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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> ITV Broadcasting Ltd & Ors v TV Catchup Ltd [2011] EWHC 1874 (Pat) (18 July 2011) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2011/1874.html Cite as: [2011] FSR 40 |
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 2011] EWHC 1874 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Strand, London, WC2A 2LL |
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| 2011 |
B e f o r e :
____________________
| (1) ITV BROADCASTING LIMITED ( 2) ITV 2 LIMITED(3) ITV DIGITAL CHANNELS LIMITED(4) CHANNEL 4 TELEVISION CORPORATION (5) FOUR VENTURES LIMITED (6)CHANNEL 5 BROADCASTING LIMITED(7) ITV STUDIOS LIMITED |
Claimants |
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| - and - |
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| TV CATCHUP LIMITED |
Defendant |
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| - and - |
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| THE SECRETARY OF STATE FOR BUSINESS, INNOVATION AND SKILLS |
Intervenor |
____________________
Martin Howe QC and James Whyte (instructed by Hamlins LLP) for the Defendants
James Eadie QC, Charlotte May and Ben Jaffey (instructed by The Treasury Solicitor) for the Intervenor
Hearing dates: June 13, 15-17 2011
____________________
Crown Copyright ©
Mr Justice Floyd :
TV Catchup Limited ("TVC") operate an internet based live streaming service of broadcast television programmes, including films, in which the claimants own the copyright. For historical reasons, the name TVC is inappropriate, as the service provided does not now (although it did in the past) allow users to view programs other than at substantially the same time as the original broadcast. The question which arises in this action is whether, in providing its live service, TVC are performing any of the acts restricted by the relevant copyrights and thereby infringing them.
The TVC service
TV licence and to restrict use to the country of residence. The website has the facility to authenticate the user's location, and will refuse access where membership conditions are not satisfied.
TV aerial and a single satellite dish located in the Maidenhead area. Only digitally broadcast TV channels are used. Both digitally broadcast satellite signals and digitally broadcast terrestrial signals are received. They are received in a compressed format known as MPEG-2. The signals comprise multiple video streams. Each stream represents a television channel.
2 format, unaltered from the broadcast.
2 stream into an MPEG-4 stream, that is to say a different compression standard.
2 is used to prepare streams of video for sending over the internet in a variety of formats. Up to this point, all channels offered by TVC are processed. Channels are, however, only processed beyond this point if at least one TVC subscriber has requested that channel. If there is no request for a given channel, the signal is discarded.
i) Adobe Flash streams. These are deployed when the user is at a desktop or laptop computer. These computers will have an Adobe Flash player to enable the signal to be displayed on the screen;
ii) HTTP streams. These are for Apple mobile devices (iPhones and iPads); These devices will use the Apple Quicktime software to display the signal on the mobile device;
iii) RTSP streams. These are used for Android and Blackberry mobile phones. These devices have a media player able to display such a stream.
10 seconds each, making a total of 30 seconds of stored video. In fact rather more will be stored because of the need to prepare and store the next item. So 30-40 seconds of video are stored for Apple streaming. Professor Leung, TVC's expert, said he would like to have measured this to be sure, but this is the best evidence that I have.
1 to 5 seconds as being that which would normally be used, whilst recognising that the range could be exceeded in periods of very high load. In the end it does not make any difference to anything I have to decide.
The claimants' case of infringement and TVC's defences
broadcasting" as opposed to "communication to the public".
20(1)(c) of the CDPA 1988 (which creates a general communication to the public right in respect of broadcasts) was invalidly enacted, as it lay outside the power of the Secretary of State to introduce legislation under section 2(2)(b) of the European Communities Act 1972 ("ECA 1972"). It was on this issue that I allowed the Secretary of State for Business, Innovation and Skills to intervene, given that there was a challenge to the validity of primary legislation and the secondary legislation which gave rise to it. Secondly they contend that what TVC do is not in any event "communication to the public" within the meaning of the amended section.
2)(b) and 73(3) of the Copyright, Designs and Patents Act 1988 ("CDPA 1988"). I will call this the "reception area" defence. If it applies, it applies to the qualifying services as a defence to both broadcast and film copyright and however the case on infringement is put.
EU legislation
2000/29/EC of the European Parliament and of the Council of 22nd May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. I will call this the InfoSoc Directive for brevity, as the parties have done. The Directive has no less than 61 recitals. These stress the importance of the harmonisation of copyright laws in the context of the creation of the internal market. As its title suggests, the recitals also show that the framers of the Directive had well in mind the need for copyright to adapt to the needs of the digital era. A number of the recitals (for example (4) and (9)) refer to "a high level of protection" for intellectual property. Recital (15) expressly refers to the WIPO Copyright Treaty (of which more later) and explains that the Directive serves to implement a number of the obligations arising under that and another treaty. The recitals of particular relevance to the substantive articles of the Directive under consideration are recitals (21) to (27) and (33):
(
(
(23) This Directive should harmonise further the author's right of communication to the public. This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including
(24) The right to make available to the public subject-matter referred to in Article 3(
(25) The legal uncertainty regarding the nature and the level of protection of acts of on-demand transmission of copyright works and subject-matter protected by related rights over networks should be overcome by providing for harmonised protection at Community level. It should be made clear that all rightholders recognised by this Directive should have an exclusive right to make available to the public copyright works or any other subject-matter by way of interactive on-demand transmissions. Such interactive on-demand transmissions are characterised by the fact that members of the public may access them from a place and at a time individually chosen by them.
(26) With regard to the making available in on-demand services by broadcasters of their radio or television productions incorporating music from commercial phonograms as an integral part thereof, collective licensing arrangements are to be encouraged in order to facilitate the clearance of the rights concerned.
(27) The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.
…
(33) The exclusive right of reproduction should be subject to an exception to allow certain acts of temporary reproduction, which are transient or incidental reproductions, forming an integral and essential part of a technological process and carried out for the sole purpose of enabling either efficient transmission in a network between third parties by an intermediary, or a lawful use of a work or other subject-matter to be made. The acts of reproduction concerned should have no separate economic value on their own. To the extent that they meet these conditions, this exception should include acts which enable browsing as well as acts of caching to take place, including those which enable transmission systems to function efficiently, provided that the intermediary does not modify the information and does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information. A use should be considered lawful where it is authorised by the rightholder or not restricted by law.
2 and 3. These are as follows:
Article
Reproduction right
(a) for authors, of their works;
(b) for performers, of fixations of their performances;
(c) for phonogram producers, of their phonograms;
(d) for the producers of the first fixations of films, in respect of the original and copies of their films;
(e) for
Article 3
Right of communication to the public of works and right of making available to the public other subject-matter
(a) for performers, of fixations of their performances;
(b) for phonogram producers, of their phonograms;
(c) for the producers of the first fixations of films, of the original and copies of their films;
(d) for
3. The rights referred to in paragraphs
1) is dealing with what are referred to as Berne Convention works, that is to say literary, artistic, dramatic and musical works (including films). By contrast, Article 3(2) is dealing with "neighbouring" or "related" rights. It will be seen that although Article 3(1) obliges Member States to provide a general "communication to the public right" for Berne works, the only right which Member States are obliged to provide for the related rights is a "making available on demand" right.
1) forms the basis of section 28A of the CDPA 1988 and provides:
(a) a transmission in a network between third parties by an intermediary, or
(b) a lawful use
of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article
1) is mandatory – "shall be exempted". In contrast Articles 5(2) and (3) allow member states to provide for additional exceptions or limitations in particular cases, one of which is Article 5(3)(o):
"use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article."
100/EEC of 19th November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property provided by Article 8(3)
"3. Member States shall provide for
12th December 2006 which also contains a similar provision for Member states to go further in recital (16).
broadcasting and cable retransmission, required member States to provide broadcasting organisations further communication to the public rights in accordance with Article 4(1):
"For the purposes of communication to the public by satellite, the rights of …
"Member States may provide for more far-reaching protection for holders of rights related to copyright than that required by Article 8 of Directive 92/
1(2) of "communication to the public by satellite" but it has no application here.
100, 93/83 and other Directives in the field of copyright, as recognised in recital (20):
"This Directive is based on principles and rules already laid down in the Directives currently in force in this area, in particular Directives 91/250/EEC, 92/
International Treaties
broadcasting to be afforded to Berne Convention works in Article 11bis, which I set out below:
"(
(i) the
(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;
(iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.
"Without prejudice to the provisions of Articles
Domestic legislation
2(a) and 2 (b) to (e), and between Article 3(1) and 3(2) of the InfoSoc Directive show.
20 of the Act before amendment provided:
"The
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast or cable programme."
"The Secretary of State, being a Minister designated for the purposes of section
"These Regulations implement [the InfoSoc Directive] which provides for a general and flexible legal framework at Community level in order to foster the development of the information society in the European Community...
The [CDPA 1988] already provides protection similar to many of the obligations contained in the Directive. These Regulations amend the Act insofar as its provisions do not conform or comply with the Directive and regarding matters that are related to or consequential upon these obligations..."
"(
(a) is transmitted for simultaneous reception by members of the public and is capable of being lawfully received by them, or
(b) is transmitted at a time determined solely by the person making the transmission for presentation to members of the public."
20 was amended by the 2003 Regulations so as to read:
"(
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(
(a) the
(b) the making available to the public of the work 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."
20(2)(a) and (b) makes it clear, by the use of the word "include" that it extends to the two particular cases identified, but also that it is not limited to those cases alone.
"Copyright in a literary work, other than a computer program or a database, or in a dramatic, musical or artistic work, the typographical arrangement of a published edition, a sound recording or a film, is not infringed by the making of a temporary copy which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable -
(a) a transmission of the work in a network between third parties by an intermediary; or
(b) a lawful use of the work;
and which has no independent economic significance."
2(2) and (4) of the ECA 1972 in the form in which they existed at the relevant time, provided:
"(
(a) for the purpose of implementing any Community obligation of the United Kingdom, or enabling any such obligation to be implemented, or of enabling any rights enjoyed or to be enjoyed by the United Kingdom under or by virtue of the Treaties to be exercised; or
(b) for the purpose of dealing with matters arising out of or related to any such obligation or rights or the coming into force, or the operation from time to time, of subsection (
…
(4) The provision that may be made under subsection (
Was section 20(1)(c) ultra vires?
20(1)(c) went further than was required by the provisions of the InfoSoc Directive in creating a general "communication to the public" right for broadcast copyright owners. The Secretary of State, supported by the claimants, contend that to the extent that the amendment went further than required, it was within the powers given to the Secretary of State under Section 2(2) of the European Communities Act 1972.
20(1)(c) which was inconsistent with the InfoSoc Directive. It was open to Parliament to go beyond what was strictly required under the Directive by way of protection for owners of broadcast copyright. The contention is simply that the amendment required primary legislation, and went further than the permissible scope of section 2(2)(b).
2(2) should only be used for "filling the cracks" in Community legislation, or making choices of form or method. He points out that the only relevant obligations on the United Kingdom, so far as broadcasting copyright was concerned, were the limited ones in Art 8(3) of Directive 92/100 and (in relation to fixations of broadcasts) and Article 3(1) of the InfoSoc Directive: communication in public places for a fee and making available on demand. There was no requirement to extend "communication to the public" to anything other than Berne Convention works. He points out that whilst "communication to the public" has a particular meaning in relation to Berne works, derived from Berne Convention, the WIPO Copyright Treaty and the InfoSoc Directive, the use of that phrase in relation to other categories of subject matter has no basis in any of those instruments. He submits that the application of this phrase to broadcasts is simply unrelated to any change to UK copyright law required by the Directive.
2(2)(a), but contended that it fell within section 2(2)(b) because it was made for the purpose of dealing with matters "arising out of or related to any such obligation".
2(2)(b) is Oakley Inc. and others v Animal Limited and others [2005] EWCA Civ 1191; [2006] Ch 337. In that case the defendants maintained that regulations passed for the purpose of implementing an EC Directive on the approximation of laws of the member states in relation to registered designs went beyond section 2(2), despite the fact that the measure adopted in that case - maintaining in force the pre-existing domestic law for designs already registered - was an express option under the Directive. The Court of Appeal pointed out that section 2(2) created a power which was sui generis and was not to be approached in the same way as so-called Henry VIII clauses, under which Parliament delegates to the executive the power to amend primary legislation. That was because section 2(2) was concerned with implementing pre-existing treaty obligations of the United Kingdom. As to section 2(2)(b), Waller LJ said at [21]:
"This subsection has two aspects. It empowers the Secretary of State to produce regulations "arising out of" or "related to" … any such obligation or rights… . The words "arising out of" or "related to" seem to me … to envisage something additional, but still by virtue of section
v Secretary of State or Trade and Industry, Ex p UNISON [1996] ICR 1003, 1014, Otton LJ had drawn a distinction between the language of section 2(2)(b) – "related to an obligation" - and something which is "distinct, or separate, or divorced from it". In two cases in the Employment Appeal Tribunal in Scotland, Addison v Denholm Ship Management (UK) Ltd [1997] ICR 770 and Perth and Kinross Council v Donaldson [2004] ICR 667, Lord Johnston had expressed the principle in much narrower terms, expressly disagreeing with Otton LJ. He said:
"if the Directive is to be regarded as the parent, the child cannot be larger, wider, or have greater implications than its parent allows."
"Lord Johnson's opinion as to the ambit of the Section is not in my view right. Furthermore I can see nothing in the wording of the Section which would support the view that in some way a policy decision or a significant policy decision is automatically excluded from the ambit of Section
"I do not think that for example Section
"I do not consider that to hold that the making of these transitional provisions came within section
[78] Of course even Otton LJ's view does not mean that the power to make subordinate legislation is virtually unlimited. Mr Howell played that old advocate's trick of putting up an Aunt Sally so as to knock it down in the hope that more would be knocked down than just Aunt Sally. He invited us to reject the view that just because a Directive contains a specific obligation, a statutory instrument can be made dealing with anything related to that obligation, that related to the obligation only in a most general sense is enough. That I am happy to accept. For instance, a Minister could not by statutory instrument change the whole law of contract just because a Directive related to some corner of contract law. But so to conclude does not advance the debate far. To say only a tenuous relationship with the subject-matter of a Directive will not do (with which I agree), does not identify what will do. "
[79] My own view, provisional though it must be in the absence of any specific context relevant to this case, is this: that s.
[80] So s.
2(2)(b) were, as Mr Howe pointed out, not technically necessary for the decision which they reached, as they held that section 2(2)(a) covered what the Minister had done in that case. The observations are, however, of considerable authoritative force given (a) that the court heard full argument on the point both from the parties and from the Attorney General, (b) that the Court felt it necessary to express a view in the light of the decision of the Deputy Judge in that case and the EAT in Scotland, both of whom had placed a restrictive interpretation on both sub-sections, and (c) that the interpretation of section 2(2)(b) is heavily dependent on the interpretation of section 2(2)(a) on which the opinions are authoritative.
v Sky In-Home Service Limited and others [2007] EWHC 66 (Ch) (unreported, January 2007) at [37] a decision of Briggs J, and Cukurova Finance International Limited and another v H.M. Treasury and another [2008] EWHC 2567 (Admin) (unreported 29th September 2008), a decision of Moses LJ at first instance. In addition, in Ahmed v others v Her Majesty' Treasury (JUSTICE intervening) [2008] UKSC 5; [2010] 2 AC 534 Lord Mance, at [212] expressed himself to be in agreement with the views expressed in Oakley that the powers under section 2 were sui generis and not to be construed narrowly.
2(2)(b) as follows, at [60]:
"The words "arising out of" or "related to" are themselves broad and it is those statutory words which must be applied. It adds nothing to any argument to say that those words must be broadly construed. As Waller and May LJJ recognised, the only means of limiting the effect of section
"Reference to the subject matter being the same is far too wide and inexact a test since the subject is merely financial collateral arrangements or, even more vaguely, the stability of financial markets."
v Bullimore [2010] ICR 1008, Underhill J sitting as president of an Employment Appeal Tribunal decided that the application of the reverse burden of proof applied by domestic regulation in cases of victimisation (as opposed to discrimination cases as required by a Directive) was within section 2(2)(b). The Tribunal considered it material that the relevant Directive expressly preserved the right of Member States to introduce rules which were more favourable to plaintiffs, and that the application of the reversed burden of proof provisions to victimisation claims was simply a (small) further step on the same path as is trod by the primary provisions of the Directive. The Tribunal also considered it to be material that pre-existing UK statutes classified victimisation as a sub-species of discrimination. Having set out these factors the Tribunal said at [42]:
"It obviously makes both for consistency of approach and for convenience in drafting to apply the burden of proof provisions to claims of victimisation as well as to "ordinary" discrimination. The course taken seems to us indeed a good example of a "closely related" choice of the kind which the Court of Appeal in Oakley held to be permissible under section
v Hart [1993] AC 593, as to the scope of section 2(2)(b). He was particularly attached, perhaps understandably, to a statement by Sir Geoffrey Howe, the Solicitor General (Hansard col. 1313, 13 June 1972) which referred to use of section 2(2) for "small, minor and insignificant amendments". I did not find this exercise either admissible or of value. Firstly, the Hansard Practice Direction [1995] 1 WLR 192 was not complied with by serving extracts sufficiently in advance. Secondly, there were plainly other extracts which the Secretary of State was able to identify, which bore on the question and which indicated that the section, and in particular the words "arising out of or related to" were expressed in deliberately wide terms. Thirdly, the report of the decision of the Court of Appeal in Oakley indicates at [32] and [72] that a similar exercise was undertaken in that case and not found helpful by the court. Finally, in Thoburn v Sunderland City Council [2002] EWHC] 195 (Admin); [2003] QB 151 – the so-called "Metric Martyrs case" – Laws LJ explained why there was no ambiguity in the meaning of section 2(2) which would justify recourse to the principle in any event.
i) Section 2(2)(b) is not to be approached restrictively as if it were a Henry VIII clause: it is sui generis because it is for the purpose of implementing treaty obligations of this country: Oakley [19], [70]; Ahmed [212];
ii) The primary objective of any legislation implemented under section 2(2) must be to bring into force laws which, by treaty, the United Kingdom has agreed to make part of her laws: Oakley [39];
iii) Section 2(2)(b) nevertheless goes further than section 2(2)(a) in that it allows for legislation which is not necessary for the implementation of a Directive: Oakley [21], [39], [47], [74];
iv) Moreover section 2(2)(b) permits legislation to be enacted which is consistent with the Directive but which does not have the same purpose: Cukorova [60];
v) It is thus incorrect to say that the "child" cannot be wider, larger or "greater" than the parent: Oakley [39], [47], [76];
vi) How much further the sub-section goes cannot be defined in the abstract – one just has to apply the statutory language to the case concerned: Oakley [47], [80]; Cukorova [60];
vii) It is not correct to ask whether the measure is distinct, separate or divorced from the Directive and only then to hold it to be unrelated: Oakley [39], [80];
viii) A measure would not arise out of or be related to an obligation if the Minister was not at the same time bringing into force a Directive, or did not have the trigger of a Regulation becoming directly applicable: Oakley [23];
ix) Equally, a tenuous or general relationship with the subject matter of the Directive will not be enough: Jacob LJ's example of a Directive on mistake being used to reform the whole of contract law or Moses LJ's connection with financial collateral arrangements or stability of markets: Oakley [78]; Cukurova [99];
x) In some cases, consistency of subject matter and purpose between Directive and Regulation may not be enough: Cukurova [99];
xi) The fact that the Directive expressly contemplates that member states may take further steps in the direction in question may be a factor indicating that the measure is within the power: Pothecary [42];
xii) However, the fact that the measure involves an original policy choice does not necessarily take it outside section 2(2)(b): Oakley, [47];
xiii) Measures which represent a small further step on the same path as trodden by the primary provisions of the Directive may be within the power, even if they widen the protection of the law to a wider class of individuals or cases than required by the Directive: Pothecary [42];
xiv) The extent to which the measure is consistent with pre-existing domestic law may be a factor. So if a Directive requires a law to be enacted in relation to one species of case recognised by domestic law: it may be legitimate to legislate at the same time for a sub-species of that case: Pothecary [42].
2(2)(b) is merely for filling the cracks or making choices of form or method. As indicated above it goes further.
20(1)(c) has to be viewed against the background that domestic law already gave some protection against the communication to the public of broadcasts. Miss May on behalf of the Secretary of State submitted, in my view correctly, that prior to the amendment of the CDPA 1988 by the Regulations, section 20 gave to the owner of copyright in a broadcast (as then defined) the right to prevent the following restricted acts for both fixed and unfixed broadcasts:
i) Wireless broadcast or transmission for presentation to members of the public (section 20 restricts broadcasting, read with the definition of broadcast(ing) in section 6(1) as involving wireless telegraphy);
ii) Wired transmission for reception at two or more places at the same time, on demand, or for presentation to members of the public (section 20, read with the definitions of cable programme service in section 7(1), restricts inclusion in a cable programme service, which must involve sending information other than by wireless telegraphy).
20 as amended will also restrict wireless transmission for on demand access. This was required by Article 3(2) of the Directive for fixations of broadcasts. The amended section 20 makes it a restricted act for both fixed and unfixed.
20 falls within that narrow subject matter.
20 which was inconsistent with the purpose of the Directive. The extent to which section 20 goes further than the Directive required can be fairly regarded in my judgment as a small further step along the same road as is pursued by the Directive and the other European legislation in relation to copyright.
2). That fact serves to reduce the gap between what is provided for by the Directive and what is given by section 20(1)(c). It reduces the size of the step along the road still further.
20 to fixed and unfixed broadcasts. Although Mr Howe sought to make something of this initially, I cannot think that it would have been sensible or practicable to introduce a distinction based on fixation in connection with broadcasts for the purposes of a communication right where none had existed before.
2(2)(b).
20(1)(c) was enacted without proper powers.
Communication to the public
20. For this purpose there is no need to distinguish between broadcasts and films, and no question of "substantial part" arises.
20(2) of the Act. I have already set out recital (23) in the Directive which indicates that the communication to the public right should be understood in a broad sense. That recital reflects the use of the words "any communication to the public" in Article 11bis of the Berne Convention and Article 8 of the WIPO Copyright Treaty. It is clear that the term is chosen to be technologically neutral.
v Rafael Hoteles SL [2007] Bus LR 521, the Court of Justice had to determine what was meant by "communication to the public" in a case concerned with the distribution by hotel proprietors of broadcast signals received by them to rooms within their hotels in which hotel guests can view Berne copyright works included in the broadcasts. In that case the Audencia Provincial de Barcelona had asked the Court of Justice, in essence, whether the distribution of a signal through television sets in customers' hotel rooms constituted an act of communication to the public within the meaning of Article 3(1) of the InfoSoc Directive and whether the installation of television sets in hotel rooms constituted, in itself, an act of that nature.
"38. In a context such as that in the main proceedings, a general approach is required, making it necessary to take into account not only customers in hotel rooms, such customers alone being explicitly mentioned in the questions referred for a preliminary ruling, but also customers who are present in any other area of the hotel and able to make use of a television set installed there. It is also necessary to take into account the fact that, usually, hotel customers quickly succeed each other. As a general rule, a fairly large number of persons are involved, so that they may be considered to be a public, having regard to the principal objective of Directive
39. In view, moreover, of the cumulative effects of making the works available to such potential television viewers, the latter act could become very significant in such a context. It matters little, accordingly, that the only recipients are the occupants of rooms and that, taken separately, they are of limited economic interest for the hotel.
40. It should also be pointed out that a communication made in circumstances such as those in the main proceedings constitutes, according to Article
41. As is explained in the Guide to the Berne Convention, an interpretative document drawn up by the WIPO which, without being legally binding, nevertheless assists in interpreting that Convention, when the author authorises the broadcast of his work, he considers only direct users, that is, the owners of reception equipment who, either personally or within their own private or family circles, receive the programme. According to the Guide, if reception is for a larger audience, possibly for profit, a new section of the receiving public hears or sees the work and the communication of the programme via a loudspeaker or analogous instrument no longer constitutes simple reception of the programme itself but is an independent act through which the broadcast work is communicated to a new public. As the Guide makes clear, such public reception falls within the scope of the author's exclusive authorisation right.
42. The clientele of a hotel forms such a new public. The transmission of the broadcast work to that clientele using television sets is not just a technical means to ensure or improve reception of the original broadcast in the catchment area. On the contrary, the hotel is the organisation which intervenes, in full knowledge of the consequences of its action, to give access to the protected work to its customers. In the absence of that intervention, its customers, although physically within that area, would not, in principle, be able to enjoy the broadcast work.
43. It follows from Article 3(
44. Moreover, it is apparent from the documents submitted to the Court that the action by the hotel by which it gives access to the broadcast work to its customers must be considered an additional service performed with the aim of obtaining some benefit. It cannot be seriously disputed that the provision of that service has an influence on the hotel's standing and, therefore, on the price of rooms. Therefore, even taking the view, as does the Commission of the European Communities, that the pursuit of profit is not a necessary condition for the existence of a communication to the public, it is in any event established that the communication is of a profit-making nature in circumstances such as those in the main proceedings.
broadcasting organisation other than the original one, there is a communication to the public within the exclusive right of the copyright owner and which it is entitled to control. The re-transmitted signal will be to members of the public who are not the direct recipients of the signal. Whilst the condition in the final sentence of [42] (inability to receive the signal without intervention) is not always met, the recipients of a re-transmitted signal will enjoy the broadcast work through a different route and only on account of the intervention of the re-broadcaster. They submit that this is consistent with Article 11bis(1)(ii) in its reference to "communication … made by an organisation other than the original one", and with the Guide to the Berne Convention relied on by the Court.
TV sets by the hotel, and did not relate to a situation such as the present in which the intervening organisation does not own or control the equipment on which the member of the public chooses to view the broadcast. They also focus on [42] which they contend appears to acknowledge that the mere provision of technical means to ensure or improve reception in the catchment area would not amount to a communication to the public. They point out that the Rome Convention Intergovernmental Committee at its 12th Session (Geneva, 5 to 7 July 1989) adopted a report by committees of governmental experts setting out a number of principles. Under "Cable distribution" it adopted:
"Principle AW26. It does not amount to distribution by cable of the broadcast of the work concerned where the broadcast, received by an aerial larger than generally used for individual reception, is transmitted by cable to individual receiving sets within a limited area consisting of one and the same building or a group of neighboring buildings, provided that the cable transmission originates in that area and is made without gainful intent."
v Hosteleria Asturiana SA (Hoasa) case C-293/98) [2000] ECR I-629 at [22] which is cited in the opinion of Advocate General Sharpston in Rafael Hoteles at [52]:
"it is all too clear - given that such retransmission is not just a technical means to ensure or improve reception of the original broadcast in the catchment area, as in the case, for example, of the installation and use of transceivers – that [the hotel proprietor] gave the hotel guests access to the protected work. If [it] had not made secondary use of broadcasts, the clients - although physically within the satellite catchment area - would not have been able to enjoy the broadcast work in any other way; they therefore constitute, in this sense, a 'new' public that differs from the primary broadcast public.
i) "just a technical means to ensure or improve reception of the original broadcast in the catchment area": Rafael Hoteles at [42] and La Pergola AG in Egeda ; or
ii) "an aerial larger than generally used for individual reception" for relaying the signal to "individual receiving sets within a limited area consisting of one and the same building or a group of neighbouring buildings, provided that the cable transmission originates in that area and is made without gainful intent" : Rome principle AW 26.
12.38, the character of an act of secondary communication can vary widely, from the provision of a simple community antenna to a highly sophisticated receiving station which distributes broadcast programmes over a wide geographical area. They say:
"In the first of these cases, however, it may be doubted whether there is a true secondary communication to the public in that the community antenna simply replaces a multitude of individual antennae on the same building or buildings and this is therefore no more than a reception of the primary broadcast. It may also be argued that there is no 'organization' which makes the communication in such a case, apart from the body representing the owners or tenants of the building in question. It can therefore be concluded that such forms of distribution fall outside the scope of Article
"[51] It is clear that in the present case first, the circle of potential recipients of the communication is both extensive and of economic significance for the author and, second, the intervening organisation making the communication does so for its own economic benefit. In such circumstances, the communication should be regarded as being made 'to the public'. I do not consider that it is necessary or appropriate to decide in the context of the present case whether economic benefit to the person responsible for making the communication is always required in order for a communication to be regarded as 'to the public' within the meaning of Article 3 of the Directive."
Ltd v MediaCorp TV Singapore Pte Ltd [2010] SGCA 43. That case involved a service by which members of the public could request RecordTV to record broadcast programmes on their behalf, on Record TV's servers. The Court held it was the end users rather than RecordTV who were making the copies of the broadcasts for the purposes of the reproduction right. Accordingly the end users were able to take account of a time-shifting defence. So far as "communication to the public" is concerned, the Court held that there had not been any communications to "the public" and RecordTV was not the party who made the communications in any event. At §26, the Court stated:
"26 In any case, in view of the modus operandi of RecordTV's iDVR service, we find that any communications made by RecordTV to Registered Users who had requested the recording of a particular MediaCorp show were made privately and individually. We see no reason why the aggregate of the private and individual communications made to each of the aforesaid Registered Users should transform the nature of such communications into "public" communications. Although any member of the public could register with RecordTV to become a Registered User, he had no immediate access to all (or any) of the MediaCorp shows already recorded by RecordTV. This was because RecordTV's iDVR service was not a video-on-demand service whereby RecordTV shared a library of recorded works with Registered Users. Rather, a Registered User was only allowed to access and view time-shifted recordings of the specific MediaCorp shows which he had requested to be recorded. Thus, each Registered User had to make a request for a particular MediaCorp show to be recorded for him, and only he could access the show recorded at his request."
TV, I respectfully differ from it. Although the Singapore Court was applying a provision of Singapore law derived from the same international convention, I find it difficult to reconcile the conclusion reached there with the reasoning in Rafael Hoteles and the obvious desire in the Directive to provide for a technologically neutral definition of communication to the public. It would be an unfortunate result if a point-to-multipoint communication were to be actionable but a number of point to point transmissions were not.
v Hart, not least because the term "communication to the public" was not part of the Bill at that stage.
Reproduction right and substantial part
2 of the InfoSoc Directive is Case C-5/08 Infopaq International A/S v Danske Dablades Forening. In that case the act of reproduction in question was the scanning, conversion into digital files and electronic processing of newspaper articles. The Court of Justice observed at [27] to [29] that the concept of "reproduction in part" for the purposes of Article 2 of the Directive was to be given a uniform autonomous interpretation throughout the EU. By its first question the national court had asked, in essence, whether the concept of reproduction in part encompassed the storing and subsequent printing out of a text extract of 11 words. The Court's answer was:
"48 In the light of those considerations, the reproduction of an extract of a protected work which, like those at issue in the main proceedings, comprises
49 It must be remembered also that the data capture process used by Infopaq allows for the reproduction of multiple extracts of protected works. That process reproduces an extract of
50 In so doing, that process increases the likelihood that Infopaq will make reproductions in part within the meaning of Article
51 In the light of the foregoing, the answer to the first question is that an act occurring during a data capture process, which consists of storing an extract of a protected work comprising
v QC Leisure [2008] EWHC 1411 (Ch); [2008] FSR 32 ("FAPL"). Kitchin J answered both questions in the negative on the basis of domestic and Australian authority: see [217] to [230]. He nevertheless referred questions to the CJEU on the interpretation of the Directive: see Question 4 recorded at [2008] FSR 901.
v Newzbin Limited [2010] EWHC 608 (Ch).
Does section 28A apply to broadcast copyright?
1) certainly does apply to broadcasts: it provides a defence in the case of acts of reproduction as there defined in relation to any work or other subject matter. It is mandatory in its application. But in implementing Article 5(1), Parliament has, in section 28A, decided to include a list of the rights to which the defence applies, a list from which broadcast copyright is a notable absentee. Jacob LJ was known to have firm views on whether parliamentary draftsman should depart from the language of a Directive: see, amongst many examples, Markem Corporation v Zipher Limited [2005] EWCA Civ 267 at [94].
v IDT Card Services (Ireland) Limited [2006] EWCA Civ 29; [2006] STC 1252, at [75] and [79]. That is what the Court of Justice in Marleasing S.A. v Commercial Internacional de Alimentation SA held that national courts were obliged to do. As Arden LJ went on to point out in IDT, that approach to construction goes further than permitted under purely domestic law: see for example her reference to Litster v Forth Dry Dock & Engineering Co Ltd [1990] 1 AC 546, where the House of Lords, in effect, wrote additional words into the domestic statute to bring about the effect required by the Directive. At [82], she said this:
"Normally when construing domestic legislation, the English courts must find the meaning of the words which Parliament has used. In the context, however, of legislation which requires to be construed in a way which is compatible with European Union law or with the rights conferred by the European Convention on Human Rights, the English courts can adopt a construction which is not the natural one. The process, however, remains one of interpretation: the obligation imposed by the Court of Justice is only to interpret national law in conformity with a directive "so far as possible". That raises the question when a process ceases to be that of legitimate interpretation and trespasses into the field of lawmaking that is the task of Parliament and not the courts."
v Godin-Mendoza [2004] 2 AC 557 in connection with interpreting legislation following the Human Rights Act 1998 so as to be compliant with the ECHR. Arden LJ analysed the speeches in that case as follows at [89]:
"The critical point made by the House of Lords in the Ghaidan case can be found in the passage from the speech of Lord Nicholls which I have set out above. Lord Nicholls accepts that the effect of interpretation in accordance with section 3 of the 1998 Act may be to change the meaning of the legislation but, as he explains, the meaning adopted by the court must not conflict with a fundamental feature of the legislation. He adopts the words of Lord Rodger that the interpretation chosen by the court must "go with the grain of the legislation". Lord Nicholls, Lord Steyn and Lord Rodger all accepted that there would be occasions when the courts could not adopt an interpretation that would make the legislation compatible with Convention rights because that would involve making policy choices which the court was not equipped to make (see [33] to [35] per Lord Nicholls, [49] per Lord Steyn and [115] per Lord Rodger). It is also clear from the Ghaidan case that the interpretation of legislation under section 3 or the Marleasing principle may involve a substantial departure from the language used though it will not involve a departure from the fundamental or cardinal features of the legislation. It is possible to read the legislation up (expansively) or down (restrictively) or to read words into the legislation. The question of whether section 3 can be applied does not depend on whether it is possible to solve the problem by a simple linguistic device."
121]:
"For present purpose, it is sufficient to notice that cases such as Pickstone
1) raised the sort of policy questions which the courts should not deal with in applying the Marleasing principle.
Article 5(1)/ section 28A defence in the present case.
1) defence:
(i) the copy must be temporary
(ii) the copy must be transient or incidental,
(iii) the copy must be an integral and essential part of a technological process,
(iv) the sole purpose of the process must be to enable (a) a transmission of the work in a network between third parties by an intermediary; or (b) a lawful use of the work, and
iv) it must have no independent economic significance.
1) exception is to be interpreted:
"The exceptions and limitations provided for in paragraph
243. Applying these principles to the present case, the claimants say the creation of transient copies does have economic significance. If the pubs had a Sky subscription, there would be no independent economic significance, since Sky would have been justly recompensed. If, however, FAPL and Sky have no other basis upon which they can require payment of a licence fee then the transient copying has real economic significance since it becomes the sole basis on which the UK rights holder can extract the value from his rights.
244. I consider this is a point of interpretation of the Directive upon which the guidance of the Court of Justice is necessary. It is closely related to other aspects of the copyright claim to which I shall shortly turn. However, my own provisional opinion is that the claimants' argument fails to take adequate account of the inherent value of the transient copies as such, rather than as a means of controlling the process of which they form part. As the defendants pithily say, the whole point of this defence is to remove ransom strips, not to create them. In the case of the transient copies made in the decoder, these would seem to have no independent value save in so far as they participate in the flow of the video and audio data to the television. However, consideration must also be given to the transient copies created on the television screen. Here it may be important to take other matters into account including the extent to which the transient copies (here the artistic works) constitute only a small part of the programming and whether it is reasonable for FAPL and Sky to seek to extract further fees in addition to those already paid.
Section 73
(
(
(a) if the re-transmission by cable is in pursuance of a relevant requirement, or
(b) if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service.
(3) The copyright in any work included in the broadcast is not infringed if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable; but where the making of the broadcast was an infringement of the copyright in the work, the fact that the broadcast was re-transmitted by cable shall be taken into account in assessing the damages for that infringement.
(4) Where—
(a) the re-transmission by cable is in pursuance of a relevant requirement, but
(b) to any extent, the area in which the re-transmission by cable takes place ("the cable area") falls outside the area for reception in which the broadcast is made ("the broadcast area"),
the re-transmission by cable (to the extent that it is provided for so much of the cable area as falls outside the broadcast area) of any work included in the broadcast shall, subject to subsection (5), be treated as licensed by the owner of the copyright in the work, subject only to the payment to him by the person making the broadcast of such reasonable royalty or other payment in respect of the re-transmission by cable of the broadcast as may be agreed or determined in default of agreement by the Copyright Tribunal.
(6) In this section "qualifying service" means, subject to subsection (8), any of the following services—
(a) a regional or national Channel 3 service,
(b) Channel 4, Channel 5 and S4C,
(c) the public teletext service,
(d) S4C Digital, and
(e) the television
and expressions used in this subsection have the same meanings as in Part 3 of the Communications Act 2003.
(7) In this section "relevant requirement" means a requirement imposed by a general condition (within the meaning of Chapter
(8) The Secretary of State may by order amend subsection (6) so as to add any service to, or remove any service from, the definition of "qualifying service".
(13) In this section references to re-transmission by cable include the transmission of microwave energy between terrestrial fixed points.
2). They can be called the "must carry" and the "reception area" exceptions. Mr Mellor submitted that, in the light of the Infosoc Directive, it was necessary to construe section 73 restrictively, and in accordance with the Berne three-step test. He submitted that the only pigeon-hole into which section 73(2)(b) and 73(3) could be posted was that identified by Article 5(3)(o), preserving local defences limited to analogue uses. Accordingly he said that I could and should construe section 73(3) as limited to analogue uses.
Broadcasting Act 1984 and then re-enacted in amended form by the 1988 Act. At each of these stages the signals in question would have been analogue. So he said that I should construe the section in the light of the InfoSoc Directive as if it were so limited.
2001 Directive was promulgated.
Ltd v Easyinternetcafe Ltd [2003] EWHC 62; [2003] FSR 48, following the Scottish interim decision in Shetland Times v Wills [1997] EMLR 277. But he submits that those decisions pre-date the InfoSoc Directive and are in any event not binding on me. Now I must construe "cable" so far as possible not to create an exception which goes further than permitted by the Directive. He submitted in addition that the section does not protect the transmissions in the present case which are intended for reception by mobile phone, where the last leg is wireless.
ITV regional service for London could be received via TVC in Edinburgh. Accordingly the broadcasts were not "made for reception" in the area into which they were re-transmitted.
ITV's broadcasts in any area with appropriate equipment. There are three ways in which a viewer can receive a regional channel other than the one in which he or she is geographically situated:
i) by entering a postcode for a different region, if the decoder box offers postcode functionality, as a Freesat box does;
ii) by manually tuning to a specific regional channel on the basis of its frequency; or
iii) by using a decoder box that can automatically tune to every channel broadcast by a satellite.
Overall conclusions
i) Section 20(1)(c) was enacted with proper powers;
ii) My provisional view is that TVC communicate the films and broadcasts to the public, but I will refer a question to the CJEU on this issue;
iii) Subject to the outcome of FAPL my provisional view is that TVC reproduce a substantial part of the films in the buffers and on the screens;
iv) My provisional view is that there is no reproduction of a substantial part of a broadcast in the buffers or on the screens, but I will refer a question to the CJEU on this issue;
v) Final judgment on the application of section 28A to reproduction of the films and broadcasts in the buffers and on the screens should await the outcome of FAPL: my provisional view is that the defence applies to the reproductions in the buffers;
vi) The section 73 defence applies to the qualifying services, but not in respect of re-transmission to mobile phones or of out of area services.