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The Second Opinion: UK Supreme Court decides it’s okay to look

A Commentary on Recent Legal Developments by the Opinions Group of McCarthy Tétrault LLP

Posted in The Second Opinion
Kirsten Thompson

Is there a difference between having a collection of headlines assembled in a report and sent to you by email versus viewing that same report on a website? The UK Supreme Court recently decided there is, overturning the decisions of the courts below and holding that the latter activity is covered by the ‘temporary copies’ exception in UK copyright law.  The case concerns the activities of Meltwater, a news aggregator which has been a global thorn in the side of rights holders, including here in Canada where in June 2011, a group of Canada’s biggest news publishers including Postmedia Network Inc., Sun Media Corp., Le Devoir Inc. and others initiated a similar lawsuit against Meltwater, alleging copyright infringement and seeking an injunction and damages.

The appellant in Public Relations Consultants Association Limited (Appellant) v The Newspaper Licensing Agency Limited and Others (Respondents) [2013] UKSC 18 is an association of PR professionals who monitor news coverage for clients. The appeal was about the services provided to members of this association by Meltwater. Meltwater uses an automated software programme to create a daily search report of customized keywords appearing on newspaper websites. Meltwater produces a monitoring report which it sends to the customer by email, but the customer can also access it through Meltwater’s website.

In an earlier skirmish, the Newspaper Licensing Agency, a company which manages the IP rights of its newspaper publisher members, forced Meltwater to obtain a licence for providing snippets of content and links to articles to its customers. In addition, Meltwater’s customers require a licence to receive the service in its present form, in which they receive a monitoring report by e-mail.

The question in this appeal was whether Meltwater’s customers also need a licence to receive a monitoring report made available only on Meltwater’s website. The courts below held that they did because in the process of browsing, such customers were making copies, however temporary, in their computer.  The courts below found that the creation of these temporary copies was not an integral (and therefore excused) part of the technological process but were generated by the user’s voluntary decision to access the web-page. It was this voluntariness that changed the nature of the temporary copy, took it outside the exception, and caused the infringement.

Sections 16 to 26 of the Copyright, Designs and Patents Act 1988 give to an owner of a copyright the exclusive right to do or to authorise a number of defined acts. It is an infringement to make or distribute copies or adaptations of a copyrighted work. However, the mere viewing or reading of a protected work is not an infringement. Similarly, a person who merely reads or views a pirated copy of a protected work commits no infringement although the person who created or sold the work may have. At the centre of copyright is this notion of infringing copies.

The ordinary use of the internet involves the creation of temporary copies, such as screen copies or copies in an internet cache. An end-user intends only to view the materials, and the copies temporarily retained on the screen or the internet cache are merely the incidental consequence of his or her use of a computer. The question which arose on this appeal is whether these temporary (unlicensed) copies are infringing copies.

EU copyright laws permit rights holders to charge licence fees to those who make temporary copies of their copyrighted works but creates an exception if those temporary copies are “an integral and essential part of a technological process whose sole purpose is to enable [either] a transmission in a network between third parties by an intermediary, or a lawful use” of a protected work, providing the copy has no independent economic significance. An accompanying Recital, used to interpret the text, states that the temporary copies exception should include “acts which enable browsing”, if those acts meet conditions set out in the exception.

The UK Supreme Court disagreed with the lower courts’ emphasis on voluntariness, saying  that it was “irrelevant” what “discretionary human intervention[s]” could be deployed to extend the period in which the information was copied, because  ”whether to retain the material in memory or not” was still outside an end-user’s control. The court held that that this fact was determined by the “technological processes” inherent in internet browsing.

“There is a difference, which is fundamental to the object of [the 'temporary copies' exception], between a discretionary decision to extend the duration of what remains an automatic process, and the storage of a copy of material in the course of the browsing in a manner which will ensure that it is permanent unless and until a discretionary decision is made to delete or destroy it,” said Lord Sumption.

“If the mere fact that it is in principle possible to close down a computer, alter the browser settings to enlarge the internet cache or leave an image on screen indefinitely were enough to prevent [the 'temporary copies' exception] from applying, then it would never apply to internet browsing. This would frustrate the purpose of the legislation.”

As the UK Supreme Court pointed out, to hold otherwise could potentially affect millions of internet users “who may, no doubt unwittingly, be incurring civil liability by viewing copyright material on the internet without the authority of the rights owner, for example because it has been unlawfully uploaded by a third party.”

The UK Supreme Court also observed the “transnational dimension and potential implications for internet users across the EU and, while expressing its own view of the matter, referred it to the Court of Justice of the European Union for a preliminary ruling.