Transcript authorizing the communication

Linking and Searching: Patrolling and
Controlling the Internet
2016 IT.Can 20th Annual Conference
Brian W. Gray
Senior Partner
Norton Rose Fulbright Canada LLP
October 25, 2016
Does Copyright Law prevent linking, deep
linking, framing or embedding?
• Answer will be analyzed differently in different countries. The
result in most cases very similar.
Article 8 of the WIPO Copyright Treaty:
Authors of literary and artistic works shall enjoy the exclusive right of
authorizing 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 these works from a place and at a time individually
chosen by them.
• In fact right to authorize communication to the public of
performances of musical works or recitations of literary works,
inter alia, had been in the Berne Convention for some time, but
the specific language of “making available” is new.
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Canada
• In 2012 Canada implemented Article 8 by adding section 2.4 (1.1)
(and also 15(1.1)(d) and 18(1.1)(a)):
2.4(1.1) - Communication to the public by telecommunication
For the purposes of this Act, communication of a work or other
subject-matter to the public by telecommunication includes making
it available to the public by telecommunication in a way that allows
a member of the public to have access to it from a place and at a
time individually chosen by that member of the public.
• Telecommunication to the public has been held to include
communication over the Internet. The person who posted the
work is the person who is deemed to have communicated it. A
communication occurs each time a member of the public
accesses the work from the source computer.
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Canada
• In Entertainment Software Association et al. v. Society of
Composers, Authors and Music Publishers of Canada (hereafter
“ESA”), 2012 SCC 34, the Supreme Court of Canada examined
the word “communicate”. The nine member Supreme Court
panel, split by a 5 to 4 decision, decided that downloading of a
work for viewing later was not a “communication”.
• This case was decided before the explicit introduction of the
making available right in section 2.4 (1.1).
• Further problem is that the communication right was said to be a
subset of the performance right so the implications of that finding
are not clear.
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Canada
• In Canada, authors are also given the right to “authorize” the
“communication” of their work under sections 2.4(1)(b) and 3(1)(f).
• This concept was addressed in 1999 in Society of Composers, Authors
& Music Publishers of Canada v Canadian Association of Internet
Service Providers (“Tariff 22”).
“The person that creates an automatic or embedded hyperlink to a work
authorizes the communication of the work from the site to which the link
leads. The person that merely supplies a link which must be activated by
the user does not.”
• Tariff 22 went to the Supreme Court and this basic distinction between
user activated and automatic linking was maintained:
Where the user is required to click on a link, he or she authorizes the
communication of content. Where the user is automatically provided with
content, without the user’s control, the embedded link authorizes the
communication of a work. Therefore, the website host who creates the
embedded link authorizes the communication of a work.
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Canada
• In Crookes v Wikimedia Foundation Inc in 2011, the majority of
the SCC found that a conventional hyperlink should never
constitute publication for the purposes of defamation, in part
because referring to content does not mean that the referrer has
control over the content.
• The SCC explicitly left out any treatment of the distinction
between various types of hyperlinks, but part of the reason why it
found hyperlinks to be simply references to other material is that
when a user clicks a conventional link, it is clear that the user is
leaving one source and moving to another.
• The clear distinction between the original content and the
referred-to content from the perspective of the user is why the
original content’s link was not considered a “publication” for the
purposes of defamation.
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Canada
• In 2012 in Warman v Fournier the Federal Court held that there is
no copyright infringement if a link directs a user to publicly
available material.
• Concepts of “control” and “authorization” important in deciding
whether link is actionable.
• A simple link to material that the linker knows is unauthorized
may not be actionable on the Crookes theory but not sure I would
rely on that. There is no “authorization” theory for defamation.
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U.S.A
• The U.S. does not have a statutory provision that expressly
provides for protection of a making available right.
• Arguably, however, Section 106 of the US Copyright Act
provides for protection of an author’s making available right as
one of the exclusive rights set forth in Section 17 U.S.C. §
106(4)–(6) to perform or display a work publicly.
– To perform or display a work “publicly” includes “to transmit or
otherwise communicate a performance or display of the work . . . to the
public, by means of any device or process, whether the members of the
public capable of receiving the performance or display receive it in the same
place or in separate places and at the same time or at different times.”
– This analogous right provides authors the exclusive right to communicate a
performance or display a work by making the performance or display
available to the public through means of any device or process, including the
Internet.
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U.S.A.
• Surprisingly few cases on linking as part of “display right”
• Providing a simple hyperlink or deep link is not copyright
infringement inter alia because it did not involve direct copying
– Ticketmaster Corp v. Tickets.com Inc.
– Pearson Education v. Ishayev
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U.S.A.
Perfect 10 v Google Inc.
• Adopted a “server test”. Person who stores an image and “serves
that electronic information directly to the user” is responsible to
the copyright owner.
• Full size images framed on the web site from another web site by
means of a link, not displaying the work.
• Thumb nail images clicked on by the user to “bring up” the full
size images by means of the link.
• Court found that Google did not display, distribute or copy the
works.
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EU
• Article 8 of the WIPO Treaty was typically brought into EU law
almost verbatim by virtue of Article 3 of the InfoSoc Directive.
• For example - Germany:
– Under § 19a of the German Copyright Act (Urheberrechtsgesetz –
hereinafter “UrhG”), authors have the right to make their work
available to the public, either by wire or wireless means, in such a
manner that members of the public can access it from a place and at
a time individually chosen by them.
– The making available right under § 19a UrhG is part of an
overarching “right of communication to the public” (§ 15(2) UrhG)
which covers the communication to an absent as well as a present
audience (and includes performance rights).
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Linking Questions
• So the First fundamental question in almost every country is
whether the act of linking (i.e. simple provision of a link, hyperlink)
is a “communication”.
– Canada: Not a communication
– U.S.: Probably not a communication
– E.U. CJEU: Yes a communication
• Second question is whether it is “to the public”.
– Canada and U.S.: Internet posting is to the public but not
determinative since not a communication.
– E.U.: Since it is a communication, determinative whether it is “to the
public” when work already posted on the internet without restriction.
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Linking Questions
• Third question is whether the link is authorizing the
communication by the user.
– Remember we are not talking about the reproduction right which may
in many cases be implicated by the user by importing a work onto
his/her computer through the link but the liability of the person who
creates the link on their website but without directly reproducing the
linked work on that site.
– When analyzing authorization it becomes relevant whether the link is
a user activated link or an automatic link and whether the link result
in an obvious referral to another site or to an embedded or framed
link on the user’s site.
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EU Case Law: Svensson
• February 2014 - A Swedish company hosted a website with links
to articles freely available online on other websites.
• Svensson, the plaintiff was a journalist whose articles were
published in the Gotenborgs-Posten newspaper, and also on the
newspaper’s website where they were freely accessible.
• Question referred to CJEU was whether supplying a clickable link
to the work constituted communication to the public.
• “the provision of clickable links to protected works must be
considered to be ‘making available’ and, therefore, an ‘act of
communication’”.
This is fundamental decision of the CJEU which has led to a series
of follow up questions.
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EU Case Law: Svensson
• But was it a “communication to the public”?
– “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.”
• Further, Court makes no distinction (because not in issue)
between a case where Internet users click on the link at issue, or
where 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
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EU Case Law: BestWater
October 2014 CJEU on reference from a German court:
• Linking was examined further in the context of a link creating an
embedded or framed display
• Framing or Embedding requires merely the addition of a small
(HTML) code linking to, for example, a YouTube video, enabling
the user’s web browser to display the website and the video as
an integrated whole.
• BestWater manufactured and sold water filtering systems. Made
a short video clip about water contamination. Ended up on
YouTube. BestWater said without its consent.
• Direct competitor displayed the video on their website by
embedding the YouTube video so that it appeared that the video
was on the competitor’s websites.
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EU Case Law: BestWater
• The mere fact that a protected work, freely available on an
internet site, is inserted into another internet site by means of a
link using the ‘framing’ technique, cannot classified as
‘communication to the public’ within the meaning of Article 3(1) of
Directive …since the work at issue is not transmitted to a new
public or communicated by a specific technical method different
from that of the original communication.
• It was not established in the lower courts if the video was
uploaded with or without the copyright holders consent.
• Did not address unfair competition.
• No new public and no new technical means = no copyright
infringement
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EU Case Law: GS Media
CJEU September 8, 2016:
• A women posed nude for Playboy.
• Before publication of the magazine, Dutch television reported and
broadcast a couple of pictures.
• A Dutch website reported pictures had been leaked without permission
and provided a link to an Australian Filefactory website from which the
pictures could be downloaded.
• Company that commissioned photos asks the Dutch website to remove
the link. They did not comply.
• Dutch Court held that providing the link had not infringed copyright as
the photos has already been made public before they were posted on
the Filefactory website. However GS Media had acted unlawfully by
encouraging the viewing.
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EU Case Law: GS Media
• No new public and no new technical means = no copyright
infringement
• Advocate general argued that in effect it did not matter if the link
was to a work put there without the consent of the rights holder if
the link was to a work freely available on the internet.
• Argued that persons providing links could not know if the rights
holder had consented or not.
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EU Case Law: GS Media
• The Advocate General claimed that the fact of automatically
categorising such links as ‘communication to the public’, would
have highly restrictive consequences for freedom of expression
and of information and would not be consistent with the right
balance which Directive 2001/29 seeks to establish between that
freedom and the public interest on the one hand, and the
interests of copyright holders in an effective protection of their
intellectual property, on the other.
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EU Case Law: GS Media – CJEU Decision
• CJEU agreed that there was no “new public”
• Nevertheless providing the link with actual knowledge that the
work was on the internet without the consent of the copyright
owner and for profit was sufficient to constitute this as a copyright
infringement.
– “Article 3(1) of Directive …must be interpreted as meaning that, in order
to establish whether the fact of posting, on a website, hyperlinks to
protected works, which are freely available on another website without
the consent of the copyright holder, constitutes a ‘communication to the
public’ within the meaning of that provision, it is to be determined
whether those links are provided without the pursuit of financial
gain by a person who did not know or could not reasonably have
known the illegal nature of the publication of those works on that
other website ….”
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Policy Considerations
• These cases can all be seen as part of wider issue of
responsibility of others, internet service providers, website
content providers and all who host or post or provide access to
content on the internet.
• What responsibility, if any, do you have for copyright infringement
where providing a link? Or making a link available? Or grabbing
a work by means of a link?
• What reasonably can you do by reference to another’s work.
• Part of larger debate that spawned ACTA’s attempt to put
responsibility onto internet service providers.
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Further Policy Considerations
• There is a relevant distinction to be made between simple linking on the
one hand, and framing and embedding on the other hand.
• UK AIPPI report:
– With linking, the copyrighted work is being viewed on the owner’s website,
as the owner intended and in the way that the owner has themselves made
that work available to the public.
– The relevant act of communication of the actual work to the public has still
been done by the copyright owner – the act of the linker is essentially that of
signposting/directing the content viewer to that work.
– In those circumstances, the owner receives the credit for their work, both
from a moral rights attribution perspective and in terms of page view
numbers, with any attendant commercial benefit that ensues.
– Accordingly, from a policy perspective, their rights and interests in their
copyrighted work are preserved.
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Further Policy Considerations
– However, in the case of linking and embedding, the copyrighted content will
appear outside of its original context on the copyright owner’s site, and will
instead appear on the site of the framer/embedder, in whatever context the
framer/embedder chooses.
– Accordingly, the owner of the copyright assumes an entirely passive
role in any communication of that work to the public – the
framer/embedder is the party who is presenting the work on their site,
possibly (or ambiguously) as their own work, and is deriving
commercial or reputational benefit from the work in place of the
copyright owner.
– In those circumstances the rights and interests of the copyright owner
are impinged upon.
– And does it matter whether the link to the second web site is automatic
when the user goes onto the first website or whether it is user activated by
the positive act of clicking.
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Further Policy Considerations
– Canadian courts seem to think it is relevant to question of whether the linker
is authorizing the communication of the work and also the policy question of
whether there is deception by the automatically occurring embedded link.
– What if the link is caused by “mousing over” rather than clicking?
– What if the link is to works that have a stated restriction do not link?
– What if they violate a pay wall or some limited access restrictions (such as
“first ten articles free?”).
– EU law one of the few jurisdictions to consider some of these situations in
detail but even they are confused with questions of “new public” rather than
focusing on the “communication” right.
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AIPPI Resolution
1. Providing a hyperlink to a copyrighted work that has already been made
available to the public on the Internet with the authorization of the relevant
rights holder or in otherwise lawful circumstances should not, by itself,
constitute a further act of making such a work available to the public. To this
extent, the Resolution on Q216B is confirmed.
2. Further, providing a hyperlink to a copyrighted work that has already been
made available to the public on the Internet lawfully should not, by itself,
constitute a communication of such work to the public.
3. For the purposes of 1) and 2), no distinction should be made between a
hyperlink reference to a starting page of a second website or a deep link
reference to another page within this second website.
4. If a copyrighted work is made available lawfully on a webpage without any
access restrictions, such work should be considered as having been made
available to all members of the public that have access to the Internet.
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AIPPI resolution (continued)
5. The act of placing a framed link or an embedded link should constitute a
communication to the public, at least when the manner in which the work
has been framed or embedded misleads the public into believing that the
party engaging in the framing or linking is the source of the work.
6. A mere statement on the second website that prohibits linking should
not, by itself, make placing a link to the second website on the first
website an infringement of copyright by the linker.
7. The act of placing a hyperlink or deep link on the first website to the
second website that contains a copyrighted work that has been posted
to the second website unlawfully, should not be by itself, an infringement
of copyright. However it may attract liability where the linker knows or
ought to have known that the copyrighted work has been uploaded
without the consent of the rights holder or where the linker provides an
inducement or authorization to copy or display or communicate to the
public the unauthorized work or contributes to the copying or
communication to the public or display of such work.
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AIPPI resolution (continued)
8. Linking to a copyrighted work which circumvents a technological
restriction, in particular but not limited to a technical protection measure,
pay wall or a password protection on a website, should attract liability
under copyright law. Additionally, liability pursuant to other laws relating
to the violation of such restrictions may arise.
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Equustek
• The flip side of liability for linking is whether an injunction should
be granted preventing someone from finding a link.
• On December 6, the Supreme Court will hear an appeal from the
Court of Appeal in British Columbia: Google Inc. v. Equustek
Solutions Inc., et al.
• The plaintiffs sued their former distributors for unlawful
appropriation of trade secrets, alleging that the distributors
designed and sold counterfeit versions of their products. The
plaintiffs obtained injunctions against the distributors, prohibiting
them from carrying on any business online. When this proved
ineffective, the plaintiffs sought a court order against Google, to
prohibit it from displaying search results worldwide that
included the distributors’ websites.
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Equustek
• The Supreme Court of British Columbia granted a worldwide
injunction against Google to prevent it from displaying its search
results for this defendant, finding that it had territorial competence
over Google and that it possessed an inherent jurisdiction to
maintain the rule of law and protect its processes, which in
appropriate circumstances may include an injunction against nonparties.
• Google sought and obtained leave to appeal essentially on the
freedom of information and free speech basis.
• The form of the injunction, a worldwide order against Google only,
preventing it from displaying search results worldwide for this
defendant is what has riled up many of the interveners who are
mostly open internet and free speech advocates.
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Searching Links as a free speech right ?
• In the U.S. in the case of Universal City Studios, Inc. v. Reimerdes in
2001, the 2nd circuit did enjoin a defendant from “knowingly linking any
Internet web site operated by them to any other web site containing
[software designed to circumvent anti-protection measures] or knowingly
maintaining any such link, for the purpose of disseminating [that
software].
• Court dismissed First Amendment concerns. Injunction applies only to
hyperlinks.
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Equustek
• In the Universal City case the injunction was against the bad
party themselves, not a third party, and directly against that
party’s behaviour in providing links, and not against a search
engine.
• Further it was within one country (the US) and not worldwide.
• Canadian Court as worldwide policeman of the Internet and
against a non-party?
• This case is interesting because:
1. Google is not a party
2. Interlocutory injunction no final order
3. Worldwide order against Google only, not other search engines
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Equustek
• No doubt one should have sympathy for persons trying to prevent
piracy, counterfeiting and infringement on the internet, but does
this extend to worldwide orders against non-parties blocking
internet search results?
• In E.U., is relief reasonably necessary, reasonably effective,
proportionate? Copyright Act, s. 41.27(4.1)
• Are territorial limitations justified and what is the impact on
freedom of expression. Is that the case here?
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Equustek
• Can we stop searches internationally and reasonably complain if
U.S. or E.U. court blocks our searches?
• Are search engines more or less responsible for the content of
sites they help locate than ISPs?
• Stay tuned.
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Domain Names
• Interesting case about legitimate interest:
• MANULIFE-DENIAL.CA
– Former Manulife lawyer sets up business attracting clients who
have been denied coverage by Manulife
– Argued that commercial use of Manulife violates trade-mark rights
and is evidence of no legitimate interest
– Sole arbitrator decides that use of manulife-denial.ca for a business
attracting litigants suing Manulife because of a denial of insurance
benefits is not deceptive and shows Mr. Fishman has a legitimate
interest, citing Red Label case 2015 FCA 290.
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Domain Names
– In earlier case, registrant had offered to sell manulifedenial.ca and
used domain name to redirect to his law firm site.
– First arbitrators found confusion, bad faith and no legitimate interest
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