Google does not communicate to the public by hotlinking

The crust crux of this case between Mr Wheat and Google, was about jurisdiction, served with a side of communication to the public... 

Ingredients

It's the yeast I could do... !
Eric Adamshick

Mr Wheat hired Monaco Telecom for website assistance and hosting in 2007 relating to his website theirearth.com. After a falling out in late 2008, Mr Wheat transferred his website to Knipp in Germany. Monaco Telecom retained a copy of the site for a few weeks and then deleted it from its server. Mr Wheat claimed that Monaco Telecom broadcast an unauthorised duplicate of theirearth.com and infringed his copyright. 

Add a helping of Google. Mr Wheat claimed that Google deliberately cached Monaco-Telecom’s server to help attribute the website to a Monaco-Telecom and allowed their global search engine to knowingly index and send search results to the illegitimate copy of www.theirearth.com on Monaco-Telecom's production servers. Both Google and Monaco-Telecom diverted the majority of the website traffic away from the legitimate theirearth.com server in Germany to Monaco-Telecom's servers.

Recipe 

An order made on 30 January 2017 granted Mr Wheat permission to serve the claim on Monaco Telecom out of the jurisdiction. In a hearing on October 2017, Monaco Telecom requested that the court set aside the order made on 30 January 2017 and declare that it did not have jurisdiction, or that it will not exercise its jurisdiction, to hear the claimant's case against Monaco Telecom.

Mr Wheat had applied for permission to serve out of the jurisdiction on Monaco Telecoms relying in particular on paragraph 3.1(9) of Practice Direction 6B: Tort where damage was sustained within the jurisdiction or results from an act committed within the jurisdiction. To come within this gateway, the claimant must show copyright infringements in England and Wales. Monaco Telecom's evidence was that it provides internet access only to subscribers within Monaco, so the claimant only had the prospect of showing infringements in Monaco. To come within gateway 3.1(9) he therefore has to show he had the better of the argument concerning joint tortfeasorship.

The claimant's case was that Monaco Telecom deliberately acted to copy his website but there was no direct evidence about this allegation, it was based upon inference, but had no solid foundation. Further, there was no evidence to show Google used Monaco Telecom when indexing searches or anything to infer that Monaco Telecom induced, incited or persuaded Google to engage in infringing acts or that there was common design or concerted action by agreement between them to secure the doing of the infringing acts.

In this instance, the judge noted that, from a common-sense perspective, it was not clear why Monaco Telecom would have had any reason to divert traffic away from the claimant's website or to assist the first defendant in doing so, since it was unchallenged evidence is that it never earned any money from any traffic that may have been diverted to an alleged copy of the claimant's website on its servers. As such, the initial claim failed at all three tests (better argument, reasonable prospect of success and proper forum) and the claim was not able to proceed.

Bake for 2 to 3 years

There had been some confusion about whether or not Google had been served with the claim. Previously, in 9 September 2016, the application had come before Deputy Master Arkush, on paper, and he ordered that the application should be served on Google. He did not make an order granting permission to serve the proceedings out of the jurisdiction on Google, contrary to what the claimant appeared to have believed and told the court at the hearing on 30 January 2017. This error was material because the original grant of permission - in January 2017 - to serve Monaco Telecom out of the jurisdiction was made on the basis that it was a necessary party to the claim. It was very unlikely that permission would have been granted had the court known permission to serve out of the jurisdiction on Google had not been obtained.

This issue was addressed in a further hearing that took place in February 2018. The Court noted that it was beyond doubt that Google has not been lawfully served with the claim and it had neither treated service as having been validly effected nor submitted to the jurisdiction of this court by any action it has taken, including appearing to oppose the claimant's applications. For the claim against Google to proceed, the claimant would need to obtain permission to serve the claim out of the jurisdiction and an order extending the time for service, or an order deeming service as having been effected.

At its heart, Mr Wheats complaint was about what he described as the 'hijacking' of his copyright content on his website, particularly his images displayed there. The effect of this 'hijacking' by third parties was to considerably reduce the number of hits on his website with the consequence that advertising revenue that would have been earned by the claimant was diverted elsewhere. 

Image: robin byles

The claim relied on four jurisdictional gateways, although only two were considered to have any merit; Paragraph 3.1(7): a breach of contract committed within the jurisdiction and Paragraph 3.1(9): a claim in tort where damage has been or will be sustained within the jurisdiction or results from an act omitted or to be committed within the jurisdiction.

In relation to para 3.1(7) breach of contract within jurisdiction, it was argued that Google is in breach of its AdSense contract. However, the court noted that if the UK version of the AdSense contract was to be relied upon, the claim in contract could only be pursued against Google Ireland Limited. Likewise, if the US version of the contract was to be relied upon, an exclusive jurisdiction clause in the contract prevents Mr Wheat from bringing the claim in England. Moreover, the court stated that the contractual terms relied upon by Mr Wheat do not create the obligations he attempted to rely upon. "neither party shall acquire any right, title or interest" is intended to clarify that no transfer of rights will take place as a consequence of entering or implementing the agreement.

In relation to para 3.1(9) and copyright infringement the court found that:

i. There is no evidence that the hotlinkers have any connection with the United Kingdom. Mere accessibility of a website from the United Kingdom in insufficient to confer jurisdiction or to localise communications of that website operator within the United Kingdom.
ii. Hotlinking does not involve an act of copying. 
iii. It is not open to the claimant to contend that there has been an infringement by communication to the public that is in breach of section 169(1)(d). The doctrine laid down by the ECJ in Case-466/12, Svensson, EU:C:2014:76, [24]-[28] and Case 160/15, GS Media BV, EU:C:2016:644, in [41][44] that where photographs have been made freely available with the consent of the right holder, the copyright owner cannot later complain that third parties have linked to or embedded those works from their own websites. 
iv. The complaint that Google has prioritised one website over another does not give rise to a claim for copyright infringement.
v. There is no arguable claim for secondary infringement.
vi. Equally, there is not a good arguable claim that Google is a joint tortfeasor with others. There is simply no evidence to show any connection between the automated process carried out by Google and the hotlinkers that would suffice to create a common design or give rise to procurement.
vii. Google is entitled to take advantage of the safe harbour defence.

As such, the court declined to accept jurisdiction and the application was dismissed.

Break bread

On appeal, which was heard in Nov 2019, Mr Wheat argued Google has communicated his copyright works to the public within the terms of section 20(2)(b) CDPA 1988. The communication was without his licence because, although he gave consent to Google to index and cache the content of the Website, that consent did not extend to the communication of the content via hotlinking websites because this deprived Mr Wheat of both the traffic and the revenue. 

 

Mr Wheat needed to show that Google communicated his copyright works either (a) to "a new public", namely a public to which his licence to Google did not extend, or (b) by a different technical means from that which he had authorised. In Svensson (Case C-466/12) the CJEU treated the internet as a single technical means. And, the reasoning at [26] in Svensson means that the communication complained of by Mr Wheat must have been to the same public as that within the scope of his licence because it was within the class of potential visitors to the Website.

As such, the judgement of the court was that the reasoning in Svensson, BestWater and GS Media was determinative. The acts complained of against Google could not be unlicensed communications, because they were not communications to a new public (all potential users of the unrestricted Website constituting one public, so far as concerns a case involving communication via hotlinking) and are not communications by a new technical means (the internet constituting a single technical means), and so, unsurprisingly, the appeal failed.