January 31, 2014

Paramount Home Entertainment International Ltd & Others v British Sky Broadcasting Ltd & Others  [2013] EWHC 3479 (Ch)

Introduction

The English High Court has recently issued a number of applications for ‘blocking injunctions’ against internet service providers (“ISP”s ) requiring them to prevent access to particular websites hosting, or otherwise infringing, copyright content.   The power to grant such injunctions arises under section 97A of the Copyright Designs and Patents Act 1998 (“CDPA” ) and is proving to be a powerful weapon in the fight against online piracy.  In these cases, the meaning of “communication to the public” (as used in section 20 of the CDPA) has been a central issue.

The Facts

The claimants were major film studios. The defendants, who did not resist the application were the main retail ISPs in the UK. The targets were two websites: and (together, the “Websites”), each of which allowed streaming (and in the case of downloads as well) of a large range of films and television programmes.

Over 99% of the material which could be accessed via the Websites was protected by copyright.  The Websites themselves did not create or host any copyright content; they provided a searchable and categorised index of links to third party websites from which the content could be streamed (or downloaded). The content would typically be streamed from those third party websites through an embedded player on the Websites.

The Law

Section 97A of the CDPA gives the High Court the power to grant an injunction against an ISP where the ISP has actual knowledge of another person using their services to infringe copyright. The key question for the Judge (Arnold J) was whether the operation and/or use of the Websites constituted an act of copyright infringement.

The claimants alleged copyright infringement by the operators of the Websites on two bases: first, by ‘communicating the works to the public’ within the meaning of section 20 of the CDPA; and secondly, by authorising infringements by users. The claimants also contended that users of the Websites who submitted links to infringing content infringed copyright by ‘communicating’ those copyright works to the public.

The Judge (at [12]) summarised the state of the law as to the meaning of “communication to the public” by setting out 18 principles drawn from a series of nine decisions of the Court of Justice of the European Union (the “CJEU” ) on the meaning of this phrase.  He also noted that three further cases remained pending before the CJEU relating to linking to and framing of copyright content on websites. Although recognising that these pending cases concerned “difficult and controversial issues”, the Judge concluded that he must apply the law as it emerges from the decided cases.

Infringement

The Judge held that there was ‘communication to the public’ of the copyright works in the sense that the works “are made available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them” (applying the guidance from ITV v TVCatchup (Case C-607/11, 7 March 2013) and that the operators of the Websites were responsible for that communication.

The Judge acknowledged, however, that it is arguable that the mere provision of a hyperlink is not enough to constitute “communication to the public” (particularly if the link is not directly to the source), and also that it is arguable that it makes no difference whether clicking on the links results in framing or not.  But in this case, the Websites were intervening in a highly material way to make the copyright works available to the public by making it much easier for users to find what they were looking for.

Further, the Judge held that, even if he was wrong about whether the Websites ‘communicated the works to the public’, the host third party websites clearly did ‘communicate’ and on that basis the Website operators were jointly liable for that infringement, on the basis that the operators of the Websites induce, incite or persuade the third party host websites to commit infringements of copyright, and that they and the third party websites acted pursuant to a common design to infringe.

In relation to the users of the Websites, who posted links to the hosted content, the Judge held that even if the mere provision of a hyperlink did not amount to “communication to the public” (which has not been decided), the evidence showed that many users also uploaded the content to the third party host website and so the combined effect of those acts did amount to a “communication to the public” even if the mere provision of a hyperlink did not.

Finally, the Judge also held that the operators of the Websites “authorised” the infringing acts of the users (who, as mentioned above, ‘communicated’ the content to the public). This was on the basis that the operators of the Websites go far beyond merely enabling or assisting.  On any view, they “sanction, approve and countenance” the infringements of copyright committed by their users and they also purport to grant users the right to do the acts complained of.

Accordingly, the Judge granted the injunction requiring the ISPs to block the Websites.

Provision of a Link: Communicating to the Public?

As foreshadowed mentioned above, there are pending references to the CJEU from courts in Sweden and Germany as to whether the mere provision of a link amounts to “communication to the public” and whether it makes a difference or not if a link results in ‘framing’ or in redirection to the linked website.  The oral hearing in one of these cases, Svensson (Case C-466/12, on reference from Svea Hovrätten (Svea Court of Appeal) in Sweden) took place on 7 November 2013 and so the judgment is expected in the coming months.  In this case the CJEU decided not to seek the advice of the Advocate General (as is usual) notwithstanding that the case concerns what Arnold J described as “difficult and controversial issues”.

The outcome of the anticipated judgments of the CJEU will also have effects beyond the ‘blocking injunctions’ seen in so many of these cases.  For example, it is a criminal offence under s.107(2A) the CDPA to infringe copyright by “communicating the work to the public” in the course of business (or otherwise to such an extent as to affect prejudicially the owner of the copyright) where the perpetrator knows or has reason to believe that by doing so he is infringing copyright in the work.  If the mere provision of a link amounts to “communication to the public” then, once imputed with knowledge of any particular links concerned, businesses or individuals who run websites linking to materials without permission to do so may find themselves facing criminal prosecutions as well as civil actions.[F/N1]

Footnotes:

[F/N1] On 14 August 2012, Mr Vickerman (a UK web developer) was found to have conspired to defraud copyright owners by facilitating access via his website ‘SurfTheChannel.com’ to infringing copies of copyright works.  The prosecution was brought in respect of alleged conspiracy to defraud, an offence at common law (not for offences under the CDPA) but this is an example of how the CJEU’s further guidance on the meaning of “communication to the public” could have wider impact in criminal prosecutions. The sentencing judgment in this case, which sets out the facts and legal issues in more detail, can be viewed here.

Published with minor alterations in Intellectual Property Forum, Issue 96, February 2014