Cross-border 'illegal' linking: questions of localization and choice of law

Implications of GS Media:
is everything clear?

As readers know, in its judgment in GS Media [Katposts here] the Court of Justice of the European Union (CJEU) elaborated further on the treatment of linking to protected content under the right of communication to the public in Article 3 of the InfoSoc Directive.

But when it comes to  cross-border activities, how does one solve issues of applicable law?

Katfriend Mattias Rättzén (Sandart & Partners) has written about all this in an article that has just been published on the Journal of Intellectual Property Law & Practice (OUP). In this guest post, he summarizes his main findings.

Here's what Mattias writes:

Cross-border 'illegal' linking: questions of localization and choice of law

by Mattias Rättzén 

In GS Media the CJEU found that, where it is established that the person linking knew or ought to have known that the hyperlink provides access to a work illegally placed on the internet, the provision of that link constitutes a communication to the public. How the CJEU characterized linking is unique in the sense that it presupposes the existence of two communications to the public: provision of the hyperlink and the publication of the linked content. The illegality of latter is a legal condition of the first. 

The most common form of linking concerns the situation where a hyperlink is posted on a website leading to content published on another website. More often than not, these websites have different connecting factors. The servers of the websites may be situated in different countries, the content and the languages may be different, and thus the intended audience may too be different. Furthermore, the acts of publishing committed by the individuals posting the link respectively material may take place in different countries. 

Where the act of linking and the act of publishing are to be localized in cross-border situations and what laws are applicable to those acts have so far gone rather unnoticed in linking cases. These questions, and the interrelationship between them, are made more difficult because of how linking was characterized in GS Media. A legal assessment must be made in relation to both infringing acts, but what if there are substantive differences in the outcome between those applicable laws? 

In a real conflicts situation, we are usually bound to turn to the principles of private international law to solve it. This would involve us asking what the principal and incidental question is, if any. The usual choice is then between application of the law of the forum, lex fori, and the law governing the principal question, lex causae. A private international law analysis based on applying lex fori or lex causae, however, disregards the fact that an intellectual property right is a national right and that an infringement analysis must therefore be governed by national law. 

A more traditional approach to determining the applicable law to an infringement assessment and whether the publication of linked content is infringing or not should be answered according to the lex loci protectionis. The legal source would be Article 15(g) of the Rome II Regulation, which provides that the law applicable to non-contractual obligations, in this case Article 8(1), shall govern liability for the acts of another person. To put it differently, if we apply the lex loci protectionis to the principal question (that is the act of linking), then we should do the same for the act of publishing. Since the application of the lex loci protectionis is in practice contingent on the localization of that act to the country of protection, we must rephrase our initial question: if the act of publishing cannot be localized to a country where it is infringing, will that too rule out that the act of linking is infringing? In other words, should we consider the localization of the publication of the linked content, and its substantive results, to be something of relevance for whether or not the linking activity is a communication to the public? 

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This situation is not too different from contributory infringement in cross-border cases. Similarly, this involves two separate infringing acts. The prevailing view here is that the contributory act in a cross-border situation shall follow the law applicable to the primary infringing act. The most notable cases from national courts are Subafilms, Ltd. v MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir. 1994) (United States) and Abkco Music & Records Inc. v. Music Collection International Limited [1995] RPC 657 (United Kingdom). Still, the theoretical basis for this rule is not always clear and, when clear, convincing. The question is whether the same principle should be extended to linking. When considering that, however, it needs to be appreciated that there is an important difference between contributory infringement and linking. The way linking was characterized in GS Media mandates that both the act of linking and the act of publishing are infringing, but since these acts are still independent from each other it is clear that the governing law must not be the same. In other words, the governing law of the act of posting a hyperlinking does not necessarily predicate the act of publishing linked content. The result is that each of these two acts must be localized independently. In principle, there will be no infringement unless both are unlawful. 

So, how can we avoid disparate substantive results, if possible, and hence legal loop-holes? One possible route of, to some degree, avoiding these issues would be to analyse the linking activity and begin with challenging how linking was characterized in GS Media. We should consider asking the question whether it is always appropriate that a hyperlink should be treated, for legal purposes, as dependent on what it leads to. Can a hyperlink, depending on the factual circumstances, in some cases be considered as a communication to the public on its own, even if the linked content on the other website would be lawful? 

It is appropriate to end with a more practical note concerning a not too unfamiliar situation. Imagine there is a website in English, potentially targeting a wide audience, including a hyperlink leading to another website in a national language, and which exhibits no other foreign connecting factors, where an image is posted. If the posting of the image on the latter website does not infringe copyright in the country to where the act of posting can be localized, is it fair to hold that the hyperlink on the first website targeting a much wider audience should also be considered lawful?