HomeInsightsCourt of Appeal upholds Master’s decision not to allow service of copyright infringement proceedings on Google out of jurisdiction in “communication to the public” case involving “hotlinking”

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The claimant, Christopher Wheat, appealed against an order made by Chief Master Marsh refusing to allow service of proceedings against the defendant, Google LLC, out of the jurisdiction.

Mr Wheat owned and operated a website called “theirearth.com” via a server network hosted by a German company using a single IP address. The website was a news media site, focusing on issues of ecology and sustainability, with a large number of original articles and photographs and a directory to other websites. Mr Wheat claimed that he had written the articles and had taken the photographs and that he was therefore the owner of the copyright in them. Access to the website was free and unrestricted.

Google Search works by compiling an index of the content of webpages and then searching that index in response to an individual search request, rather than searching the vast number of pages on the internet. The index is created with a web crawler, which examines the content of webpages and saves and stores that content in a cache. The cache will include thumbnail copies of all images examined by the web crawler.

“Hotlinking” is a process whereby a website displays a linked object, often in the form of an image, which is stored on the server hosting the content of a second website. Hotlinking does not involve any copy being made of the image belonging to the second website. Instead, when a user visits the webpage on the first website containing a hotlinked image, the HTML code of that first website instructs the user’s browser to display the image directly from the server on which the content for the second website is hosted.

Mr Wheat said that when an internet user searches on Google Search for an image of a particular person or thing a list of results is shown. In his case, and considered from the point of view at the relevant time, those results include an image that is on Mr Wheat’s website, the copyright of which is owned by Mr Wheat. However, underneath the headline result is shown not only a link to his website, but also a link to a hotlinking website. Further, if the internet user clicks on the headline result, he is directed to the hotlinking website, not to Mr Wheat’s website. If he then clicks to view the image on the hotlinking website, what he actually sees is the image displayed directly from the server on which the content of Mr Wheat’s website is hosted. Mr Wheat said that the results produce by Google Search contained an attribution of the image to the hotlinking website. Further, although the image seen by the internet user is displayed directly by Mr Wheat’s website’s host server, the internet user never actually visits Mr Wheat’s website; this results in a loss of traffic and consequently a loss of revenue from advertising.

Mr Wheat argued that by this process, Google had communicated his copyright works to members of the public within s 20(2)(b) of the Copyright, Designs and Patents Act 1988, and had thereby infringed his copyright pursuant to s 16(2) because the communication was without his licence. The communication was without his licence because, although he had given consent to Google to index and cache the content of his website, that consent could not properly be construed as permitting Google to use the cached content to enable internet users to access the content via other (hotlinking) websites and without being directed to his own website.

It was common ground that: (i) hotlinking is done by third parties, not by Google, and is lawful; (ii) internet users who viewed the copyright images via the hotlinking websites were in fact directly viewing the content on Mr Wheat’s website by means of the server that hosted it; (iii) therefore, there had been no infringement of the copyright in the images by copying and those who viewed the images via the hotlinking websites were doing so lawfully; (iv) Mr Wheat had consented to Google searching, indexing and caching the content of his website; and (v) the website content was available without restriction to all internet users: there was no payment or subscription requirement and no control on access to the website.

Considering whether Mr Wheat’s claim raised a serious issue to be tried on the merits, which is the first stage in the three-stage test set out in Altimo Holdings and Investment Ltd v Kyrgyz Mobil Tel Ltd [2011] UKPC 7 on service out of jurisdiction, His Honour Judge Keyser QC rejected Mr Wheat’s argument that Google had “attributed” the images, or copyright in the images, to the hotlinking sites. Nothing that Google was alleged to have done had the effect of depriving Mr Wheat of his copyright in any images or of transferring copyright to or conferring it on third parties. Google had not held out third parties as owning the copyright in any of the images that were on Mr Wheat’s website. Google had produced results in a form that showed that the images could be viewed by going to the hotlinking websites, which were entirely lawful.

In response to Mr Wheat’s contention that Google had prioritised the hotlinking websites in its ordering and presentation of results, HHJ Keyser agreed with the Chief Master who had said: “The complaint that Google has prioritised one website over another does not give rise to a claim for copyright infringement.” The ordering of search results was not an act restricted by the copyright for the purposes of s 16 of the CDPA, he said.

Mr Wheat also said that his consent to Google searching, indexing and caching the content of his website extended only to the linking of images to his website and did not extend to the communication of the content via hotlinking, websites, as this deprived Mr Wheat of both traffic and revenue.

HHJ Keyser said that to show infringement by communication to the public under s 20(2)(b), Mr Wheat had to show that Google had communicated his copyright works either: (i) to “a new public”, namely a public to which his licence to Google did not extend; or (ii) by a different technical means from that which he had authorised.

HHJ Keyser referred to Case C-466/12 Svensson v Retriever Sverige AB [2014] Bus LR 259, in which the CJEU had treated the internet as a single technical means, meaning that Mr Wheat had to rely on the alternative route to showing that the communication was unlicensed, i.e. that it was to “a new public”. In addition, the reasoning in Svensson necessarily meant that the communication complained of by Mr Wheat must have been to the same public as that within the scope of his licence, because it was within the class of potential visitors to his website.

HHJ Keyser noted that in Warner Music UK Ltd v TuneIn Inc [2019] EWHC 2923 (Ch), Mr Justice Birss had said that: “Once one has taken the step of deciding that the first act of communication is targeted to all potential visitors to the site concerned and that this means all internet users, then […] people accessing the second site are necessarily potential recipients of the first act of communication” and were taken into account by the copyright owner when he/she authorised the first communication. This reasoning was, Birss J said, based on the fact that “once a copyright owner has given permission for a work to be put on a website which is not subject to technical access restrictions, they must be taken to have targeted, and therefore taken into account, the entire world as the relevant ‘public’”.

The acts complained of against Google could not therefore be unlicensed communications because they were not communications to a new public (all potential users of Mr Wheat’s unrestricted website constituting one public, so far as concerns a case involving communication via hotlinking) and were not communications by a new technical means (the internet constituting a single technical means). Therefore the appeal failed. (Christopher Wheat v Google LLC [2020] EWHC 27 (Ch) (15 January 2020) — to read the judgment in full, click here).