ein nline - LL.M. in Intellectual Property

Transcription

+(,121/,1(
Citation: 57 J. Copyright Soc'y U.S.A. 59 2009-2010
Content downloaded/printed from
HeinOnline (http://heinonline.org)
Tue Aug 4 04:12:46 2015
-- Your use of this HeinOnline PDF indicates your acceptance
of HeinOnline's Terms and Conditions of the license
agreement available at http://heinonline.org/HOL/License
-- The search text of this PDF is generated from
uncorrected OCR text.
-- To obtain permission to use this article beyond the scope
of your HeinOnline license, please use:
https://www.copyright.com/ccc/basicSearch.do?
&operation=go&searchType=0
&lastSearch=simple&all=on&titleOrStdNo=0886-3520
Simultaneous Cable Retransmission
59
THE CONTROVERSY OF SIMULTANEOUS CABLE
RETRANSMISSION TO HOTEL ROOMS UNDER
INTERNATIONAL AND EUROPEAN COPYRIGHT LAWS
by
DR. MAKEEN
F.
MAKEEN*
INTRODUCTION
In the copyright field, broadcasting and retransmission by cable are
recognised as two separate and independent prohibited acts. Although
this principle is followed under the Berne Convention for the protection of
literary and artistic works,' and at least theoretically under the national
laws of the Berne members, the issue of simultaneous cable retransmission
to hotel rooms has always been controversial. Ostensibly, the controversy
seems to have stemmed from the absence of a specific provision under
international copyright treaties to cover that type of use. In reality, however, the controversy stems mainly from the different approaches adopted
by national laws towards the general cable retransmission right. 2 As a result, considerable differences between the various national copyright laws
exist with respect to the simultaneous cable retransmission to hotel rooms.
This article examines the simultaneous cable retransmission to hotel
rooms within the EC and argues that a new common position may be
emerging. In doing so, it is divided into two parts. Whilst Part I deals with
simultaneous cable retransmission to hotel rooms under the relevant international treaties, Part II focuses on the simultaneous cable retransmission
to hotel rooms within the EC.
*Lecturer in Commercial Law at SOAS, University of London. The author would
like to thank Dr. Tanya Aplin and Professor Adrian Sterling for their comments on
earlier draft.
1 Berne Convention for the Protection of Literary and Artistic Works, adopted
Sept. 9, 1886, S. TREATY Doc. No. 99-27, 1161 U.N.T.S. 3. Article 17 of the
1886 Act provided for periodic revisions, and these have taken place
roughly every twenty years. The first revision took place in Berlin in 1908
(the Berlin Act), followed by Rome in 1928 (the Rome Act), Brussels in
1948 (the Brussels Act), Stockholm in 1967 (the Stockholm Act), and Paris
in 1971 (the Paris Act). It is also worth noting that an additional act was
attached to the Convention in 1896, together with an additional protocol in
1914. In December 1996, a new treaty known as the WIPO Copyright
Treaty came into existence to complement the Berne Convention.
2 For example, the scope of the general cable retransmission right under the
U.S. Copyright Act of 1976 is severely restricted and unsurprisingly, therefore, by virtue of Section 111(a)(1) of the Act, Congress elected to exempt
the simultaneous cable retransmission to hotel rooms from any copyright
liability.
60
Journal, Copyright Society of the U.S.A.
The first part of this article comprises three sections. Section A gives
a general overview of the different types of communication by cable.
Since the EC is a member of TRIPs, which in turn incorporates articles
1-21 of the Berne Convention, Section B deals with the general provision
governing cable retransmission under the Berne Convention and its application to the simultaneous cable retransmission to hotel rooms. Section C
discusses the application of the WIPO Copyright Treaty (1996) to the simultaneous cable retransmission to hotel rooms.
Part II consists of two sections, which in turn examines the issue
under the national laws of the most cabled countries of the EC (Section
A) and the emerging common position at the EC level (Section B).
I.
SIMULTANEOUS CABLE RETRANSMISSION TO HOTEL
ROOMS UNDER INTERNATIONAL COPYRIGHT
TREATIES
A.
Overview of Communication by Cable Technology
There are many methods of communicating entertainment and data
from a source to multiple destinations. Terrestrial broadcasting is the most
familiar. Another method that is fast gaining ground is cable. The use of
cable is based on a system whereby signals are distributed from the cable
operator head end or point of origin to multiple points via wire.3
Cable has many advantages over wireless broadcasting. Cable provides better pictures as it is subjected to less interference than wireless
broadcasting, which is normally affected by static. Cable is also essential if
the broadcast programmes are to be received with acceptable quality in
particular areas where ordinary receivable broadcast signals are of very
poor quality, due to the presence of intervening hills or high buildings.4
Furthermore, cable retransmission of satellite broadcasts is an option for
those who prefer to avoid the hardware costs of a dish and a decoder.
Moreover, in some areas, to avoid forests of antennae, the use of individual aerials is banned on aesthetic or amenity grounds, and thus the use of
cable becomes inevitable.
Cable can be used to originate programmes (cable-originated
programmes) or to retransmit broadcast programmes to the public (cable
retransmission). Cable retransmission, in turn, can be divided into two
3
As early as 1924, cable was used for communication of radio programmes. See
Robert S. Roberts, Cable and Optical Fibre Transmission, in 2 TELEVISION
ENGINEERING - BROADCASTS, CABLE AND SATELLITE 173 (Robert S. Rob-
4
erts ed., 1985).
These low lying areas that are surrounded by mountains or high buildings are
normally referred to as "shadow zones."
61
different types; deferred or delayed cable retransmission5 and simultaneous cable retransmission. For the purpose of this article simultaneous
cable retransmission means the reception and immediate retransmission
by cable of a complete broadcast programme, embodying a work, without
fixing, recording or introducing any change therein.
Similarly, simultaneous cable retransmission can be divided into two
different types: simultaneous cable retransmission to the general public or
simultaneous cable retransmission to a specific segment of the public in
closed environments such as hotels, prisons, schools . . . etc. 6 This article
focuses on the latter type and more precisely on simultaneous cable retransmission of broadcasts to hotel guestrooms .
For a number of reasons, the management of a hotel may decide to
use a collective antenna, through which the signals are picked and simultaneously retransmitted by cable to hotel rooms. First, to avoid the expenditure involved in having to install a forest of individual antennae, where
each is to serve a single room. Secondly, it enhances reception in low areas that are surrounded by tall buildings. Thirdly, through the use of a
collective antenna the management ensures that all hotel rooms receive
signals of similar quality. Fourthly, the management may decide to use the
collective antenna to capture distant signals, as opposed to local signals,
and make them available to its guests in their hotel rooms.
B.
Cable Retransmission Under the Berne Convention
Although a number of fragmented provisions under the Berne Convention cover the communication of works in non-material form,' the
Convention does not deal specifically with cable retransmission to hotel
5
6
7
Deferred cable retransmission normally triggers the application of the reproduction right, as the broadcast signals are recorded and later retransmitted
to receiving sets. This, however, falls outside the scope of this article.
The earliest type of cable retransmission of television broadcast dates from
1948. See WILLIAM GRANT, CABLE TELEVISION xiii (1983). These early
types of cable retransmission took the form of community antenna television service (CATV), which were constructed in small towns and villages
where the off-air television reception was either not possible or very poor
because of transmission distances or geographical obstacles such as mountains. The CATV service required the construction of an elaborate antenna
array on a high hilltop or the use of a high tower structure to derive off-air
signals from television broadcasting stations. The received signals were
then distributed throughout the community to individual houses owning television receivers connected by wire to the antenna.
Communication in public or public performance is covered by Articles
11(1)(i), 13ter(1)(i) and 14(1)(ii); broadcasting by Article lbis(1)(i); cabling by Articles 11(1)(ii), 11ter (1)(ii), and 14(1)(ii); reception in public by
Article llbis(1)(iii); and general retransmission by cable by Article 11bis
(1)(ii).
62
rooms. Therefore this Section deals with the general cable retransmission
provision under the Berne Convention and its implication on cable retransmission to hotel rooms.
As a general principle under the Convention, a single rendition can
lead to multiple prohibited acts. This is mainly so, because the dissemination of works in non material form is governed by the criterion of "new
public." As such, every act of exploitation that communicates the rendition to a new potential audience is considered to be a separate and independent prohibited act. Accordingly, the Convention recognises public
performance, broadcasting and reception in public as separate exclusive
rights.8
Regrettably, the Convention does not follow this general criterion in
relation to the simultaneous cable retransmission right of Article
llbis(l)(ii). This provision grants authors of literary and artistic works the
exclusive right of authorising: "(ii) any communication to the public by
wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organisation other than the original one." Thus,
the general criterion of "new public," which requires the author's consent
for every act of communication to a public not intended by the original
rendition, was sacrificed and instead the stricter principle of "organisation
other than the original one" was adopted.
For a better understanding of this controversial criterion, which is frequently invoked within the context of cable retransmission to hotel rooms,
the history of the cable retransmission provision as well as its modern interpretation need to be examined.
1.
History of Article 11bis(1) (ii)
Although, by 1948, there was only relatively small scale use of cable
retransmission, the Brussels Revision Conference of the Berne Convention did amend Article 11bis, which under the Rome Act of 1928 was
solely concerned with broadcasting, to deal specifically with this
technology. 9
The original proposal of the Belgian Government and the Bureaux
Internationaux Rdunis pour la Protection de la Propri6td Intellectuelle
(BIRPI) for the Brussels Conference would have embodied the "new public" criterion, giving the author the exclusive right to authorise "any new
8 Articles 11(1)(i), 13ter(1)(i) and 14(1)(ii) cover the public performance, Article llbis(1)(i) covers broadcasting and llbis(1)(iii) covers reception in
public.
9 For the history and evolution of Article 11bis of the Berne Convention, see
MAKEEN F. MAKEEN, COPYRIGHT IN A GLOBAL INFORMATION SOCIETY:
THE SCOPE OF COPYRIGHT PROTECTION UNDER INTERNATIONAL,
AND FRENCH LAw 66-78 (2000).
US, UK
63
communication, whether over wires or not, of the work broadcast."' 0 The
proposal would have had the effect of making simultaneous cable retransmission and simultaneous rebroadcasting subject to the author's authorisation when such retransmission or rebroadcast served to communicate the
work broadcast to a new public." Some delegations objected to this criterion on the grounds that any kind of retransmission can be classified as
reaching a new audience that could not otherwise be reached, and alternatively, it was not possible to investigate every installation used by a broadcasting organisation to determine whether it allowed a new public
communication.12
Furthermore, the delegations of Monaco and the Netherlands expressed the view that, for economic or other reasons, a broadcasting organisation that held the broadcasting right might prefer to serve a section
of its audience via cable. In such a case, in their view, applying the "new
public" criterion would subject such communication by cable to the author's further licence, a result that might affect the development of the
new cable technology.' 3
Accordingly, the two delegations supported by the delegation of Luxembourg proposed that authorisation to broadcast a work should cover
any retransmission, whether by wire or not, made by the original broadcasting organisation.14 This proposal, by implication, would have required
authors to take cable retransmission by the original broadcaster into account when licensing the broadcasting right. The French delegation, however, sought a more explicit formula and proposed that "the author has
the exclusive right to authorise any communication to the public, by wire
or by wireless means, of the work broadcast, if this communication goes
beyond the frame of the original contractual provision."' 5 Unsurprisingly,
the French proposal did not gain enough support; the majority regarded
contractual issues to fall outside the scope of the provisions of the
Convention.
Finally, a new proposal submitted by the Belgian delegation and
adopted by the Conference, provided that any communication to the pub-
1o
5 AU 26 JUIN 1948, at
270 (1951).
11 Id. at 265.
12 Id. at 273, 275, 278-79, 289. The Subcommittee on Broadcasting and MechaniACTES DE LA CONFtRENCE RIUNIE A BRUXELLES, Du
cal Instrument of the Brussels Conference also found the criterion of "new
public communication" to be vague. Id. at 114.
13 Id. at 275.
14 "The right to broadcast a work covers the use of any process and means of
sending out and transmitting sounds and images exploited by the broadcasting organisation granted the right." Id. at 278-79. For the Luxembourg position, see id. at 289.
15 Id. at 290.
64
lic, whether over wires or not, would be subject to the author's authorisation when made by an organisation other than the original authorised
broadcasting organisation. This proposal, as Professor Michel M. Walter
correctly pointed out, "corresponded to the solution proposed by Monaco
and the Netherlands which, a contrario,also required the author's consent
for any rediffusion made by a body other than the one originally
authorized." 16
Thus, the adopted text of Article llbis(1)(ii) employs the notion of
"different use" to distinguish between broadcasting and retransmission by
cable. According to the adopted provision, the only recognised exception
to that concept is the different use, i.e., cable retransmission, made by the
original broadcasting organization. Accordingly, under the Convention
there is a rebuttable presumption that an authorisation to broadcast, in the
absence of any agreement to the contrary, will cover the use of all broadcasting installations, whether wireless or wire, of the same broadcaster.17
This disposes of the fear that authors one day might argue that each relay
by the original broadcaster constitutes a rebroadcast requiring fresh consent and a new royalty.
As such, the simultaneous cable retransmission right comes into play
only when carried out by an organisation other than the original one, irrespective of whether the retransmission was made to a new public or to a
public that was reachable by the original broadcast. Thus, under the
Berne Convention, the legislative history of Article llbis(1)(ii), demonstrates that the criterion of 'new public' was explicitly rejected in respect
of simultaneous cable retransmission and replaced by that of "organization other than the original one."
2.
Interpretation of the Cable Retransmission Provision
Despite the clarity of the text of Article llbis(1)(ii), and the agreement of most international scholars that the only criterion applicable to
cable retransmission is "organisation other than the original one,"18 some
16
Michel M. Walter, Telediffusion and Wired-Distribution Systems: Berne Convention and Copyright Legislation in Europe, 10 COPYRIGHT 302, 304
(1974).
17
In
this connection, see ACTES DE LA CONF8RENCE RtUNIE A BRUXELLES,
supra note 10, at 289.
18 See Henri Desbois & Andr6 Franqon, Copyright and the Disseminationby Wire
of Radio and Television Programmes, 86 REV. INT'L DU DROIT D'AUTEUR
3, 50-52 (1975); Victor Hazan, The "Body Other than the Original Broadcaster"in Cable Transmissions - Article 11bis(1) (i) of the Berne Convention,
20 COPYRIGHT 228, 236 (1984); Walter, supra note 16, at 304; Frank Gotzen,
Cable Television and Copyright in Belgium, 18 COPYRIGHT 307, 310 (1982);
WIPO, UNESCO & ILO, Annotated Principles of Protection of Authors,
Performers, Producers of Phonograms and Broadcasting Organisations in
65
scholars,19 supported by decisions of some national courts, 20 rejected this
criterion and interpreted the sub-paragraph in a way the text cannot support. Those who rejected the criterion of "organisation other than the
original one" did so because such criterion, in their view, might lead to
double payment for the author in respect of the same audience, when, for
example, the original broadcaster for effective reception requests a cable
operator to retransmit the work broadcast within the service area of that
broadcaster. 2 1 As a result, in face of the clear wording of the new subparagraph, and in order to avoid what they perceived to be the possibility
of double payment, a new "service zone" theory was developed.
Connection with Distribution of Programmes by Cable para. 62, 20 CopyRIGHT 131, 148 (1984); Ulrich Uchtenhagen, Broadcasting and Copyright,
WIPO/CNR/CA/94/8, at 6; Mihily Ficsor, Primary and Secondary Broadcasting in the Berne Convention and in the PreparatoryWorks of Possible
Protocol to the Berne Convention, in EL DERECHO DE DIFUSION POR RADIO Y TELEVISI6N 44 (1995). Denise Gaudel initially hesitated (see Denise
Gaudel Concerning Teledistribution, 81 REV. INT'L DU DROIT D'AUTEUR
119 (1974)), but later adopted "organisation other than the original one" as
the sole determinative criterion. See Denise Gaudel, Teledistribution, 90
REV. INT'L Du DROIT D'AUTEUR 86, 124 (1976).
19 Robert Dittrich, On the Interpretationof Article 1lbis(1) and (2) of the Berne
Convention, 18 COPYRIGHT 294 (1982); Dietrich Reimer, The Right of Public Performance in View of Technological Advancement, 10 IIC: INT'L REV.
OF INTELL. PROP. & COMPETITION L. 541, 547, 559 (1979); Werner
Rumphorst, Cable Distribution of Broadcasts, 19 COPYRIGHT 301 (1983).
20 See GEMA v. Deutsche Bundespost (Fed. Sup. Ct. 1980) (W. Germany), 13
ICC 104 (1982). For the same approach, see Statement made by the Delegation of the Federal Republic of Germany, Report of the Subcommittees of
the Executive Committee of the Berne Union, of the Intergovernmental Committee of the Universal Copyright Convention and of the Intergovernmental
Committee of the Rome Convention on Television by Cable, 20 COPYRIGHT
184, 202-05 (1984) [hereinafter Subcommittee Report].
21 Werner Rumphorst expressed the view that:
[I]in the case of simultaneous and unchanged cable distribution of broadcasts within the originating organisation's service area the author's
authorisation of the broadcast must be interpreted as including such cable
communication to audiences which in fact have already been taken into
account when assessing the amount of remuneration due to the author for
the broadcast of his work. Otherwise the author would receive a double
remuneration in these cases, whereas in reality the audiences in question
do not receive the broadcast but only its communication by cable.
Rumphorst, supra note 19, at 302 n.9.
66
a)
The Service Zone Theory 22
Robert Dittrich, the champion of the service zone theory, defined the
service zone as the legally assigned area of responsibility in the case of
broadcasting organisations under public law, and in the case of broadcasting organisations set up under private law by their statutes.23 According
to this theory any relaying of a broadcast by wire within that service area is
to be considered "a mere act of reception, even if reception is thereby
improved or indeed made possible where previously it was not owing to a
transmission shadow." 24
Dittrich summarised his theory by stating that the service zone criterion "gives the broadcasting organisation a free hand in the choice of
available technology to fulfil its legal obligation or, as the case may be, to
exercise its intention, to service a particular area. It makes no difference
whether this is done by extending the existing network or transmitters or
by the installation of community antennae, regardless of whether the community antennae are installed and/or operated by the broadcasting organisation itself, by others alone or by others with financial or organisational
assistance from the broadcasting organization." 25 He also cited the national laws of some Berne countries, such as the United Kingdom 1956
Copyright Act section 40 (3) - (5), and the former laws of Ireland and
South Africa to support his view that this approach conforms with the
Berne Convention.
b)
The Service Zone Theory is a Concept Foreign to the Berne
Convention
There are several reasons why the service zone theory should be rejected. First, the service zone theory goes against the clear wording of
Article llbis(1)(ii). Secondly, it amounts to a subtle attempt to introduce
through the backdoor the "new public" criterion, which was emphatically
rejected during the Brussels Conference. Thirdly, the service zone theory
22 This is also known as the "service area" theory. For copyright purposes, some
tried to make a distinction between the "service zone or area" and the "direct reception zone or area." Although this distinction was prevalent among
German-speaking countries, it did not gain enough support elsewhere.
Therefore, this article will use the term "service zone" to cover the service
area, direct reception area and operating area of the transmitter. For the
distinction, see Subcommittee Report, supra note 20, at 202 (reporting the
views of the Delegation of the Federal Republic of Germany as submitted
to the meeting of the WIPO, UNESCO and ILO subcommittees of the Executive Committees, December 5-7, 1983); see also Robert Dittrich, Cable
Television and Copyright Problems, 15 COPYRIGHT 26, 31 (1979).
23 Dittrich, supra note 19, at 300.
24 Id. For the same opinion, see Reimer, supra note 19, at 547, 559.
25 Dittrich, supra note 19, at 301.
67
would be in conflict with the prohibition of Article llbis(1)(iii), 2 6 as although the one who receives the broadcast work in public is naturally
within the service area of the broadcast, this public reception amounts to a
separate and independent prohibited act from that of broadcasting under
the Berne Convention.
Fourthly, in response to the dilemma of "double payment," it is suggested that this argument takes as its point of departure the criterion of
"new public," which was unequivocally rejected by the Brussels Conference. However, the text is based on the concept of "different use," the
only recognised exception to that concept being the different use (cable
retransmission) that is made by the original broadcasting organisation.
Accordingly, since broadcasting and cabling distribution are two different
types of use, the double payment issue should not arise.
Fifthly, in practice the service zone theory might lead to the undesirable result that once the author grants one broadcaster the right to broadcast the work within a certain area, any broadcaster or cable operator
operating within the same area could freely retransmit that work. In the
modern world, where several broadcasters operate in the same area, this
result might not only lead to reducing the royalty fee paid by the original
broadcaster, as no exclusivity would be guaranteed, but could also deter a
broadcaster from being the one to obtain the copyright licence and pay a
royalty fee when the same broadcaster might otherwise be able to retransmit the same freely. This might force authors to increase the licence fees
for the original broadcast considerably, since they would not be able to
receive further payment from any rebroadcast or retransmission by
cable. 27
Sixthly, the service zone theory ignores another contradiction that
might result from its application: by virtue of Article 13 of the Rome Convention of 1961,28 a broadcasting organisation would be protected against
the retransmission of its programmes by another organisation within the
same service area; authors, however, would have no such right.
Neither the legislative history nor the adopted text, supports the service zone theory. It is submitted that the service zone theory is merely an
attempt for re-introducing the "new public" criterion, through the backdoor. As discussed above, this criterion was not only rejected by the Brus26
27
28
Article l1bis(1)(iii) states: "Authors of literary and artistic works shall enjoy
the exclusive right of authorizing: the public communication by loudspeaker
or any other analogous instrument transmitting, by signs, sounds or images,
the broadcast of the work."
See Hazan, supra note 18, at 234.
International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, Rome, Oct. 26, 1961, 496
U.N.T.S. 43 (widely known as the "Rome Convention").
68
sels Conference, but was also replaced by the stricter criterion of
"organization other than the original one." Thus, the service zone theory
is completely foreign to the cable retransmission right defined in Article
11bis(1)(ii) of the Berne Convention. 29
Although the only governing criterion in respect of cable retransmission is that of "organisation other than the original one," neither the text
of the Article nor the preparatory work of the Brussels Conference defines the scope of that criterion. 30 It is widely accepted that individual
receiving antenna fall outside the scope of the term "organisation other
than the original one." Similarly, it is widely accepted that installations
that supply whole districts, towns or regions fall within the scope of the
adopted criterion. Between these two types there are installations known
as "collective antennae." 3 1 These are installations that capture the broadcast signal and simultaneously retransmit them through closed-circuit
cable system to residents in a building or group of buildings, offices, hospital wards, prison cells or hotel rooms.32
3.
Collective Antennae and Cable Retransmission to Hotel Rooms
under the Berne Convention
Unfortunately, as mentioned above, the Berne Convention does not
deal specifically with the use of collective antennae or cable retransmission
to hotel rooms. Therefore, this section deals with the different European
studies which have tried to answer whether the Berne Convention prohibits the cable retransmission to hotel rooms and whether national laws are
at liberty to exempt such use from any copyright liability.
29
Hazan, supra note 18, at 229.
30
Gaudel, Teledistribution, supra note 18, at 128.
31
Dietrich Reimer prefers the term "party antennae" instead of "collective antennae." He makes a distinction between a simple party antenna that
serves a building and an extended party antenna that serves neighbouring
buildings or building complexes. See Reimer, supra note 19, at 548. Walter,
on the other hand, uses the term "collective antennae" as a generic term to
cover all types of simultaneous cable retransmission. Accordingly, he divides collective antennae into three different types: simple collective antennae that serve one building; collective antennae in a broader sense that
serve a number of neighbouring buildings; and central collective antennae
that serve an urban district or an entire town. See Walter, supra note 16, at
302. Andr6 Kerever uses the term "small networks. See Andr6 Kerever,
32
Jurisprudence, 165 REV. INT'L DU DROIT D'AUTEUR 133, 142 (1995).
Others use the term "common aerial." See WIPO, UNESCO & ILO, supra
note 18, para. 98, 20 COPYRIGHT at 131.
In order to avoid a forest of antennae, in some cities the use of individual
antenna is banned on aesthetic or amenity grounds. Therefore, the use of
"collective antenna" becomes necessary.
a)
69
The Different Scholarly Views in Europe
Professor Walter, in his extensive study of cable retransmission under
the Berne Convention, invoked the statement in the General Report of
the Brussels Conference allowing member states to recognise "minor reservations," i.e., freedom to establish exceptions of limited scope in favour
of military bands, religious ceremonies, education and popularisation.3 3
He stated: "in regard to simple collective antennae serving one building;
here the real interests of the public are most certainly involved and must
be placed, for their importance and their significance, on an equal footing
with those enumerated in the general report of the Brussels
Conference." 34
In Walter's view, the Berne Convention should be clarified to exempt
the use of "simple collective antennae" from any copyright liability. He
defined "simple collective antenna" as an antenna of average commercial
quality, connected to receiving sets situated at a short distance and serving
a maximum number of one hundred receiving sets.3 5 The workability of
this definition is questionable. It is submitted that the term "average commercial quality" is too vague to be adopted at the international level; technological developments constantly undermine the entire basis of such
criterion. What would be considered of a superior commercial quality today might be considered "average" in the near future. Similarly, delimitations based on the distance from the receiving set to the collective antenna
33 ACTES DE LA CONFERENCE RtUNIE A BRUXELLES, supra note 10, at 100. The
role, if any, of the "minor reservation" doctrine under the Berne Convention, is not clear. Professor Sam Ricketson argues that the application of
the "minor reservation" doctrine should be based on the de minimus non
curat lex principle of interpretation and therefore should be restrictive in
scope. SAM RICKETSON, THE BERNE CONVENTION FOR THE PROTECTION
OF LITERARY AND ARTISTIC WORKS: 1886-1986, at 536-37 (1987). Although the decision of the WTO Panel, World Trade Organisation, United
States-Section 110(5) of the U.S. Copyright Act, WT/DS160/R, June 15,
2000, seems to confirm the existence of the "minor reservation" doctrine
and its application to Article 11bis of the Berne Convention, its scope remains unclear.
34 Walter, supra note 16, at 307.
35 Id. at 315. To support his view of exempting the use of simple collective antenna, Walter gives three reasons. First, to avoid a forest of individual antennae, which, according to him, amounts to a positive contribution in the
field of "urban environment and aesthetics." Id. at 307. Secondly, since the
use of a simple collective antenna is "useful for general information policy,
therefore it comes close to serving the purpose of popularisation, as mentioned in the general report (of Brussels Conference)." Id. Thirdly, the
"use of such installation, without authorisation being needed, allows large
scale rationalisation measures to be taken and thus is, indeed, of benefit to
the general public." Id.
70
or the number of sets connected to the collective antenna may lead to
hardship. As Dittrich correctly pointed out, one single connection in excess of the threshold would render the collective antenna a cable system
and therefore full copyright liability.3 6
Be that as it may, with regard to the use of a collective antenna to
retransmit copyright works simultaneously to hotel rooms, Walter seems
to suggest that such activity comes within the prohibition of Article
llbis(1)(ii) of the Berne Convention. 37 Walter, however, fails to explain
his rationale for adopting such position or the reasons for exempting simple collective antenna in a building or buildings and prohibiting the use of
the same in a hotel.
Whilst acknowledging that cable retransmission does not have to constitute the main activity of the organisation concerned by Article
llbis(1)(ii), Denise Gaudel denies the application of that provision to collective antennae. She bases her argument on the fact that when several
spectators install a collective antenna, no "organisation other than the
original one" exists.38 She adds, however, that if "the building manager or
the real-estate company decides to collect a remuneration in exchange for
the possibility offered the occupants of receiving broadcast programmes
by wire, they would be acting the same as the organisation referred to in
Article 11bis(1)(ii) and the provisions of the text would apply." 39
Therefore, Gaudel concludes that cable retransmission to hotel rooms
from a collective antenna, installed or managed by a hotelkeeper, comes
within the scope of the prohibition of Article llbis(1)(ii).4 0 She seems to
have distinguished the exempted use of a collective antenna serving a
building or neighbouring buildings from the prohibited use of a collective
antenna serving hotel rooms using the "for profit requirement."
It is submitted that employing the "for profit requirement" as a basis
for the distinction is questionable. First, no support can be found for this
criterion in the 1948 Documents of the Berne Revision Conference at
Brussels. Secondly, the "for profit requirement" is too vague. Does it
mean actual profit, potential profit, i.e., intention to profit, direct as well as
indirect profit, or merely revenues generated? Thirdly, the application of
36 Dittrich, Cable Television and Copyright Problems, supra note 22, at 33.
37 In criticising the decision of the Austrian Supreme Court, which exempted
from any copyright liability a hotel that retransmitted broadcast works to
499 rooms, Walter stated: "[b]ut the decision disregarded the fact that, for
the Union works of which Austria is not deemed to be the country of origin,
the provisions of the Convention establishing a minimum level of protection
are applicable, and this should have made it possible to admit the claim."
Walter, supra note 16, at 312.
38 Gaudel, Teledistribution, supra note 18, at 136.
39 Id. at 136.
40 Id. at 126.
71
the "for profit requirement" was rejected by some national courts. For
example, the Austrian Supreme Court held that although the use of a collective antenna may improve the earnings of the hotel, an economic advantage is not sufficient grounds to establish copyright infringement. 4 1
Dietrich Reimer, using the term "closed circuit equipment" to refer to
the use of collective antenna in hotels and hospitals, stated: "[i]t is my
opinion that closed circuit equipment, the use of which does not damage
the author's interests, which are worthy of protection, should be permitted." 42 It is submitted, however, as mentioned above, that the governing
criterion under Article llbis(1)(ii) of the Berne Convention is that of "different use." 4 3 This criterion was used to distinguish the broadcasting right
from that of retransmission by cable or rebroadcasting by wireless means.
The only exception to that rule, under the Convention, is simultaneous
cable retransmission or rebroadcasting made by the "original" broadcaster. Thus, it could be argued that any unauthorised simultaneous cable
retransmission by an "organisation other than the original one" would be
damaging to authors' interests.
Frank Gotzen attempted to distinguish between cable systems and
collective antennae using, what he called, the notion of "publicness." 44 He
argued that the use of collective antenna by the residents of one building
or a group of houses with specific limits does not require the author's consent because such group constitutes a closed group without the possibility
of further persons joining at any time. In his view, such use does not satisfy the public requirement: a collective antenna "only becomes an instrument of performance or public communication from the time it becomes
possible for any local resident to be connected to it." 45
Although Gotzen did not discuss cable retransmission to hotel rooms,
taking his argument of "closed group" to its logical conclusion would
render cable retransmission to hotel rooms a prohibited act. This is especially so, since the occupants of a hotel do not constitute a closed group; as
some guests depart and others check in on a regular basis. Accordingly,
since it is possible for any new guest in the hotel to use the collective
antenna, the residents of the hotel fail to constitute "a closed group"
within the meaning used by Gotzen.
Henri Desbois and Andr6 Francon, whilst acknowledging that the
Berne Convention could not be applicable in purely domestic matter in
41
42
Autoren, Komponisten, Musikverleger (AKM) v. X, Oberster Gerichtshof
[OGH] [Supreme Court] June 16, 1998. See also Winfried Schwarz, Case
Comment, 9 ENr. L .REP. N139, N140 (1998).
Reimer, supra note 19, at 549.
43 See Section B(1) supra.
44 Gotzen, supra note 18, at 312.
45 Id.
72
France, criticised the French Court of Cassation decision of 23rd of November 1972, which exempted simultaneous cable retransmission to hotel
rooms from any copyright liability. In their view, this decision created a
discrepancy between French law and the Berne Convention. 46 They argued that "[o]ne cannot, in order to diminish the scope of this formula of
Article 11bis (1)(ii), claim that by any communication of the broadcast
work made by an organisation other than the original one is meant a communication made by a broadcasting organisation, to the exclusion of any
undertaking, such as that of a hotelkeeper." 47 As such, they argued that a
hotelkeeper falls within the ambit of the term "organisation other than the
original one." They concluded that Article llbis(1)(ii) of the Berne Convention does not permit national laws to exempt the simultaneous cable
retransmission to hotel rooms from copyright liability. 48
Others argued that the use of collective antennae to retransmit broadcast works simultaneously by cable within a relatively limited area, consisting of one building or group of buildings, falls outside the scope of Article
llbis(1)(ii). Those who adopted this approach based the exemption on
the concept of neighbourhood. 49 Unfortunately, they did not clearly define the scope of the term 'neighbourhood' and acknowledged that the
scope of this term is to be specified by national legislation.50 For them,
however, authorisation by the author would be required when the collective antenna is operated with "gainful intent."5 1 It is submitted that the
criterion of "gainful intent" is exactly the same as Gaudel's "for profit
requirement." Accordingly, the criticism made above of Gaudel's argument is equally valid to refute "gainful intent" as a determinative criterion.
As a result of the lack of consensus amongst scholars, some went as
far as arguing that a uniform solution to the use of collective antenna
under the Berne Convention "will have to be forgotten."5 2 It is submitted
that this view is only partially correct. This is especially so, since it does
not distinguish between a collective antenna installed and operated by
group of residents to serve their building or a group of residential buildings and a collective antenna serving hotel rooms.
In the case of a collective antenna installed by spectators sharing a
residential building, or group of buildings, it could be argued that it is for
national laws to determine whether such installation could be classified as
46
Desbois & Frangon, supra note 18, at 48.
47 Id. (emphasis added).
48 Id. at 50, 54, 56.
49 WIPO, UNESCO & ILO, supra note 18, principle 8, para. 96, 20
at 155.
50 Id. at 155.
51 Id. para. 96, 98, at 155.
52
COPYRIGHT
Dittrich, Cable Television and Copyright Problems, supra note 22, at 31.
73
an "organisation other than the original one." However, with respect to
the use of collective antenna to retransmit by cable broadcast works simultaneously to hotel rooms, a uniform solution under the Berne Convention
is possible.
As discussed above, the sole criterion governing the simultaneous
cable retransmission under the Berne Convention is that of "organisation
other than the original one." The Convention does not require that organisation to take any specific form or to have cable retransmission as its main
activity. All that is required under Article llbis(1)(ii) is the existence of
an organisation different from the original one. Since a hotelkeeper, being
the management company and/or the owner, is undoubtedly an "organisation other than the original one" within the meaning of Article
llbis(1)(ii), any retransmission through its installations comes within the
ambit of the prohibition of the Convention.
It is submitted, therefore, that as a general principle under the Berne
Convention, the simultaneous cable retransmission to hotel rooms is a separate and independent prohibited act from that of broadcasting. As such,
under the Convention, there are only two ways through which a national
law may restrict the scope of that exclusive right: the compulsory licensing
mechanism of Article 11bis(2) and the minor reservation doctrine.
b)
Possible Exceptions and Limitations
According to Article 11bis(2) of the Berne Convention,5 3 the rights of
broadcasting, simultaneous cable retransmission and the reception in public may be subject to a compulsory licensing. 54 As such, the exclusive right
of simultaneous cable retransmission could be replaced by a mere right of
remuneration, provided that the author's moral rights are respected.5 5
It is noteworthy that although the formula adopted in Article 11bis(2)
permits national laws to impose a compulsory licence on the author's exclusive right of simultaneous cable retransmission, it does not allow na53 Article 11bis(2) states:
It shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned in the preceding
paragraph may be exercised, but these conditions shall apply only in the
countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the author, nor to his right to
obtain equitable remuneration which, in the absence of agreement, shall
be fixed by competent authority.
54 For the history and scope of the compulsory licensing mechanism under the
Berne Convention, see MAKEEN, supra note 9, at 68-78.
55 Although Article 11bis(2) is generally understood as allowing national laws to
impose a compulsory licensing mechanism, the term " compulsory licence"
was not used as a result of the objections raised by France. See RICKETSON,
supra note 33, at 523.
74
tional laws to deny protection altogether. Contrary to the situation under
Article 13(1) which arguably allows national laws to impose "reservations
and conditions" on the author's exclusive right of mechanical reproduction, Article 11bis(2) speaks only of "conditions." Thus, whilst it is possible to argue that the wording of Article 13(1) might imply that in certain
cases national laws could deny protection altogether, this is not possible
under the wording of Article 11bis(2): the term "condition" does not carry
with it the power to deny the right altogether. 56
In addition to the compulsory licensing mechanism, under the Berne
Convention national laws are arguably permitted to recognise minor reservations, i.e., establish exceptions of limited scope. With the exception of
the three step test applicable to the reproduction right of Article 9(2) of
the Berne Convention, the application of the minor reservation doctrine
under the Convention is not subject to any international scrutiny. The
Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPs), however, extended the application of the three step test to cover
all limitations and exceptions. 57 As a result, any national law of a WTO
country that employs the minor reservation doctrine to exempt the simultaneous cable retransmission to hotel rooms would need to make sure that
it passes the scrutiny of the elusive three-step test.5 8
C. Simultaneous Cable Retransmission to Hotel Rooms Under the
WIPO Copyright Treaty
During the 1980s, a number of new copyright issues were raised at the
international copyright level, for example the protection of computer programs and databases. There was a lack of enthusiasm, however, among
59
member states of the Berne Union for revising the Berne Convention.
Accordingly, WIPO adopted what Ricketson called a strategy of guided
development, 60 according to which all the important questions raised by
56 See id. at 525.
57 Article 13 of TRIPs states: "Members shall confine limitations or exceptions to
exclusive rights to certain special cases which do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the legitimate
interests of the right holder." The same approach was adopted under Article 10 of the WIPO Copyright Treaty of 1996.
58 For the application of the three-step test to the reception in public provision of
Article llbis(1)(iii), see WTO Panel, World Trade Organisation, United
States - Section 110(5) of the U.S. Copyright Act, WT/DS160/R (June 15,
2000).
59 Although the Revision Conference of Paris in 1971 was successful, the memory of the difficulties that surrounded the adoption of the 1967 Stockholm
Act of the Convention, which never came into force, made the international
community reluctant to revise the Berne Convention.
60 RICKETSON, supra note 33, at 919
75
the various new technologies were discussed by groups of experts and in
the form of recommendations, guiding principles and model provisions,
were offered to national legislators and governments.
At the end of the eighties, it was realised that mere guidelines were
no longer adequate for harmonious development, and that there was a
danger that national legislators would choose different solutions to new
problems. 61 As a result, WIPO embarked on a journey of setting binding
international norms through a Protocol to be attached to the Berne Convention. At the eleventh hour, and only during the 1996 Diplomatic Conference, was there a change of heart among members of the Berne Union
and the idea of a protocol was rejected. Instead, the provisions of the
protocol were incorporated in a new international instrument that took
the form of the WIPO Copyright Treaty of 1996.
As far as this article is concerned, the most important provision of the
new Treaty is that of the communication to the public of Article 8. This
provision was introduced for two specific reasons: to complement the fragmented cabling right, as opposed to the retransmission by cable, under the
Berne Convention by protecting all subject matter, in whatever form,
against their exploitation through cable originated programmes by the
new communication to the public right, and to recognise a new specific
"making available right" to cover the digital environment. 62 These two
reasons were reflected in the "two parts" of Article 8 of the WIPO Copyright Treaty, which states:
Without prejudice to the provisions of Articles 11(1)(ii), llbis(1)(i) and
(ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors
of literary and artistic works shall enjoy the exclusive right of authorizing
any communication to the public of their works, by wire or wireless
means, including the making available to the public of their works in such
a way that members of the public may access these works from a place
and at a time individually chosen by them.
The following subsection divides Article 8 into two parts: a general communication to the public right and a specific making available right. The
application of each part to the cable retransmission to hotel rooms will be
discussed separately.
61
62
Mihily Ficsor, Legislating on the New Technologies: International Norm-Setting in the Field of Copyright and Neighbouring Rights 6 (paper presented
in CISAC's 39th Congress, Washington, Sept. 18-20, 1994.
For some, the making available right was already covered by Article 11bis of
the Berne Convention, and Article 8 of the WIPO only confirmed the existence of that right.
76
1.
The General Communication to the Public Right
Since the fragmented provisions of the communication to the public
by cable originated programmes of the Berne Convention do not cover all
types of subject matter, it was agreed that the introduction of an all encompassing right to cover all kinds of works was necessary. 6 3 Therefore,
the first part of Article 8 was introduced, which states: "Without prejudice
to the provisions of Articles 11(1)(ii), llbis(1)(i) and (ii), llter(1)(ii),
14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and
artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means."
This part of Article 8 may be referred to as the general communication to the public right. It is intended to cover the communication to the
public by cable originated programmes (cabling right) of musical, dramatic
and dramatico-musical works, which hitherto only the performance of
which was protected by the communication to the public right of Article
11(1)(ii) of the Berne Convention. Furthermore, this new right extended
the cable originated programmes right of the Berne Convention to cover
authors of literary works, which hitherto were only protected in respect of
the communication to the public of the recitation of their works by Article
llter(1)(ii) of the Berne Convention.M Moreover, since artistic works enjoyed very limited protection against the unauthorized communication by
cable originated programmes,6 5 the communication to the public right of
Article 8 extended the cabling right to cover all artistic works, including
graphics and photographs.
Accordingly, it could be argued that this general communication to
the public right of Article 8 of the WIPO Copyright Treaty was intended
only to complement the fragmented cabling right, as opposed to retransmission by cable, of the Berne Convention. As such, it is of no relevance
to cases involving cable retransmission or the use of collective antennae.
This is especially so, since unlike all the other communication to the public
provisions of the Berne Convention, which are subject matter specific, Article llbis(1)(ii) offers comprehensive protection and covers all types of
literary and artistic works, in whatever form.
Furthermore, as correctly pointed out by Reinbothe and Lewinski,
most forms of broadcasting (including rebroadcasting and retransmission
63
64
65
Cabling of the performances of dramatic, musical and dramatico-musical work
is covered by Article 11(1)(ii). Cabling of recitations of literary works is
covered by Article llter(1)(ii); cinematographic works are covered by Article 14(1)(ii).
Thus, extending the scope of the cabling right to cover computer programs.
See Berne Convention art. 14.
77
by cable) are already covered by Article l1bis of the Berne Convention. 66
Therefore, it is submitted that this new communication to the public right
of the WIPO Treaty does not affect the scope or the criterion governing
the application of the cable retransmission right as recognised under Article l1bis(1)(ii).
2.
The Nature of Hotel Rooms
Since the nature of hotel rooms is an issue that is often unnecessarily
raised in cases involving the simultaneous cable retransmission to hotel
rooms, it is worth investigating whether the general communication to the
public right could settle this issue at the international level. It is worth
noting from the outset that it is this author's view that the nature of hotel
rooms is of no relevance in cases involving cable retransmission to hotel
rooms. Similar to the broadcasting right of Article llbis(1)(i) of Berne,
which is applicable notwithstanding that each listeners or viewer may receive the transmission in the privacy of their homes, the communication to
the public right should not concern itself with the nature of the hotel
rooms. This is especially so, since similar to the application of the broadcasting right which is based on the sum of potential audience,6 7 it is the
sum of hotel rooms that constitute the "public" and not the occupants of
every individual room in isolation. This being so, the nature of hotel
rooms could only be relevant, if the communication in public right, i.e., the
public performance right and/or, if recognised under national law, that of
public display, is mistakenly judged to be applicable. 6 8 In this case, the
communication is to be regarded as originating in the speaker/ screen of
the radio or television set where the potential audience is present and not
at the place of retransmission by cable.
Although this new communication to the public right of Article 8 left
the term "public" undefined, it is absolutely clear that it only applies to
transmissions to a public; i.e., public not present at the place where the
transmission originates. 69 This is evident from the wording of the provision, which states: "without prejudice to the provisions of Articles
11(1)(ii), 11bis(1)(i) and (ii), 11 ter(1)(ii), 14 (1)(ii) and 14bis(1)." All the
Berne provisions mentioned under Article 8 require two distant points:
WIPO TREATIES 1996, at 106
(2002).
For the evolution and application of the broadcasting right under the Berne
Convention and the national laws of the U.S., UK, and France, see
66 JORG REINBOTHE & SILKE VON LEWINSKI, THE
67
MAKEEN,
68
69
supra note 9, at 34-83.
In some countries, such as the USA, no specific right of communication to the
public is recognised. Thus, the public performance right and that of public
display cover communications "in" and "to" the public.
REINBOTHE & VON LEWINSKI, supra note 66, at 102.
78
one for transmission and another for potential reception. 70 The fact that
the above enumeration did not include Article 11(1)(i) or 1lbis(1)(iii), i.e.,
the public performance before a gathered audience and the reception in
public, makes it absolutely clear that this new provision has no application
to situations involving communication in public. 7 1
Accordingly, this provision, which is of no relevance to retransmission
by cable or the use of collective antenna, also excludes from its scope communications in public and therefore could be of little help in deciding on
the nature of hotel rooms.
3.
The Making Available Right of the WIPO Copyright Treaty
The second leg of Article 8 of the WIPO Copyright Treaty recognises
the new specific "making available right." Similar to the general communication to the public right, the new making available right applies only to
remote transmissions. 72 As such, this making available right comes into
play only when members of the public access the work from a place and a
time individually chosen by them.
This making available right was intended to cover on line communication and /or on demand services. It does not apply to services that operate
on predetermined- programmes basis, such as radio and television broadcast, cable-originated programmes, webcasting or to cable retransmission,
etc. Thus, this right might govern video on demand to hotel rooms. However, it is of no relevance and has no application to cases involving cable
retransmission of broadcast works to hotel rooms.
Thus, it seems that neither the general communication to the public
right nor the specific making available right of Article 8 of the WIPO Copyright Treaty would be relevant in cases involving cable retransmissions to
hotel rooms.
70
71
72
Although Article 14(1)(ii) of the Berne Convention covers communication in
public, i.e., the public performance right, it also covers the communication
to the public by wire and it was for the latter that reference was made in
Article 8 of the WIPO Copyright Treaty.
For the distinction between "communication in public" and "communication
to the public," see MAKEEN, supra note 9, at 34-83.
As correctly pointed out by Reinbothe and von Lewinski, this should not be
misinterpreted as to require minimum distance between the place of transmission and that of reception. See REINBOTHE & VON LEwINSKI, supra
note 69, at 109.
79
II. SIMULTANEOUS CABLE RETRANSMISSION TO HOTEL
ROOMS AT THE NATIONAL AND EC LEVEL
A.
The Simultaneous Cable Retransmission to Hotel Rooms Under the
Most-Cabled Countries of the EC
Unlike the situation in the U.S., 7 3 where the relay of signals carrying
copyright works by the management of hotel to guest rooms is exempted
from any copyright liability, the national laws of the EU countries follow
different approaches. 74 Since the EU now comprises twenty seven countries, it is beyond the scope of this Article to give a comprehensive report
on the issue of cable retransmission to hotel rooms under each national
law of the EU countries. This section, therefore, focuses mainly on France
as a representative of the droit d'auteursystem and the UK as a representative of the copyright system and also deals briefly with some of the other
most cabled jurisdictions within the EU.
1.
France
Surprisingly, French law, which is the most pro-author system for the
protection of literary and artistic works, has struggled with the scope of
the cable retransmission right. Its evolution passed through two stages in
regulating cable retransmission to hotel rooms.
a) The First Stage
When French authors' rights law was codified in 1957 there had been
no judicial decisions relating to cable retransmission of broadcasts. The
particular situation that was addressed was that of radio sets playing in
public areas.7 5 Accordingly, Article 27 of the Law stated that "performance shall consist in the direct communication of the work to the public,
particularly by: (5) diffusion by any method of words, sounds or images,
... (7) transmission of a broadcast work by means of a loudspeaker or, as
the case may be, by means of television screen, placed in a public place."
The cable retransmission controversy stemmed from the failure of the legislature to specify explicitly whether cable retransmission of broadcasts
was or was not subject to the performance right. 76
73 See 17 U.S.C. § 111(a)(1) (2006).
74 For the controversy that surrounded cable retransmission and the scope of the
right in the U.S.A., see MAKEEN, supra note 9, at 262-72. For assessment of
the cable retransmission provisions and their compliance with TRIPs, see
DAVID BRENNAN, RETRANSMISSION AND US COMPLIANCE WITH TRIPS
316-30 (2003).
75 YSOLDE GENDREAU, THE RETRANSMISSION RIGHT: COPYRIGHT AND THE
REDIFFUSION OF WORKS BY CABLE 12 (1990).
76 Andr6 Kdr6ver, One Aspect of the Law of 3 July 1985: Modernisation of the
Law of 11 March 1957, 127 REV.
INT'L DU DROIT D'AUTEUR
16, 58 (1986).
80
Although paragraph 5 encompassed all types of diffusion, which
could include cable retransmission, courts declined to construe it in that
way. In SACEM v. Hotel du Printemps, where a hotelkeeper, without the
copyright owners' consent, picked up broadcasts through a collective antenna and retransmitted them by wire to his guest rooms, the Tribunal de
Grande Instance de la Seine found no copyright infringement. In the Tribunal's view the hotelkeeper's actions were covered by SACEM's
authorisation of the original broadcaster.7 7 The court reasoned that the
broadcasts received by the master set were not retransmitted in a public
place as required by Article 27(7), but to guest rooms, which are private
places from the moment they are rented. Furthermore, by some obscure
reasoning, the court found that since every guest could turn on the receiving set placed at his disposal in his room and could choose between three
different programmes,7 8 neither the hotelkeeper himself nor his agents
had directly communicated the said broadcast to the guests.
The Court of Appeal of Paris, following the same reasoning, confirmed the judgment. In its view, a performance, within the meaning of
the 1957 Authors Rights Law, requires some initiative in showing or reciting a work in public. Here, the hotelkeeper's action was limited to providing his guests with an appropriate technical device to enable them to listen
to the radio broadcast in their rooms, and was no different in a copyright
sense to supplying guests with individual sets placed in the rooms. 7 9 The
Court of Cassation confirmed the finding of the Court of Appeal,8 0 and
based its judgment on the first reason given by the Tribunal de Grand
Instance, namely that hotel rooms did not constitute a public place.8 1
The reliance by the court at all three levels on Article 27(7) is surprising. 82 Had it considered Article 27(5), the case might have been decided
differently. As Desbois and Frangon pointed out, the question at issue
77
78
79
80
Judgment of 7 July 1969, 63 REV. INT'L Du DROIT D'AUTEUR 224 (1970).
The three programmes were Radio-Luxembourg, France-Culture, and Europe
No. 1.
Cour d'Appel de Paris, 1 6re Ch., 13 mai 1970, Gaz. Pal. 1970. II. 46.
Cass. civ (lere Ch.) 23 novembre 1971, D. P. 1972, J. 99. The Court of Cassa-
tion in seeking compatibility of the French law with the Beme Convention,
referred wrongly to Article 11(1)(2). The reference, of course, should have
been to Article llbis(1)(i), and (ii).
81
82
The error of this approach was confirmed in SACEM v. Hilton, where the
Court of Appeal refused to follow the reasoning of the Hotel du Printemps
decision and decided that cable originated programmes to guests in hotel
rooms amounted to a public performance in accordance with Article 27(5)
of the 1957 Law. See Decision of 18 September 1974, Cour de Paris (1re
ch.) 83 REV. INT'L DU DROIT D'AUTEUR 112 (1975).
At about the same time, the Chambery Tribunal d'Instance, rendered on 20
May, 1969, an identical judgment in a case with similar fact. See 63 REV.
INT'L DU DROIT D'AUTEUR 222 (1970).
81
was to determine, not whether reception of cable communication took
place in a public or private place, but whether the cable retransmission of
broadcasts intended for the public constituted a separate act of communication to the public in accordance with Article 27(5).83
The second reason given by the Tribunal, i.e., the passive role of the
hotelkeeper, was supported by K6r6ver,84 but dismissed by most other
scholars as imposing a requirement that was not contained in the text of
the Law. 85 This emphasis on the passive role of the hotelkeeper seems to
have been influenced by an earlier decision in SACEM v. Soc. Hotel Lutdtiat,86 notwithstanding that it was based on completely different facts. In
this case the management of the hotel installed in hotel rooms radio receiver sets each with a separate antenna. Guests, by a coin deposit device,
could switch the set on and choose from among the many broadcast
programmes available. There was no cable retransmission involved, and it
was inappropriate for the court to follow the same reasoning in the Hotel
du Printemps case. Neither the lower court nor the Court of Appeal, however, distinguished between the factual circumstances involved in these
two cases, which would have required different legal analyses.
Thus, the decision of the Court of Cassation was a regrettable one for
authors.87 By basing its judgment on Article 27(7) of the Law, the Court
of Cassation in fact decided that a broadcast work could be subject to a
second authorisation by the author and accordingly a second royalty on
the basis of the performance right only when the retransmission of the
broadcast work is made by means of a receiving apparatus placed in a
public place.
At the end of this first stage, a difference of opinion developed between the judiciary and legal scholars. The judiciary seemed to have
recognised that there was no separate right for authors in respect of cable
retransmission of their broadcast works, unless such retransmission was
83 Desbois & Frangon, supra note 18, at 24.
84 Andrd Kdr6ver, The Rights of Authors in Relation to the Public Communications of Broadcast Emissions, 73 REV. INT'L DU DROIT D'AUTEUR 3, 16-18.
26-23 (1972). K6rdver seems to have interpreted the term "performance" to
impliedly require an active role on the part of the relayer, and cited in that
connection the decision of the Court of Appeal of Brussels in S.A. Radiocentrale v. SABAM, 65 REV. INT'L Du DROIT D'AUTEUR 124 (1970). The
Belgian court confirmed the decision of the lower court on the grounds that
the cable operator role was not passive; after picking up the broadcast it
had filtered and amplified the signals in order to provide its clients with
static free reception.
85 See, e.g., Desbois & Frangon, supra note
18, at 40; Gaudel, Concerning Teledistribution, supra note 18, at 110.
86 T. G. I., Seine, 22 mars 1961, Gaz. Pal., 1961. I. 374, aff'd, Cour d' Appel de
87
Paris, on 20 juin 1962, Gaz. Pal. 1962. II. 190.
Andr6 Frangon, Letter from France, 10 COPYRIGHT 316, 320 (1974).
82
made by means of a receiving apparatus placed in a public place in accordance with Article 27(7). Scholars, on the other hand, expressed the view
that it was erroneous for the Court of Cassation to have based its judgment on Article 27(7); in their view Article 27(5) was the provision governing cable retransmission, as appears clearly from the preparatory work
of the 1957 Law.8 8
b) The Second Stage
The second stage began with the extensive amendment to the French
Copyright law in 1985. The concept of "telediffusion" replaced the former
term "diffusion" in Article 27. Telediffusion is defined as the "distribution
by any telecommunication process whatsoever of sounds, images, documents, data and messages of any kind." 89 This seems to encompass all
types of dissemination in non-material form, be it conventional broadcasting, satellite broadcasting, cable distribution and communication over
computer networks. Furthermore, by using the words "any telecommunication process whatsoever," the legislature, as Rochiccioli pointed out, put
an end, once and for all, to the argument that cable distribution is merely a
technical extension of the original broadcast that does not constitute an
act of performance. 90
Article 9 of the 1985 Law repealed the last paragraph of Article 27(7),
which was the main cause for the confusion that surrounded the issue of
cable retransmission. Therefore, it was no longer possible to maintain that
the only type of prohibited secondary communication under the Law was
that made by means of an apparatus placed in a public place.
Surprisingly, a dispute involving similar facts to those in the Hotel du
Printemps case surfaced under the new law. In CNN v. Novotel, the Tribu-
nal de Grand Instance of Paris followed the earlier precedent and rejected
the copyright owners claims on the grounds that hotel rooms were occupied on a private basis. 91 The Tribunal based its judgment on Article 45(2)
of the amended law, which provides that unless otherwise stipulated an
authorisation to telediffuse the work shall not constitute an authorisation
88
See Walter, supra note 16, at 310; Desbois & Francon, supra note 18, at 36;
Gaudel, Concerning Teledistribution, supra note 18, at 110.
89 French Copyright Law (1985) art. 27. The same wording was retained under
Article L.122-2.2. of the Code of Intellectual Property of 1992.
90 Elie-Pierre Rochiccioli, Viewpoint on The Legislation Applicable, in France, to
the New Media in the Field of Authors' Rights, 148 REV. INT'L DU DROIT
D'AUTEUR
16, 24 (1991).
91 14 f6vrier 1990, 145 REV. INT'L DU DROIT D'AUTEUR 375 (1990).
83
to communicate the telediffusion of the work in a place to which the public has access. 92
The Court of Appeal confirmed the decision. 93 In its view, the cable
distribution was limited to the building of the hotel and as such was
neither a rebroadcast nor a new autonomous retransmission of broadcast
work. 94 Furthermore, the court dismissed an argument based on Article
45(1) as superfluous, 95 because that provision was only intended to interpret contracts between authors and broadcasters, and in the case under
discussion no such contract existed. 96
The Court of Cassation reversed the decision. 97 In spite of accepting
that each guest occupies a separate room on a private basis, the Court of
Cassation stated that it was the sum of the guests of the hotel that constituted a public to whom any transmission of a broadcast work required the
copyright owners consent, 98 thus rendering the discussion of the nature of
the hotel room redundant. Although this solution could also have been
arrived at under the old wording of Article 27, the 1985 amendment which
abolished the requirement that the receiving apparatus must be placed in a
public place, seemed to have encouraged the court to bring the hotelkeeper's activities within the scope of the author's exclusive rights. 99
92
93
94
It is worth noting that Article 45(2) was the only Article cited in the decision.
This is the equivalent of Article L.132-20(2) of the French IP Code of 1992
(CPI).
Cour d' Appel de Paris, 10 janvier. 1992, 153 REV. INT'L Du DROIT D'AUTEUR
174 (1992).
For an opinion that it was not the legislature's intention to exempt cable retransmission made by small cable systems from the scope of the author's
exclusive right. See Elsa Deliyanni, Le droit de reprisentationdes auteurs
face 'a la tilivision transfrontalidrepar satellite et par cable, Paris, LIBRAIRIE
GENERAL DE DROIT ET DE JUISPRUDENCE 195 (1993).
Which is now Article L.132-20.1 of the Code of Intellectual Property of 1992.
The court stated: "Unless otherwise stipulated: authorisation to telediffuse a
work by electromagnetic waves shall not include cable distribution of such
telediffusion unless made simultaneously and integrally by the organisation
holding the authorisation and without extension of the contractually stipulated geographical area."
97 Cass. civ., 6 avril 1994, 161 REV. INT'L Du DROIT D'AUTEUR 366 (1994) (note
by Andr6 Krdver).
98 Article 27(1); L. 122-2. 1 of the CPI of 1992 states: "performance shall consist
in the communication of the work to the public by any process whatsoever,
particularly: public recitation, lyrical performance, dramatic performance,
public presentation, public projection and transmission in a public place of a
telediffused work."
99 The Court of Appeal to which the case was remanded, confirmed the Court of
Cassation solution on the same grounds on 20 September 1995. See 167
REV. INT'L Du DROIT D'AUTEUR 179, 188 (1996) (note by Andrd Kr6ver).
95
96
84
It is worth noting that the Court of Cassation emphasised that the
hotel's activity was commercial in nature. Nevertheless, it is submitted
that this factor should not be decisive. By concluding that the sum of clientele constituted a public, 0 0 this alone rendered any discussion related
to the commercial nature of the hotel's activity otiose. This is especially
so, since under French law the "commercial" factor is of relevance only if
established that the communication (performance) was given within the
family circle.' 01
Furthermore, in its decision of March 1, 2005,102 a case involving the
use of collective antenna to retransmit broadcast works simultaneously to
a block of flats, the Court of Cassation dismissed the commercial aspect as
irrelevant.10 3 In the Court's view, since the sum of residents of the flats
satisfy the "public" requirement, the commercial nature, intention to exploit the work for profit or even that the antenna was jointly owned by the
residents, were of no significance.1 04 Thus, this decision was successful in
settling, once and for all, that in cases involving collective antenna, neither
the nature of the place of individual reception nor the commercial benefit
of the organisation operating the antenna is of any relevance.
The only exemption to the simultaneous cable retransmission right in
French Copyright Law is drafted in line with Article 11bis(1)(ii) of the
Berne Convention. Accordingly, Article L. 132-20. 1 of the IP Code,
which is primarily concerned with interpreting contracts between authors
and broadcasters, sets out three conditions which must be met for a cable
retransmission to be exempted from copyright liability. First, the cable
retransmission must be a simultaneous retransmission of the broadcast
work. Accordingly, any deferred retransmission falls outside the scope of
the exemption. Secondly, the cable retransmission must be made by the
same organisation that obtained the author's consent to make the initial
broadcast. This requirement makes it absolutely clear that the privilege
granted by law to the original broadcasting organisation to simultaneously
retransmit by cable its own programmes cannot be assigned to any other
cable operator without the author's consent. Thirdly, the cable retransmission must not extend beyond the contractually stipulated geographical
area of the initial broadcast. 05
100 Andrd Lucas, Case Comment, 16 EUR. INTELL. PROP. REV. D-288 (1994).
101 See Art. L.122-5(1).
102
103
104
105
Cass. Civ, mars 1, 2005, case 02-17391, availableat http://www.legifrance.gouv.
fr.
PIERRE SIRINELLI & ANDR9 LUCAS, Droit d'auteur et droit voisins, 15
PROPRIT8S INTELLECTUELLES 160 (2005).
Valerie-Laure Benabou, Letter from France, 28 EUR. INTELL. PROP. REV. 201,
203 (2006).
This third requirement echoes the French proposal to the Brussels Conference
for the revision of the Berne Conventio. See Section II supra.
85
The opening words of Article 132-20.1, "unless otherwise agreed," allow parties to a contract to agree to disregard all or any of these requirements.10 6 Therefore, unless the broadcaster itself owns and manages the
collective antenna in the hotel, which is highly unlikely, or the author had
agreed in his/her contract with the broadcasting organisation to allow the
simultaneous cable retransmission to hotel rooms, then any such retransmission will amount to a separate and independent prohibited act from
that of broadcasting.
2.
United Kingdom
a)
Cable retransmission in the UK developed long after the 1911 Copyright Act, and so was not provided for under that Act.107 However, in
order to comply with the provisions of the 1948 Brussels Act of the Berne
Convention, the 1956 Copyright Act was passed. Astonishingly, whilst its
aim was to comply with new international obligations stemming from the
1948 revision of the Berne Convention, Section 40 of the 1956 Act
adopted the service zone theory.
Therefore, cable operators were allowed to retransmit free of charge
the broadcast works included in BBC and IBA programmes without obtaining the authors' permission. 08 For a cable operator to benefit from
this exemption the retransmission had to be an immediate retransmission,
of an authorised broadcast, 109 and the retransmission was either in accor-
106
107
In France, and a number of civil law countries, legal provisions regulating contracts are divided into imperative and supplementary rules. Whilst any
agreement by the parties to contradict the former is null and void, parties
could agree to disregard the latter.
An organised cable industry has existed in the UK since 1939, the year in
which the Relay Service Association was established, and renamed in 1972
the Cable Television Association of Great Britain. The cable industry developed slowly, however, and only with the advent of broadband, progress
was made and the industry reached the one million subscribers mark in
1995. See Network for a Future Electronic Superhighway, FIN.
TIMES
(London), Oct. 3, 1995, at 37.
108 Copyright Act (1956) § 40(3), (3A) (as amended by the Cable and Broadcasting Act (1984)).
109 One made by or with the licence of the copyright owner. Id. § 40(5) (as
amended).
86
dance with the "must carry" ruleo10 or was of a broadcast made for reception in the area in which the cable service operated.'
The adoption of the service zone theory under the 1956 Act was subject to considerable criticism.1 12 In its submission to the Whitford Committee, the British Copyright Council (BCC) proposed that the author
should at least share in the commercial proceeds flowing from the retransmission of his work by cable.1 13 The BCC also pointed out that the exemption was in direct conflict with Article 1lbis(l)(ii) of the Berne
Convention. The response of the Whitford Committee was couched in
what was described as "somewhat strange terms":11 4 "We are impressed
by the fact that the present position, although somewhat anomalous by
international standards, works well in practice."" 5
Unfortunately, the 1988 Act followed the recommendation of the
Whitford Committee and by virtue of Section 73(3) retained its loyalty to
the service or direct reception zone theory. Although Article 11bis(2) of
the Convention allows member states to restrict the scope of the simultaneous cable retransmission right by introducing a compulsory licensing
mechanism, Article 11bis does not permit states to fully exempt that type
of use from copyright liability. Therefore, it is this author's view, that the
UK copyright law as it stands today is in direct breach of Article
llbis(1)(ii) of the Berne Convention.
b)
Simultaneous Cable Retransmission to Hotel Rooms
Under Section 48(3) of the 1956 Copyright Act communication of
works by cable in hotels was specifically recognised as exempted act.116
The Whitford Committee agreed with the Submission made by the British
Copyright Council (BCC) that exempting cable communication within hotels or other premises where persons reside or sleep from copyright liabil110 The must carry rule was imposed by section 13(1) of the Cable and Broadcasting Act of 1984. According to this, every licensed cable system (as defined
in sections 4 and 36) was required to include by reception and immediate
retransmission of the broadcasts, the programmes included in radio or television broadcasting services provided by the BBC or the IBA for reception
in the area where the cable system was authorised to operate.
111 Copyright Act (1956) § 40(3A).
112 Henri Desbois, Telephone Radiodistribution, 21 REV. INT'L DU DROIT
D'AUTEUR 2, 23 (1958); Walter, supra note 16, at 311-12; Denis de Freitas,
Diffusion of Broadcast Programmes - UK Authors Lose Out Despite the
Berne Convention, 1 EUR. INTELL. PROP. REV. 121, 122 (1979).
113 COPYRIGHT AND DESIGNS LAw: REPORT OF THE COMMITTEE TO CONSIDER
THE LAW ON COPYRIGHT AND DESIGNS, Cmnd. 6732, para.
(1977) [hereinafter WHITFORD COMMITTEE REPORT]
114 de Freitas, supra note 112, at 122.
115 WHITFORD COMMITTEE REPORT, supra note
116 Copyright Act (1956) § 48(3).
439, at 115
113, para. 445, at 117.
87
ity was "contrary to the whole philosophy of copyright." 117 Accordingly,
the Whitford Committee recommended that this exemption should be repealed. Notwithstanding that, the Cable and Broadcast 1984 left the exemption intact. 118 The 1988 Copyright, Designs and Patents Act (1988
CDPA), however, adhered to the Whitford Committee's recommendation
and abolished the exemption.
At first sight, it seems plausible to argue that since the 1988 CDPA
abolished Section 48(3) of the 1956 Act, then the use of collective antenna
within hotels is subject to full copyright liability. For two reasons, it is
submitted that is not the case. First, Section 73(3) of the 1988 CDPA followed the service zone theory, outlined above, and exempted the simultaneous cable retransmission of works included in a domestic broadcast
from any copyright liability. Therefore, it could be argued that this exemption benefits not only cable operators serving households, but also the
use of collective antenna to retransmit broadcast programmes simultaneously to guest rooms in hotels.
Secondly, the preparatory work of the 1988 CDPA makes it clear that
it was not the intention of the legislature to subject the use of collective
antenna within hotels to the cable retransmission right. The Whitford
Committee, after recommending the abolition of Section 48 (3), stated
that cable retransmission to hotel rooms "as far as it relates to the diffusion of BBC and IBA broadcasts (the only domestic broadcastsavailable in
the UK at the time), it is already exempted by the provisions of Sections
40(3), (4) and (5) the main effect of which we are recommending should
be continued." 119 Similar to Section 73(3) of the CDPA, these three provisions, of the 1956 Act, referred to by the Whitford Committee were, for
all intents and purposes, subtly, embodying the Service Zone theory in its
entirety.
Therefore, the abolition of Section 48(3) of the old Copyright Act
only resulted in subjecting cable originated programmes within hotels to
full copyright liability under the 1988 CDPA. It did not affect the liability
of hotelkeepers as far as it relates to the simultaneous retransmission of
domestic terrestrial broadcast; this and any other cable retransmission of
domestic broadcast within the service zone are exempted by virtue of Section 73(3) of the 1988 CDPA.
117
118
WHITFORD COMMITTEE REPORT, supra note 113, para. 453, at 119.
See Copyright Act (1956) § 48(3)(B) (as amended by Schedule 5, para. 6(23) of
the Cable and Broadcasting Act (1984)). For the British Copyright Council's attempt to limit the scope of that exemption during the preparatory
work of the 1984 Act, see Stephen de B. Bate & Richard McD. Bridge, The
Application of Copyright Protection and Liability to Cable Operators, 9
EUR. INTELL. PROP. REV.
249, 250 (1985).
supra note 113, para. 453 at 119.
119 WHITFORD COMMITTEE REPORT,
88
Strangely enough, the Whitford Committee concluded by stating that
in relation to cable retransmission to hotel rooms "in so far as it covers the
commercial exploitation of copyright works.. . . it will thus be a question
simply whether the communication by wire was or was not 'to the public.' 120 It could be argued that this concluding statement achieved only
one thing, namely to shift the debate surrounding cable retransmission
within hotels to the nature of hotel rooms. Regrettably, this approach, as
discussed earlier, considers the communication as originating in the
screen/speaker of the television or radio set where the public is present, as
opposed to at the place of the retransmission by cable.121
As discussed above, the nature of hotel rooms should be of no relevance in deciding cases involving cable retransmission. It is the sum of
guests in all the rooms which constitutes the public and no consideration
should be given to the occupants of each individual room separately. Be
that as it may, the Whitford Committee elected to exempt cable retransmission to hotel rooms from any copyright liability based on the cable
retransmission right, but astonishingly it left courts with the freedom to
prohibit such conduct under the general public performance right, which
governs communication in public before gathered audience. 122
In 2003, as a result of the Information Society Directive, 123 the UK
abolished its catalogue system with respect to the dissemination of works
in non-material form, whereby a specific right was made applicable for
every major type of exploitation. 124 Accordingly, the cabling right or retransmission by cable was abolished altogether.12 5 Instead a new communication to the public right was introduced to cover all remote
transmissions, including broadcasting. In doing so, UK law recognised two
distinct rights to cover dissemination of works in non-material form: the
communication to the public right to cover people geographically or
chronologically dispersed and the public performance right to cover peo120
121
122
123
124
125
Id.
See Section I(C)(2) supra.
For a non-exclusive list of factors to be taken into consideration whilst assessing the "public" requirement, see Harms Inc., Ltd, & Chappell v. Martans
Club, Ltd., (1927) Ch. 526. All these factors, however, were dismissed as
not decisive in Jennings v. Stephens, (1936) 1 Ch. 469. This renders the
Whiford Committee's concluding statement, which emphasised the "commercial exploitation" or the "for profit requirement" as a factor to be taken
into consideration by courts, a little peculiar.
Directive 2001/29/EC of the European Parliament and of the Council of 22
May 2001 on the harmonisation of certain aspects of copyright and related
rights in the information society, OJ 2001, L 167, at 10.
For an early call for the abolition of the catalogue system with respect to the
dissemination of works in non-material form, see MAKEEN, supra note 9, at
296.
Statutory Instrument 2003/2498 amending the 1988 CDPA.
89
ple physically gathered at the same time and venue, i.e., communication in
public.126
Surprisingly, the new communication-to-the-public right left the exemption of Section 73(3) intact. Thus, in summing the position under UK
law, it could be argued that cable retransmission of a domestic broadcast
to hotel rooms is exempted from any copyright liability based on the new
communication to the public right. Strangely enough, however, if any liability arises from cable retransmission to hotel rooms, it would have to be
based on the nature of hotel rooms and hence the communication in public, i.e., the public performance right.
3.
The Netherlands
The Netherlands is one of the most densely cabled countries in the
world. However, for almost the whole of the twentieth century, the simultaneous cable retransmission of works included in a broadcast programme
has been a controversial issue. The 1912 Dutch Copyright Act did not
provide for cable retransmission. 127 Therefore, courts were saddled with
the burden of providing rules to settle the most disputed issue in Dutch
copyright history.128
The first Supreme Court decision dates back to 1930.129 The question
which the Court had to answer was whether unauthorised retransmission
by a telephone system of broadcast programmes to its subscribers
amounted to a separate and independent prohibited act from that of
broadcasting. Regrettably, the Supreme Court gave a negative answer. In
the Court's view, the operator of the telephone system had done nothing
more than facilitating the reception of the broadcast programme. This
judgment made it clear that copyright did not come into play with regard
to a simultaneous cable retransmission of broadcasts which the public
could anyway receive with an individual antenna. Accordingly, the "individual antenna" theory,13 0 which exempts the simultaneous retransmission
by cable of signals that could be received by individual antenna, was born
and gathered considerable support in the late 1960s.13 1
126
127
128
CDPA (1988) § 16(1)(c), (d) (as amended by SI 2003/2498).
See generally Netherlands Copyright Act (1912).
For the history and scope of the cable retransmission controversy in the
Netherlands, see Herman Cohen Jehoram, Before and After the Cable Decisions of the Supreme Court of the Netherlands, 29 J. COPYRIGHT Soc'Y 312
(1982)
129
130
131
Hoge Rad der Nederlanden [HR] [Supreme Court], 3 Apr. 1930), NJ 1930, 53.
This "individual antenna" theory is almost identical to the direct reception
zone theory, which for the purpose of this article is used interchangeably
with the service zone theory.
For the "individual antenna" theory, see Cohen Jehoram, supra note 128, at
317-19.
90
A quarter of a century later, the Supreme Court had another chance
to decide on the issue of simultaneous cable retransmission. In its decision
of June 27, 1958, the Supreme Court held that the PTT (Post, Telegraph,
Telephone) was liable for simultaneously retransmitting by cable Dutch
and foreign radio programmes to its subscribers without the copyright
owner's consent. 132 Although this judgment should have put an end to the
"individual antenna" theory, attempts were made by the cable industry
and some scholars to interpret the judgment in a way its text could not
accommodate. As a result, the 1972 Amendment of the Dutch Copyright
Act, which was intended to comply with the 1948 Brussels text of the
Berne Convention, did not provide any clear answer to the matter.
On October 30, 1981, however, the Supreme Court, in a clear and
unambiguous decision, held that the "individual antenna" theory was in
direct conflict with Article llbis(1)(ii) of the Berne Convention. Correctly, the Court emphasised that the only determinative criterion under
that Convention and therefore under Dutch law is that of "organisation
other than the original one."13 3 Accordingly, it held the cable network of
Amstelveen liable for simultaneously retransmitting broadcast work without obtaining the copyright owner's consent. That was so, notwithstanding
that the cable network operated within the direct reception zone of the
primary broadcast. 134
Regrettably, the Supreme Court decision of October 30, 1981 expressly excluded from its scope the use of collective antenna.135 With that
exclusion, it was logical that the issue of collective antenna would be subject to further litigation. 13 6 Unsurprisingly, therefore, operators of three
132
Hoge Rad der Nederlanden [HR] [Supreme Court], 27 Juni 1958, NJ 1958,
133
Hoge Rad der Nederlanden [HR] [Supreme Court], 30 Oct. 1981, NJ, 1981,
134
For procedural reasons, the Amstelveen case was referred back to the Amsterdam Court of Appeal. The Court gave a decision in line with the Supreme
Court decision of October 30, 1981. Nevertheless, the cable operator appealed second time to the Supreme Court. On May 25, 1984, the Supreme
Court rendered its judgment which confirmed its previous position.
The Court stated: "not at issue here is the case in which an owner of a building
405.
435.
135
136
or buildings receives broadcasts with an antenna for the radios and television sets in that building or building complex which belong to himself or to
others who occupy the building as tenants or in some other capacity." See
Herman Cohen Jehoram, Simultaneous Cable Retransmissionof Broadcasts
in Dutch and Belgian Copyright Law, IN ELDERECHO DE DIFusION POR
RADIO Y TELEVISION 187 (1998).
Tony Huydecoper, Case Comment, 16 EUR. INTELL. PROP. REV. D-52 (1994);
see also Herman Cohen Jehoram, Battles Around the Agreements Concerning Simultaneous Cable Distributionof BroadcastingProgrammes,134 REV.
INT'L DU DROIT D'AUTEUR 131 33 (1987).
91
collective antennae started proceedings against the Dutch collecting society, BUMA, requesting a declaratory judgment that the use of their systems did not need copyright authorisation.137 The Supreme Court in its
decision of December 24, 1993, refused to make a distinction between a
cable system and a collective antenna.13 8 Furthermore, it rejected any distinction based on the number of sets connected to the system. Similarly, it
rejected any criterion based on the nature, objectives or the type of organisation administering the system. The sole criterion according to the Court
was "organisation other than the original one" as used under Article
llbis(l)(ii) of the Berne Convention. 139 Accordingly, the Court held that
the three operators of the collective antennae needed to obtain the copyright owners' consent before transmitting the broadcast work, irrespective
of whether those connected to the collective antenna could technically receive the broadcast themselves with individual antenna.
It is submitted that although this judgment only settled the issue of
simultaneous cable retransmission through collective antenna in residential buildings, the reasoning employed by the Court could equally apply to
cable retransmission to hotel rooms.
4.
Austria
The Austrian legislature was the first in Europe to attempt to establish special provisions on the use of collective antenna. Therefore, the
Federal Law Concerning Copyright in Works of Literature, Art and Related Rights of April 9, 1936 was amended in 1980.140 By virtue of the
new provision of Article 17(3)(ii)(a) the simultaneous cable retransmission
via a collective antenna is exempted from any copyright liability, provided
three conditions are met. First, all the receivers must be located on "continguous" pieces of land. Secondly, no part of the system, being it the antenna or the cables, may cross a public road. Thirdly, the nearest receiving
set must not be more than 500 meters away from the antenna. Surpris-
137
The first was a co-operatively held organisation of owners of thirty-five homes;
the second was a society of home-owners servicing seventy-two apartments
138
139
140
in a block of flats; the third was a housing society servicing ninety-six homes
in a neighbourhood.
Hoge Rad der Nederlanden [HR] [Supreme Court], Dec. 24, 1993, NJ 1994,
641. See Juliette Jonkers, The Dutch Community Cable Case: A Christmas
Judgment by the Dutch Supreme Court, 38 COPYRIGHT WORLD 43 (1994).
C. J. A. van Engele, Note on the Decision of the Supreme Court, 24 December
1993, 3 ENT. L. REP. 43 (1994).
For the English translation of the amendment, see 15 COPYRIGHT 355 (1980).
92
ingly, the Austrian legislature under Article 17(3)(ii)(b) introduced an
overall exception to cover systems serving less than 500 "participants."141
In its famous decision of June 16, 1998, the Austrian Supreme Court
had a chance to assess the scope of the exception and its application to
hotels.142 The defendant, who managed a hotel, fixed a collective antenna
(1.5m diameter satellite dish) on the roof. The collective antenna was connected to individual hotel rooms via coaxial cable. Thus, guests were able
to select from the different satellite programmes available and to watch
the same in their hotel rooms. At issue was whether the use of the system
involved amounted to a prohibited cable retransmission or whether it
could benefit from the exemptions of Article 17(3)(ii)(a) and (b) of the
Austrian law.
In confirming the decisions of the courts of first instance and appeal,
the Supreme Court found the hotel system to be exempt under Article
17(3)(ii). The Court applied both paragraphs (a) and (b) cumulatively and
found the collective antenna system of the hotel to be within the limits of
the exception. Avoiding discussion of the application of the public performance right of Article 18 to hotel rooms, the Court concluded that the
use of a collective antenna renders any analysis of the nature of a hotel
room redundant. Moreover, the Court dismissed the "for profit requirement" as irrelevant. In the Court's view although the use of a collective
antenna may improve the earnings of the hotel, an economic advantage is
not sufficient grounds to establish copyright infringement.14 3
Although the Court considered the collective antenna exception of
Austrian Law to be in compliance with the Berne Convention, 144 it seems
to have reached that conclusion on the basis of the permissible principle of
"minor reservations." 145 Knowing that minor reservations have to pass
the three step test, the Court stated: "collective antenna systems therefore
do not unreasonably infringe the legitimate interests of the author nor
prejudice the normal use of the work."146 In justifying its position, the
Court pointed out that collective antenna systems may be replaced, be it
141
For the history and critical analysis of that provision, see Michel Walter, Cable
Television in the Austrian CopyrightAmendment Law, 1980, 18
COPYRIGHT
254, 256-58 (1982).
142 Autoren, Komponisten, Musikverleger (AKM) v. X, Oberster Gerichtshof
[OGH] [Supreme Court] June 16, 1998.
143 Winfried Schwarz, Case Comment, 9 ENT. L. REv. N139, N140 (1998).
144 Marie Helen Pichler, Case Comment, 21 EUR. INTELL. PROP. REv. N1, N2
(1999).
145 Schwarz, supra note 143, at N139.
146 For a recent interpretation of the three-step test by a number of international
scholars, see Declaration A Balanced Interpretation of the Three-Step
Test in Copyright Law, available at http://www.ip.mpg.de/ww/en/pub/news/
declarationonthethreestep_.cfm (last updated Oct. 24, 2009).
93
under considerable technical and financial costs, by individual antennas." 147 Put differently, by invoking the minor reservation doctrine, the
Court avoided discussing the compatibility of the service zone theory of
Austrian law with Article llbis(1)(ii) of the Berne Convention.
5.
Spain
In Spain, the simultaneous cable retransmission right has always been
enveloped in ambiguity. For a number of years, cable operators in Spain
argued that simultaneous cable retransmission required only the
authorisation of the original broadcaster. In their view, strangely enough,
cable networks did not retransmit programmes carrying works, but only
television signals.1 48 Even when cable operators accepted the fallacy of
their argument, this did not settle the issue of cable retransmission to hotel
rooms.
For a while the debate focused not on the retransmission right, but
rather on the nature of hotel rooms. Some conflicting decisions were
given by lower courts. In Sociedad General de Autores y Editores (SGAE)
v. Hotel H,149 the court, basing its decision on earlier decisions of the Constitutional Court which held that hotel rooms were private for privacy and
criminal law purposes, concluded that hotel rooms were also private for
copyright purposes.1 50 On the other hand, in Sociedad General de Autores
y Editores (SGAE) v. HRyC Sociedad Limitada, hotel rooms were considered to be public. 1 5
In Sociedad General de Autores y Editores (SGAE) v. Hotel Blanco
Don, the Supreme Court had a chance to consider the nature of hotel
rooms.152 The Court interpreted the communication to the public right of
Article 20 of the Copyright Law teleologically:1 53 the actual presence of
different persons, who have no strong ties, in the same room was irrelevant; the mere fact that the same room could be used successively by different guests, was sufficient to make any communication to the room a
communication to the public. 154 In 2003, however, the Supreme Court
reversed its earlier position and held that a hotel room was a strictly domestic location and consequently no authorisation is required from the
151
See Pichler, supra note 144, at N1-N2.
Jose Antonio Suarez Lozano, Legislative Comment, 7 ENT. L. REv. 93 (1996).
Decision of the Appeal Court of Seville (July 18, 1994), 18 EUR. INTELL. PROP.
REV. D233 (1996).
Luis Gimeno, Case Comment, 19 EUR. INTELL. PROP. REV. D21, D22 (1997).
Decision of the Appeal Court of Seville (Apr. 3, 1995), 18 EUR. INTELL. PROP.
152
153
Judgment of the Supreme Court (Mar. 11, 1996) (RJ 1996/2413).
Law on Intellectual Property (Royal Legislative Decree 1/1996, of April 12,
154
Gimeno, supra note 150, at D21.
147
148
149
150
REV.
1996).
D234 (1996).
94
copyright owners in respect of any communication of their works to such
locations.' 55
Failing to get a satisfactory answer based on the nature of hotel
rooms, copyright owners argued that the mere use of a collective antenna
amounted to a prohibited cable retransmission and therefore is governed
by the communication to the public right of Article 20 of the Spanish Intellectual Property Law. 156 In Entidad de Gestion de Derechos de los
Productores Audiovisuales v. Hosteleria Asturianna SA,1 5 7 the Oviedo
Court referred to the European Court of Justice the following question:
whether Article 1(2)(a) and (3) of the Directive 93/83/EEC were to be
interpreted as meaning that the simultaneous retransmission by cable to
hotel rooms, via a collective antenna, constituted an "act of communication to the public." 158
It is worth noting that in addition to settling the issue of the law applicable to direct broadcasting by satellite at a European level, the Directive
was only concerned with the simultaneous cable retransmission of crossfrontier broadcasting. As such, cable retransmission of domestic broadcasts whether terrestrial or by satellite fall outside its scope.
Furthermore, as correctly pointed out by the ECJ, the Directive
neither requires Member States to introduce a specific cable retransmission right nor defines the scope of any such right.159 All that is required
according to the Directive is that the cable retransmission right must be
exercised through a collecting society. 160 Thus, the ECJ concluded that no
EU Law existed to govern the question of the Oviedo Court, which must
be decided in accordance with national law.161
B.
Uniform Solution at the EC Level
In spite of the set back they encountered before national courts,
Spanish collecting societies maintained their pressure for the recognition
Tribunal Supremo de Espafia [Supreme Court], May 10, 2003, (RJ 2003/3036).
Law on Intellectual Property (Royal Legislative Decree 1/1996, of 12th April
1996) (as amended).
157 Case C 293/98, 2000 E.C.R. 1-629.
158 Council Directive on the Coordination of Certain Rules Concerning Copyright
and Rights Related to Copyright Applicable to Satellite Broadcasting and
Cable Retransmission (93/83/EEC) of 27 September 1993, OJ No L 248/15,
October 6, 1993, at 15. This Directive is known as the "Satellite and Cable
Directive."
159 Entidad de Gestion de Derechos de los Productores Audiovisuales, C 293/98
para. 24.
160 For analysis of the provisions of the Directive, see MAKEEN, supra note 9, 21621, 273-77.
161 Entidad de Gestion de Derechos de los Productores Audiovisuales, C 293/98
para. 28.
155
156
95
of the simultaneous cable retransmission to hotel rooms as a separate and
independent prohibited act from that of broadcasting.
It is against this background that the Spanish collecting society Sociedad General de Autores y Editores de Espafia (SGAE) brought an action
against Rafael Hotel, before the Juzgado de Primera Instancia of Barcelona. Rafael Hotel used a collective antenna to pick up broadcast signals
carrying protected works and simultaneously retransmitted the same by
cable to hotel rooms. SGAE took the view that that amounted to a communication to the public of works belonging to its members.
Following the decision of the Spanish Supreme Court of May 10,
2003,162 the court of first instance dismissed SGAE's claim on the basis
that hotel rooms were a strictly domestic location. 163 SGAE appealed the
decision before the Audiencia Provincial de Barcelona. The Provincial
Court decided to stay the proceedings and to refer the issue to the European Court of Justice for a preliminary ruling.
Although three poorly drafted questions were referred to the ECJ in
Sociedad General de Autores y Editores de Espafia (SGAE) v. Rafael
Hoteles SA, 164 the issue for the purpose of this article was whether the
hotel's actions of simultaneously retransmitting by cable broadcast works
to hotel rooms amounted to a communication to the public within the
meaning of Article 3 of the Information Society Directive.
The Directive 2001/29 on the harmonisation of certain aspects of copyright (the Information Society Directive) was adopted to comply with the
international obligations stemming from the WIPO Treaties of 1996 and to
162
163
164
Id. .
Juzgado de primera instancia, 6 June 2003 (unreported).
Case C-306/05, Sociedad General de Autores y Editores de Espafia (SGAE) v.
Rafael Hoteles SA, 2006 E.C.R. 1-11519. The court noted that the questions posed by the Audiencia Provincal Barcelona were:
(1) Does the installation in hotel rooms of television sets to which a satellite or terrestrial television signal is sent by cable constitute an act of
communication to the public which is covered by the harmonisation of
national laws protecting copyright provided for in Article 3 of Directive
(2001/29)?
(2) Is the fact of deeming a hotel room to be a strictly domestic location,
so that communication by means of television sets to which is fed a signal
previously received by the hotel is not regarded as communication to the
public, contrary to the protection of copyright pursued by Directive
(2001/29)?
(3) For the purposes of protecting copyright in relation to acts of communication to the public provided for in Directive (2001/29), can a communication that is effected through a television set inside a hotel bedroom be
regarded as public because successive viewers have access to the work?
Id. para. 20.
96
harmonise further copyright law within the EC.s6 5 Copying the language
of Article 8 of the WIPO Copyright Treaty of 1996, Article 3 of the Directive required member states to "provide authors with the exclusive right to
authorise or prohibit any communication to the public of their works, by
wire or wireless means, 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 at a time individually chosen by them."
In Sociedad General de Autores y Editores de Espafia (SGAE) v. Rafael Hoteles SA,1 66 the Court emphasised that according to settled case law,
in interpreting a provision of Community law it is necessary to consider
not only its wording, but also the context in which it occurs and the objectives pursued by the rules of which it is part.167 Since one of the objectives
of the Directive was to harmonise further the author's right of communication to the public,168 the Court adopted the principle that any
harmonisation of that right must take as a basis a high level of protec-
tion. 169 The ECJ acknowledged, however, that the Directive does not de-
fine the communication to the public right. 170 Therefore, the Court stated
that the communication to the public right of Article 3 of the Information
Society Directive must, as far as is possible, be interpreted in a manner
that is consistent with international agreements concluded by the EC.
Therefore, the Court's first task was to identify the international provisions according to which Article 3 of Information Society Directive should
be interpreted.
The Court pointed out that since one of the aims of the Information
Society Directive was to implement the new international obligations
stemming from the WIPO Treaties of 1996,171 the Court believed that Article 8 of the WIPO Copyright Treaty should be considered. Similarly, the
Court noted that although the EC was not a member of the Berne Convention, as membership of the Berne Union is confined to states, the provisions of that Convention must be followed. This is especially so, since
165
166
167
168
169
170
171
Directive 2001/29/EC of the European Parliament and of the Council of 22
May 2001 on the harmonisation of certain aspects of copyright and related
rights in the information society, OJ 2001, L 167, at 10
Case C-306/05, Sociedad General de Autores y Editores de Espafia (SGAE).
Id. para. 34 (citing Case C156/98, Germany v. Commission, (2000) ECR I6857, para. 50, and Case C53/05, Commission v. Portugal, (2006) ECR I0000, para. 20.
Id. paras. 14, 30 (quoting Recital 23 of the Directive).
Id. para. 26 (citing Recital 9 of the Information Society Directive).
Id. para. 33.
Recital 15 of the Information Society Directive. The WIPO Copyright Treaty
and the WIPO Performers and Phonograms Treaty were approved on behalf of the EC, by a Council Decision 2000/278/EEC of March 16, 2000, OJ
2000 L89, at 6.
97
Article 9 of the TRIPs Agreement, to which the EC is a party, requires
members to comply with Articles 1 through 21 of the Berne Convention
(excluding Article 6bis).172 Accordingly, the relevance of Article
llbis(1)(ii) of Berne was established.
The following subsections assess the Court's interpretation of Article
3 of the Information Society Directive in light of Article 8 of the WIPO
Copyright Treaty and Article llbis(1)(ii) of the Berne Convention
respectively.
1.
The Court's Interpretation of Article 3 of the Information Society
Directive in Light of Article 8 of the WIPO Copyright
Treaty
In accordance with Recital 23 of the Directive, which followed the
analysis given above to Article 8 of the WIPO Copyright Treaty, 73 the
Court interpreted the communication to the public right to cover only the
dissemination of works to a public not present at the place where the communication originates. Accordingly, it distinguished between "communication to" the public and "communication in" public and made it clear that
the Information Society Directive does not cover acts of communication in
public, 174 therefore, dismissing any arguments based on the nature of hotel rooms, whether private or public, as immaterial.' 7 5
As mentioned above, neither Article 8 of the WIPO Copyright Treaty
nor Article 3 of the Informational Society Directive defined the term
"public." Relying on earlier ECJ decisions, the Court defined it as "indeterminate number of potential television viewers." 176 Regrettably, however, instead of applying this definition only to the sum of hotel rooms, the
Court confused the issue by taking into consideration all guests present in
the hotel, including public areas such as bars and restaurants, etc.'7 7 It is
172
173
174
175
176
177
The Agreement on Trade- Related Aspects of the Intellectual Property Rights
(TRIPs), is set out in Annex 1C to the Marrakesh Agreement establishing
the World Trade Organisation. It was approved on behalf of the European
Community by Council Decision 94/800/EEC of December 22, 1994, OJ
1994 L 336, para. 1.
See Section I(C)(2) supra.
Case C-306/05, Sociedad General de Autores y Editores de Esparta (SGAE),
para. 36.
Id. para. 50.
Id. para. 37 (citing Case C89/04, Mediakabel BV v. Commissariaat voor de
Media, 2005 ECR 1-4891, para. 30; Case C-192/04, Lagardbre Active Broad.
v. Soci6t6 pour la Perception de la R6mundration equitable, 2005 ECR I7199, para. 31).
Id. para. 38. As discussed above, reception in public areas is a type of communication in public and therefore is not covered by the communication to the
public right of Article 8 of the WIPO Copyright Treaty.
98
submitted that in doing so, the Court not only failed to give a clear answer
to whether cable retransmission to hotel rooms comes within the scope of
the communication to the public right, but also contradicted its earlier distinction between "communication to the public" and "communication in
public."
Moreover, it is submitted that in defining the term "public," the Court
seems to have taken the second leg of Article 3 of the Information Society
Directive, i.e., the "making available right," beyond its intended purpose.
In stating that "[i]t is also necessary to take into account the fact that,
usually, hotel customers quickly succeed each other,"' 7 8 the Court seems
to have confused the first part of the communication to the public right,
i.e., the general communication to the public right with the second leg of
the making available right. As discussed above, the general communication to the public right under the WIPO Copyright Treaty does not cover
people chronologically dispersed. The chronological aspect of the communication to the public rights is covered by the specific "making available
right." Similarly, as mentioned above, the "making available right" comes
into play only when members of the public access the work from a place
and a time individually chosen by them. Conversely, it does not apply to
services that operate on predetermined programmes basis, such as radio
and television radio broadcast, cable-originated programmes, webcasting,
or to cable retransmission, etc. Since guests in hotel rooms, according to
the question referred to the Court, were fed signals carrying predetermined programmes, it is difficult to understand the reference by the Court
to the "chronological" aspect of the making available right, i.e., the fact
that hotel customers quickly succeed each other.
As for "the profit" argument, the ECJ acknowledged that the provision of the simultaneous cable retransmission by the hotel had "an influence on the hotel's standing and, therefore, on the price of rooms." 179 The
Court, however, did not discuss the impact that may have on the communication to the public right.180
Id. paras. 38, 39.
Id. para. 44.
180 The Court only stated:
178
179
Therefore, even taking the view, as does the Commission of the European Communities, that the pursuit of profit is not a necessary condition
for the existence of a communication to the public, it is in any event established that the communication is of a profit-making nature in circumstances such as those in the main proceedings.
Id. para. 44.
2.
99
The Court's Interpretationof Article 3 of the Information Society
Directive in Light of Article 11bis of the Berne Convention
Since Article llbis(1)(ii) has been discussed in depth earlier, this section focuses only on the interpretation given by the Court to that provision. In interpreting Article llbis(1)(ii), the Court stated:
[A] communication made in circumstances such as those in the main proceedings constitutes, according to Article llbis(1)(ii) of the Berne Convention, a communication made by a broadcastingorganisationother than
the original one (emphasis added). Thus, such a transmission is made to a
public different from the public at which the original act of communication of the work is directed, that is, to a new public.181
The above statement seems to have been based on misunderstanding
of the history and scope of the criterion governing the application of Article 11 bis(1)(ii)of the Berne Convention.
The history of Article llbis(1)(ii), as discussed above, cannot support
the "new public" criterion. Indeed, the travaux prdparatoiresof Article
llbis(1)(ii), i.e., the Documents of the Brussels Conference, make it absolutely clear that the "new public" criterion was emphatically rejected by
the Brussels Conference. In supporting its erroneous view of "new public," the Court referred to the Masouyd's WIPO Guide to the Berne Convention.182 Although this Guide is a valuable interpretative document, as
correctly pointed out by the ECJ, it does not represent an authentic interpretation of the provisions of the Convention and therefore is not binding.18 3 Strangely enough, the Court still followed Masouye's
interpretation and found the hotel's action to fall foul of Article
llbis(1)(ii) on the ground that [tihe Clientele of a hotel forms such a new
public." 184
Furthermore, the scope of Article llbis(1)(ii) seems to have been erroneously narrowed by the Court. In stating that "a communication made
in circumstances such as those in the main proceedings constitutes, according to Article llbis(1)(ii) of the Berne Convention, a communication
made by a broadcasting organisation other than the original one," the
Court unintentionally has narrowed the scope of the provision. As argued
by Desbois and Francon, "[o]ne cannot, in order to diminish the scope of
this formula of Article 1Ibis (1)(ii), claim that by any communication of
181
Id. para. 40 (emphasis added).
WIPO GUIDE TO THE BERNE CONVENTION 68 (William
Wallace trans., 1978).
Case C-306/05, Sociedad General de Autores y Editores de Espafia (SGAE),
para. 41.
Id. para. 42.
182 CLAUDE MASOUY8,
183
184
100
the broadcast work made by an organisation other than the original one is
meant a communication made by a broadcasting organization."1 85
Furthermore, the Court seems to have misunderstood the underlying
principle governing Article 1lbis(1)(ii). The Court's assertion that in the
absence of the intervention by the hotel management (through the use of a
collective antenna), the customers would not have been able to enjoy the
broadcast work, is irrelevant and factually wrong.186
It is irrelevant because in using "access" to the work as a determinative factor, the Court had erroneously adopted the "new public" as the
governing criterion. As discussed above, the sole criterion under Article
llbis(1)(ii) of Berne is "organization other than the original one." Put
differently, Article llbis(1)(ii) is based on the concept of "different use,"
whereby broadcasting and retransmission by cable are considered separate
and independent prohibited acts. The only exception to that rule is cable
retransmission made by the original broadcasting organisation. Since
broadcasting and simultaneous cable retransmission are two different
types of use, this on its own renders any discussion related to the access to
the work, i.e., catchment area, service zone and/or direct reception zone,
otiose. Similarly, it is factually wrong because a collective antenna may be
replaced, be it under considerable technical and financial costs, by individual antennae.
Since the "new public" criterion lies at the heart of the ECJ decision,
it may be useful to explain why it was followed. The Court's adoption of
the "new public" criterion seems to have been influenced by the inaccurate Opinion of Advocate General Sharpston of 13 July 2006.187 In that
Opinion, the Advocate General relied on an earlier opinion of Advocate
General La Pergola in the EGEDA case, notwithstanding that the latter
was given outside the scope of the answers strictly required in response to
the reference at hand.' 88 Sharpston stated:
185
186
187
188
Desbois & Frangon, supra note 18, at 48.
The court stated:
The transmission of the broadcast work to that clientele using television
sets is not just a technical means to ensure or improve reception of the
original broadcast in the catchment area. On the contrary, the hotel is
the organisation which intervenes, in full knowledge of the consequences
of its action, to give access to the protected work to its customers. In the
absence of that intervention, its customers, although physically within
that area, would not, in principle, be able to enjoy the broadcast work
Case C-306/05, Sociedad Generalde Autores y Editores de Espafia (SGAE),
para. 42.
Opinion of the Advocate General Sharpston (July 13, 2006), Sociedad General
de Autores y Editores de Espafia (SGAE) v. Rafael Hoteles SA., Case C306/05 [hereinafter Sharpston Opinion].
As discussed above, in EGEDA the question was simply whether the Satellite
and Cable Directive applies to the use of collective antenna by a hotel.
101
It appears that the criterion of communication 'by an organisation other
than the original one', used in Article llbis(l)(ii) of the Convention, was
adopted as a 'purely functional' distinction: the option of requiring a
fresh authorisation whenever the retransmission 'procured a fresh circle
of listeners' was deliberately rejected. None the less, that seems to be the
essence of the provision's effect. 189
It is submitted that neither the wording, nor the history of the provision, as discussed above, could support the view that the essence of Article
llbis(1)(ii) is based on the " new public" criterion.
Therefore, in summary, it could be argued that although the Court
has correctly acknowledged "an organisation other than the original one"
to be a factor under Article llbis(1)(ii), it erred in not classifying it as the
decisive factor. Similarly, it could be argued that in following the "new
public "criterion, a major part of the ECJ decision was given per incuriam.
The impact of the decision, however, goes beyond the simultaneous
cable retransmission to hotel rooms. In its decision, the ECJ made it clear
that it was no longer possible for each national law to provide its own
definition of communication to the public. 190 Accordingly the meaning
and scope of the communication to the public right must be given "an
autonomous and uniform interpretation throughout the Community." 191
Thus, it is no longer valid to speak of "harmonisation" but rather "unification" of the communication to the public right within the EC. This unification, in turn, may have an impact on the general simultaneous cable
retransmission right and the use of collective antennae in residential
buildings.
As far as the general simultaneous cable retransmission is concerned,
some countries in the EU, such as the UK, have adopted the service zone
theory. 192 As such, they exempted the simultaneous cable retransmission
of domestic broadcast within the service zone or the direct reception zone
from any copyright liability. Other countries, such as France, followed the
wording and the spirit of Article llbis(1)(ii) and prohibited any simultaneous cable retransmission made by "an organisation other than the original
one." The unification of the communication to the public right within the
EC renders such disparity difficult to maintain.
Accordingly, a uniform interpretation of the communication to the
public right within the EU would require national laws to follow the criteTherefore, La Pergola's interpretation of Article 11bis should have carried
little weight in future cases. For the same meaning, see Anne Bateman,
Case Comment, 29 EUR. INTELL. PROP. REV. 22, 23 (2007).
189 Sharpston Opinion, supra note 187, para. 50.
190 Case C-306/05, Sociedad General de Autores y Editores de Espafia (SGAE),
para. 1.
191 Id.
192 CDPA
(1988) § 73(3).
102
rion of "organisation other than the original one" of Article llbis(l)(ii) of
Berne, as the sole governing criterion to simultaneous cable retransmission. This is especially so, since a uniform approach, according to the ECJ
decision, and the spirit, if not the wording, of the ninth recital of the Information Society Directive, "must take as a basis a high level of protection."
As a result, it will be no longer possible for any national law, within the
EC, to exempt the simultaneous cable retransmission within the service
zone or the direct reception zone.
Furthermore, the uniform applications of the communication to the
public right may also affect the use of collective antennae in residential
buildings at EC level. At present, national laws adopt different approaches. As discussed above, whilst French law prohibits any such unauthorized use, Section 73 of the CDPA of the UK exempts such use within
the service zone or direct reception zone. Similarly, Article 17 of the Austrian law recognises a specific exemption based inter alia on the number of
receiving sets linked to the antenna and a maximum distance of connection. It could be argued, therefore, that one of the indirect consequences
of this ECJ decision would be the recognition of the gratuitous use of collective antenna within residential buildings as a separate and prohibited
act from that of broadcasting. 193 This is especially so, since the ECJ decision in SGAE did not consider satisfying the "for profit" requirement a
prerequisite for the application of the communication to the public right of
Article 3 of the Information Society Directive.
Whilst it was arguably possible before the ECJ decision for national
laws to invoke the minor reservation doctrine of Berne to exempt the use
of collective antenna within residential buildings, a uniform application of
the communication to the public right at EC level would render any such
argument untenable. Article 5 of the Information Society Directive constitutes an exhaustive list of exemptions and limitations, and the use of
collective antenna was not specifically mentioned under that provision.194
193
194
Although the ECJ decision failed to provide a clear definition of the term
"public", since any unification of the scope of the communication to the
public right has to be based on a high level of protection, then the notion of
"public" would have to be interpreted qualitatively rather than quantitavtively. As a result, residents of the same building who are only vertically
linked to the collective antenna, but not horizontally to each other, would
satisfy the "public" requirement of Article 3 of the Information Society
Directive.
Although Article 5(3)(0) of the Information Society Directive permits member states to exempt certain special cases of minor importance, any such
exemption has to meet three requirements: first, the exemption had to be in
existence before the coming into force of the Directive; secondly, any such
exemption must concern only analogue uses; and thirdly, any such exemption must not affect the free movement of goods and services within the
103
Thus, any national law that exempts such use would be running the risk of
being incompatible with the provisions of the Directive.
III. CONCLUSION
Since the simultaneous cable retransmission to hotel rooms was not
specifically prohibited under international copyright treaties, it was
wrongly believed that under the Berne Convention national laws were at
liberty to prohibit or exempt such use. Accordingly, national laws within
the EC adopted different approaches in respect of that issue.
As this article has demonstrated, however, the sole criterion applicable to cable retransmission under the Berne Convention is that of "an organization other than the original one." Since the management or the
owner of a hotel is normally a separate entity from that of the broadcasting organization, then any simultaneous cable retransmission by the former falls within the scope of the prohibition of Article llbis(1)(ii).
Furthermore, this article has demonstrated that the communication to
the public right of Article 8 of the WIPO Copyright Treaty, whilst being
relevant to cable originated programmes, it is of little relevance in respect
of cable retransmission. As such, Article 8 of the WIPO Copyright Treaty
is of little help in defining the scope of Article 3 of the Information Society
Directive as applied to cable retransmission. This leaves Article
llbis(1)(ii) of the Berne Convention as the only applicable international
provision to cable retransmission to hotel rooms. Thus, as far as cable
retransmission is concerned, the scope of Article 3 of the Information Society Directive could only be defined in light of Article 11 bis(1)(ii) of the
Berne Convention.
Regrettably, the ECJ's interpretation of Article llbis(1)(ii) in Sociedad General de Autores y Editores de Espafia (SGAE) v. Rafael Hoteles
SA, seems to have been based on misunderstanding of the history, scope
and the underlying principle governing the application of that provision.
Whilst acknowledging "organisation other than the original one" as a factor under Article llbis(1)(ii), the ECJ still followed the "new public" criterion. In doing so, the Court relied heavily on Masouye's Guide to the
Berne Convention and the Advocate General Opinion. Not only neither
of these two sources is binding as authoritative interpretation of the Convention, but also both have ignored the legislative history and the clear
community. Whether cable retransmission to hotel rooms can ever be classified as "certain special cases" of "minor importance," and whether it can
pass the three step test of Article 5(5) of the Directive, is an intriguing issue
for the future. However, since the second requirement of the provision
mentioned above confines the scope of the exemption to "analogue uses,"
then most, if not all, cable retransmissions, which are digital in nature,
would fall outside the scope of the provision.
104
wording of Article llbis(1)(ii). Therefore, it could be argued that a major
part of the ECJ decision was given per incuriam.
In all the European jurisdictions under discussion three issues were
raised, whether directly or indirectly, in respect of cable retransmission to
hotel rooms. First, the cable retransmission right and accordingly Article
llbis(1)(ii). Secondly, the nature of hotel rooms and the scope of the public performance right. Thirdly, the for-profit requirement and its impact
on cable retransmission to hotel rooms.
In France, after a period of hesitation, the Court of Cassation dismissed the for-profit requirement as irrelevant. Similarly, in examining
the scope of the term "public," the Court, frequently took into consideration the sum of potential recipients, which rendered any discussion on the
nature of hotel rooms redundant. In settling the issue of cable retransmission to hotel rooms, the Court of Cassation based its approach solely on
the cable retransmission right, which is recognised as a separate sub-right
within the wider right of telediffusion.
In the UK, Section 73(3) of the CDPA adopted the direct reception/
service zone theory. 19 5 As a result, the simultaneous cable retransmission
of primary broadcast within the direct reception area is exempted from
any copyright liability. Therefore, cable retransmission to hotel rooms
could not be governed by the abolished cable retransmission right or the
new communication to the public right. As far as cable retransmission of
domestic broadcast is concerned, and in line with the conclusion of the
Whitford Committee, it could be argued that such conduct may only be
prohibited based on the nature of hotel rooms, i.e., the public performance
right, which only governs communication in public. In assessing the scope
of the public performance right, the commercial aspect or the for-profit
requirement, though not decisive on its own, would be taken into
consideration.
In the Netherlands, for a while, the "individual antenna" theory found
support from governmental bodies and some legal scholars. The Supreme
Court, however, made it clear that the only applicable criterion is that of
"organisation other than the original one." In applying the criterion to
cases involving collective antennae, the Court refused to distinguish between cable systems and the use of a collective antennae. In doing so, the
"for-profit" requirement was dismissed as irrelevant.
In Austria, an exemption to cover the use of collective antennae is
specifically recognised. In applying this exemption to cover the simultaneous cable retransmission to hotel rooms, the Supreme Court pointed out
that the mere use of a collective antenna renders any discussion about the
195
As mentioned earlier, this article uses the terms "direct reception zone" and
the "service zone" interchangeably.
105
nature of hotel rooms redundant. Similarly, in rejecting the for profit requirement, the Court concluded that whilst the use of a collective antenna
may improve the earnings of the hotel, an economic advantage was not
sufficient grounds to establish copyright infringement.
In Spain, the discussion initially centred around the nature of hotel
rooms. As a result of contradictory decisions by the Supreme Court, copyright owners tried to invoke European law. Their first attempt to invoke
European law in Entidad de Gestion de Derechos de Los Productores
Audiovisuales v. Hosteleria Asturianna SA was ill founded. Their second
attempt, however, led to the ECJ decision in Sociedad General de Autores
y Editores de Espafia (SGAE) v. Rafael Hoteles SA, which although
recognised the simultaneous cable retransmission to hotel rooms as a separate and prohibited act from that of broadcasting, the reasoning employed
by the Court left much to be desired.
Owing to the size and importance of the tourism industry within the
EC, the ECJ decision may have important economic consequences. Thus,
unless the European Commission intervenes with a new directive or
amends an existing directive, all national laws within the EC have to follow the ECJ approach and recognise the simultaneous cable retransmission to hotel rooms as a separate and independent prohibited act from that
of broadcasting.

ein nline - LL.M. in Intellectual Property

Transcription

Similar documents

- Included with Park Millennium Cable TV Package

ECONoMIC SKILLS`LAS AnafyZihg Changes ill Qe/`nahd

flyer! - Lm-therm Elektrotechnik AG

REI Wire Strippers

Hywire Install.indd

MXCL-D0135-Maxcell Info Sheet.indd

Diapositiva 1

CableMaster Cable TesTer

LOROM High-Speed Products

silly cable tech terms