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High Court rules Pirate Bay operators and users infringed record companies' copyright

Practical Law UK Legal Update Case Report 0-518-1180 (Approx. 7 pages)

High Court rules Pirate Bay operators and users infringed record companies' copyright

by PLC IPIT & Communications
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The High Court, in a preliminary issues hearing, has ruled that the users and operators of The Pirate Bay website infringed the claimant record companies' copyright. (Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 268 (Ch), 20 February 2012.) (free access.)
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The High Court, in a preliminary issues hearing, has ruled that the users and operators of the peer-to-peer file-sharing website, The Pirate Bay (TPB), had infringed the claimant record companies' copyright. The users who had accounts with the defendant internet service providers (ISPs) had infringed the claimants' copyrights under section 17 of the Copyright, Designs and Patents Act 1988 (CDPA) by copying their sound recordings on a large scale. They were also in breach of the claimants' right of communication to the public under section 20 of the CDPA. TPB operators authorised the infringements by the UK users in breach of section 16(2) of the CDPA and were also jointly liable for such infringements committed by users. Arnold J said that the case was indistinguishable from Twentieth Century Fox Film Corp and others v British Telecommunications plc [2011] EWHC 1981 Ch. The judge's endorsement of his landmark decision in that action, ordering ISPs to block the Newzbin website is likely to encourage rights-holders to press ahead with further applications under section 97A of the CDPA against other obviously infringing websites, particularly while there is little progress on the website blocking proposals of the Digital Economy Act 2010. For more information, see Practice note, Overview of Copyright. (Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 268 (Ch), 20 February 2012.)
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NOTE: On 2 May 2012, Arnold J granted injunctions against five UK internet service providers requiring them to block access to the Pirate Bay website (see Legal update, High Court grants Pirate Bay blocking orders against ISPs). (See details of PLC IPIT & Communications' policy on annotating case reports.)

Background

Copyright Directive

Article 3(1) of the Copyright Directive (2001/29/EC) introduced the right of communication to the public. Specifically, it requires member states to provide authors with the exclusive right to authorise or prohibit any communication to the public of their works by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.
Article 3(2) requires member states to provide four other categories of right-holder (including phonogram producers) with an exclusive right only to authorise or prohibit the "making available to the public" of the relevant subject matter.
Article 8(3) requires member states to ensure that right-holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.
The Copyright Directive was implemented in the UK by the Copyright and Related Rights Regulations 2003 (SI 2003/2498) (CRR Regulations).

Copyright, Designs and Patents Act 1988

The Copyright, Designs and Patents Act 1988 (CDPA) provides that it is a primary infringement of copyright to do any of the following acts in the UK without the copyright owner's consent:
  • Copy the work (section 17).
  • Communicate the work to the public (section 20).
  • Authorise another to do any of the above acts (section 16(2)).
Section 20 of the CDPA (as amended by the CRR Regulations) provides that the communication to the public of a copyright work is an act restricted by the copyright in a literary, dramatic, musical or artistic work (section 20(1)(a)), a sound recording or film (section 20(1)(b)), or a broadcast (section 20(1)(c)).
Under section 20(2), "communication to the public" means a communication to the public by electronic transmission, and includes:
  • Broadcasting the work in question.
  • Making the relevant work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them (making available right).
An injunction may be obtained against an internet service provider (ISP) that has "actual knowledge" of another person using their service to infringe copyright (section 97A(1), CDPA). In deciding whether an ISP has actual knowledge the court will take into account all matters which appear to it to be relevant in the particular circumstances, including whether the ISP has received a notice under the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013) regarding the unlawful activity (section 97A(2), CDPA).

Facts

The nine claimants were record companies claiming on their own behalf and in a representative capacity on behalf of the other members of BPI (British Recorded Music Industry Ltd) and PPL (Phonographic Performance Ltd). They owned or exclusively licensed the copyright in numerous sound recordings, a sample of which were relied upon in the proceedings.
The defendants were the six main retail ISPs in the UK. They chose not to appear or be represented at the trial; their position was that it was for the court, rather than them, to decide on infringement.
The claimants applied for an injunction against the defendants under section 97A of the CDPA requiring them to take measures to block or at least impede access by their customers to a Swedish peer-to-peer (P2P) file-sharing website called The Pirate Bay (TPB). (They did not bring proceedings for copyright infringement against TPB or its users in the UK.)
The parties agreed to a trial of two preliminary issues: whether on the evidence before the court (1) users and (2) the operators of TPB infringed the claimants' copyrights in the UK.
The claimants argued that the TPB users infringed their copyrights by:
  • Copying sound recordings, in breach of section 17 of the CDPA.
  • Communicating sound recordings to the public, in breach of section 20 of the CDPA.
They argued that the TPB operators infringed copyright on the basis that they:
  • Authorised the infringements by the UK users.
  • Were jointly liable for the infringements by the UK users.

The Pirate Bay website

TPB is the world's largest BitTorrent tracker, with over 30 million registered users sharing files, most of them copyright works such as movies, music and software. BitTorrent is a P2P file-sharing protocol that is used to distribute large amounts of data; its key feature is that it enables an individual to download files quickly by allowing people downloading the file to upload (distribute) parts of it at the same time. Registration is straightforward and free. TPB carries click-through advertising.

Decision

Arnold J held that both the users and the operators of TPB infringed the copyrights of the claimants (and those they represented) in the UK. The following is a summary of his reasoning.

Absence of TPB's operators and users

Arnold J explained that it was appropriate to determine the preliminary issues in the absence of TPB's operators and users, who were not a party to the proceedings. There were several reasons for this:
  • There was no jurisdictional requirement to join or serve the operators or users. Article 8(3) of the Copyright Directive and section 97A of the CDPA conferred jurisdiction on the court to grant injunctions against intermediaries whose services were used by a third party to infringe copyright. Neither provision required joinder or service of the third party.
  • The courts both in the UK and in other member states had proceeded on the basis that it was not necessary to join or serve the third party. This was what happened in Twentieth Century Fox Film Corp and others v British Telecommunications plc [2011] EWHC 1981 Ch (20C Fox v BT) (see Legal update, High Court orders BT to block access to Newzbin website).
  • It would be impracticable, or at least disproportionate, to require joinder or service of the operators or users of TPB.

Infringement by TPB's users

Copying

Arnold J said that it was clear that a TPB user who selected a torrent file to obtain a copy of particular content, and then downloaded the associated content files, copied the content contained in those files on his computer. Therefore if the content filed comprised a copyright work, and the user did not have licence of the copyright owner, he would be infringing copyright.
The claimants provided evidence from a company that monitored the activities of P2P users in the UK, the majority of which involved the BitTorrent protocol. Arnold J considered that as TPB was the most popular torrent site, it could be inferred that a substantial proportion involved use of TPB.
Arnold J concluded that UK users of TPB who had accounts with the defendant ISPs had infringed, and were continuing to infringe, the claimants' copyrights by copying their sound recordings on a large scale.

Communication to the public

Arnold J explained that the Copyright Directive only required the UK to grant the Article 3(2) making available right to sound recordings and broadcasts, but the CRR Regulations went further and extended the Article 3(1) right of communication to the public to such works. In ITV Broadcasting Ltd v TVCatchup Ltd (No 2) [2011] EWHC 1874 (Pat), Floyd J had held that this was permissible in the case of broadcasts and not ultra vires (see Legal update, High Court to refer questions to ECJ on copyright infringement by live internet streaming). Arnold J held that his reasoning was equally applicable to sound recordings and films.
The judge said that it was not entirely clear from the ECJ's existing jurisprudence under Article 3(1) whether communication to the public occurred where the communication originated or where it was received. (He referred in this regard to the pending reference in Football Dataco Ltd v Sportradar GmbH [2011] EWCA Civ 330 (see Legal update, Court of Appeal sends reference to ECJ on database rights and location of infringement).) This was relevant to any claim against the TPB operators as their servers were outside the UK, but was not relevant to the claim against the UK users as they were both uploaders and downloaders; consequently, it was irrelevant where the act of communication occurred.
Arnold J considered that the users communicated the recordings by electronic transmission. They made the recordings available by electronic transmission in such a way that members of the public could access the recordings from a place and at a time individually chosen by them under section 20(2)(b) of the CDPA. He noted that it was clear from the ECJ's decision in Football Association Premier League Ltd v QC Leisure (Cases C-403/08 and C-429/08) [2012] 1 CMLR 29, that the concept of communication should be construed broadly (see Legal update, ECJ rules foreign decoder cards can be used to view Premier League games in UK).
He also considered that the users communicated the recordings to a new public, namely one which was not taken into account by the right-holders when authorising the distribution of the recordings, since copies of the sound recordings were made available to users who have not purchased them from an authorised source.
Consequently, Arnold J concluded that the UK users were in breach of the claimants' right of communication to the public.

Infringement by TPB's operators

Authorisation

Arnold J considered the factors identified by Kitchin J in Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch) (20C Fox v Newzbin) (see Legal update, High Court finds film-makers' copyright infringed by Newzbin indexing service) concerning the law on authorisation:
  • Nature of the relationship. TPB provided a sophisticated and user-friendly environment in which its users were able to search for and locate content. TPB did not merely receive the upload of the torrent file, it processed it (for example, by replacing the tracker server). Users were provided with assistance and advice on how to download from the site, the trustworthiness of particular torrents, and how to circumvent blocking measures taken as a result of court orders.
  • Means to infringe. The torrent files were so conveniently indexed, arranged and presented by TPB that they provided users with the means to infringe.
  • Inevitability of infringement. Infringement was not merely an inevitable consequence of the provision of torrent files by TPB; it was the operators' objective and intention. Arnold J found that this was clear from the name of the website, the fact that it was founded by a Swedish anti-copyright organisation and the fact that the operators had circumvented previous court orders by moving TPB to new providers.
  • Degree of control. TPB would have been able to prevent infringement of copyright, should its operators so wish; its website made it clear that it could remove torrents if it found them unacceptable.
  • Steps to prevent infringement. TPB operators had the means to prevent infringement, but chose not to and treated any attempts to prevent it (judicial or otherwise) with contempt.
Arnold J concluded that the TPB operators authorised its users' infringing acts of copying and communication to the public. They went far beyond merely enabling or assisting; they sanctioned, approved and countenanced the infringements. He held that they also purported to grant users the right to do the acts complained of. He said that the case was indistinguishable from 20C Fox v Newzbin and if anything, it was a stronger case.

Joint tortfeasance

Arnold J also referred to Kitchin J's judgment in 20C Fox v Newzbin in relation to joint tortfeasance.
He concluded, from the matters he had considered in relation to authorisation, that the TPB operators induced, incited or persuaded its users to commit infringements of copyright, and that they and the users acted pursuant to a common design to infringe. Arnold J said that the fact that the operators profited from their activities was relevant. Consequently, they were jointly liable for the infringements committed by users.

Comment

Arnold J's endorsement of his landmark decision in 20C Fox v BT ordering ISPs to block the Newzbin website is likely to encourage rights-holders to press ahead with further applications under section 97A of the CDPA against other obviously infringing websites for blocking orders. Following this preliminary issues ruling on infringement, the claimants in this case are now in a position to obtain the necessary blocking orders against the ISPs which will doubtless be in a similar form to the blocking orders in the Newzbin case (see, for example, Legal update, High Court orders BT to block access to Newzbin site within 14 days).
Arnold J commented that the decision to begin with a preliminary issues hearing on copyright infringement was a sensible way to proceed, but indicated that in future cases it was not essential for such claims to be dealt with in two stages. This may result in a quicker turnaround for applications for blocking orders and potential cost savings.
Overall this is positive news for rights-holders in their efforts to combat large-scale online copyright infringement, particularly while there is little progress on the website blocking proposals of the Digital Economy Act 2010 (see Legal update, Government proceeds with copyright infringement notification scheme but puts site-blocking on hold). However, doubts remain over the effectiveness of website-blocking technology.

Case

Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 268 (Ch), 20 February 2012 (Arnold J; Ian Mill QC, Edmund Cullen and Tom Richards (instructed by Forbes Anderson Free) for the claimants; the defendants did not appear and were not represented).
End of Document
Also Found In
Resource ID 0-518-1180
© 2024 Thomson Reuters. All rights reserved.
Published on 23-Feb-2012
Resource Type Legal update: case report
Jurisdiction
  • United Kingdom
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