GS Media BV v Sanoma Media Netherlands BV, Playboy Enterprises International Inc., Britt Geertruida Dekker
Court of Justice of the European Union
An individual or organisation engaged in profit-making and who posts a hyperlink on their website may be deemed to have infringed copyright where the hyperlinked content has been posted online without the copyright owner’s consent. The hyperlinker in this case will be subject to a rebuttable presumption that they knew or should have known that the content was posted without consent. For an individual or organisation not engaged in profit-making posting such a hyperlink, the court will need to assess whether or not it was reasonable for them to have known the copyrighted work was made available without consent. This “knowledge” component will have bearing on the court’s finding of any infringement for hyperlinks to online content posted without consent of the owner. In cases where the copyrighted content has never been lawfully made public before, the fair dealing defence of criticism and review will not be available.
Photographs of Britt Dekker (the “Photographs”) who is a Dutch presenter and media personality were taken for publication in Playboy magazine in The Netherlands. Sanoma Media Netherlands BV (“Sanoma”), the publisher of Playboy magazine, had exclusive authorisation to publish The Photographs.
The Photographs were initially made available online on a file sharing site FileFactory.com (“FileFactory”) prior to publication and without authorisation. An article with hyperlinks to The Photographs were posted in an article on GeenStijl.nl (“GeenStijl”), which is a broad news website owned by GS Media BV. GeenStijl is one of the top 10 most visited sites in The Netherlands.
Sanoma requested that the hyperlinks be removed from GeenStijl but GS Media failed to comply; however, FileFactory did comply with Sanoma’s request to remove the files. Despite their removal from the FileFactory, the Photographs reappeared online on different websites. GeenStijl posted multiple articles with hyperlinks to these new webpages, and GeenStijl forum users also posted hyperlinks to webpages hosting the Photographs.
Sanoma brought copyright proceedings against GS Media in the Dutch courts, who eventually referred to the CJEU various questions that had bearing on the proceedings.
The current case adds a complication to the established CJEU case law concerning copyright and hyperlinks.
Article 3(1) of Directive 2001/29/EC (the “Copyright Directive”) sets out the exclusive right an author has to control the use of the author’s work. It says, “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works…”. In Svensson and Others v Retriever Sverige AB (Case C-466/12), the CJEU decided that a hyperlink to a copyrighted work freely available online did not constitute a “communication to the public”, a concept that has as its “cumulative criteria” a) a “communication”, and b) a communication to a “public”. In Svensson, the posting of the hyperlink was found to be a “communication” but not one to a “new public” (i.e. people who would not have had access already), therefore there was no infringement under Article 3(1) of the Copyright Directive. BestWater International GmbH v Mebes (Case C-348/13) follows this reasoning in assessing a “framed” video clip on a website.
To take an example, if I write a story about an IP lawyer who secretly fights the forces of evil at night and I post it to my personal website, this story would be freely available online with my consent. Despite what is no doubt a terrible idea for a superhero, eventually, someone might read this story and post a hyperlink to it. Under these circumstances, this use of a hyperlink on a third-party website would not be an infringement of my copyright. There would be no communication to a “new public” since the story is freely available with my consent.
The situation in GS Media is the same as in Svensson except that the copyrighted work has been made freely available online without the consent of the copyright owner. The Dutch Supreme Court asked the CJEU to answer a few questions which essentially boil down to the following:
1. Does hyperlinking to a protected work made freely available without the copyright owner’s consent constitute a “communication to the public”?
2. Does it matter if the hyperlink poster knew or should have known that the work was made available without the consent?
A Rebuttable Presumption
To decide whether or not there has been a “communication to the public”, the CJEU acknowledged the importance of establishing the two cumulative criteria: whether a “communication” occurred and whether there was a communication of the work in question to a “public”. However, the court insisted on a balancing exercise between copyright protection and freedom of expression that meant the consideration of additional, complementary criteria. These criteria include the profit-making nature of the hyperlinker and a knowledge assessment.
For an individual not pursuing profit, the court should decide whether or not it was reasonable for the individual to have known the copyrighted work was made available without consent. If it was reasonable for them to have known, then the hyperlink may constitute a communication to the public and so be deemed an infringement.
For an individual or organisation pursuing profit, there will be a rebuttable presumption that the hyperlinker should have known that the content was uploaded without consent. This adds a burden of carrying out the “necessary checks” by commercial entities that hyperlinked content has been made available online with consent.
Applying the above, it appears that GS Media would be found to infringe copyright by posting a hyperlink to the unauthorised download page of the Photographs because 1) the website was of a profit-making nature, and 2) GS Media ought to have known that the photos were posted without the consent of the rights holder. Clearly, once they were notified by Sanoma, GS Media knew the hyperlinked material was made available online without consent. This last fact would make any rebuttal very difficult, and infringement likely.
Fair Dealing - Criticism and Review
The fair dealing exceptions, in particular the criticism and review exception, already provide cover for many online users in the UK. Section 30(1) of the Copyright Designs and Patents Act 1988 (the “CDPA”) provides a defence against copyright infringement as long as the use of the work is fair, there is a sufficient acknowledgement (unless impossible or impractical) “and provided that the work has been made available to the public”. Considering the facts in GS Media, we might ask: how would this fair dealing exception apply when a work has been made available to the public without the consent of the copyright owner, and the work had never been lawfully made available to the public previously?
To answer this, we turn to Section 30(1A) CDPA, a section inserted in 2003, which says:
(1A) For the purposes of subsections (1) and (1ZA) a work has been made available to
the public if it has been made available by any means, including–
(a) the issue of copies to the public;
(b) making the work available by means of an electronic retrieval system;
(c) the rental or lending of copies of the work to the public;
(d) the performance, exhibition, playing or showing of the work in public;
(e) the communication to the public of the work,
but in determining generally for the purposes of those subsections whether a work has
been made available to the public no account shall be taken of any unauthorised act.
Therefore, a fair dealing for criticism and review will only be applicable to works that have already been made public with authorisation. In the case of HRH Prince of Wales v Associated Newspapers Ltd  EWHC 522 (Ch), The Mail on Sunday published in 2005 extracts of journals written by HRH Prince of Wales. Prince Charles brought a claim for copyright infringement, in addition to breach of confidence. Concerning copyright, the court found that the journals had not been lawfully made available to the public as per section 30(1A) CDPA, and therefore did not satisfy the conditions for a fair dealing defence under 30(1) CDPA.
Unlike the CJEU in Svensson, the Advocate General said in an opinion about the GS Media case in April 2016 that posting a hyperlink did not constitute a “communication”. Therefore, in the Advocate General’s view, whether or not the copyright owner consented to making the work freely available online did not matter for the purposes of assessing whether the work was “communicated to the public”. The GS Media ruling departs from this reasoning with though it unclear precisely what the implications for individual users and organisations will be.
Copyright owners can now send a notice and take-down letter to anyone posting a hyperlink to their protected content placed online without their consent, citing a breach of Article 3 of the Copyright Directive. Failure to comply could make the hyperlinker liable to an infringement claim.
Companies and individuals undertaking profit-making activities face a new responsibility which is vague but consequential. They must determine whether or not hyperlinked material has been made available online with consent or without consent, which will translate into an expenditure of additional time and money to comply. It is unclear what degree of effort, and to what standard, is required. The CJEU says that the requirement is “full knowledge” of the illegal content, though what that means is not spelled out.
Furthermore, it is unclear when the CJEU will consider a hyperlink has been posted in the pursuit of profit. If I post a hyperlink on my personal website to a story about a crime fighting accountant (perhaps the only superhero less compelling than an IP lawyer), would the mere existence of an innocuous Google Ad on my website mean I would be subject to a rebuttable presumption? Should all website owners with any form of paid advertising be performing the necessary hyperlink checks? We have no answer at present. Hyperlinking is so common place and crucial for websites and internet users, particularly media organisations, that this new responsibility, the “rebuttable presumption” mentioned above, and the accompanying uncertainties could hamper reporting and online freedom of expression in general.
More to the point for media organisations in the UK, when might a journalist accidentally, recklessly, or even intentionally hyperlink to content that has never been lawfully published before but has now been published somewhere online without the owner’s consent? Let’s say The Mail on Sunday comes into possession of new journals from Prince Charles, and coincidentally (very coincidentally you might say), copies of the journal appear on a file sharing site online. If the newspaper links to these files, then they are potentially infringing copyright. Or if we consider the facts of GS Media as though they occurred in the UK, the fair dealing defence would not be available to GS Media since the Playboy photos had not been lawfully made public previously. This fair dealing defence does not allow anyone, even newspapers, to publish works that have not been published yet, unless they rely upon one of the other fair dealing defences or the public interest defence in section 171(3) CDPA. To put this into perspective, the current events fair dealing exception and public interest defence both failed in the aforementioned case with Prince Charles’ journals, and that decision was upheld in the Court of Appeal.
Surely, industry practice and editorial standards already have in place some safeguards to consider the legality of hyperlinked content within an article, right? How much will this judgment affect those standards or working journalists? This may be a question for them, rather than the lawyers, to answer.
In the meantime, copyright owners might try their luck within this legal fog by aggressively protecting their works with these new take down notices.