Framing may constitute a communication to the public and shall be authorised by the right holder, says the CJEU

With the judgement in Case C-392/19, the Court of Justice of the European Union (“CJEU”) returns to the subject of the framing of works protected by copyright, with regard to a dispute between VG Bild-Kunst (“VG”), a German visual arts copyright collecting society, and Stiftung Preußischer Kulturbesitz (“SPK”), a German foundation for the protection of cultural heritage.

In particular, SPK manages the Deutsche Digitale Bibliothek (“DDB”), a digital library for the dissemination of culture, which networks German cultural and scientific institutions. This library contains links to digitised content stored on the internet portals of participating institutions and only stores thumbnails of the original protected subject-matter on its own portal. In fact, DDB is only a “digital showcase” of the protected subject-matter which allows the user to be redirected, with specific links, to the website of the institution providing the actual subject matter.

In this context, VG subjected the conclusion of a licence agreement with SPK, for the use of its catalogue of works in the form of thumbnails, to the approval of a clause according to which SPK should implement technological measures against framing, by third parties, of these thumbnails. Nevertheless, considering that such a clause was not reasonable in light of the copyright legislations, SPK brought an action before the Regional Court of Berlin demanding that VG was required to grant the licence without requiring SPK to implement such technological measures. The lawsuit, after being rejected at first instance, was accepted by the Higher Regional Court of Berlin and finally reached the Federal Court of Justice. The latter pointed out that the outcome of the proceeding would depend on the issue whether “the embedding of a work – which is available on a website, in this instance that of the DDB, with the consent of the right holder – in the website of a third party by means of framing constitutes a communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted by the right holder or imposed by him or her on a licensee”.  In fact, in this case the rights of the members of VG could be prejudiced and therefore they could properly subject the granting of a licence to the implementation of such technological measures. Therefore, in order to resolve this issue, the Federal Court of Justice decided to stay the proceedings and to refer a request for a preliminary ruling before the CJEU.

As regards to this question, the CJEU preliminarily recalls the concept of “communication to the public” referred to in Article 3, paragraph 1, of the Directive 2001/29. According to the CJEU, the concept at issue shall be understood in a broad sense, “covering all communication to the public not present at the place where the communication originates and, thus, any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting”. This concept, the CJEU continues, combines two cumulative criteria, an act of communication of a work and the communication of that work to the public.

In this context, it is therefore liable to constitute an act of communication of a work “any act whereby a user, in full knowledge of the consequences of what he or she is doing, gives access to protected work”; it is also necessary that the protected work be communicated to an indeterminate and fairly large number of potential recipients.

Finally, the CJEU notes that when the work has already been made available to the public – in order to be classified as a “new” communication to the public – it must be communicated using technical means different from those previously used or to a new public, namely a public that was not already taken into account by the right holder when he/she authorised the initial communication of his/her work to the public.

Based on this concept of communication to the public, the CJEU clarifies that the framing technique, by using the same technical means as those previously used to communicate the protected work to the public on the original website, i.e. the internet, does not meet the criteria of a “new public” and therefore does not fall within the scope of the exclusive right of communication to the public as referred to in Article 3, paragraph 1, of the Directive 2001/29. In fact, in this case, “the right holder envisaged from the outset all internet users as the public and accordingly consented to third parties themselves undertaking acts of communication of that work”.

Nevertheless, such a conclusion is based on the fact that the right holder has previously and unconditionally authorised the communication of his/her works on the internet, without making use of technological measures restricting access to those works. If, however, the right holder has imposed these technological measures, the CJEU continues, it is clear that the right holder intends to restrict the circulation of his/her work to a specific public and consequently every communication of the work to a different public must be considered as a communication to a new public and therefore duly authorised by the right holder itself.

Therefore, where the right holder – in the present case, the collecting society VG – has adopted or imposed to the licensees technological measures against the framing, thus limiting the access to his/her works from websites other than his or her licensees, the secondary act of making available, by means of framing, constitutes a different communication to the public; therefore the latter requires a new authorisation by the right holder, who lawfully could prohibit it.   

In that regard, the CJEU specifies that if the right holder has implemented or imposed technological measures against framing, it is clear that he/she has not consented to any act of communication to the public of that work for the benefit of all the internet users. The opposite approach, according to the CJEU, “would be incompatible with his or her exclusive and inexhaustible right to authorise or prohibit any communication to the public of his or her work, under Article 3(1) and (3) of Directive 2001/29” and would assume a rule on exhaustion of the right of communication that is not provided for in the directive at issue.

In light of this, the CJEU concludes that Article 3, paragraph 1, of the Directive 2001/29 “must be interpreted as meaning that the embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public within the meaning of that provision”.