April 19, 2021
The Performing Right Society Limited issued proceedings against Qatar Airways Group QCSC for global copyright infringement concerning the use of PRS repertoire works in Qatar Airways’ inflight entertainment system, including two associated apps.
PRS claims that the inclusion of its repertoire works in Qatar Airways’ inflight entertainment system involves Qatar Airways in two acts which require the licence of PRS as the copyright owner, namely (i) public performance and (ii) communication to the public. Under UK law, PRS therefore relies on both ss. 19 and 20 of the Copyright, Designs and Patents Act 1988. It seeks injunctive relief to restrain such infringement and damages.
Given the global nature of the dispute, consideration had been given by the parties as to how to deal with the foreign law aspects of the claim in a proportionate manner. With that in mind, and in advance of the case and costs management hearing, the parties had agreed that there should be a preliminary issues trial at which liability issues under UK and Qatari copyright law would be determined. The key issue at the case and costs management hearing was the scope of disclosure for the preliminary issues trial. PRS contended that Extended Disclosure under Practice Direction 51U (to which the proceedings are subject) should be given by Qatar Airways in relation to certain issues. Qatar Airways contended that there should be no disclosure.
Deputy Master Francis noted, inter alia, the following PD 51U paragraphs:
6.3: the court will only make an order for Extended Disclosure that is search-based (i.e. Models C, D and/or E) where it is persuaded that it is appropriate to do so in order fairly to resolve one or more of the Issues for Disclosure (as defined);
6.4: in all cases, an order for Extended Disclosure must be reasonable and proportionate having regard to the overriding objective (including the factors specifically listed therein);
6.5: it is for the party requesting Extended Disclosure to show that what is sought is appropriate, reasonable and proportionate (as defined);
7.3: “Issues for Disclosure” means only those key issues in dispute which needed to be determined by reference to contemporaneous documents in order for there to be a fair resolution of proceedings and does not extend to every issue disputed in the statements of case by denial or non-admission.
Deputy Master Francis also referred to McParland & Partners Ltd v Whitehead  EWHC 298 (Ch), in which Sir Geoffrey Vos said that Paragraph 7.3 explains “… that in many cases, the issues for disclosure need not be numerous. They will almost never be legal issues, and they will not include factual issues that are already capable of being fairly resolved from the documents available on initial disclosure”.
Sir Geoffrey also said “The important point for parties to understand is that the identification of issues for disclosure is a quite different exercise from the creation of a list of issues for determination at trial. The issues for disclosure are those which require extended disclosure of documents (i.e. further disclosure beyond what has been provided on initial disclosure) to enable them to be fairly and proportionately tried. …”.
PRS contended that Extended Disclosure was required to enable the matters to be tried as preliminary issues to be fairly determined. PRS stressed, in particular, that consideration of whether there is an infringement of the communication to the public right requires a fact-sensitive, individualised assessment of Qatar Airways’ inflight entertainment systems as a whole, for which purpose the court needed to have sufficient information about the nature and operation of those services. That information was solely within Qatar Airways’ knowledge.
Qatar Airways submitted that none of the items listed within the list of Issues for Disclosure was genuinely a key matter in dispute which needed to be determined by reference to contemporaneous documents in order for there to be a fair resolution of proceedings. It said that all the issues to be determined at the preliminary issues trial were questions as to the application of the law to the admitted facts and could fairly be tried based on those admitted facts.
Further, although here were some factual disputes between the parties relating to passengers’ mode and means of access to the apps and the range of content made available by them, Qatar Airways said that PRS was not asserting any positive case by way of reply to Qatar Airways’ defence, and the mere joinder of issues on such matters was not itself sufficient to trigger Extended Disclosure.
Qatar Airways also said that PRS’s request for Extended Disclosure was disproportionate and would involve a very extensive document search and management exercise at an estimated cost of nearly £250,000.
Deputy Master Francis did not accept that the absence of a reply to defence was any real indicator of the extent of the factual disputes in issue. Further, the parties had agreed directions in relation to witness statements at an estimated cost of around £150,000, which was an indication that both sides anticipated significant disputes of fact to be determined at the preliminary issues trial, encompassing items in the list of Issues for Disclosure.
As for proportionality, Deputy Master Francis was initially concerned at the extent of the exercise that Qatar Airways would have to undertake, but noted that this was a dispute between two very large commercial entities and that the issues in dispute were complex and of very great importance to both parties. Therefore, he was satisfied that if it was otherwise appropriate to make the order for Extended Disclosure, he should not be deterred by the extent of that exercise or the costs of it.
Considering the Issues in turn, Deputy Master Francis concluded that it was appropriate to make an order for Extended Disclosure under Model C for the preliminary issues trial, albeit it with some limitations. The judge noted, in particular, the summary of the case law on the communication to the public right given by Arnold LJ in the TuneIn case  EWHC 2923 (Ch), and the individualised assessment which the court is required to undertake. (Performing Right Society Ltd v Qatar Airways Group QCSC  EWHC 869 (Ch) (13 April 2021) — to read the judgment in full, click here).
Wiggin acts for PRS in this case.