When copyright-protected works are transmitted over the Internet a number of temporary copies of those works or parts of them may be made to facilitate the transmission. For example, when a work is transmitted from the web server on which it is hosted to an end-user’s computer running a web-browser, a number of temporary copies will be made on intermediate servers to facilitate that transmission. How does copyright law treat these temporary copies? This is a question which has been thrown into sharp relief in three recent cases, FAPL v QC Leisure,[1] NLA v Meltwater News[2] and ITV Broadcasting v TV Catchup,[3] all of which involve Article 5(1) of the InfoSoc Directive, the so-called ‘temporary copy’ exception.
If Article 5(1) is the exception, what is the rule?
Article 5(1) is quite an intricate exception which is worthy of careful analysis but, as with any exception, the appropriate starting point is to first consider the rule from which the exception derogates so as to properly understand the context of its operation. In this instance, that ‘rule’ is the extent to which copyright can be relied upon to prevent someone else making a temporary copy.
Article 9(1) of the Berne Convention prescribes for authors of literary and artistic works the exclusive right to authorise their reproduction ‘in any manner or form‘ although it does not explicitly state whether this includes temporary copies. The WIPO Copyright Treaty confirms that the reproduction right applies in the digital environment, to use of works in digital form, and that storage in digital form in an electronic medium constitutes reproduction. But, like the Berne Convention, it does not expressly confirm that reproduction ‘in any manner or form‘ includes temporary copies. In fact, the Basic Proposal[4] that preceded the WIPO Copyright Treaty did include such express confirmation but it did not find its way into the final version, suggesting that there was no political consensus on the issue and that there remains a margin of discretion on the issue for national courts.
In the EU, this ‘margin of discretion’ is a bit of a red herring because the reproduction right in Article 2 of the InfoSoc Directive[5] expressly covers temporary copies, thus there is no room for argument. And in the UK, the issue is beyond any doubt because s 17(6) of the Copyright, Designs and Patents Act 1988 states that copying includes ‘transient’ copying.
So, in the EU, the rule is in Article 2 of the InfoSoc Directive. The owner of the reproduction right in a copyright-protected work has the exclusive right to authorise copies including temporary copies.
The relationship between the rule and the exception
What is the intended interplay between the right in Article 2 to prevent temporary copies and the exception in Article 5(1) permitting them?
Recital 9 to the InfoSoc Directive begins ‘Any harmonisation of copyright and related rights must take as a basis a high level of protection…‘ (emphasis added). This suggests that, as a starting point, a high level of protection must be afforded to the temporary copies envisaged in Article 2.
As an apparent corollary, recital 44 states ‘When applying the exceptions or limitations…[s]uch exceptions or limitations may not be applied in a way which prejudices the legitimate interests of the rightholder or which conflicts with the normal exploitation of his work or other subject-matter. The provision of such exceptions or limitations by Member States should, in particular, duly reflect the increased economic impact that such exceptions or limitations may have in the context of the new electronic environment. Therefore, the scope of certain exceptions or limitations may have to be even more limited when it comes to certain new uses of copyright works and other subject-matter.‘ (emphasis added). This suggests that the temporary copying exception in Article 5(1) is limited and should therefore be applied in a restrictive manner.
The European Court of Justice appears to have adopted a similar understanding. In Infopaq,[6] the first case before the ECJ to consider the Article 5(1) exception, it observed that ‘provisions of a directive which derogate from a general principle established by that directive must be interpreted strictly‘.[7] More recently, the Advocate General in FAPL v QC Leisure stated ‘The exception under Article 5(1) …must be interpreted strictly because it derogates from the general principle established by Article 2.’[8]
The Article 5(1) exception
Turning to the exception itself, Article 5(1) of the InfoSoc Directive states:
‘1. Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable:
(a) a transmission in a network between third parties by an intermediary, or
(b) a lawful use
of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2.’
In Infopaq, the ECJ identified within Article 5(1) five conditions all of which must be fulfilled for the exception to apply. There is a degree of interdependence between these conditions.
(1) The act must be temporary
Conceptually it is very difficult to determine what is meant by ‘temporary’ which perhaps explains the absence of any attempt to define it in the InfoSoc Directive. In one sense, everything that is not infinite in duration is temporary. At one end of that spectrum of possibility, most people would agree that a copy made on an intermediate server in the course of a transmission that subsists for only a fraction of a second is a ‘temporary’ copy. But if this is the thin end of the wedge, where does the thick end stop? There is no clear answer to this question.
It has been suggested that temporary ‘necessarily implies that the copy will be deleted, destroyed or will otherwise disappear within some limited, although not necessarily short, time.‘[9] Taking this analysis one step further, one might suggest that a copy can only be regarded as temporary if it will no longer exist at a readily identifiable point in the future.
It is probably a futile endeavour trying to formulate a definition and perhaps an unnecessary one. The concept of ‘temporary’ does not operate in the abstract under Article 5(1) for at least two reasons. First, it is supplemented by the other conditions under Article 5(1) including the concept of ‘transience’ (see further below). Second, it is given life when considered in a particular context. So for example, recital 33 to the InfoSoc Directive states that, provided all the conditions are met, the Article 5(1) exception ‘should include acts which enable browsing as well as acts of caching to take place….‘ This at least suggests that copies which ‘enable’ browsing or caching may in principle be temporary copies, offering some assistance but also prompting further lines for enquiry. For example, do such copies include only the copies made in the RAM of a computer or do they also include the copies on an end-user’s computer screen? Such questions are not merely academic flights of fancy as will be seen shortly.
(2) The act must be transient or incidental
It has been suggested that ‘Transience reinforces the requirement that the copy be temporary, but also adds the notion that the lifetime of the copy is short or fleeting.‘.[10] It is an attractive suggestion because it neatly reconciles the concepts of ‘temporary’ and ‘transient’ in Article 5(1) and ameliorates some of the conceptual difficulties presented by the former.
In Infopaq, the ECJ stated that ‘an act can be held to be ‘transient’ within the meaning of the second condition laid down in Article 5(1) of Directive 2001/29 only if its duration is limited to what is necessary for the proper completion of the technological process in question, it being understood that that process must be automated so that it deletes that act automatically, without human intervention, once its function of enabling the completion of such a process has come to an end‘[11] (emphasis added). This concept of ‘transience’ in effect introduces two additional requirements for reliance on the Article 5(1) exception (shown underlined). In Infopaq, the storage and deletion of the temporary copy was dependent upon human intervention which was fatal to reliance on the Article 5(1) exception.
When is an act of temporary copying ‘incidental’? Presumably when it is ancillary to and made in pursuance of some other main purpose. For example, a temporary copy made in the RAM of a computer to enable browsing may be regarded as incidental to the purpose of browsing. Conversely, the further copy made on the end-user’s computer screen might not be regarded as incidental; it is the copy which is browsed and therefore is not incidental to the purpose of browsing.
(3) The act must be an integral and essential part of a technological process
A ‘technological process’, while not defined, will cover processes which are effected by technological means. This begs the question – what are technological means? This will need to be addressed on a case-by-case basis. In some cases it will be fairly clear (for example, something that goes on inside your computer). In NLA v Meltwater, the High Court held that a copy of a Monitoring Report shown on the computer screen of the end-user to whom it is sent by e-mail was not part of a technological process because it was generated by the volition of that end-user and was in fact the ‘end’ that the process itself was designed to achieve. Thus we might conclude that where the temporary copy is volitional, in the sense that it is made as a result of the application of human will, it cannot be part of a technological process.
Examples of a ‘technological process’ include a data capture process operated by a media monitoring organisation (Infopaq) and streaming of content of broadcasts to subscribers of a broadcast service (ITV Broadcasting v TV Catchup).
To be ‘integral’ the act of making the temporary copy must be integrated within the technological process. Put another way, the act must be one in a sequence of actions which the technological process is made up of. To be ‘essential’ the successful operation of the technological process must be dependent upon the making of the temporary copy.
(4) The sole purpose of the process must be to enable a transmission of the work in a network between third parties by a intermediary or lawful use of the work
There are in effect two disjunctive ‘sole purposes’ at play here.
There is not too much to say on the first which concerns intermediaries. It concerns the making of a temporary copy for the sole purpose of enabling the transmission of a work by an intermediary between third parties in a network. Thus it is aimed at providing an intermediary with some comfort in relation to the numerous ‘invisible’ temporary copies that it will inevitably make to facilitate transmissions over the Internet and other networks. These are some of the copies referred to in recital 33 that ‘enable’ browsing and caching to take place.
The second concerns users. Subject to fulfilment of the other conditions, temporary copying that enables lawful use of a work is permitted. Recital 33 states that ‘A use should be considered lawful where it is authorised by the rightholder or not restricted by law.‘
If a use is ‘restricted by law‘ then the Article 5(1) exception should not apply. This could refer to any law not just copyright law. A use ‘not restricted by law‘ might include the ‘fair dealing’ provisions under ss 29 and 30 of the CDPA 1988.
A ‘use’ is considered lawful when ‘authorised by the rightholder’. The rightholder’s authorisation of the use may therefore pave the way for the application of the Article 5(1) exception but it does not follow that it also confers a licence to make temporary copies (thereby rendering the Article 5(1) exception redundant). For example, a licence to make 10 photocopies of a document may not expressly cover any temporary electronic copy of the document stored in the photocopier in the process. The sole purpose of that electronic copy is to enable the authorised (and therefore lawful) use of making the 10 copies.
If the use is not lawful then any temporary copies made as part of a technological process cannot benefit from the exception. It is therefore crucial to determine whether the ‘use’ is authorised and this is not always an exact science. When a copyright work is made freely available by the copyright owner for public consumption on the Internet, it is arguable that it goes hand-in-hand with an implied licence for the end-user to make temporary copies to enable browsing. Conversely, when a copyright work is made available but subject to terms and conditions governing use, the scope of any implied licence will be subject to the express terms and conditions of use, meaning that use in contravention of the terms and conditions will not be a lawful use. It is important not to confuse this with the question as to whether the terms and conditions of use form a binding contract between the web site owner and the end-user – that is a distinct and separate contractual issue.
(5) The act must have no independent economic significance
The temporary copy itself must have no independent economic significance if it is to benefit under Article 5(1). Recital 33 to the InfoSoc Directive puts it this way, ‘The acts of reproduction concerned should have no economic value on their own.‘ This condition has attracted the most attention in the case law to date (FAPL v QC Leisure, ITV Broadcasting v TV Catchup).
In NLA v Meltwater, the High Court (upheld in the Court of Appeal) held that the copy of the Monitoring Report shown on the computer screen of the end-user to whom it is sent by e-mail did have independent economic significance as it was the very thing that the end-user was paying for. This appears to reflect the view of Advocate General Kokott in her Opinion in FAPL v QC Leisure that fragments of digital video created on a television screen (and fragments of the accompanying soundtrack) had independent economic significance as they were the subject matter of the exploitation of a broadcast, regardless of whether its reception was paid for by a subscriber, through advertising or from a national budget. (In contrast, she found that the frames of digital video and audio created in the memory of a decoder in the course of a broadcast transmission did not have independent economic significance; their economic significance was dependent upon the proposed exploitation.) This approach appears consonant with the Opinion of the Economic & Social Committee on an early draft of the InfoSoc Directive which confirmed that ‘the independent economic significance in question is to use of the work in question, not its transmission‘ and that ‘any reproduction that in effect is consumption of the work, such as the temporary copying of programmes or data into memory in order to use or access such works, for example the act of accessing on-line databases, should only be permitted with the rightholder’s authorisation‘.
This appears to be an entirely sensible approach, yet it is one which the ECJ/CJEU declined to follow in FAPL v QC Leisure, instead deciding that both the copies in the decoder memory and on the television screen did not have independent economic significance. The Court stated that these copies formed ‘an inseparable and non-autonomous part of the process of reception of the broadcasts transmitted containing the works in question …they are performed without influence, or even awareness, on the part of persons thereby having access to the protected works‘.[12] This is a rather odd conclusion and merits scrutiny.
First, any temporary copy which is an essential and integral part of a technological process is in principle ‘inseparable’ from that process. If ‘inseparable’ is the correct test, then the answer would always be a foregone conclusion and that cannot have been the intention of the Article 5(1) exception. The better approach is to consider whether the temporary copy is identifiable within the technological process, not whether it is inseparable from it, and then whether economic significance can be independently attributed to it.
Second, it is rather unclear what is meant by ‘non-autonomous’ in this context. If making a temporary copy is an essential and integral part of a technological process, can it ever be autonomous?
Third, there appears to be no obvious correlation between, on the one hand, ‘influence or awareness‘ of the making of the temporary copies and, on the other hand, independent economic significance. There is certainly no reference to those criteria in Article 5(1). It is reasonable to suppose that independent economic significance is to be judged objectively – namely, does the making of the temporary copy have independent economic significance or not? Furthermore, an end-user is certainly aware that temporary copies have been made when they see them on a television screen even if they do not understand the precise technical manner in which those copies are made.
It is not at all clear why the Court of Justice departed from the view of the Advocate General concerning temporary copies which are made on a television screen and which are clearly for consumption. There is a suggestion in its judgment that to require television viewers to obtain authorisation to view copyright-protected content would impede and paralyse the spread and contribution of new technologies. But this is, quite frankly, looking at it through the wrong end of the telescope. Television viewers often pay to watch programmes. Broadcasters often receive advertising revenue off the back of them. Where viewers don’t pay a subscription they no doubt have an implied licence of any copyright to make the required temporary copies, making it neither necessary nor appropriate for the Article 5(1) exception to play any role. The danger in the Court’s decision is that it has made the exception the rule and misunderstood how copyright functions.
Article 5(5): the three step test
Article 5(5) states:
‘The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.’
It is a restatement of the ‘three step test’ in the Berne Convention, WIPO Copyright Treaty and TRIPS Agreement.
It represents a further step in the application of the Article 5(1) exception as it ‘shall only be applied‘ in the circumstances described.
The UK Government took the view that the European Commission had already taken the three step test into account when framing Article 5(1) and so it was unnecessary to add an express reference to it in s 28A of the CDPA 1988 (implementing the Article 5(1) exception). With the possible exception of the requirement of ‘in certain special cases‘ (see below), this is questionable for at least two reasons. First, if the European Commission had done so, Article 5(5) would have been unnecessary. Second, it makes more sense to consider Article 5(5) each time Article 5(1) is applied, not just the once when it was implemented, because the legislature could not possibly have anticipated all factual scenarios to which Article 5(5) might apply. The UK courts cannot simply put their heads in the sand and ignore the UK’s obligations as a member of the EU to ensure that it is applied in accordance with the three step test. This much is apparent from the CJEU’s finding in FAPL v QC Leisure: ‘in order for [the Article 5(1) exception] to be capable of being relied upon, those acts must also fulfil the conditions of Article 5(5)…‘ (emphasis added).[13]
(1) In certain special cases
This essentially means that there are special circumstances which justify the making of an exception. In this respect, it is reasonable to suppose that the legislature has already identified the circumstances envisaged in Article 5(1) as a certain special case.
(2) No conflict with a normal exploitation of the work
In FAPL v QC Leisure the Court appears to have reached the conclusion that it followed from its other findings that this condition was satisfied. It did not articulate why this was so and it is not possible to determine from the decision what this requirement adds to the analysis.
In NLA v Meltwater, the newspaper publishers argued that the normal exploitation of their works involved granting a licence for commercial use of their content in return for payment from users, and that, if s 28A were to operate so as to in effect license such use and exploitation of their copyright works, there would plainly be a conflict. Neither the High Court nor the Court of Appeal expressly referred to Article 5(5), although the Article 5(1) exception was found not to apply by both.
(3) No unreasonable prejudice to the legitimate interest of the rightholder
An example of this might be where the owner suffers a serious loss of profit.
In NLA v Meltwater, the newspaper publishers argued that their interests were unreasonably prejudiced by Meltwater sending copies of headlines and text extracts of newspaper articles to their customers which obviated the need for the customer to visit the newspaper’s website and thus deprived the newspaper of advertising revenue.
Some food for thought
Where a copyright owner is able to assert control over temporary copies of their works made online and in computer networks, they have the means to exploit those works. A vast number of such temporary copies are made every day, many of which may be impliedly licensed, others of which may constitute a technical infringement of copyright not pursued by the copyright owner, but many for which the copyright owner may quite understandably wish to charge a licence fee. For these reasons, Article 5(1) is a very important exception and a clear understanding of the boundaries that it seeks to draw is vital. For the reasons identified above, the CJEU’s decision in FAPL v QC Leisure concerning the applicability of the exception to temporary copies on a television screen may be a step in the wrong direction.
The UK High Court now has to apply the guidance provided by the CJEU in FAPL v QC Leisure. Additionally, that guidance may also need to be applied by the High Court in ITV Broadcasting v TV Catchup, once it has received answers to its own reference.
In applying that guidance, it will be necessary for the High Court in both cases to bear in mind that the Court of Appeal upheld the High Court’s ruling in NLA v Meltwater that the Article 5(1) exception is not applicable in relation to the copy of a Monitoring Report on an end-user’s computer screen, including on the basis that it has independent economic significance. Just to complicate matters a bit more, an application for leave to appeal the Court of Appeal’s decision in NLA v Meltwater has been made to the Supreme Court which itself could result in a further reference to the CJEU. All in all, it’s a bit of a moving feast.
Toby Headdon is a Senior Associate in Berwin Leighton Paisner LLP’s Intellectual Property Group
[1] Joined Cases C-403/08 Football Association Premier League Ltd & Others v QC Leisure & Others and C-429/08 Karen Murphy v Media Protection Services Ltd.
[2] Newspaper Licensing Agency & Others Ltd v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch); on appeal [2011] EWCA Civ 890.
[3] ITV Broadcasting Ltd & Others v TV Catchup Ltd [2011] All ER (D) 175.
[4] Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to Be Considered by the Diplomatic Conference, CRNR/DC/4, Aug 30, 1996.
[5] 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, OJ L 167 , 22/06/2001 P. 0010 – 0019.
[6] Case C-5/08 Infopaq International A/S v Danske Dagblades Forening
[7] Paragraph 56.
[8] Opinion of Advocate General Kokott in Joined Cases C-403/08 Football Association Premier League Ltd & Others v QC Leisure & Others and C-429/08 Karen Murphy v Media Protection Services Ltd, 3 February 2011, at paragraph 91.
[9] See Copinger and Skone James on Copyright, Sweet & Maxwell, 16th Edition, Volume 1, Paragraph 9-20.
[10] (ibid 2 above).
[11] Paragraph 64.
[12] Paragraph 176.
[13] Paragraph 181.
