Prof. Jane C. Ginsburg, Columbia University School of Law
October 29, 2012

The 1996 WIPO Treaties oblige Member States to protect authors’ and performers’ rights of “communication to the public,” “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.” (WIPO Copyright Treaty art. 8; WIPO Performers and Phonograms Treaty, arts. 10 (performers); 14 (phonogram producers)).  In the 2001 Information Society Directive, the EU directed Member States to implement the “making available” right (art. 3).  But neither the WIPO Treaties nor the Information Society Directive explicitly address the localization of the “making available” right.  That is, is the work made available to the public from the jurisdiction in which the person or entity offering the work is located?  Is the work made available to the public located in a particular country (or countries)?  Both?

From both a licensing and an infringement perspective, it matters where the place where the act of making available occurs.  From the point of view of licensing, the person acquiring the rights to make a work available, for example, by offering it for streaming or for downloading, will want to know whether she must obtain rights for every country to whose residents she offers access to the work, or whether it suffices that she clear rights for the country from which she is engaged in the business of making the works available.  From the infringement angle, the author, performer, or rightholder will want to know whether he may initiate the action in any country to which the work is communicated, or whether he must go to the courts where the effective business establishment of the person offering the work is located.  Or must he ascertain where the server from which the work is offered is located, and bring the action there?  The same questions pertain to the applicable law: Is it the law of each country where members of the public accessing the work are located or resident?  The law of the offeror’s residence or business establishment?  The law where the technical means of communicating the works (the server) is located?

On Oct 18, 2012, the Court of Justice for the European Union (CJEU) addressed the litigation aspect of the “making available” right.  Its decision in Football Dataco, Ltd. v. Sportradar, GmbH, Case C-173/11, in fact concerned the “re-utilization” right set out in the 1996 Database Directive (Directive 96/9/EC, OJ 1996 L 77, p. 20, art. 7), but that right has been understood to constitute a “making available” right for non-original databases.  (See, e.g., Database Directive, art. 7(2)(b); Football Dataco, opinion of Advocate General Cruz Villalón, 21 June 2012, paras. 39, 41.)  In Football Dataco, a German company, Sportradar, allegedly copied data concerning ongoing British football matches1 and offered it to Internet users (principally British users) from its server in Germany.  When the British football interests sued in Britain for violation of the re-utilization right, the British courts, in response to Sportradar’s challenge to their jurisdiction over the action, sought the guidance of the CJEU.

The relevant EU text designating the competent forum (the “Brussels Regulation”2) permits the plaintiff to sue “in the courts for the place where the harmful event occurred or may occur.”  The text pertaining to applicable law (the “Rome II Regulation”3 ), designates “the law of the country for which protection is claimed.”  Since plaintiffs often seek protection in the country where the harm is transpiring, localizing the place of the harm will generally identify both the (or a) forum, and the applicable law.  In Football Dataco the plaintiff football interests claimed that the harmful event – the offering of the sports match information – was occurring in the UK, which was the place of economic impact, because Sportradar was allegedly targeting customers there.  Thus, the action should proceed in the UK, whose law implementing the Database Directive would apply.  Sportradar countered that the harm occurred in Germany, whence the information was stored on a server and made available to customers over the Internet, and that the UK plaintiffs therefore must come to Germany to sue in local courts applying local law.

The CJEU rejected the server approach in favor of one focusing on the national market(s) to which the defendant was directing its offer to make the content available.

The localisation of an act of re-utilisation in the territory of the Member State to which the data in question is sent depends on there being evidence from which it may be concluded that the act discloses an intention on the part of its performer to target persons in that territory.

In the dispute in the main proceedings, the circumstance that the data on Sportradar’s server includes data relating to English football league matches, which is such as to show that the acts of sending at issue in the main proceedings proceed from an intention on the part of Sportradar to attract the interest of the public in the United Kingdom, may constitute such evidence….

The argument put forward by Sportradar that an act of re-utilisation within the meaning of Article 7 of Directive 96/9 must in all circumstances be regarded as located exclusively in the territory of the Member State in which the web server from which the data in question is sent is situated cannot be accepted.

Besides the fact that, as Football Dataco and others observe, it is sometimes difficult to localise such a server with certainty, such an interpretation would mean that an operator who, without the consent of the maker of the database protected by the sui generis right under the law of a particular Member State, proceeds to re-utilise online the content of that database, targeting the public in that Member State, would escape the application of that national law solely because his server is located outside the territory of that State….

Moreover, as Football Dataco and Others submit, the objective of protection of databases by the sui generis right pursued by Directive 96/9 would, in general, be compromised if acts of re-utilisation aimed at the public in all or part of the territory of the European Union were outside the scope of that directive and the national legislation transposing it, merely because the server of the website used by the person doing that act was located in a non-member country.

Paras. 39, 40, 44-46 (citations omitted).

The court thus voiced two objections to the server point of attachment, one technical, the other, and far more important concern, pragmatic.  First, the process of communicating works over the Internet may in fact implicate multiple and shifting servers in more than one country: Pinning down the place of the server may both be elusive and yield too many possible fora or applicable laws.  Second, were the place of the server deemed the place of “making available,” the risk would be too great that Internet entrepreneurs will opportunistically locate their servers outside EU Member States, thus evading the jurisdiction of EU courts and the substantive application of EU norms.

By contrast, linking the place of the act to the intended market for the work makes economic sense and avoids the pitfalls of a point of attachment based solely on the place(s) of receipt of the communication.  Because Sportradar’s communications apparently could be received throughout the world, Sportradar could have faced the mirror image of the litigation risk its server approach sought to impose on the right owners.  That is, rather than manipulating judicial and legislative competence by convenient (to it) location of its server, Sportradar could have found itself amenable to suit and governed by the law of every EU Member State (and possibly beyond) from which a user accessed Sportradar’s service.  (Admittedly, Sportradar could minimize this risk by restricting access to users from designated countries.)

In light of these considerations, the CJEU concluded that the making available of the work (the database):

must be interpreted as meaning that the sending by one person, by means of a web server located in Member State A, of data previously uploaded by that person from a database protected by the sui generis right under that [96/9] directive to the computer of another person located in Member State B, at that person’s request, for the purpose of storage in  that computer’s memory and display on its screen, constitutes an act of ‘re-utilisation’ of the data by the person sending it.  That act takes place, at least, in Member State B, where there is evidence from which it may be concluded that the act discloses an intention on the part of the person performing the act to target members of the public in Member State B, which is for the national court to assess.

Para. 47, emphasis supplied.  Thus, the court of the country whose market the person making a work available has allegedly targeted will determine whether the defendant has in fact sought customers from that jurisdiction.  If so, that country will be a place in which the making available occurs, and the forum will be competent not only to hear the case, but to apply its own law to the making available of the work to users within the jurisdiction.

But many questions remain, some concerning “the public in Member State B” (State whose market the defendant targeted), and others concerning the judicial and legislative competence of Member State A.  Recall that the CJEU hedged its bets by ruling that the act took place “at least” in Member State B; this implies that the courts and law Member State A may still play a role in “making available” scenarios.

Before we consider those scenarios, let us first address “the public in Member State B.”  Suppose a UK resident and insatiable Arsenal fan is on vacation in Tuscany (aka “Chiantishire”) when he wishes to learn the score in the ongoing football match with loathed rival Chelsea.  To this end he accesses Sportradar’s German site.  Where has the making available taken place?  In Italy?  Suppose our Arsenal fan is on the Internet-equipped Thalys train crossing the border from France to Belgium when he accesses Sportradar’s site.  If the location of the server poses a mobility problem, so does the location of “the public.”  While the CJEU has yet to address the issue, the logic of its holding would counsel characterizing “the public in Member State B” as the habitual residents of the country whose national market the service has targeted.  The fortuity of the customer’s temporary location, especially in our increasingly transient society, should not determine the localization of the act that triggers the competence of the forum and the application of its law.

Because the defendant’s targeting of Member State B’s market justifies B’s competence, it would follow that if the defendant is targeting multiple markets, then the act of making available occurs in each national market to which the defendant directed its communications, and that each national market is competent to hear and to regulate disputes arising out of the making available of works to its residents.  It would also follow that Member State B has no authority to adjudicate or regulate makings available that occur in Member States C, D, or E (etc.).  In order to adjudicate the full territorial impact of the makings available, the right owner may need to sue in Member State A, where the defendant (and its server?) resides.  Will A’s law also apply?  And what if we shift the inquiry from litigation to licensing?  What is the role for Member State A’s law if one of its residents seeks not to infringe but to acquire rights to make the work available in multiple countries?  We will address these questions – which did not confront the CJEU in Football Dataco – in our next column.