Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

Onscreen copies and cached copies made by an end-user in the course of viewing a website do not infringe a copyright holder’s copyright.

— Public Relations Consultants Association v Newspaper Licensing Agency & Ors, Case C-360/13 (Europe, European Court of Justice, 5 June 2014)

Facts

The Public Relations Consultants Association (“PRCA”) is an association of public relations professionals that uses the media monitoring services offered by the Meltwater group of companies (“Meltwater”). The other party to the dispute is the Newspaper Licensing Agency (“NLA”), which is a body set up by the publishers of newspapers in the United Kingdom for the purpose of providing collective licensing of newspaper content.

Meltwater’s customers would receive media monitoring reports produced by Meltwater. These reports could be read online on Meltwater’s website, and consisted of the following:

• A hyperlink to each relevant article, which was a citation of the headlinefrom the article;
• The opening words of the article after the headline; and
• A short extract from the article.

The dispute arose because the two parties could not agree on whether the PCRA, as a customer of Meltwater, was required to obtain a licence from the copyright holders for providing and receiving the media monitoring service from Meltwater’s website. The NLA argued that the authorisation of the copyright holders was required as viewing the website led to copies being made on the user’s computer screen and in the internet “cache” of a computer’s hard disk.

Legal Background

Article 5(1) of Directive 2001/29 (the “Directive”) provides as follows:

“Temporary acts of reproduction referred to in Article 2, which are transient or incidental, which are 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) 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.”

Article 5(1) of the Directive is part of the UK’s national law under section 28A of the Copyright, Designs and Patents Act 1988.

The question was whether on-screen copies and cached copies satisfied the conditions established in Article 5(1) of the Directive. The UK Supreme Court referred the question to the European Court of Justice for a preliminary ruling.

Decision

The Court of Justice held that onscreen copies and cached copies made by an end-user in the course of viewing a website satisfied the following conditions:

• Copies are temporary;
• Copies are transient or incidental in nature;
• They constitute an integral and essential part of a technological process; and
• They also satisfy the conditions laid down in Article 5(5) of the Directive.

Accordingly, they may be made without the authorisation of the copyright holders.
The Court noted at the outset that the conditions set out in Article 5(1) of the Directive must be interpreted strictly as this Article is a derogation from the general rule that the copyright holder must authorise or consent to any reproduction of his protected work. However, the exemptions provided must also take into account the development and operation of new technologies, and strike a fair balance between the rights holders and users of protected works.

The Court stated that the first condition was satisfied as the act of reproduction in this instance was temporary since on-screen copies are deleted when the internet user moves away from the website viewed. Cached copies are also automatically replaced by other content over time.

It then held that the act of reproduction here would also be transient or incidental as per the second condition. The end-user’s act of terminating the technological process preceding the deletion by the system of the copy did not invalidate the transient nature of an act of reproduction. Further, an act of reproduction can be regarded as “incidental” if it did not exist independently of, or has a purpose independent of, the technological process of which it forms a part.

The Court analysed on-screen copies and cached copies:

• On-screen copies are deleted automatically by the computer at the moment when the internet user moves away from the website concerned, and therefore at the moment when one terminates the technological process used for viewing that site. Accordingly, it must be held that the period where the on-screen copies remain in existence is limited to what is necessary for the proper functioning of the technological process. These copies must then also be regarded as “transient”.

• Cached copies are not deleted at the time when the internet user terminates the technological process used for viewing a website. However, it may be argued that they are “incidental” to the technological process used. The internet would not be able to function properly without the cache, thus, it follows that cached copies neither exist independently of, nor have a purpose independent of, the technological process and must be regarded as “incidental”.

 
The third condition is that the acts of reproduction must be an integral and essential part of a technological process. The Court noted that the on-screen copies and cached copies were created and deleted by the technological process used for viewing websites and made entirely within this context. Since the Directive did not specify at which stage of the technological process would such acts of temporary reproduction be deemed to be carried out, such acts may encompass both the initiation and termination. Next, the Court reiterated the importance of cached and on-screen copies for their great facilitation in browsing the internet. Without them, the process would be considerably less efficient and would not function properly.

 
Having considered the above, the Court concluded as follows:

• On-screen copies and cached copies are created only for viewing websites, thus constituting a special case.
• The copies do not unreasonably prejudice the legitimate interests of copyright holders. This is because publishers of the websites are required to obtain authorisation from the copyright holders concerned, therefore the legitimate interests of copyright holders are safeguarded.
• The creation of on-screen copies and cached copies do not conflict with a normal exploitation of works given that the creation of such copies forms part of the viewing. Therefore, it cannot operate to the detriment of such an exploitation of the works.

Our Analysis / Comments

 
This case provides a helpful analysis on whether the creation of on-screen copies and cached copies in the internet would violate the rights of copyright holders, thereby requiring their consent and authorisation.

This decision is significant for the clarity it has provided, particularly in this day and age where the internet is a regular resource.

 
In Singapore, the mirror provision may be found in section 38A of the Copyright Act, which states that (subject to certain conditions being met), the “copyright in a work is not infringed by the making of a temporary or transient reproduction of the work if the reproduction is made incidentally as part of the technical process of making or receiving a communication and the act of making the communication itself does not constitute an infringement”.

 
While it remains to be seen whether our local courts will follow the interpretation of the European courts on this issue, this case does potentially offer useful guidance on the issue of making a transient copy of a copyrighted work.

For further information, please contact:

Chung Nian Lam, Partner, WongPartnership
[email protected]

Jeffrey Lim, Partner, WongPartnership
[email protected]

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