Why ‘New Public’ is the Wrong ‘Public’ for the Communication to the Public Right under EU Copyright Law

Justin Koo, PhD Candidate at King’s College London

The communication to the public right under EU copyright law has increasingly been under scrutiny in the last few years due to several important decisions delivered by the Court of Justice of the European Union (CJEU). The consequence of this intense focus has been the increasing recognition and criticism that aspects involved in the application of the communication to the public right are not legally sound and potentially unjustifiable and indefensible. One such aspect is the ‘new public’ criterion. Perhaps, it can be said that the ‘new public’ criterion is one of the defining concepts of the communication to the public right because it ultimately determines the finding of liability, but for where a ‘communication’ is made by a ‘different technical means’.[1] As such, it is necessary to illustrate why the ‘new public’ criterion is ill suited to EU copyright law and moreover, why the ‘new public’ criterion should be abandoned. Continue reading

Case C-435/12 ACI Adam v Stichting de Thuiskopie

Justin Koo, PhD Candidate, The Dickson Poon School of Law, King’s College London

The claimants in this case were importers of data media storage devices such as CDs. By virtue of Article 16c(2) of the Auteurswet (Dutch copyright law), the claimants were responsible for the payment of remuneration to authors. This payment has the effect of offsetting the costs of the private copy exception under Article 16b given that the imported media storage devices facilitate acts of private copying. However, the claimants contended that the remuneration payable to the defendants incorrectly takes into account copying from unlawful sources. In other words, the importers were being forced to pay compensation for illegal acts that should not fall within the private copy exception under Article 16b.

On appeal to the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), the case was stayed and three questions referred to the Court of Justice of the European Union (CJEU).[1] In short, the first question asked whether private copying from unlawful sources fell within the scope of the private copy exception under Article 5(2)(b) of the Information Society Directive. In terms of the second question, the Dutch Supreme Court essentially asked what the role of the three-step test under Article 5(5) of the Information Society Directive is. The CJEU in addressing both questions together, posed the question whether reading Article 5(2)(b) and Article 5(5) of the Information Society Directive together would preclude national legislation that does not distinguish between the sources (lawful or unlawful) from which a private reproduction is made. With this in mind, the significance of the case was not about the determination of the levy to be paid but rather, the scope and application of the private copy exception.

In simple form, Article 5(2)(b) does not expressly address whether the source of the reproduction must be lawful in order to come within the exception. As such it was unclear whether copying from unlawful sources could also be included in the scope of the private copy exception. From a preliminary perspective, the exceptions and limitations provided by Article 5 of the Information Society Directive must be interpreted strictly following the decision in Infopaq.[2] Furthermore, their implementation into domestic law must be in accordance with the three-step test, as provided under Article 5(5) and emphasised under Recital 44 of the Information Society Directive. Following this established reasoning, the interpretation of Article 5(2)(b) must be understood to preclude the making of private copies from unlawful sources.

In respect to the strict interpretation of the exceptions and limitations, this can be aligned to the aim of establishing a smooth functioning internal market. Therefore, adopting a broad interpretation of the private copy exception as in the case of Article 16c of the Dutch copyright law could be detrimental to the proper functioning of the internal market.  This is because it could allow Member States to have varying forms of copyright protection not envisaged by the Information Society Directive. Furthermore, tolerating private copies made from unlawful sources would run counter to the Information Society Directive’s aim to establish a high level of protection and foster creation and investment in copyright works. Moreover, it would likely influence further acts of piracy and counterfeiting. This is because the toleration of copies made from unlawful sources could be indirectly seen as toleration of the unlawful sources.

In terms of the application of the three-step test, making private copies from unlawful sources would fail that test in at least two regards. Firstly, allowing private copies to be made from unlawful sources would conflict with the normal exploitation of the work because persons would be inclined to make a personal copy from a cheaper illegitimate copy rather than from a legal copy. This could negatively impact on the demand for legitimate versions of authors’ works. Secondly, tolerating private copying from unlawful sources may prejudice the legitimate economic interests of the author because he would be effectively unable to rely on his exclusive right of reproduction in cases of private copying. In other words, authors would be forced to tolerate the reproduction infringements that accompany private copying even where the source is an unlawful one. Thus allowing, private copying from unlawful sources would undermine the effectiveness of the exclusive right of reproduction.

With this in mind, Articles 16b and 16c of the Dutch copyright law have to distinguish between the lawful and unlawful sources of private copying in order to be compliant with Article 5(2) (b) of the Information Society Directive. The implication of this is that the inclusion of compensation for copying from unlawful sources would not be fair on the grounds that copying from unlawful sources does not fall within the scope of the private copy exception.[3] As such the claimants were right in contending that the private copy levy they were being charged was unfair and excessive.

What Now

From this case it is made clear that the private copy exception only applies to copies made from lawful sources. Therefore, making copies from unlawful sources amounts to an infringement of the exclusive right of reproduction provided by Article 2 of the Information Society. However, the more pertinent lessons to be learned from this case relate more generally to the implementation of the exceptions and limitations found under Article 5 of the Information Society Directive. It would appear that Member States do not have much leeway in transposing and interpreting the twenty-one exceptions and limitations provided. Member States do not have the freedom to expand the scope of the exceptions provided. Rather, they only have the freedom to restrict the scope of the exceptions especially in regards to new technologies.[4] Furthermore, there must be coherent and consistent application of the exceptions across Member States. As a result, it can be inferred that the wording of the exceptions provided under Article 5 are not just prototypes but perhaps ready-made provisions to be implemented verbatim.

On the one hand this strict interpretation may be good in terms of legal certainty. However, from a different perspective this development of narrow exceptions may be cause for concern given the broad and far reaching interpretations given to the exclusive rights.


[1] Only the first two questions are looked at in this article.

[2] Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009]

[3] This position was suggested in the earlier Advocate General Opinion of Trstenjak on Case C-467/08 Sociedad General de Autores y Editores (SGAE) v Padawan SL [2010] para 78

[4] See Recital 44 of the Information Society Directive

Case Note on C-466/12 Svensson

Justin Koo, PhD Candidate at King’s College London


The much anticipated hyperlinking case of Svensson[1] was delivered by the CJEU on the 13th February 2014. Such was the importance of the impending decision, several cases were stayed pending its outcome – C More Entertainment (Case C-279/13),[2] Bestwater (Case C-348/13)[3] and Paramount v B Sky B.[4] Oddly enough, there was no Advocate General’s Opinion which was surprising given the potential implications of the case including the undermining of the Internet as well as the possibility of changes for use and licensing of copyright works online.

The dispute at hand concerned the provision of clickable hyperlinks to the claimant’s newspaper articles. As such the claimants argued that the provision of clickable links by the defendant made the works available to the public and as a result was a communication to the public under Article 3(1) of the Information Society Directive 2001. In response the defendant argued that providing links to works communicated to the public on other websites does not constitute copyright infringement. Furthermore, the act of hyperlinking was not a transmission of the work as it involved mere indication to their clients of websites containing works of interest. In light of this, the Swedish court referred 4 questions to the CJEU (only the first three will be discussed in this article):

(1) If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive [2001/29]?

(2) Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?

(3) When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?

(4) Is it possible for a Member State to give wider protection to authors’ exclusive right by enabling communication to the public to cover a greater range of acts than provided for in Article 3(1) of Directive 2001/29?’

The CJEU in delivering its judgment addressed the first three questions together interpreting it to mean whether “the provision on a website of clickable links to protected works available on another website constitutes an act of communication to the public…where on that other site the works concerned are freely accessible.” Thus, the question for the Court in simple form was whether the act of hyperlinking already freely available works on the Internet was a communication to the public requiring authorisation. In order to determine this, the Court followed the established rule that the act must be a ‘communication’ and to a ‘public’.[5] Following this, the CJEU held that the provision of clickable links was an act of communication because it made the works available and moreover, it was to a public because the act of communication was made available to an indeterminate and fairly large number of recipients – Internet users.[6]

However, for the defendant’s act of hyperlinking to require the claimant’s authorisation, the communication must have been made to a new public. That is a public not taken into account by the copyright holders when they authorised the initial communication to the public.[7] But as the works being linked to were already freely accessible on the Internet, the Court held that the defendant’s links were not directed at a new public because the initial communication by the claimant would include all of the defendant’s public because the works were freely available to any Internet user. In other words, there was no new public because the initial communication was aimed to all Internet users in virtue of it being freely accessible. Therefore, it was irrelevant for the Court whether the works were being displayed on the defendant’s page so as to give the impression that the information originated from there rather than from an external source.

Despite the Court’s finding that the defendant’s act was not a communication to the public requiring authorisation, the possibility is left open that an act of hyperlinking can amount to an infringement of Article 3(1) where the provision of the link makes accessible a work which is not ordinarily accessible for example through the circumvention of security procedures on the website being linked to. As a result of this the hypothetical question must be asked whether a hyperlink to a work that was uploaded without permission would amount to an infringement of Article 3(1) (for example links to websites streaming unauthorised content such as films or sports). This is problematic not only because the Svensson case does not give us clear guidance about the answer but also because of the general undesirability of the criteria used in the Svensson case.

In the first place, the new public criteria should not be used given that it was expressly rejected in the preparatory works of the Berne Convention. Instead the concept of the ‘organisation other than the original’ was adopted under Article 11bis(1)(ii) and that is the correct criterion to be used. Secondly, from a normative perspective it is highly questionable whether the act of hyperlinking should attract copyright infringement. This is because the act of hyperlinking is essential to the infrastructure of the Internet and moreover, is more about facilitating access to works than causing actual use and infringement. As such the act of hyperlinking should fall outside the scope of the communication to the public right given its technological and informational purpose. However, if this is ignored, a useful alternative may be to treat hyperlinks in terms of secondary liability akin to authorisation in Australian copyright law or contributory liability in American copyright law.

Although many a copyright lawyer breathed a sigh of relief on hearing that hyperlinking does not amount to a communication to the public on the facts of Svensson, the CJEU’s handling of the case leaves a lot to be desired.

[1] Case C-466/12 Svensson and others v Retrierver Sverige AB

[2] Case C-279/13 C More Entertainment AB v Sandberg

[3] Case C-348/13 Best Water International v Mebes and Potsch

[4] Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 3479 (Ch)

[5] See Case C-607-11 ITV Broadcasting Ltd v TV Catchup Ltd

[6] See Case C-306/05 SGAE v Rafael Hoteles SL

[7] See SGAE v Rafael Hoteles and Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon

What They Signed For – An Introduction to the Unified Patent Court

Justin Koo LLB, LLM

PhD student, Dickson Poon School of Law, King’s College London


Introducing the UPC

According to the European Commission, the Unified Patent Court (UPC) is one of the primary aspects of the ‘patent package’ that was given the go ahead by Member States and the European Parliament on the 11th December 2012. Included within this ‘patent package’ are two Regulations[1] that were adopted on the 17th December 2012. The next aspect comprises of the international Agreement[2] on a Unified Patent Court[3] that was signed on the 19th February 2013.[4] The final phase is the establishment of a single and specialised patent jurisdiction.[5] However, the focus of this article is limited to the signing of the international Agreement that paves the way for the establishment of the UPC.

With that in mind, it is useful to note briefly the historical background of this continuing movement. The journey, or rather, the struggle toward unitary patent protection in the EU has been ongoing for at least the last thirty years.[6] As a result the receipt of twenty-four signatures for the Agreement on a Unified Patent Court has been marked with importance although it was anticipated that at bare minimum, the thirteen signatures required would have been obtained. The Republic of Ireland’s Minister for Jobs, Enterprise and Innovation who commenced the proceedings at which the Agreement was signed echoed this sentiment:

“I think this is a very significant occasion. I know that this has been a product of work over many years – indeed over almost 40 years from when the idea was first nurtured as a concept… We are very fortunate to be here to sign on behalf of our Member States this important piece of new architecture within the European Union.

What is certain is that the perceived implications of developing the UPC from a preliminary perspective are seen as positive not just to the development of the patent law system within the EU, but more importantly continuing the furtherance of the single market.


What they signed up for

For now, it is important to outline the specifics of what the Member States signed up for on the 19th February 2013. As already pointed out, twenty-four countries had signed the Agreement. It is expected that Bulgaria will also sign shortly.[7] However, Poland has opted for a ‘wait and see’ policy before it signs, given their uncertainty over the effects that joining may have on their economy.[8] They argue that the comparative costs of joining the UPC may not be beneficial to them given that their country is not a very innovative one. Thus the cost benefits marketed by the EU in using the UPC may simply not be realised in Poland. On the other hand Spain has chosen not to partake in any way or form[9] because the Spanish language had not been included as one of the official languages of the UPC. Notwithstanding that the Agreement has been signed, it is still to be ratified by France, Germany, Ireland and the UK. In the instance of the UK, “CIPA, the IPFed and other professional bodies have written to the IP Minister Lord Younger calling for a proper, evidence-based economic impact assessment…before Parliament is asked to ratify the UPC Agreement[10].” Hence, it may be some time before the UK ratifies the Agreement.

In terms of structure, the UPC will be divided into two main parts. Firstly there is the Court of First Instance that will have its centre in Paris with additional ‘thematic’ branches in London[11] and Munich.[12] Secondly the Court of Appeal will be based in Luxembourg and also house the Registry. In addition to these major institutions, each Member State will also have at least one local division.

But what does the UPC mean for the EU as a whole? In short, it means the centralisation of ‘EU Patent’[13] litigation given that Regulation 1257/2012 of the ‘patent package’ gives the European Patent Office (EPO) the power to grant EU Patents.[14] The UPC acts as the central court for resolving patent disputes in the EU concerning the aforementioned EU Patents, meaning it will no longer be necessary for EU Patent holders to contest patent claims for infringement or revocation on a country-by-country basis. Furthermore the decisions of the UPC will be binding throughout the Member States that have signed on. More generally the advantages of having the UPC and the ‘patent package’ as a whole include:[15]

  • One stop shop for patent application and litigation
  • Cost effectiveness
  • No need for translations once the patent is in English, French or German
  • Central administration being more efficient avoiding duplication of cases in multiple Member States
  • Expert judges
  • Furtherance of the single market


Problems so far…

Despite the many perceived advantages of the UPC there will inevitably be problems that arise in relation to its scope or operation. One such problem that has been raised at this preliminary point is under Article 83 of the Agreement on a Unified Patent Court where there is some disagreement on the interpretation of Article 83. In essence, Article 83 entitled “Transitional regime” is about facilitating the move toward the UPC. Under Article 83(1) a seven year transitional period is given whereby a European Patent claim can be brought before national courts instead of the UPC. However, after the seven year transitional period, the UPC will have exclusive competence over EU Patent claims. This is not disputed. Where it becomes unclear is under Articles 83(3) and 83(4), creating confusion with its opt-out clause. Some preliminary debate has already led to diverging interpretations of what happens if the patentee opts out. On the one hand, Article 83(3) can be seen as a means of extending the seven year transition period so that even after this period has expired, the UPC will not have exclusive competence. On the other, a patentee that has opted out can bring his claim under a national court or alternatively opt back in via Article 83(4) and still bring a claim under the UPC. It is the possibility of opting back in that is the real source of confusion because of the potential for absurd results especially where third parties become involved. For example consider the following hypothetical fact pattern:[16]

A PATENTEE opts out of the UPC under Article 83(3) and then licenses the patent to an EXCLUSIVE LICENSEE. The EXCLUSIVE LICENSEE then brings an infringement claim against a THIRD PARTY and uses the UPC by opting in under Article 83(4). The THIRD PARTY wants to counterclaim the invalidity of the patent and subsequently for the revocation of the patent.

Given the construct of Article 83(3) and 83(4) it is open to the interpretation where the THIRD PARTY can file his counterclaim. Two possible scenarios arise:

1)    On a liberal interpretation of Article 83 the THIRD PARTY can choose where to file the counterclaim. That is at the UPC or at the national courts. This interpretation in effect would ignore the fact that the PATENTEE has opted out. More generally it would mean that the UPC retains non-exclusive competence even if a patentee opts out under Article 83(3).

2)    Alternatively on another interpretation, if Article 83 is construed more rigidly and the fact that the THIRD PARTY cannot counterclaim for revocation against the EXCLUSIVE LICENSEE is considered then the THIRD PARTY must file a separate claim for revocation in the national courts because the PATENTEE has opted out. Therefore the UPC has no competence. This interpretation would undermine the very rationale of the UPC in centrally administrating EU Patents.

However, given the infancy of the UPC debates, no conclusive answer has yet been proffered. As such the outcome remains to be seen. It may be some time before we see the UPC in practical effect given that it does not enter into force until France, Germany and the UK have ratified the Agreement. It is estimated that the UPC should come on stream some time in 2014. But until then the discussion continues…

[1] Regulation (EU) No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

Council Regulation (EU) No 1260/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements

[2] It is termed an international agreement because it was decided that the Agreement would be concluded outside the institutional framework of the EU but would exclude non-EU parties. – Council of the European Union, ‘The long road to unitary patent protection in Europe’ (EU Factsheet, 17 December 2012) <http://www.consilium.europa.eu/uedocs/cms_Data/docs/pressdata/en/intm/134393.pdf> accessed 6 March 2013, 3

[4] It is an international agreement because it was signed outside the scope of the EU – Council of the European Union, ‘Unitary patent protection: a big leap towards innovation for EU companies’ (Brussels, 17 December 2012) 17824/12

[5] European Commission, ‘The patent reform: Unitary patent protection and the Unified Patent Court’ (20 February 2013) <http://ec.europa.eu/internal_market/indprop/patent/index_en.htm> accessed 4 March 2013

[6] European Commission, ‘EU UNITARY PATENT: EUROPEAN PARLIAMENT AND COUNCIL GIVE GREEN LIGHT’ (11 December 2012) <http://ec.europa.eu/commission_2010-2014/barnier/headlines/news/2012/12/20121211-2_en.htm> accessed 4 March 2013

[7] Council of the European Union, ‘Signing of the Unified Patent Court Agreement’ (Brussels, 19 February 2013) 6590/13

[8] World Intellectual Property Review, ‘Will Poland join the Unitary Patent system?’ (5 February 2013) <http://www.worldipreview.com/news/will-poland-join-the-unitary-patent-system> accessed 4 March 2013

[9] See M Richardson, ‘UPC – The Ratification Update Game’ (IPcopy, 28 February 2013) <http://ipcopy.wordpress.com/2013/02/28/upc-the-ratification-game-update/> accessed 4 March 2013

[10] Annsley Ward, ‘We can sign-up, but can we opt-out?: 24 Member states sign Unified Patent Court Agreement’ (IPKat, 19 February 2013) <http://ipkitten.blogspot.co.uk/2013/02/we-can-sign-up-but-can-we-opt-out-24.html> accessed 4 March 2013

[11] The London cluster focus will be chemistry including pharmaceuticals.

[12] The Munich cluster focus will be on mechanical engineering.

[13] ‘EU Patent’ capitalised for sake of clarity in referring to the subject of the UPC claims rather than ‘patents’ in general

[14] Article 3 of Regulation 1257/2012.

[15] EU Focus, ‘Unitary patent regime finally agreed’ (2013) EU Focus 1, 1-2

[16] ipcopyemily, ‘Transitional provisions and the competence of the UPC: A response to Amerikat’ (IPcopy, 20 February 2013) <http://ipcopy.wordpress.com/2013/02/20/transitional-provisions-and-the-competence-of-the-upc-a-response-to-amerikat/> accessed 5 February 2013