CJEU follows up on Soulier and Doke and rules that presumption of consent of performers in relation to exploitation of recordings is not necessarily contrary to EU law

Readers will recall that back in 2015 the Court of Justice of the European Union (CJEU) decided the important Soulier and Doke case [Katposts here], ruling that EU law mandates the recognition of the ‘author principle’, that is the need for the consent - whether express of implied (the latter is however to be strictly defined) - of authors to the doing, by third parties, of acts restricted by copyright in relation to their works.

Indeed, the protection afforded by copyright is not solely concerned with the enjoyment of rights, but also with their exercise.

The CJEU held that that authors must be individually informed of the future third-party uses of their works and the means available to prohibit them if so they wish. In the absence of any actual prior information relating to that future use, authors are not in a position to prohibit such use, if necessary, so that the very existence of implicit consent appears purely hypothetical in that regard. Thus, without guarantees that authors are actually informed as to the envisaged use of their works and the means at their disposal to prohibit it, it is virtually impossible for them to adopt any position whatsoever as to such use.

All this said, a few days ago, the CJEU ruled in another case - Spedidam v INA, C-484/18 - that focused on similar issues to those at the centre of Soulier and Doke, with however the factual difference that: (a) the relevant rightholders are performers, and (2) the mechanism whose lawfulness appeared doubtful is a rebuttable presumption that the performer authorized the fixation and exploitation of their performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

In its decision, the CJEU substantially confirmed the approach taken in Soulier and Doke, but it also qualified and - importantly - softened it, albeit the one at issue was a rather specific factual background.

Let’s see more in detail what happened and how the Court reasoned.

Background

Article 49 of Loi No 86-1067 of 1986 vests INA, the French National Audiovisual Institute (a publicly owned industrial and commercial State body), with the responsibility to preserve and promote the national audiovisual heritage.

The manner in which INA can undertake these activities is governed by agreements concluded by INA with relevant companies. Whilst INA is required to exercise the exploitation rights having due regard for the personal and economic rights of holders of copyright and related rights, the terms on which the works of performers in the archives to which this provision refers are exploited and the remuneration for that exploitation shall be governed by agreements concluded between the performers themselves or the employee organizations representing performers and the Institute.

In 2009, the claimants in the background proceedings became aware that INA was marketing – online and without their authorization – video recordings and phonograms reproducing the performances of a musician (to whom the claimants were successors in title) in the years 1959 – 1978. Those recordings and phonograms had been produced and then broadcast by national broadcasting companies.

The claimants successfully sued INA to obtain compensation for the infringement of the performers’ rights which they held.

The TGI Paris considered that, despite the wording of Article 49, INA was not exempted from having to obtain a performer’s prior authorization for the use of the fixation of their performances. The court considered that the sole purpose of the collective agreements provided for in Article 49 is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorized by the performers concerned.

The Court of Appeal of Paris upheld the decision at first instance, but then the Court of Cassation found that no such requirement as the one of authorization was present in Article 49. As a result, it sent the case to the Court of Appeal of Versailles for a new assessment, and this sided with INA.

The original claimants and Spedidam (which intervened in the proceedings) appealed (again) to the Court of Cassation, which – this time – expressed doubts concerning the compatibility with the InfoSoc Directive of Article 49.

According to the original claimants, INA would offer on its website the downloading in return for payment of performances by performers, without having to prove their authorization for such use. In response to this, INA had submitted that such provision is neither an exception nor a limitation on performers’ rights: it merely concerns evidentiary rules governing those rights – more specifically a rebuttable presumption that performers’ exploitation rights would have been transferred to it.

A referral to the CJEU was the next, unavoidable step in this complex dispute.

The question referred
First of all, the CJEU noted that it was irrelevant when the recordings of the performances had been made, since the InfoSoc Directive applies to all subject matter which, at the date of 22 December 2002, was protected by copyright or related rights in accordance with Member States’ legislation.

Secondly, the CJEU simplified the question asked by the French Court of Cassation. What the national court wished to know, in essence, was whether the InfoSoc Directive rights of reproduction (Article 2(b)) and making available to the public (Article 3(2)) preclude a Member State from providing a rebuttable presumption that a performer has authorized the fixation and exploitation of their performances where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

The decision

In providing a response to this question, the CJEU could not but refer to its earlier Soulier and Doke decision. Similarly to authors, also performers are entitled to a high level of protection, with the result that resulting rights must be broad in scope.

By analogy with Soulier and Doke, the Court reasoned that:

protection must be understood, in particular, in the same way as the protection conferred by copyright, as not being limited to the enjoyment of the rights guaranteed by Article 2(b) and Article 3(2)(a) of Directive 2001/29, but [as also extending] to the exercise of those rights (see, to that effect, judgment of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraph 31). 

It is also important to note that the rights guaranteed to performers by Article 2(b) and Article 3(2)(a) of Directive 2001/29 are of a preventive nature, in that any act of reproduction or making available to the public of the fixations of their performances requires their prior consent. It follows that, subject to the exceptions and limitations laid down exhaustively in Article 5 of the directive, any use of such protected subject matter by a third party without such prior consent must be regarded as infringing the holder’s rights (see, to that effect, judgments of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraphs 33 and 34, and of 7 August 2018, Renckhoff, C‑161/17, EU:C:2018:634, paragraph 29 and the case-law cited). 

That interpretation is in line with the objective of providing a high level of protection for performers’ rights referred to in recital 9 of Directive 2001/29, as well as the need, mentioned, in essence, in recital 10 of that directive, for performers to obtain appropriate remuneration for the use of fixations of their performances in order to enable them to continue their creative and artistic work. [paras 37-39] 

All this said, the CJEU also recalled that consent can be expressed in different ways, including implicitly.

With regard to the rebuttable presumption envisaged in the French law, the Court considered that:

a performer who is himself involved in the making of an audiovisual work so that it may be broadcast by national broadcasting companies, and who is thus present at the place where such a work is recorded for those purposes, first, is aware of the envisaged use of his performance (see, by analogy, judgment of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraph 43) and, second, gives his performance for the purposes of such use, with the result that it is possible to take the view, in the absence of evidence to the contrary, that he has, as a result of that involvement, authorised the fixation of that performance and its exploitation. [para 42]

In addition, the particular structure of the French presumption – notably the possibility to rebut it – suggests that such provision only concerns the procedures for proving that such authorization has been granted (that is the rule of consent in writing as per Article L. 212-3 IPC), not the actual authorization of the concerned performer.

Finally, the CJEU considered that the mechanism envisaged in Article 49 would also to safeguard the fair balance of rights and interests between different categories of rightholders, as mandated by Recital 31 in the preamble to the InfoSoc Directive:

Studio executive on a break

because the INA does not hold in its archives the written authorisations of the performers or their successors in title, or the employment contracts concluded by them with the producers of the audiovisual programmes in question, it would be impossible for that institute to exploit part of its collection, which would be detrimental to the interests of other rightholders, such as the rights of the directors of the audiovisual works in question, of the producers of those works, namely the national broadcasting companies, the legal predecessors of the INA, or of other performers who may have performed in connection with the production of the same works. [para 44]

In conclusion, the CJEU ruled that EU law does not prevent an arrangement like the one envisaged in Article 49 of the French law.

Comment

As mentioned, the decision may be considered substantially in line with the main tenets of the earlier Soulier and Doke judgment. However, it adds important qualifications to the rigorous criteria envisaged therein. In doing so, the INA judgment softens the sharpest – and most radical – edges of earlier case law.

Indeed, in Soulier and Doke, the CJEU had considered that:

• the circumstances in which implicit consent can be admitted must be strictly defined. This would be required not to deprive of effect the very principle of the author’s prior consent;
• authors must be individually informed of the future third-party use of their works and the means available to prohibit it if so they wish. Without guarantees that authors are actually informed as to the envisaged use of their works and the means at their disposal to prohibit it, it is virtually impossible for them to adopt any position whatsoever as to such use [paras 31-40]; and, most importantly,
• mere lack of opposition on an author’s part cannot be regarded as the expression of their implicit consent to the use in question. 

If one had considered these three principles alone, then a situation like the one of Article 49 would arguably be at odds with the author principle as envisaged in Soulier and Doke.

This is the conclusion that Advocate General (AG) Hogan had reached in his Opinion. By also considering the decision in Luksan, the AG found that the situation at issue in INA would be different. He concluded that Article 49 "seems to organise and effect a transfer of the performer’s rights on the basis of an implicit consent in favour of the INA". In his view, "this would amount in the circumstances to a disproportionate interference with the exclusive nature of the performer’s rights." It would follow from Soulier and Doke (at least implicitly) that, "transfer of this kind must operate in a proportionate manner and cannot take from the exclusivity of this right save to the extent that it is clearly necessary for this purpose."

Going back to the Court's reasoning in INA, it was probably on consideration of the ‘disproportionate’ effects that a strict application of the author principle would have on the interests of other rightholders, including other performers who may have performed in connection with the production of the works for which certain performers did not grant an authorization in writing, that at least a qualification of the earlier stance in Soulier and Doke appeared necessary.

In doing so, the CJEU also placed greater emphasis on certain considerations that it had expressed in that decision, including the fact the author principle would be still respected if the author at issue (or, as in this case, the performer) is in a position to put an end to the future exploitation of their content.

A rebuttable presumption to this effect would serve to achieve this outcome, standing in any case its qualification as an evidentiary tool, rather than a system to circumvent the need for the performer's prior consent.