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30 April 2021
The Performing Right Society (PRS) Limited issued proceedings against Qatar Airways Group QCSC for global copyright infringement concerning the use of PRS's repertoire works in Qatar Airways' in-flight entertainment system, including two associated apps.(1)
PRS claimed that the inclusion of its repertoire works in Qatar Airways' in-flight entertainment system involved two acts which required PRS's licence as the copyright owner – namely:
With respect to UK law, PRS relied on Sections 19 and 20 of the Copyright, Designs and Patents Act 1988. It sought injunctive relief to restrain such infringement and damages.
Given the global nature of the dispute, the parties considered how to address 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 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 Qatar Airways should give extended disclosure under Practice Direction (PD) 51U (to which the proceedings were subject) in relation to certain issues. Qatar Airways contended that there should be no disclosure.
Deputy Master Francis noted the following paragraphs of PD 51U:
The court will only make an order for Extended Disclosure that is search-based (ie 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].
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].
It is for the party requesting Extended Disclosure to show that what is sought is appropriate, reasonable and proportionate [as defined].
'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 the proceedings [and] does not extend to every issue which is disputed in the statements of case by denial or non-admission.
Francis also referred to McParland & Partners Ltd v Whitehead ( EWHC 298 (Ch)), in which Sir Geoffrey Vos had said that Paragraph 7(3) of PD 51U explains as follows:
[I]n 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.
Vos also said the following:
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 particularly stressed that consideration of whether an infringement of the communication to the public right existed would require a fact-sensitive, individualised assessment of Qatar Airways' in-flight entertainment systems as a whole, for which purpose the court had 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 were genuinely a key matter in dispute which had to be determined by reference to contemporaneous documents for there to be a fair resolution of proceedings. It said that all of 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 be fairly tried based on those admitted facts.
Further, although there 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 thereby, Qatar Airways argued that PRS had not asserted any positive case by way of reply to Qatar Airways' defence and that 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 an extensive document search and management exercise at an estimated cost of nearly £250,000.
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 indicated that both sides had 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, Francis was initially concerned by the extent of the exercise that Qatar Airways would have to undertake but noted that this was a dispute between two large commercial entities and that the issues in dispute were complex and of 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 or costs of that exercise.
Considering the issues in turn, Francis concluded that it was appropriate to make an order for extended disclosure under Model C for the preliminary issues trial, albeit with some limitations. The judge particularly noted the summary of the case law on the communication to the public right given by Lord Justice Arnold in TuneIn ( EWHC 2923 (Ch)) and the individualised assessment which the court must undertake.
For further information on this topic please contact Rachel Alexander at Wiggin by telephone (+44 20 7612 9612) or email (firstname.lastname@example.org). The Wiggin website can be accessed at www.wiggin.co.uk.
(1) Performing Right Society Ltd v Qatar Airways Group (QCSC  EWHC 869 (Ch)), 13 April 2021.
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