direction 6B apply."
"(9) A claim is made in tort where –
(a) damage was sustained, or will be sustained, within the jurisdiction; or
(b) damage which has been or will be sustained results from an act committed, or likely to be committed, within the jurisdiction."
"(11) The subject matter of the claim relates wholly or principally to property within the jurisdiction, provided that nothing under this paragraph shall render justiciable the title to or the right to possession of immovable property outside England and Wales."
"On an application for permission to serve a foreign defendant (including an additional defendant to counterclaim) out of the jurisdiction, the claimant (or counterclaimant) has to satisfy three requirements: Seaconsar Far East Ltd v Bank Markazi Jomhouri Islami Iran  1 AC 438, 453–457. First, the claimant must satisfy the court that in relation to the foreign defendant there is a serious issue to be tried on the merits, i.e. a substantial question of fact or law, or both. The current practice in England is that this is the same test as for summary judgment, namely whether there is a real (as opposed to a fanciful) prospect of success: e.g. Carvill America Inc v Camperdown UK Ltd  2 Lloyd's Rep 457, para 24. Second, the claimant must satisfy the court that there is a good arguable case that the claim falls within one or more classes of case in which permission to serve out may be given. In this context 'good arguable case' connotes that one side has a much better argument than the other: see Canada Trust Co v Stolzenberg (No 2)  1 WLR 547, 555–557, per Waller LJ, affirmed  1 AC 1; Bols Distilleries BV v Superior Yacht Services (trading as Bols Royal Distilleries)  1 WLR 12, paras 26–28. Third, the claimant must satisfy the court that in all the circumstances [England and Wales] is clearly or distinctly the appropriate forum for the trial of the dispute, and that in all the circumstances the court ought to exercise its discretion to permit service of the proceedings out of the jurisdiction."
Mr Wheat's Claim
1) A search engine cannot search the vast number of pages on the internet in response to an individual search; that would be unacceptably slow and would not be feasible from a technical standpoint. Therefore Google Search compiles an index of the content of webpages and searches that index in response to an individual search. The index is created with the use of software known as a web crawler, which examines the content of webpages and saves and stores that content in a cache. The cache will include thumbnail copies of all images examined by the web crawler.
2) The web crawler does not examine every single webpage. It sends requests to servers hosting webpage content. If the owner of a website has configured it to respond to such requests, the requested content will be sent to Google's servers for indexing. "The web crawler does not visit any webpages where a webmaster has instructed Google not to index its website …; it indexes webpages only where servers have been configured to respond to its requests. … The caching is carried out with the implicit authorisation of the website publishers, since the act of publishing their content without restrictions on access implies that they agree that the information will be available to all, including search engines such as Google Search." Website publishers are able to control or prevent indexing of their content by such means as source code, meta tags or "robot.txt" conventions. Naturally, most webmasters want their sites to be indexed, because if they are not indexed they cannot be located through search engines. The configuration of Mr Wheat's Website constitutes an instruction to all web crawlers to index its content.
3) "Google's temporary caching of webpages is undertaken in a neutral, technical and automatic manner, in that Google Search's algorithms do not modify the cached webpages in respect of their content." The cache is stored only for a limited period of time and "is rapidly updated at each exploration of the web by the web crawler to ensure that Google Search results reflect the evolution of webpages published online".
4) When a user submits a query on Google Search, results are ranked in order of relative relevance to the query. Relevance is assessed by the use of algorithms, which rely on numerous signals to return relevant results; these signals "include factors such as how often content on a website has been refreshed and the quality of user experience provided by a particular webpage." One particular signal is "PageRank", which works by counting the number and quality of links to a particular webpage from other webpages in order to determine how important the particular webpage is.
5) The results of a search for images may be returned through Google Search in a number of ways. "In some instances, where a user carries out a search, thumbnail images may be returned as part of the results page, in addition to the usual text-based links to webpages. When a user clicks on the 'thumbnail' of an image on Google Search, this will open a further page in Google Search which identifies the domain name or website on which the image is published by the third party who operates that domain name or website. The user then has the option of either visiting the URL for the webpage at which the image appears or navigating to the URL of the image file in its native size on the third party's website."
Three matters of detail or interpretation in the evidence summarised above are contested by Mr Wheat: first, the neutrality and "automatic" nature of the caching; second, the extent of any actual or implied consent by the webmaster; third, the extent to which the cache can be considered short-term. However, as a summary of how Google Search operates Mr Graham's evidence is not materially challenged.
"'Hotlinking' (which is also known as inline linking) is a process whereby a website (the 'first website') displays a linked object, often in the form of an image, stored on the server hosting the content of another website (the 'second website'). Hotlinking does not involve any copy being made of the image belonging to the second website. Instead, when a user visits a webpage on the first website containing, by way of example, a hotlinked image, the HTML code of that first website instructs the user's browser to display the image directly from the server on which the content for the second website is hosted."
As Mr Pearson made clear in his submissions, Mr Wheat accepts that hotlinking is a lawful practice. Further, as Mr Graham's explanation makes clear, hotlinking is not carried out by the search engine, such as Google Search, but by the third-party operators of other websites (for convenience, I shall call these "hotlinking websites"; they have also been described as "aggregator websites").
"16 The acts restricted by copyright in a work
(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom—
…(d) to communicate the work to the public (see section 20); …
and those acts are referred to in this Part as the 'acts restricted by the copyright".
(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright."
"20 Infringement by communication to the public
(1) The communication to the public of the work is an act restricted by the copyright in—
(a) a literary, dramatic, musical or artistic work, …
(2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include—
(a) the broadcasting of the work;(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them."
Mr Wheat's contention is that, by the process described above, Google has communicated his copyright works to members of the public within the terms of section 20(2)(b) and has thereby infringed his copyright pursuant to section 16(2) because the communication was without his licence. The communication was without his licence because, although he gave consent to Google to index and cache the content of the Website, that consent cannot properly be construed as permitting Google to use the cached content to enable internet users to access the content via other (hotlinking) websites and without being directed to his own Website.
"17. The claimant explains his case in relation to hotlinking in this third skeleton argument:
'The word "Hotlinking" appears extensively in this Claim, specifically as it relates to the claim against [Google]. By definition, hotlinking is embedding code onto an HTML website page (say hotlinkingwebsite.com) that uses absolute URLs to refer to images hosted on other servers. When the Internet browser on a user computer downloads an HTML page containing such an image, the browser will directly contact the remote server for www.example.com and request the image content and load it into the requesting HTML page content. Where copyright infringement occurs is when Google's search engine formula algorithm routinely transposes the ownership of the copyright image from the copyright owner website example.com to the page at hotlinkingwebsite.com such that Google now shows image search results for the popular keyword associated with the copyright image as belonging to hotlinkingwebsite.com and sends search request traffic to the hotlinkingwebsite.com server. It is clear Google promotes this behavioural characteristic to transpose ownership from the original copyright owner using their search engine algorithm, and the subsequent Google creation of defective search results as they have done little since 2007 when this rebranding was first observed on Google and have raised the profile of enterprise hotlinkers like connect.in.com to Page Rank 6 and hotlinking as many as 28 million images from origin websites (sic) within the United Kingdom and in other parts of the world. Google could easily have corrected this Google Engineer programmed algorithmic characteristic but they have chosen not to in the years 2010, 2011 and 2012 when it became a substantial practice by enterprise hotlinkers as identified in the Claimant's claim and the Claimant argues was only prolific because Google desired this business landscape in their search business and connected Adsense business." [my emphasis]
18. The language used by the claimant to describe the effects of hotlinking concerns ownership. Elsewhere he has described the effect of hotlinking as leading to a 're-assignment' of the copyright. He has said that this effect is either the result of a 'bug' within the algorithms used by Google or that Google knew of the effect and designed the algorithms to achieve the effect deliberately. There is, however, no evidence at all, direct or inferential, of a deliberate design to achieve the effect he describes. The high point of his case is that Google was aware in 2007 of the effect he complains of but did not fix the bug. He says this was because it worked in Google's favour by popular images being accessible on 'aggregator' sites and by advertising revenue for Google being enhanced as a result. The claimant summarises his breach of copyright claim in the following way:
"… this Claim breaks new ground in a developing area of law related to what is copyright infringement of the copyright holder's property within the United Kingdom on the internet and what is fair use of that copyright content. The Claimant would argue that a systemic practice by Google by the redirection of copyright content to copies of that content on aggregator websites is not remotely close to 'fair use' as it defrauds the original copyright holder of the property value of that media and its creative revenue generating capacity.""
The Chief Master's Decision
1) He identified the three-stage test explained in Altimo Holdings and noted some comments made in that regard by the Supreme Court in Four Seasons Holdings Inc v Brownlie  UKSC 80 (paragraphs 25 and 26).
2) He identified the four jurisdictional gateways relied on before him (paragraph 27). Only two of those are still relied on: gateways (9) and (11); see paragraph 6 above. He observed (paragraph 28) that it was unnecessary to give detailed consideration to gateway (11), because it added nothing material to gateway (9).
3) He dealt with the copyright infringement case in paragraphs 39 to 51. (This section of the judgment dealt also with the claim based on joint liability with MT, which does not arise for consideration on this appeal.) The Chief Master's discussion did not clearly distinguish analytically between the first stage of the test (serious issue) and the second stage (the gateways). This does, I think, result in certain difficulties with his analysis, though not necessarily with the result.
4) In paragraphs 40 and 41 the Chief Master identified the statutory basis for the copyright infringement claim. (I refer only to the claim for primary infringement, as the claim for secondary infringement was not pursued before me.) It is here that the difference is most apparent between the way the case was put below and the way it was put on appeal. Paragraph 40 focused on copying, which was not alleged before me. Paragraph 41 referred to communication to the public but mentioned only communication by "broadcasting" (section 20(2)(a)); it did not mention communication in the manner set out in section 20(2)(b). At paragraph 46 the Chief Master said that, although Mr Wheat's complaint was "readily understandable in general terms", he had "tried to shoehorn the matters about which he complain[ed] into a legal framework they [did] not readily fit."
5) In paragraph 50 he said that the real complaint about hotlinking lay not against Google but against the hotlinkers.
6) In paragraph 51 the Chief Master set out his conclusions regarding the copyright infringement claim. It is here, I think, that the failure to distinguish clearly between the first and second stages of the test in Altimo Holdings is most apparent. The relevant part of the paragraph reads as follows:
"The claimant's case in copyright has not been clearly articulated. For the reasons that follow, he has come nowhere near discharging the burden on him that he has a good arguable case this part of his claim falls within gateway (9) (or (11)).
i. There is no evidence that the hotlinkers have any connection with the United Kingdom. Connect.in.com, for example, is based in Mumbai. Mere accessibility of a website from the United Kingdom in insufficient to confer jurisdiction or to localise communications of that website operator within the United Kingdom – see EMI Records v British Sky Broadcasting Ltd  EWHC 379 at  Arnold J and Omnibill (Pty) Ltd v EGPSXXX Ltd (in liq)  EWHC 3762 at  Birss J.
ii. Hotlinking does not involve an act of copying. This is accepted by the Claimant.
iii. It is not open to the claimant to contend that there has been an infringement by communication to the public that is in breach of section 169(1)(d) [sic; scil. 16(1)(d)]. The doctrine laid down by the ECJ in Case-466/12, Svensson, EU:C:2014:76, - and Case 160/15, GS Media BV, EU:C:2016:644, in  that where photographs have been made freely available with the consent of the right holder, the copyright owner cannot later complain that third parties have linked to or embedded those works from their own websites.
iv. The complaint that Google has prioritised one website over another does not give rise to a claim for copyright infringement."
7) Additionally, the Chief Master held (paragraphs 43 – 45 and 51(vii)) that Google would in any event be entitled to rely on the "safe harbour" defence under regulations 17 to 19 of the Electronic Commerce (EC Directive) Regulations 2002.
8) As to the third stage of the test (forum), he held that, of all the competing jurisdictions (England and Wales, Monaco, Germany, California), England and Wales was the least attractive (paragraphs 53 and 54). It should be said that this conclusion reflects the far wider scope of claims and considerations that were before the Chief Master.
1) As to the first stage (serious issue): (a) he wrongly thought that any complaint of copyright infringement lay against the hotlinkers, whereas in fact the actions of the hotlinkers are accepted to be lawful; (b) he failed to understand the nature of the communication under section 20(2)(b); (c) he mistakenly held, in paragraph 51(iii) of his judgment, that consent to the free availability of images on the internet precluded complaint about Google's activities; (d) he was wrong to hold that the "safe harbour" defence was available to Google.
2) As to the second stage (gateways): he was wrong in respect of both limbs of gateway (9) and in respect of gateway (11), all of which obviously are satisfied. This mistake, it is said, arose because the Chief Master failed to distinguish clearly between the first and second stages of the test.
3) As to the third stage (forum): he was wrong to hold that a dispute as to infringement of UK copyright owned by the proprietor of a business in England ought to be heard anywhere but in the courts of England and Wales.
"14. … It is said by Mr Wheat that Google's conduct in caching images for the purposes of delivering search results constitutes an infringement of the Copyright, Designs and Patents Act 1988 because Mr Wheat has not consented to his images being used in this way. (Matters would be different if the search results linked to the Website: Mr Wheat accepted that he had given his consent to this.)
15. It is said by Mr Wheat that this is an infringement of his rights and that these rights are in fact governed by English law. It is first necessary to explore why Mr Wheat contends that this question of infringement is governed by English law at all. [The judge referred to the decision of Birss J in Omnibill (Pty) Ltd v Egpsxxx Ltd  EWHC 3762 (IPEC) and continued:]
16. The test is whether the website or webpage is targeted to a particular country and that, as Birss J pointed out, is a multifactorial question which depends upon all the circumstances, including the content of the website itself, the elements arising from the inherent nature of the services offered by the website, the number of visitors accessing the website from the UK and so on. I have, I confess, some doubts as to the precise translatability of this test, which obviously involved the publication of an image on a particular website, to this case, which involves the use of a cached image to facilitate a search on the worldwide web. However, it seems to me that, for purposes of this hearing, I must accept that this contention has a reasonable prospect of success: what Google is doing, in particular in relation to searches that are produced by way of google.co.uk (the search engine directed to users in the UK), the cached images are indeed being targeted at a particular country (namely, the UK), so as to make it sufficiently arguable for purposes of the merits test that I am applying to say that English law applies and that there is an infringement of section 20 of the Copyright, Designs and Patents Act 1988. So I am satisfied that there is a good, arguable case on appeal that this test can be satisfied, and I need for present purposes go no further than that."
"17. I turn to the second requirement, question of whether Mr Wheat has established that his case falls within an appropriate gateway. The gateway relied upon was gateway (9) in CPR PD 6B §3.1. Gateway (9)(a) provides that the court may permit service of a claim out where a claim is made in tort (as this one is), where 'damage was sustained, or will be sustained, within the jurisdiction'. It was contended on behalf of Mr Wheat that, because he was operating his business in the jurisdiction, the loss of advertising revenue and the financial loss caused by the lower profile of his website than would otherwise have been the case caused damage to him within this jurisdiction. Again, it seems to me that that is something which is arguable with reasonable prospects of success on an appeal. I also consider that gateway (9)(b), which refers to damage that has been or will be sustained from an act committed or likely to be committed within the jurisdiction, is perhaps the more appropriate gateway. Taking the test expounded by Birss J in Omnibill, it is possible to contend that the act of communication (that is to say, displaying the search results and the cached image on, as it were, an England and Wales monitor) is something which is an act within gateway (9)(b). So, for both those reasons, I am satisfied that there is a good, arguable case that these claims against Google fall within both limbs of gateway 9."
"18. The last question is one of forum. As I noted, I must be satisfied that England and Wales is clearly and distinctly the proper forum for the trial of the claims. It seems to me that, as regards these claims, this requirement too is satisfied. This is, given the conclusions I have reached, a claim governed by English law involving an infringement of copyright under the 1988 Act. The claimant, Mr Wheat, is resident in the jurisdiction. The defendant is not, self-evidently, but the defendant I consider is going to be remarkably indifferent as to where it is sued in terms of its own convenience. The fact is that Google is a worldwide corporation with a significant presence within this jurisdiction, albeit not a servable presence. It seems to me that the advantages of suing in another jurisdiction are very difficult to discern. The question of witnesses, documents and experts in a sense all have an England and Wales focus, largely because of the fact that England and Wales is the law that is applicable. It therefore does seem to me that, so far as this group of claims is concerned, it is at least arguably appropriate that England and Wales is the most convenient forum."
"The suggestion appears to be that there is a moral or commercial responsibility in the absence of a legal one. But the law is not generally concerned with moral or commercial responsibilities except as an arguable basis for legal ones."
"Section 20 of the 1988 Act implements Article 3 of the Information Society Directive 2001/29/EC. The CJEU has set out general principles of interpretation of that provision. … In the end though it is for the national courts to determine where the balance lies in a given case. It is a fact-sensitive exercise."
"(23) This Directive should harmonise further the author's right of communication to the public. This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts."
"(27) The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive."
"(31) A fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter must be safeguarded. The existing exceptions and limitations to the rights as set out by the Member States have to be reassessed in the light of the new electronic environment. …"
Article 3(1) provides:
"Member States shall 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."
"The principles established by the CJEU case law can, I think, be summarised as follows:
(1) 'Communication to the public' must be interpreted broadly.
(2) 'Communication to the public' covers any transmission or retransmission of the work to the public not present at the place where the communication originates by wire or wireless means.
(5) 'Communication' includes any retransmission of the work by a specific technical means different from that of the original communication.
(11) 'The public' refers to an indeterminate number of potential recipients and implies a fairly large number of persons.
(15) Where there is a communication which does not use a different technical means to that of the original 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 authors concerned when they authorised the original communication.
(18) Where there is a communication using a different technical means to that of the original communication, it is not necessary to consider whether the communication is to a new public."
"24 None the less, according to settled case-law, in order to be covered by the concept of 'communication to the public', within the meaning of Article 3(1) of Directive 2001/29, a communication, such as that at issue in the main proceedings, concerning the same works as those covered by the initial communication and made, as in the case of the initial communication, on the Internet, and therefore by the same technical means, must also be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders when they authorised the initial communication to the public (see, by analogy, SGAE, paragraphs 40 and 42; order of 18 March 2010 in Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38; and ITV Broadcasting and Others, paragraph 39).
25 In the circumstances of this case, it must be observed that making available the works concerned by means of a clickable link, such as that in the main proceedings, does not lead to the works in question being communicated to a new public.
26 The public targeted by the initial communication consisted of all potential visitors to the site concerned, since, given that access to the works on that site was not subject to any restrictive measures, all Internet users could therefore have free access to them.
27 In those circumstances, it must be held that, where all the users of another site to whom the works at issue have been communicated by means of a clickable link could access those works directly on the site on which they were initially communicated, without the involvement of the manager of that other site, the users of the site managed by the latter must be deemed to be potential recipients of the initial communication and, therefore, as being part of the public taken into account by the copyright holders when they authorised the initial communication.
28 Therefore, since there is no new public, the authorisation of the copyright holders is not required for a communication to the public such as that in the main proceedings."
"Once one has taken the step of deciding that the first act of communication is targeted to all potential visitors to the site concerned (my emphasis) and that this means all internet users, then the rest of the logic follows because (paragraph 27) people accessing the second site are necessarily potential recipients of the first act of communication. So the court held that these people were taken into account by the copyright owners when the copyright owners authorised the first communication. Also, on its face this reasoning does not appear to be based on examining the actual terms of whatever copyright licence the rights holder actually entered into in fact. It appears to proceed on the basis that once a copyright owner has given permission for a work to be put on a website which is not subject to technical access restrictions, they must be taken to have targeted, and therefore taken into account, the entire world as the relevant 'public'."
"29 Such a finding [i.e. the conclusion at paragraph 28] cannot be called in question were the referring court to find, although this is not clear from the documents before the Court, that when Internet users click on the link at issue, the work appears in such a way as to give the impression that it is appearing on the site on which that link is found, whereas in fact that work comes from another site.
30 That additional circumstance in no way alters the conclusion that the provision on a site of a clickable link to a protected work published and freely accessible on another site has the effect of making that work available to users of the first site and that it therefore constitutes a communication to the public. However, since there is no new public, the authorisation of the copyright holders is in any event not required for such a communication to the public."
"15 [C]oncerning the insertion on a website, by a third party, using a web link, of a protected work freely which was already been freely communicated to the public on another website, the Court decided in Clause 24 of Svensson … that, given that such an act of communication uses the same technical mode as that already used to communicate this work on another website, in order to be qualified as 'communication to the public' within the meaning of Article 3(1) of the Directive 2001 this deed must be performed with a new public.
16 If this is not the case, in particular, due to the fact that the work is already freely available for all internet users on another website having permission from the copyright owners, the said act will not be qualified as 'communication to the public' within the meaning of Article 3(1) …
17 In points 29 and 30 of the judgment [in] Svensson …, the Court specified that this conclusion is not challenged by the circumstance that, when the internet users click on the link in question, the protected work appears giving the impression that it is shown from the site where this link is provided, whereas it is in fact from another site. However, in substance, this factor is that which characterises the use, as in the main proceedings, of the 'transclusion' technique, the latter consisting of dividing a page of a website into several frames and displaying one of them, using an 'incorporated' web link ('inline linking'), an item from another site in order to conceal from users of this site the original environment to which this element belongs."
"41 … [I]t follows from the reasoning of those decisions that, by them, the Court intended to refer only to the posting of hyperlinks to works which have been made freely available on another website with the consent of the rightholder, the Court having concluded that there was no communication to the public on the ground that the act of communication in question was not made to a new public.
42 In that context, it noted that, given that the hyperlink and the website to which it refers give access to the protected work using the same technical means, namely the internet, such a link must be directed to a new public. Where that is not the case, in particular, due to the fact that the work is already freely available to all internet users on another website with the authorisation of the copyright holders, that act cannot be categorised as a 'communication to the public' within the meaning of Article 3(1) of Directive 2001/29. Indeed, as soon as and as long as that work is freely available on the website to which the hyperlink allows access, it must be considered that, where the copyright holders of that work have consented to such a communication, they have included all internet users as the public (see, to that effect, judgment of 13 February 2014, Svensson and Others, EU:C:2014:76, paragraphs 24 to 28, and order of 21 October 2014, BestWater International, C-348/13, not published, EU:C:2014:2315, paragraphs 15, 16 and 18)."
"35 Taking account of those elements, it must be held, in the light of the case-law set out in paragraph 24 of the present judgment, that the posting of a work protected by copyright on one website other than that on which the initial communication was made with the consent of the copyright holder, in circumstances such as those at issue in the main proceedings, must be treated as making such a work available to a new public. In such circumstances, the public taken into account by the copyright holder when he consented to the communication of his work on the website on which it was originally published is composed solely of users of that site and not of users of the website on which the work was subsequently published without the consent of the rightholder, or other internet users.
36 It is irrelevant to the objective considerations set out in paragraphs 29 to 35 of the present judgment that, as in the case in the main proceedings, the copyright holder did not limit the ways in which internet users could use the photograph. The Court has already held that the enjoyment and the exercise of the right provided for in Article 3(1) of Directive 2001/29 may not be subject to any formality (see, to that effect, judgment of 16 November 2016, Soulier and Doke, C-301/15, EU:C:2016:878, paragraph 50).
37 Furthermore, it is true the Court held, in particular in its judgment of 13 February 2014, Svensson and Others (C-466/12, EU:C:2014:76, paragraphs 25 and 26), and in its order of 21 October 2014, BestWater International (C-348/13, not published, EU:C:2014:2315, paragraph 16), regarding the making available of protected works by means of a clickable link referring to another website on which the original publication was made, that the public targeted by the original communication was all potential visitors to the website concerned, since, knowing that access to those works on that site was not subject to any restrictive measure, all internet users could access it freely. Therefore, it held that the publication of the works concerned by means of a clickable link, such as that at issue in the cases which gave rise to those judgments, did not result in a communication of those works to a new public.
38 However, that case-law cannot be applied in circumstances such as those at issue in the main proceedings.
39 First, that case-law was handed down in the specific context of hyperlinks which, on the internet, refer to protected works previously published with the consent of the copyright holder.
40 However, unlike hyperlinks which, according to the case-law of the Court, contribute in particular to the sound operation of the internet by enabling the dissemination of information in that network characterised by the availability of immense amounts of information (judgment of 8 September 2016, GS Media, C-160/15, EU:C:2016:644, paragraph 45), the publication on a website without the authorisation of the copyright holder of a work which was previously communicated on another website with the consent of that copyright holder does not contribute, to the same extent, to that objective.
44 Second, as stated in paragraph 29 of the present judgment, the rights guaranteed for authors by Article 3(1) of Directive 2001/29 are preventive in nature. As regards the act of communication constituted by the posting on a website of a hyperlink which leads to a work previously communicated with the authorisation of the copyright holder, the preventive nature of the rights of the holder are preserved, since it is open to the author, if he no longer wishes to communicate his work on the website concerned, to remove it from the website on which it was initially communicated, rendering obsolete any hyperlink leading to it. However, in circumstances such as those at issue in the main proceedings, the posting on another website of a work gives rise to a new communication, independent of the communication initially authorised. As a consequence of that posting, such a work may remain available on the latter website, irrespective of the prior consent of the author and despite an action by which the rightholder decides no longer to communicate his work on the website on which it was initially communicated with his consent.
45 Lastly, third, in its judgment of 13 February 2014, Svensson and Others (C-466/12, EU:C:2014:76, paragraphs 27 and 28), the Court, in order to conclude that the communication at issue in the case which gave rise to that judgment was not to a new public, emphasised the lack of any involvement by the administrator of the site on which the clickable link had been inserted, which allowed access to the works concerned on the site on which it had been initially communicated, with the consent of the copyright holder.
46 In the present case, it is clear from the order for reference that the user of the work at issue in the main proceedings reproduced that work on a private server and then posted it on a website other than that on which the work was initially communicated. In so doing, that user played a decisive role in the communication of that work to a public which was not taken into account by its author when he consented to the initial communication."
"100 … In my judgment the analysis is a different one. Putting Renckhoff and Svensson side by side shows that the CJEU is taking a holistic approach to communication to the public. The nature of the act of communication complained of has a bearing on the answer to the question of what public should be regarded as having been taken into account when the first communication was authorised. One can only answer the question about what public was taken into account when one knows the nature of the latter act of communication. In other words when considering whether an act of communication to the public has taken place, while individual elements need to be considered ('communication', 'public', 'new public' and so on) it is also necessary to look at the circumstances as a whole and it is a wrong approach to keep the nature of the putative act of communication in a silo, separate from the question of the public. That is, I think, what the CJEU has actually said in different words in paragraph 35 of Renckhoff.
101 Putting it a different way – when a copyright owner consents to the work being published on a website targeted at a particular set of internet users but in practice freely available to all users one can rationally hold that:
i) the owner took (or should be treated as having taken) into account all internet users as potential recipients of a hyperlink to that work; butii) did not take (and need not necessarily have taken) into account any internet users, other than those to whom the site is targeted, as potential recipients of a posting of the work itself.
102 Looked at this way the two conclusions are consistent and thus, on the same facts, once a work has been published on a site, a reposting of that work on a second site may be an act of communication to a new public (Renckhoff) whereas a link to it may not be (Svensson)."
"[N]owhere in the cases is there an attempt to consider the terms of any actual copyright licence applicable to the initial posting of a work on the internet. The closest is the reference in Soulier to Svensson being a case of explicit consent but even that does not go as far as examining any actual terms. I believe the court is looking at the matter in a different way and asking, given the existence of consent in fact: what is its practical effect? For example in Svensson I cannot imagine the court would have been impressed by an argument that the agreement consenting to the initial posting contained a clause buried in it whereby the copyright owner, while consenting to the posting, purported not to consent to hyperlinking to that posting. The practical effect of the posting, which was with consent and was without technical restrictions, was that the rights holder must have taken into account that others on the internet might link to it. The basis for this is consideration of Charter rights and the impact on the internet if it was not so."
That seems to me to reflect the concerns of the CJEU in Renckhoff and I respectfully agree.
"(i) Although the individual dimensions of the question need to be considered, ultimately the assessment of whether a party's actions amount to a "communication to the public" is an individualised and case specific assessment which must be carried out as a whole.
(ii) Providing a link to a work is capable of being an act of communication to the public, even if no one actually selects the link or goes to look at or listen to the work, because a link to a work makes a work available. In other words merely providing a link to a work available at another location on the internet can itself be an act of communication (Svensson, GS Media).
(iii) An important distinction is between a case in which a work has been placed on the internet with the consent of the relevant rights holder and a case in which there has been no such consent. If the initial posting of the work was done with the relevant consent then it is itself an act of communication to the public and any subsequent alleged acts of communication to the public have to be analysed with that in mind. For a second act of communication to the public on the internet to be an infringement in that case, there must be a new public (or new technical means) and for the former to be determined one must work out what public was taken into account when the first act of communication took place.
(iv) However the question of what public was taken into account when a work was the subject of a first communication to the public cannot be answered without knowing the nature of the subsequent act of communication which is alleged to infringe (Svensson and Renckhoff). One does not simply ask – what public was taken into account? – rather one has to ask – were the public to whom the act of communication complained of is addressed taken into account in giving the consent to the first act of communication?
(v) Approached that way, in a case in which a photograph is taken from one website and reposted on a second website, one asks: were visitors to the second website who will encounter the photograph posted on that website taken into account when the consent to the posting of the photograph on the first website was given? The answer may well be no because the rights holder should only be taken to have consented to the work appearing on the first website and being seen posted on that first site by visitors to that first site, and not be taken to have consented to the work being seen posted on a second website by visitors to that second website, who amount to a different class of visitors (Renckhoff).
(vi) By the same token, in a case in which there is, on one website (A), a link to a photograph posted on another website (B), one asks: were visitors to website A who will encounter that link taken into account when the consent to the posting on the photograph on website B was given? The answer may well be yes because the rights holder should be taken to have understood that the internet includes that sort of linking and therefore to have consented to those links appearing on other websites and being seen by anyone on the internet (Svensson)."
UPON the Claimant's appeal from the Order of Chief Master Marsh dated 31 July 2020 in claim number HC-2016-002540
AND UPON HEARING Mr Pearson of Counsel for the Appellant and Mr Riordan of Counsel for the Respondent on 28 November 2019
AND UPON judgment having been reserved and being handed down this day
IT IS ORDERED that:
Date: 15 January 2020