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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Paramount Home Entertainment International Ltd & Ors v British Sky Broadcasting Ltd & Ors [2013] EWHC 3479 (Ch) (13 November 2013) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2013/3479.html Cite as: [2014] ECDR 7, [2013] Info TLR 245, [2013] EWHC 3479 (Ch) |
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CHANCERY DIVISION
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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PARAMOUNT HOME ENTERTAINMENT INTERNATIONAL LIMITED SONY PICTURES HOME ENTERTAINMENT LIMITED TWENTIETH CENTURY FOX FILM COMPANY LIMITED UNIVERSAL PICTURES (UK) LIMITED WARNER BROS. ENTERTAINMENT UK LIMITED DISNEY ENTERPRISES, INC. |
Claimants |
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- and - |
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BRITISH SKY BROADCASTING LIMITED BRITISH TELECOMMUNICATIONS PLC EVERYTHING EVERYWHERE LIMITED TALKTALK TELECOM LIMITED TELEFÓNICA UK LIMITED (6) VIRGIN MEDIA LIMITED |
Defendants |
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The Defendants did not appear and were not represented
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Crown Copyright ©
MR JUSTICE ARNOLD :
Introduction
The Claimants' rights
The Websites
Jurisdictional requirements
Are the Defendants service providers?
Do the operators and/or users of the Websites infringe the Claimants' copyrights?
Communication to the public
(1) "Communication to the public" must be interpreted broadly: SGAE at [36], [54], FAPL at [186], ITV at [20].
(2) "Communication to the public" covers any transmission or retransmission of the work to the public not present at the place where the communication originates by wire or wireless means: ITV at [23].
(3) "Communication to the public" does not include any communication of a work which is carried out directly in a place open to the public by means of public performance or direct presentation of the work: Circul at [36]-[41], FAPL at [200]-[203].
(4) There is no "communication to the public" where the viewers have no access to an essential element which characterises the work: Bezpecností at [57].
(5) "Communication" includes any retransmission of the work by a specific technical means different from that of the original communication: ITV at [24]-[26].
(6) A mere technical means to ensure or improve reception of the original transmission in its catchment area does not constitute a "communication": SGAE at [42], FAPL at [194], Airfield at [74], ITV at [28].
(7) There is an act of "communication" when someone gives members of the public access to the work in circumstances where they would not be able to enjoy the work without that intervention: SGAE at [42], FAPL at [194]-[196], Airfield at [72], SCF at [82], PPIL at [31].
(8) It is sufficient for there to be "communication" that the work is made available to the public in such a way that the persons forming that public may access it whether or not those persons actually access the work: SGAE at [43].
(9) Mere provision of physical facilities does not as such amount to "communication": SGAE at [46].
(10) Nevertheless, the installation of physical facilities which distribute a signal and thus make public access to works technically possible constitutes "communication": SGAE at [46]-[47], Organismos at [39]-[41].
(11) "The public" refers to an indeterminate number of potential recipients and implies a fairly large number of persons: SGAE at [37]-[38], SCF at [84], PPIL at [33], ITV at [32].
(12) For that purpose, the cumulative effect of making the works available to potential recipients should be taken into account, and it is particularly relevant to ascertain the number of persons who have access to the same work at the same time and successively: SGAE at [39], SCF at [87], PPIL at [35], ITV at [33].
(13) In considering whether there is a communication to "the public", it is not irrelevant that the communication is of a profit-making nature: SGAE at [44], FAPL at [204]-[206], Airfield at [80], SCF at [88]-[90], PPIL at [36].
(14) There is no communication to "the public" where sound recordings are broadcast by way of background music to patients of a private dental practice: SCF at [92]-[102].
(15) Where there is a communication which does not use a different technical means to that of the original communication, it is necessary to show that the communication is to a new public, that is to say, a public which was not considered by the authors concerned when they authorised the original communication: SGAE at [40], Organismos at [38], FAPL at [197], Airfield at [72], [76], ITV at [38].
(16) There is a communication to a new public where television broadcasts are transmitted to an additional public (that is to say, additional to the public constituted by owners of television sets who receive broadcasts within their own private and family circle) such as customers of hotels and public houses: SGAE at [41], Organismos at [37], FAPL at [198]-[199].
(17) There is also a communication to a new public where a satellite package provider expands the circle of persons having access to the relevant works: Airfield at [77]-[82].
(18) Where there is a communication using a different technical means to that of the original communication, it is not necessary to consider whether the communication is to a new public: ITV at [39].
"1. If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society?
2. Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?
3. When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?
4. Is it possible for a Member State to give wider protection to authors' exclusive right by enabling 'communication to the public' to cover a greater range of acts than provided for in Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society?"
"1. Does the expression communication to the public, within the meaning of Article 3(1) of the Information Society Directive, include measures to make available on a website open to the public a clickable link to a work which is broadcast by the holder of the copyright in that work?
2. Is the manner in which the linking is done relevant to the answer to question 1?
3. Is it relevant if the access to the work to which the linking is done is in any way restricted?
4. May the Member States give wider protection to the exclusive right of rightholders by enabling 'communication to the public' to cover a greater range of acts than provided for in Article 3(1) of the Information Society Directive?
5. May the Member States give wider protection to the exclusive right of authors by enabling 'communication to the public' to cover a greater range of acts than provided for in Article 3(1) of the Information Society Directive?"
"Does the embedding, within one's own website, of another person's work made available to the public on a third-party website, in circumstances such as those in the main proceedings, constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC, even where that other person's work is not thereby communicated to a new public and the communication of the work does not use a specific technical means which differs from that of the original communication?"
"[24] (1) However, according to the case law of this Court, a person who merely places a hyperlink to a website containing a copyright work lawfully made available to the public does not encroach upon the right of communication to the public in the form of the right to make the work available to the public. Placement of such a link does not amount to an act of use under copyright law, but, rather, merely constitutes a reference to the work in a manner that facilitates the access already available to users. The person placing the link does not keep the work available for downloading, nor does he transmit it to third parties on demand. He does not decide whether or not the work will remain publicly accessible, rather, the party that placed the work on the internet in the first place does. If the website containing the copyrighted work is deleted after placing of the hyperlink, that link will lead nowhere (cf. BGHZ 156, 1, 14-15 – Paperboy).
[25] (2) However, according to the case law of this Court, the situation changes where a deep link is placed, if in doing so technical protection devices installed by the right holder are circumvented. Where the right holder installs technical protection measures in order to restrict access to the copyrighted work to certain users or to enable use solely via a certain path, the right holder only makes the work available in that restricted manner. Where a hyperlink is placed which circumvents such protection measures, this opens up access to work which would not otherwise be available to those users or in that manner. This encroaches upon the right of communication to the public in the form of the right to make the work available to the public. (cf. BGH, GRUR 2011, 56, No. 25-27 – Session-ID).
[26] (3) A person who – as in the present case – incorporates the work of a third party that was made available to the public on that party's website into its own website as an integral part, by way of 'framing', facilitates access to the work for users, not only on the original website. Rather, he misappropriates the work as his own by embedding it into his website. He does not make the work available himself, for which he would require the author's consent. Upon a weighted assessment, this Court holds such conduct to be communication to the public in the sense of Article 3(1) of Directive 2001/29/EC, which is subject to the separate authorization of the author. Contrary to a user who merely places a hyperlink and like a user who places a deep link while circumventing technical protection measures installed by the right holder, such a user plays a pivotal role in communication of the work, as emphasized by the CJEU (cf. judgment of the CJEU, GRUR 2007, 225, No. 42 – SGAE v Rafael; GRUR 2012, 156, No. 195 – Football Association Premier League and Murphy; GRUR 2012, 593, No. 82 – SCF v Marco Del Corso). It is important to take into account here that the term 'communication to the public' is to be given a broad interpretation in view of the principal objective of Directive 2001/29/EC to establish a high level of protection for authors and to enable them to receive adequate remuneration for the use of their works also by way of communication to the public, so that it encompasses any communication of copyrighted works irrespective of the technical means or processes employed (judgment of the CJEU, GRUR 2012, 156, Nos. 186 and 193 – Football Association Premier League and Murphy; judgment of the CJEU, GRUR 2013, 500, Nos. 20 and 23 – ITV Broadcasting v TVC).
[27] In contrast, it is not decisive whether the viewer of the website recognizes that the operator of the website does not keep the copyright work available itself. Nor is it relevant whether the operator of the website – as in the present case – is acting for profit-making purposes. What is considered to be decisive by this Court is that the operator misappropriates the copyrighted work by embedding it in its website. Nor is it of relevance that the work was kept available on the original website with the right holder's consent. Consent granted to a certain form of communication to the public does not exhaust the right with regard to different, independent acts which also constitute communication to the public (judgment of the CJEU, GRUR 2013, 500, No. 23 – ITV Broadcasting v TVC)."
Communication to the public by the operators of the Websites
"38. Is there a communication by FirstRow? FAPL contends that FirstRow communicates FAPL's copyright works by electronic transmission. In my judgment it is clear from the CJEU's reasoning in ITV v TVCatchup at [26] and [30] that there is a communication of the works. More specifically, 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 within section 20(2)(b).
39. The more difficult question is whether FirstRow is responsible for the communication. FAPL accepts that, in technical terms, the streams emanate from the UGC sites and not from FirstRow itself. FAPL nevertheless contends that both the UGC sites and FirstRow communicate the works.
40. In support of this contention, FAPL relies upon the reasoning of Kitchin J (as he then was) in Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21 at [125]:
'The defendant has provided a service which, upon payment of a weekly subscription, enables its premium members to identify films of their choice using the Newzbin cataloguing and indexing system and then to download those films using the NZB facility, all in the way I have described in detail earlier in this judgment. This service is not remotely passive. Nor does it simply provide a link to a film of interest which is made available by a third party. To the contrary, the defendant has intervened in a highly material way to make the claimants' films available to a new audience, that is to say its premium members. Furthermore it has done so by providing a sophisticated technical and editorial system which allows its premium members to download all the component messages of the film of their choice upon pressing a button, and so avoid days of (potentially futile) effort in seeking to gather those messages together for themselves. As a result, I have no doubt that the defendant's premium members consider that Newzbin is making available to them the films in the Newzbin index. Moreover, the defendant has provided its service in full knowledge of the consequences of its actions.'
41. FAPL also relies on what I said in EMI v Sky at [46]:
'I would add that I see nothing in Football Dataco v Sportradar to exclude the possibility that more than one person may be involved in an act of communication to the public. In the present situation, the communication to the public involves both the operators of Websites, who provide a mechanism specifically designed to achieve this, and the users, who provide the actual recordings. (Even if I am wrong about this, the operators may still be liable on the grounds of authorisation and joint tortfeasance.)'
42. In the present case the operators of FirstRow have intervened in a manner which, although technically different, is analogous to that of the websites under consideration in those cases. FirstRow aggregates together a large number of streams from a variety of streamers, indexes them for the convenience of the user and provides a simple link for the user to click on in order to access a specific stream. It is true that the technical effect of clicking on the link is to direct the stream from the UCG site to the user's computer, but even so the stream is presented in a frame provided by FirstRow. In all the circumstances, I consider that FirstRow is responsible for the communication.
43. Even if I am wrong about that, I consider that FirstRow is jointly liable for the communication by the UGC sites: compare EMI v Sky at [71]-[74].
44. Is the communication to the public? FAPL contends that the communication is to the public, relying on the reasoning of the CJEU in ITV v TVCatchup at [35]-[36]. I agree that this reasoning is equally applicable to the present case. Furthermore, FAPL contends that it is not necessary for it to show that the communication is to a new public, relying on ITV v TVCatchup at [39]. I accept this. In any event, even if FAPL had to show that the communication was to a new public, I consider that it is clear that that requirement is satisfied, since the effect of FirstRow's activities is to make the broadcasts available to persons who are not legitimately entitled to view them either because those persons have not subscribed to the broadcaster's service or because the broadcaster has only been licensed by FAPL for a different territory."
Communication to the public by users of the Websites
Authorisation by the operators of the Websites
Do the users and/or operators use the Defendants' services to infringe?
Do the Defendants have actual knowledge?
Proportionality and discretion
Form of the orders
Conclusion