Web-linking and Online Intermediaries Liabilities
As the entertainment industry continues to leverage on online platforms such as digital magazines, online advertising and publishing, YouTube, Twitter and other spaces, the interaction of online content providers and IP is becoming a bigger discussion. In particular, the COVID 19 pandemic has catalyzed this new wave by ensuring there is continuity and survival of businesses. This move has enabled business owners to tap into new audiences but with glaring copyright and trademark issues. In Kenya, section 35 of the Copyright Act imposes a caveat on making available to the public protected works of a copyright owner. Therefore, as businesses expand their audience, there is need for them to understand the parameters of section 35 of the Copyright Act. This will enable online service providers to avoid liability without stifling customer outreach.
Without knowledge, online content providers may expose trademarks and copyrighted works to the public by authorizing on their platforms the use of memes, creation of parodies, display of snippets, and the use of hyperlinking. However, the focus here will be on websites that link people to other websites. Although the legality of using links has been established, the limitation of its applicability is not well understood. Therefore, it is important to highlight the threshold of its applicability and how an online content provider can circumvent issues of infringement and trademark.
Hyperlinking and Infringement Issues
A website is an accumulation of interlinked webpages connected to a single homepage using hyperlinks that are publicly accessible under a single domain name. Depending on the preference, the websites often range but are not limited to news sites, e-commerce sites and entertainment sites. The content in these sites may appear in form of text, media or both. Therefore, this means that when a user clicks on a link, they are directed to specific content within the website. In such a case, there must be authorization to use the content or media on one’s website. Failure to do so may result in a copyright and trademark infringement. Two categories of persons are left vulnerable: the website owner and the website developer.
A recent case of Erickson Productions, Inc. v. Kast explains the copyright vulnerabilities of a website owner who hired a developer to redevelop a website for his business. The main issue was that the developer had unauthorized use of three photographs from the copyright owner Erickson Productions Inc. by uploading them on Mr. Kast’s website. For this reason, the court held that there was contributory infringement by the owner and the developer only exempting Mr. Kast from vicarious infringement as there was no proof of direct financial benefit. This case exposed the risks of vicarious and contributory infringement that website owners might face when one uses copyright material without obtaining permissions. It is important to note that contributory copyright infringement becomes apparent where there is knowledge of another’s infringement whether through material contribution or influence.
To avoid this pitfall, one must carefully navigate the boundaries set on the use of hyperlinks in websites. The court in the case of Svensson v. Sverige AB unpacks the legality of redirecting users to websites by establishing the test of access insofar as it is freely accessible works. The useful point that the court made was that a hyperlink can be used to access protected works if the content is freely available online to an internet user. On the hand, the court clarified that there are restrictions when there is a communication made to the public. However, merely providing a hyperlink is not an act of communication unless it is making the protected works available.
A hyperlink is found infringing on protected works where it directs a user to a “new public” or an audience not taken into account by the copyright holder when they permitted the initial communication to the public. In essence, a hyperlink may not be infringing under the following circumstances: deep linking where a user is directed to material that is freely accessible because the owner consented and embedding where one provides a HTML link on one’s website to display another sites content. For example, when an online newspaper embeds a video from You Tube to emphasize on a point. On the other hand, various acts of linking may be found suspect under the following situations: where there is framing of content using a HTML code to pull content from multiple sources. This importation process is often viewed as stealing of content from the original page particularly where unauthorized modifications are made. For instance, a news website that frames news content of news companies as opposed to providing a HTML link to the content, is likely to be found liable for infringement. Similarly, links that have a set of words that are protected by copyright maybe found infringing. This may entail the use of news headline or links to a clickable thumbnail image that is subject to copyright protection.
Regarding image linking where there is a trademark or copyright in the linked site, this may also pose various trademark and copyright challenges. The scope of these challenges include: where there is confusion among the users as to the source or sponsorship of the website, or a misleading view that the products or services are the same as that of the trademark owner and stealing of images from third parties. The exceptions may range from the use of licensed images on the internet on condition that the copier complies with the terms. Similarly, the use of free images off the internet is permissible as long as the website gives credit to the owner. This will require that the website links back to the owner’s site. To avoid these issues, a website owner or developer should obtain permission from the copyright or trademark owner before use.
Precautionary measures by website owners
Circumventing possible infringement claims requires consent or approval from the IP owner. This consent or approval may be contained in mutually agreed terms and conditions between the user and the owner made explicit to avoid liability. These permissions may take the form of:
• Signing a linking agreement.
• Having endorsement disclaimers on the website.
• Obtaining a merchandise license.
• Obtaining a trademark license.
Some of these measures such as a disclaimer on a website may not necessarily exempt a website owner from full liability but are an effective starting point in showing good intentions by not infringing on protected works. However, if protected work can be accessed anywhere without restriction, then hyperlinks in a website are allowed even if you have not obtained permission from the owner. This is because there is no new audience that did not have initial access
In Kenya, we have not had developed caselaw around the limitations of the use of hyperlinks in websites. Therefore, more discussions on this area is particularly useful in building jurisprudence that will aid in developing a plausible approach.