The temporary copy exception

In the event that a RAM copy is treated as a ‘copy’ under the CA 1987, it is crucial to consider the relevance of the new exception in section 13(2)(q) to the making of RAM copies during the process of browsing. Section 13(2)(q) provides that a copyright owner has no right to control ‘the making of a transient and incidental electronic copy of a work made available on a network if the making of such copy is required for the viewing, listening or utilization of the said work’. ‘Transient’ means ‘temporary’74 _{while a copy is said to be ‘incidental’ if it is made because it is ‘essential to}

the basic functionality of numerous technological processes.’75 _{The making of transient and}

incidental copies of a work is necessary for one to view, listen or utilize a work which is made available on a network.

On this matter, reference may be made to Article 5 of the Information Society Directive which excludes from the reproduction right temporary acts of reproduction which are transient or incidental. The ECJ in Infopaq International A/S v Danske Dagblades Forening76 explained the

meaning of ‘transient’ in Article 5 of the Information Society Directive as referring to the duration of an act which is restricted to ‘what is necessary for the proper completion of the technological process in question’.77 _{Such transient or incidental reproduction must be an integral and essential}

part of a technological process. In addition, the sole purpose of the reproduction is to enable either

74 _{Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors, supra n 46 at para 30.} 75 _{See Litman, J., ‘Revising Copyright for the Information Age’, 75 OR. L. REV. 19 (1996) at 37.}

76 _{[2009] All ER (D) 212 (Aug).} 77 _{Id at para 64.}

University

140

a transmission in a network by an intermediary, or a lawful use of a copyright work. Furthermore, such temporary acts of reproduction must have no independent economic significance.

Section 28A of the CDPA,78 which is modelled on Article 5 of the Information Society Directive, was under dispute in Newspaper Licensing Agency Ltd & Other Companies v Meltwater Holding

BV & Other Companies.79 In this case, the main issue was whether the end users of a news monitoring service require a licence from the copyright owners of the news content in order to legitimately receive and use the news, distinct and apart from the licence granted by copyright owners to the news monitoring company for the service of providing Meltwater News. It was argued by the defendants that the end users’ act in receiving the news content was exempted from infringement by virtue of section 28A of the CDPA. The judge at first instance, Proudman J, was of the view that the temporary copies exception in section 28A of the CDPA did not encompass any copy which amounted to ‘consumption of the work’, whether temporary or not.80 Proudman J thought that the making of copies was not an essential and integral part of a technological process in which the defendants provided the service; instead it was the ultimate end or objective of the process. In addition, the making of the copy did have an independent economic significance since the end users paid the defendants for the copy of the work.

On appeal to the High Court, the defendants argued that Proudman J’s decision on section 28A was wrong because recital 33 of the Information Society Directive, which explained the exception in Article 5, had clearly listed ‘browsing’ and ‘caching’ as examples of the acts that fall under the

78 _{Section 28A of the CDPA reads, ‘Copyright in a literary work, other than a computer program or database, or in a dramatic, musical or artistic} work, the typographical arrangement of a published edition, a sound recording or a film, is not infringed by the making of a temporary copy which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable - (a) a transmission of the work in a network between third parties by an intermediary; or (b) a lawful use of the work; and which has no independent economic significance.’ Section 28A was inserted to give effect to Article 5 of the Information Society Directive. In contrast, section 117 of the 17 USC provides an exception to copyright infringement where a copy is made of computer programs and such copy is essential to utilize the computer programs or it is a back-up copy. It is clear that section 117 of the 17 USC is of very much limited application since it is applicable only to copies of a computer program.

79 _{[2010] EWHC 3099 (Ch).} 80 _{Id at para 32.}

University

141

exception.81 The argument was rejected by the High Court on the ground that considering recital 33 as a whole, the reference to ‘browsing’ was to the extent that the acts of reproduction must fulfil the conditions stipulated in section 28A of the CDPA, as explained by the ECJ in Infopaq

International.82 Essentially, the conditions were not met in Meltwater Holding because the acts of reproduction were caused by ‘the voluntary human process of accessing that webpage’.83

The English High Court’s decision was later affirmed by the Court of Appeal84 _{but rejected by the}

Supreme Court in Public Relations Consultants Association Ltd v The Newspaper Licensing

Agency Ltd & Ors85 when Public Relations Consultants Association Ltd (PRCA), whose members were subscribers of Meltwater News, appealed. The English Supreme Court was of the view that although the ECJ had paraphrased the conditions of Article 5 of the Information Society Directive in five separate sub-paragraphs in Infopaq International,86 they were not free-standing

requirements. Instead, the conditions were ‘overlapping and repetitive, and each of them colours the meaning of the others. They have to be read together so as to achieve the combined purpose of all of them.’87 _{The English Supreme Court noted that the purpose of Article 5 of the Information}

Society Directive was to authorize the making of copies made during the process of browsing the internet. Thus, the said conditions ‘must be construed so far as possible in a manner consistent with that purpose’.88

81 _{Recital 33 of the Information Society Directive states that ‘The exclusive right of reproduction should be subject to an exception to allow} certain acts of temporary reproduction, which are transient or incidental reproductions, forming an integral and essential part of a technological process and carried out for the sole purpose of enabling either efficient transmission in a network between third parties by an intermediary, or a lawful use of a work or other subject-matter to be made. The acts of reproduction concerned should have no separate economic value on their own. To the extent that they meet these conditions, this exception should include acts which enable browsing as well as acts of caching to take

place, including those which enable transmission systems to function efficiently, provided that the intermediary does not modify the information

and does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information. A use should be considered lawful where it is authorised by the rightholder or not restricted by law.’

82 _{Supra n 76.} 83 _{Supra n 79 at para 35.} 84 _{[2011] EWCA Civ 890.} 85 _{Supra n 46.} 86 _{Supra n 76.} 87 _{Supra n 46 at para 11.} 88 _{Id at para 28.}

University

of Malaya

142

It was held that the temporary copies exception in Article 5 applied to the copies cached in the course of browsing since the making of them was an integral and essential part of the technical processes involved; the use of the copies was lawful and did not depend on the copyright owner’s authorization;89 and they had no independent economic significance because the only economic value the clients obtained was derived from the mere fact of reading it on the screen.90 The Supreme Court observed that the objective of Article 5 of the Information Society Directive was to ‘treat the viewing of copyright material on the internet in the same way as its viewing in physical form, notwithstanding that the technical processes involved incidentally included the making of temporary copies within the electronic equipment employed.’91

In Malaysia, section 13(2)(q) of the CA 1987 is phrased in relatively simple and plain language. The temporary copies made during the process of browsing satisfy all of the requirements prescribed in section 13(2)(q) because they are transient and incidental; they are made of copyright works made available on a network; and the making of such copies is required or needed for the viewing, listening or utilization of the works. Without these temporary copies, the works made available on the internet cannot be viewed, listened to or utilized and hence browsing is simply impossible.

Section 13(2)(q) is obviously intended to exclude the making of temporary and incidental copies in the process of browsing from the copyright owners’ rights to control. This is rightly so, or else no internet users can browse the internet without incurring liability for copyright infringement.

89 _{Article 5 of the Information Society Directive requires the temporary copies to be made solely for the purpose of enabling either a transmission} by an intermediary or a lawful use of a copyright work. The Supreme Court identified the question of PRCA’s appeal as whether Meltwater clients would require a licence to receive its service if the media monitoring report were made available only on Meltwater’s website, instead of being delivered via e-mail, thus it did not concern the process of transmission by an intermediary. Hence, the relevant condition to be satisfied in the current case was whether the making of the copies was to enable a lawful use of the copyright works, which was to allow end users to view the webpages in the case.

90 _{Supra n 46 at para 29.} 91 _{Id at para 36.}

University

143

The scope of section 13(2)(q) is broad enough to encompass the temporary copies made in the internet routers and proxy servers during the transmission process as well. It is submitted that the exception should apply even where the copyright work has been made available on the internet unlawfully. If this was not so, internet users would unwittingly infringe copyright, whereas it is the person who had uploaded the work without permission who should be made liable for copyright infringement.

As observed by the US court in Religious Technology Center v Netcom On-Line Communication

Services, Inc.,92 the temporary copy involved in browsing is ‘the functional equivalent of reading, which does not implicate the copyright laws and may be done by anyone in a library without the permission of the copyright owner.’93 _{Holding temporary copies infringing is equivalent to}

conferring the exclusive right to control reading on copyright owners, which has always been, and rightly so, beyond the copyright owners’ rights to control. Also, if temporary copies were regarded as infringing, millions of internet users who use browsers and search engines ‘are likely unintentionally to incur civil liability, at least in principle, by merely coming upon a webpage containing copyright material in the course of browsing’, which the English Supreme Court in

Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors found

unacceptable.94 92 _{907 F. Supp. 1361 (N.D. Cal. 1995).} 93 _{Id at 1378.} 94 _{Supra n 46 at para 36.}

University

of Malaya

144 4.3.3 Cached links by search engines

Search engines keep cached copies of webpages in their database. In order for search engines to perform their function efficiently in searching for and referring items of relevance to users from the huge amount of webpages on the internet, they employ automated programs to crawl on the Internet, locating and analyzing webpages as well as cataloguing them into their searchable web index.95 The Hyper Text Markup Language (HTML) code of each webpage will be stored in ‘cache’, a temporary repository. A webpage stored in the cache may be displayed in the search results in response to a user’s inquiry.96 _{Such a cached link directs a user to an archival copy of}

the webpage kept in the search engine’s system cache.97 Upon clicking on the cached link, the user sees the snapshots of the webpages as how they were the last time the search engines’ crawlers visited.98

Search engines obviously reproduce the webpages, including the copyright works made available thereon, which falls within the exclusive reproduction right under section 13(1)(a) of the CA 1987. It is debatable whether it is proper to treat copyright owners as consenting to the reproduction, raising the same issues as in the case of linking to the copyrighted materials in general. As this

95 _{Field v Google, Inc., supra n 39 at 1110. Search engine technology has experienced a few stages of development. The first generation search} engines involved directories produced by human beings who surfed the World Wide Web and classified the websites depending on the content. The second generation search engines employed ‘spiders’ which crawled the websites and copied the metadata about the websites’ content. Metadata is ‘structured information that describes, explains, locates, or otherwise makes it easier to retrieve, use, or manage an information resource. Metadata is often called data about data or information about information’: see NISO, ‘Understanding Metadata’, 2004, National Information Standards Organization, 28 November 2015 http://www.niso.org/publications/press/UnderstandingMetadata.pdf. A disadvantage of the second generation search engines was that the websites’ metadata could be easily manipulated and, thus, the accuracy of the results lists generated by search engines in response to internet users’ inquiry would be undermined. To overcome this deficiency, the spiders sent out by the third generation search engines copy much of the content of the websites, see Band, J., ‘Google and Fair Use’, 3 J. Bus. & Tech. L. 1 (2008) at 2-3.

96 _{Field v Google, Inc., supra n 39 at 1110-1111.}

97 _{As explained in Perfect 10, Inc. v Amazon.com, Inc., supra n 33 at 1156, ‘Google’s cache version of the webpage is not automatically updated} when the webpage is revised by its owner. So if the webpage owner updates its webpage to remove the HTML instructions for finding an infringing image, a browser communicating directly with the webpage would not be able to access that image. However, Google's cache copy of the webpage would still have the old HTML instructions for the infringing image. … In other words, Google's cache copy could provide a user's browser with valid directions to an infringing image even though the updated webpage no longer includes that infringing image.’ 98 _{Field v Google, Inc., supra n 39 at 1110-1111.}

University

145

issue has been discussed above,99 it will not be repeated here. Instead, this section examines the applicability of the fair dealing exception to cached links.100

The position of cached links under the copyright law of Malaysia depends largely on the scope of section 13(2)(a) of the CA 1987, of which the ambiguity and the potential ways of interpreting it was examined in Chapter 2.101 Prior to the Copyright (Amendment) Act 2012, the exception under section 13(2)(a) was confined to the few specified purposes stated in the sub-section. By reason of the insertion of the word ‘including’ before the phrase ‘for purposes of research, private study, criticism, review or the reporting of news or current events’, the current scope of section 13(2)(a) is clearly wider than that before the amendment. Arguably and interpreted broadly, the fair dealing exception is no longer tied to any particular purpose and, thus, cached links provided by search engines may qualify for the exception in section 13(2)(a) as long as the fairness standard is met by considering the factors including those stated in section 13(2A), which were discussed in Chapter 2.102

If the ejusdem generis rule is applied, the purpose of the fair dealing should be of the same general nature or kind as the purposes specified in section 13(2)(a). In other words, a fair dealing should have a purpose similar in nature to ‘research, private study, criticism, review or the reporting of news or current events’.103 _{In view of the huge volume of webpages available, the important role}

played by search engines in improving and enhancing the search for and access to materials of relevance or interest to users is undeniable. Search engines offer great benefits to the public and help the progress of research, private study, criticism, review or the reporting of news or current

99 _{See section 4.3.1.2.}

100 _{It is noted that search engines also copy and index webpages in their database. Such act apparently amounts to ‘reproduction’, to which the fair} dealing exception in section 13(2)(a) of the CA 1987 is pertinent and may apply. It is thought that the issue as regards search engines’ database copies involve the same considerations as in the case of Google Books Project which was discussed in Chapter 2.

101 _{See section 2.4 in Chapter 2.}

102 _{See sections 2.4.2 and 2.4.3 in Chapter 2.} 103 _{Section 13(2)(a) of the CA 1987.}

University

146

events, and many others. It may be argued that cached links provided by search engines play an important role for internet archival purposes which may in turn encourage research and studies. It is thus submitted that cached links fall within the scope of the permitted purposes even if the

ejusdem generis rule is adopted.

In the event that cached links of search engines do not fall within the scope of the permitted purposes under section 13(2)(a) of the CA 1987, search engines may thus be found liable for copyright infringement. The Belgian case of Copiepresse SCRL v Google, Inc.104 _{illustrates the}

difficulty that would arise if cached links were not exempted from copyright infringement. In this case, the claimant, Copiepresse, representing some of the biggest Belgian daily newspapers commenced a suit against the defendant for copyright infringement allegedly committed by the defendant’s free service, Google News. Google News was a specialized search engine providing internet users a summary of daily press articles which were categorized by their main issue category. The Belgian court held that the defendant’s caching function constituted a copyright infringement since a copy of each webpage was copied and stored in the cache memory on its servers. According to the court, the exclusive right to communicate copyright works to the public was infringed when internet users clicked on the cached link and accessed the contents on the defendant’s own website without being linked to the original site of the work. The court also held that the defendant was not entitled to either the exception of citation or the exception for reporting news since the defendant merely collected articles from the web servers of common news agencies without making comment or using the articles for analysis or critique. This case highlights the

104 _{[2007] ECDR 5.}

University

147

rigidity of the closed system of exceptions, which in the case of Malaysia has been reduced by the 2012 amendment to the CA 1987.105

Even assuming that cached links fall within the permitted purposes under section 13(2)(a) of the CA 1987, the fairness of the dealing has to be considered by taking into account various factors including those stated in section 13(2A). A reference may be made to Field v Google, Inc.,106 in

which the legality of cached links feature was examined by the US court. As discussed above,107 the plaintiff claimed that the defendant infringed his copyright in the stories when the defendant