Legal: Copyright collecting society V German cultural heritage foundation
This report is by Kate Allen associate at London media law firm and PAN friend Swan Turton . The report was first published on the firm’s newsletter and kindly reproduced here for PAN readers:
VG Bild-Kunst v Stiftung Preußischer Kulturbesitz: Copyright works and website framing
The Court of Justice of the European Union (the CJEU) has handed down the latest judgment in a long-running case concerning the online framing of copyright material.
A dispute arose between VG Bild-Kunst (VG B-K – a German visual arts copyright collecting society) and Stiftung Preußischer Kulturbesitz (SPK – a German cultural heritage foundation) when VG B-K refused to conclude a licence agreement with SPK for the use of the collection society’s catalogue of works unless the agreement between them contained a provision obliging SPK to implement technological measures which prevented framing by third-parties of thumbnail images of the works covered by the pending agreement.
Framing is a technique utilising automatic links which allows third-party content to be embedded within a web page without that content needing to be stored on the web page’s servers (such as the display of thumbnail images when using an internet search engine).
In 2016 SPK filed a case at the Regional Court of Berlin against VG B-K, arguing that the demand to prevent framing through the implementation of costly technical measures was unreasonable, and that framing should be viewed in the same fashion as hyperlinking (which does not amount to copyright infringement under German or EU law). Despite seeking a declaration that VG B-K should grant the licence free of the anti-framing technological requirements, the regional court declined to make a ruling.
By 2018 the Berlin Court of Appeal was in agreement with SPK that the anti-framing condition was unreasonable and so argued that VK B-K was required to conclude the licence agreement without forcing SPK to implement the demanded technical measures. It also held that framing is not a “communication to the public” within the meaning of copyright law. When VG B-K appealed, Germany’s Federal Court of Justice called on the CJEU to determine whether this was in fact the case.
To that end, Advocate General Szpunar (the AG) provided the opinion that framing, in some instances, is an act which amounts to a communication to the public and therefore requires the consent of the relevant rights holder. The AG’s opinion went into much detail differentiating between framing a work that appears on another website and framing a website itself, with the former constituting a new communication to the public (and so requiring the rights holder’s consent), but the latter not. Further, the AG also distinguished between different methods of linking: automatic linking (meaning where the works being displayed automatically on a web page are viewed as soon as it is opened, without any further action required on the user’s part) was deemed an act of communication to a public which was not taken into account by the copyright holder when the works were initially made available (i.e. the public of a website other than that on which that initial making available of the works took place) and so such framing would require the authorisation of the rights holder. In contrast, embedding in a web page of works from other websites via clickable links using the framing technique does not require the copyright holder’s authorisation since they are deemed to have given such when the work was initially made available.
Clarity has now been provided by the CJEU’s recent ruling which found in favour of VK B-G (and notably did not follow the AG’s opinion on the differentiation of various types of links). The CJEU held that “the embedding, by means of the technique of framing, in a third party website page of a work protected by copyright and made freely available to the public with the authorisation of the copyright holder on another website must be classified as an act of ‘making that work available to a new public’… where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public.”
In the interests of both “legal certainty” and the “smooth running of the internet” it was explained that “the copyright holder cannot be allowed to limit his or her consent by means other than effective technological measures” as in the absence of such measures, it might prove difficult for individual internet users to “ascertain whether that rights holder intended to oppose the framing of his or her works.”
This ruling (assuming UK Courts would adopt a similar position despite the end of the Brexit transition period) strengthens the position of rights holders by recognising that licensors of copyright works can, through contractual terms, insist upon licensees implementing technical measures in order to prevent linking or framing to other websites in relation to the relevant protected works. This gives rights holders greater control over their work while not unduly burdening those who are seeking works to embed in their own websites with excessive due diligence.
• Kate Allen joined Swan Turton as an associate in 2020 and advises on commercial music matters and media-related disputes.
Kate trained at the London based entertainment firm Harbottle & Lewis where she gained experience with the firm’s Media Information, Commercial Litigation, Intellectual Property and Technology, Media and Entertainment practices.
Prior to qualifying as a solicitor, Kate acquired a range of media experience whilst working with in-house legal teams at Sony Music UK and Universal Music Group, as well as working as a freelance music journalist for a number of years.