HYPERLINKING AND INFRINGEMENT:

THE RECONCILIATION OF THE COPYNORM-COPYRIGHT

DISPARITY WITH NEW NOTION OF THE NEW PUBLIC THEORY

B Y A MANDA G OHTY , S INGAPORE

Abstract
The crucial role of linking is intrinsic to the overall functioning of the Internet - as well as
their capability in infringing third parties intellectual property rights of various kinds. It is
important to recognise the context in which the law operates in relevance of the creative
industries and their consumers. The dominance of the Internet in our modern society has
fostered a culture with the ease of access to information and content. This free culture
represents a norm that must be accepted by reconciling the competing interests. This
dissertation will examine the infringement of hyperlinks under copyright law, specifically in
relation to the new public theory, communication to the public and the making available
right. The topic is characterised as one of conflicting interests, between the right-holders
economic interests in their copyright, and the hyperlinkers interests in accessing and sharing
content. This struggle has perpetuated the pre-existing gap between copynorms and
copyright.
A comparative analysis of the jurisprudence in leading jurisdictions in recent times will be
made. The Courts dilemma of the new public theory has led it to subsequent revisions in
the law. Despite the inconsistency and uncertainty that arise from the decisions, they do
provide some helpful guidance in our assessment of finding the right balance between
copyright owners and Internet hyperlinkers. In this regard it is concluded that a prior
authorisation would be disproportionate to the freedom of access to information (which
includes the freedom to link).
The overall prevailing judicial sentiment echoes after a new notion to the new public
theory: An implied license doctrine. This suggested solution slants towards a more flexible,
purposive interpretation of the law and will be supported by an analysis of the previous
notions to the new public theory. The discussion takes into account the concept of
communication to the public, the making available right, and further assesses the
legitimacy and legality of the nature of hyperlinks, in the light of concerns about the overall
regulation of the Internet. The theme is characterised by economic interests conflicting with
the interests of freedom of expression, and the goal of copyright to restore balance between
the right-holders and users.

CONTENT
Introduction

Chapter I: Hyperlinking and the Internet

Disparity between Copynorms and Copyright

Communication to the Public and the Making Available Right

Chapter II: Correction of the New Public Theory

16

Turning Point: SGAE v Rafael Hotels

17

Maintaining the New Public Theory (for Same Technical Means)

18

Uncertainty of the New Public Theory

23

Chapter III: Tying the Issues Together

30

CJEUs Attempt at Saving the Internet (and Copyright)

30

Proposed Solution to the Removal of the New Public Theory:

An Implied License Doctrine

34

Extending the Implied License Theory

37

Conclusion

42

Bibliography

46

Introduction
Interconnectedness by linking is at the heart of the Internet.1

The evolving concept of the presence of copyright on the Internet poses a great challenge for
the courts in keeping up with technological developments. Hyperlinking forms an essential
part of the way the Internet functions in this new-age society. Being able to retrieve
information by way of linking plays is a fundamental way of operation for any user of the
Internet in communicating across the web. Requiring a prior authorisation would be
disproportionate to the freedom of access to information (which includes the freedom to
link).

The protection right granted by intellectual property appears to be at odds with the facilitation
of communication and sharing of ideas and culture. Taking into account the overall
sustainability of the digital environment, there is a dual objective at the core of the copyright
system concerned with the production and dissemination of creative content for the benefit of
authors, versus the benefit of society.2 There is a need to strike a fair balance3 between these

Modernising Copyright, The Report of Copyright Review Committee for the Department of Jobs, Enterprise

and Innovation (Dublin, 2013)

2

Johan Axhamn, 'Exceptions, Limitations and Collective Management of Rights as Vehicles for Access to

Information' in Dana Beldiman (ed), Access To Information And Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance (2013) p. 164; Football Association Premier League Ltd and
Others v QC Leisure and Others (C-403/08) and Karen Murphy v Media Protection Services Ltd (C-429/08),
EU:C:2011:631, para. 179.
3

Recital 31 of Directive 2001/29

interests. Copyright infringement through hyperlinking sees a clash of ideals and rights
between right holders and hyperlinkers.

The idea behind this paper stems from the landmark judgement Svensson and Others v
Retriever Sveriege AB.4 (Svensson). The decision made in the case by the Court of Justice
of the European Union (CJEU) gave rise to concerns on the free flow of information as well
as the fundamental rights of the Internet users. In the situation where there is no authorisation
of the copyright holders, the owner of the website may redirect Internet users, by way of
hyperlinks, to protected works available on a freely accessible basis on another site. The
dynamic impact of Svensson gives protection to copyright owners but also places a heavy
burden on users to be more responsible in hyperlinking to legal content from various sources.

The solution proposed to the copynorm-copyright disparity accounts for the average
copyright owners preferences. Other than the legally defective concepts of new public,
specific technical means and the restriction of access, this paper proposes the solution of a
finely tuned implied license doctrine to bridge the gap between copy-norms and copyright. In
doing so, would be in favour of establishing a reasonably adequate balance in saving both the
Internet and Copyright.

In order to give a clearer outline to this dissertation, the three chapters set out have the
respective nature of: Why, What, and How. Firstly in Chapter I in order to address the
imbalance of interests mentioned above, this dissertation puts forward a conception of
hyperlinking and copyright infringement. Copynorms and copyright is introduced where the
struggle for copyright in keeping up with social norms in pointed out. Hyperlinks are viewed
4

Svensson and Others v Retriever Sveriege AB. C-466/12, EU:C:2014:76

as essential to the free flow of information, and copyright limits this freedom. There is a
concern that copyright undermines the social requirement aspect in the use of copynorms.
Chapter II see discussions set out in the development of the law preceding the Svensson case
with the new public theory in the context of the communication to the public. In particular,
we will be brought through courts attempts in clarifying the theory. The struggle is that
requiring a prior authorisation of a work would be disproportionate to the freedom of access
to information (which includes the freedom to link). Further to this, we will consider the
legality and legitimacy of hyperlinks, in the context of copyright infringement. Finally,
Chapter III finds that the Court in Svensson had made yet another attempt in clarifying the
new public theory, by combining the new public theory with the specific technical
means theory to come up with the restriction of access theory. The solution proposed in
Svensson on the new public theory is still questionable on the grounds of the making
available right. Hence, it will be suggested that an implied license doctrine is the best solution
to restore the balance between right-holders and users, and narrowing the gap between
copynorms and copyright in this hyperlinking phenomenon.

Chapter I: Hyperlinking and the Internet

Disparity between Copynorms and Copyright
Hyperlinking puts the Internet on a pedestal and sets it apart from the other forms of cultural
production and dissemination. As the Supreme Court of Canada has stated, information
cannot be accessed without hyperlinks.5 This would have the effect of seriously restricting
the flow of information and as a result, freedom of expression. Given the core significance of

Crookes v Newton [2011] SCR 269 per Abella J

the role of hyperlinking in the Internet, we risk impairing its functioning.6 In this regard, we
must keep in mind the goal of copyright i.e. fair balance as set out in Recital 31.

Hyperlinks are used socially as well and are seen as an ordinary communication practice
across social media platforms. The users on these platforms post a multitude of digital
content that they wish to share with their peers, leading to external websites. There is an
increasing mismatch between copyright law and emerging social norms within the EU. Social
media has become an essential tool of social and cultural communication, and current
copyright law leaves little room in sharing user-generated content that builds upon preexisting works.7

In view of the (abovementioned) dual objective,8 such operations fundamental to the way we
use the Internet are referred to as copynorms. Copynorms permit the copying, distribution,
and use of expressive works. 9 The main quality these copynorms have in common is that
they all require the authorisation of the copyright owner for use of their work, thereby
allowing the hyperlinker to exercise some amount of the owners exclusive rights. 10 If
authorisation were to be necessary before linking each time, this would impair the use and
effectiveness of the Internet. Under those circumstances, the copynorms in question

ibid, para 26

Ian Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (London: HM

Government, 2011)
8

Axhamn (2013), p 164

Mark Schultz, Copynorms: Copyright And Social Norms, In Intellectual Property and Information Wealth

(Peter Yu Ed.) (2006) Paper 26, p 1

10

Raghu Seshadri, (2007), p 18

moderate, extend, and undermine the effect of copyright law 11 leading to a growing
concern of a widening gap between copynorms and copyright.

Copyright should perhaps, be seen as a privilege rather than a right, in which the privileges
deviate from the cultural space in the public domain rather than users having to defend any
encroachment on the sphere of copyright protection.12 Thus, the protection of copyright
holders should be extended, and the focus of public interest should be leaned towards greater
user rights and access to copyright protected works. 13 This dissertation finds that the
conception of copyright should be communistic in character.14 The sharing of ideas and
creativity connote free expression and is intrinsic to the social requirement and use aspect in
todays socially cultured network world.

Gillian Davis has identified four key principles that are intrinsic in the nature of copyright
law.15 These can be seen as the underlying principles upon which copyright law is found.
Firstly, based on Lockes labour theory, is natural law. This principle seeks to justify
intellectual property by interlocking a property right in the labour of ones own body,16 and
the labour associated with a previously un-appropriated object. Such engagement would
exclusively grant property rights to that person over the entire object17 - granting an author

11

Schultz (2006), p 1

12

Ronan Deazley, Rethinking Copyright: History, Theory, Language (Edward Elgar Publishing 2006) p 109

13

Gillian Davies, Copyright and the Public Interest (2nd edn, Sweet & Maxwell 2002), p 7

14

Thomas Edward Scrutton, The Law of Copyright (3rd edn, Clowes and Sons 1890) 290

15

ibid, (n 13) p 9

16

John Locke, The Second Treatise in Peter Laslett (ed), Two Treatises of Government (CUP 1970) p 305-6

17

Horacio M Spector, An outline of a theory justifying intellectual and industrial property rights (1989) 8

EIPR 270, p 270-71.

with an exclusive property right over his work i.e. having control over the dissemination,
reproduction and right to object to modification of his work. This traditional justification for
copyright law is greatly supported by Lord Bingham who stated that no one else may for a
season reap what the copyright holder has sown.18

The second principle by Davies is the one of particular interest for us to keep in mind
throughout the reading of this dissertation. It states that there should be just reward for
labour. Given the accumulated value that creative works bring into our lives, the authors of
such works should be duly remunerated when their work is exploited.19 Furthermore, Davies
second principle is entwined with the third: that copyright provides a stimulus to creativity.20
The creativity stimulus has implications on economic development in the market as a whole.

The final key point to note is the justification that it is a social requirement for creative
individuals to be encouraged in creating and disseminating their respective work to the
public.21 This particular function of social enrichment goes in hand with copynorms in
addressing the legal regulation of hyperlinking, which has potential implications on the
interference with the operation of the Internet. It will be this understanding of social utility
that will be engaged to this dissertation as to how we should conceptualise hyperlinking and
copyright.

18

Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 (HL) 2418

19

Davies (n 13) p14-15

20

ibid, p15-16

21

ibid, p16

Communication to the Public and the Making Available Right

The use of hyperlinking plays an important role in disseminating and sourcing for content in
out digital network world. The distribution of content is a form of communication covered by
copyright, which is subjected to the harmonised concept of the public. At the international
level (with the WIPO Treaties of 1996), and then at the European level (with the Information
Society Directive of 2001), two new rights were recognised: the right of communication to
the public, and the right of making available. With the advent of the Internet, a broader set of
communications is recognised. As provided for under Article 3(1) of the Directive, the right
of communication to the public should be understood in a broad sense as to be covering all
communication to the public that is not present at the place where the communication
originates.22

The identification of communication to the public with the concept of transmission of the
work is crucial in understanding of the making available right.23 This illustrates the various
forms of exploitation involved in the communication of the work in front of the public,
namely, public representations of the work and public (live) performances in general. To put
it another way in the case of hyperlinks, the Court in Svensson has treated the provision of
hyperlinks to material freely available on the Internet as communication because a clickable
link affords users of the first site access to those works.24 To clarify, for there to be an act
of communication it is sufficient for the work to be made available to a public in a way that

22

Information Society Directive 2001/29, Recital 23

23

Arezzo (2014), p 4

24

C-466/12 Svensson, para 18-20

10

the users forming the public may access it, irrespective of whether they have avail themselves
of that opportunity.25

The implication of this free accessibility is aligned with the view that since the rights of
copyright owners has increased; the user rights and freedom to interact with the
corresponding protected work have diminished. 26 For instance, the duration of copyright
protection was extended from the 14 years of the Copyright Act 1709 (commonly dubbed the
Statute of Anne) to the creators life plus 70 years across the European Union (EU). In a
similar fashion, the duration was likewise extended in the USA.27 The driving force behind
this increase of protection is the recognition of copyright as a natural property right28 and its
significance as a fundamental human right.29

Most notably, this act of communication is considered to be making available within the
meaning of article 3(1).30 According to the 2013 Opinion by ALAI, 31 the making available
right covers all kinds of on-demand access - despite the access resulting in a retention copy.
32

Particularly, the common core feature of the different kinds of communication to the public

is given by the circumstance that the work is potentially receivable by all users.

25

C-466/12 Svensson, para 19, with reference to C-306/05 SGAE, para 43

26

Ronan Deazley, Rethinking Copyright: History, Theory, Language (Edward Elgar Publishing 2006), p 150

27

Copyright Term Extension Act of 1998, s.102

28

Copyright Designs and Patent Act 1988, s.1

29

Charter of Fundamental Rights of the European Union [2000] OJ C364/01, art 17(2)

30

C-466/12 Svensson, para 20

31

Association Littraire et Artistique Internationale (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)
32

ALAI, Report and Opinion (2013), p 3

11

As a starting point, Recital 23 of the Information Society Directive provides that the right
should be understood in a broad sense as covering all communication to the public not
present at the place where the communication originates. It further elaborates that this right
should cover any such transmission or retransmission of a work to the public by wire or
wireless means, including broadcasting.33 The Grand Chamber of the Court of Justice in
FAPL stated that the scope of the right of communication to the public must be construed
broadly, in such a way as to encompass any transmission of the protected works,
irrespective of the technical means or process used.34

There are two contrasting perspectives by the European Copyright Society and ALAI
following the Svensson case on the right to communication to the public. On the one hand,
the Opinion of the European Copyright Society (ECS Opinion)35 suggested that hyperlinks
are not communications because establishing a hyperlink does not amount to transmission
of a work, and such transmission is a pre-requisite for communication.36 The ECS Opinion
found that the general right of communication to the public mentioned in Article 3(1) of the
Directive should be narrowly understood as a transmission. This narrow reading of the
communication right seems to have the effect of limiting the right of communications in the
digital environment, especially in the case of authors and publishers.

33

Information Society Directive, Recital 23

34

C-403/08 FAPL v QC Leisure; Recital 23 of the Information Society Directive

35

Lionel Bently et al, European Copyright Society, Opinion on The Reference to the CJEU in Case C-466/12

Svensson (February 15, 2013). University of Cambridge Faculty of Law Research Paper No. 6/2013.
35

ibid, p2

36

ibid

12

On the other hand, this dissertation is in favour of the view set out in the ALAIs 2013
Opinion where it follows that the communication to the public includes a making available
to the public of works. In order to execute an act of making available, a transmission is not
required. The concept of making available a work to the public precedes the stage of its
actual on-demand tranmission i.e. it may or may not involve actual transmission. Most
importantly, the right of making available covers the offering of a work that enables the
public to access such work, and not just delivering of the work.37

On the whole, there is a clear implication is that communication involves some kind of
transmission. 38 International and European legislators see the making available right as a
specific subset of the broader right of communication to the public39. However, this does not
mean that making available is confined to the traditional and narrow notion of
communication, requiring a transmission. It can be resonated under Article 3(1) in the
InfoSoc Directive that: the notion of communication to the public also extends to a broader
digital concept of making available works by offering access. Making available covers
potential communications as well as those that have been completed or are in the course of
transmission40.

37

Association Littraire et Artistique Internationale (ALAI), Report and opinion on the making available and

communication to the public in the Internet environment - focus on linking techniques on the Internet (2014)
36(3) EIPR 159, p 1
38

WPPT, Art 2(g); Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, C-306/05,

EU:C:2006:764
39

Goldstein and Hugenholtz (2013), at 336.

40

Lionel Bently and Brad Sherman, Intellectual Property Law (4th, e.g. Maxwell, Oxford 2014) 169, para 19-20

13

The WIPO Copyright Treaty (WCT) of 1996 was adopted to digitize copyright law. To
ensure that copyright keeps up with the developing digital environment, it introduced the
making available right.41 In the digital environment, the right of making available is a
centrally exclusive right especially for the use of copyright material. It has been shaped by
the EU legislature with the specific purpose of vesting the power of online distribution in
rightholders.42 The use of this right has significantly enabled authors to authorise or prohibit
the dissemination of their works in the digital space, regardless of the technological means
involved.43

In a single act of exploitation, the act of transmission in digital network entails several
reproductions. Accordingly, there are two rights that apply to digital transmissions: the
reproduction right and the making available right. These rights can be held by different
persons or entitles, which complicates the licensing of a work for online use.

In the German Paperboy case, the German Federal Surpreme Court stated that the rights of
an owner of a work are not infringed when a person makes a link to that owners work, this is
because it only refers to the work in a manner which facilitates the access already provided
by others.44 As such, linking could not be considered as an act of communication to the
public since it does not preserve the availability of the work on the internet, nor does it allow
the interactive transmission of the work to its user. 45 However, this case did not include the
41

WIPO Copyright Treaty (WCT) 1996, Art 8

42

Goldstein and Hugenholtz (2013), at 335

43

Sam Ricketson and Jane C. Ginsburg, International Copyright and Neighbouring Rights: The Berne

Convention and Beyond (1st, Oxford University Press, 2006) 746

44

BGH, 17/07/2003 -I ZR 259/00 Paperboy, para 42

45

I ZR 259/00 Paperboy, para 43

14

provision of cached links as seen the the Canadian case Crookes v Newton, 46 where the act
of linking does not necessarily imply the transmission of the work, which is sine qua non of
the right of communication to the public. The Norweigan Supreme Court held that the
insertion of hyperlinks (which led to unlawful uploaded MP3 files) did not constitute an act
of making available to the public.

Applying Napster, the Court had dismssed the argument that linking involved an independent
and immediate access to the music.47 Although it did not clarify further on whether linking
amounts to an act of trasnmission, nonetheless, it stressed that, it cannot be doubted that
simply making a website address known by rendering it on the internet is not making a work
publicly available. This must be the case independent of whether the address concerns
lawfully or unlawfully posted material. 48 However, it was consequently held that such an
activity to amount to a contributory infringement of copyright.

Both the German Paperboy and Napster case contrasted with the Dutch decision in Sanoma
and Playboy v GS Media.49 In this case, the defendants website had a hyperlink that directed
users to a website in Australia. The Australian website had a set of copyright-protected
photographs. The Dutch District Court vaguely referred to existing EU law on
communication to the public and found that a company is liable for a communication to the
46

Crookes v Newton (2011}, para 26-30

47

Tono et al. v Frank Allan Bruvik d/b/a Napster (Napster case), (2006) 37 IIC 120 (Supreme Court of Norway,

27 January 2005)
48

Napster Case, para. 48.

49

Stephen Vousden, Case C-466/12, Svensson Hyperlinks and Communicating Works to the Public

(EULawRadar, 20 January 2013), < http://eulawradar.com/case-c-46612-svensson-hyperlinks-andcommunicating-works-to-the-public/ > accessed 2 March 2015

15

public when that company puts a hyperlink on its website. The Court had found all three
elements of the test (from the CJEU jurisprudence) to be fulfilled (as mentioned above): (i)
an intervention, (ii) a (new) public, and (iii) the intention to make a profit.

In regard to the first element the Court stated that, the placing of a hyperlink which refers to
a location on the internet where a specific work is made available to the public is, in
principle, not an independent act of publication. The factual making available to the public
occurs on the website to which the hyperlink refers. However, it was found that the website
which contained the infringing photographs were not actually indexed by a search engine. In
order to view these images, users would have to type out the specific URL. Without the
additional intervention of hyperlinking, the public would not have had access to the
photographs.

In Playboy, the hyperlink had enabled access to the photographs even before they were
published in the latters magazine, in addition, substantial traffic was generated to the
defendants website (about 230,000 visitors per day). The placing of the hyperlink had
successfully reached out to a larger and indeterminate audience, which was a public the
rights-holder did not have in mind when giving the consent to the publication of the
photographs initially.50

Chapter II: Correction of the New Public Theory

The new public theory has been through two corrections. As we will examine further under
Chapter II, the first correction sets out the proposition that no new public is needed if the
communication is made by different specific technical means. The second correction will be
50

Stephen Vousden (EULawRadar, 2013)

16

discussed under Chapter III, where the CJEU in Svensson made further attempt in clarifying
the erroneous theory51 by suggesting a restriction of access test.

Turning Point: SGAE v Rafael Hotels52

According to a series of Court of Justice cases, an act of communication to the public must be
intentional, or deliberate. Following the case of SGAE, 53 the concept of the new public
was first deployed and being scrutinised in cases where there is some sort of public retransmission of a work that has already been communicated. The test involves an
examination of the expectations of the author when the initial communication was made. 54
To emphasise, if the author had in contemplation a particular public, and a user transmits
their work to a further public, then such act requires authorisation from the right-holder. The
existence of a license was in question. It was found that if the author had licensed the
broadcast, they could have been entitled to the objection of the re-transmission to hotel
rooms.55

Links may establish one-to-one connections but this does not change their potential
cumulative effect of having an indeterminate number of persons potentially having access to
the same work, at the same time enabled by the same link.56 It follows through that the

51

Dr. Mihly J. Ficsor, 'Svensson: honest attempt at establishing due balance concerning the use of hyperlinks

spoiled by the erroneous new public theory' (2014)

52

Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, C-306/05, EU:C:2006:764

53

C-306/05 - SGAE, para 40-41

54

Airfield NV and Canal Digitaal BV v Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA

(Sabam) (C-431/09) and Airfield NV v Agicoa Belgium BVBA (C-432/09), EU:C:2011:648, para 76
55

Judgement in SGAE, C-306/05 EU:C:2006:764

56

Alexander Tsoutsanis, Why Copyright and Linking can Tango (2014) JIPLP 9(6) p 506

17

Court observed that the provision of access to broadcast was in fact, an additional service
provided by the hotel which was performed with the aim of obtaining some benefit giving
rise to profit-making.57 Consequently, the Court held that the distribution of signals by way
of cable to the customers staying in its rooms constituted a communication to the public.
However, taking the view of the Courts in subsequent case law, the pursuit of profit is not a
necessary condition for the existence of a communication to the public. We will see this point
on the profit-making nature of hyperlinks further elaborated in the next section.

Maintaining the New Public Theory (for Same Technical Means)

The adoption of the specific technical means theory was an indication of the courts efforts
in clearing up the murky waters created by the new public criterion. The case of
TVCatchUp58 is relevant here with parallel facts to Svensson where it concerned the use of
works through the Internet, but in a different way. The Courts also explored the possibility in
the application of the right of communication to the public in scenarios where there is no
new public. This brings up the issue on authorisation to the work. It was held in the case
that the broadcasts were made to a new public as a different form of technology was used to
re-transmit the work. Simply put, re-transmission was in fact made by an organisation other
than the original broadcaster and through a different communication medium.59 Given this
reasoning, it does not matter that in principle, the recipients were part of the public targeted
by the initial communication.

57

SGAE v Rafael Hotels (2006), para 44

58

ITV Broadcasting Ltd and Others v TV CatchUp Ltd., Case C-607/11 EU:C:2013:147

59

Judgement in TVCatchUp, C-607/11 EU:C:2013:147

18

In addition, it is also relevant to point out that the Court in TVCatchUp decided on the
criterion that the for profit nature of the communications by the hyperlinkers activity was
irrelevant for the purposes of deciding the legitimacy in creating hyperlinks.60 TVCatchUps
income was derived from advertising and screened before the user could watch the streamed
program. This is similar to the aggregator services making available works through
hyperlinks in the same way the plaintiff in the Svensson case did both obtaining their
income from advertisement money.

As highlighted in the ALAI 2013 Opinion, the right of making available covers the offering
of a work that enables the public to access such work.61 Further to that, as concluded above,
there is a clear implication is that communication involves some mode of transmission.In
the case of TVCatchUp,62 the courts approach was that for each act of making available, the
author of the work in question must individually authorise a work that uses a specific
technical means.63 In such a case, this occurs if such works were made available under
different technical conditions. Notwithstanding the approach made by the Court in
TVCatchUp, Svensson had further clarified the CJEUs position on authorisation. The general
position is that it is not necessary for the copyright owner to authorise access to the public for
works that are already made available over the Internet.64

60

Judgement in TVCatchUp Case C-607/11 EU:C:2013:147, para 44

61

Association Littraire et Artistique Internationale (ALAI), Report and opinion on the making available and

communication to the public in the Internet environment - focus on linking techniques on the Internet (2014)
36(3) EIPR 159, p 1
62

TV Catchup Ltd., para 43

63

Bently and Sherman(2014), p 168; C-403/08 FAPL v QC Leisure, para 198; SGAE, para 41;Organismos

Sillogikis Diacheirisis Dimiourgon Theatrikon, C-466/12 EU:C:2010:151, para 3

64

C-466/12 Svensson, para 28

19

Under Article 3(1) of the InfoSoc Directive,65 the public means an indeterminate number
of potential recipients and implies a fairly large number of persons.'66 For example, where
those receiving the communication were a known and limited group67 (dental patients hearing
music in the waiting room), they were held not to qualify as the public. If the user were to
utilise new technical means to retransmit a work, then this user activity per se amount to a
transmission to a new public.68 In relation to the SGAE case, if the receivers of the broadcasts
(from the rightholders) had further transmitted the broadcasts to hotel guests, then this would
be to a new public.69

Considering an act of communication, which covers any transmission or re-transmission,70

we will re-visit previous case law such as in Del Corso, where the broadcasts in question
constituted an act of transmission that did not entitle the phonogram producers to the
payment of remuneration.71 It can be noted that the concept of communication to the public
did not extend to the broadcastings that were made free of charge. This could be due to the
fact that broadcasting of these phonograms were for the benefit of the patients and could be
enjoyed by them without any active choice on their part. In contrast with music played

65

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of

certain aspects of copyright and related rights in the information society

66

Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, C-306/05, EU:C:2006:764

67

ibid

68

Lionel Bently and Brad Sherman, Intellectual Property Law (4th, e.g. Maxwell, Oxford 2014) 169

69

SGAE, C-306/05, EU:C:2006:764 para 41; FAPL v QC Leisure, Joined Cases C-403/08 and C-429/08 [2011]

ECR I-9083, para 198

70

Judgement in TVCatchUp Case C-607/11 EU:C:2013:147

71

Societ Consortile Fonografici (SCF) v Marco Del Corso, C-135/10 EU:C:2012:140, para 98

20

gratifyingly in hotel rooms, it was held in Phonographic Performance that the facility was
offered as part of a package to attract visitors to a profit-making enterprise.72

The profit-making nature of hyperlinks considered in the context of their legitimacy by

Football Association Premier League, where the court held that It is not irrelevant that a
communication within the meaning of Article 3(1) is of profit-making nature.73 It is not
enough to simply catch the public by chance, the public must be targeted by the user, and
be receptive to that particular communication.74 However, it was subsequently acknowledged
that a profit-making nature is not necessarily an essential condition for the existence of a
communication to the public.75 As set out in TVCatchUp, a profit-making nature is not a
conclusive factor in determining whether a re-transmission is to be categorized as a
communication within the meaning of Article 3(1).76

The issue is that when the hyperlink is a framing or deep link that is linked by other
websites, the traffic of the original news website would be diverted and the volume drops.77
The profit that should have been received by the original news website have been
intercepted by the other websites. This is unaligned with the traditional justification for

72

Phonographic Performance (Ireland) Ltd v Ireland, Case-162/10 EU:C:2012:141, para 41- 43

73

FAPL, para 204-206

74

Alex Freelove and Joel Smith, 'The dental surgery and the hotel bedroom: CJEU discusses the concept of

"communication to the public"' (2012) < http://goo.gl/uDuXZG > accessed 13 February 2015
75

SGAE, C-306/05, para 44

76

Case C-607/11, TVCatchUp, para 43

77

BestWater International GmbH v Michael Mebes and Stefan Potsch, Case C-348/13 EU:C:2014:2315

21

copyright on appropriate remuneration.78 On the other hand, if the online article could be
visited by both the original news website as well as the reference hyperlinks provided by
other websites, then the traffic of the original websites could increase as well but to the
detriment of the original website, since part of the profit would go to the other websites.

In TVCatchUp, the CJEU had directly relied on the profit-making nature of the operators
intervention as a criterion, although this was not applied. The streams in this case were not
limited to the mere maintenance of or improving the quality of the reception of a pre-existing
transmission. Instead, they were used for further transmission, which could amount to a
communication to a new public. This can be applied to links on the Internet that make such
streams available.79 On hindsight, with the ubiquity of technical reproductions, it is necessary
to release such technical copies without an independent economic significance.80 Which
brings us to the following question: To what extent of economic benefit gained by the
provider of the links should be taken into account?

Following Svensson, it can be implied that a copyright owner has already been remunerated,
or have had the opportunity to be remunerated.81 From an economic perspective, a new
communication can be noted whenever there is additional public, which leads to market
extension. Arguably, in Svensson, a subsequent communication does not create a new market
for the work, which explains the courts non-application of the new public condition when
the technical means of the communication are different.

78

Davies (n13) p14-15

79

TVCatchUp, para 27-30

80

Information Society Directive, Art 5(1)

81

Svensson, para 24

22

In a similar vein, we will consider the scenario where the copyright owner has not been
remunerated because the initial communication had led the copyright owner to experience a
financial loss. The question posed is as follows: Even if works are communicated for free, is
it relevant to consider if there is a financial loss to the copyright owner? As pointed out by
Tsoutsanis,82 in economic terms, it does not make a difference if the infringer does not make
a profit from the unauthorised content because the author would still be subjected to a loss
and his entitlement to fair compensation. Under Article 17 of the Charter of Fundamental
Rights of the European Union,83 it is a fundamental aspect of intellectual property rights of an
owner to be entitled to protection and fair compensation84. It would be disproportionate and
would substantially invalidate the essence of the right of ownership if there were no fair
compensation.85

Considering the value proposition that such creative works offers us, authors of such works
deserve their respective remuneration when their work gets exploited,86especially to a new
public. With the increasing role of the communication to the public by way of streaming or
cloud etc., we can expect these acts of communication to the public to be more directly linked
to the exploitation of works.

82

Alexander Tsoutsanis (2014). Why Copyright and Linking can Tango. Journal of Intellectual Property Law &

Practice, 9(6), 495-509.

83

Charter of Fundamental Rights of the European Union. 2000 O.J. (C364), 18 Dec.

84

European Union, Charter of Fundamental Rights of the European Union, 26 October 2012, 2012/C 326/02;

Further acknowledged in Martin Luksan v Petrus van der Let. C-277/10, EU:C:2012:65, para 68
85

Opinion of Advocate General Trstenjak delivered on 6 September 2011 in Luksan, para 132-133

86

Davies (n ) 14-15

23

Uncertainty of the New Public Theory

There is a struggle for Internet users in their right to gain access to information, as copyright
law subsist in the works of copyright owners limits their rights. The concept of a new public
propounded upon by the Courts gives us an indication that relying on this concept is likely to
produce uncertainty and confusion. By directing the right of communication to the same
public but via specific technical means, this would be limiting the application of the right
of communication to the public. Arguably, this decision may indicate that the court has
dropped the requirement of a new public altogether. In comparison between TVCatchUp
and SGAE, while a test based on the expectations of the copyright holder may be difficult to
apply, a test based on whether a distinct technical means is utilised seems rather arbitrary.87
The requirement of new public was criticised to be inconclusive and circular as it all
narrows down to whether the copyright owner had given authority to the initial usage of his
work.

There is an emergence of further-reaching implementation models, notably that of the

Information Society Directive 88 in the European Union. In addition, the introduction of
Technological Protection Measures (TPMs) is of particular interest here, and the copyright
implications in circumventing such measures. We see the broad scope of communication to
the public evolve to affirming the general scope of the making available right, where it
covers the offering of works.

87

Bently and Sherman (2014), p168

88

EC, Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the

harmonisation of certain aspects of copyright and related rights in the information society, [2001] OJ, L 167/10
[Information Society Directive].

24

This paper identifies two concerns it has with the new public theory, to enumerate: (i) work
that is subjected to technical restrictions and (ii) work that is uploaded illegally, or taking
advantage of exceptions.89 Both concerns should be considered in conjunction with each
other in regards to copyright infringement.

The first point (i) considers the topic on the open accessibility of the linked content. If the
website specifically presents an express notice (e.g. in its terms and conditions) this would be
a clear indication as to the intended audience of the works, and hyperlinking to such works
should be regarded as a communication to a new public. On further clarification, it is
uncertain whether it is sufficient for mere registration to gain access to a website, or to have
limitations (possibly an express notice) placed under a websites terms and conditions. For
instance, if an author adds such a limitation that he does not wish for commercial sites to link
to his, does that constitute a necessary restriction to rule that a commercial public would be
new?90 In conjunction with the first concern, to address (ii), this paper considers if
hyperlinking to unauthorised content constitutes an infringement. Linking to illegal content
might give rise to liability of the hyperlinker if there was no consent granted to the altered or
transformed work.91 Thus, the scope of the new public cannot be used as immunity for a
person who had innocently linked to the infringing work or adaptation.92

89

Bently and Sherman (2014), p169

90

Jane Ginsburg, Hyperlinking and Infringement: The CJEU Decides (sort of), The Media Institute Blog Post,

17 March 2014, at http://www.mediainstitute.org/IPI/2014/031714.php

91

Article 5, Infosoc Directive

92

CDPA 1988, s.21(2)

25

It can be observed that there is an attempt in balancing the new public obligation by the
CJEU in Svensson. 93 The following two points on the CJEUs position are worth keeping in
mind: (1) where there is a circumvention of restrictions on the linked-to site, then the link
would amount to an intervention without which there should not have been access, and
would constitute a new public.94 In the case of paywalls, this simply goes to show that
authorisation is required and; (2) If the initial communication disappears or if there is
conditional (or limited) access, then such authorisation would become necessary.95

On further analysis, the underlying idea on authorisation should be kept in mind: Requiring a
prior authorisation would be disproportionate to the freedom of access to information (which
includes the freedom to link). The new public concept in this paper will be further
considered in regulating the legitimacy of hyperlinks. In a nutshell, non-infringing hyperlinks
are those linked to material that was generally available (with the consent of the right owner).
They involve no new technical means and would not be considered as a communication to a
new public.96 On the other hand, infringing hyperlinks can be seen to be linking to material
which access has been limited or restricted e.g. material secured by technical measures.
These links would, in contrast, amount in a communication to a new public.97

Links cannot be regarded lawful when the work is no longer available to the public on the
site where it was initially communicated or where it is available on the site only to a

93

Svensson, para 31

94

ibid

95

ibid

96

Svensson, para 24-30

97

C More Entertainment AB v. Linus Sandberg, Case C-279/13

26

restricted public.98 Chances in establishing a reasonable balance to save both the Internet
and copyright resonated from the interpretation of restriction and circumvention. In a
sense, these restrictions may be interpreted to mean not only the instalment of a paywall but
also any possible systems that restrict access, including not only subscription systems but
also simple registration systems.99 It is worth noting that practice, a paywall would preclude
content from being freely accessible.

A person who hyperlinks a website offering software for circumventing anti-copying

technological devices can be liable for contributory infringement. In the German case of
BMG Records GmbH,100 the court discussed contributory liability under section 95a(3) of the
Authors Right Act.101 The issue at hand was whether the software was a device which
enabled anti-circumvention and if so, whether the news service was liable for contributory
violation of the rules prohibiting distribution of the software as a joint tortfeasor. The Court
clarified the basic requirements as to primary liability.

98

Svensson, para 31

99

Dr. Mihly J. Ficsor, 'Svensson: honest attempt at establishing due balance concerning the use of hyperlinks

spoiled by the erroneous new public theory' ( 2014)

<http://www.copyrightseesaw.net/archive/?sw_10_item=63> accessed 16 February 2015, p 32
100

BMG Records GmbH, BMG Berlin Musik GmbH, edel records GmbH, edel media & entertainment GmbH,

EMI Music Germany GmbH & Co. KG, Sony Music Entertainment (Germany) GmbH, Universal Music GmbH,
Warner Music Group Germany Holding GmbH v Heise Zeitschriften Verlag GmbH & Co. KG (OLG
Muenchen, 29 U 2887/05 (21 O 3220/05 Landgericht Muenchen I) 28 July 2005.
101

Article 95a, Protection of technological measures, Copyright Act of 9 September 1965 (Federal Law Gazette

Part I, p. 1273), as last amended by Article 8 of the Act of 1 October 2013 (Federal Law Gazette Part I, p. 3714)

27

It was considered that in order to hold a person liable for an act of circumvention, whether
the requirements to copyright infringement must be simultaneously fulfilled. 102 An answer to
this question would clarify the relationships between acts of communication and the acts in
relation to dealings in circumvention devices.103 There are two points for consideration.
Firstly, if an act of circumvention is committed in relation to a subject-matter that was
unprotected in the first place, taking into account the initial communication, then it is clear
that no offence has been committed. In particular, copyright must subsist in the electronic
data that the device is intended to protect.104 Secondly, the copyright owner must have neither
a use or access right, nor should he have any right to prevent access to the underlying ideas
and information. 105 Thus, Westkamp concludes that circumvention of a technological
protection measure (TPMs) would not necessarily amount to a copyright infringement, if it
does not constitute substantive copyright infringement. Accordingly, it would not be a
simultaneous violation of the anti-circumvention rules. Unless the hyperlinker can rely on
existing defences or limitations, he would not be abe to use the new public as immunity to
justify his linking to the infringing work or adaptation.

However, there is evidence that mere creation of certain hyperlinks should be prohibited if
they have knowingly facilitated the exploitation of infringing copies.106 This may be an issue
of confusing Internet users with regard to the actual origin of the content. The liability of the
102

Guido Westkamp, Hyperlinks, circumvention technology and contributory infringementa precarious tale

from German jurisprudence, JIPLP(2006) 1(5), p 309-31

103

Westkamp (2006) p310

104

ibid, p311

105

ibid, p309-31

106

European Copyright Society, Answer to the EC consultation on the review of the EU copyright rules

(March 2014), p 6

28

provider of a link will not absolve when work is shown in a way as to give the impression
that it is appearing on the site on which that link is found, whereas in fact that work comes
from another site.107 This issue may however, be more aptly addressed outside copyright of
other liabilities such as unfair competition and secondary liability, moreover, it does not turn
links into a direct acts of exploitation.108

Under Article 3(1), where other acts of works are communicated or made available to a new
public for on-demand access, these acts constitute intentional intervention. They would
require separate authorisation by the copyright owner.109 The placing of a simple link or deep
link to content available on a publicly accessible webpage may not constitute as reaching out
to a new public, and would not be an intervention actionable under Article 3(1). Deep links
circumventing technical protection measures inevitably involve some sort of intentional
intervention.110 As we will see further in the case of BestWater in the following chapter, the
German Supreme Court acknowledged that placing an embedded link would constitute an
intentional intervention.111 The embedding of YouTube videos was an issue as to whether
that was making available to a new public.

On the whole, as demonstrated above, Chapter II presented a development of the new

public theory with a discussion of pre-Svensson case law. Under those circumstances, we are
of the view that the developing CJEU jurisprudence by and large seems to favour the
107

Svensson, para 29

108

European Copyright Society (2014), p 6

109

Football Association Premier League, para 198; SGAE EU:C:2006:764, para 41;Organismos Sillogikis

Diacheirisis Dimiourgon Theatrikon EU:C:2010:151, para 3

110

A. Tsoutsanis (2014), p 508

111

BestWater, para 21

29

following criteria for determining whether transmissions are communications to the public:112
(1) whether there has been a deliberate intervention that communicates the work to a new
public;113 (2) whether the work is transmitted to a public not present at the place where the
communication originates;114 and (3) the profit-making nature of the transmission.115

Chapter III: Tying the Issues Together

CJEUs Attempt at Saving the Internet (and Copyright)
In Svensson, the court made a further attempt in clarifying the new public theory with the
restriction of access criterion. The court had identified the situation where a work is
protected by being subjected to technical restrictions put in place by the site.116 These
restrictions accordingly restrict access to the work strictly to the sites subscribers. Such
restrictions identified could be TPMs applied for the purpose of specific systems like
paywalls, subscription systems or any simple registration systems or possible systems,
which restrict access. To form the restriction of access test, the Court did so by combining
the new public and specific technic means theories. It held that the right of making
available to the public through use of hyperlinks would apply when there are technical
measures implemented to restrict or limit access, and when these restrictions are
circumvented.117

112

David Llewelyn, Tanya Aplin and William Cornish, Intellectual Property: Patents, Copyright, Trade Marks

and Allied Rights (8th edn, Sweet & Maxwell 2013) p 487
113

SGAE v Rafael Hotels [2006] ECR I-11519

114

ITV Broadcasting Ltd v TVCatchUp Ltd, C-607/11 EU:C:2013:147

115

C-403/08FAPL v QC leisure; C-135/10 Del Corso

116

C-466/12 Svensson, para 31

117

ibid

30

After Svensson, it seems like the new public criterion produced confusion and uncertainty.
As set out in TVCatchUp, there is no need to enquire on whether it is a new public when
there are two retransmissions using the different means of transmission118. If linking to
material (without the consent of the right-holder, but accessible on the internet) is considered
to be making available to a new public, then the freedom offered by Svensson would
become unfeasible to the likings of individuals and automated systems.119

With a wider spread of aggregators whose function serves as automated information

generators,120 the link aggregator may not be providing access to a public that would not
otherwise have access. Despite this fact, the provision of links would increase access for
those members of the public who might have difficulty finding the source websites.121 If this
were the case, then the viewers of such aggregated content should not be considered as a
new public.122 The main concern for this would be that there is no way of telling whether
that material originated from that relevant rights-holder. Apart from possible situations where
the material featured on certain sites are operated by (only) one author, it is difficult for any
hyperlinker to know whether they are linking to authorised or unauthorised material. If this
were the case, then the law would inhibit the development of search tools and the progressive

118

C-306/05 SGAE; C-403/08 FAPL; C-432/09 Airfield

119

European Copyright Society, Answer to EC Consultation on Copyright (March 2014),

<http://goo.gl/QVOeFu> accessed 10 March 2015

120

P. Miel and R. Farris, News and Information as Digital Media Come of Age (Cambridge, MA: The Berkman

Center for Internet and Society, 2008)

121

Mira Burri, 'Permission to Link: Making Available via Hyperlinks in the European Union after Svensson'

[2014] JIPITEC Vol 5 Issue 3, p 252

122

J. C. Ginsburg, Hyperlinking and Infringement: The CJEU Decides (sort of), The Media Institute Blog

Post, 17 March 2014, at http://www.mediainstitute.org/IPI/2014/031714.php

31

evolution of the Web as an information resource. This particular problem has surfaced in the
subsequent case of BestWater.

Subsequently from Svensson, the case decision has been augmented by the case of
BestWater.123 The CJEU confirms that framing does not entail a communication to the
public within the scope of Article 3(1) of the InfoSoc Directive. 124 To illustrate, the
embedding of a protected work that is publicly available on a website from another source
(through the use of framing technology) would not be regarded as a communication to the
public. Although the framing link might allow an access to a work, it does not mean that the
copyright protected work is made available to a new public i.e. the rights-holder considered
all Internet users as the public.125

In relation to copyright infringement, infringing hyperlinkers obtain a copyright owners

consent to link to content that is openly available on a third-party website. This could be by
way of providing clickable links or framing the content.126 This principle is subjected to the
following two conditions and requires that the content from linking or framing must not be
either: (1) made available by different technical means from the original communication to a
public; or (2) communicated to a public not contemplated by the original communication
(generally referred to as a new public).127

123

Judgement in BestWater International GmbH v Michael Mebes, Stefan Potsch Bestwater, Case C-

348/13, EU:C:2014:2315
124

ibid

125

ibid, para 18

126

ibid

127

ibid

32

Hence, in the case of linking and framing, copyright holders will have to consider other
avenues to protection. Providing a hyperlink to a copyright protected work potentially
infringes copyright, hence, it constitutes an act of communication to the public for copyright
purposes.128 However, in order to infringe, the hyperlink must direct a new public to the
work,129 that is to say, a public that was not taken into account by the copyright owners when
they authorised the initial communication.

In the case of Bestwater,130 the CJEUs order has therefore limited itself to restating and
applying the principles set out in detail in its judgment in Svensson. The new public
criterion in Svensson was criticised in BestWater because the video in question was freely
accessible on YouTube and was accordingly available to all Internet users before the
defendants alleged "communication". The court found that there was neither a new public
to which the work was communicated as a result of the defendants actions, nor was there a
different technical means, as the communication remained via the internet.131 There was no
infringing copying because the defendants were making the video available directly from
YouTube. Since embedding of a work would not be an infringement upon the right to
communication to the public, this might mean an interference with the copyright protection
of the right-holder. Thus, it appears that the Svensson case had not saved the internet
afterall.

128

C-466/12 Svensson, para 17-20

129

ibid, para 21-31

130

Judgement in Case C-348/13 BestWater

131

ibid

33

Proposed Solution to the Removal of the New public Theory: An Implied License Doctrine
Interpretation or legal construction may come into play when it comes to dealing with
whether an exclusive right should apply to new uses.132 The proposed mechanism is the
implied license doctrine. This section will demonstrate the potential of an implied license
doctrine and how it could be weaved in to help clarify the position between the right-holders
and hyperlinkers especially in dealing with the circumvention of protected content. This
potential function of the proposed doctrine will see its discussions taking place in the setting
of one of the most fundamental Internet tools search engines.

Despite the doctrine being a plausible solution, there are concerns on its feasibility as it
undermines authorisation. The further part to this section discusses the doctrines application
as rejected in the German case of Vorschaubilder II (Google Thumbnails case)133 and the
American case, AFP v Morel. 134 Due to the ambiguity in determining intent from
authorisation, this dissertation looks further into the non-contractual mechanism aspect to this
proposition of an implied license doctrine.

As a means of procuring reasonable balance and instilling logic into the law, the implied
license doctrine can do so by aligning the law with the copyright owners intent, and allowing
the owner to profit duly from the offering of their work under copynorms. The doctrine can
be viewed as a ramification of contract law, as the doctrine is usually applied to fill in gaps

132

P.Bernt Hugenholtz and Martin R.F. Senftleben, Fair Use in Europe. In Search of Flexibilities [2011] IViR

(Amsterdam)
133

German Supreme Court (BGH), I ZR 140/10 Vorschaubilder II, 2010

134

Agence Fr. Presse v. Morel, U.S. Dist. LEXIS 5636 (S.D.N.Y. 2013)

34

from existing contractual relations by identifying the intent of the relevant parties. There are
three steps required in crafting such an implied license:
(1) determining the applicable distribution media;
(2) determining any architectural restraints, including Direct Rights Management (DRM)
on each medium at the time of distribution; and
(3) drawing the scope of the implied license as limited by the applicable architectural
restraints in the applicable medium. 135

Regarding Step (2), architectural restraints in this context refer to the default rules defined
that regulate content use.136 To demonstrate this point, this paper refers to the Twitter Terms
of Service mentioned in the case of AFP v Morel, where such acceptance of the terms would
grant Twitter a worldwide, non-exclusive, royalty free license (with the right to
sublicense).137 In effect, this allows Twitter to use the photos in such a way as to make them
available to its users and its partners. An implied license can be interpreted and drawn from
the limitation set out by the architectural restraint(s) in Step (3). When users circumvent
technological boundaries, such implied license is breached, and the copyright owner may sue
for infringement.138 It is worth noting that it is deemed irrelevant if hackers could circumvent
the applicable DRM, since the choice of a certain DRM system merely expresses the
copyright owners intent.139

135

Raghu Seshadri, 'Bridging the Digital Divide: How the Implied License Doctrine Could Narrow the

Copynorm-Copyright Gap ' (2007) 11(2) UCLA J.L. & Tech , p 31

136

ibid, p 19

137

Dr. Mihly J. Ficsor (2014), p 35

138

ibid (n 136), p 31

139

ibid

35

The effect of an implicit license should override the intent of the relevant parties and bind
them by way of conduct accordingly.140 Such broad reading of the implied license doctrine
seems to suggest that copyright law is capable of accounting for the copyright owners intent
when there is some indication of applicable technological constraints.141

As mentioned above, the concept of public ought to be interpreted in the sense of a new
public.142 In Svensson, the courts considered the work being communicated by a different
entity, but on the same communication medium, namely, the Internet. Then it was clarified
further in SGAE that the question should not be focused on whether the alleged act of
communication was capable of reaching a fairly large number of people. Instead, the courts
should also assess whether the act of communication has the capability of reaching a public
that have not been taken into account by the rights-holder when she authorised the first act of
communication. 143

Under Article 6, the rights-holders ability to control use and the users right to gain
access is distinguished. 144 Linking would only seem to be infringing when the content
(linked to) has been released onto the web with technological protection measures limiting its
access (TPMs). Hence, there will be infringement when the link has the effect of
circumventing these measures. The infringement takes place in such a way that allows the
protected content available to a broader set of viewers than the rights-holder had taken into
140

Orit Afori, Implied License: An Emerging New Standard in Copyright Law, (2008) 25(2) Santa Clara High

Tech. L.J, p 275 <http://digitalcommons.law.scu.edu/chtlj/vol25/iss2/2 > accessed on 4 March 2015

141

Raghu Seshadri, (2007), p 30

142

Nils Svensson and Others v. Retriever Sverige AB, case C-466/12

143

ibid, para 24.

144

Article 6, Information Society Directive 2001/29/EC- Part 1

36

account of. The copyright owner is allowed to restrict such access to the work on the
technology (particularly TPMs) and the contractual freedom, not on copyright law itself. In
other words, the attention of legal protection can be seen to have shifted from the copyright
work to the technology that protects it. By determining the applicable technological
boundaries, the law distinctly bridges the copynorm-copyright gap with the interpretation of
an implied license in dealing with the circumvention of protected work. If an act of
circumvention is committed in relation to an unprotected work (in the first place), taking into
account the initial communication, then it is clear that no offence has been committed.
With such license, there is more flexibility as the legal standard of normative sharing
requirements is set to a lower standard.

Extending the Implied License Theory

Ginsburg has argued convincingly that the new public criterion in itself can be conceived
potentially as an implied license. 145 If the content on the source website was made available
to an unrestricted public, this would constitute an infringement since the work should not
have been made available in the first place. In such circumstances, there would not have been
any license, implied or otherwise.

146

A further elaboration to this would be that a

presumption can be interpreted that the unauthorised copying and making available of the
protected content is freely allowed.147 Such presumption is valid up till the moment that the
consent have been withdrawn (from the protected content), then its status of free availability
has effectively been removed and henceforth considered illegal. We can apply this
145

Jane Ginsburg, Hyperlinking and Infringement: The CJEU Decides (sort of), (The Media Institute Blog

Post, 17 March 2014), < http://www.mediainstitute.org/IPI/2014/031714.php> accessed 3 March 2015

146

ibid

147

Emanuela Arezzo [2014], p 10

37

understanding back to the Svensson case; if such interpretation of an implied license was
considered, it might have been decided differently. It was disputed as to whether there was
authorisation by the journalists in the first place. The question to ask is whether any public
had the authorisation to the work from the site in the first place. If there was no such consent
(implied or express) from the author, it goes without saying that no public was even
authorised, and it should not be relevant whether or not the hyperlinker had made the content
available to a new public.148

Such interpretation comes close to the German case of Vorschaubilder II (Google

Thumbnails case). 149 The Federal Court of Justice had ruled on the use of images as
thumbnails available online without the authorisation of the right holder. There was no
implied consent interpreted due to the lack of preventive measures found. However, it can be
considered sufficiently justified for Google to use such image as a thumbnail if there was
consent given by the right holder to any third party (to make available the image online).

There is a concern that this might result in the linkers being required to constantly monitor
the linked content, in order to ensure that the linked content is still available i.e. has not been
removed from its original website, or has become available only in restricted mode. 150 Such
duty to monitor the linked content to ensure that they stay openly accessible is deemed
technically infeasible for Internet Service Providers and especially cumbersome for
individual users. As a result, these links subsequently direct users to webpages where

148

Jane Ginsburg (2014), Hyperlinking and Infringement: The CJEU Decides (sort of)

149

German Supreme Court (BGH), I ZR 140/10 Vorschaubilder II, 29 April 2010

150

Emanuela Arezzo, [2014], p 10

38

(unauthorised) copies of the works have been stored by (unauthorised) third parties151.
Basically, the lawfulness of linking depends ultimately on the legality of the linked content. It
also places the (direct) liability upon linkers that would lie on third parties disseminating
protected content without authorisation.

Such concern was expounded upon by Arezzo152 who related the specific category of Internet
search engines represented by news aggregators. The certain copyright content in question
could be freely accessible for a certain amount of time, and then moved to a restricted-area
available to paying subscribers only.153 As the Court in Vorschaubilder II had applied the
implied license doctrine, this had been based on the assumption that search engines are
simply incapable of distinguishing whether the image uploaded has been lawfully or
unlawfully uploaded on the Internet. This consideration justifies the subsequent introduction
of one-year neighbouring right for publishers over news content, thus preventing search
engines and news aggregators from displaying significant excerpts from newspaper articles,
without paying a fee. For instance, the German Copyright Law has recently been amended to
introduce new sections which will grant press publishers an exclusive neighbouring right to
commercially exploit their content.154

Although Googles search engine had infringed the artists making available right in the
Google Thumbnails case, the fact that the rights-holder had made the work available on the
internet without providing any form of technological restriction measure to prevent indexing
151

Emanuela Arezzo [2014], para 31

152

ibid, p 10

153

ibid

154

Dr. Ulrike Elteste, Neighbouring Right for Newspaper Publishers in Germany Passed (27 March 2013) <

http://goo.gl/2V4WJm > accessed on 11 February 2015

39

sufficed to show that she was under an implied consent to such activity. Since the work was
initially communicated with no restriction measure, this disqualifies her from a later
objection to linking by unauthorised third parties i.e. it will not suffice to grant her an
immunity against copyright liability.155

Another example of the way an implied license could be evaluated in terms of authorisation
can be seen in the American court decision of AFP v Morel.156 The U.S. district court
explored whether an online making available of works on a social media website consists a
grant of an implied license. The access granted to the photographs in this case was not
restricted by technological measures. Although there were certain provisions under the
Twitter Terms of Service which encourages and permits broad re-use, these terms were
deemed too ambiguous and insufficiently clear for the undertaking of an implied license.

This dissertation suggests that the implied license could preferably be understood as a noncontractual concept in the proposed search engine context. If it were to be understood in its
common framework as a contractual concept, then where the copyright owner notes an
explicit refusal, the implied license doctrine could not be applied.157

The commonly understood scenario of an implied license as a contractual concept can be

observed in a scenario where the copyright owner had put up a notice objecting to any use of
the work, and then subsequently posts his work online, making it freely available. It can be

155

Emanuela Arezzo, 'Hyperlinks and making available right in the European Union - what future for the

Internet after Svensson?' [2014] IIC 524, p 9

156

Agence Fr. Presse v. Morel, 2013 U.S. Dist. LEXIS 5636

157

Orit Afori (2009), p 312

40

interpreted by way of his conduct that in contractual terms, he has provided an implied
consent to the use of his work. However, the preferred policy of a non-contractual
mechanism would more accurately reflect the legal reality.158 The way it works is based
upon an apparent consent of the copyright owner. There would not be a need to monitor
content as to whether such consent has later been removed. 159 Rather, such apparent consent
could work on a policy consideration and favouring certain online activities, such as allowing
the operation of search engines.

Such apparent consent applied for example, would deem the copyright owner as having
licensed the use of his or her work on policy grounds, regardless of whether there was any
evidence of his explicit intent on the contrary e.g. a notice appearing on the source website. A
burden is thereby created onto the copyright owner to inform the specific user of his
objection to the use despite the implied consent.160 Thus, the burden is shifted from the
affirmative consent, to the owner of the work, in doing so, shifts the burden to the proprietary
owner, sustaining the traditional perceptions of copyright as a property right. As seen to be
consistent with Lockes labour theory in natural law, where intellectual property is
interlocked with the property right in the labour of ones own body. 161 The traditional
proprietary nature of copyright is maintained, and the implied license doctrine is exercised as
a means to fine-tuning it. The use of the implied license doctrine as a non-contractual concept
determinedly resolves the pragmatic way of applying an implied consent and undermining
authorisation.

158

Orit Afori (2009), p 312

159

Emanuela Arezzo [2014], p 10

160

ibid, p 312

161

John Locke (1970), p 305-306

41

Conclusion
The new public theory has been under scrutiny by the courts since it was first deployed in
SGAE. It has allowed the CJEU to reject liability in the Svensson case, which was an
indication of progress and a move towards flexibility. Most importantly, it has affirmed the
general scope of the making available rights and emphasised that it covers the offering of
works, and not just delivering them.

In Chapter I, this paper presented a resounding view of social utility intrinsic to copyright law
where copynorms are fundamental in the digital world that we occupy. Hyperlinks allow the
free flow of information and are essential in the operations of social and cultural
communications. The free expression of copynorms undermine the legal certainty of
copyright, hence, we have to find a compromise in this imbalance. To do so, this paper
maintains that the intellectual property right to ones work should justify the authors
exclusive rights in disseminating content, but there should be a curb to making the work
freely accessible, which lies in the prior authorisation of the work.

Chapter II finds that a communication to a public covers a transmission or re-transmission.162

If there were further transmission of a work to a further public, this would require
authorisation from the right-holder.163 To understand what constitutes a transmission, we
have looked at the making available right, gathering the view that communication
involves some mode of transmission.164 In relation to works that are already made available

162

C-403/08 FAPL v QC leisure, para 28-30

163

Judgement in C-306/05 SGAE

164

ibid

42

over the Internet, it is not necessary for the copyright owner to authorise access to the
public.165 This indicates the Courts efforts to instill a flexible implementation of the new
public theory.

The courts have attempted to correct the 'new public' theory with the introduction of the
'specific technical means' theory in TVCatchUp. According to which, the right of
communication to the public applies where there is no new public, but when the
communication is made by new different means. Subsequently, in Del Corso, the CJEU
attempted to clarify the legitimacy in hyperlinks in the context of the communication to the
public. This dissertation finds that while the profit-making nature of the hyperlink is not
totally relevant, the extent of economic benefit gained by the hyperlinker would be in
proportion with the authors entitlement in appropriate remuneration, which is a fundamental
intellectual property right.

Following Svensson, the Court attempted to further revise the new public theory to combine
it with the specific technical means theory. This was demonstrated in the ruling that the
making available to the public through hyperlinks (or clickable links) would apply where the
right-holders have limited or restricted the access to their work, and the work had been
circumvented.

The overall effect to the revisions of the new public theory hinted at an erosion of users
freedom of expression. The users' interests in copynorms such as distributing and accessing a
free flow of information are suppressed with the effect of the rights of copyright holders.
After Svensson, the case of Bestwater considered what constitutes copyright infringement in
165

Judgement in C-466/12 Svensson

43

hyperlinks and affirmed Svensson, that a hyperlink must direct to a new public, and this
must be a public not within the copyright owners contemplation when they authorised the
initial communication. It was maintained that if the work was initially communicated with
no restriction measure, this would negate the authors later objection to linking by
unauthorised third parties.

While there is an important goal in resolving copyright to protect right-holders, the courts
must also consider the overall sustainability of the digital network in the interest of the
overall users. Moreover, enhancing creativity does not require an absolute authorial control
over the digital content. In consideration of the societal implications of the Internet, and the
possibilities provided by digital technologies, there is room left for purposive interpretation
and flexible implementation. If the new public theory could be viewed under a different
light, to be conceived as a kind of implied license, then the work should not have been made
available in the first place. If the work had been made freely available on the website by the
author, then it follows through that the author has authorised hyperlinks to that website.

If adopted, the implied licensing regime presented in Chapter III would provide a legal
mechanism in shrinking the addressed gap between copynorms and copyright. The scope of
an implied license should be interpreted narrowly, by remaining limited to the objective
intent of a copyright owner. Such interpretation has the potential to provide copyright owners
with the incentive to freely disseminate their works. In doing so, allows the law to set
boundaries below normative requirements, thereby would allow space for copynorms to
flourish.166

166

Raghu Seshadri (2007), p 36

44

In particular, it has the potential to be complementary to the legal realities and possibilities of
the Internet. With this in mind, it was suggested that a non-contractual form of implied
license could be more reflective of legal reality based upon an apparent consent of the
copyright owner. Consequently, it would deem the copyright owner as having licensed the
use of his work on policy grounds. The burden of the affirmative consent is shifted to the
proprietary owner, consistent with the recognition of copyright as a natural property right.167
Expanding our conception of an implied license in this manner would help address the
imbalance between copynorms and copyright, thereby resolving the new public theory
dilemma. Overall, it seems like the proprietary owner of the work should ultimately bear the
burden in the authorisation of his work. The application of a non-contractual implied license
is not of a heavy burden. Since this form of implied license justifies the inner workings of
copyright as a property right, there is an automatic quality to its application.

Regardless of whether users of the Internet seek to create or consume content, technology
must be allowed to grow for the benefit of everyone. We should maintain the view of
Copyright as communistic in character, for the benefit of social enrichment. While injecting
a flexible approach of purposive interpretation may be at the expense of legal certainty,
boundaries may be set low, and allow space for the free dissemination of works.

167

See n 17, John Locke (1970), p 305-6

45

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