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INTELLECTUAL PROPERTY LAW Introduction This writer will first give a brief overview of the law on temporary technology-

dictated copies before dealing with the first part of the question; discussing

the questions asked to the Court of Justice of the European Union (CJEU) in

Public Relations Consultants Agency v The Newspaper Licensing Agency

Limited and others1 (PRCA v NLA) in light of relevant case law and academic

literature. Subsequently, the writer will then provide an answer to the

questions regarding temporary technology-dictated copies and copyright

infringement.

The law in the United Kingdom The law in the United Kingdom (UK) governing temporary technology-dictated

copies is Section 28A of the Copyright Patents and Designs Act 1988 (CDPA

1988), which implemented Article 5(1) of the Information Society Directive

2001/29/EC (InfoSoc Directive). Under s28A CDPA 1988, four conditions

must be satisfied for temporary dictated copies to not amount to infringement.

I. Copy must be transient or incidental;

II. The making of the copy must be an integral and essential part of a

technological process;

III. The copying must take place to enable either transmission of the work

in a network between third parties by an intermediary; or a lawful use of

the work; and

IV. The temporary copy must have no independent economic significance.

These conditions are cumulative, in the sense that an applicant needs to

comply with all of them in order for their act to be exempted2.

1 C-360/13 Public Relations Consultants Association Limited v The Newspaper Licensing Agency Limited and others 2 Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 (55)

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The questions asked in Public Relations Consultants Association Limited v The Newspaper Licensing Agency Limited and others to the European Court of Justice The law on temporary technology-dictated copies in the UK has always been

in a state of uncertainty owing from the initial decision in Infopaq International

A/S v Danske Dagblades Forening (Infopaq I), to the Court of Appeal (COA)

decision in Newspaper Licensing Agency Ltd v Meltwater Holding BV3

(Meltwater), before the latest United Kingdom Supreme Court (UKSC) case of

PRCA v NLA.

In PRCA v NLA, the UKSC felt that they had to refer to the CJEU what it felt

was a critical issue; whether situations where…

I. An end - user views a web - page without downloading, printing or

otherwise setting out to make a copy of it;

II. Copies of that web - page are automatically made on screen and in the

internet "cache" on the end-user's hard disk;

III. The creation of those copies is indispensable to the technical

processes involved in correct and efficient internet browsing;

IV. The screen copy remains on screen until the end - user moves away

from the relevant web - page, when it is automatically deleted by the

normal operation of the computer;

V. The cached copy remains in the cache until it is overwritten by other

material as the end - user views further web - pages, when it is

automatically deleted by the normal operation of the computer; and

VI. The copies are retained for no longer than the ordinary processes

associated with internet use referred to at (iv) and (v) above continue;

3 [2011] EWCA Civ 890

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Are such copies (i) temporary, (ii) transient or incidental and (iii) an integral

and essential part of the technological process within the meaning of Article

5(1) of Directive 2001/29/EC?

In the next part of this essay, the writer will seek to discuss the meaning of the

questions referred to the CJEU in light of relevant academic literature and UK

and European case law.

The meaning of temporary reproduction In Infopaq I, the meaning of temporary reproduction is intended to enable the

completion of a technological process of which it forms an integral and

essential part4. However, Simon Clark in his analysis of PRCA v NLA argues

that the copy of the article will remain on the computer screen, or the

computer’s memory until either the screen is switched off, or the memory is

deleted. Due to this, it cannot therefore be described as a temporary copy.

However, Lord Sumption dismissed this argument as merely being an artificial

way of extending the duration of the technological process.

The meaning of transient and incidental In Infopaq I, Advocate General Trstenjak opined that acts of reproduction are

transient in nature if its duration is limited to what is necessary for the proper

completion of the technological process, and the storage and deletion is

automated not withstanding any human intervention5 6.

Later, in the UK Court of Appeal (COA) case of Meltwater, the court adopted a

narrow stance when reading the exception provided under Article 5(1) of the

InfoSoc Directive. The COA held that the temporary copies exception is solely

concerned with incidental and intermediate copying, and a temporary copy

made on a web-browser’s screen is not part of the technological process but

rather it is an activity that the end user voluntarily started. Hence, unless the

4 ibid 2 at paragraph 61 5 ibid 2 at paragraph 64 6 Isabella Alexander, ‘The Concept of Reproduction and the ‘Temporary and Transient’ Exception’ The Cambridge Law Journal (2009) 68 520-523

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web-browser has permission from the copyright holder, it will amount to

copyright infringement7.

The UKSC reversed the decision of the COA when Meltwater went on appeal

(now PRCA v NLA). It was held here that copies made in the Internet cache or

on screen are transient and incidental. This is because the software puts a

webpage on the screen and data into the cache, which are created solely for

the technical purposes of allowing a technological process, making it

incidental.8 Counsel representing NLA however argued otherwise, stating that

temporary copies created through caching and browsing will only be deleted

once the website is closed, and the cache cleared or deleted. Lord Sumption

dismissed this argument as merely being an artificial way of extending the

duration of the technological process9 10.

This writer is of the opinion that Lord Sumption’s interpretation in PRCA v NLA

aligns with the meaning of Recital 33 in the Preamble for the InfoSoc Directive

that expressed concern that an over-rigid application of copyright law that had

been intended for physical media would limit the development of the Internet.

It is evident from the wording of Recital 33 that the making of temporary

copies during (inter alia) browsing, or caching was never meant to infringe

copyright (provided that there is no modification to the information, or interfere

with the lawful use of that work). Due to this, this writer opines that the

temporary technology-dictated copies created during web browsing are both

transient and incidental.

The meaning of integral and essential In Infopaq I, the concept of ‘integral and essential part of a technological

process’ means that the copy must not exceed what is necessary for the

7 ibid 3 at page 1098 Michael Hart, ‘Michael Hart Commentary-Head for PRCA’ (29 April 2013) <http://www.thelawyer.com/analysis/market-analysis/practice-areas/litigation-analysis/judgment-call-29-april-2013/3004035.article> accessed 23 December 2013 9 Toby Headdon, ‘Through the Copyright Barricades in PRCA v NLA’ [2013] 24(4) Comps. & Law 18 <http://www.scl.org/site.aspx?i=ed33100> accessed 20 December 2013 10 ibid 1 at paragraph 33

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proper completion of that technological process, and the storage of the data

and its subsequent deletion also has to be free from human intervention11.

Proudman J rejected this opinion, and Her Ladyship concluded that making a

copy on a computer screen is not an essential and integral part of a

technological process12.

In Infopaq II, the CJEU differed from Proudman J’s Meltwater and held that for

an act to be an integral and essential part of a technological process, the

purpose of creating the temporary copies has to be solely for the

implementation of the technological process. The CJEU went on to say that

the creation of this temporary copy is necessary for the technological process

to function correctly and efficiently. For example, in this case the technological

process could not function properly and efficiently without the act of

reproduction13. This is argued to indicate that since the creation of a copy on

a web-user’s screen and the saving of data in the cache is necessary for the

Internet to function correctly and efficiently, it will be an integral and essential

part of the technological process.

Independent economic significance In the case of Football Association Premier League Ltd v QC Leisure and

Others, the CJEU considered the question of whether a temporary

technology-dictated copy has any independent economic significance. The

CJEU held that the creation of the temporary copy does not have its own

distinct economic significance separate from the original work as its economic

advantage is derived from the lawful use of the work concerned.

Academic issues considered before concluding In this part of the essay, the writer will consider various issues from academic

literatures before coming to an answer to the various issues surrounding the

11 ibid 2 at paragraph 61 12 ibid 3 at paragraph 109 13 C-320/10 Infopaq II, paragraph 30

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questions asked to the CJEU in PRCA v NLA regarding temporary

technology-dictated copies and copyright infringement.

The lack of an alternative judgment Counsel for PRCA, Michael Hart (Baker & McKenzie) lauded that the UKSC

judgment is ‘absolutely right in ensuring that acts of end users which were

perfectly lawful in the analogue world remains lawful in the digital world’. The

UKSC made it clear in its unanimous judgment, as any other decision would

have been unacceptable. This is because it will have the effect of making

millions of ordinary Internet users across the EU copyright infringers. To

require people to obtain an express or implied permission from a right holder

before viewing a material online would change copyright from a right to

prevent the making and exploitation of copies to something more akin to a use

right. This will in turn impede on developments of new technology, something

the Copyright Directive sought to avoid. Furthermore, there are now strong

remedies against pirates, plus Article 8(3) of the Copyright Directive that

provides for injunction relief against intermediaries, which is now commonly

obtained14.

In coming to its conclusion, the UKSC was influenced heavily by what it felt

was the acceptable result for society, as millions of Internet users should not

be liable for browsing copyright-protected material on the internet15. This will

also lead to the problem of enforcing copyright infringement against the

potential millions of infringers16.

The notion that exempting web users from copyright infringement would result

in a large-scale piracy is without merit, as the decision in PRCA has no impact

14 ibid 8 15 Harry Jupp, ‘Browse To Your Heart’s Content’, [2013] 163(7557) NLJ 4< http://www.mondaq.com/x/238868/Copyright/Browse+To+Your+Hearts+Content> accessed 27 December 2013 16 Nick Mathys and Oliver Neil, ‘Website copyright infringement: UK Supreme Court asks ECJ to confirm lawfulness of accessing copyright materials through internet browsers’ < http://www.lexology.com/library/detail.aspx?g=212ffb8b-d392-4b0c-8543-805a09be85de> accessed 29th December 2013

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on the copyright owner’s right to take action against those who are unlawfully

uploading copyright material onto the Internet in the first place17.

However, the exception in PRCA cannot have been intended to legitimise all

copies made in the course of browsing or users would be permitted to watch

pirated films and listen to pirated music.

Comparison between physical and online infringement Lord Sumption for the UKSC in PRCA likened the reading of copyrighted

material on the internet to reading an infringing article in physical form, and

held that Section 28A CDPA was intended to treat the viewing of copyrighted

material on the Internet in the same way, regardless of the temporary copies

being made on the screen or cache18. His Lordship then relied on the CJEU

decision in Football Association Premier League Ltd v QC Leisure and

Others19 (FAPL) which stated that Article 5(1) of the InfoSoc Directive intends

to allow the usage of protected works, barring that it has no independent

economic significance20. A work has an independent economic significance if

the author of that work is likely to make a profit due to the economic

exploitation of the temporary reproductions themselves21.

However, Simon Stokes and Stephen Reeves argues otherwise, as a printed

book has a limited circulation depending on its physical location while a

webpage can receive millions of hits around the world22. On the other hand, it

is also surprising that the fact that Meltwater was running a profit based

business was not considered in greater depth in the courts, as profits are not

irrelevant in assessing the legality of a communication to the public. Due to

this, it is shocking that the court did not extend liability for copyright 17 17 Susie Middlemiss, Will Hedges ‘Meltwater and Digital Copyright: Where Do We Stand?’ <http://uk.practicallaw.com/2-535-1807?q=> accessed 22 December 2013 18 Simon Stokes, Stephen Reeves ‘Case Comment, UK Supreme Court Decides Web Browsing Does Not Infringe Copyright but Nevertheless Refers the Matter to the CJEU: PRCA LTD V THE NLA’ [2013] 24(5) Entertainment Law Review 174 19 ibid 19 20 Joel Smith, Rachel Montagnon ‘Case Comment, The Supreme Court’s Opinion on Browsing: Public Relations Consultants Association Ltd v Newspaper Licensing Agency Ltd’ [2013] 35(8) E.I.P.R 477 21 ibid 19 22 Ibid 18

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infringement to the end users who were well able to obtain end-user licenses

from Meltwater23.

Implication of the PRCA decision on businesses If the PRCA decision is upheld by the CJEU, then it would arguably result in

end users of the internet not being required to purchase an end-user license

to view copyrighted material on the Internet, but media monitoring companies,

like Meltwater, will have to pay a much increased license fee ‘on behalf’ of the

end users. Although prima facie this seems like an unfair decision to the

media monitoring companies, one has to remember that these companies are

profit based. It is also this writer’s submission that if this does materialise,

then companies like Meltwater would probably just pass the additional costs in

purchasing the license from copyright holders down to its members.

Regardless, having a situation where a company like Meltwater pays ‘on

behalf’ of its customers is more satisfactory than requiring millions of end

users in the EU to purchase licenses to browse the copyright materials24.

Although the decision in PRCA seems to benefit the members of media

monitoring agencies as fair as not needing an end-user license to view the

websites, it is important to remember that any act of permanently storing the

data, either through copy-pasting it into a Word document, email or printing

without a license from the copyright holder will still amount to a copyright

infringement25.

The Internet as a copyright free space The High Court and the COA in Meltwater adopted a narrow interpretation of

Article 5(1) of the InfoSoc Directive. This is argued to be because they were

keen to protect copyright holders ‘rights’ from piracy, which is a very real

problem in the digital world today. This is an unfortunate price to pay from the

technological development mankind has achieved, as a person today can

spread copyrighted materials worth millions indefinitely just equipped with a

23 ibid 20 24ibid 18 25 ibid 20

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simple personal computer and even a smart phone coupled with an internet

connection26. However, it is this writer’s contention that the High Court and

the COA’s position are misguided. This is because of Recital 33 of the

Preamble to the InfoSoc Directive that expressly provides for the acts of

making temporary copies during browsing, or caching is never meant to

infringe copyright.

Others have observed that the real point of the decisions is to affirm that the

Internet is not a copyright-free space, and that technological inconvenience is

no reason for ignoring the rights of copyright owners online27. This is said

because Meltwater confirms that technology must respect the rights of

copyright owners by ensuring that any prima facie infringing use of copies

must obtain and express or implied permission of the copyright owners.

Justice Proudman in Meltwater held that implied permission can be inferred

from the availability of the copyright work online, while express permission

requires the copyright holder to assert his/her rights, regardless of how

technologically inconvenient such compliance may be28 29.

The Supreme Court was clear however that the application of the temporary

copying exception to browsing is a distinct issue from that of online piracy30.

The balancing of the rights of end users and copyright holders The argument that once copyright material is put on a website without any

sort of restrictions, anyone is free to use it as they please is flawed. Simon

Clark argues that if this is so, then anyone could stream a pirated movie to

their computer, or listen to illegally streamed songs without infringing

26 Andrea Montanari ‘Lex Google: Copyright Law and Internet Providers, Future Enemies or Alies?’ [2013] E.I.P.R 434 27 Iona Silverman ‘Do Copies Made while Browsing Infringe?’ [2013] E.I.P.R 1 28 ibid 2 at paragraph 14429 Justine Pila, ‘Copyright and Internet browsing’ [2012] 128 Law Quarterly Review 204 30 ibid 27

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copyright. Because of this it is argued that the Internet does not become a

copyright-free place because copyright material is placed online31.

On the other hand, Rachel Smith and Joel Montagnon argues that the

exemption was introduced in PRCA to allow for "a fair balance of rights and

interests between right holders and users and to ensure a high level of

protection for copyrights", while modifying those rights to allow the ordinary

use of the Internet32. This view closely aligns to that of the CJEU in Football

Association Premier League Ltd v QC Leisure and Others33 which interpreted

Article 5(1) of the InfoSoc Directive to mean that Section 28A has to allow for

the development and operation of new technologies, while safeguarding an

equitable balance between the rights of copyright holders, and of end users34.

Meanwhile, Simon Stokes and Stephen Reeves argued that the balance has

swung too far in favor of users after the PRCA ruling. This is because

although an end-user can safely imply a license to use content available to all

online, it surely does not follow that end-users should be exempted from

copyright infringement claims when they browse a website who hosts

obviously copyright infringing material35.

Actions at the disposal of copyright holders to prevent online infringement Since the ECJ decision in Infopaq, which indicates that copyright may subsist

even in isolated sentences and 11-word extracts, web and media monitoring

businesses must pay right holders in order to send emails or make extracts an

links available via their websites. Luke Scanlon describes this position as

ridiculous, as why should web and media monitoring businesses be charged

for providing links or extracts of materials available for free for end-users who

find these themselves independent of the services of a web and media

31 Simon Clark, ‘Case Comment Just browsing? An analysis of the reasoning underlying the Court of Appeal's decision on the temporary copies exemption in Newspaper Licensing Agency Ltd v Meltwater Holding BV’ [2011] EIPR 72532 ibid 20 33 ibid 19 34 ibid 18 35 ibid 18

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monitoring business. He went on to state that businesses who do not want

their content to be viewed for free on the internet should restrict the public’s

access through the use of payment walls, or log-in services36.

To solve the problem raised by Simon Stokes, Stephen Reeves and Luke

Scanlon, this author opines that media monitoring companies can engage in

what is known as the ‘robots.txt protocol’ or place no-index meta tags in the

HTML so that no scraping will occur in those website files or directories37.

These are like ‘do not enter’ signs on real property, warning other search

engines that the copyright owner does not impliedly license any usage of his

work. However, it is to note that ignoring a robot.txt protocol does not amount

to a criminal offence, but it still serves a good function to alarm potential

offenders of the copyright owner’s stand. In addition, this writer would also like

to point out another unique benefit as having meta tags in the HTML. In the

2006 United States of America (USA) case of Field v Google, the court

suggested that in the absence of a no-archive meta tags, end-users will be

held to have an implied license to archive material from a website. However, it

is important to note that this USA case is merely a persuasive argument38.

A critical discussion and answer in light of relevant literature on the questions asked to the CJEU by PRCA v NLA It is this writer's opinion that a reproduction is temporary, transient and

integral if its temporary reproduction is intended solely to enable a

technological process. Following this definition, it is then submitted that web

browsing satisfies this as the creation of the temporary copies on the screen

and in the cache are intended solely for web-browsing, and without the

temporary copy, the web-browsing will not function correctly or efficiently.

36 Luke Scanlon, ‘ Government Must change Copyright Law To Protect Website Browsing’ [2013] 2 EIPR 63 37 ‘Robots Meta Tag And X-Robots-Tag HTTP header specifications’ <https://developers.google.com/webmasters/ control-crawl-index/docs/robots_meta_tag> accessed 23 April 2013 38 William Wesley Hills ‘Media Monitoring, Copyright and Technology: Implications of Recent Cases’ Journal of Intellectual Property Law and Practice [2013]

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It is this writer's opinion that a reproduction is temporary, transient and

integral if its temporary reproduction is intended solely to enable a

technological process. Following this definition, it is then submitted that web

browsing satisfies this as the creation of the temporary copies on the screen

and in the cache are intended solely for web-browsing, and without the

temporary copy, the web-browsing will not function correctly or efficiently.

In coming to the answer, this writer, as did the UKSC in PRCA v NLA, had to

place great emphasis on the resulting effect if a decision is given that

effectively makes millions of end-users copyright infringers. In addition,

consideration also had to be placed on the intention of the InfoSoc Directive

found in Recital 33 of the Preamble which stated that the making of temporary

copies during browsing, or caching is never meant to infringe copyright. To

hold otherwise would in no doubt restrict the development and operation of

new technologies, and will be in complete opposite of the intended purpose of

the InfoSoc Directive.

With regards to the argument raised by Simon Stokes and Stephen Reeves, it

is submitted that although it is plausible that an online copyrighted webpage

may get millions of hits, it is not a convincing argument. This is because a

copyright holder has a plenty of technological processes in which he can

utilise to protect his work from potential copyright infringes. These processes

include, inter alia, the inclusion of a robot.txt protocol.

In addition, the argument that if the CJEU upholds the decision of PRCA v

NLA it will result in large-scale piracy fails as the PRCA decision does not

allow web-users to make any sort of permanent copies.

Furthermore, as seen in the previous two CJEU decision in FAPL which

interpreted Article 5(1) of the InfoSoc Directive as permittong end-users the

right to view a streamed television broadcast without the copyright holder’s

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permission, it would be bizarre and inconsistent if web-browsing was not

permitted by Article 5(1) of the InfoSoc Directive39.

In conclusion, this writer agrees with Luke Scanlon’s opinion that the purpose

of copyright is to maximise the supply, quality and diversity of original creative

works. It is not to maximise the revenues for right holders40. Based on this

rationale, this writer opines that the CJEU will follow their previous

interpretation of Article 5(1) of the InfoSoc Directive, and upholding the

decision of the UKSC in PRCA v NLA.

39 ibid 8 40 ibid 36