Linking and the Law – Part 3

Linking and the Law

PART 3

 

8.            Linking and Publication – Ramifications for Defamation

There have been a number of cases that address the issue of whether or not posting a link can amount to publication for the purposes of defamation. It is not surprising that there is some divergence of opinion between Courts, and in essence the conclusion can be summed up with the phrase “it depends”.

A number of recent cases have involved Google. The important thing to remember is that not all the cases involving Google involve linking. One of the important English cases (Tamiz v Google[62]) deals with comments placed on a blog hosted by Google, and whether Google is a publisher for the purposes of defamation. The Australian cases of Trkulja v Google[63] and Trkulja v Yahoo[64] involve the return of search results (particularly involving illustrations the juxtaposition of which resulted in defamation by innuendo. Google’s general position is that it is a content neutral provider. Although this may be correct from a technological point of view, the matter becomes a little more complex when the way in which search results are displayed depends upon search algorithms developed by Google programmers and used in the delivery of search results. The issue of snippet – the brief record of the contents of the relevant web-page – and whether or not they can be defamatory was the issue in Metropolitan International Schools Ltd. v. Designtechnica Corpn.,[65] which held that despite the presence of this brief information, Google was not a publisher, although Abbot JA  in A v Google opined that it was arguable that Google was a publisher for the purposes of dismissing an application by Google for summary judgement striking out a claim for defamation. He left open the possibility “to hold that a search engine is a publisher but with access to the defence of innocent dissemination”.  Part of that determination may involve asking whether the automatic search result process contains a “stamp of human intervention”.

Curiously enough none of the cases referred to above carry any discussion of liability for simply providing a link to defamatory material. In all the cases there has been a deeper issue about services that are provided by Google, or the manner in which search results are displayed. However, the case of Crookes v Newton,[66] a decision of the Supreme Court of Canada provides authority at the highest level for the treatment of links in defamation proceedings. Indeed, the finding of the Court on links could well provide guidance in other areas of law. Before embarking upon that discussion there is an early New Zealand case that requires consideration.

The case of International Telephone Link Pty Ltd v IDG Communications Ltd[67]  involved an application to strike out a claim for defamation regarding references in an article to a website which was created by a third party.

The article in question contained a summary of a number of allegations against the plaintiff that had been made by a Mr Leng on a website that he had created “as a warning to others”. At the end of the article was the URL for Mr Leng’s website.[68] The plaintiff claimed that the defendant republished the website publication by making reference to it. It should be emphasised that the article contained a report or summary of the allegations that the plaintiff considered defamatory.

Counsel for the defendant argued:

1. That the defendants cannot be regarded as having communicated the contents of the Website to anyone; a person does not communicate words nor convey their meaning by identifying where they can be found.

2. The defendants did not cause nor participate in the creation of the Website and are therefore not parties to the publication inherent in that creation.

3. That the references to the website were to the entirety of the site, although only portions thereof were defamatory.

Master Kennedy-Grant swiftly rejected the third submission, observing that few documents are defamatory in their entirety It therefore does not matter that the Website is not defamatory in its entirety. [Pge 5 (2)] The second submission was deemed to be irrelevant. He then went on to identify the crucial issue as whether it is arguable that the references to the website in the article were sufficient communication of the defamatory contents of the website to constitute publication of those contents and referred to a number of cases from the late nineteenth and early twentieth century.

The cases relied upon by the Judge involved circumstances where attention was drawn to the existence of defamatory content. In Hird v Wood[69] a person who sat near a placard which allegedly defamed the plaintiffs and pointed to it was held to have published the contents of the placard, even though it was not shown that he had written or been a party to the writing of the offending words. In Lawrence v Newberry[70] a letter which was published in a newspaper referred readers of the letter to a speech that contained defamatory content. In Hird v Wood, there was an immediacy about what happened. In Lawrence v Newberry a curious person would have to obtain a copy of the text to the speech. Master Kennedy-Grant observed:

There does not seem to me any difference in principle between what had to happen in Lawrence v Newberry for the publishee to receive the information intended to be conveyed and what had to happen in this case. A hundred years ago the reader in question would have picked up a back number of The Times or gone to the reading room of the local library; today he or she would log onto the Net and access the Website.

He referred to other cases where there was held to be “publication by reference” and concluded:

(a) the authorities referred to by counsel favour the view that, even where there is a lack of immediacy between the reference and the possibility of reading the material referred to, there can be publication; and

(b) the question of whether there has been adoption or approval or repetition of the material referred to is essentially a question of fact and, as such, fit for determination at trial.

Significantly there was no discussion of the nature of a link as a means of referencing potentially defamatory content and the thrust of the rationale was based upon publication by reference. The Judge was unconcerned about the nature of the reference or how it was provided. All that was need was for attention to be drawn to the referred defamatory content.

One point of distinction in this case was the fact that there had been a summary of the defamatory content in the body of the article which appeared in Computerworld magazine. The decision does not make it clear that the article appeared in an on-line version of the magazine. But the provision of the information provides a context to the provision of the link to a website where the actual details of the defamatory content may be found. It is not as thought the link existed in isolation, but provided a reference point for further information.

8.1          Crookes v Newton[71]

A similar situation arose in the case of Crookes v Newton.

It is settled law that to succeed in a defamation action, a plaintiff must first prove that defamatory words were published. Crookes v Newton holds that a hyperlink, by itself, is not publication of the content to which it refers. Publication will only occur if the hyperlink is presented in a way that repeats the defamatory content.

The facts in that case were these.

The appellant Crookes brought numerous defamation actions against various individuals and organizations alleging that he had been defamed in several articles on the internet. After those actions were commenced, the respondent Newton posted an article on his website which commented on the implications of the plaintiff’s defamation suits for operators of internet forums. The respondent’s article included hyperlinks to websites containing some of the allegedly defamatory articles that were the subject of the plaintiff’s actions. However, the respondent’s article did not reproduce or comment on the content in those articles.

The appellant discovered the respondent’s article and advised him to remove the hyperlinks. When the respondent refused, the appellant brought an action seeking damages for defamation on the basis that the hyperlinks constituted publication of the allegedly defamatory articles. There was evidence that the respondent’s article had been viewed 1,788 times, but no evidence as to how many times, if any, the hyperlinks in the article had been followed.

The Court[72] began by considering the development of the publication rule. The scope of the rule was wide indeed. In one case a person whose role was to manually operate a printing press was found liable for defamatory words contained in the publication, despite being unaware of its contents. The rigour of the publication rule was ameliorated by the “innocent dissemination” defence, allowing booksellers and librarians to avoid liability if they had no actual knowledge of alleged libel, were not aware of circumstances that would give cause to suspect a libel, and were not negligent in failing to discover the libel.

The majority then went on to consider the nature of a hypertext links as a means of publication and returned to first principles.“To prove the publication element of defamation, a plaintiff must establish that the defendant has, by any act, conveyed defamatory meaning to a single third party who has received it.  Traditionally, the form the defendant’s act takes and the manner in which it assists in causing the defamatory content to reach the third party are irrelevant.  Applying this traditional rule to hyperlinks, however, would have the effect of creating a presumption of liability for all hyperlinkers. This would seriously restrict the flow of information on the Internet and, as a result, freedom of expression.

The functionality of hyperlinks as a form of “publication” was then considered:

Hyperlinks are, in essence, references, which are fundamentally different from other acts of “publication”.  Hyperlinks and references both communicate that something exists, but do not, by themselves, communicate its content.  They both require some act on the part of a third party before he or she gains access to the content.  The fact that access to that content is far easier with hyperlinks than with footnotes does not change the reality that a hyperlink, by itself, is content-neutral.  Furthermore, inserting a hyperlink into a text gives the author no control over the content in the secondary article to which he or she has linked.

A hyperlink, by itself, should never be seen as “publication” of the content to which it refers.  When a person follows a hyperlink to a secondary source that contains defamatory words, the actual creator or poster of the defamatory words in the secondary material is the person who is publishing the libel. Only when a hyperlinker presents content from the hyperlinked material in a way that actually repeats the defamatory content, should that content be considered to be “published” by the hyperlinker.

Thus the Court is saying that hyperlinks are essentially content neutral references to material that hyperlinkers

a) have not created and

b) do not control.

Although a hyperlink communicates that information exists and may facilitate the transfer of information, it does not, by itself, communicate information. But the Court went on to consider a significantly wider issue – that of the internet itself.

The Internet cannot, in short, provide access to information without hyperlinks.  Limiting their usefulness by subjecting them to the traditional publication rule would have the effect of seriously restricting the flow of information and, as a result, freedom of expression.  The potential “chill” in how the Internet functions could be devastating, since primary article authors would unlikely want to risk liability for linking to another article over whose changeable content they have no control.  Given the core significance of the role of hyperlinking to the Internet, we risk impairing its whole functioning.  Strict application of the publication rule in these circumstances would be like trying to fit a square archaic peg into the hexagonal hole of modernity.[73]

However, this did not mean that there was a blanket defence available for those who hyperlinked to defamatory material. A hyperlink will constitute publication if it “presents content from the hyperlinked material in a way that actually repeats the defamatory content.” This might occur, for example, where a person inserts a hyperlink in text that repeats the defamatory content in the hyperlinked material. In these cases, the hyperlink would be more than a reference; it would be an expression of defamatory meaning.  However, this had not occurred in the present case, and the majority dismissed the appeal.

McLachlin C.J.C. and Fish J., whilst in substantial agreement with the majority, held that “a hyperlink should constitute publication if, read contextually, the text that includes the hyperlink constitutes adoption or endorsement of the specific content it links to.” A hyperlinker should be liable for linked defamatory content if the surrounding context communicates agreement with the linked content. In such cases, the hyperlink “ceases to be a mere reference and the content to which it refers becomes part of the published text itself.”

Deschamps J agreed with the outcome but differed considerably in approach. A blanket exclusion of all references from the scope of the publication rule erroneously treats all references alike. Deschamps J considered that the majority’s approach “disregards the fact that references vary greatly in how they make defamatory information available to readers and, consequently, in the harm they cause to reputations.” She proposed a solution that was nuanced and fact specific. A hyperlink would constitute publication if the plaintiff established two elements:

a) that the defendant “performed a deliberate act that made defamatory material readily available to a third party in a comprehensible form,” and

b) that “a third party received and understood the defamatory material.”

As to the first element, the burden would be upon the plaintiff to establish that the defendant played more than a passive instrumental role in making the information available. There would need to be reference to numerous factors bearing on the ease with which the referenced information could be accessed.

To establish the second element, plaintiffs would need to adduce direct evidence that a third party had received and understood the defamatory material, or convince the court to draw an inference to that effect based on the totality of the circumstances.

The difficulty with this approach, and with the contextual approach suggested by McLachlin CJ and Fish J is that it would erode the “bright line” rule proposed by the majority and which provides certainty in this area. Deschamps J’s approach is fact driven, whereas the contextual approach is dependent on the presence of indicia of “adoption or endorsement,” the scope of which is inherently uncertain. If the “bright line” rule provided by the majority were not present the proposals of the minority could have the effect of potentially inhibiting the use of hyperlinks to contentious material thus inhibiting the internet as a medium for free expression. This concern possibly encouraged the majority to establish their rule.

A further difficulty that follows from the minority approach is that it would shift the weight of litigation onto defendants in this difficult area. Although this is already the case with defamation as a “strict liability” tort  the effect of the minority approach would be to lower the threshold of proof for a plaintiff.  Internet users would be placed in the position of having to justify their conduct by reaching for the protection of a defence – and defamation proceedings are costly and beyond the resources of most. Although the wide availability of defences for hyperlinkers may, as Deschamps J. suggests, “dissuade overeager litigants from having a chilling effect on hyperlinking,” it would not deter plaintiffs who wish to stifle criticism by issuing gagging writs and intimidating defendants through costly litigation.

However, despite the welcome statement of the “bright line” rule by the majority, the case is not closed on hyperlinking. The Court expressly left open the question of whether the same principles apply to embedded or automatic hyperlinks. These hyperlinks automatically display referenced material with little or no prompting from the reader. They are distinguishable from the user-activated hyperlinks in Crookes. User activated links require users to click on the hyperlink in order to access content.

The Court declined to comment on the legal implications of automatic or embedded hyperlinks.  It seems that they would constitute publication, according to the majority’s because they make third party content appear as part of the website that the hyperlinker controls. The third party material that is “linked-to” becomes a part of the users site and thereby constitutes publication by the user.

8.2       Concluding Thoughts on Crookes v Newton

The cases suggest as a starting point that links can be content neutral, and that their use may not have any legal implications nor attract liability if the material linked-to may be contentious. If the link acts as a reference point for “further reading or discussion” its function is clearly neutral.

The situation becomes different if the link goes beyond as reference point and adopts material in the linked-to site, or uses the site as an endorsement for the views expressed. This accords with the view of the majority in Crookes v Newton and was the situation in the case of International Telephone Link Pty Ltd v IDG Communications Ltd where the nature of material linked-to was coloured by the commentary published by the defendant.

Although Kaplan J seemed to focus more on the “electronic civil diosobedience” motive of the defendants in Universal City Studios v Reimerdes and Corley there can be little doubt that the use of links was anything but “content neutral” and was coloured by the commentary and actions of the defendants. It is for this reason that the differentiation between the defendants and an informational organ such as the LA Times becomes clear. In such a case the link has a referencing or “for further information” quality rather than the encouragement of an unlawful act.

Thus, although the “contextual” approach of McLachlin CJ and Fish J was that of a minority, nevertheless it cannot be denied that there is a contextual element that pervades the use of links. Although the decision of the majority provides welcome clarification, it is not absolute. The technologists may see links as mere code that enables internet navigation, and thereby is content neutral. The law sees it in a more nuanced way.

9.            The European View – Svensson v Retreiver Sverige AB

Linking, in the context of copyright infringement, has come under scrutiny in Europe. Under EU copyright laws, authors have the exclusive right to control the “communication to the public”  and “the making available to the public” of their works, whilst performers, producers and others also have exclusive right to control the “making available to the public” of their works. It is generally an infringement of those rights if others communicate or make available content without permission from rights holders to do so. The general approach is that the rights around the ‘communication to the public’ are said to “cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting” and “should not cover any other acts”.

In the case of Svensson v Retreiver Sverige AB[74] The Court of Justice of the European Union (CJEU) has been asked to provide a ruling on how that EU law applies in the case of hyperlinks. The issue is whether  anyone, other than the holder of copyright in a certain work ,who supplies a clickable link to the work on his website, communicates the work to the public. The Swedish court has also asked whether the answer to that question changes if access to the content is restricted in some way or by the way the content is displayed after a link is clicked on.

The case  began when a Swedish journalist, Svensson, wrote an article which was published by a Swedish newspaper in print and on the paper’s website. An e-commerce company, Retriever Sverige AB, ran a subscription service which gave its customers access to newspaper articles.

Svensson sued Retriever Sverige AB for “equitable remuneration”, alleging that Retriever had made his article available to Retriever subscribers through the search and alert functions on its website. He stated that this came within the copyright-relevant acts of either a communication to the public or the public performance of a work. Whatever the situation, Retriever needed his consent and he had not granted it.

Retriever denied any liability. One of its key arguments was that the linking mechanisms did not constitute copyright-relevant acts, and there was therefore no infringement of copyright law. The fact that a Retriever customer had to log in to Retriever’s website and then fill in a search term was also relevant.

The European Copyright Society[75] in a submission to the Court has argued that the act of hyperlinking to copyright material without permission ought not to constitute outright infringement. In an 18 page submission[76] the Society argues[77]:

“Clearly, hyperlinking involves some sort of act – an intervention. But it is not, for that reason alone, an act of communication. This is because there is no transmission. The act of communication rather is to be understood as equivalent to electronic ‘transmission’ of the work, or placing the work into an electronic network or system from which it can be accessed. This is because hyperlinks do not transmit a work, (to which they link) they merely provide the viewer with information as to the location of a page that the user can choose to access or not. There is thus no communication of the work. As Abella J explained, speaking for the majority of the Supreme Court of Canada (in a case concerning hyperlinks and defamation):

‘Communicating something is very different from merely communicating that something exists or where it exists. The former involves dissemination of the content, and suggests control over both the content and whether the content will reach an audience at all, while the latter does not….

Hyperlinks … share the same relationship with the content to which they refer as do references. Both communicate that something exists, but do not, by themselves, communicate its content. And they both require some act on the part of a third party before he or she gains access to the content. The fact that access to that content is far easier with hyperlinks than with footnotes does not change the reality that a hyperlink, by itself, is content-neutral — it expresses no opinion, nor does it have any control over, the content to which it refers.’

The Society provided a very strong and technologically correct statement on the function of a link within the context of transmission and communication of a work.

“(a) Hyperlinks are not communications because establishing a hyperlink does not amount to “transmission” of  a work, and such transmission is a prerequisite for “communication”

(b) Even if transmission is not necessary for there to be a “communication”, the rights of the copyright owner apply only to communication to the public “of the work”, and whatever a hyperlink provides, it is not “of a work””[78]

In addition, the Society argued that  the CJEU should generally uphold that hyperlinking does not constitute a communication to the public of copyrighted content regardless of the ‘framing’ given to the content when it appears after a hyperlink has been clicked on.

“In so far as there might be technical differences in some cases where the work is made available from the server of a person providing a hyperlink, it is our view that, even were there an act of communication or making available, such a communication or making available is not “to the public” because it is not to a “new” public – it is a public which already had the possibility of access to the material from the web. Just as an improved search-engine that improves the ability of users to locate material for which they are searching should not be required to obtain permission as a matter of copyright law, so providing links or access to material already publicly available should not be regarded as an act that requires any authorisation.”[79]

Reference was also made to domestic court cases from Germany and Norway which are consistent with the views advanced by the European Copyright Society.

In Paperboy,[80] the German Bundesgerichtshof found that the “paperboy search engine” which searched newspaper websites and provided search results including hyperlinks, did not thereby infringe. The Court considered whether hyperlinking was “communication” under German law and under Article 3 of the Information Society Directive, 2001/29, concluding that there was no infringement. It observed:

[42] A person who sets a hyperlink to a website with a work protected under copyright law which has been made available to the public by the copyright owner, does not commit an act of exploitation under copyright law by doing so but only refers to the work in a manner which facilitates the access already provided …. He neither keeps the protected work on demand, nor does he transmit it himself following the demand by third parties. Not he, but the person who has put the work on the internet, decides whether the work remains available to the public. If the web page containing the protected work is deleted after the setting of the hyperlink, the hyperlink misses. Access to the work is only made possible through the hyperlink and therefore the work literally is made available to a user, who does not already know the URL as the precise name of the source of the webpage on the internet. This is however no different to a reference to a print or to a website in the footnote of a publication. 

[43] The Information Society Directive, …., has not changed the assessment of hyperlinks, as are in question here, under copyright law … According to Art.3(1) of the Information Society Directive Member States are obliged to provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, including the making available to the public of their works in such a way that members of the public may access them from a place and a time individually chosen by them. This provision refers to the use of works in their communication to the public. The setting of hyperlinks is not a communication in this sense; it enables neither the (further) keeping available of the work nor the on-demand transmission of the work to the user.

In Napster.no[81], the Supreme Court of Norway held that the posting on a website (in this case, http://www.napster.no) of hyperlinks that led to unlawfully uploaded MP3 files did not necessarily constitute an act of making the files available to the public. It stated:

“[44] There has been no dispute that those uploading the music files carried out illegal copying and made the works publicly available. If the linking is regarded as making works publicly available, this will concern linking to both lawfully and unlawfully disclosed material. The conception of what constitutes making works publicly available must be the same in both cases…

[45] The appellants claim that the linking involved an independent and immediate access to the music. A [the respondent] for his part has  pointed out that the links only contained an address to a webpage and  that, by clicking on the link, the music file would be stored temporarily on the user’s own computer. Not until such storage took place would the user be able to play the music file or download it for later use.

[46] In my opinion, it is not decisive whether [direct/deep links] or [superficial links – links to the main page of the website] are involved, nor whether the user technically is “located” on his/her own computer, on napster.no, or has “moved” to the website to which the link leads. What must be decisive is how the technique functions – whether and how access is given.

[47] It cannot be doubted that simply making a website address known by rendering it on the internet is not making a work publicly available. This must be the case independent of whether the address concerns lawfully or unlawfully posted material…”

The European Copyright Society also referred to the case of Perfect 10 v Google Inc.,[82] a decision of the 9th Circuit Court of Appeals.

10.          Perfect 10 v Google – Moving Away from Reimerdes & Corley

The factual background was as follows:

Perfect 10 marketed and sold copyrighted images of nude models. Among other enterprises, it operated a subscription website on the Internet. Subscribers paid a monthly fee to view Perfect 10 images in a “members’ area” of the site. Subscribers had to use a password to log into the members’ area. Google did not include these password-protected images from the members’ area in Google’s index or database. Perfect 10 also licensed Fonestarz Media Limited to sell and distribute Perfect 10’s reduced-size copyrighted images for download and use on cell phones.

Some website publishers republished Perfect 10’s images on the Internet without authorization. Once this occurred, Google’s search engine automatically indexed the webpages containing these images and provided thumbnail versions of images in response to user inquiries. When a user clicked on the thumbnail image returned by Google’s search engine, the user’s browser accessed the third-party webpage and in-line links to the full-sized infringing image stored on the website publisher’s computer. This image appeared, in its original context, on the lower portion of the window on the user’s computer screen framed by information from Google’s web-page.

Perfect 10 sued Google claiming that the latter’s “Google Image search” infringed Perfect 10’s copyrighted photographs of nude models, when it provided users of the search engine with thumbnail versions of Perfect 10’s images, accompanied by hyperlinks to the website publisher’s page.

The Court commenced by examining the operation of Google’s search engine and the way in which searches were returned and the operation of the links that were provided to such returns. It observed that there was no dispute that Google’s computers stored thumbnail versions of Perfect 10’s copyrighted images and communicated copies of the thumbnails to Google users. However, it also noted that Google did not display a full sized infringing image when Google framed in-line linked images that appear on a user’s computer screen.

“Because Google’s computers do not store the photographic images, Google does not have a copy of the images for purposes of the Copyright Act. In other words, Google does not have any “material objects … in which a work is fixed … and from which the work can be perceived, reproduced, or otherwise communicated” and thus cannot communicate a copy.”[83]

The Court went on to look at the way that the technology operated:

“Instead of communicating a copy of the image, Google provides HTML instructions that direct a user’s browser to a website publisher’s computer that stores the full-size photographic image. Providing these HTML instructions is not equivalent to showing a copy. First, the HTML instructions are lines of text, not a photographic image. Second, HTML instructions do not themselves cause in-fringing images to appear on the user’s computer screen. The HTML merely gives the address of the image to the user’s browser. The browser then interacts with the computer that stores the infringing image. It is this interaction that causes an infringing image to appear on the user’s computer screen. Google may facilitate the user’s access to infringing images. However, such assistance raises only contributory liability issues, see Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 929-30, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005), Napster, 239 F.3d at 1019, and does not constitute direct infringement of the copyright owner’s display rights.”

It was for that reason that the Court concluded that

“Google’s search engine communicates HTML instructions that tell a user’s browser where to find full-size images on a website publisher’s computer, but Google does not itself distribute copies of the infringing photographs. It is the website publisher’s computer that distributes copies of the images by transmitting the photographic image electronically to the user’s computer.”[84]

This case is useful in that it considers the nature of the technology in arriving at its conclusion. However, unlike Crookes v Newton which attempted to lay down some bright line rules about links and their general function within the legal framework, the decision in Perfect 10 is fact specific. Whilst, within the factual matrix of the case, Google was not liable for direct infringement, there was still the problem of assisting third-party websites in distributing their infringing copies of photographs to a worldwide market and assisting worldwide audience of users to access infringing materials, for purpose of Perfect 10’s contributory infringement claim.

In addition, the decision seems to be a step away from Judge Kaplan’s approach in Reimerdes & Corley which relied on the “functional equivalence” approach. The Court in Perfect 10 effectively adopted a content neutrality approach to the issue of direct infringement, focussing especially upon the nature of the code and the HTML instructions which they held were not equivalent to showing a copy. Applying the approach in Reimerdes & Corley that would amount to a “distinction without a difference” but the more recent cases seem to demonstrate a shift away from such a rationale to a more nuanced understanding of links and their use as a coded reference point.[85]

Return to Svensson

Which brings us back to Svensson and the recent decision of the Court of Justice of the European Union (CJEU). This decision could be viewed as a compromise. It contains some relief to those who link to content, but at the some time hedges that around with exceptions. Regrettably the decisions seems to take little account of the technological underpinning of hyperlinking, nor that fact that links are in essence neutral. AT the same time it must be remembered that the decision relates to EU copyright law and therefore cannot be said to contain rules of universal application.

In summary the Court held as follows:

      1. A clickable direct link to a copyright work made freely available on the internet with the authority of the copyright holder does not infringe.
      2. It makes no difference to that if a user clicking on the link is given the impression that the work is on the linking site.
      3. However, it seems that a clickable link will (unless saved by any applicable copyright exceptions) infringe if the copyright holder has not itself authorised the work to be made freely available on the internet.
      4. If the work is initially made available on the internet with restrictions so that only the site’s subscribers can access it, then a link that circumvents those restrictions will infringe (again subject to any applicable exceptions and further discussion below).
      5. The same is true where the work is no longer available on the site on which it was initially communicated, or where it was initially freely available and subsequently restricted, while being accessible on another site without the copyright holder’s authorisation.

Within the context of copyright law, if material is made freely available on the Internet by the copyright holder, there are no infringement implications. Linking to the content, assuming that a link amounts to an act of communication, does not constitute infringement. The Court said: “the provision on a website of clickable links to works freely available on another website does not constitute an act of communication to the public, as referred to in that provision.”

Graham Smith on his Cyberleagle blog makes the following comment:

“Taken at its face, that could suggest that a link to any freely available work does not infringe, regardless of whether the copyright holder initially authorised the work to be made freely available on the internet. That would broadly legitimise most links. But if that is right it is difficult to understand the numerous references in the judgment to whether the copyright holders authorised the initial communication to the public on the internet, and the potential audience contemplated when they did so.  It seems likely that the operative part should instead be understood to mean:
“…the provision on a website of clickable links to works freely available on another website, in circumstances where the copyright holder has authorised such works to be made freely available at [that]/ [an] internet location, does not constitute an ‘act of communication to the public’ … .”
The alternatives ‘that’/‘an’ reflect the possible uncertainty about the effect of the judgment on links to unauthorised copies where the copyright holder has authorised the work to be freely available at some other location on the internet.”

The situation begins to get complex if the copyright holder has not authorised the placing of the material on the Internet.. Once again there is little contentious in this proposition. The placing of material on the Internet without the authorisation of the copyright holder (and making it available) involves acts of infringement unless one can fall within exceptions or claim a permitted act. The issue seems to become a little more complex, but in reality it is not, if the content is place on the Internet with the approval of the copyright holder but is subject to restrictions which are subsequently circumvented. Clealry, unless one can fall within exceptions or establish a permitted use, there ar infringement implications in providing such material.

There are a couple of observations that must be made about the CJEU decision. The first is that it is not a decision about the implications of hypertext links. There is no discussion about the technology or implications of hypertext links. In that respect the decision is a little disappointing. Secondly, what the decision IS about is the nature communication within the context of copyright law. It is, therefore,  a decision about copyright.

A factor which complicates the issue of communication is whether or not there has been communication to a “new public”. Laurence Eastham at the Society for Computers and the Law makes the following observations:

“The Court points out, however, that the communication must be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders at the time the initial communication was authorised. According to the Court, there is no such ‘new public’ in the case of the site operated by Retriever Sverige. As the works offered on the site of theGöteborgs-Posten were freely accessible, the users of Retriever Sverige’s site must be deemed to be part of the public already taken into account by the journalists at the time the publication of the articles on the Göteborgs-Posten was authorised. That finding is not called into question by the fact that the internet users who click on the link have the impression that the work is appearing on Retriever Sverige’s site, whereas in fact it comes from the Göteborgs-Posten.

The Court concludes from this that the owner of a web site, such as that of Retriever Sverige, may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site.

The position would be different, however, in a situation where the hyperlink permits users of the site on which that link appears to circumvent restrictions put in place by the site on which the protected work appears in order to restrict public access to that work to the latter site’s subscribers only, since in that situation, the users would not have been taken into account as potential public by the copyright holders when they authorised the initial communication.”

So is Svensson a helpful decision. The general reaction is positive. Iain Connor makes the following assessment:

 “On the whole, this is a good decision for rights holders and consumers alike. It makes clear that you can provide links to content freely available on the web but that you need permission from the copyright holder in all other circumstances and so it puts rights holders in control of their business model.”

“The slight wrinkle is that where content is freely available, the decision appears to allow it to be ‘framed’ on a third party website,” he said. “However, it should be possible to manage the framing issue by robust website terms and conditions and other legal means such as the author’s right not to have his work falsely attributed to another.”

By focussing on communication, the Court avoided the thorny issue of the function and essential meaning of hypertext links. This was probably by design. By restricting their decision strictly to the ambit of the questions posed by the national court, the CJEU adopted a narrow focus the the issue, restricting the decision to the questions at hand and further restricting the decision to the strict framework of copyright law. The issues have been addressed strictly within that context and the content neutrality (or partiality) of hypertext links need not, therefore, have been considered.

11.             Linking — issues arising

The cases that have been decided on the issue of linking do not establish with any degree of clarity that the provision of a link in all cases will automatically result in a copyright infringement. The mere provision of a link does not mean that a copy is made. Rather like a signpost, it directs a user to a particular site from which information may be obtained. The link itself does not involve copying material from another website.

Thus the mere provision of a link should not incur any direct liability for copyright infringement of website material. The work that is at the destination of the link is neither displayed nor communicated. The user is merely told where the work may be found.

When the site is accessed and temporary copies have been made into RAM, the matter is one between the copyright owner and the browser. Claims for secondary infringement against intermediaries will be futile.[86] The mere provision of a link without more does not implicate the link provider. It seems to have been the case in Universal City Studios v Reimerdes[87] and RIAA v Napster[88] to pursue the provider of the links or the operator of the Napster server using US contributory infringement theory as an expedient rather than pursue the millions of unidentified direct infringers. However, in the absence of any issues of contributory infringement, encouragement or interference with property rights that are inherent in framing and deep linking, the link provider commits no infringement.

Browsing webpages, if it is to be a “functional equivalent” of anything, may be the equivalent of reading a book in an environment akin to a public library. It thus falls outside the acts restricted by copyright, and there is no basis for secondary liability claims.

It may also be argued that anyone who places material on the internet without effective restrictions grants an implied licence to an internet user to make copies of the material and to any other website operator who links to it. The vast scope of the internet makes contractual solutions — agreements between owners of linking and linked-to sites — almost impossible.[89]

In this context, one must question whether the issue of implied licences is appropriate for issues involving copyright.[90]

First, it is unclear that an implied licence could apply in the case of a deep link that circumvents the main page and the advertising placed on it. It could be argued that the owner of a website grants a licence to browse the site, but in the way the creator of the website intended and designed it. However, one commentator suggested that the argument of an implied licence is still tenable even in the event of linking to deep pages in a website.[91]

Secondly, the use of web linking agreements that explicitly state that permission is required can avoid the argument for an implied licence. Such web agreements are becoming more common, and the implied licence then cannot work against the clearly expressed will of the copyright owner, as agreed with the author of the linking site.

However, even the defenders of these kinds of agreements recognise that the suggestion of a contract being necessary to link to a website seems contradictory to the ethos of the internet, and suggest that, for normal links, these kinds of agreements are unnecessary. One can link without permission and without having to give notice to the copyright owner.

Web linking agreements, according to this view, should still be useful for embedded links and especially for frames, and as a precautionary measure taken by the operator of a commercial website that wants to be sure that it will not face liability for the links that it is providing.

In addition, some owners have attempted to negate implied licence by inserting “Terms of Use” that explicitly deny the existence of implied licence to link, but these disclaimers are often inconspicuous, and may be considered unenforceable.

Thirdly, the implied licence doctrine is an aspect of contract law, essentially an estoppel doctrine, and it does not fit well with the traditional copyright law, because such a factual contract would not seem to arise between strangers who do not have a previous relation, legal or de facto.

Finally, in the case of copyrighted materials posted on webpages without the consent or the knowledge of the owner, it is clear that this argument cannot work because the implied licence is based on the premise that the owner knew that his or her material would be available on the internet.

In terms of copyright law, fair dealing is a far more satisfactory solution. It is clear that some form of statutory amendment would be required to the New Zealand Copyright Act 1994 because to attempt to apply the fair dealing provisions of that legislation[92] to webpages may strain the language of the statute.

Under the fair use defence in the US there is no infringement if the use is fair, even if the use violates one of the copyright owner’s exclusive rights. Four factors are considered in determining whether a use is fair:

1.   the purpose and character of the use, including whether such use is for a commercial nature or is for non-profit educational purposes;

2.   the nature of the copyrighted work;

3.   the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4.   the effect of the use upon the potential market for or value of the copyrighted work.[93]

The purposes and character of linking are closely related to the purpose of the internet, which is to provide information freely to the public in an accessible manner. Where the nature of the linked page is commercial or non-fictional and where the linked page is a small and insubstantial part of the plaintiff’s work, in the absence of a commercial or profit-making use, browsing should qualify as fair use. As far as the fourth requirement is concerned, linking could be said to be an advantage.

In the context of the world wide web the link expands the potential market of the linked site, because more people are able to easily find and access the site. Even if accessing a website through a link does make a copy of the whole work, this factor does not have to be decisive in the majority of cases and fair use can be successfully invoked.

So far the issue of simple linking has been considered. It is clear that the cases outlined recognise that different considerations apply to deep linking and framing that involves the diversion past a normal entry point to a website (along with any notices, terms or conditions of use, advertising and the like) to material of value to the user, or, in the case of framing, the apparent appropriation of another user’s material and inclusion as part of another, unrelated site.

The cases on deep linking demonstrate that a deep link potentially prejudices the linked-to site by circumventing advertising material and possibly prejudicing the linked-to site’s income, especially if advertising revenue is based on the number of times the page containing the advertising is accessed. Although the objective in providing a deep link may be to provide relevant information (which is the major purpose of the internet) nevertheless there is an expectation on the part of a site owner that access to the site will be reached via a home or starting page.

However, given the nature of the internet as an information-disseminating medium, and the essentially “public nature” of information available on the internet, and the fact that it is potentially available for world wide distribution and access, and given that in essence a link is no more and no less than a signpost, it is suggested that it need not follow as a matter of course that a deep link should be seen as a copyright infringement. Rather, greater value should be placed on the availability of information than on the fact that access to that information has been other than through a home page. As additional factors, the person or organisation behind the linked-to site:

•    knows the nature of the web and that the link is a means of access and navigation;

•    is taking advantage of the tremendous reach that the web offers; and

•    has available certain technological means of restricting access to parts of the site.[94]

Given the third factor, it would be a simple matter to establish copyright infringement if a person linking to the site used some sort of “hack” or “software solution” to gain access to the deep-linked material by circumventing the means employed to restrict access.

Another option is to place a higher burden of proof on a person alleging infringement by deep linking in terms either of standard of proof or of the criteria to be established to prove infringement. Among such criteria could be actual (as opposed to potential) damage or provable loss of revenue or patronage as an ingredient of the infringement rather than the quasi-strict liability copyright law approach that deems unauthorised copying to be infringement.

Framing creates another situation in terms of intellectual property. Framing is a function of software, having been introduced as a feature of Netscape 2. It is now widespread within browser software. Many sites require that for a user to access them, a frames-capable browser should be used. Unlike linking, however, framing is not a fundamental part of the architecture of the world wide web. In addition, framing is far closer to traditional print-based copyright theory than linking in that framing may give the impression that the web material framed in the window of site A belongs to and is a part of site A rather than in fact belonging to site B. In effect, framing without attribution is a clear appropriation of site B’s material and can be protected by ordinary copyright principles. To avoid such difficulties, many websites open a linked-to site in a completely new window, thus identifying the linked-to material by name and by URL.

12.             The Threat to the Web

The challenging of links based on copyright theory raises a greater issue as far as the internet is concerned. This goes to the heart of the function of the world wide web, the architecture and environment of the internet and the way in which, if at all, such fundamental aspects of the new technology are going to be regulated or governed.

Linking is what gives the web its awesome power. It is an attraction for ordinary people who wish to obtain information quickly and easily without having to understand the mysteries of code or remember complex address parameters or details. Linking is an indispensable tool that allows internet users to benefit from information that is located on the web. To establish that a mere link or mere browsing infringes copyright would be the equivalent of killing the world wide web, which represents the internet to the majority of computer users.

Linking seems to have attracted the attention of copyright specialists because it provides a means by which potential infringements may take place by directing users to copyrighted material. Thus, although the link is merely what could be classified as an intermediate step in the process of potential infringement, it seems to have assumed a significance that goes beyond what it really is. Further, it gives copyright owners a convenient target — the owner of the linking site — rather than the ultimate consumer, and even then there may be some doubt as to whether there has in fact been an infringement by the mere accessing of a webpage without more.

Linking holds no mystery. A link is merely a line of code that allows a step to be taken. Tim Berners-Lee, who developed the world wide web at the European Organisation for Nuclear Research (CERN),[95] puts the matter as “the intention in the design of the web was that normal links should simply be references, with no implied meaning”.[96]

The contents of the linked document may contain meaning and often do but the link itself does not. A recommendation to go to a particular site followed by a link, or even the embedding of a hypertext reference (HREF) within the recommendation does not add any extra meaning to the link.

A useful analogy for a link is to treat it as a card index system in the library that directs a researcher or library user to a particular location within the shelves of the library. The library card carries no more information than is necessary to enable the user to satisfy him or her that the book is the one that is sought and to locate it.[97] A hypertext link does not even go this far. It only contains the information about the location of the information on the destination site and makes that site available to the computer user.

However, it is, as has already been stated, an essential part of the architecture of the internet. This then raises a question that relates to the way in which the law applies to the internet, and touches on an even deeper issue that is the purpose of law itself.

The purpose of the law is to regulate the behaviour of individuals within society. One of the areas that the law has been unable to regulate is the environment within which individuals operate. That environment is governed by what we may refer to as the “laws of nature” or the “laws of science”. It is, if you like, the architecture within which society operates.

Similarly with the internet — inherent within what has been called cyberspace is a fundamental architecture or system within which we may operate and without which the internet or parts of it cannot function. An example may be found in the TCP\IP protocol that allows different computers to communicate with one another. Another is the system of IP numbers that are assigned to machines on the internet. Although we may set rules for the assignation of IP numbers[98] the internet simply will not function without these two essential aspects of the internet environment or its architecture. This environment or architecture is not a part of nature such as is the real world environment. It is created by human beings. However, that architecture sets the metes and bounds of the internet or cyberspace and receives its expression in code.

The world wide web built on existing internet protocols and added another dimension to the internet. However, what the world wide web actually is and its limitations are governed by the code that makes it operate. Part of that system of operations is hypertext linking, activated in code by the term HREF. Linking cannot take place without the HREF expression. Thus linking is an essential part of the architecture and the environment of the world wide web. To attempt to limit or regulate its use is rather like a Judge trying to slow the growth of a tree by judicial decree.

Lest it is suggested that it is not the architecture that is being regulated but the way in which people behave — that is, utilise the architecture — we must return to first principles and see what the HREF expression does. Unlike a mechanical creation, which may be used for good or ill, HREF allows only one thing and that is a hypertext link — a means of locating a page and bringing it into a user’s computer. To attempt to legislate or regulate what is an essential part of the web does violence to the environment within which the internet user may expect to operate. Indeed, the most extreme view might be that for the purposes of ensuring that internet users have certainty in terms of the lawfulness of their activities within the environment, the law should not concern itself with issues of the use of basic and necessary parts of the internet by using copyright theory to limit the use of these fundamental operators. The real issue should be with the use that the ultimate user may make of copyrighted material. If that causes copyright owners a problem in terms of detection and enforcement so be it. Back-door methods should not be used which do violence to the internet environment and simultaneously to legal principle.

In a sense the code or the architecture of the internet limits the way in which the law can be applied to regulate or govern it. In a sense the code and the architecture that it provides imposes its own regulatory metes and bounds not only in terms of what may or may not be done, but in terms of the boundaries of any regulatory or governance system that may be imposed upon it by the law, either as pronounced by the Courts or by legislative bodies.

If, however, linking activity is going to be the subject of regulation under, say, principles of copyright, the effect upon the internet will be dramatic.[99]

First, the internet will cease to be the free information environment that it was originally conceived to be. Freedom of navigation for information on the internet will become restricted in the same way that “real space” is. The freedom that users enjoy to link to content on similar subjects whereby a collection of links on, say, copyright law are all brought together, may be compromised or indeed become impossible. Not only would the free information environment be restricted but the utility of the internet as a source of information would be hampered.

Secondly, the internet could become divided into a number of information “zones” of open and closed areas. Distinctions between sources of information may be made on a number of criteria, among them pricing considerations, the willingness of a user to provide information about himself or herself, the willingness of a user to accept additional information on products or services, whether the site is a commercial site or a non-commercial one and so on. In some respects this is already taking place. For example, when the New York Times Cyberlaw Journal existed online it was often linked to from legal sites. However, a visitor to that site for the first time was unable to access it until he or she registered, and that registration was specific to the particular machine. Thus, if the user wished to access the Cyberlaw Journal from another machine, the registration information (user name and password) had to be re-entered. The New York Times Cyberlaw Journal was free of charge, but the mechanism prevented casual access to the site by deep linking.

Other technological solutions may be available such as requiring a password to gain access, or building dynamic webpages that only appear when the user uses a certain program. There may be feasibility issues for commercial sites who would try to obtain as big a reach as possible that would mitigate this solution, although it may be satisfactory for non-commercial sites. The irony is that the complaints about deep linking arise mainly from commercial sites, whereas non-commercial sites are generally more attuned to the “information wants to be free” ethic that underpinned the early internet.

It is possible to program webpages to reject linking from unwelcome sources or users. In a sense this is a logical and acceptable solution, for it puts control of access to the site in the hands of the site owner. This enables the owner to obtain the exposure that is required while at the same time preventing unwelcome links, such as in the case of Havana House Cigars in New Zealand. Framing may also be prevented in that the frame may be “dissolved” thus enabling the user to see the entire page from its source and not as a part of another site.

There is no doubt that there will be further litigation about links and in the near future there will be some considered and possibly definitive solutions. However, those solutions will further obscure this complex area. Decisions emanating from the US will have to resolve apparent conflicts between the Digital Millennium Copyright Act and the Constitution of the US, in particular the First Amendment. With legislation in Australia in force another outcome may well be presented, for Australia has no constitutional equivalent to the US Constitution or its Amendments.[100]

Thus it is likely that there will be a jigsaw of rules and regulations limited by territorial jurisdictions and applicable in some areas and not in others. The casualties in the resolution of these conflicts will be the law, which, when territorially based will be unable to provide consistency and certainty for an environment that does not know borders, and tragically the internet itself.

13.             Conclusion

There are those such as Goldsmith[101] who call for internet regulation and a system of governance. There are others, such as John Perry Barlow,[102] who see the internet as the last frontier for freedom, and who quail at any form of intrusion by the law.

It is necessary to remember that the internet is primarily a means of conveying information. It is not without reason that many emphasise the internet as an important component of the so-called “knowledge economy”. Issues of technology convergence and the use of the internet for business and commerce mean that necessarily the law has a place in the digital environment. In many cases existing legal rules govern these relationships. In some cases, new solutions will have to be devised. Information that is available in a book that can be borrowed from a public library should not be proscribed merely because that same information is available online and can be obtained by clicking on a hypertext link. By the same token, information available on the internet should not be proscribed merely because it is there, especially if it is legitimately available from another source.

What will require care is to ensure that the digital environment receives the same treatment as the “real world” and that restrictions and inhibitors on activities and relationships that are not present in the real world seem to become available in or intrude on the online environment.


[62] [2013] EWCA Civ 68

[63] [2012] VSC 533

[64] [2012] VSC 88

[65] [2009] EWHC 1765

[66] [2011] SCC 47

[67] H C Auckland, 19 January 1998, CP 344/97 Master Kennedy-Grant

[68] The domain name of which was the subject of litigation – see NZ Post v Leng [1999] 3 NZLR 219

[69] (1894) 38 SJ 234 (CA).

[70] (1891) 64 LT 797

[71] [2011] SCC 47

[72] By a majority decision comprising Binnie, LeBel, Abella, Charron, Rothstein and Cromwell JJ.

[73] At para [36]

[74] Reference for a preliminary ruling from the Svea hovrätt (Sweden) lodged on 18 October 2012 – Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retreiver Sverige AB http://curia.europa.eu/juris/document/document.jsf?text=&docid=130286&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=1258343 (last accessed 19 March 2013).

[75] The European Copyright Society is a year-old group of academics and scholars that it has said seek to “promote their views of the overall public interest”. The group’s opinion on the issues before the CJEU was formed by 17 academics from across Europe, including Professor Lionel Bently from Cambridge, Professor Graeme B Dinwoodie of Oxford University and Professor Martin Kretschmer, the director of CREATe at the University of Glasgow.

[76] Opinion on the reference to the CJEU in Case C-466/12 Svensson – 15 February 2013 http://www.ivir.nl/news/European_Copyright_Society_Opinion_on_Svensson.pdf (last accessed 19 March 2013).

[77] Ibid. paras [35 – 36].

[78] Ibid. para [6 (a) – (b)]. The argument is developed later in the submission by a careful analysis of CJEU cases on the notion of communication and the significance of transmission – see paras [23 – 26]

[79] Ibid. para [55].

[80] Case I ZR 259/00 (17 July 2003) [2005] ECDR (7) 67, 77,

[81] (2006) IIC 120 (27 January 2005)

[82] 487 F. 3d 701 (2007)

[83] Ibid. p. 717

[84] Ibid. p. 718

[85] Having said that it must be noted that Perfect 10  was a decision of the 9th Circuit whereas Reimerdes & Corley was a decision of the 2nd Circuit. The matter will only be definitively resolved by accord between the decisions of the Circuits or a decision of the Supreme Court of the United States.

[86]      In Europe this exclusion was embodied in art 5.1 of the Proposal for a Directive on Copyright and Related Rights in the Information Society, approved 10 December 1997.

[87]      111 F Supp 2d 294 (SDNY 2000), 273 F 3d 429 (2d Cir NY 2001).

[88]      114 F2d 896, 239 F3d 1004.

[89]      P Jakab “Framing Technology and Link Liability” Internet Law Symposium (1998) Pace Law Review 23–25; On contractual solutions see, “Weblinking agreements, Contracting Strategies and Model Provisions” (1997) Section of Business Law American Bar Association; M Luria “Controlling Web Advertising: Spamming, Linking, Framing and Privacy” (1997) 14/1 The Computer Lawyer, 10–22.

[90]      Although it is far more apposite to patent law. Indeed, the defence of implied licence in the US is an affirmative one and it cannot automatically be asserted that it is available. In order to determine whether such an implied non-exclusive licence exists, every objective fact concerning the transaction should be examined to determine whether it supports such a finding. Several objective inquiries can be made in this regard, including an assessment of whether the delivery of the copyrighted material was without warning that its further use would constitute copyright infringement. See Edward A Cavazos and Coe F Miles, “Copyright on the WWW: Linking and Liability” 4 Richmond Jnl of Law and Technology (1997) para 40 and following http://law.richmond.edu/jolt/v4i2/index.html (last accessed 21 March 2013).

[91]      Maureen O’Rourke, “Fencing Cyberspace: Drawing Borders in a Virtual World”, 82 Minn L Rev 609, 660.

[92]      Part 3, ss 40–93.

[93]      USCS 107.

[94]      Special log-in, registration, provision of information for the payment of a fee or a technological way of ensuring that access to the “deep-linked” page is only possible by way of the entry page.

[95]      http://public.web.cern.ch/Public/Welcome.html (last accessed 21 March 2013).

[96]      Tim Berners-Lee, “Links and Law” http://www.w3.org./DesignIssues/LinkLaw (last accessed 21 March 2013).

[97]      The analogy of a referencing system was used in Crookes v Newton [2011] SCC 47

[98]      One of the functions of ICANN.

[99]      The Copyright Amendment (Digital Agenda) Act 2000 (Australia) which substantially amends the Copyright Act 1968 provides that copyrighted subject-matter is not infringed by making a temporary reproduction or copy of the subject-matter as part of the technical process of making or receiving a communication, provided that the making of the communication is not an infringement of copyright (ss 43A and 111A). Although this substantially clarifies the position as far as incidental copying associated with online activity is concerned, the legislation remained silent on the issue of hyperlinks. There is no relevant Australian case law on the issue although an early draft of the Digital Agenda Bill suggested that one of the objects of the legislation was to relieve uncertainty as to whether practices such as internet browsing and hyperlinks violated the Copyright Act. However, the matter has been left to the Courts. See Maree Sainsbury, “The Copyright Act in the Digital Age” 11 Jnl Law and Information Science 182.

[100]     For an example of conflicting outcomes between Australia and England see Sony Computer Entertainment v Owen [2002] WL 346974 (Ch D), [2002] EWHC 45 and Sony Computer Entertainment v Stevens (2002) FCA 906 (26 July 2002).

[101]     “Against Cyberanarchy” 65 U Chicago LR 1205.

[102]     “A Declaration of Independence of Cyberspace”, 8 February 1996, https://projects.eff.org/~barlow/Declaration-Final.html  (last accessed 21 March 2013).

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Linking and the Law – Part 2 – A Diversion to TPMs

Linking and the Law

PART 2

7    The New Zealand position — Technological Protection Measures, Anti-circumvention and communication

7.1             Introduction

The Digital Millennium Copyright Act came into force in the US in October 1998 as a response to the 1996 WIPO Copyright Treaty. Updated copyright legislation, including provisions relating to anti-circumvention of copy protection were enacted in the UK in 1988[54] and in New Zealand in 1994.[55]  In this section I shall consider the provisions of the Copyright Act that deal with Technological Protection Measures or TPMs.[56] It will become clear as the discussion progresses that the New Zealand legislation as amended by the Copyright (New Technologies)Amendment Act 2008 addresses the issues that were raised in Reimerdes and Corley.

The discussion in this section is admittedly lengthy but necessary to understand the approach to TPMs and the way that the Legislature has attempted to address  the problem. It is helpful within the context of linking because the decision in Reimerdes and Carley centreed around providing access to TPMs. A consideration of the New Zealand position, especially following the 2008 amendments to the Copyright Act will show significant differences in approach to TPMs from that in the DMCA and which would mean that the approach to linking in Reimerdes and Corley need not necessarily be applicable in New Zealand.

7.2             The Former Section 226 of the Copyright Act 1994

The provisions of the former s 226 of the Copyright Act 1994 created a right in favour of a person issuing copies (effectively a publisher). That person has the same rights as a copyright owner and the remedies that are available are provided.

Subsection (2) of s 226 defined how a person “infringes” the new right. The elements of the prohibited activity were:

•   Making, selling, offering or exposing for sale or hire; or

•   Advertising for sale or hire;

•   Any device or means;

•   Specifically designed or adapted to circumvent the form of copy protection employed; or

•   Publishing information;

•   With the intention to enable or assist persons to circumvent that form of copy protection;

•   Knowing or having reason to believe that the devices, means, or information will be used to make infringing copies.

State of mind is significant. For the publishing of information there were two states of mind involved. First, there had to be an intention to enable or assist persons to circumvent copy protection — the specific intention. Secondly, it had to be proven that the publisher knew, or had reason to believe, that the information would be used to make infringing copies.

The prohibition on the distribution of circumvention devices involved proof of the same state of mind relating to the use of devices. There had to be knowledge (or reason to believe) that the device would be used to make infringing copies. In addition, the device had to be specifically designed or adapted to circumvent the copy protection employed. Knowledge would seem to follow from the specific design or adaptation of the device. One would hardly distribute a circumvention device specifically designed for that purpose if one did not know or have reason to believe that the device would be used for circumvention purposes.

As far as devices or means were concerned it appeared that the use of those words extended not only to hardware devices that prevented copyright infringement taking place but the software devices such as DECSS.[57] As far as devices that have substantial non-infringing uses but incidentally include a circumvention device the situation is a little more difficult. At present DVD and Blu-Ray players have a built device that decrypts the CSS copy protection system. Imagine a DVD player/recorder that could not only play back material, but could record from a DVD as well. The CSS decoding system would be present for legitimate and authorised playback provisions. Thus the machine would be specifically designed to circumvent copy protection. But such a use would be authorised. Then there is the recording use. For liability to follow there would have to be specific knowledge on the part of the distributor of such a device that it would be used to make infringing copies. The mere presence of a circumvention means or device is not enough. It must be accompanied by the requisite knowledge or reason to believe.

The provision of information about circumvention means or devices was limited by two state of mind requirements that, arguably, would mean that the publication of, for example, academic research regarding circumvention technologies would not be caught by the section if:

•    the intention to enable or assist circumvention were absent; and/or

•    there was an absence of knowledge or reason to believe that the publication would be used to make infringing copies.

Thus, when we consider the examples the scope of the former section was somewhat narrower than it first appeared.

7.3              The 2008 Amendment

The 2008 Amendment of s 226 and following amendments have made a number of changes. The first is that definitions have been provided. The second is that the essence of the former s 226 is retained in s 226A.

The focus of the new s 226 continues to be on the link between circumvention and copyright infringement and on the making, sale and hire of devices or information rather than on the act of actual circumvention. Actual circumvention is not prohibited, but any unauthorised use of the material that is facilitated by circumvention continues to be an infringement of copyright.

The new amendments recognise that consumers should be able to make use of materials under the permitted acts, or view or execute a non-infringing copy of a work. This is consistent with New Zealand’s position on parallel importation of legitimate goods; for example, genuine DVDs from other jurisdictions. New provisions have also been introduced to enable the actual exercise of permitted acts where TPMs have been applied.

What the new TPM provisions do is two-fold — broadly they prohibit and criminalise.

There is a prohibition of commercial conduct that undermines the TPM by putting a circumvention device into circulation or providing a service including the publication of information which relates to overriding TPM protection. Contravention has civil consequences — specifically the issue of the work protected by a TPM is protected as if the conduct was an infringement of copyright. The second leg is to make the prohibited conduct a criminal offence.[58]

There is a knowledge element for both the prohibition and the offence — the knowledge of the use to which the circumvention device or the service or published information will, or is likely to, be put.

There are however some limits on the prohibition when circumvention device has a legitimate use.

7.3.1           The Definitions

There are three definitions which are applicable to ss 226A–226E. The first is a technological protection measure or TPM:[59]

TPM or technological protection measure

(a)    means any process, treatment, mechanism, device, or system that in the normal course of its operation prevents or inhibits the infringement of copyright in a TPM work; but

(b)   for the avoidance of doubt, does not include a process, treatment, mechanism, device, or system to the extent that, in the normal course of operation, it only controls any access to a work for non-infringing purposes (for example, it does not include a process, treatment, mechanism, device, or system to the extent that it controls geographic market segmentation by preventing the playback in New Zealand of a non-infringing copy of a work)

Significantly, the legislature differentiated between a TPM for the purposes of the prevention of infringement and one that relates to access to a work for non-infringing purposes. The example is given of the control of “geographic market segmentation”, which clearly relates to a region protection in games or DVDs. Thus, if a person legitimately acquired a DVD that was coded for region 1, the region coding device or process in the DVD player which would otherwise prevent the use of the DVD may be circumvented so that the non-infringing purpose of viewing the DVD could be carried out.

The second definition relates to a TPM circumvention device:[60]

TPM circumvention device means a device or means that—

(a)    is primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of a technological protection measure; and

(b)   has only limited commercially significant application except for its use in circumventing a technological protection measure

The primary purpose of the circumvention device must be to circumvent a TPM — taking into account that the TPM must prevent infringement rather than access for non-infringing purposes and as well as its primary design production or adaptation it must have limited commercially significant application other than for its use in circumventing a TPM.

Both paras (a) and (b) are conjunctive; it may well be that a TPM circumvention device may have other commercially significant applications or, as the Americans put it, substantial non-infringing uses.

The third definition relates to a TPM work which is defined as a copyright work that is protected by a TPM. A TPM work must be a copyright work but it may well be that this cannot prevent a entrepreneur locking up a public domain work with a TPM if there is some significance in the way in which the work has been typographically arranged.

7.3.2      The Operative Sections

Section 226A sets out the prohibited conduct in relation to a TPM, stating:

226A Prohibited conduct in relation to technological protection measure

(1) A person (A) must not make, import, sell, distribute, let for hire, offer or expose for sale or hire, or advertise for sale or hire, a TPM circumvention device that applies to a technological protection measure if A knows or has reason to believe that it will, or is likely to, be used to infringe copyright in a TPM work.

(2) A person (A) must not provide a service to another person (B) if—

(a)    A intends the service to enable or assist B to circumvent a technological protection measure; and

(b)   A knows or has reason to believe that the service will, or is likely to, be used to infringe copyright in a TPM work.

(3) A person (A) must not publish information enabling or assisting another person to circumvent a technological protection measure if A intends that the information will be used to infringe copyright in a TPM work.

Section 226A provides a useful example of modern statutory drafting techniques by clarifying the behaviours of the certain actors that the section addresses.

Section 226A(1) is identical in scope to the former s 226(1), with the exception that the definitions contained in the new s 226 impact upon the scope. Whereas the previous legislation referred to a form of copy protection, the definition of a TPM work, a TPM and a TPM circumvention device now govern.

Section 226A(2) relates to the publishing information limb of the former s 226, except that a new term (“service”) is used. This is undefined but clearly encompasses information.

Once again there are two limbs underlying the prohibition: the intention that the service enable or assists circumvention of TPM; and specific knowledge that the service will or is likely to be used to infringe copyright in a TPM work.

If the service is for the purposes of university research, it is difficult to imagine that B could be satisfied, thus the prohibitive conduct is not complete.

The use of the word “service” in s. 226A(2) is new. The earlier iteration used the words “device” or “means”. Service is a very wide concept and although s. 226A(3) refers to the publication of information to enable or assist another person to circumvent a TPM, service extends the scope of s. 226A(1) and in essence addresses any form of assistance enabling circumvention of a TPM accompanied by knowledge or reason to believe that the assistance or service will be used to infringe copyright. There seems to be little doubt that a “service” could concveivably encompass a computer program or code.

Section 226A(3) relates specifically to the publication of information, and although the behaviour could be encompassed by a service, the legislature saw fit to make publication of information about TPM circumvention a discreet behaviour.

There is only one knowledge element in s 226A(3), as opposed to the two in s 226A(2). That knowledge element is that person A must know that the provider of the information must intend that the information is to be used to infringe copyright in a TPM work. Thus s 226A prohibits:

•    the making or distribution of a TPM;

•    the provision of a service with the two limbs of intention to assist circumvention and knowledge that the service will be or likely to be used to circumvent; and

•    publication of information enabling circumvention if it is intended that information will be used to circumvent.

Unlike the original  s.226, which was restricted in the language to commercial activity (sells, lets for hire, offers or exposes for sale or hire or advertises for sale or hire) s. 226A prohibits not only the making, selling, letting for hire, offering or exposing for sake, but also prohibits importing or distributing a TPM circumvention device. These terms can encompass an individual who downloads a TPM circumvention device from an off-shore site. This was not thje case in the earlier legislation. Distibution is also prohibite3d. Thus if one makes a TPM circumvention device available for download from a website, and uses a link to facilitate delivery, such an action could fall within the ambit or “distribution”.

However, the provision of information has a commercial aspect to it, for the provision of such information must be “in the course of business” and is therefore of a narrower scope that had those words been omitted.

Section 226B sets out the rights that accrue to the issuer of a TPM work. These rights are what Kirby J referred to as para copyright in Stevens v Kabushiki Kaisha Sony Computer Entertainment.[61] Essentially, the issue of a TPM work has the same rights against a person who contravenes s 226A as the copyright owner has in respect of infringement. The provisions of the Copyright Act relating to delivery up in civil or criminal proceedings is available to the issuer of a TPM work as are certain presumptions that are contained in ss 126–129 of the Copyright Act. The provisions of s 134 relating to disposing of infringing copies or objects applies as well with the necessary modifications.

Absent from the 1994 version of s 226 was the offence of contravening s 226A. Section 226C creates that offence:

226C Offence of contravening section 226A

(1) A person (A) commits an offence who, in the course of business, makes, imports, sells, distributes, lets for hire, offers or exposes for sale or hire, or advertises for sale or hire, a TPM circumvention device that applies to a technological protection measure if A knows that it will, or is likely to, be used to infringe copyright in a TPM work.

(2) A person (A) commits an offence who, in the course of business, provides a service to another person (B) if—

(a)    A intends the service to enable or assist B to circumvent a technological protection measure; and

(b)   A knows that the service will, or is likely to, be used to infringe copyright in a TPM work.

(3) A person (A) commits an offence who, in the course of business, publishes information enabling or assisting another person to circumvent a technological protection measure if A intends that the information will be used to infringe copyright in a TPM work.

(4) A person who commits an offence under this section is liable on conviction on indictment to a fine not exceeding $150,000 or a term of imprisonment not exceeding 5 years or both.

The first important thing to note is that subs (4) requires the conviction to be on indictment, so the matter must be dealt with in the jury jurisdiction and cannot be dealt with summarily although the position may well be altered by the provisions of the Criminal Procedure Act 2011..

Section 226C mirrors the prohibitions in s 226A, but the critical matter for an offence is that there is a commercial element — “in the course of business”.

Similarly, the provision of the service in subs (2) of 226C must have a commercial element as must the publication of information in subs (3).

This then brings the criminalisation of para-copyright in line with the provisions of s 135 of the Copyright Act which relates to piracy or commercial infringement. Clearly, s 226D considers that the offence should relate to commercial activity involving TPMs. In this way the rather wider prohibitions contained in s. 226A  do not automatically lead to potential liability under s. 226C

Section 226D clarifies the position relating to the scope of the rights of the issuer of a TPM work. The operative part states:

226D When rights of issuer of TPM work do not apply

(1) The rights that the issuer of a TPM work has under section 226B do not prevent or restrict the exercise of a permitted act.

(2) The rights that the issuer of a TPM work has under section 226B do not prevent or restrict the making, importation, sale, or letting for hire of a TPM circumvention device to enable—

(a)    a qualified person to exercise a permitted act under Part 3 using a TPM circumvention device on behalf of the user of a TPM work; or

(b)   a person referred to in section 226E(3) to undertake encryption research.

(3) In this section and in section 226E, qualified person means—

(a)    the librarian of a prescribed library; or

(b)   the archivist of an archive; or

(c)    an educational establishment; or

(d)   any other person specified by the Governor-General by Order in Council on the recommendation of the Minister.

(4) A qualified person must not be supplied with a TPM circumvention device on behalf of a user unless the qualified person has first made a declaration to the supplier in the prescribed form.

The issuer of a TPM work cannot prevent or restrict the exercise of a permitted act. Nor can the prohibition prevent or restrict the making, importation, sale or letting for hire of a TPM circumvention device to enable encryption research under s 226E(3), or to enable a qualified person to exercise a permitted act using a TPM circumvention device.

The legislation goes on to define “qualified person”, who, in this case, is required to make a declaration relating to certain matters.

On their own the provisions of s 226D seem confusing, although the provisions of s 226 and following do not prohibit the act of circumvention. Subsection (1) of 226D makes it clear that circumvention may be permissible for the purposes of the exercise of a permitted act.

Section 226E takes the matter further.

226E User’s options if prevented from exercising permitted act by TPM

(1) Nothing in this Act prevents any person from using a TPM circumvention device to exercise a permitted act under Part 3.

(2) The user of a TPM work who wishes to exercise a permitted act under Part 3 but cannot practically do so because of a TPM may do either or both of the following:

(a)    apply to the copyright owner or the exclusive licensee for assistance enabling the user to exercise the permitted act:

(b)   engage a qualified person (see section 226D(3)) to exercise the permitted act on the user’s behalf using a TPM circumvention device, but only if the copyright owner or the exclusive licensee has refused the user’s request for assistance or has failed to respond to it within a reasonable time.

(3) Nothing in this Act prevents any person from using a TPM circumvention device to undertake encryption research if that person—

(a)    is either—

(i)     engaged in a course of study at an educational establishment in the field of encryption technology; or

(ii)    employed, trained, or experienced in the field of encryption technology; and

(b)   has either—

(i)     obtained permission from the copyright owner or exclusive licensee of the copyright to the use of a TPM circumvention device for the purpose of the research; or

(ii)    has taken, or will take, all reasonable steps to obtain that permission.

(4) A qualified person who exercises a permitted act on behalf of the user of a TPM work must not charge the user more than a sum consisting of the total of the cost of the provision of the service and a reasonable contribution to the qualified person’s general expenses.

Once again the section makes it clear that the act of circumvention to exercise a permitted act is not prohibited. Thus a person may use a circumvention device to copy a selection from a TPM work for the purposes of review, a comment or inclusion (with attribution) in an academic work.

Subsection (2) glosses over that, however. If the user of a TPM work wishes to exercise a permitted act, he or she may use a TPM circumvention device to do so, but the subsection includes the words “but cannot practically do so because of a TPM”. It is unclear what this means. If a person whose access to a work to carry out a permitted act is prevented by a TPM, does subs (2) automatically apply? Or, if a circumvention device is available, is the user able to use that circumvention device to exercise the permitted act? Does subs (2) relate to the situation where there is no circumvention device available? Subsection (2), in providing certain options for the person who is stymied by a TPM, challenges the market failure theory of fair use.

A person wishing to do one of the permitted acts may apply to the copyright owner or licensee for assistance. The alternative is to engage a qualified person (see s 226D(3)) to exercise a permitted act on the user’s behalf using a circumvention device. But that can only apply if the copyright owner exclusive licensee refuses the user’s request for assistance or fail to respond within a reasonable time.

A sensible interpretation of s 226E suggests that subs (2) must be followed if there is no readily available circumvention device enabling the user to exercise a permitted act.

It is also important to note that s 226E makes a specific exception for the use of circumvention devices to undertake encryption research in certain circumstances.

7.4              Comment

The new provisions of s 226 and following are indeed helpful. The incorporation of clear definitions, that make it clear that TPMs are for the purposes of prevention of infringement rather than access, are to be welcomed (although s 226E seems to introduce a somewhat unnecessary level of complexity).

Underlying the whole issue of para-copyright is the fact that, in reality, TPMs are a somewhat blunt instrument for the purposes of copyright protection, presenting an “all or nothing” level of protection. TPMs cannot discriminate between a permitted or prohibited use. They are international and are applied internationally, whereas copyright law is territorial. TPMs place the control in the hands of the copyright owner of a technological rather than a legal nature and, as already observed, provide a potential for market failure. Essentially, TPMs do not provide an absolute protection, rather they impose another layer of protection that sits on top of the balance of interests created by statute, and muddy the waters between what is and is not allowed. The various options relating to behaviour regarding TPMs contained in ss 226B, 226D and 226E suggest that certain behaviours may be permissible while others are not. Clearly, the legislature did not want to impose a prohibition on the act of circumvention, but the various alternatives given in ss 226D and 226E seem to suggest prohibition.

The legislation, while addressing the issue of circumvention of TPMs, and restricting prohibited conduct to the means by which copyright protection (rather than access prevention) may be circumvented therefore makes it clear that the provisions of means by which access controls may be circumvented is not within the scope of prohibited conduct. This means that one may provide services, information and programs that assist in circumventing access protections. In this way the legislation addresses its target – the copy right – rather than allowing the engraftment of another “para-copyright” – the “prevention of access” right. This is eminently justifiable. Region coding is a means by which copyright owners facilitate distribution of their products. The only issue is obne of market segmentation and a release strategy that copyright owners may have in place. There is no reason, in terms of copyright, why a person who legitimately acquires content in one geographical area should be prohibited from accessing it in another.

However, unlike the New Zealand legislation the DMCA prohibits thje circumvention of access control systems, despite there being no copyright implications and, to further complicate matters, criminalises such behaviour.  It should be a matter of concern that should international trade treaty negotiations result in the application of a DMCA style of anti-TPM circumvention regime, the results will be:

a) the imposition of a foreign marketing system that goes far beyond those chosen say for the release of non-digital product such as movies and CDs

b) the end of the parallel importing regime insofar as geographically segmented digital product is concerned

c) the criminalisation of behaviour that has nothing to do with copyright infringement and has no economic implications for content owners whatsoever.

Finally, it is still not clear whether licence terms or conditions of sale may override the way in which circumvention devices may be used in the limited situations provided in s 226. Unlike s 84, which statutorily negates such conditions, the matter is left open. The legislature has gone to considerable lengths to ensure the balance of interests that underlies copyright law is maintained. It seems unusual that those rights may be subverted by contractual arrangements.


[54]      The Copyright, Designs and Patents Act 1988.

[55]      The Copyright Act 1994 as amended by the Copyright (New Technologies) Amendment Act 2008

[56]      Section 226 – 226E

[57]      CSS is the DVD content scrambling system that prohibits the copying of the files on a DVD movie disk. DECSS is the system that circumvents the content scrambling system.

[58]      The offence of contravening s 226A is set out in s 226C.

[59]      See the new s 226.

[60]      See the new s 226.

[61]      Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58, (2005) 224 CLR 193, (2005) 221 ALR 448.

Linking and the Law – Part 1

LINKING AND THE LAW

Hypertext Linking – Communication or Content Neutrality

Contents

PART 1.

1.            General Introduction

An Overview of Linking and Early Developments

2.            Introduction

3.            What is Linking

3.1          Linking

3.2          Deep Linking

3.3          Framing

3.4          In-lining

4.            Potential Copyright Issues Arising from Linking – the big picture

5.            The Cases

Shetland Times

The Washington Post Co & Ors v Total News Inc & Ors

Futuredontics Inc v Applied Anagramic Inc

Ticketmaster Corp v Microsoft

Ticketmaster Corp v Tickets.com

6.            Linking, Anti-circumvention and Copyright

6.1          Universal City Studios v Reimerdes and Corley

6.1.1      Background

6.2          The Categorisation of Linking Activity: The Decision in Universal City Studios v Reimerdes

Interpretation

The Real-World Analogy

Extending the Scope

Links – Kaplan J’s Approach

First Amendment, Jurisdictional and Technical Issues

1. Content-based or content neutral

2. Navigation on the Web

3. The Content Neutrality of Links?

4. Extraterritorial Effect of the Decision

5. Value Judgements and Technological Misunderstandings

6.3          Universal City Studios v Reimerdes and Corley – The Appeal

PART 2

7.            The New Zealand Position – Technological Protection Measures, Anti-circumvention and communication

7.1          Introduction

7.2          The Former Section 226 of the Copyright Act 1994

7.3          The 2008 Amendment

7.3.1      The Definitions

7.3.2      The Operative Sections

7.4          Comment

PART 3

8.            Linking and Publication – Ramifications for Defamation

8.1          Crookes v Newton

8.2          Concluding Thoughts on Crookes v Newton

9.            The European View –  Svensson v Retreiver Sverige AB

10.          Perfect 10 v Google – Moving Away from Reimerdes v Corley

11.          Linking – Issues Arising

12.          The Threat to the Web

13.          Conclusion

PART 1

1.               General Introduction

This is a lengthy discussion about hypertext linking and the law. It builds on earlier published pieces from the early 2000’s and a section that appeared in the 2nd edition of my text on internet law[1] but which is not available in the 3rd edition.

The revision and rewriting of the earlier material was prompted by some recent developments in the field including the decision of the Supreme Court of Canada in the case of Crookes v Newton [2] – a defamation case – and Perfect 10 v Google[3] – a copyright case, together with some recent European developments and the submission of the European Copyright Society in Svensson v Retreiver Sverige AB.[4] I delayed posting until the Court of Justice of the EU decision in Svensson was available. That decision has now been delivered and will be discussed in Part 3.

 I have divided the discussion into three parts which will be posted separately over a period of time.

Part 1 looks at the early cases on linking and in particular considers links to and the use of the material of others within the context of copyright. The discussion moves then to a consideration of technological protection measures (TPM) and anti-circumvention provisions provided bgy law – a concept described as “para-copyright” by Kirby J – and considers whether the provision of links to circumvention devices amounts to a breach of the Digital Millenium Copyright Act (US). The discussion focuses upon the case of Universal City Studios v Reimerdes and Corley[5] decided in 2000.

Part 2 considers the New Zealand approach to TPMs and whether the existing law would prevent linking to sites where TPMs are available and, if so, under what circumstances. The impact of the amendments to the Copyright Act 1994 incorporated by the Copyright (New Technologies) Amendment Act 2008 will be considered.  This is a new discussion even although the legislation has been in place for some time. There have been no cases on the New Zealand provisions.[6]

Part 3 is also new and considers the Canadian case of Crookes v Newton as well as approaches in various European jurisdictions together with the case of Perfect 10 v Google. I then conclude with some observations on some common themes that may be present about the state of the law regarding linking.

A Note on References

My penchant for references may be unusual in the context of a blog. Nevertheless I consider that to be useful and to provide evidential support for material that I post, references are as important here as they would be in an academic journal. I would hope that by providing references I may encourage other research on the topic or informed debate about the particular post.

This piece commenced life as a single article. It is too large for a single post. For that reason I have divided it into three parts although it is designed to be considered as a whole. The footnote references are sequential across the three parts, rather than starting afresh at the beginning of each part.

I have also departed from the strictures imposed by the New Zealand Law Style Guide.[7] Because this piece is spread across three parts, references to “above n. **” would be unhelpful and so I have repeated citations except when use of “ibid” is appropriate.

An Overview of Linking and Early Developments

2.               Introduction

In Universal City Studios v Reimerdes[8] the issues facing Judge Lewis Kaplan were whether or not the plaintiff was entitled to injunctive relief against the defendant to prevent:-

•    the defendant posting a copy of a DVD decryption program known as DeCSS on its website for distribution;

•    the defendant providing links from its website to other websites maintained by other persons, and which made DeCSS available.

The Judge held that the provision of links to other websites where the decryption program was available was the “functional equivalent” of making the program available itself.

The ramifications of Judge Kaplan’s decision go far beyond the realm of copyright and may impact upon the nature of the internet itself. This article examines the nature of linking and looks at some general principles of copyright and linking. Some of the cases involving linking and framing are discussed, and some of the more significant issues regarding linking are examined. The case of Universal City Studios v Reimerdes as decided at first instance by Judge Kaplan and the judgment of the Second Circuit Court of Appeal is considered. There is also consideration of whether or not the application of copyright principles to linking in fact presents us with a form of internet governance or regulation that could have the effect of suppressing the free exchange of information and content on the internet, and could possibly retard the development of the internet in the realm of ecommerce.

I also consider more recent cases about linking, including Perfect 10 v Google[9] which held that whilst links may have no implications for direct copyright infringement, the situation may be different for contributory infringement, as concept that has developed within United States copyright jurisprudence.

Although the copyright environment seems to dominate problems with linking the law of defamation also examines linking and the nature of publication in the new environment. I shall consider the Canadian case of Crookes v Newton[10] together with the New Zealand case of International Telephone Link Pty Ltd v IDG Communications Ltd.[11] It would be tempting to consider the recent decisions in Tamiz v Google,[12] A v Google,[13] Rana v Google[14] and Trkulja v Google[15] but these cases deal with the way in which search results are presented and whether a search engine becomes a publisher. They do not deal specifically with linking. But the line of cases may well be the subject of a separate article.

I shall conclude with an attempt to distil some common rules and themes from the cases, and consider whether the law is trying to apply old concepts that may no longer be valid in the new paradigm.

3                 What is linking?

3.1             Linking

Links or hypertext links are components of webpages. They allow one webpage, or a part of a website to connect to another webpage, either on the same or upon a different site. Clicking on relevant highlighted text or an image activates the link. Linking is seen as an essential navigation feature for moving around material on the world wide web.

3.2             Deep linking

A deep link is a hypertext link that takes a web user past a starting or top-level home page and directly to an internal page within a particular website. Deep linking can only be achieved if the internal document has its own Uniform Resource Locator field (URL).

3.3             Framing

Framing occurs when one website allows a user to view the contents of another website within a frame on the first website. In many cases the information is presented so that it appears to originate from the first website and to be a part of it. In fact this is not the case.

3.4             In-lining

In-lining is the process whereby graphic images originate from one site and are displayed on another. The html coding on the displaying site creates an unseen hypertext link to the site hosting the graphic image, thus creating the illusion that the image originates from the displaying site.

4.               Potential copyright issues arising from linking — the big picture

Some general issues arise from linking, especially in the area of copyright, that involve some fundamental aspects of computer use on the internet. Like it or not, when a website is accessed by a browser, the material from that website is stored in the RAM of the browser’s computer.

In addition, depending on the program that the browser uses (Internet Explorer, Chrome, Firefoxand so on), information regarding the site visited, the URL, certain images and the like may be retained by the program in the cache or the history sections (or both) of the program.

It is clear that those who place content upon the world wide web must be aware of this. Indeed, the reason why individuals and companies place material on the web is so that it may be accessed by others. Thus, there is an implied licence granted by the website owner to others so that they may view the material on their computers. That licence, it is suggested, is available by the placement of material on the web as such. However, if the browser utilises the material after viewing it, there may be an infringement issue. The real issue is how the browser deals with the material that has been accessed, to determine issues of copyright infringement.

It has been suggested that one can look at the circumstances surrounding the publication or distribution of the material, which would necessarily take into account the factors to which reference has already been made.[16] Campbell J took a more restrictive view of the matter in Intellectual Reserve Inc v Utah Lighthouse Ministry Inc where he said:

When a person browses a website, and by so doing displays the Handbook, a copy of the Handbook is made in the computer’s random access memory (RAM), to permit viewing of the material. And in making a copy, even a temporary one, the person who browsed infringes the copyright. See MAI Systems Corp v Peak Computer, Inc, 991 F 2d 511, 518 (9th Cir 1993) (holding that when material is transferred to a computer’s RAM, copying has occurred; in the absence of ownership of the copyright or express permission by licence, such an act constitutes copyright infringement); Marobie-Fl., Inc v National Ass’n of Fire Equip Distrib, 983 F Supp 1167, 1179 (N D Ill 1997) (noting that liability for copyright infringement is with the persons who cause the display or distribution of the infringing material onto their computer); see also Nimmer on Copyright § 8.08(A)(1) (stating that the infringing act of copying may occur from “loading the copyrighted material . . . into the computer’s random access memory (RAM)”).[17]

In a footnote the Judge observed that:

[T]he Copyright Act has provided a safeguard for innocent infringers. Where the infringer “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the Court in its discretion may reduce the award of statutory damages” 17 U.S.C. § 504(c)(2).

However, it should be noted that this case dealt with a link that took users not to a page created by another web user but to a church handbook of instructions. Thus, what was downloaded was an electronic version of a book. Copyright law does not distinguish between a webpage and a book in electronic form that is available on the web. To copy either can constitute an infringement. However, it is suggested that Campbell J’s view cannot apply to all of the material on the web. Logically, the concept of an implied licence is applicable to a webpage placed on a server that may be accessed by any computer user.

The position regarding placing of a hypertext link on one page that takes a user to another page is less clear, and depends on the extent of the implied licence. The destination of the link has been the subject of litigation that is discussed in the next section. However, the Intellectual Reserve case has a certain relevance to this discussion. In that case the defendants had no objection to the injunction sought by the plaintiffs in so far as prevention of direct infringement was concerned. However, they resisted the injunction as to contributory infringement.[18] The defendants had placed a notice that the church handbook was online and gave three website addresses of sites that contained the material that the defendants were required to remove from their website.[19] The Court considered the nature of contributory infringement and found:

Liability for contributory infringement is imposed when “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Gershwin Publ’g Corp v Columbia Artists Mgt, Inc, 443 F 2d 1159, 1162 (2d Cir 1971). Thus, to prevail on its claim of contributory infringement, plaintiff must first be able to establish that the conduct defendants allegedly aided or encouraged could amount to infringement. See Subafilms, Ltd v MGM-Pathe Comms Co, 24 F 3d 1088, 1092 (9th Cir 1994). Defendants argue that they have not contributed to copyright infringement by those who posted the Handbook on websites nor by those who browsed the websites on their computers.

The Court in Intellectual Reserve found that those internet users who browsed the handbook on the three other sites infringed copyright on the basis observed above. The Court went on to find that the defendants induced, caused or materially contributed to the infringement in the following respects:

1.   After being ordered to remove the handbook from their website, the defendants posted on their website: “Church Handbook of Instructions is back online!” and listed the three website addresses.

2.   The defendants also posted emails suggesting that the lawsuit against them would be affected by people logging onto one of the websites and downloading the complete handbook.

3.   One of the emails posted by the defendants mentioned sending a copy of the copyrighted material to the media.

4.   In response to an email stating that the sender had unsuccessfully tried to browse a website that contained the handbook, defendants gave further instructions on how to browse the material.

5.   At least one of the three websites encourages the copying and posting of copies of the allegedly infringing material on other websites. (“Please mirror these files . . . It will be a LOT quicker for you to download the compressed version . . . Needless to say, we need a LOT of mirror sites, as absolutely soon as possible”).

Thus there was associated conduct along with the posting of the addresses of the three websites that led the Judge to conclude that there was contributory infringement. As far as the mere posting of the website addresses was concerned, the Judge found that:

The evidence now before the Court indicates that there is no direct relationship between the defendants and the people who operate the three websites. The defendants did not provide the website operators with the plaintiff’s copyrighted material, nor are the defendants receiving any kind of compensation from them. The only connection between the defendants and those who operate the three websites appears to be the information defendants have posted on their website concerning the infringing sites. Based on this scant evidence, the Court concludes that plaintiff has not shown that defendants contributed to the infringing action of those who operate the infringing websites.

From this case it can be concluded that merely posting a link does not amount to contributory infringement. There must be more active conduct on the part of the person posting the link.

Linking is an essential feature of the world wide web and is vital to its structure. Most websites contain links to others. Links make information on the web manageable and indeed has made internet use accessible to ordinary computer users. Links make it easy to find information available on topics of interest. Thus to restrict linking may have consequences for the effective utilisation of the web that shall be considered in later in this post.

The mere provision of a link (http://www.law.auckland.ac.nz, for example) does not infringe the reproduction right of the linked-to website, because it does not copy the website’s content. There is no copyright in a website address. The linking party merely provides a Universal Resource Locator (URL) that directs the user to the content of the destination webpage.

There is a firm policy basis for this.

It does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for functioning of the internet, even where the internet provider has knowledge of potential copyright infringement by its subscribers.[20]

Thus, a linking party is not liable for direct copyright infringement. This was also the case in Perfect 10 v Google[21] where it was held that the operator’s act of framing in-line linked full-size images of copyrighted photographs was not “display” of owner’s works and that

However, there is a difference between mere linking — that is, providing a hypertext linking to another user’s homepage — and other forms of access to material on the web. Most of the cases in this area have focused on copyright law to provide a remedy for what is perceived as an unjustifiable interference with material that has been posted on the web.

5.               The cases

Shetland Times

The case of Shetland Times Ltd v Wills[22] is an example of a problem that arose as a result of deep linking. Although it is a case that is regularly discussed in the context of linking, it does not present a final fully reasoned conclusion after full argument because the case settled before it went to a full substantive hearing. Nevertheless, it is useful in identifying some of the issues that arise.

Shetland Times Ltd was, in Scottish terminology, the pursuer. It reproduced certain news items from their own published newspaper, The Shetland Times, on its website. Access to a news item was gained by clicking on the appropriate headline on the home page of the website. The defender, or defendant, was the managing director of a news reporting service — Shetland News Ltd which ran a news reporting service from its website. On its home page Shetland News included a number of headlines from the pursuer’s home page. These headlines performed the function of hypertext links to the individual news items appearing on the pursuer’s website. A Shetland News user could click on the headline and get direct access to the news item appearing on the pursuer’s website. This access avoided the necessity of going to the pursuer’s home page. There was an objection to this on the part of the pursuer for a commercial reason — the home page was designed to include advertising. If access to news items could be made by circumventing access to the pursuer’s home page, then that home page would lose much of its attraction for potential advertisers and would sustain a loss of advertising revenue.

The pursuer brought the action claiming its headline constituted a cable programme and its inclusion by Shetland News in a cable program service was a primary infringement of copyright under s 20 of the Copyright, Designs and Patents Act 1988 (UK). Because it was an injunction case it was held that a prima facie case had been established for finding, first, that the pursuer’s website on the internet was a cable program service within the meaning of the Act and, secondly, a hypertext link such as the headline contained within that website was a cable programme, again within the meaning of s 7 of the Act. Thirdly, an unauthorised inclusion of a cable programme within a cable program service is an infringement of copyright under s 20.

By inference, therefore, Shetland News’ website also comprised a cable programme service.

The matter only went as far as the interim interdict stage and, as I have said, the issues were not fully canvassed at a full hearing as a settlement was reached. The issues that needed to be resolved were:

1.   whether the internet is a cable programme service under the UK Act; and

2.   an examination of the technological issues including the necessity of copying in order to browse a website and the concept of links to other websites as in themselves attracting copyright protection themselves.

Within the academic community the debate continues over the whether the inclusion of hypertext links to other websites are permissible as being the equivalent of, say, a footnoted reference to another text within traditional published texts.[23]

It has been argued that hypertext links effectively allowing incorporation of another author’s original work within the first work constitute an infringement of copyright but the question of copyright in a hypertext reference itself, either as a literary work or as cable programme has not arisen.

James Connolly and Scott Cameron, in the article “Fair Dealing in Webbed Links of Shetland Yarns”,[24] call for legislation to specifically deal with the issue of copyright and links. They conclude that the technology of the internet is unique and does not fit easily onto existing copyright structure. There is a conflicting ideology on the internet because it originally evolved in universities for the free exchange of information but now has a highly commercialised marketing and sales purpose. These two purposes currently exist side by side. It was Connolly and Cameron’s view that the Shetland Times case was best dealt with as one of fair dealing but if similar questions were to arise again and there was no question of news being involved, it was their opinion that legislation would be needed before any balance between the idealism of the internet and the need to protect intellectual property is found.

Sue French, in a comment on the Shetland Times case,[25] notes that the New Zealand Copyright Act 1994 confers generous powers on the Governor-General to make amending regulations. In recognition of the fact that modern technological developments were overtaking the legislature, the intention of the original drafters of the Copyright Bill was to provide a flexible means by which account could be taken of both technological developments and difficulties of interpretation or application. She said that it is to be hoped that any subsequent judicial finding that would seek to limit or prohibit the use of hypertext links within non-interactive websites would be viewed as an opportunity for appropriate use to be made of the Governor-General’s amending powers.[26]

The Washington Post Company & Ors v Total News Inc & Ors[27]

This was a case about framing that also settled before final determination. However, once again the way the case proceeded and the terms of settlement give an indication of the views of the parties and their legal advisers.

Total News provided a web-based news service in which their site incorporated hyperlinks to websites of the plaintiffs. The links were created in such a way that the plaintiffs’ site did not entirely fill the screen when the link was activated by the user. Rather, part of the site was inserted in a window on Total’s site that occupied only part of a screen. The plaintiffs’ URL did not appear in the address section of the browser, and there was potential for confusion as to the origin of the information in the framed window. From the claim filed by the plaintiffs[28] the major concern was that the actions of Total News interfered with the plaintiff’s contractual arrangements with their advertisers. Total News’ activities offered competing advertising material and devalued the material on the plaintiffs’ sites.

The case settled in June 1997 and the terms of the settlement contain the following provisions:

•    the defendants agreed to permanently cease the practice of “framing” the plaintiffs’ websites as that practice was described in the plaintiffs’ complaint;

•    the defendants were allowed to link to the plaintiffs’ websites only via hyperlinks consisting of the names of the linked sites in plain text, which may be highlighted;

•    the defendants were not allowed to link in any manner reasonably likely to imply affiliation with the plaintiffs, cause confusion or “dilute” the plaintiffs’ trademarks.

As far as New Zealand is concerned there could well be an issue of misleading and deceptive conduct under the Fair Trading Act 1986 if framing causes the browser of a site to believe that there is approval by the owner of the framed site that it (the site) may be displayed, or alternatively, that the absence of the URL leads the browser to believe that the material in the framed site originates from the site being viewed and not another site.

Futuredontics Inc v Applied Anagramic Inc[29]

Although there was a decision in this case involving framing, the issue is not entirely resolved. Applied Anagramic was a dental services website. It framed content from a competing site. The frames included information about Applied Anagramic, its trademark and links to its webpages.

The Court held that a website containing a link that reproduced webpages within a frame may amount to an infringing derivative work. In addition, the modifications incorporated in the frame could, without authorisation, amount to infringement.

The Court’s approach seems to be directed towards the way in which the link functioned to incorporate content, and the decisions seems directed more to the use of the material than to the link itself in that the content was incorporated as part of the ‘get up” of the site.

Ticketmaster Corp v Microsoft[30]

Ticketmaster Corp v Microsoft is another deep linking case that settled before trial. Once again, it is of interest in that it highlights some of the issues behind linking.

Microsoft operated a website known as “Seattle Sidewalks”. It provided deep links to Ticketmaster’s website, thus avoiding the initial pages of the Ticketmaster site that contained advertisements, products and services and enabled users of the Sidewalks site to engage in the online purchase of tickets from Ticketmaster.

Ticketmaster claimed that Microsoft had wrongfully appropriated and misused its name and trademarks, and engaged in unfair competition. Ticketmaster did not attack linking as such, but Microsoft’s use of deep hyperlinking, which diminished the advertising revenue available to it and increased Microsoft’s own advertising revenue.

The case was closely watched by internet experts who hoped for clear and considered judicial guidance on the question of linking. The settlement in February 1999 resulted in an agreement by Microsoft not to provide deep links to Ticketmaster’s site but to link to Ticketmaster’s homepage. Following this, Ticketmaster has allowed deep linking by sites such as Yahoo!, but only after the parties had entered into a linking agreement.

Ticketmaster Corp v Tickets.com[31]

In this case Tickets.com was in competition with Ticketmaster. Once again, there was deep linking to Ticketmaster’s site. In addition, Tickets.com copied material from the Ticketmaster site and posted false information about the availability of tickets from Ticketmaster.

Ticketmaster alleged copyright infringement, breach of contract and unfair competition.

In considering (and dismissing) the claim of copyright infringement based on hyperlinking, Judge Harry Hupp said:

“Hyperlinking does not itself involve a violation of the Copyright Act (whatever it may do for other claims) since no copying is involved. The customer is automatically transferred to a particular genuine webpage of the original author. There is no deception in what is happening. This is analogous to using a library’s card index to get reference to particular items, albeit faster and more efficiently.”[32]

Ticketmaster’s claim for breach of contract was also dismissed. Ticketmaster had posted terms and conditions on its website prohibiting deep linking, but the Judge held that Ticketmaster’s complaint did not provide a factual foundation that Tickets.com knew of or agreed to these terms.

The Judge dealt with the claim of unfair competition by deep linking in this way:

The complaint also alleges deep linking as an example of unfair competition, but the court concludes that deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition.

It is suggested that this case does not definitively decide when it is permissible to deep link and when it is not. It is a starting point, although it was a short judgment on an interlocutory application without full evidence or argument on the substantive issues.

There are also issues left open regarding copyright infringement, unfair competition and misleading or deceptive conduct where there is confusion as to the source of the content, or ignorance as to the fact that there has in fact been a link to a separate and distinct site and deep within its interior.

6                 Linking, anti-circumvention and copyright

6.1             Universal City Studios v Reimerdes & Corley

The case of Universal City Studios v Reimerdes and Corley[33] is primarily about the anti-circumvention provisions of the American Digital Millennium Copyright Act. This discussion focuses on the way in which the Court approached a hypertext link and characterised it as the functional equivalent of trafficking in anti-circumvention devices. To extend this reasoning to other linking activity could have significance for internet utility and it is for this reason that a detailed study of this aspect of the case is warranted.

6.1.1         Background

The plaintiff movie companies owned the copyrights in a large number of films. Many of these films were (and are) available on DVD. Films on DVD disks are in digital format. Without some form of copy protection the files could easily be copied and distributed thus infringing the plaintiffs’ copyright and causing them loss of revenue. The plaintiffs applied an encryption to their DVDs known as CSS. This encryption can be “unlocked” by DVD players so that the movie on the disk can be viewed. It prevents the copying of the movie files from the DVD.

Jon Johansen, a Norwegian student, reverse engineered the CSS encryption and developed a utility known as DeCSS. This unlocks the CSS encryption on a DVD disk and allows the files to be copied to a computer hard disk drive. Johansen posted the DeCSS code on the internet, thus making the program available to the world.

In November 1999 the defendants posted DeCSS on their website and made it available for download. They established links from their webpage to other sites where DeCSS could be similarly obtained.

The movie companies became aware of this and late in 1999 sent “cease and desist” letters to a number of site operators, some of whom complied. The defendants did not. In January 2000 proceedings were commenced against them. The plaintiffs obtained preliminary injunctive relief prohibiting the defendants from making DeCSS available for download from their site. The defendants, in an act of electronic civil disobedience, provided links to other sites offering DeCSS

The plaintiffs relied on the provisions of the Digital Millennium Copyright Act, which was enacted by the US Congress in 1998.

6.2             The categorisation of linking activity: the decision in Universal City Studios v Reimerdes

Section 1201(a)(2) of the Copyright Act, part of the DMCA, provides that:

No person shall . . . offer to the public, provide or otherwise traffic in any technology . . . that —

(A)   is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under [the Copyright Act];

(B)    has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under [the Copyright Act]; or

(C)    is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under [the Copyright Act].

The italicised words are the subject of expansive interpretation in the context of the linking activities of the defendants.

There is no doubt whatsoever that DeCSS was designed and produced for the purpose of circumventing the technological measure (CSS encryption on DVDs) that controls access to the files on the DVD. By posting DeCSS on its website for downloading the defendants obviously breached s 1201(a)(2)(A) in that they offered it to the public and provided it.

In his consideration of linking Judge Kaplan dealt first with an interpretation of the Act and then whether or not linking may constitute protected speech pursuant to the First Amendment to the US Constitution.

Interpretation

The Judge’s reasoning on interpretation is as follows:[34]

“Linking to Sites Offering DeCSS

Plaintiffs seek also to enjoin defendants from “linking” their 2600.com website to other sites that make DeCSS available to users. Their request obviously stems in no small part from what defendants themselves have termed their act of “electronic civil disobedience”— their attempt to defeat the purpose of the preliminary injunction by (a) offering the practical equivalent of making DeCSS available on their own website by electronically linking users to other sites still offering DeCSS, and (b) encouraging other sites that had not been enjoined to offer the program. The dispositive question is whether linking to another website containing DeCSS constitutes “offer[ing DeCSS] to the public” or “provid[ing] or otherwise traffic[king]” in it within the meaning of the DMCA. Answering this question requires careful consideration of the nature and types of linking.

Most webpages are written in computer languages, chiefly HTML, which allow the programmer to prescribe the appearance of the webpage on the computer screen and, in addition, to instruct the computer to perform an operation if the cursor is placed over a particular point on the screen and the mouse then clicked. Programming a particular point on a screen to transfer the user to another webpage when the point, referred to as a hyperlink, is clicked is called linking. Webpages can be designed to link to other webpages on the same site or to webpages maintained by different sites.”

Judge Kaplan then moved on to define three categories of links on websites as:

•    websites that contain information of various types, but no link to DeCSS but that contain links to other sites containing DeCSS that the user must follow to obtain the program;

•    links that take the user to another site where there is information in addition to a direct link to the DeCSS program;  and

•    links to sites where DeCSS may be downloaded by merely clicking on the link.

He then proceeded to consider whether the links provided by the defendants were within the ambit of the statute.

“To the extent that defendants have linked to sites that automatically commence the process of downloading DeCSS upon a user being transferred by defendants’ hyperlinks, there can be no serious question. Defendants are engaged in the functional equivalent of transferring the DeCSS code to the user themselves.”[35]

Here Judge Kaplan is referring to the third category and develops the suggestion that such a link is the “functional equivalent” of making the program available on the originating link site. This overlooks the fact that the site linked to may be outside the jurisdiction or in any respect beyond the control of the administrator of the originating site.

“Substantially the same is true of defendants’ hyperlinks to webpages that display nothing more than the DeCSS code or present the user only with the choice of commencing a download of DeCSS and no other content. The only distinction is that the entity extending to the user the option of downloading the program is the transferee site rather than defendants, a distinction without a difference.”

Judge Kaplan refers to the second category that provides a link to a site where DeCSS may be downloaded, but that requires a positive act (clicking on the download icon) to obtain the DeCSS program. The Judge expands the concept of functional equivalence beyond an automatic download to an action that must be initiated by a third party.

“Potentially more troublesome might be links to pages that offer a good deal of content other than DeCSS but that offer a hyperlink for downloading, or transferring to a page for downloading, DeCSS. If one assumed, for the purposes of argument, that the Los Angeles Times website somewhere contained the DeCSS code, it would be wrong to say that anyone who linked to the Los Angeles Times website, regardless of purpose or the manner in which the link was described, thereby offered, provided or otherwise trafficked in DeCSS merely because DeCSS happened to be available on a site to which one linked. But that is not this case. Defendants urged others to post DeCSS in an effort to disseminate DeCSS and to inform defendants that they were doing so. Defendants then linked their site to those “mirror” sites, after first checking to ensure that the mirror sites in fact were posting DeCSS or something that looked like it, and proclaimed on their own site that DeCSS could be had by clicking on the hyperlinks on defendants’ site. By doing so, they offered, provided or otherwise trafficked in DeCSS, and they continue to do so to this day.”

Thus the Judge acknowledges a problem because DeCSS is not automatically available or one user-initiated step distant from such availability. “Functional equivalence” is not available. A motive based test is created, whereby purely information-giving sites like the Los Angeles Times are differentiated from sites that make information available with other than a “pure” motive. There can be no doubt that this raises free speech and freedom of information issues, along with what seems to be an overly strained approach to the reality of the technology of the world wide web in an effort to justify the result reached.

There are two areas that need to be examined in testing the validity of the reasoning employed. The first uses a real world analogy. The second considers whether the legislation can be interpreted as expansively as it has been in this case.

The real-world analogy

Judge Kaplan’s categories bear examination within the context of the real world. This section works backwards and takes category 3 as the first example.

A real-world equivalent to the scenario advanced is where 2600.com occupies a storefront location and has a sign pointing to another storefront indicating that DeCSS can be obtained from the other storefront. In the other store is a bin where a party may uplift DeCSS free.

Category 2 continues the scenario. There is the same sign pointing to the same destination storefront. However, rather than uplifting a copy of DeCSS from a bin, the party seeking the program must make a specific inquiry to the operator of the storefront. Upon such a request being made, the operator of the other storefront makes a copy of DeCSS available.

Category 1 takes the scenario further. The person seeking DeCSS goes to the 2600 storefront and is directed by a sign to another storefront. At that other storefront are books and magazines about DeCSS but not copies of the program. Instead, there is another sign pointing to a third storefront. At that third storefront DeCSS is available in both free bins and upon request from the third storefront proprietor.

A common feature of all three scenarios is that the 2600 storefront has provided information and nothing more. The information that it has given has facilitated the location of DeCSS by a person interested in obtaining that program. If the 2600 storefront made DeCSS available that would be an infringement. However, directing a person to a place where the program can be uplifted cannot be considered the same as making it available at the DeCSS counter. When analysed in this way it becomes clear that a differing measure results for behaviour in the online environment and the real-world one.

Extending the scope

The Judge’s definition of “to traffic” is from the 1971 edition of the Compact Edition of the Oxford English Dictionary. “Trafficking” is a word that has a connotation of either commercial activity or supply of a product (normally of contraband). Further, the word suggests that the person “trafficking” does something positive in the chain of supply, rather than passively provide information. For example, a person who says that cannabis can be obtained from a particular address cannot be charged with dealing or supplying cannabis. Indeed, the Judge himself points out that “engag(ing) in dealing” is an aspect of trafficking. This implies active participation in the provision of the contraband. As far as that word is concerned, the giving of information about a site where DeCSS is available cannot be trafficking, in that providing a link is a form of giving information and directing the user to the source of that information.

The definition of “provide” as “make available” or “furnish” is unremarkable. However, once again the word carries a requirement of active involvement in the process of transfer of a product. It is drawing a long bow to say that by giving information about the location of a product one is engaging in providing the product.

The Judge then moves to the words “otherwise traffic in” as modifiers of the words “traffic” and “provide”. He says that the true definition means that one who presents, holds out or makes DeCSS available, knowing its nature and for the purpose of allowing others to acquire it is in breach.

Then the concept of “functional equivalence” is introduced. By providing links to sites where DeCSS is available or by which DeCSS may be obtained, the defendants were engaged in the “functional equivalent” of transferring the code to the user themselves. The terms “functional equivalent” makes its first appearance in the discussion but is not in any way defined. Symbolism, expression and functionality are terms that are well known in copyright law as aspects of the “idea/expression dichotomy”. It seems that the Judge has used the phrase as a convenient way of making the defendants liable where on a rigorous interpretation of the statute such liability does not exist.

Links — Kaplan J’s approach

A link provides information about where the programs may be located. This is rather like a phonebook address or a footnote in that it directs the user to a location. It is the webmaster of that location who actively engages in the act of supply. The use of the term “functional equivalent” suggests that by providing a link to another site, the link provider is a provider of the software. That defies reality and the clear interpretation of the language of the statute that neither directly nor by implication allows the insertion or utilisation of the concept of functional equivalence.

Links to 2600 and its mirror as well as a number of other sites that could lead to DeCSS were available via no less an organ than the New York Times online in an article in the Cyberlaw Journal for 16 June 2000 entitled “Is linking illegal?”.[36]

The Judge would exempt the New York Times from the functional equivalent of transferring the code by providing such links for the reasons associated with his discussion of the availability of DeCSS via the Los Angeles Times. His sole justification for differentiating the actions of the defendants from those of the Los Angeles Times and New York Times was a matter of motive. Clearly he was incensed by what the defendants described as “electronic civil disobedience” and was prepared to extend the language of the statute to apply what was a punitive application of the remedy of injunctive relief when the appropriate remedy may have been a consideration of contempt of Court. It is doubtful, however, that such remedy may have been applicable.

There can be no difference between what the New York Times did and what the defendants did. They both provided information. The effect is that those using the links of either source may be provided with DeCSS. The issue of motive is irrelevant. DeCSS may still be obtained. If the Judge were to be consistent, the New York Times is as culpable as the defendants.

First Amendment, jurisdictional and technical issues[37]

Judge Kaplan’s consideration of the applicability of the First Amendment to the defendant’s linking was as follows.[38]

Judge Kaplan considered the applicability of the First Amendment to linking. He started by observing that the DMCA applies to links deliberately created by a website operator for the purpose of disseminating technology that enables circumvention of access controls on copyrighted works.

He likened links to road signs but observed that links are more functional in that unlike road signs they take one almost instantaneously to the desired destination by the click of a mouse.

His Honour observed that like computer code in general, links have both expressive and functional elements and are within the area of First Amendment concern.

He observed that the application of the DMCA to the type of linking in the case would serve the same government interest as its application to the posting by the defendants of the DeCSS code. He further observed that posting of content and linking amount to very much the same thing and thus the regulation of the linking at issue was unrelated to the suppression of free expression.

Judge Kaplan stated that preventing the defendants from linking to a site in respect of which the plaintiffs could take legal action in any event would advance the statutory purpose of preventing dissemination of circumvention technology.

He noted that links are what unify the world wide web into a single body of knowledge and what makes the web unique; that links are the mainstay of the internet and indispensable to the convenient access to the vast world of information. He observed that they are used in ways that do a great deal that promote the free exchange of ideas and information – a central value of US culture. He noted that anything that would impose strict liability on a website operator for the entire contents of any website to which the operator linked could cause grave constitutional concerns. Website operators could be inhibited from linking for fear of exposure to liability. It was equally clear that exposing those who use links to liability under the DMCA might inhibit their use, as some website operators, confronted with claims that they may have posted circumvention technology falling within the statute, may be more inclined to remove the allegedly offending link rather than test the issue in Court.

Thus, Judge Kaplan viewed with concern the negative effect of a rule permitting liability for or injunctions against internet hyperlinks. He stated, however, that that was not unique to linking. The law relating to defamation provided an analogy. The threat of defamation suits creates the same risk of self-censorship, the same effect for the traditional press as a prohibition of linking to sites containing circumvention technology poses for website operators. In the same way that defamation does not immunise the press from all actions for defamation, DMCA liability cannot utterly immunise website operators from all actions for disseminating circumvention technology. The solution for the problem he decided was the same — the adoption of a standard of culpability sufficiently high to immunise the activity whether it is the publishing of a newspaper or linking, except in cases in which the conduct in question has little or no redeeming constitutional value.

In defamation he pointed out that there is a two-tiered constitutional standard. There may be no liability under the First Amendment for defamation of a public official or a public figure unless a plaintiff proves by clear and convincing evidence that the defendant published the offending statement with knowledge of its falsity or with serious doubt as to its truth. Liability in private figure cases, on the one hand, may not be imposed in the absence of proof at least of negligence. He considered that a similar approach would minimise any detrimental effect here.

Another argument that was advanced was that liability based on linking to another site simply because it contained circumvention technology could be overkill but the Judge considered that the offence under the DMCA had an essential ingredient that was a desire to bring about the dissemination, thus a strong requirement of that forbidden purpose is an essential prerequisite to liability for linking.

Thus Judge Kaplan held that there could be no injunction against, nor liability for linking to a site containing circumvention technology — the offering of which is unlawful under the DMCA — without clear and convincing evidence that those responsible for the link:

(a) know at the relevant time that the offending material is on the link-to site;

(b)    know that it is a circumvention technology that may not lawfully be offered; and

(c) create or maintain the link for the purpose of disseminating that technology.

The Judge found that the plaintiffs had established by clear and convincing evidence that these criteria had been fulfilled and that the anti-linking injunction on the facts did no violence to the First Amendment.

There are five issues that arise out of this section of the decision.

1. Content-based or content-neutral? The first issue relates to a point that arises earlier in a consideration of whether DeCSS is entitled to First Amendment protection. In essence, the Judge distinguished between content-based speech (which will receive strict scrutiny and protection — the issue being the protection of what is being said) and content-neutral speech (where restrictions have nothing to do with expression and a less exacting standard is applied because the restrictions are not motivated by a desire to limit the message). He considered that the application of the Digital Millennium Copyright Act (DMCA) was a content-neutral form of regulation. He found that DeCSS has a functional non-speech aspect which is to decrypt CSS files. He found that the anti-trafficking provisions of the DMCA had nothing to do with restricting the ideas of programmers, but everything to do with functionality. The provisions also furthered an important governmental interest in protected copyrighted works from the expanded risk of piracy in the digital age.

There may well be subtleties in First Amendment jurisprudence that effectively challenge these conclusions but it appears that the Judge, in considering the tensions that arise between First Amendment speech protections and the interests of copyright holders, is construing more heavily in favour of the importance of copyright protection over the importance of free expression. In addition, in his consideration he is implicitly expressing unjustified fears of a digital future which shall be dealt with at a later stage.

2. Navigation on the web. The second issue is the recognition of the importance of links as a means of navigation around the world wide web and the utility of links that take the user straight to the information sought. Much of what the Judge says in this regard is related to his findings as to the applicability of the First Amendment to DeCSS. He uses the same approach to links as he does to DeCSS in finding that they are not forms of content-based expression but are in fact content-neutral, linking as they do to sites where DeCSS (content-neutral expression) may be downloaded. This means that a less rigorous test is applied, and therein lays a serious problem if this case has precedent value or is upheld on appeal.

Simply put, links will not be entitled to the strict scrutiny available to content-based speech, and judicial regulation of linking on the internet will be substantially increased in all areas — not just that of copyright protection. Although the Judge is dealing with a copyright case and the DMCA, his findings on the applicability of the First Amendment to links cannot be so narrowly construed. Thus, the potential negative effect on linking on the internet is heightened.

In his consideration of linking the Judge applies an interesting test that seems to be based on the intention of the linker. Rather than consider a link as a means of conveying information and connecting the user to the source, the Judge views the motive for the link as determinative of whether or not the linker is entitled to First Amendment protection. In a piece of legislation that does not, in the sections referred to in the decision, contain a concept of principals and parties to breaches of the legislation, the Judge is engrafting a concept of party to a breach by developing a consideration of motive for linking. He acknowledges that there may be no injunction nor liability for linking to a DeCSS site unless there is clear and convincing evidence that those responsible for the link:

•    know at the relevant time that the offending material is on the linked-to site,

•    know that it is circumvention technology that may not lawfully be offered, and

•    create or maintain the link for the purpose of disseminating that technology.

Thus he says that links may be protected unless the motive is impure. He has cast his criteria within the context of the DMCA, but it is quite clear that other criteria can be applied to specific cases as and when they arise.

3. The content neutrality of links? The third issue arises as part of the second. The world wide web is synonymous with the access to information that the internet provides and is built on links as a fundamental part of its architecture. Any rule that inhibits linking could retard the use and development of the web. Can links be considered as purely content-neutral? Or should they be considered as signposts to further information sources and as such carry within them an information-bearing or content-based element that would entitle them to First Amendment protection? Admittedly links contain within them a functional aspect, but that should not be allowed to obscure other aspects inherent within them.[39]

Without referring specifically to the cases, the approach of the 3rd Circuit Court of Appeals[40] and the Supreme Court[41] in Reno v ACLU was to accord to aspects of the internet protection based on the nature of the continuing dialogue that pervades this essentially communicative environment. Part of the facilitation of this dialogue is links. In fact the rise of the world wide web has made the http:// protocol as synonymous with the internet as TCP\IP and is as significant in the development of internet communication as, for example, the mechanisation of Gutenberg’s printing press.  Thus to relegate the link to the level of content-neutral speech underestimates its significance in the process of communication of ideas. If one accords a strict scrutiny test to links, as one must in considering content-based speech, any interference with links must be an interference with a significant aspect of free speech on the internet.

4. Extraterritorial effect of the decision – The real significance of an anti-linking injunction would not be with US websites subject to the DMCA, but with foreign sites that arguably are not subject to it and not subject to suit here. An anti-linking injunction to that extent would have a significant impact and thus materially advance a substantial governmental purpose.”[42]

In making this comment the Judge is recognising the extraterritorial effect that his decision will have on the ability to link to foreign websites. In the borderless world of the internet one may become increasingly concerned at decisions of domestic Courts that may have an impact on perfectly legitimate acts in other jurisdictions.[43] Although there is ample authority to the effect that the internet functions in the real world and should not be ruled by some sort of “virtual governance”, nevertheless, domestic Courts must be aware that in many cases involving this world-wide, international and borderless medium, the ramifications of a decision may extend far beyond domestic borders and have a significant effect on those within other jurisdictions. In a world where imperialism is a now derogatory term, one would be concerned to see the rise of a “virtual” or “electronic” imperialism where one country, perhaps unintentionally, extended its rules and legal values beyond its territory.

In the context of the internet, an injunction restraining the publication of links ceases to have local application, unless some form of technical device can be provided that prohibits access to the linked sites from geographically based IP numbers, as in the case of the Havana House Cigars weblink, where access to the New Zealand-based site was disabled for those attempting to link from New Zealand, based on concerns about breaches of laws relating to advertisement of tobacco products.[44] The site, however, was accessible to those from countries other than New Zealand.[45]

5. Value judgments and technological misunderstandings. The final issue that arises out of the decision in Universal City Studios v Reimerdes and Corley[46] is referred to in the Judge’s introductory remarks and essentially sets the stage for what follows in his consideration of the legislation and the actions of the defendants:[47]

“In an era in which the transmission of computer viruses — which, like DeCSS, are simply computer code and thus to some degree expressive — can disable systems upon which the nation depends and in which other computer code also is capable of inflicting other harm, society must be able to regulate the use and dissemination of code in appropriate circumstances. The Constitution, after all, is a framework for building a just and democratic society. It is not a suicide pact.”

Throughout the decision there is a negative spin placed on the digital environment and the danger to established order (particularly in the intellectual property field) that this environment presents. The starting point with an expression of concern about computer viruses is well founded. The statement that viruses consist of computer code is factually correct. The equating of computer viruses with DeCSS, a decryption program, is a long leap and one, with respect, that cannot be sustained. DeCSS does not disable computer systems upon which the nation depends. Comments about the importance of computer systems appear at a later stage in Judge Kaplan’s decision:[48]

“Society increasingly depends upon technological means of controlling access to digital files and systems, whether they are military computers, bank records, academic records, copyrighted works or something else entirely. There are far too many who, given any opportunity, will bypass those security measures, some for the sheer joy of doing it, some for innocuous reasons, and others for more malevolent purposes. Given the virtually instantaneous and worldwide dissemination widely available via the Internet, the only rational assumption is that once a computer program capable of bypassing such an access control system is disseminated, it will be used.”

Perhaps the Judge was excessively concerned with the activities of Corley and others involved in the past with 2600.com. His fear of the malevolent hacker is obvious and well founded.[49] However, he refers to those who attempt to access systems for malevolent purposes. Those who devised DeCSS were not so destructively minded. Perhaps he was influenced by his perceptions of the activities of Corley as part of his motive-based approach to the posting on links. He describes them in the following way:[50]

“Defendant Eric Corley is viewed as a leader of the computer hacker community and goes by the name Emmanuel Goldstein, after the leader of the underground in George Orwell’s classic, 1984. He and his company, defendant 2600 Enterprises, Inc, together publish a magazine called 2600: The Hacker Quarterly, which Corley founded in 1984, and which is something of a bible to the hacker community. The name “2600” was derived from the fact that hackers in the 1960s found that the transmission of a 2600 hertz tone over a long distance trunk connection gained access to “operator mode” and allowed the user to explore aspects of the telephone system that were not otherwise accessible. Mr Corley chose the name because he regarded it as a “mystical thing,” commemorating something that he evidently admired. Not surprisingly, 2600: The Hacker Quarterly has included articles on such topics as how to steal an internet domain name, access other people’s email, intercept cellular phone calls, and break into the computer systems at Costco stores and Federal Express. One issue contains a guide to the federal criminal justice system for readers charged with computer hacking. In addition, defendants operate a website located at <http://www.2600.com&gt; (“2600.com”), which is managed primarily by Mr Corley and has been in existence since 1995.

Prior to January 2000, when this action was commenced, defendants posted the source and object code for DeCSS on the 2600.com website, from which they could be downloaded easily. At that time, 2600.com contained also a list of links to other websites purporting to post DeCSS.”

The Judge went on to describe some of Corley’s actions after litigation commenced. He noted the defendants did not present affidavits of evidence at the hearing and that the Court granted a preliminary injunction to prevent the defendants from posting DeCSS. The defendants then removed DeCSS from their website but in the name of “electronic civil disobedience” they did not remove links to other websites that allegedly offered DeCSS. The list of these websites grew to nearly 500 by July 2000 and with reference to the lawsuit carried the messages “Stop the MPAA” and “We have to face the possibility that we could be forced into submission. For that reason it’s especially important that as many of you as possible, all throughout the world, take a stand and mirror these files.”[51]

The Judge noted that the defendants were trying to hinder the plaintiff’s case as much as possible as some of the links on the mirror list allowed the user to download DeCSS and successfully decrypt a CSS-encrypted DVD.

It seems that the Judge allowed his perception of Corley and defendants as hackers bent on the invasion and destruction of computer systems to be transferred to the particular (and less threatening) activity in this case. There can be no similarity between DeCSS and a system that allows one to access the Pentagon other than that they may share the same programming language. It appears the Court was offended by the use of links as a means of circumventing the Court order and was determined to deal with the defendants in a punitive way by an expansive interpretation of the legislation, and the introduction of the functional equivalence test.

6.3             Universal City Studios v Reimerdes and Corley — the appeal

Not surprisingly there was an appeal against Judge Kaplan’s decision. The appellant was represented by Kathleen Sullivan, Dean of Stanford Law School and amici briefs were filed by a number of organisations.

The appellant’s approach was grounded on a First Amendment argument rather than the issue of challenging Kaplan J’s approach to “functional equivalence” or a consideration of the violence done to traditional copyright theory posed by the DMCA. Although the decision as a whole is an interesting one, this discussion is limited to the issue of linking.

Linking

Judge Kaplan’s prohibition of linking to other sites, where DeCSS was available, was considered. The Court considered the nature of hyperlinks and observed that Judge Kaplan had identified speech and non-speech components in hyperlinks. The Court focused on an apparent difference in expression and functionality. The act of linking utilised functionality rather than expression, and that can be done without reference to content, thus rendering the functional aspect of link content neutral. Applying the O’Brien/Ward/Turner[52] analysis for content-neutral regulation, the prohibition served a substantial government interest unrelated to the freedom of expression. The Court observed that a three-step knowledge based test about the effect of the link had to be applied, which required:

Clear and convincing evidence that those responsible for the link:

(a)  know at the relevant time that the offending material is on the linked-to site;

(b) know that it is circumvention technology that may not lawfully be offered; and

(c)  create or maintain the link for the purpose of disseminating that technology.

Although the Court found it unnecessary to consider the test as developed, it rejected the appellant’s contention on the basis that:

[The appellants] had ignored the reality of the functional capacity of decryption computer code and hyperlinks to facilitate instantaneous unauthorized access to copyrighted materials by anyone anywhere in the world. Under the circumstances amply shown by the record, the injunction’s linking prohibition validly regulates the Appellants’ opportunity instantly to enable anyone anywhere to gain unauthorized access to copyrighted movies on DVDs.[53]

Indeed, there is a further irony that arose from the Universal City Studios case itself. In accordance with the injunction, Corley removed the hypertext links from the 2600 website. However, the text of those links remained.  Those who wished to access the sites merely needed to transcribe the URL into the File\Open dialogue of a browser and the site could be reached. Thus the information remains without the actual linking function. This emphasises the fallacy of considering a link as the functional equivalent of direct access from the 2600 site. Indeed, it is likely that the Court could run into serious First Amendment issues if it tried to enjoin Corley from publishing the text of the links. Thus, this emphasises the care that must be adopted in addressing novel technological concepts.


[1]        David Harvey internet.co.nz  2nd ed (LexisNexis, Wellington 2005)

[2]        [2011] SCC 47

[3]           487 F.3d 701 (2007)

[4]           Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retreiver Sverige AB http://curia.europa.eu/juris/document/document.jsf?text=&docid=130286&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=1258343 (last accessed 19 March 2013). For the submission see http://www.ivir.nl/news/European_Copyright_Society_Opinion_on_Svensson.pdf (last accessed 19 March 2013).

[5]           [2000] WL 1160678 SDNY 2000 (17 August 2000), 111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001)

[6]        The issue of linking and framing was considered by Rick Shera in 1998  in a post-graduate thesis entitled Linking, Framing and Copying – A New Zealand Perspective.  http://www.lojo.co.nz/news/Internet-Linking-and-copyright-A-blast-from-the-past?i=109; http://www.lojo.co.nz/downloads/0070525001361505661.pdf It would be crass and churlish of me not to acknowledge Ricks early ground-breaking contribution to the scholarship in this field

[7]        Geoff McLay, Christopher Murray, Jonathan Orpin New Zealand Law Style Guide (Thomson Reuters, Wellington 2009)

[8]        [2000] WL 1160678 SDNY 2000 (17 August 2000), 111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001) .p 46. Emphases added.

[9]        487 F.3d 701 (2007)

[10]      [2011] SCC 47

[11]      H C Auckland, 19 January 1998, CP 344/97 Master Kennedy-Grant

[12]      [2013] EWCA Civ 68

[13]      [2012] NZHC 2352

[14]      [2013] FCA 60

[15]      [2012] VSC 533

[16]      For the position in Australia see Timothy Hughes, “Intellectual Property and Browsing the Web”, in Internet Law Anthology, Sydney, Prospect Media Pty Ltd, 1997) at 55. For the position in the US see Gregory M Luck, “The Implied Licence: An Evolving Defence to Patent Infringement” (1998) IP Litigator US 13.

[17]      No 2: 99-CV-808C US District Court, D Utah, Central Division, 6 December 1999 http://eon.law.harvard.edu/property00/metatags/ULM.html (last accessed 21 March 2013) emphasis added.

[18]      Contributory infringement has developed as a part of US copyright theory. Assuming there is an act of direct infringement, contributory infringement may be found when “[o]ne who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996) (citing Gershwin Publishing Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). See generally Newborn v. Yahoo!, Inc., 391 F.Supp.2d 181 (D.D.C. 2005); Monotype Imaging, Inc. v. Bitstream, Inc., 376 F.Supp.2d 877, 883 (N.D.Ill. 2005).

The knowledge requirement is objective and is satisfied where the defendant knows or has reason to know of the infringing activity. See, e.g., Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923, 933 (N.D. Cal. 1996); Casella v. Morris, 820 F.2d 362, 365 (11th Cir. 1987). However, if a defendant can show that its product was capable of substantial or commercially significant non-infringing uses, then constructive knowledge of the infringement should not be imputed. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984).

With respect to the materiality requirement, the Ninth Circuit has held that providing the site and facilities for known infringing activity is sufficient. Fonovisa, 76 F.3d at 264 (adopting the analysis of Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59 (3rd Cir. 1986)); see also 3 Nimmer § 12.04[A][2][b]. However, some courts have required the participation to be “substantial,” finding the mere fact that equipment or facilities may be used for copyright infringement is not determinative. Apple Computer, Inc. v. Microsoft Corp., 821 F. Supp. 616, 625 (N.D. Cal. 1993), aff’d, 35 F.3d 1435 (9th Cir. 1994); see also Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. at 933; Religious Tech. Ctr. v. Netcom On-line Communications Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995); Perfect 10 v. Visa Int’l Service Ass’n, 2004 WL 1773349, at *4 (N.D.Cal. Aug.5, 2004) (must show “a relationship between the ··· services provided by the [d]efendant[ ] and the alleged infringing activity as opposed to the mere operation of the website businesses.”).

[19]      This factual scenario bears a certain similarity to the actions of Corley in Universal City Studios v Reimerdes 111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001) (Appeal Court Decision F Supp 2d 346) – for discussion see below

[20]      See Religious Tech Ctr v Netcom On-line Commun Servs, Inc, 907 F Supp 1361, 1370, 1372 (ND Cal 1995).

[21]      487 F.3d 701 (2007) 9th Cir. For discussion see below.

[22]      (1997) EMLR 277, (1996) 37 IPR 71.

[23]      In the content of a link as a footnote see Crookes v Newton [2011] SCC 47, [2011] 3 S.C.R. 269 – for discussion  of this case see below.

[24]      James Connolly and Scott Cameron, “Fair Dealing in Webbed Links of Shetland Yarns” 1998, 2 JILT: http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1998_2/connolly/ (last accessed 21 March 2013).

[25]      [1998] NZLJ 41.

[26]      Further analysis of linking is to be found in Cavazos and Miles “Copyright on the WWW; Linking and Liability” (1997) 4 Richmond Journal of Law & Technology http://law.richmond.edu/jolt/v4i2/cavazos.html (last accessed 21 March 2013). As it turned out it was not necessary for the Governor-General to exercise such power and there were amendments to the Copyright Act in 2008 which were the subject of the Copyright (New Technologies) Amendment Act 2008.

[27]      97 Civ 1190 (PKL).

[28]      For details see John Lambrick “Protecting Content in an On-Line Environment” Telecommunication Jnl of Australia Vol 58, Issue 4, p 53; and John Lambrick “Hyperlinking, Framing and Copyright — Waiting for the Dust to Settle” 12 Computers & Law 11 at p 12.

[29]      1997 46 USPQ 2d 2005 (CD Calif 1997) 1998 US Dist LEXIS 2265 (CD Cal 1/30/98). Upheld 1998 WL 417413, unpub’d opinion (9th Cir 7/23/98): http://eon.law.harvard.edu/property99/metatags/1998futu.html (last accessed 21 March 2013).

[30]      Case No 97-3055 DDP (CD Cal, complaint filed, 28 April 1997; amended complaint filed February 1998).

[31]      2000 US Dist LEXIS 4553

[32]      Of course there is a nonsense in what the Judge says. The customer isn’t transferred anywhere. The user remains static. Information is downloaded to a user’s computer. Apart from that technological error the Judge’s comment about linking and reference systems is echoes in Crookes v Newton [2011] SCC 47

[33]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001).

[34]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001), p 46.

[35]      The emphasis is mine.

[36]      Carl Kaplan, “Is linking illegal?” Cyber Law Journal, 16 June 2000: http://www.nytimes.com/library/tech/00/06/cyber/cyberlaw/16law.html (last accessed 21 March 2013).

[37]      Although the First Amendment is a “local ordinance” and the discussion is in terms of the US jurisprudence on the subject of freedom of expression, the developing interest of commentators in the applicability of freedom of speech in the context of copyright makes this discussion relevant.

[38]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001), p 76.

[39]      For further discussion see Crookes v Newton [2011] SCC 47

[40]      929 F Supp 824 (1996).

[41]      521 US 874 (1997).

[42]      Universal City Studios v Reimerdes 111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001). However, a generous view of extraterritorial jurisdiction in many civil and some criminal cases may challenge this comment.

[43]      See LICRA v Yahoo! Order in Summary Proceedings by the Superior Court of Paris rendered on 22 May 2000 by First Deputy Chief Justice Judge Jean-Jacques Gomez http://www.lapres.net/yahweb.html (last accessed 21 March 2013) a

[44]      For a discussion in Wired News see URL below, (last accessed 21 March 2013).http://wired-vig.wired.com/news/politics/0,1283,36612,00.html

[45]      As it happens, the use of resources such as Anonymiser meant that resourceful New Zealanders could still access the site.

[46]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001), p 46.

[47]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001), p 304.

[48]      111 F Supp 2d 294 (SDNY 2000); 273 F 3d 429 (2d Cir NY 2001), p 331.

[49]      For some of the exploits of the early hackers including members of 2600 see Bruce Sterling The Hacker Crackdown: Law and Disorder on the Electronic Frontier New York, Bantam Books, 1992.

[50]      2000 WL 1160678 SDNY 2000 (17 August 2000), pp 12–13.

[51]      2000 WL 1160678 SDNY 2000 (17 August 2000), pp 21–22.

[52]      A content-neutral restriction may be permitted if it serves a substantial government interest, unrelated to the suppression of free expression and the regulation is narrowly tailored which “in this context requires . . . that the means chosen do not ‘burden substantially more speech than is necessary to further the government’s legitimate interests.’” Universal City Studios v Reimerdes and Corley 111 F Supp 2d 294 (SDNY 2000), 273F 3d 429 (2d Cir NY 2001) at 49; Turner Broadcasting System, Inc v FCC (1994) 512 US 622, 662, Regulation of expression is content-neutral if the regulation is justified without reference to the content of the regulated speech Hill v Colorado, 530 US 703, 720, 147 L Ed 2d 597, 120 S Ct 2480 (2000).

[53]      Universal City Studios v Reimerdes and Corley 2000 WL 1160678 SDNY 2000 (17 August 2000) at 70