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Friday, October 14, 2016

'Playboy, copyright and the CJEU – a revealing decision on hyperlinking in the EU

By Kirsty Corby, Associate, and Natasha Dixon, Lawyer

Hyperlinks are integral to the functioning of the internet. Websites routinely hyperlink to content freely available elsewhere on the world wide web. But what if that content is copyright protected and has been made available online without the copyright owner's consent? What is the website owner's liability, if any, for hyperlinking to that content?

Last month, the Court of Justice of the European Union (CJEU) provided some crucial guidance for copyright and website owners in the European Union on this issue (GS Media). The CJEU determined that where a website owner knows or ought to know that a copyright owner has not authorised the publication of a work online, the website owner infringes copyright by hyperlinking to that work. Where a hyperlink is created for a profit making purpose, the website owner is presumed to know that the work has been published without the consent of the copyright owner and will infringe copyright unless he or she can rebut that presumption.

Background to the decision


In October 2011, Dutch website, Geenstijl.nl, posted a hyperlink to a third party website where internet users could download nude photographs of a Dutch celebrity destined for publication in Playboy. Playboy claimed ownership of copyright in the photographs. Importantly, Playboy had not published nor authorised the publication of the photographs online.

Playboy's Dutch publisher, Sanoma Media, sought to have the photographs taken down, contacting GS Media (the owner of Geenstijl.nl) and the Australian website hosting the photographs and notifying them of Playboy's copyright claim. Whilst the host website complied with Sanoma Media's requests and removed the photographs, GS Media refused to remove the hyperlinks from its website, instead publishing two further hyperlinks to the photographs that were then being made available by other host websites. Sanoma Media commenced proceedings against GS Media in the Dutch courts alleging that by hyperlinking to the photographs, GS Media had infringed its copyright in the photographs by communicating the works to the public. The Dutch courts referred the matter to the CJEU for guidance.

The law in the UK and Europe prior to this decision


Prior to this decision, the liability of website owners in the European Union for hyperlinking to copyright works posted online without the right holder's consent was uncertain.

In two previous decisions (Svensson and Others v Retriever Sverige AB and BestWater Intl GmbH v Michael Mebes and Stefan Potsch), the CJEU had determined that website owners would not infringe copyright by hyperlinking to works which were freely available online if the works had been uploaded initially with the right holder's consent. The CJEU reasoned, in essence, that a website owner did not communicate the works to the public in those circumstances because the hyperlink did not make the works available to a 'new public' [ie, an audience not envisaged by the right holder when he or she authorised the initial communication to the public].

However, the CJEU did not address whether the position would be different if the works had been made available online without the right holder's consent.

The CJEU's decision in GS Media


In GS Media, the CJEU sought to resolve this question left open by its previous jurisprudence on hyperlinking. The CJEU determined that where a website owner knows or ought to know that a copyright owner has not authorised the publication of a work online, the website owner – by hyperlinking to that work – communicates the work to a new public. That is, the website owner infringes copyright by hyperlinking to a work in the knowledge that it has been uploaded online without the right holder's consent.

Importantly, the CJEU found that where a hyperlink is created for a profit making purpose, the website owner is presumed to know that the work has been published online without the consent of the right holder. As such, the website owner will infringe copyright unless he or she can rebut that presumption.

Applying this analysis, the CJEU determined (subject to verification of certain factual matters by the Dutch referring court) that GS Media had infringed Playboy's copyright in the nude photographs by posting hyperlinks to the photographs because:

  • neither Playboy nor Sanoma Media had authorised the publication of the photographs online; 
  • the hyperlinks were created for a profit making purpose therefore GS Media's knowledge that the works had been uploaded without Playboy's consent was presumed; and 
  • in any event, GS Media could not rebut this presumption of knowledge because, having received a takedown notice from Sanoma Media, it had actual knowledge that the online publication of the photographs had not been authorised by Playboy. 

GS Media had therefore communicated the copyright works to the public, an infringing act under Article 3(1) of the Information Society Directive 2001/29.

The CJEU's decision in GS Media is a pragmatic response to copyright owners' concerns about the enforcement of their intellectual property rights in an internet age.

This decision reaffirms that a website owner in the European Union is entitled to post hyperlinks to copyright content available online where that content has been uploaded with the copyright owner's consent and online access to that content is not restricted by way of a paywall or otherwise.

However, the decision overall prioritises ease of copyright enforcement for right holders over the free flow of information online. In arriving at its decision, the CJEU expressed its expectation that website owners posting hyperlinks for profit carry out 'necessary checks' to ensure that the work concerned has not been illegally published online. This may prove to be an onerous obligation for website owners given how difficult it is to ascertain the origin of online content and the fact that the content of websites can fluctuate daily. It is not clear, for example, if this decision imposes a continuous obligation on website owners to monitor the pages to which their site links to ensure that the content on that page is, and continues to be, authorised by the content holder. The level of due diligence this decision requires on the part of website owners is likely to be the subject of subsequent cases before the CJEU.

Lessons for the Australian context


There has been limited judicial consideration of this issue in Australia.

Like in the European Union, copyright owners in Australia have the exclusive right to communicate a work to the public under s31(1)(a)(iv) of the Copyright Act 1968 (Cth), which includes the right to make the work available online.

In Universal Music Australia v Cooper (2005) 150 FCR 1, Tamberlin J determined that a website containing hyperlinks which enabled users to download music files from third party websites did not communicate the copyright works to the public. It was the third party websites from which the music files were downloaded, and not the respondent Cooper's website (mp3s4free.net), that made the works available online, even though the request that triggered the download of the music files came from clicking the hyperlink on Cooper's website.

On appeal, the Full Federal Court determined that Cooper had nonetheless authorised the primary infringement of the third party websites by hyperlinking to those websites. The Full Federal Court pointed to a number of factors in making its finding of authorisation, including that Cooper had the power to prevent internet users from making copies of the music files via his website, that he had deliberately designed the website to facilitate this copying and that he did not take any reasonable steps to prevent or avoid the infringements. Tamberlin J's finding that Cooper's website did not itself communicate the works to the public was not the subject of an appeal.

Further consideration of this issue both in Australia and Europe is inevitable. Whilst the approaches taken by the European and Australian courts differ considerably, the factors the courts have taken into account are similar. Both jurisdictions have placed weight on the state of knowledge of the alleged infringers, the fact that the alleged infringers had a commercial interest in the infringement and the alleged infringers' apparent failure to take steps to prevent the infringement. This means that in either jurisdiction, copyright owners should (as always) notify website owners of any potentially infringing conduct as soon as they become aware of it, and website owners should take seriously and respond promptly to any takedown notices they receive.