OPINION OF ADVOCATE GENERAL

TANCHEV

delivered on 16 July 2020 ( 1 )

Case C‑147/19

Atresmedia Corporación de Medios de Comunicación S.A.

v

Asociación de Gestión de Derechos Intelectuales (AGEDI),

Artistas Intérpretes o Ejecutantes, Sociedad de Gestión de España (AIE)

(Request for a preliminary ruling from the Tribunal Supremo (Supreme Court, Spain))

(Reference for a preliminary ruling — Rental right and lending right and rights related to copyright in the field of intellectual property — Communication to the public of phonograms published for commercial purposes — Claim for compensation — Single equitable remuneration)

1. The present reference for a preliminary ruling from the Tribunal Supremo (Supreme Court, Spain) concerns the interpretation of Article 8(2) of Directive 2006/115/EC ( 2 ) and the similarly worded Article 8(2) of Directive 92/100/ECC, ( 3 ) (together, ‘the Rental Directive’). More specifically, the referring court seeks guidance regarding the scope of this provision in the context of the ‘communication to the public’ of audiovisual works where pre-existing, published phonograms have been incorporated into those audiovisual works.

2. The case before the referring court concerns claims for remuneration made by two collecting societies for performers and phonogram producers in Spain under the Spanish legislation implementing the Rental Directive for what they claim is a television company’s use of phonograms for communication to the public. The television company takes the view that the ‘communications to the public’ in question are communications not of ‘phonograms’ or ‘reproductions’ thereof, but of ‘audiovisual works’ and that the remuneration claimed is not due for such content, even if those audiovisual works incorporate pre-existing phonograms that have been published for commercial purposes as (part of) their soundtracks.

3. The answer to the referring court’s questions will necessarily involve an analysis of not only the relevant EU directives, but also provisions of international law, most pertinently the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (‘the Rome Convention’) ( 4 ) and the WIPO Performances and Phonograms Treaty (the ‘WPPT’). ( 5 )

I. Legal framework

A. The Rome Convention

4. The Rome Convention was done at Rome on 26 October 1961 (‘the Rome Convention’).

5. Although the Rome Convention is not as such a part of the legal order of the European Union, it nevertheless has indirect effects within the European Union. ( 6 )

6. Article 3 of the Rome Convention provides definitions of a number of terms that are also defined, although with some variation, in the WPPT, and which are used in the Rental Directive. For the purposes of the convention, the article defines the terms listed below as follows: ‘… (b) “phonogram” means any exclusively aural fixation of sounds of a performance or of other sounds; … (d) “publication” means the offering of copies of a phonogram to the public in reasonable quantity; (e) “reproduction” means the making of a copy or copies of a fixation; …’.

7. Article 7(1) of the Rome Convention states: ‘The protection provided for performers by this Convention shall include the possibility of preventing: … (c) the reproduction, without their consent, of their unfixed performance: (i) if the original fixation itself was made without their consent; (ii) if the reproduction is made for purposes different from those for which the performers gave their consent; (iii) if the original fixation was made in accordance with the provisions of Article 15, and the reproduction is made for purposes different from those referred to in those provisions.’

8. Article 12 provides that ‘if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used directly for broadcasting or for any communication to the public, a single equitable remuneration shall be paid by the user to the performers, or to the producers of the phonograms, or to both.’ The concept of ‘single equitable remuneration’ recurs in both the WPPT and in the Rental Directive.

9. Article 19 of the Rome Convention is worded as follows: ‘Notwithstanding anything in this Convention, once a performer has consented to the incorporation of his performance in a visual or audio–visual fixation, Article 7 shall have no further application.’

B. The WPPT

10. On 20 December 1996, the WPPT was adopted in Geneva. The Council, by Decision 2000/278/EC of 16 March 2000, ( 7 )‘approved’ the WPPT and authorised the deposit of the instruments of conclusion. The WPPT was ratified by the European Union on 14 December 2009 and entered into force with respect to the European Union on 14 March 2010. The WPPT thus forms part of the legal order of the European Union.

11. Article 2 of the WPPT provides: ‘For the purposes of this Treaty: … (b) “phonogram” means the fixation of the sounds of a performance or of other sounds, or of a representation of sounds, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work; (c) “fixation” means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device; … (g) “communication to the public” of a performance or a phonogram means the transmission to the public by any medium, otherwise than by broadcasting, of sounds of a performance or the sounds or the representations of sounds fixed in a phonogram. For the purposes of Article 15, “communication to the public” includes making the sounds or representations of sounds fixed in a phonogram audible to the public.’

12. The Diplomatic Conference ( 8 ) adopted a number of ‘agreed statements’ concerning the WPPT. ( 9 ) The Agreed statement concerning Article 2(b) provides as follows: ‘It is understood that the definition of phonogram provided in Article 2(b) does not suggest that rights in the phonogram are in any way affected through their incorporation into a cinematographic or other audiovisual work.’

13. Article 15 of the WPPT, entitled ‘Right to Remuneration for Broadcasting and Communication to the Public’, is worded as follows: ‘(1) Performers and producers of phonograms shall enjoy the right to a single equitable remuneration for the direct or indirect use of phonograms published for commercial purposes for broadcasting or for any communication to the public. (2) Contracting Parties may establish in their national legislation that the single equitable remuneration shall be claimed from the user by the performer or by the producer of a phonogram or by both. Contracting Parties may enact national legislation that, in the absence of an agreement between the performer and the producer of a phonogram, sets the terms according to which performers and producers of phonograms shall share the single equitable remuneration. …’

14. The Diplomatic Conference on 20 December 1996 adopted a ‘Resolution Concerning Audiovisual Performances’, in which the participating Delegations expressed their regret that ‘the [WPPT] does not cover the rights of performers in the audiovisual fixations of their performance’ and called for preparatory steps to be taken with a view to the adoption of a protocol concerning audiovisual performances no later than in 1998. No such protocol was subsequently adopted, and the issue was not resolved under the scope of the WPPT, but was ultimately addressed in a separate treaty, the Beijing Treaty on Audiovisual Performances, adopted on 24 June 2012.

C. Directive 92/100

15. Directive 92/100 was adopted on 19 November 1992 and was, after several amendments were made to various provisions of the directive, replaced by Directive 2006/115 which codified the directive as so amended.

16. Article 7 (Reproduction right) of Directive 92/100 as originally adopted provided: ‘1. Member States shall provide the exclusive right to authorise or prohibit the direct or indirect reproduction: – for performers, of fixations of their performances, – for phonogram producers, of their phonograms, … 2. The reproduction right referred to in paragraph 1 may be transferred, assigned or subject to the granting of contractual licences.’

17. Article 8 of Directive 92/100 has remained substantially unchanged since its adoption and is reproduced as found in Directive 2006/115 in paragraph 20 below.

D. Directive 2001/29

18. Article 7 of Directive 92/100 was amended and replaced by Article 2 (Reproduction right) of Directive 2001/29/EC. ( 10 ) It provides: ‘Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: … (b) for performers, of fixations of their performances; (c) for phonogram producers, of their phonograms; …’

E. Directive 2006/115

19. Directive 2006/115 codified Directive 92/100, as amended, after the latter had been the subject of several changes. Although amendments were made, inter alia, to Article 7 of Directive 92/100, which was deleted and replaced by Article 2 of Directive 2001/29, Article 8 has remained substantially unchanged from its inception in Directive 92/100.

20. Article 8 (Broadcasting and communication to the public) provides: ‘… 2. Member States shall provide a right in order to ensure that a single equitable remuneration is paid by the user, if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used for broadcasting by wireless means or for any communication to the public, and to ensure that this remuneration is shared between the relevant performers and phonogram producers. Member States may, in the absence of agreement between the performers and phonogram producers, lay down the conditions as to the sharing of this remuneration between them. …’

F. Spanish law

21. According to the referring court, Article 108(4) and Article 116(2) of the Texto Refundido de la Ley de Propiedad Intelectual (Recast text of the Law on intellectual property) are identically worded. The first of these two provisions concerns performers’ rights; the second those of phonogram producers. The text of the two provisions, as relayed by the referring court, states: ‘Users of a phonogram published for commercial purposes or of a reproduction of that phonogram that is used for any form of communication to the public shall have an obligation to pay a single equitable remuneration to the performers and phonogram producers, between whom that remuneration shall be shared. In the absence of agreement between them as to how that remuneration is to be shared, this shall be in equal parts …’

22. Article 114(1) of the same law provides the following definition: ‘“Phonogram” means any exclusively aural fixation of the performance of a work or of other sounds.’

II. Facts giving rise to the dispute in the main proceedings and the questions referred for a preliminary ruling

23. The dispute in the main proceedings concerns legal actions brought by the collecting societies Asociación de Gestión de Derechos Intelectuales (‘AGEDI’) and Artistas Intérpretes o Ejecutantes, Sociedad de Gestión de España (‘AIE’) against Atresmedia Corporación de Medios de Comunicación S.A. (‘Atresmedia’) for the payment of compensation for acts involving the communication to the public ( 11 ) of phonograms published for commercial purposes (or reproductions thereof) carried out between 1 June 2003 and 31 December 2009 via television channels operated by Atresmedia, and for unauthorised reproduction of phonograms in connection with those acts of communication to the public.

24. On 29 July 2010, AGEDI and AIE brought an action against Atresmedia before the Juzgado de lo Mercantil de Madrid (Commercial Court, Madrid, Spain) (‘the Juzgado Mercantil’) seeking payment of compensation for the abovementioned acts of communication and reproduction. The Juzgado Mercantil held that no compensation was due for acts of communication to the public of phonograms which had been incorporated or ‘synchronised’ in audiovisual works or for the ‘functional’ reproduction thereof. That court held that the synchronisation of a pre-existing phonogram in an audiovisual work under a paid licence gave rise to a new and autonomous derivative work and that the rights of remuneration for the communication to the public and the functional reproduction of the phonogram (which the Juzgado Mercantil is cited as referring to as a ‘work’ in the order for reference) ‘expire’ at the time of payment for the synchronisation. That court proceeded to order Atresmedia to pay compensation on other grounds.

25. AGEDI and AIE brought an appeal against the judgment of the Juzgado Mercantil before the Audiencia Provincial de Madrid (Provincial Court, Madrid, Spain) (‘the Audiencia Provincial’), seeking an order requiring Atresmedia to also pay compensation for acts of communication to the public of phonograms which had been ‘synchronised’ in audiovisual works communicated to the public via Atresmedia’s television channels. The Audiencia Provincial upheld the appeal and stated in its judgment: ‘The phonogram is not a work … [It] is simply a medium containing the fixation of [a particular performance]. … Consequently, if the phonogram is not a work, it cannot be subjected to an operation involving any element of transformation in a technical legal sense or, by extension, give rise to a derivative work … The fact remains that the properties of the sounds fixed in the phonogram are objectively the same before and after the synchronisation… Inasmuch as the [aural fixation contained in the audiovisual work] is merely a replica of the sounds fixed in the synchronised phonogram, [it] cannot be regarded as anything other than a reproduction of that phonogram. The communication to the public of that reproduction, like that of the phonogram itself, gives rise to the right to equitable remuneration provided for in [the relevant Spanish provisions].’

26. On the basis of that reasoning, the Audiencia Provincial set aside the judgment of the Juzgado Mercantil and granted AGEDI’s and AIE’s application in full.

27. Atresmedia brought an appeal in cassation before the Tribunal Supremo (Supreme Court, Spain) (‘the Tribunal Supremo’), which is exclusively concerned with whether Atresmedia’s communication to the public of audiovisual works on its television channels confers upon the relevant performers and phonogram producers a right to equitable remuneration under the provisions of Spanish law that implement Article 8(2) of the Rental Directive, namely Articles 108(4) and 116(2) of the Law on intellectual property.

28. It is against that background that the Tribunal Supremo decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling: ‘(1) Does the concept of the “reproduction of a phonogram published for commercial purposes” referred to in Article 8(2) of Directives 92/100 and 2006/115 include the reproduction of a phonogram published for commercial purposes in an audiovisual recording containing the fixation of an audiovisual work? (2) In the event that the answer to the previous question is in the affirmative, is a television broadcasting organisation which, for any type of communication to the public, uses an audiovisual recording containing the fixation of a cinematographic or audiovisual work in which a phonogram published for commercial purposes has been reproduced, under an obligation to pay the single equitable remuneration provided for in Article 8(2) of the aforementioned directives?’

29. Written observations have been submitted by Atresmedia, AGEDI, AIE, the Spanish Government and the European Commission. At the hearing on 30 January 2020, all of these parties made oral submissions.

III. Analysis

A. Preliminary remarks

30. The first of the two questions referred to the Court in the present case seeks clarification of the concept ‘reproduction of [a] ( 12 ) phonogram published for commercial purposes’ as this expression is used in Article 8(2) of the Rental Directive. In the reference for a preliminary ruling, the referring court poses this question with respect to the process of ‘synchronisation’ that takes place at the time of creation of the audiovisual work. This is not a process that Atresmedia would appear to take part in, in its capacity as a transmitter of TV signals.

31. So framed, the question relates to the act of reproduction; however, Article 8(2) is concerned with the act of using the object‘a phonogram … or a reproduction of such phonogram’ for ‘communication to the public’. Under the law as it currently stands, Article 2 (Reproduction right) of Directive 2001/29 regulates acts of reproduction. This understanding of the first question is supported both by the referring court’s summary of Atresmedia’s position ( 13 ) and by its summary of the arguments presented by AGEDI and AIE. ( 14 )

32. By its second question, read in conjunction with the first question, the referring court essentially asks whether a television station that as a user communicates to the public an audiovisual work into which a phonogram published for commercial purposes, or a reproduction of such phonogram, has been incorporated is liable to pay the single equitable remuneration provided for by Article 8(2) of the Rental Directive. It is made clear in the request for a preliminary ruling that the ‘synchronisation’ of the phonograms in question was made after due authorisation had been given. ( 15 ) Accordingly, I propose that the Court reformulate the questions referred and provide the referring court with guidance on whether the concepts of ‘phonogram’ or ‘reproduction of a phonogram’ contained in Article 8(2) of the Rental Directive include an audiovisual work into which a phonogram has been incorporated – after authorisation from the relevant rightholder(s) in the phonogram has been duly obtained as required by Article 2(c) of Directive 2001/29 – and guidance on whether Article 8(2) of the Rental Directive requires the Member States to provide that the user should pay a ‘single equitable remuneration’ to the rightholder(s) in a phonogram in circumstances such as those in the main proceedings.

33. Before I address the issue of the character of audiovisual content that incorporates previously published phonograms, I will first address the character of the act of ‘synchronisation’ performed by the producer of the audiovisual content.

34. In the Pelham case, ( 16 ) the Court held, for the purposes of Article 2(c) of Directive 2001/29, that a phonogram producer’s reproduction right in a phonogram allows him or her to prevent another person from taking even a very short sound sample from the phonogram for the purposes of including it in another phonogram, unless the sample is included in a modified form unrecognisable to the ear, precisely because such sampling is an act of ‘reproduction’ in part of the phonogram from which the sample is being taken. For the purposes of the reproduction right that is now provided for by Article 2(c) of Directive 2001/29, it should therefore follow from settled case-law that synchronisation (which as a practical matter would always imply a recognisable reproduction of the phonogram) is (an act of) reproduction.

35. Though such an act of ‘synchronisation’ is indeed ‘reproduction’ within the meaning of Article 2(c) of Directive 2001/29 and as such requires the consent and authorisation ( 17 ) of the relevant rightholder, that is to say, the phonogram producer, it does not necessarily follow that the result of this act of reproduction of the phonogram in a new greater whole should also be considered ‘a reproduction of a phonogram’ for the purposes of Article 8(2) of the Rental Directive.

B. Scope of Article 8(2) of the Rental Directive

1. Interpretation of the terms of Directive 92/100 – the legislative history

36. Directive 92/100 did not provide definitions for many of the key terms contained therein. It was felt necessary to define the terms ‘rental’, ‘lending’ and ‘film’, ( 18 ) but most terms – such as the terms ‘reproduction’ or ‘phonogram’ – were not explicitly defined in the directive. It was made clear in the Explanatory Memorandum to the original proposal for Directive 92/100 ( 19 ) that the omission of detailed definitions of the terms employed was a deliberate choice made by the Commission and that the intention was that the terms of the directive should be interpreted in conformity with the Berne Convention ( 20 ) and the Rome Convention. ( 21 )

37. As described in the amended proposal for Directive 92/100, ( 22 ) the original proposal was limited to ‘forms of piracy in connection with material exploitation’, and – in line with the Green Paper on Copyright ( 23 ) – did not include any protection of related rights similar to what was ultimately enacted in Article 8 of the directive. The amended proposal followed the Opinion of the European Parliament with respect to what became Article 8 of the Rental Directive and adopted the Parliament’s proposition, with minor modifications in the wording, as Article 6 bis of the amended proposal. According to the Explanatory Memorandum, Article 6 bis to a large extent followed the minimum provisions of the Rome Convention while leaving it to the Member States to maintain or introduce a more far-reaching protection. ( 24 )

38. In the Explanatory Memorandum’s short section on Article 6 bis, paragraph 2 (which became Article 8(2) of the Rental Directive), it is stated that the provision ‘has been implemented in principle by most Member States in their law; it is a minimum provision’. No examples are given in the Explanatory Memorandum of such laws of the Member States, and the original proposal, though it includes extensive discussion of the state of the law in the Member States at that time concerning both copyright and related rights, did not include a provision similar to Article 8, and does not appear to discuss comparable provisions in the laws of the Member States. Given the generally undeveloped character of related rights law internationally as well as in the Member States at the time, it would appear unlikely that, in 1992, the laws of a majority of the Member States would have provided the kind of economic rights concerning ‘communications to the public’ of audiovisual works for phonogram producers and performers whose recordings were included in such audiovisual works, as AGEDI and AIE claim. It appears equally unlikely that the Commission, in drafting the new provision based on the Parliament’s Opinion, would have intended to create such rights.

39. Article 6 bis, paragraph 2, of the amended proposal was ultimately enacted as Article 8(2) of Directive 92/100 with only minor and inconsequential changes in the wording. Consequently, the legislative history of the provision shows clearly that the scope of the protection offered by Article 8(2) was not intended to radically expand the protection already in place at that time in the majority of the Member States. The statement in the 10th recital and the explicit statements in the Explanatory Memorandum to the original proposal, as well as the comments regarding Article 6 bis in the Explanatory Memorandum to the amended proposal, confirm that the terms used in Article 8(2) should be interpreted in the light of the similar terms defined in the Rome Convention.

2. The Rome Convention

40. Article 12 of the Rome Convention, entitled ‘Secondary Uses of Phonograms’, provides that ‘if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used directly for broadcasting or for any communication to the public, a single equitable remuneration shall be paid by the user to the performers, or to the producers of the phonograms, or to both’.

41. It is this provision that provided the inspiration for Article 8(2) of the Rental Directive. Although Article 8(2) of the Rental Directive differs in some respects from Article 12 of the Rome Convention (the directive does not allow for reservations similar to those permitted under Article 16(1)(a) of the Rome Convention, it requires the single equitable remuneration to be provided for both phonogram producers and performers, ( 25 ) and it covers both direct and indirect use), the most pertinent parts of the provision for purposes of the present case (‘a phonogram published for commercial purposes, or a reproduction of such phonogram’) are worded identically in the Convention and the directive. Article 12 later provided the basis for Article 15 of the WPPT, which is discussed in section 3, ‘The WPPT’, below.

42. For the purposes of the Rome Convention (and thus presumably for the purposes of Directive 92/100) the term ‘phonogram’ is defined in Article 3(b) of the Convention as ‘any exclusively aural fixation of sounds of a performance or other sounds’. It is explicitly stated in the Guide to the Rome Convention and to the Phonograms Convention ( 26 ) that ‘the fixation must be exclusively aural [in order to qualify as a phonogram]. A fixation of images (e.g., cinema) or of images and sounds (e.g., television) are [sic] … excluded’.

43. Based on that definition, any audiovisual fixation would appear to be excluded from the term ‘phonogram’ as used in Article 12 of the Rome Convention, and presumably from the term ‘phonogram’ as used in Article 8(2) of Directive 92/100. As a consequence, under this interpretation neither Article 12 of the Rome Convention, nor Article 8(2) of Directive 92/100 would require payment of the single equitable remuneration for the communication to the public of an audiovisual fixation, unless the fixation was a ‘reproduction of [a] phonogram’ published for commercial purposes.

44. Article 3(e) of the Rome Convention defines ‘reproduction’ as ‘the making of a copy or copies of a fixation’. In the context of the 1961 Rome Convention and the technological development of the time, a ‘copy’ was given to be a physical thing. ( 27 ) Although a reproduction does not necessarily have to be a one-to-one identical copy of the entirety of the copied matter under the Rome Convention, any interpretation of the term that expands the notion of a reproduction of a phonogram to something that is not itself a phonogram would go against the scheme and logic of the Convention as well as the ordinary meaning given to the expressions reproduction or copy.

45. It is therefore my opinion that an interpretation of Article 8(2) of the Rental Directive in the light of the provisions of the Rome Convention strongly supports the conclusion that Article 8(2) does not require the Member States to provide a right to equitable remuneration for the communication to the public of an audiovisual work into which a phonogram published for commercial purposes (or parts thereof) has been incorporated.

3. The WPPT

46. The WPPT was signed by the Community on 20 December 1996 and ‘approved’ by Decision 2000/278. It was ratified by the European Union on 14 December 2009 and came into effect with respect to the European Union on 14 March 2010.

47. The Court has already addressed the issue of the applicability of the WPPT in the legal order of the European Union. The Court found in SCF ( 28 ) that the WPPT ‘bind[s] the institutions of the European Union and the Member States’ as the WPPT was signed by the European Union and approved by Decision 2000/278. As such, the provisions of the WPPT form an integral part of the EU legal order and are therefore applicable in the European Union. ( 29 )

48. According to Article 1(1) of the WPPT, nothing in that treaty is to derogate from the obligations that Contracting Parties have to each other under the Rome Convention. In SCF, the Court on that basis found that the European Union, although not a contracting party to the Rome Convention, is required ‘not to stand in the way of the obligations of the Member States under that convention’ and that the Rome Convention accordingly has indirect effects within the European Union. ( 30 ) The Court did not, in that judgment, refer to the effects of the Rome Convention on the scope and content of the Rental Directive through the use of terms effectively defined by reference to that convention, as described above in point 36 et seq. of the present Opinion in connection with the discussion of the legislative history of the directive.

49. Article 2 of the WPPT provides definitions of a number of key terms. Thus, the term ‘phonogram’ is defined as ‘the fixation of sounds of a performance or other sounds, or of a representation of sounds, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work’. This definition builds on and expands the notion of ‘phonogram’ as defined for the purposes of the Rome Convention in two ways. As a reflection of the developments in music technology, the WPPT definition also covers ‘representation[s] of sounds’ – for example, recordings of synthetic sounds, such as synthesizers, that have never been generated as actual sounds before the fixation was made.

50. Further, the definition of ‘phonogram’ for the purposes of the WPPT also covers fixations of sound or representations of sounds incorporated into an audiovisual fixation that does not qualify as a ‘work’ for copyright purposes. This is a substantial change.

51. The Agreed statement concerning Article 2(b) further states that ‘the definition of phonogram … does not suggest that the rights in the phonogram are in any way affected through their ( 31 ) incorporation into a cinematographic or other audiovisual work’.

52. AGEDI and AIE have argued that the Agreed statement should be understood to mean that the rights of the phonogram rightholders continue to apply after the incorporation of the phonogram into an audiovisual work as if the audiovisual work was (also) a phonogram. That argument and reading of the Agreed statement are in my opinion not correct.

53. The logic and scheme of Articles 2(b) and 15 of the WPPT as well as the negotiations that led to the final form of those provisions do not support that interpretation or the counterintuitive notion that a phonogram while being part of an audiovisual work would also, at the same time and so incorporated, qualify as a ‘phonogram’.

54. As described in the Guide to the Copyright and Related Rights Treaties Administered by WIPO, ( 32 ) an interpretative document drawn up by WIPO which, without being legally binding, nevertheless assists the Court in interpreting the WPPT, ( 33 ) the Agreed statement concerning Article 2(b) was meant to reaffirm that phonograms may only be used in audiovisual works on the basis of appropriate contractual arrangements, duly taking into account the rights of phonogram producers, and that if the phonograms are used again independently from the audiovisual work, they are (again) to be regarded as phonograms, implying that the phonogram as incorporated into the audiovisual work loses its character as a phonogram for as long as it is part of the audiovisual whole (and that it, in accordance with the Agreed statement, regains that status as a phonogram if it is again separated from the audiovisual whole). ( 34 ) See also the discussion in the Main Committee I of the Diplomatic Conference, which clarified that the soundtracks of films when issued as sound recordings should qualify as phonograms. ( 35 )

55. This view also finds support in the literature. See, for example, The WIPO Treaties 1996, p. 258, first and second part of number 35 concerning Article 2 of the WPPT, where it is explained: ‘The exclusion from the definition [as “phonogram”] applies only where the soundtrack appears together with or is otherwise connected to the image track. … It is irrelevant whether the soundtrack was initially designed to be exploited … as a phonogram… The same is true in respect of the time of fixation: it is irrelevant whether the soundtrack of a film is derived from a pre-existing recording or recorded contemporaneously with the images… The way of exploitation – as an inseparable part of an audiovisual work or separately as a mere recording of sounds – is crucial. Where a pre-existing fixation of sounds or representations thereof is later incorporated in an audiovisual work, it does not change its nature but remains a “phonogram”; its nature as a phonogram may be considered to be suspended during the incorporation’.

56. Other views have also emerged in the literature. See by the same authors, ‘The WIPO Treaties on Copyright’ ( 36 ), p. 272, points 8.2.41 and 8.2.42, discussing the view that pre-existing phonograms could retain their character as such even when incorporated into an audiovisual work, and p. 489, sections 9.2.8 and 9.2.9, describing differing interpretations by various Contracting States of Article 2(c) of the WPPT which were put forward at the Diplomatic Conference of 2000 in the negotiations that eventually led to the Beijing Treaty. ( 37 )

57. The ‘Resolution Concerning Audiovisual Performances’, adopted on 20 December 1996 by the 1996 Diplomatic Conference, in which the participating Delegations expressed their regret that ‘[the WPPT] does not cover the rights of performers in the audiovisual fixations of their performance’ also supports the view that Article 15 of the WPPT does not provide a right to a single equitable remuneration for communications to the public of audiovisual works into which a pre-existing phonogram has been incorporated.

58. It is therefore my view that an interpretation of Article 8(2) of the Rental Directive in the light of the provisions of the WPPT and which seeks to interpret the provisions of that directive in line with the provisions of that treaty strongly supports the conclusion that Article 8(2) does not require the Member States to provide a right to equitable remuneration for the communication to the public of an audiovisual work into the soundtrack of which a phonogram published for commercial purposes (or parts thereof) has been synchronised.

4. Re:Sound v. Motion Picture Theatre Associations of Canada

59. In the case Re:Sound v. Motion Picture Theatre Associations of Canada, ( 38 ) the Supreme Court of Canada was called upon to interpret the Canadian legal provisions introduced to comply with Canada’s obligations under Article 12 of the Rome Convention. Although the terminology of the Canadian legislation in question to some extent differed from the terminology used in the Rome Convention and the Rental Directive, the issues before the Canadian court closely resembled the questions referred for this Court to determine in the present case.

60. The Canadian legislation defined a ‘sound recording’ as a recording consisting of sounds, excluding, however, ‘any soundtrack of a cinematographic work where it accompanies the cinematographic work’. It should be noted that this definition appears to resemble more closely the definition of ‘phonogram’ for the purposes of the WPPT than the definition of this term for the purposes of the Rome Convention, in so far as the carve-out for soundtracks applies only in respect of sound recordings that accompany cinematographic ‘works’.

61. The Canadian Supreme Court held unanimously that this definition of ‘sound recording’ implied that no right to equitable remuneration is triggered when a soundtrack accompanies the motion picture, but that such remuneration was due if the soundtrack was ‘played separate from the movie or [television] programme’ and that this interpretation was consistent with the definition of ‘phonogram’ in Article 3 of the Rome Convention as the Canadian carve-out for ‘soundtracks’ didn’t provide an exclusion for ‘exclusively aural fixation[s]’. ( 39 )

62. The analysis of the case is informative, although of course in no way dispositive in respect of the present case before the Court.

5. Comparison of the concept of ‘reproduction’ within the meaning of Article 2(c) of Directive 2001/29 and Article 8(2) of the Rental Directive

63. It would seem logically and linguistically coherent to treat the result of an act of reproduction as ‘a reproduction’ of the reproduced item.

64. The process of synchronisation as described by the referring court involves, however, a lot more than the mere reproduction of the phonogram. The entire visual side of the audiovisual work has to be produced – generally, it is to be assumed, first – and the soundtrack including (parts of) the phonogram will have to be adapted to the visual side. Dialogue may be included, as well as other recorded musical or non-musical audio parts. These other parts of the audiovisual product have to be of a sufficiently original character to elevate the combined result to the status of an audiovisual ‘work’ for copyright purposes in order for it not to be covered by the notion of phonogram as defined for the purposes of the WPPT. ( 40 )

65. Bearing in mind that neither the Rental Directive nor Directive 2001/29 provide for any definition of the expression ‘phonogram published for commercial purposes, or a reproduction of such phonogram’, or for the terms ‘phonogram’ and ‘reproduction’ found in that expression, the meaning and scope of those terms and this expression must be determined considering their usual meaning in everyday language, while also taking into account the context in which they occur. ( 41 ) They must as terms of a provision that makes no express reference to the law of the Member States for the purpose of determining its meaning and scope be given an autonomous and uniform interpretation throughout the European Union, as required by the need for uniform application of EU law and by the principle of equality. ( 42 )

66. Starting with the context in which the abovementioned expression and terms occur, the term ‘reproduction’ is found not only in Article 8(2) of the Rental Directive, but also in Article 7 of Directive 92/100 and in that provision’s later reappearance as part of Article 3 of Directive 2001/29.

67. As the Court has repeatedly held, the concepts used by Directives 2001/29 and 2006/115 must, given the requirements of unity and coherence of the EU legal order, have the same meaning, unless the EU legislature has, in a specific legislative context, expressed a different intention. ( 43 )

68. In this respect, it is important to take into account the different purposes and the different character of the interests protected by, on the one hand, the provisions of EU law (and the matching provisions of international law), which provide performers and producers with an exclusive (but transferable) right to authorise or prohibit certain acts, such as the right of producers to authorise or prohibit reproduction of their phonograms, and, on the other hand, the rights to equitable remuneration for rental or lending, or for broadcasting or communication to the public, which are essentially rights of an economic character. ( 44 )

69. The purpose of the former rights is to provide performers and phonogram producers with the means to control specific forms of use of the results of their contributions, thus permitting them to negotiate compensation for such use, whereas the purpose of the latter rights is to compensate the performers or the producers for the use of their performances or investments in the context of uses that they do not control.

70. With respect to the concept of ‘communication to the public’ found in Article 3(1) of Directive 2001/29 as well as in Article 8(2) of the Rental Directive, the Court has repeatedly held that these provisions pursue objectives which are different to some extent, as the aforementioned Article 3 provides authors with a right that is preventive in nature. ( 45 ) The same logic applies vis-à-vis Article 2 of Directive 2001/29 which also provides rightholders with a preventive right, namely the right to authorise or prohibit reproduction.

71. Further, the term ‘reproduction’ can be understood to mean either the process of reproducing a given item, or the result of such reproduction. What is prohibited by Article 2(c) of Directive 2001/29 is the unauthorised act of reproduction, whereas Article 8(2) speaks of remuneration for certain uses of a reproduction in the sense of a copy of a phonogram, that is to say, the use of an item. Those are two different meanings of the same word.

72. In this respect, the current case differs from the situation analysed in Reha Training, ( 46 ) where the Court, in paragraphs 31 and 32 of that judgment, found no evidence that the EU legislature had intended the concept of ‘communication to the public’ to have different meanings in Directive 2001/29 and Directive 2006/115, and where the rights provided for by those two directives had the same trigger (and the concept in question was a part of that trigger).

73. Turning to the usual meaning of ‘reproduction’ in everyday language, I would argue that no ordinary person would consider a typical audiovisual work to be a ‘reproduction’ of a phonogram that is used as (part of) the soundtrack for that work. Solely by way of example, I would not – and I do not believe anyone would – consider a film such as Death in Venice ( 47 ) to be a ‘reproduction’ of (parts of) a recording of Mahler’s Fifth Symphony or of any of the other pieces of music that were included in the soundtrack for that film, ( 48 ) or the film The Graduate ( 49 ) to be a ‘reproduction’ of the song The Sound of Silence by Simon & Garfunkel, within the usual meaning of that term in everyday language.

74. The act of copying a pre-existing recording of a song onto the soundtrack of a film may be regarded as an act of reproduction, because that is what is being done. The song is reproduced and incorporated into the audiovisual whole. As discussed in points 33 to 35 of the present Opinion, it seems clear that such an act of reproduction, within the meaning of the term as used for purposes of the reproduction right, is taking place when the phonogram is synchronised.

75. However, the fact that the act of synchronisation of a pre-existing recording is an act of reproduction of that phonogram does not make the resulting audiovisual work (of which the song is presumably by far the smaller and less significant part) a reproduction of the song. That would hardly correspond with the usual meaning of that term in everyday language.

76. In Pelham, the Court was asked to interpret the ‘Distribution right’ provided for by Article 9 of the Rental Directive. That provision provides, inter alia, producers of phonograms with an exclusive right to make their phonograms, ‘including copies thereof’, available to the public by sale or otherwise. The question for the Court was whether a phonogram which contained sound samples transferred from another phonogram (in that case, without consent from the rightholders in the sampled phonogram) constituted a ‘copy’, within the meaning of Article 9(1) of the Rental Directive, of the sampled phonogram. The Court answered that question in the negative. It reasoned, in part based on the purpose of the distribution right in so far as it relates to phonogram producers (affording the producer, through adequate legal protection of intellectual property rightholders, the possibility to recoup the investments made, as well as fighting piracy), in part based on the parallel (though differently worded) provision in Article 1(c) of the Geneva Convention, ( 50 ) that a phonogram containing sound samples from another phonogram does not constitute a ‘copy’ of that phonogram, ‘since it does not reproduce all or a substantial part of that phonogram’. ( 51 )

77. I would point out that the Pelham case concerned a situation where the reproduced or copied part was substantially smaller than the integrated whole because only a small part of the original phonogram was reproduced. In the current case, the phonogram in question may be reproduced in full or part in the process of synchronisation. However, even if the phonogram is reproduced in full in the synchronisation, the requirement that the audiovisual product qualifies as a ‘work’ means that the changes made to the whole must meet the threshold of originality. It is therefore not possible to argue that the phonogram and the audiovisual work are the same or that the audiovisual work is a reproduction or a copy of the phonogram.

78. In that context, I would argue that the terms ‘reproduction’ and ‘copy’, although not identical in meaning, are related terms. Indeed, Article 3(e) of the Rome Convention defines ‘reproduction’ as ‘the making of a copy or copies of a fixation’. In this respect, the solution proposed, in my view, is also the one that is most closely aligned with the Court’s previous case-law.

IV. Conclusion

79. For those reasons, I propose that the Court should answer the questions referred for a preliminary ruling by the Tribunal Supremo (Supreme Court, Spain) as follows: The concepts of ‘phonogram’ and ‘reproduction of [a] phonogram’, contained in Article 8(2) of Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property, do not include an audiovisual work into which a phonogram has been incorporated after authorisation from the relevant rightholder(s) in the phonogram has been duly obtained as required by Article 2(c) of 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. When the work communicated to the public is an audiovisual work as such, it is not a ‘phonogram’ in the sense of Article 8(2) of Directive 92/100 and Article 8(2) of Directive 2006/115 which is ‘used’ or communicated to the public. Consequently, Article 8(2) of Directive 92/100 and Article 8(2) of Directive 2006/115 do not require the Member States to provide that the user should pay a ‘single equitable remuneration’ to the rightholder(s) in the incorporated phonogram upon a ‘communication to the public’ of the audiovisual work.

( 1 ) Original language: English.

( 2 ) Directive of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (codified version) (OJ 2006 L 376, p. 28, ‘Directive 2006/115’).

( 3 ) Council Directive of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (OJ 1992 L 346, p. 61, ‘Directive 92/100’).

( 4 ) See point 4 et seq., below.

( 5 ) See point 10 et seq., below.

( 6 ) See discussion in point 48, below.

( 7 ) OJ 2000 L 89, p. 6

( 8 ) The Diplomatic Conference on Certain Copyright and Neighbouring Rights Questions, which was convened under the auspices of the World Intellectual Property Organization in Geneva.

( 9 ) The ‘Agreed Statements concerning WIPO Performances and Phonograms Treaty adopted by the Diplomatic Conference on [20 December] 1996’.

( 10 ) Directive 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, p. 10, ‘Directive 2001/29’).

( 11 ) It is not immediately clear why the television transmissions would not qualify as ‘broadcasting’ rather than ‘communication to the public’. However, ‘broadcasting’ as the term is used in Article 8 of the Rental Directive is ‘by wireless means’, which would exclude cable television. As a practical matter, the obligation to pay the ‘single equitable remuneration’ applies equally for ‘broadcasting’ and ‘communication to the public’.

( 12 ) The text of the Rental Directive refers to ‘reproduction of such phonogram’ (emphasis added).

( 13 ) See point 3 of the section of the request for a preliminary ruling with the heading ‘Fifth’.

( 14 ) See point 5 of the section of the request for a preliminary ruling with the heading ‘Fifth’. It would thus appear that the referring court does not seek guidance on whether Atresmedia has made any ‘reproductions’ itself, but rather on whether the film or other audiovisual content it has communicated to the public could be considered as ‘reproductions’ of phonograms. This question relates to the acts of the producers of the films or other audiovisual content and the way the resulting works or ‘non-work’ products should be characterised, and not to the acts of a television company in broadcasting or communicating to the public such resulting works or non-work products. I note that there does not seem to be any real question as to whether the dissemination of the various audiovisual content qualifies as ‘communication to the public’ or whether the phonograms in question have been ‘published for commercial purposes’ – that seems to be a given.

( 15 ) See the request for a preliminary ruling, the section with the heading ‘First’, point 3, excerpt from the Juzgado Mercantil’s judgment (… synchronisation of a pre-existing phonogram in an audiovisual work under a paid licence to that effect ….) and the section with the heading ‘Fifth’, point 2, in fine (the referring court’s description of its interpretative doubts) (… payment for the related rights in the phonogram having been made when its reproduction or synchronisation in the audiovisual work was authorised).

( 16 ) Judgment of 29 July 2019, Pelham and Others (C‑476/17, EU:C:2019:624, paragraph 29 and operative part, paragraph 1).

( 17 ) According to the referring court, this consent was duly obtained at the time of the synchronisations in question.

( 18 ) Defined in Articles 1(2), 1(3) and 2(1) of Directive 92/100, respectively. The 12th recital of the directive states that ‘it is necessary to define the concepts of rental and lending for purposes of [the] Directive’.

( 19 ) Proposal for a Council Directive on rental right, lending right, and on certain rights related to copyright, COM(90) 586 final – SYN 319, dated 24 January 1991 (‘the original proposal’).

( 20 ) The Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886, as last revised at Paris on 24 July 1971 and amended on 28 September 1979.

( 21 ) See the original proposal, Part Two, Chapter I, third paragraph, in the section on Article 6 (Reproduction Right) (p. 56, in the English language version), which with respect to the right owners and subject matter of that article refers to the comments made in section 2.1, where it is stated (with respect to the rental and lending right) that ‘the employed terms are fundamental in the field of copyright and related rights and their meaning has become indirectly harmonised to a large extent in the laws of most Member States via the Berne Convention … and the Rome Convention … For purposes of this Directive reference is made to the Berne Convention and the Rome Convention in so far as the terms which have been employed … have to be interpreted in line with these Conventions’.

( 22 ) See the Commission’s ‘Amended proposal for a Council Directive on rental right and lending right and on certain rights related to copyright in the field of intellectual property’, COM(92) 159 final – SYN 319, dated 30 April 1992, (‘the amended proposal’), Explanatory Memorandum, p. 12 et seq., concerning Article 6 bis of the amended proposal.

( 23 ) Green Paper on Copyright and the Challenge of Technology – Copyright Issues Requiring Immediate Action, COM (88) 172 final, 7 June 1988.

( 24 ) See the Explanatory Memorandum to the amended proposal, p. 12, the section on Art. 6 bis.

( 25 ) See also my recent opinion in Recorded Artists Actors Performers (C‑265/19, EU:C:2020:512) , which concerns in particular the exclusive competence of the EU and the competence of the Member States to determine which third country performers are entitled to equitable remuneration.

( 26 ) The Guide to the Rome Convention and to the Phonograms Convention published in 1981 by the World Intellectual Property Organisation, comments to Article 3, paragraph (b), point 3.7, on page 22. See also the comments to Article 3, paragraph (e), where it is pointed out in point 3.15 on page 24, that a ‘phonogram’ is an exclusively aural fixation of sounds, whereas a ‘fixation’ may be either visual or audiovisual and that ‘the Rome Convention only protects phonograms which are exclusively sounds’.

( 27 ) This is also reflected in the Guide to the Rome Convention and to the Phonograms Convention, which in the comments to Article 10 (Right of Reproduction for Phonogram Producers) recalls the understanding of the Diplomatic Conference that ‘direct’ reproduction of a phonogram meant reproduction by use of the matrix and that ‘indirect’ reproduction was by use of a record pressed from the matrix or by recording a radio or TV programme containing the phonogram.

( 28 ) Judgment of 15 May 2012, SCF Consorzio Fonografici (C‑135/10, EU:C:2012:140, paragraph 38).

( 29 ) Idem, paragraph 39 and the case-law cited.

( 30 ) Idem, paragraph 50.

( 31 ) The word ‘their’ in the Agreed statement would appear to refer from a grammatical perspective to the ‘rights’ in the phonograms. Obviously that cannot be correct – the word ‘their’ must be read to mean ‘its’ and to refer to the phonogram rather than the rights. See, to same effect, Reinbothe, J., and von Lewinski, S., ‘The WIPO Treaties 1996 — The WIPO Copyright Treaty and The WIPO Performances and Phonograms Treaty — Commentary and Legal Analysis, point 36 at page 259. This reading is supported by the equally authentic French version of the Agreed statement which at the relevant part reads as follows: ‘la definition du phonogramme … n'implique pas que l'incorporation dans une œuvre cinématographique ou une autre œuvre audiovisuelle ait une quelconque incidence sur les droits sur le phonogramme’ where it is understood that the incorporation is of the phonogram, not the rights.

( 32 ) Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms, WIPO Publication No. 891(E).

( 33 ) See to similar effect concerning the WIPO Guide to the Berne Convention (Geneva, 1978), judgment of 7 December 2006, SGAE (C‑306/05, EU:C:2006:764, paragraph 41), and the Opinion of Advocate General Kokott in Joined Cases Football Association Premier League and Others (C‑403/08 and C‑429/08, EU:C:2011:43, point 122).

( 34 ) Guide to the Copyright and Related Rights Treaties Administered by WIPO, p. 235 at PPT-2.8.

( 35 ) See Records of the Diplomatic Conference of Certain Copyright and Neighbouring Rights Questions, Geneva 1996, p. 691, paragraphs 400 and 402.

( 36 ) Reinbothe, J., and von Lewinski, S, The WIPO Treaties on Copyright – A Commentary on the WCT, the WPPT, and the BTAP, 2nd edition.

( 37 ) See the views of Australia as expressed in the Summary Minutes MC I 2000, paragraph 319 for a similar view to the one espoused in this opinion; see, e.g., the views of the European Union, advocating a certain freedom of interpretation, in the same minutes, paragraph 97, and the views of the United States and of Japan for understandings differing from the one advocated in this opinion (in the same minutes, paragraphs 95 and 96, respectively).

( 38 ) [2012] 2 SCR 376.

( 39 ) Idem, paragraphs 35, 36, 49, 50 and 52. See for a different outcome, Phonographic Performance Co. of Australia Ltd. v. Federation of Australian Commercial Television Stations [1998] HCA 39, which was distinguished by the Supreme Court of Canada based on the differences in the pertinent legislative provisions. The Australian case was decided by a majority of three judges with two dissenting judges. I would point out that the Australian judgment seems not to refer to neighbouring rights which form the subject matter of Article 12 of the Rome Convention.

( 40 ) The Commission in its submissions at the hearing referred to Youtube videos where phonograms are accompanied by pictures of the CD cover as examples of audiovisual content that does not rise to the level of ‘works’ for copyright purposes and which therefore would constitute ‘phonograms’ for purposes of the WPPT. I agree with that description.

( 41 ) See judgment of 29 July 2019, Pelham and Others (C‑476/17, EU:C:2019:624, paragraph 28 and the case-law cited).

( 42 ) See judgment of 6 February 2003, SENA (C‑245/00, EU:C:2003:68, paragraph 23 and the case-law cited).

( 43 ) See judgments of 31 May 2016, Reha Training (C‑117/15, EU:C:2016:379, paragraph 28) and of 4 October 2011, Football Association Premier League and Others (C‑403/08 and C‑429/08, EU:C:2011:631, paragraph 188).

( 44 ) For a discussion of the right to remuneration as opposed to an exclusive right in the context of Article 15 of the WPPT, see Reinbothe, J., and von Lewinski, S., The WIPO Treaties on Copyright – A Commentary on the WCT, the WPPT, and the BTAP, 2nd edition, p. 394, point 8.15.17 et seq.

( 45 ) Judgments of 15 March 2012, SCF Consorzio Fonografici (C‑135/10, EU:C:2012:140, paragraphs 74 and 75), and of 31 May 2016, Reha Training (C‑117/15, EU:C:2016:379, paragraphs 29 and 30).

( 46 ) Judgment of 31 May 2016, Reha Training (C‑117/15, EU:C:2016:379).

( 47 ) The 1971 drama film directed by Luchino Visconti, with a manuscript based on the similarly titled novella by Thomas Mann.

( 48 ) Supposing pre-recorded music was used.

( 49 ) The 1967 romantic comedy-drama directed by Mike Nichols and starring Dustin Hoffman.

( 50 ) The Convention for the Protection of Producers of Phonograms Against Unauthorised Duplication of Their Phonograms of 29 October 1971.

( 51 ) Judgment of 29 July 2019, Pelham and Others (C‑476/17, EU:C:2019:624, paragraph 55).