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.
In short, ‘new public’ has been defined as: “a public different from the public at which the original act of communication of the work is directed.”[2] Therefore, the ‘new public’ criterion is implicated wherever there is a retransmission or further ‘communication’ of a copyright work. The viability of this concept, however, came to the forefront of EU copyright law in light of the Svensson[3] case where it was held that the act of hyperlinking did not amount to an act of communication to the public because there was no ‘new public’. The rationale given for this was that freely making available a work on the internet meant that it was accessible to any and every internet user. Therefore, hyperlinking the work would not be to a ‘new public’ because it was already available to all internet users. This decision had the impact of exacerbating the theoretical concerns with the use of ‘new public’ and moreover, resulted in real practical implications. However, it must be noted that the ‘new public’ criterion is not a new problem, nor is it solely problematic in relation to the internet.
With that background in mind, it is the case that the ‘new public’ criterion should be abandoned under EU copyright law for several reasons:
- Erroneous Adoption
The ‘new public’ criterion was wrongfully adopted into EU copyright law in the first comprehensive communication to the public case – SGAE v Rafael Hoteles.[4] The European Court of Justice (ECJ) as it then was accepted the misguided Opinion of Advocate General (AG) Sharpston that relied on the Opinion of AG La Pergola in Egeda v Hoasa[5] and the WIPO Guide to the Berne Convention,[6] in reaching the conclusion that the guiding principle for acts of cable retransmission was the ‘new public’ criterion. The reason for this was that ‘new public’ was interpreted to be in essence the same as the ‘organisation other than the original one criterion’ found under Article 11bis (1)(ii) of the Berne Convention 1971.
However, this finding is incorrect because the ‘new public’ criterion was expressly rejected under the Berne Convention when it was first discussed at the 1948 Brussels Revision of the Berne Convention.[7] It was criticised as being too vague and unclear, in particular, in relation to drawing a distinction between the original public and the ‘new public’.
- Organisation Other Than the Original One
In noting that the adoption of ‘new public’ into the case law of EU copyright law is wrong, this can be further justified by the fact that the correct guiding principle is to be expressly found in Article 11bis(1)(ii) of the Berne Convention. However, this was ignored. As such, the governing principle for any act of retransmission by wire or wireless means should be the ‘organisation other than the original one’.
- Exhaustion on the Internet
In applying the ‘new public’ criterion to the internet, especially in relation to hyperlinking, there is the unwanted consequence that the communication to the public right becomes exhausted. Where a work is made freely available on the internet, it is accessible to any internet user. Therefore, there will never be a ‘new public’ for a freely accessible work on the internet. The consequence of this is that once a work is made freely available online, the communication to the public right cannot be invoked where that work is hyperlinked because the ‘new public’ criterion will not be met. This finding is inconsistent with Article 3(3) of the Information Society Directive 2001 that states the right of communication to the public is not to be exhausted by virtue of a ‘communication’ of the work. An additional implication of this finding is that the preservation of the communication to the public right in the online sphere in effect requires formalities in the sense that works made available online will have to be subject to access controls in order to avoid the exhaustion of the communication to the public right.
Thus, the use of the ‘new public’ criterion directly conflicts with the communication to the public right under Article 3.
- Inadvertent Formality Requirement
A further consequence of the potential exhaustion of the communication to the public right where works are made freely available on the internet is the development of formality requirements in effect. This is because the continued applicability of the communication to the public right to works made available online becomes dependent on the existence of access restrictions. These restrictions can take the form of click through licensing, subscriptions or paywalls for example. However, having such a requirement is in direct conflict with Article 5(2) of the Berne Convention that stipulates the enjoyment and exercise of the exclusive rights of copyright shall not be subject to any formalities.
- Copyright Consistency and Coherency
Taking into account the previous issues, it is the case that the continued use of the ‘new public’ criterion is inadvisable because of its potential negative implications. More than its inconsistency with Article 3 of the Information Society Directive, it is also inconsistent with the Berne Convention and by extension the TRIPS Agreement 1994 and the WIPO Copyright Treaty 1996. Hence, in the interest of establishing a more coherent EU copyright framework that is consistent with international obligations, it is necessary to abandon the use of the ‘new public’ criterion.
The Way Forward
It is advocated that the abandonment of the ‘new public’ criterion will have to be accompanied by an express statement at the legislative level or in binding case law that the governing criterion for acts of retransmission is the ‘organisation other than the original one’ or alternatively, ‘different technical means’. If the ‘organisation other the original one’ criterion is adopted, it will have to be clarified that it applies to all digital acts as this is not clear from its current formulation under the Berne Convention. On the other hand, if the ‘different technical means’ criterion is adopted, it will have to be further clarified, as it remains a somewhat vague concept under the existing EU copyright law.
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[1] Case C-607/11 ITV Broadcasting Ltd v TVCatchup Ltd [2013] para 26
[2] Case C-306/05 Sociedad General de Autores y Editores de Espana (SGAE) v Rafael Hoteles SA [2006] para 40
[3] Case C-466/12 Nils Svensson v Retriever Sverige AB [2014]
[4] Case C-306/05 SGAE v Rafael Hoteles [2006] paras 40-43
[5] Case C-293/98 Entidad de Gestión de Derechos de los Productores Audiovisuales (Egeda) v Hostelería Asturiana SA (Hoasa) [2000], Opinion of AG La Pergola paras 20-26
[6] WIPO, Guide to the Berne Convention (1978) 68-69
[7] M Walter, ‘Telediffusion and wired-distribution systems: Berne Convention and copyright legislation in Europe’ (1974) 10 Copyright 302, 303-304, R Dittrich, ‘On the interpretation of Article 11bis(1) and (2) of the Berne Convention’ (1982) 18 Copyright 294, 295-298 and M Makeen, ‘The Controversy of Simultaneous Cable Retransmission to Hotel Rooms Under International and European Copyright Laws’ (2010) 57 J Copyright Soc’y USA 59, 63-64