The CJEU 'new public' criterion? National judges should not apply it, says Prof Jan Rosen

Last week this Kat was back in beautiful Cambridge to attend yet another excellent Fordham IP Conference [you can see relevant tweets by searching #fordhamip]. There were many thought-provoking presentations, including the very stimulating talk by Prof Lionel Bently (University of Cambridge), who argued that the new UK exception for quotation pursuant to section 30 of the Copyright Designs and Patents Act resembles - to a certain extent - US fair use.

This Kat was part of a panel discussing recent development in the area of EU copyright [the slides are available here].

And - of course - how can a panel on EU copyright not feature at least some discussion of the recent hyperlinking cases, notably the decisions of the Court of Justice of the European Union (CJEU) in Svensson [Katposts here] and BestWater [here]? Not are only things interesting but also get sparkling when the person who discusses all this is someone who has been both really prominent in the post-Svensson debate and is not a huge fan of the 'new public' criterion developed by the CJEU. This is of course Prof Jan Rosen of Stockholm University, among the signatories of the ALAI Opinion on Svensson [ALAI has taken a rather different stance on hyperlinking and copyright from the European Copyright Society].

This Kat found his talk fascinating to say the least, and asked Jan if he could provide a summary for the readers of this blog.

Prof Jan Rosen and Eleonora
at last week's Fordham IP Conference

Jan was so kind to say yes, and this is what he writes:

"The new public criterion developed in recent years in the case law of the CJEU - starting with SGAE/Rafael Hoteles, Del Corso [here], and TVCatchup [here], eventually more distinctly contoured by the judgments in Svensson and BestWater, and confirmed in CMore Entertainment [here and here] - construing the exclusive right of communication to the public, is in conflict with international treaties and EU directives. 

Initially articulated in the offline environment to justify application of the right of communication to the public to certain retransmissions of television broadcasts, the criterion, as also subsequently applied by the Court, is inconsistent with the making available/communication to the public right of the Berne Convention and the WIPO Copyright Treaty (WCT) et al, as well as with the provisions of the 2001 Information Society Directive. It may thus trigger a WTO procedure, since Article 9 of the TRIPS Agreement provides that signatory states shall follow Articles 1 – 21 of the Berne Convention.

As applied in - amongst others - Svensson, the new public criterion has the effect of an inappropriate limitation, a carve out of basic exclusive rights of authors and related rightholders, thus resulting in an an exhaustion of the exclusive right of communication to the public of works, as per Article 3 of the Information Society Directive, which their authors or other rightholders have made available over generally accessible websites. Moreover, to the extent that Svensson indicates that the new public criterion will not apply if restrictions accompany the making available of a certain work, the decision is likely to establish an obligation to reserve rights or protect works etc. by technical protection measures, in violation of the Berne Convention’s prohibition of formalities that condition the exercise of exclusive rights.  

This is so even if the CJEU itself has created a relatively narrow scope of application of this new limitation to the communication to the public right. Not merely because it is just valid for certain linking measures on the internet, as the CJEU’s exceptions to the exception in the Svensson/BestWater cases emanate basically from measures of “restricted access” to a work or protected item posted on the internet. Probably, the Court thought of technical protection measures, excluding the free access to works put on the internet by means of linking, but it may at least be discussed whether such a restriction to the use of the new public criterion would also emanate from explicit reservations on the website, eg in placing a copyright notice (© (P)) on such a site, or a restriction of the right granted by the author to the website’s manager [this was discussed at some length in this earlier Katpost]. One could compare this to the impact of such restrictions on the exhaustion of the distribution right. 

Further, another limitation to the limitation emanates from the TVCatchup decision, saying that if the making of works available through the retransmission of a terrestrial television broadcast over the internet uses a specific technical means different from that of the original communication, that retransmission must be considered to be a ‘communication’ within the meaning of Article 3(1) of the Information Society Directive. Hence, if different technical means are employed that differ from those used for the original communication, there is indeed a new public and the communication/making available to the public right stays intact.

Shakespeare or CJEU?

A more general negative reaction to the CJEU’s new public criterion follows from the fact that the issue of creating new or altered limitations and exceptions to copyright law or related rights within the EU, to have more precise solutions, to make them mandatory etc. are all matters to fall within the precise EU legislative framework, not as an effect of case law. It is not acceptable [what is certain at least is that case law-driven harmonisation in the area of EU copyright is not limited to the new public criterion] that those basic issues of introducing new limitations or framing of fundamental exclusive copyright uses to be accomplished by judgments of an expansive CJEU, and, certainly not, in conflict with international treaties, binding for EU Member States or, needless to say, the EU as such.

From a more strictly legal perspective, as already said, the CJEU’s limitation to the communication to the public right, as achieved by adopting by the new public criterion, is in conflict with the Berne Convention, in particular its Article 11bis. Further, the new public criterion lacks any support from the WCT, WIPO Performances and Phonograms Treaty, the TRIPS Agreement and the Information Society Directive. The EU as such is not a Member of the Berne Union, but individual Member States of the EU are, thus indicating what falls within the frames of EU Member States’ international obligations. However, the EU is actually a signatory to the TRIPS Agreement, and has thus agreed to pay respect, according to Article 9 of the TRIPS  Agreement, to Articles 1-21 of the Berne Convention. In sum, according to its statutes the EU obviously lacks a mandate to render new meanings to the text of the Berne Convention, or offer lofty re-interpretations of it. The same is valid for the CJEU.

Must then a Member State and its national courts adapt its national copyright protection to a preliminary ruling of the CJEU in conflict with international treaties and, hence, the EU Treaties? 

No. From a strictly legal perspective the border of the principle of loyalty for Member States has been crossed, an effect of the CJEU’s introduction of the new public criterion, as the Court has hereby exceeded its powers.

The new public criterion also carries with it a risk that Member States, actually following or applying the new public criterion nationally, may be the target of dispute settlement under the WTO system, allegedly not complying with Article 9 of the TRIPS Agreement, by not offering those rights emanating from Articles 1-21 of the Berne Convention."