Abstract The author Justin Koo is a Lecturer in Law at the University of the West Indies, St Augustine. His research interest focuses on copyright law, with specific emphasis on the communication to the public right and the development of Caribbean copyright law. The article Ziggo is the most recent decision of the Court of Justice of the European Union (CJEU) in the string of case law concerning the EU right of communication to the public. The CJEU continues to expand the scope of the communication to the public right as evidenced in its recent decisions—GS Media, Filmspeler and Ziggo. Though the expansion comes as no surprise given the trajectory set in GS Media, Ziggo nonetheless raises several questions. This article focuses on two of these issues: the diminished threshold for ‘communication’ and the overlap with secondary liability created by the adoption of the ‘knowledge’ criterion. In order to contextualize these two problems, the impact of the Ziggo decision on the UK is explored. Emphasis is placed on reconciling the CJEU’s post-GS Media approach to the communication to the public right with the approach of the UK courts, that began as early as 2010. The decision of the Court of Justice of the European Union (CJEU) in Ziggo should not have come as a surprise.1 1 C-610/15 Stichting Brein v Ziggo BV and XS4All Internet BV  ECLI:EU:C:2017:456. The conclusion that the provision of metadata files (in this case a torrent file) should amount to an act of communication to the public should have been foreseen since GS Media2 2 C-160/15 GS Media BV v Sanoma Media Netherlands BV and Others  ECLI:EU:C:2016:644. and Filmspeler and also the development of UK case law on communication to the public. Nonetheless,3 3 C-527/15 Stichting Brein v Jack Frederik Wullems, also trading as Filmspeler  ECLI:EU:C:2017:300.Ziggo stands as a demonstration of the increasing risk of overstretching the EU communication to the public right under Article 3 of the Information Society Directive.4 4 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society, OJ L 167/10. The consequence of this is an increasingly incoherent communication to the public right. As a result, this article will explore two significant issues with the CJEU’s decision in Ziggo: the diminished threshold for ‘communication’ and the overlap with secondary liability. The implications of these issues for the UK communication to the public right will also be discussed. Background Ziggo is the latest chapter in a lengthy case law concerning the right of communication to the public.5 5 To date the CJEU has decided eighteen cases concerning the communication to the public right. The communication to the public right first came to the fore in SGAE v Rafael Hoteles (2006),6 6 C-306/05 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA  ECLI:EU:C:2006:764. in which the CJEU established the core criteria of the right.7 7 They include: an act of ‘communication’ made to a ‘public’ and, in cases of retransmission or subsequent communication, there must be a ‘new public’. This case marked the beginning of the first stage of communication to the public case law, involving acts of broadcasting and rebroadcasting, cable retransmission and reception in public of broadcasts. In 2013, ITV v TVCatchup raised the first online issue,8 8 C-607/11 ITV Broadcasting Ltd and others v TVCatchup Ltd  ECLI:EU:C:2013:147. that is, retransmitting a terrestrial broadcast over the internet. The ITV case is significant because it led to the first alteration to the traditional criteria of the communication to the public right with the addition of the ‘specific technical means’ criterion.9 9 That is, a different means of communication to that of the original dissemination. For example, retransmitting a television broadcast over the internet. However, apart from this criterion, the issues remained by and large the same as before. It was not until Svensson (2014) that the second phase of communication to the public case law began.10 10 C-466/12 Nils Svensson and Others v Retriever Sverige AB  ECLI:EU:C:2014:76. This second stage of case law can be described as the internet stream of cases with emphasis being placed on digital acts such as hyperlinking, add-ons for film players and torrent files. In fact, the problems that will be discussed in this article concerning the Ziggo decision can be attributed to the missteps made by the CJEU in Svensson and the incoherent ‘fix’ adopted in GS Media. However, it should be noted that the communication to the public right is not problematic now. Rather, the right has been inherently problematic since the first case, SGAE v Rafael Hoteles.11 11 Discussing all the problems with the EU communication to the public right exceeds the scope of this article. As such, focus is solely limited to two problems highlighted in Ziggo. See J. Koo, The Right of Communication to the Public in EU Copyright Law (Hart Publishing, forthcoming 2018) for a comprehensive analysis of the scope of the right. Therefore, the issues with Ziggo merely amount to a deepening of the already existing cracks in the law. Ziggo The Ziggo case was brought by Dutch copyright interest group Stichting Brein to force the defendant internet service providers (ISPs) to block the domain names and IP addresses of torrent website The Pirate Bay (TPB). In the CJEU’s decision, it is reported that the Hoge Raad der Nederlanden (Dutch Supreme Court) noted that it was clear that ‘the actions of the online sharing platform TPB make protected works available to the public without the rightholders’ consent’ and that the users of TPB also make available to the public works without the authorization of rightholders.12 12 Ziggo  para 15. However, it was unclear whether TPB also communicates to the public works through the maintenance and indexing of torrent files on their website. The importance of this issue has been articulated by Husovec and van Dongen who argue that the primary reason for the Ziggo referral stemmed from the absence of a copyright specific doctrine on secondary liability. Thus, in order to block the TPB website using Article 8(3) of the Information Society Directive, the operator of the website13 13 That is, the third party (TPB) using the services of the ISP. would need to be held as a copyright infringer.14 14 M. Husovec and L. van Dongen, ‘Website Blocking, Injunctions and Beyond: View on the Harmonization from the Netherlands’ (2017) TILEC Discussion Paper DP 2017-024, 15. There is no dispute that the referral was a necessary one, but the language used in the referral raised two concerns. In looking at the two statements made by the Dutch Supreme Court, there is confusion. On the one hand, it appears that the Dutch Supreme Court stated that the actions of TPB clearly amount to the making available of works, thus leading to infringement. However, the referred question stated that it is uncertain whether the indexing of torrent files amount to infringement of the communication to the public right. The language used by the CJEU in reporting the findings of the Dutch Supreme Court makes it seem that making available is distinct from the notion of communication to the public. It is possible that the English reporting of the CJEU’s decision in Ziggo confused the matter. This is because Section 4, Article 12 of the Auteurswet when translated into English reads as ‘making public’.15 15 M. van Eechoud, ‘Copyright Act – Auteurswet Unofficial Translation’ in P. B. Hugenholtz, A. Quaedvlieg and D. Visser (eds), A Century of Dutch Copyright Law: Auteurswet 1912–2012 (deLex 2012). Article 12 of the Auteurswet provides five different types of ‘making available’ including ‘making available reproductions’ and broadcasting. Therefore, the English report of Ziggo might have mistranslated ‘making public’ as making available to the public. Moreover, uncertainty arises because of the absence of an express right of communication to the public under the Auteurswet. This interpretation can be supported by referring to the Advocate General’s Opinion for Ziggo, which contains a discussion of the issue whether TPB or the defendants’ users are responsible for unauthorized acts of communication to the public.16 16 C-610/15 Stichting Brein v Ziggo BV and XS4All Internet BV , Opinion of Advocate General Szpunar, ECLI:EU:2017:99, paras 14–15. Also see Ziggo  para 36. If it is not a mistranslation then it can be reasoned that the Dutch Auteurswet and Supreme Court treat the act of making available to the public as a distinct right from communication to the public. If reference is made to Article 3 of the InfoSoc Directive, it should be inferred that the act of making available is a subset of the communication to the public right.17 17 P. Goldstein and P. B. Hugenholtz, International Copyright: Principles, Law, and Practice 3rd edition (Oxford University Press 2013), p. 336; M. Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their Interpretation and Implementation (Oxford University Press 2002) para C8.17; and G. Westkamp, ‘Transient Copying and Public Communications: The Creeping Evolution of Use and Access Rights in European Copyright Law’ (2004) 36 Geo Wash Int’l L Rev 1057, 1076–7. That is, ‘making available’ is one type of ‘communication’ akin to broadcasting or cabling.18 18 Svensson  para 20. With this in mind, stating that it was clearly an infringement of the making available right, alongside stating that it was uncertain whether there was infringement of the communication to the public right would be erroneous. This is because a finding of making available would amount to a finding of communication to the public. Consequently, the Ziggo referral raised additional concerns with the interpretation and understanding of the communication to the public right. Key elements of the decision Traditionally, the core criteria of the communication to the public right have been an act of ‘communication’ that is made to a ‘public’. Where the act is one of retransmission or subsequent communication the CJEU has required that the ‘communication’ must also be made to a ‘new public’,19 19 See SGAE v Rafael Hoteles . unless it is made by ‘specific technical means’ as prescribed in ITV v TVCatchup.20 20 ITV v TVCatchup  para 39. Following GS Media and Filmspeler, the necessary elements to determine communication to the public have seemingly evolved to include ‘knowledge’ and ‘for profit’. These two criteria work in tandem to ultimately determine whether there is an act of ‘communication to the public’, to the extent that they appear indispensable from GS Media, Filmspeler and Ziggo.21 21 GS Media  paras 49–51; Filmspeler  paras 49–51; Ziggo  paras 45–6. Therefore, in the absence of actual ‘knowledge’ or presumed knowledge (‘for profit’ presumption) there will be no act of ‘communication to the public’. In Ziggo, ‘public’ is unproblematic given the millions of users and the fact that the content being shared was made available without the consent of the rightholder.22 22 Note, the ‘new public’ criterion in Ziggo is conflated with the finding of ‘knowledge’ – Ziggo  para 45. However, the determination of ‘communication’ and the use of the ‘knowledge’ criterion requires further analysis. In following the access approach, the CJEU held that indexing torrent files would be an act of ‘communication’. This is because TPB in providing an online sharing platform that indexes torrent files provides access to works that ‘could not be shared by users otherwise or, at least the very least … would prove to be more complex’. Thus, TPB would play an essential role in making the works in question available despite not hosting or sharing the actual works.23 23 Ziggo  paras 36–7. The reasoning used to establish that there was an act of ‘communication’ and the overall conclusion that there was ‘communication to the public’ presents two major problems. First, the standard for establishing ‘communication’ was diminished and, secondly, the CJEU’s use of ‘knowledge’ as a critical element of its decision has created overlap with secondary liability at the domestic level. Generally, the CJEU has held that the term ‘communication’ should be interpreted in terms of providing access. This access approach was first illustrated in Rafael Hoteles: ‘[intervention], in full knowledge of the consequences of its action, to give access to the protected work to its customers. In the absence of that intervention, its customers, although physically within that area, would not, in principle, be able to enjoy the broadcast work.’24 24 SGAE v Rafael Hoteles  paras 42–3. This was reaffirmed in Svensson in relation to internet activity25 25 Svensson  para 19. and supported by several academic sources.26 26 ALAI, Report and Opinion on the making available and communication to the public in the internet environment – focus on linking techniques on the Internet (2013) 3. ALAI in its later reports maintained the belief that acts of hyperlinking are ‘communications’ because they offer access to the protected works – ALAI, Opinion Proposed to the Executive Committee and adopted at its meeting, 17 September 2014 on the criterion ‘New Public’, developed by the Court of Justice of the European Union (CJEU), put in the context of making available and communication to the public (2014) 1 and ALAI, ALAI Report and Opinion on a Berne-compatible reconciliation of hyperlinking and the communication to the public right on the internet (2015) 1. See also: T. Dreier and P. B. Hugenholtz, Concise European Copyright Law (Kluwer Law International 2006), p. 361; WIPO, WIPO National Seminar on Copyright, Related Rights, and Collective Management (2005) 13, para 56; S. Ricketson and J. Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (Oxford University Press 2006) para 12.58; J. Ginsburg, ‘Hyperlinking and “Making Available”’ (2014) EIPR 147, 147; and A. Tsoutsanis, ‘Why Copyright and Linking Can Tango’ (2014) 9(6) JIPLP 495, 498–501. Despite the continued use of the access approach, the act of ‘communication’ should be arguably interpreted in line with the transmission approach: an act of ‘communication’ should involve an actual provision of the work rather than mere access to it.27 27 I. Stamatoudi and P. Torremans, EU Copyright Law: A Commentary (Edward Elgar Publishing 2014), p. 412, para 11.24; M. Walter and S. von Lewinski, European Copyright Law: A Commentary (Oxford University Press 2010), para 11.3.30; S. Depreeuw, The Variable Scope of the Exclusive Economic Rights in Copyright (Kluwer Law International 2014), pp. 353–4 and 439; European Copyright Society, Opinion on the Reference to the CJEU in Case C-461/12 Svensson (2013) 2, 6; and M. Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their Interpretation and Implementation (Oxford University Press 2002), p. 499, para C8.08. The transmission approach has only been referred to by the CJEU in FAPL v QC Leisure.28 28 C-403/08 and C-429/08 Football Association Premier League (FAPL) and others v QC Leisure and others and Karen Murphy v Media Protection Services Ltd  ECLI:EU:C:2011:631, para 193. The consequence of adopting the transmission approach is that acts such as simple hyperlinking,29 29 European Copyright Society (2013), 2, 6 and ALAI (2013), 9. indexing torrent files and providing add-ons for film players should fall outside the scope of the communication to the public right. This is because none of these acts involve the provision or dissemination of copyright works. Instead, they are the mechanisms that facilitate the ability of users to access works from a specified location: the act is distinct from the work. This is because if the work in question is removed, the mechanism remains intact, but the actual ability to avail that work is removed. As a result, the right of communication to the public should not concern itself with acts or means that merely facilitate the making of a communication to the public in accordance with Recital 27 of the InfoSoc Directive. However, this is not to say that these acts should avoid liability, as they still involve reprehensible conduct, rather they should be addressed under a harmonized approach to secondary liability.30 30 For discussions on justifying secondary liability in copyright law see: J. Dietrich, ‘Accessorial Liability in the Law of Torts’ (2011) 31(2) Legal Studies 231, 231–3; P. Davies, ‘Accessory Liability for Assisting Torts’ (2011) 70(2) CLJ 353, 357; P. Davies, Accessory Liability (Hart Publishing 2015), p. 4; P. Davies, ‘Accessory Liability: Protecting Intellectual Property rigHts’ (2011) IPQ 390, 400; and T. Pek San, ‘Developing a Secondary Copyright Liability Regime in Malaysia: Insights from Anglo-American Jurisprudence’ (2011) IPQ, 50, 51. The advantage of using the transmission approach in this regard is that it acts as a better filter for the communication to the public right. While the access approach may be better suited for the interests of rightholders, it must be remembered that rightholders’ interests do not exist in a vacuum and should be balanced with competing interests, notably those of users and technological development. The consequence of the access approach is that any act allowing users to gain access to the work will amount to an act of ‘communication’. Practically, this means that ‘communication’ will be established even where the work is not embodied in the act complained of, thus, capturing acts that merely facilitate access. A major implication of this is overregulation of distributive technologies on the internet that may be detrimental to the availability of information. Overregulation in this capacity is also a disincentive to innovate new technologies that allow for easier and faster transfer of information. Furthermore, the use of the access approach is an inefficient means of regulation. Instead of starting with the premise that every act of dissemination should amount to ‘communication’, a more nuanced definition for ‘communication’ should be adopted. The transmission approach can be used in this regard to limit acts of ‘communication’ to situations where there is an actual or potential provision of the work. If the work is not embodied in the dissemination there should be no act of ‘communication’ and therefore no ‘communication to the public’.31 31 This finding will compatible with the traditional international approach to communication to the public—WIPO, Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to be Considered by the Diplomatic Conference (CRNR/DC/4) (1996), 46, para 10.15. Adopting the transmission approach would also remove the CJEU’s dependence on the ‘new public’ criterion as the determinant for finding ‘communication to the public’.32 32 This will avoid the scenario in Svensson where the CJEU established that there was ‘communication’ and ‘public’, but no ‘communication to the public’ because there was no ‘new public’. This is because the finding of ‘communication to the public’ should be solely based on the establishment that there is a ‘communication’ made to a ‘public’. Therefore, the requirements of ‘new public’,33 33 ‘New public’ should be discarded because it was expressly dismissed at the Berne Convention. Thus, it was wrongly incorporated in C-306/05 Sociedad General Autores y Editores (SGAE) v Rafael Hoteles SA , Opinion of AG Sharpston, ECLI:EU:C:2006:479, para 50 and later followed by the CJEU in SGAE v Rafael Hoteles . AG Sharpston’s erroneous reliance on the ‘new public’ criterion was influenced by the old WIPO Guide to the Berne Convention (1978), 68—9 and C-293/98 Entidad de Gestión de Derechos de los Productores Audiovisuales (Egeda) v Hostelería Asturiana SA (Hoasa) , Opinion of AG La Pergola, ECLI:EU:C:1999:403, paras 20–6. ‘knowledge’ and ‘for profit’ should be discarded.34 34 The ‘knowledge’ and ‘for profit’ criteria should be discarded because copyright infringement has never required actual or presumed knowledge, given that it is strict liability. Furthermore, it creates overlap issues with secondary liability that will be discussed in more detail. However, Ziggo has continued to perpetuate the overstretching of the EU communication to the public right. It has indeed resulted in the further deterioration of the situation by expanding the interpretation of ‘communication’ to include acts that make access to works less complex.35 35 Ziggo  para 36. The significance of this development can be seen by comparing GS Media and Filmspeler with Ziggo. In GS Media, the defendant posted the hyperlink to the infringing photographs on their website. Similarly, in Filmspeler the defendant pre-installed add-ons containing hyperlinks onto the device being sold. The similarity between these two cases is that the means to the infringing content was added by the defendant. By contrast, TPB in Ziggo did not add any content, but rather indexed the torrent files contributed by their users. Therefore, finding that indexing torrent files amounted to an act of ‘communication’ because it made access less complex exacerbates the problems caused by the access approach.36 36 It is this author’s opinion that hyperlinking and providing add-ons should not amount to an act of ‘communication’. The scope of the communication to the public right is supposed to exclude ‘the mere provision of facilities for enabling or making a communication’.37 37 Recital 27 of the InfoSoc Directive. Holding websites such as TPB liable for acts of communication to the public because they make access less complex blurs the line between what should be considered ‘communication’ and acts that should expressly fall outside the scope of the right by virtue of being ‘mere provision of facilities’. The CJEU’s argument that the indexing of torrent files is an essential intervention is noted. However, it sets a dangerous precedent that is likely to have negative implications for future technologies, given the CJEU’s progressive expansion of the access approach. The consequence is likely to be a further reduction in what is considered ‘mere provision of facilities’ in the increasingly digital world. This is to the extent that any act contributing to users obtaining works could be held as an infringing act. The other prominent issue with the Ziggo decision concerns the further undermining of the coherence of the communication to the public right by the ‘knowledge’ criterion. In affirming the use of ‘knowledge’ as set out in GS Media and Filmspeler, the CJEU in Ziggo altered the structure of the EU communication to the public right. Prior to Reha Training, the ‘for profit’ criterion played a very marginal role in the communication to the public case law.38 38 The only exception being C-135/10 Societa Consortile Fonografici (SCF) v Marco del Corso  ECLI:EU:C:2012:140, where ‘for profit’ was briefly discussed, but had no significant influence on the ultimate decision. C-117/15 Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v Gesellschaft für musikalische Aufführungs- und mechanische Vervielf.ltigungsrechte eV (GEMA)  ECLI:EU:C:2016:379. It is arguable that Reha Training was the first case where the finding of ‘communication to the public’ was directly influenced by the ‘for profit’ criterion.39 39 Reha Training  paras 49–52 and 63–4. However, the rise in prominence of the ‘knowledge’ criterion is due to the dilemma created by the CJEU in Svensson where it was held that there is no ‘new public’ where a work is made freely available online.40 40 Svensson  paras 24–7. The consequence of the Svensson decision was the potential blanket exhaustion of the communication to the public right where works are made freely available online.41 41 P. B. Hugenholtz and S. van Velze, ‘Communication to a New Public? Three Reasons Why EU Copyright Law Can Do without a “New Public”’ (2016) IIC 797, 811; J. Rosén, ‘How Much Communication to the Public is “Communication to the Public”?’ in I. Stamatoudi (ed.), New Developments in EU and International Copyright Law (Kluwer Law International 2016), pp. 331–50; P. Savola, ‘EU Copyright Liability for Internet Linking’ (2017) 8 JIPITEC 139, 148 para 57. To circumvent this problem, the CJEU used the ‘knowledge’ criterion to limit the Svensson decision to scenarios where the work is made freely available with the consent of the rightholder.42 42 GS Media  para 49. Therefore, where a work is made freely available without consent, it is held to be to a ‘new public’. Furthermore, where the defendant has knowledge of the absence of consent, it will lead to a finding of ‘communication to the public’.43 43 Ziggo  paras 45–7. The application of ‘knowledge’ in GS Media, Filmspeler and Ziggo took the form that the further dissemination of a work made available online without consent will amount to an act of communication to the public if the defendant had actual or presumed knowledge of the unauthorized nature of the work.44 44 Ibid  para 45. Consequently, the ‘knowledge’ criterion has become the ultimate determinant for proving communication to the public where there is a ‘communication’ and a ‘public’ in lieu of the ‘new public’ criterion.45 45 Compare with Svensson  para 28 where ‘new public’ was the determinative criteria for establishing an actionable act of ‘communication to the public’. This can be seen in GS Media and Filmspeler, where it is assumed that the existence of knowledge of the infringing nature of the works made available establishes an act of ‘communication to the public’.46 46 GS Media  paras 49 and 54–5 and Filmspeler  paras 49–52. Thus, it is unnecessary to discuss ‘new public’ as it logically flows from the absence of consent or the presumption of knowledge of lack of consent. Ziggo, however, adopted a different approach in conflating the discussion on the ‘knowledge’ and ‘new public’ criteria. It was held that TPB could not be unaware of the unauthorized nature of the files being shared and, as such, there must be a ‘communication to a “new public”’ and consequently a ‘communication to the public’.47 47 Ziggo  paras 45–7. Although the same conclusion was reached in GS Media and Filmspeler, in Ziggo the CJEU was careful to demonstrate the link between ‘knowledge’ and ‘new public’. Nonetheless, it remains that establishing an act of communication to the public is now dependent on the ‘knowledge’ criterion.48 48 As opposed to the use of ‘knowledge’ as a mere contributing factor. See SCF v Marco del Corso . Reliance on the ‘knowledge’ criterion’ as the final determinant for establishing an act of ‘communication to the public’ creates two significant problems. The first one relates to incoherence because it is possible that there is an act of ‘communication’ made to a ‘public’, yet no ‘communication to the public’ where there is no ‘knowledge’.49 49 Savola (2017) 143, para 19. This is problematic because the ‘knowledge’ criterion surpasses the core criteria of the communication to the public right in importance, for cases involving retransmissions and subsequent transmissions. The finding of ‘communication to the public in such cases’ has become dependent on the existence of ‘knowledge’.50 50 In Ziggo, the ‘new public’ criterion was conflated with ‘knowledge’ as the determining factor for establishing an act of communication to the public – Ziggo  para 45. In essence, ‘knowledge’ replaced the ‘new public’ criterion as the determining factor for infringement.51 51 The use of the ‘knowledge’ criterion as the determining factor for establishing an act of ‘communication to the public’ can be subjected to similar criticism as ‘new public’ because it is not justifiable. Like ‘new public’, ‘knowledge’ has never been a requirement for the communication to the public right at the international or domestic levels. Consequently, to require it for the application of Article 3 of the InfoSoc Directive is questionable. At present, there is no clear way to determine the threshold for what constitutes ‘knowledge’ for the purpose of establishing infringement. In Ziggo, the CJEU held that the operators of TPB could not be unaware of the unauthorized nature of the works being shared given the ‘very large number of torrent files’ available without consent. However, Ziggo and the example of TPB should be placed on the furthest end of the spectrum, as it is one of the most popular torrent websites on the internet. Therefore, it remains an open question how courts should treat ‘knowledge’ in cases involving media that are obscure, involves significantly less content and/or experience substantially less user traffic. The only assistance offered by the CJEU in terms of ‘knowledge’ are the possibility of actual knowledge or presumed/constructive knowledge. Actual knowledge occurs where the defendant is caused to know by virtue of the context or facts of the situation as demonstrated in GS Media, Filmspeler and Ziggo, where it was clear that the content being shared had not been authorized by the rightholder given that it is marketed as such or that notice was given by rightholders.52 52 See GS Media  para 49, Filmspeler  para 50 and Ziggo  para 45. By contrast, presumed knowledge is imputed where the act of ‘communication’ is done ‘for profit’. Operators who communicate works for profit are expected to have carried out the necessary checks to determine whether the work has been made available with the authorization of the relevant rightholder.53 53 GS Media  para 51. In GS Media, Filmspeler and Ziggo the CJEU has made it appear to be simple to establish knowledge, but these cases were ‘easy’. The reality is that neither type of ‘knowledge’ is simple to prove in less clear-cut cases.54 54 Ibid, para 46. For example, in situations where websites providing infringing content are designed to look legitimate, or where the content is framed in such a way as to appear as if it was provided by another legitimate source, or even where the website is subscription-only.55 55 Savola (2017) 147, paras 49–50. Regardless of this, courts appear to be inclined to establish knowledge, primarily through the use of the ‘for profit’ criterion, given its broad nature, inclusive of direct and indirect profit of varying degrees.56 56 Savola (2017) 145, para 40; B. Clark and J. Dickenson, ‘Theseus and the Labyrinth? An Overview of “Communication to the Public” under EU Copyright Law: after Reha Training and GS Media. Where Are We now and Where Do We Go from Here?’ (2017) 39(5) EIPR 265, 269–70. Thus, it does not appear difficult to satisfy prima facie the ‘knowledge’ requirement. However, what constitutes ‘for profit’ remains unclear. This has led to speculation about what standard duty of care the ‘knowledge’ criterion has introduced for potential communicators.57 57 Savola suggests that ‘it seems likely that the standard may have been intended to be set somewhat higher, for example in actively seeking and obtaining financial gain.’ As opposed to instances where the pursuit of profit is weaker, that is ‘when linking is casual and not the main object of the site’—Savola (2017), 145–6 paras 40–4. See also, Clark and Dickenson (2017) 269–70; E. Rosati, ‘GS Media and its Implications for the Construction of the Right of Communication to the Public within EU Copyright Architecture’ (2017) 54(4) CMLR 1221, 1231; L. Midelieva, ‘Rethinking Hyperlinking: Addressing Hyperlinks to Unauthorized Content in Copyright Law and Policy’ (2017) 39(8) EIPR 479, 483–4; E. Rosati, ‘The CJEU Pirate Bay Judgment and its Impact on the Liability of Online Platforms’ (2017) 39(12) EIPR 737, 740 and 743–4; M. Leistner, ‘Closing the Book on the Hyperlinks: Brief Outline of the CJEU’s Case Law and Proposal for European Legislative Reform’ (2017) 39(6) EIPR 327, 330–2. In the absence of clearer guidelines the ‘knowledge’ criterion is problematic to apply. Although it is this author’s opinion that the ‘knowledge’ criterion should be abandoned, it must be further explained and clarified for the future if it is to be retained. Additional to the interpretation issues faced by the ‘knowledge’ criterion, its impact on the analogue retransmission cases, such as SGAE v Rafael Hoteles and FAPL v QC Leisure is uncertain. Emphasis must be placed on this point because the ‘knowledge’ criterion has seemingly replaced the ‘new public’ criterion as the determinant factor for finding infringement.58 58 GS Media  para 49, Fiilmspeler  paras 50–2 and Ziggo  para 45. Consequently, it appears that there are two distinct lines of case law concerning the communication to the public right: the analogue cases without the ‘knowledge’ criterion and the post-Svensson cases where the ‘knowledge’ criterion was introduced. As a matter of coherence, it should not be the case that the communication to the public right is applied differently in different technological contexts. A coherent right requires consistent application of the rules. Argument may be made that this is not the case for the Article 2 reproduction right where digital copies are treated differently from tangible copies. This is true because transient digital copies are subject to special treatment under Article 5(1) of the InfoSoc Directive. However, this distinction should be isolated because there is a functional difference between tangible and digital/intangible copies. The use of tangible copies does not require nor result in the creation of temporary copies, whereas, the use of an intangible copy requires the creation of temporary copies, for example in the RAM of a computer. Therefore, the distinction is warranted because the two types of copies are functionally different. By contrast, the different types of ‘communication’ should not be seen as functionally different even though they are technologically diverse. All acts of ‘communication’ are immaterial or intangible. Therefore, the analogue–digital divide does not create a functional dichotomy. Consequently, there is no reason to create a new line of case law to accommodate internet technologies.59 59 This interpretation will also require an abandonment of the ‘specific technical means’ criterion that became notable in ITV v TVCatchup . Instead, the traditional requirement of the organization other than the original one from Article 11bis(1)(ii) of the Berne Convention should be relied on. From a normative standpoint, if the two essential criteria of ‘communication’ and ‘public’ are met, the essence of the right is satisfied and there is no need for additional criteria. This is, however, premised on the adoption of the transmission approach for the interpretation of ‘communication’. A better defined ‘communication’ criterion can filter acts that should not come within the scope of communication to the public, such as simple hyperlinking, indexing of torrents and provision of add-ons; thus, removing the need for additional criteria like ‘new public’ and ‘knowledge’. Where a provision of a work is made to a ‘public’ the right of communication to the public should intervene. In the absence of this, reliance should be placed on the laws of secondary liability which should be harmonized for EU copyright law.60 60 This is because secondary liability is better suited to addressing situations where the work is not transmitted due to the fact that primary infringements should directly involve the work. The second issue with the ‘knowledge’ criterion concerns the conflation of primary and secondary liability. Traditionally, the infringement of the exclusive rights of copyright law has never expressly required knowledge or intention to establish infringement.61 61 This reasoning has caused copyright to be viewed as a strict liability tort. Goold describes this as the ‘orthodox view’, but goes on to criticize the orthodox view of copyright law by arguing for the fault-based nature of copyright infringement. P. Goold, ‘Is Copyright Infringement a Strict Liability Tort?’ (2014) 30(1) Berkeley Technology Law Journal 306, 333, 338–53. See also: S. Hetcher, ‘The Immortality of Strict Liability in Copyright’ (2013) 17(1), Marquette Intellectual Property Law Review, 1; A. Dorfman and A. Jacob, ‘Copyright as Tort’ (2011) 12 Theoretical Inq L 59. This is not to say that knowledge has no role to play in copyright law. For example, finding infringement of the reproduction right requires a causal link which has been interpreted to include subconscious copying, thus indirectly including an inference of knowledge, albeit presumed knowledge.62 62 See Designers Guild Ltd v Russell Williams (Textiles) Ltd  FSR 11 and Goold (2014), 327. In the UK, knowledge has only been a manifest consideration for copyright in terms of secondary liability. Therefore, by expressly requiring ‘knowledge’ for the infringement of the communication to the public right, the line between primary and secondary liability is blurred. This is primarily attributable to the absence of harmonized rules on secondary liability at the EU level. Consequently, the CJEU felt the need to expand the scope of the communication to the public right to address the gap in the law.63 63 C. Angelopoulos, European Intermediary Liability in Copyright: A Tort-Based Analysis (Kluwer Law International BV 2017), pp. 65–6 and Savola (2017) 143, para 23. The two issues discussed, the diminishing of the threshold for ‘communication’ and the use of the ‘knowledge’ criterion, which are exacerbated in Ziggo merely add to the plethora of existing problems with the Article 3 communication to the public right and its interpretation. Consequently, it is important to evaluate the impact of these issues on the UK communication to the public jurisprudence. Impact on the UK Having noted two considerable issues with the CJEU’s decision in Ziggo, it is important to contextualize the impact of the issues at the domestic level. In the UK, the development of the communication to the public right has been forced to react to the use and abuse of modern technology. Moreover, UK courts have battled with similar situations to the cases of GS Media, Filmspeler and Ziggo prior to the CJEU’s rulings in these cases, with limited guidance. As a result, it is necessary to discuss how the Ziggo decision will affect the UK approach to the right of communication to the public. UK approach to communication to the public As early as 2010, UK courts have been dealing with the application of the communication to the public right to cases concerning modern modes of online dissemination. The first case concerned the Newzbin platform.64 64 Twentieth Century Fox Film Corp v Newzbin Ltd  EWHC 608 (Ch). In early 2017, the UK courts had ruled in cases concerning torrent files,65 65 EMI Records Ltd and others v British Sky Broadcasting Ltd and others  EWHC 379 (Ch) and 1967 Ltd v British Sky Broadcasting Ltd  EWHC 3444 (Ch). hyperlink aggregators,66 66 The Football Association Premier League Ltd v British Sky Broadcasting Ltd and others  EWHC 2058 (Ch) and Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others  EWHC 3479 (Ch). streaming software67 67 Twentieth Century Fox Film Corp and others v SKY UK Ltd and others  EWHC 1082 (Ch). and film players with add-ons.68 68 Football Association Premier League Ltd v British Communications Plc  EWHC 480 (Ch). Like the CJEU, the UK courts have established that the actions of hyperlink aggregators, torrent websites and providers of add-ons for film players amount to infringements of the communication to the public right. This is significant because UK courts’ rulings pre-date the CJEU decisions in Filmspeler and Ziggo. Furthermore, UK courts have avoided the conflation of primary and secondary liability by holding that the aforementioned acts amount to communication to the public without the use of a ‘knowledge’ criterion. UK courts have developed their communication to the public jurisprudence by focusing on the core requirements of ‘communication’ and ‘public’. Emphasis should be placed on Arnold J’s statement in Paramount that ‘it is arguable that it makes no difference whether or not the source of the copyright work to which the hyperlink links is licensed by the copyright owner.’69 69 Paramount v BSkyB  para 32. It can clearly be seen that the communication to the public right would apply in its standard form regardless of whether the work communicated was from an authorized or unauthorized source. As such, the UK approach can be distinguished from the CJEU’s approach in Svensson and beyond, where the ‘knowledge’ criterion became essential to combat the potential blanket exhaustion issue created in Svensson.70 70 Had the CJEU not distinguished works made freely available on the internet in Svensson, there would be no need for the ‘knowledge’ criterion. Therefore, it may be the case that the conclusions of the UK courts and the CJEU coincide, although the reasoning employed differs. The above claims are supported by UK courts’ emphasis on the nature of the intervention made by the operator. That is, heavy reliance is placed on the ‘communication’ criterion as a filter. ‘Communication’ has been interpreted in terms of the degree of intervention by the operator and/or how the intervention is perceived by end users. Thus, where the operator makes it easier for users to access works, UK courts have established an act of communication to the public.71 71 FAPL v BSkyB  para 42, Paramount v BSkyB  para 34 and 1967 v BSkyB  para 19. Similarly, where it appears from the end user’s perspective that the operator makes the work available, communication to the public can also be established.72 72 Twentieth Century Fox v SKY UK  para 42. However, it is noticeable that the UK communication to the public case law has not focused on the source of the content being communicated. Consequently, there has been no need to adopt the ‘knowledge’ criterion as in GS Media. Instead, ‘knowledge’ is exclusively limited to findings of secondary liability, particularly related to holding ISPs accountable to prevent further acts of infringement using s.97A of the Copyright, Designs and Patents Act 1988. The case law of the CJEU and the UK are clearly distinguishable. The UK’s reliance on the core criteria of the communication to the public right, ‘communication’ and ‘public’, without focus on the source of the content avoids the dilemma created by the CJEU in Svensson. As a result, it can be argued that the UK’s approach to finding communication to the public is more coherent because it focuses on the traditional criteria of the right of communication to the public. Moreover, it keeps the delineation between primary and secondary liability clear. While it is open for debate whether the scope of the communication to the public right should include acts of hyperlink aggregation, maintenance of torrent files and the provision of add-ons, it cannot be said that the UK is non-compliant with EU law. Although different modes of reasoning are used, the conclusions are the same. Nonetheless, it is possible that the UK may feel compelled to follow the CJEU in adopting the ‘knowledge’ criterion if the case law of the CJEU is to be strictly followed, as the case has been in relation to the pre-Svensson communication to the public case law.73 73 For example, the UK courts’ reliance on the access approach in interpreting ‘communication’ and the use of ‘new public’ as a core criterion for the right of communication to the public. However, presently it does not appear to be a necessity. Overlap with secondary liability Having discussed the UK versus CJEU approach to determining communication to the public, it is necessary to focus on the implication of adopting the ‘knowledge’ criterion. At the EU level, there is no harmonized framework on secondary liability for copyright law. By contrast, the UK has well established laws on secondary liability developed through common law and statute. It is argued that the CJEU’s inclusion of ‘knowledge’ into the scope of the communication to the public right is due to the absence of harmonized law on secondary liability.74 74 Angelopoulos argues that it is the absence of harmonized laws on accessory liability for copyright [including secondary liability] that is pushing the CJEU towards more expansive interpretations of authors’ exclusive rights, particularly the communication to the public right – Angelopoulos (2017), pp. 65–6. In other words, the CJEU filled a perceived gap in EU copyright law. The consequence of this is in direct conflict with the UK copyright framework. The application of the exclusive rights never required knowledge to be actionable. Instead, knowledge has been limited to secondary liability, for example in cases of authorization and in holding ISPs accountable for the prevention of further infringements. As a result, the most recent communication to the public case law of the CJEU is in direct conflict with the established system of the UK. From this, there are three available options for the UK. The first and perhaps most desirable option is to do nothing. It was previously discussed that ultimately the UK and CJEU decisions in relation to the communication to the public right are reconcilable even though they use different modes of reasoning. As such, doing nothing will maintain the status quo of UK copyright jurisprudence, and therefore not compromise the delineation between primary and secondary liability.75 75 This seems to be the approach advocated by Savola – Savola (2017) 143, para 24 (emphasis on footnote 42). The next option is to adopt the ‘knowledge’ criterion in line with the CJEU case law and modify the requirements for secondary liability in relation to acts of communication to the public. If the right of communication to the public requires ‘knowledge’ it will be superfluous to also require knowledge for the party liable of secondary infringement, as an inference can be made from the primary act upon which the offence of secondary liability is dependent. In this way, the focus is shifted entirely on to the operator, and in addition the requirement must be met at an earlier stage in proceedings. That is, ‘knowledge’ must be proven when discussing primary infringement rather than at the end of the overall discussion as it currently stands. This option is not preferable because it will cause the communication to the public right to be treated differently to the other exclusive rights in both contexts of primary and secondary liability.76 76 It will be the case that the communication to the public right will have a ‘knowledge’ requirement contrary to the tradition of copyright law, thus setting it aside from the other exclusive rights. Alternatively, the CJEU approach can be adopted and the traditional approach to secondary liability maintained so that ‘knowledge’ will have to be established in both instances. This will be undesirable because it will be inefficient to prove knowledge about the same act twice. Furthermore, it will also go against the tradition of copyright law. As such the most preferable outcome would be to ignore the ‘knowledge’ requirement in determining communication to the public infringement. This is a feasible suggestion given that both the UK courts and CJEU employ a very wide definition of ‘communication’, owing to their reliance on the access approach. As such, it is unlikely that similar factual situations will result in different conclusions unless the CJEU interprets the ‘knowledge’ criterion to achieve a specific result different to that of the UK court.77 77 This is unlikely because ‘knowledge’ can be actual or presumed, thus it appears to be an easy threshold to meet. However, it should be acknowledged that the threshold for ‘knowledge’ is yet to be fully tested and remains uncertain as a matter of law. However, should ‘knowledge’ be incorporated into the UK jurisprudence, changes will be required to ensure coherence in the law. Litigation As for the practical impact of the recent CJEU rulings on the communication to the public right in the UK, there are unlikely to be any significant changes in practice given that the CJEU reached the same conclusions of UK courts. Furthermore, claimants are unlikely to change their strategy or approach because it remains the case that targeting ISPs remains the most efficient solution to tackle ubiquitous online infringement.78 78 M. Lemley and R. Reese, ‘Reducing Digital Copyright Infringement without Restricting Innovation’ (2004) 56 Stan L Rev 1345, 1373–8; S. Hogberg, ‘The Search for Intent-Based Doctrines of Secondary Liability in Copyright Law’ (2006) 106(4) Colum L Rev 909, 910; L. Oswald, ‘Secondary Liability for Intellectual Property Law Infringement in the International Arena: Framing the Dialogue’, in R. Bird and S. Jain (eds), The Global Challenge of Intellectual Property Rights (Edward Elgar Publishing Ltd 2008), p. 38; M. Peters, ‘The Challenge of Copyright in the Digital Age’ in Focus on Intellectual Property Rights (2008), p. 57. This is because ISPs blocking access to websites that provide infringing content addresses the issue at the source. This is opposed to targeting specific infringers on a one-by-one basis. Finding individual infringers may prove difficult and, moreover, holding them accountable in an effective manner is unlikely.79 79 Riordan argues that pursuing primary infringers may be undesirable where ‘the wrongdoer cannot be identified, is beyond jurisdiction, lacks assets required to satisfy judgement, cannot provide a specific remedy, or if the volume of wrongdoing is simply too great to pursue individually’—J. Riordan, The Liability of Internet Intermediaries (Oxford University Press 2016), para 3.25. See also: Pek San (2011) 51–2; J. Nordemann, ‘Internet Copyright Infringement: Remedies against Intermediaries – The European Perspective on Host and Access Providers’ (2012) 59 J Copyright Soc’y USA 773, 773; M. Bartholomew and J. Tehranian, ‘The Secret Life of Legal Doctrine: The Divergent Evolution of Secondary Liability in Trademark and Copyright Law’ (2006) 21 Berkeley Tech LJ 1363, 1364; L. Oswald, ‘International Issues in Secondary Liability for Intellectual Property Rights Infringement’ (2008) 45(2) American Business Law Journal 247, 250; D. Lichtman and W. Landes, ‘Indirect Liability for Copyright Infringement: An Economic Perspective’ (2003) 16 Harv JL & Tech 395, 398. Consequently, preventing future infringement by targeting ISPs is the most time efficient and effective remedy. Conclusion Going forward it is not anticipated that the UK approach to the communication to the public right will change because of Ziggo. This is because UK law allows the same outcomes as the CJEU to be achieved without the use of the controversial ‘knowledge’ criterion. Despite this, the CJEU’s interpretation and application of the Article 3 right of communication to the public should be reformed to create a more coherent right. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Jan 5, 2018
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