January 20 2014
The High Court has once again shown its support for copyright holders, granting six major film companies blocking orders under the Copyright, Designs and Patents Act 1988 against the United Kingdom's six main internet service providers (ISPs).(1) The orders require the ISPs to block access to TubePlus and SolarMovie, two websites that had been providing access through an online database to (but not hosting) a large range of television programmes and films without the authorisation of the relevant copyright owners.
The TubePlus and SolarMovie websites moderated the quality of the links and also provided categorisation and referencing services to make links easier to find. TubePlus allowed users to download infringing material, whereas SolarMovie did not.
Under the Copyright, Designs and Patents Act, it is a primary infringement of copyright to copy, communicate to the public (which can be by electronic transmission) or authorise another to copy or communicate to the public a copyright work in the United Kingdom without the copyright owner's consent. An injunction can be obtained under Section 97A of the act (which implements Section 8(3) of the EU Information Society Directive(2)) against service providers that have "actual knowledge" of other persons using their service to infringe copyright.
Six major film companies applied for orders under Section 97A to stop the United Kingdom's six main ISPs from accessing the websites, alleging that the websites infringed their copyright by:
Securing an order under Section 97A is not uncharted territory, as evidenced by recent decisions in similar cases, such as Newzbin,(3) Newzbin2,(4) Dramatico Entertainment v Sky,(5) EMI Records v Sky(6) and FAPL v Sky(7) (all of which, like the case at hand, were heard by Justice Arnold). In this instance, as is often the case, the application was not contested by the ISPs and the ISPs agreed the form of orders to be made should the court be satisfied that it was appropriate to grant the orders.
After setting out a useful summary of 18 principles established by European Court of Justice (ECJ) case law on what constitutes a 'communication to the public', the court referred in detail to three references pending before the ECJ which bore upon the issues in the case – Svensson v Retriever Sverige AB (C-466/12), C More Entertainment AB v Sandberg (C-279/13) and BestWater International GmbH v Mebes (C-348/13).
The referring courts in these cases all distinguished between what has been variously termed 'framing' and 'embedding' (ie, a link that opens a window showing the infringing content on the same website, giving the impression that it is on the same website as the link) and 'reference' or 'hyper' linking (ie, a link that takes the user to another website to view infringing content). The referring courts asked the ECJ whether the manner of linking is relevant to whether a communication to the public has been made. Interestingly, in Svensson the district court (which was not the referring court) had already ruled that reference linking does not constitute a communication to the public, while in BestWater the referring court suggested that 'deep linking' (by which the court meant framing) should constitute a communication to the public and should be distinguished from reference linking, which should not.
The High Court also referred to an opinion(8) of the European Copyright Society in which the authors argued, contrary to the position adopted by the BestWater court, that both reference linking and framing should not constitute a communication to the public. The High Court judge went on to say that these are "clearly difficult and controversial issues" and, as the ECJ judgment in Svensson had not yet been handed down, he had to decide whether a communication to the public had been made under the law as it stood at the time.
Communication to the public
The court first considered whether a communication to the public contrary to the Copyright, Designs and Patents Act had been made.
Communication to the public by websites' operators
Members of the public would have found it difficult to access the content directly from the host sites had it not been made available by the websites. The operators were intervening in a "highly material way" to make the copyright works available to a new audience, which was analogous to the communication to the public in FAPL v Sky. Even if the court were wrong about that, it seemed clear that the host sites communicated the works to the public and that the websites were jointly liable for this activity.
The judge notably remarked that he was "doubtful" whether he had been correct in FAPL v Sky to say that the operators were using a different technical means from that of the original infringing communication, although this did not sway him in his view that the operators were communicating the copyright works to a new public.
Communication to the public by websites' users
Many, if not most, of the users had not only provided a link to the host site, but also uploaded the relevant content to the host site. The combined effect amounted to a communication to the public even if (for the sake of argument) the mere provision of a hyperlink did not.
Authorisation by websites' operators
The court considered that the operators had authorised infringement, for similar reasons given in Dramatico and EMI.
Test to grant blocking order
The court then considered whether the test to grant an order under Section 97A had been satisfied. It was clear that the website operators were service providers and that, following Dramatico and FAPL, users and operators used the ISPs' services to infringe the claimants' copyright. Further, the ISPs had actual knowledge of this by virtue of emails sent to them by a representative of the film companies with attached evidence of infringement. On this basis, agreeing that the orders sought were proportionate and exercising its discretion, the court granted the orders.
This is the latest in a line of cases, dating back to Newzbin2 in 2011, in which copyright owners have relied on Section 97A to obtain blocking orders against ISPs. However, the case highlighted two remaining uncertainties in this area of law. The first of these is whether the mere provision of a reference link or hyperlink constitutes a communication to the public. The court's judgment seems to suggest that it does not, as evidenced by the judge's statement that he was "not sure that the mere provision of a hyperlink amounts to communication to the public". However, until a decision is issued that deals with this point head on (which is likely to be the awaited ECJ decision in Svensson), the law will remain unclear.
The second of these uncertainties arose from the judge admitting to being "doubtful" as to whether he was right to say that the operators in FAPL had used a different technical means of transmission from that of the original communication. As a result, his finding that there was no need to show that the transmission was to a "new" public was potentially wrong. Rights holders seeking future Section 97A orders should pay close attention to these points of uncertainty.
For further information on this topic please contact Paul Joseph or Adam Cusworth at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (firstname.lastname@example.org or email@example.com). The RPC website can be accessed at www.rpc.co.uk.
(1) Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd  EWHC 3479 (Ch).
(2) EU Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.
(3) Twentieth Century Fox v Newzbin Limited  EWHC 608 (Ch), FSR 21.
(4) Twentieth Century Fox Film Corp v British Telecommunications plc  EWHC 1981 (Ch),  Bus LR 1471.
(5) Dramatico Entertainment Limited v British Sky Broadcasting Limited  EWHC 1152 (Ch).
(6) EMI Records Ltd v British Sky Broadcasting Ltd  EWHC 379 (Ch).
(7) Football Association Premier League Ltd v British Sky Broadcasting Ltd  EWHC 2058 (Ch),  ECDR 14.
(8) Published on February 17 2013.
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