You've been framed - High Court issues ISP blocking order

The UK High Court has once again shown its support for copyright holders, granting six major film companies blocking orders under the Copyright Designs and Patents Act 1988 against the UK's six main internet service providers ...

… requiring the ISPs to block access to TubePlus and SolarMovie, two websites that had been providing access via an online database to (but not hosting) a large range of television programmes and films without the authorisation of the relevant copyright owners.Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 3479 (Ch).

Background

The TubePlus and SolarMovie websites (Websites) moderated the quality of the links, and also provided categorisation and referencing services to make links easier to find. TubePlus allowed users to download infringing material whereas SolarMovie did not.

Under the Copyright Designs and Patents Act 1988 (CDPA), it is a primary infringement of copyright to copy, communicate to the public (which can be by electronic transmission) or authorise another to copy or communicate to the public a copyright work in the UK without the copyright owner's consent. An injunction can be obtained under S.97A CDPA (which implements section 8(3) of the InfoSoc Directive^[i]) against a service provider (here, the ISPs) that has "actual knowledge" of another person (here the users and/or operators of the Websites) using their service to infringe copyright.

Six major film companies (Film Companies) applied for orders under section 97A CDPA, to stop the UK's six main internet service providers (ISPs) accessing the Websites, alleging that the Websites infringed their copyright by:

• communicating copyright works to the public contrary to the CDPA, or alternatively were jointly liable for such infringement with the operators of the websites which hosted the content; and
• authorising infringement by users who placed links to infringing content on the Websites, communicating copyright works to the public.

Securing an order under section 97A is not uncharted territory, as evidenced by the recent decisions in similar cases such as: Newzbin^[ii]; Newzbin2^[iii]; Dramatico Entertainment v Sky^[iv]; EMI Records v Sky^[v]and FAPL v Sky^[vi] (all of which were also heard by Arnold J). In this case, as is often the case, the application wasn't contested by the ISPs, and the ISPs agreed the form of orders to be made should the Court be satisfied that it was appropriate to grant the orders.

Case law

After setting out a useful summary of eighteen principles established by CJEU case law on what constitutes a 'communication to the public', Arnold J referred in detail to three references pending before the CJEU which bore upon the issues in the case.

These were C-466/12 Svensson v Retriever Sverige AB, Case C-279/13 C More Entertainment AB v Sandberg and C-348/13 BestWater International GmbH v Mebes. The referring Courts in these cases all drew a distinction between what has been variously termed 'framing' and 'embedding' (a link which opens a window showing the infringing content on the same website, giving the impression it is on the same website as the link) and 'reference' or 'hyper' linking (a link which takes you to another website to view infringing content), and asked the CJEU whether the manner of linking is relevant to whether there is a communication the public. Interestingly, in Svensson the District Court (which was not the referring court) had already ruled that reference linking did not constitute a communication to the public and in BestWater, the referring Court suggested that 'deep linking' (by which the Court meant framing) should constitute a communication to the public and that this should be distinguished from reference linking which should not.

Arnold J also referred to an opinion^[vii] of the European Copyright Society in which the authors argued, contrary to the position adopted by the Court in BestWater, that both reference linking and framing should not constitute a communication to the public. Arnold J went on to say that these are "clearly difficult and controversial issues", and, as the CJEU judgment in Svensson had not yet been handed down, he had to decide whether there was a communication to the public on the law as it currently stood.

Decision

Arnold J first considered whether there was a communication to the public contrary to the CDPA:

Communication to the public by the Website Operators: members of the public would have found it very difficult to access the content directly from the host sites if it had not been made available by the Websites. The operators were intervening in a "highly material way" to make the copyright works available to a new audience, which was analogous to the communication to the public in FAPL v Sky^[viii].  Even if he were wrong about that, it seemed clear that the host sites communicated the works to the public and that the Websites were jointly liable for this activity.

Arnold J notably remarked that he was 'doubtful' whether he was correct in FAPL v Sky to say that the operators were using a different technical means to that of the original infringing communication, although this did not sway him in his view that the operators were communicating the copyright works to a new public.

Communication to the public by users of the Websites: many, if not most, of the users had not just provided a link to the host site, but had also uploaded the relevant content to the host site. The combined effect amounted to a communication to the public even if (for the sake of argument) the mere provision of a hyperlink did not.

Authorisation by the operators of the Websites: Arnold J considered that the operators authorised infringement, for similar reasons given in Dramatico and EMI.

Arnold J then considered whether the test to grant an order under S.97A had been satisfied. It was clear that the Website operators were service providers, and that, following Dramatico and FAPL, users and operators used the ISPs' services to infringe the claimants' copyright. Further, the ISPs had actual knowledge of this by virtue of emails sent to them by a representative of the Film Companies attaching evidence of infringement. On this basis, agreeing that the orders sought were proportionate, and exercising his discretion, Arnold J granted the orders.

Comment

This is the latest in a line of cases, dating back to Newzbin 2 in 2011, in which copyright owners have relied on section 97A to obtain blocking orders against ISPs. The case did, however, highlight two remaining uncertainties in this area of law. The first of these is whether the mere provision of a reference link or hyperlink constitutes a communication to the public. Arnold J's judgment seems to suggest that it does not, as per his statement that he is "not sure that the mere provision of a hyperlink amounts to communication to the public". However, until a decision reaches us which deals with this point head on (which is likely to be the awaited CJEU decision in Svensson), the law remains unclear. The second of these arose from Arnold J admitting to being "doubtful" whether he was right to say that the operators in FAPL were using a different technical means of transmission from that of the original communication. As a result his finding that there was no need to show that the transmission was to a "new" public was potentially wrong. These are both points rights holders seeking future S.97A orders should pay close attention to.

[i] Council Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.

[ii] Twentieth Century Fox & Ors -v- Newzbin Limited [2010] EWHC 608 (Ch), FSR 21.

[iii] Twentieth Century Fox Film Corp -v- British Telecommunications plc [2011] EWHC 1981 (CH). [2012] Bus LR 1471

[iv] Dramatico Entertainment Limited & Ors -v- British Sky Broadcasting Limited & Ors [2012] EWHC 1152 (Ch)

[v] EMI Records Ltd & Others -v- British Sky Broadcasting Ltd and others [2013] EWHC 379 (Ch)

[vi] Football Association Premier League Ltd v British Sky Broadcasting Ltd [2013] EWHC 2058 (Ch), [2013] ECDR 14

[vii] Published on 17 February 2013

[viii] Football Association Premier League Ltd v British Sky Broadcasting Ltd and others [2013] EWHC 2058 (Ch)