Google Images: the “copier” not to be copied!

The issue of Google Images thumbnails first arose in two related cases Perfect 10, Inc. v. Google Inc. and Perfect 10, Inc. v. Amazon.com, Inc. which were joined in the Ninth Circuit Court of Appeals (Perfect 10, Inc. v. Amazon.com, Inc./Google Inc., 9th Cir., December 3, 2007, 508 F.3d 1146).

It should be remembered that American legislation has a system of exceptions to copyright, which is very flexible and very different from ours, based on the notion of fair use.

To determine whether or not there is copyright infringement, judges rely on a list of factors set forth in 17 U.S. Code § 107 – Limitations on exclusive rights: Fair Use, namely :

• the purpose of the use of the work and the nature of the use (commercial use, non-profit educational use, etc.) ;
• the nature and value of the copyrighted work ;
• the importance of the borrowing in relation to the whole protected work and ;
• the effects of such use on the relevant market or on the value of the protected work.

The judges therefore make an in concreto assessment to determine whether a person has used protected content fairly or whether, on the contrary, he has crossed the line and violated the author’s exclusive rights to his creation.

In the case involving Google Inc. the judges ruled out infringement of the copyrights held by Perfect 10 by holding that Google’s fair use was justified on the following grounds :

• the use of the works by Google is transformative :
• the work of the company Perfect 10 was used by Google as a redirection platform, to inform the user about the content of the site to which he would be redirected, while the function of the initial creation was entertainment;
• the author has not demonstrated any prejudice, moral or economic, as a result of the takeover of his work by Google.

Fortunately, case law has ruled out copyright infringement. A contrary solution would indeed have called into question many practices of computer platforms, and especially could not have been applied without drastically modifying the information society in which we live.

This pragmatic American approach is, however, rare in French law, which offers a much more protective copyright regime.

Article L.122-4 of the Intellectual Property Code states that ” any representation or reproduction in whole or in part made without the consent of the author or his successors in title or assigns is unlawful. The same applies to the translation, adaptation or transformation, arrangement or reproduction by any art or process.

In a case opposing the Société des Auteurs des Arts Visuels et de l’Image Fixe (SAIF) to Google (CA Paris, Pôle 5, ch. 1, January 26, 2011, RG n° 08/13423), the French judge first retained the application of French law, which was challenged by the defendant, since the dispute concerned the digitization of works by French authors and the plaintiff companies were established in France.

However, despite the application of a more protective copyright law, Google’s liability was dismissed on the basis of Law No. 2004-575 of June 21, 2004 for confidence in the digital economy (LCEN) and its specific provisions for referencing services.

For the Paris Court of Appeal, the use of the protected work does not constitute a representation or a reproduction when the said work is used as a search tool: a line of code establishes a link to an image published by a third party.

From this finding, the judges ruled out the active role of the company Google in the copy of the protected work, since the company only created a path to the content, by indexing the images and creating an algorithm.

Indeed, the judges considered “that by providing this means of consultation the service provider is neutral; that it does not exceed in its referencing service the limits of an intermediary provider, not implementing an active function within the meaning of the LCEN”.

The incorporation of a work into a third party’s Internet page by the technique of transclusion is therefore not in itself considered to be a reproduction of the work and can be freely practiced by the platforms.

For there to be reproduction and representation, the work must have been communicated to the public in a specific technical way, different from those used until then or, failing that, to a new public, which was not taken into account by the copyright owners when they authorized the initial communication of their work to the public (ECJ, 7 December 2006, Sociedad General de Autores y Editores de España v. Rafael Hoteles SA, case C-306/05, points 40 and 42 ; CJEU, 18 March 2010, Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v Divani Akropois Anonimi Xenodocheiaki kai Touristiki Etaireia, case C-136/09 ; CJEU, 7 March 2013, ITV v TVCatchup Ltd, case C-607/11, at 39).

Thus, for the Court of Justice of the European Union (CJEU, October 21, 2014, BestWater international GmbH v. Michael Mebes und Stefan Potsch, Case C-348/13)In the case of thumbnails, it is because the framing technique does not involve a communication to the public within the meaning of Article 3 of the Directive (Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society) that it is not reprehensible.

As soon as a work is freely available on the site to which the Internet link redirects, it must be considered that, when the copyright owners have authorized this communication, they have taken into account all Internet users as the public.

However, the solution is different when the copyright owner has adopted or imposed restrictions against the transclusion of its works.

In a 2021 decision, the CJEU held that a transclusion link, as long as it circumvents protective measures, is likely to constitute a violation of the copyright because it is a question of making the work available to a new public,  subject to prior authorization by the holder of the copyright (CJEU, 9 March 2021, VG Bild-Kunst v. Stiftung Preußischer Kulturbesitz, Case C-392/19).

In principle, the author can demand a royalty for the communication of his work to the public.

However, if it does not circumvent blocking measures, the transclusion technique does not constitute such a communication, so that the author is left with no means to demand such remuneration.

The case of Google thumbnails is indicative of one of the many challenges facing copyright in the digital age.

For a long time, the question was raised as to how Google could pay for “clicks” to content that it did not even produce.

After a long battle, a new directive of April 17, 2019 was adopted (Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the digital single market and amending Directives 96/9/EC and 2001/29/EC).

It aims to allow authors to obtain better remuneration agreements for the distribution of their works on Internet platforms.

Platforms such as Google are now obliged to enter into agreements with right holders providing either for remuneration when uploaded or for the removal of content whose publication does not respect copyright.

The collective management societies SAIF (Société des auteurs des arts visuels et de l’image fixe) and ADAGP (Société des auteurs dans les arts graphiques et plastiques) announced last summer that they had signed a partnership agreement with Google, which included the establishment of a fund for artists and a licensing agreement for the use of their works in Google products.

The ordinance of May 12, 2021 (Ordinance No. 2021-580 of May 12, 2021) transposed the provisions of Articles 17 to 23 of the Directive so that today, under French law, the liability of providers of online content sharing services such as Google may be sought for infringing content uploaded by other users.

Article 17 of the Directive clearly states that a service provider who provides online access to works or other protected matter uploaded by users is performing an act of communication or making available to the public, so that all content must be posted with the prior authorization of the rights holders.

Furthermore, the platform performs an act of representation if it provides access to a work protected by copyright.

Also, it has the obligation :

• to obtain prior authorization from the rights holders;
• to guarantee the unavailability of protected works and to be reactive when a rights holder informs it of the presence of an unauthorized protected work, by blocking access to the copied work, by removing it or by taking any measure to ensure that it is not uploaded in the future and ;
• to provide “its best efforts” to comply with its obligations (Article L. 137-2 of the Intellectual Property Code in force since May 14, 2021).

If the provider has not been previously authorized to disseminate the protected work, and is unable to demonstrate that it has made its best efforts to combat the presence of such infringing content, then the rights holders may bring an action against it under the counterfeit.

The transposition of this directive also strengthens the protection of authors by giving them a right to remuneration by the online content sharing platform, which must be appropriate and proportional (Article 18 of Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019).

Platforms are also required to be transparent.

The directive also provides for a mechanism to readjust the remuneration as well as a possibility of termination in case of total absence of exploitation of the work by the platform.

As the agreements remain confidential, it remains to be seen whether in practice authors and their representatives manage to obtain adequate protection and/or compensation from Google.