TV Catchup case goes to Europe

Cast your mind back to last December and you might recall, though the midst of winter's murky memories, a bright and cheeky interlude in which the recently-promoted Mr Justice Kitchin starred, ITV Broadcasting Ltd and others v TV Catch Up Ltd [2010] EWHC 3063 (Ch).  This was a copyright infringement action with a twist to it: instead of sitting there and waiting to be sued, the defendant (TV Catchup) decided to take the initiative and go apply in summary proceedings for the action against it to be dismissed on the basis that it had no chance of succeeding at trial. The outcome, which was a little bit like what happens when a fly picks a fight with an oncoming windscreen, was a decision not to dismiss the action straight off but to allow the claimant copyright owners to have their day -- four days as it turned out -- in court (click here for the IPKat's note on the summary judgment application).

ITV said that TV Catchup ('TVC') had infringed the copyright in its broadcasts by communicating those broadcasts to the public through a process of electronic transmission. This consisted of TVC running a website which allowed ordinary viewers to watch live United Kingdom television -- including broadcasts by ITV -- on their very own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made his or her choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast.

"For goodness' sake, Henry,
I said 'pause', not 'paws'"

The ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which, er, communicated its broadcasts to the public by means of an electronic transmission were, if it might be so bold as to suggest this possibility, a communication of the broadcasts to the public by electronic transmission under section 20 of the same Act. TVC disagreed: in its view, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). Mr Justice Kitchin thought this line of attack, ingenious and original though it might be, had no chance of succeeding, so we all looked forward to the trial.

Today Mr Justice Floyd delivered a 39-page, 145 paragraph judgment which reflected the judge's thoroughness in dealing with the parties' respective arguments concerning an area of law which has become almost unbearably complex and taken on an almost metaphysical dimension, divorced from the mundane nature of the activities it governs. He had to consider the validity of the amended version of section 20 itself, as well as a variety of issues relating to TVC's defences, one of which was reliance on the CDPA, s.28A which states:

"Copyright in 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".

This was most definitely not
the sort of transmission that
Fluffikins was thinking of ...

The judge's at-a-glance ruling goes like this:

• the CDPA s.20(c) was not ultra vires the InfoSoc Directive; 
• TVC was indeed communicating films and broadcasts to the public, but, just to be on the safe side, it's a good idea to refer this issue to the Court of Justice of the European Union for a preliminary ruling, so hold your breath! ;
• subject to anything the Court of Justice might say to the contrary in its keenly-awaited ruling in Football Association Premier League v QC Leisure [Advocate General's Opinion this February noted briefly here, with links], TVC had reproduced a substantial part of the films in its buffers (which could in theory hold up to 8 seconds worth of video streaming) and on screen; 
• provisionally, the reproduction in the buffers and on the screens was not a reproduction of a substantial part of a broadcast ... but this is also to be referred to the Court of Justice of the European Union for a preliminary ruling. Keep holding that breath!
•  final judgment on the application of the CDPA, s.28A to reproduction of the films and broadcasts in the buffers and on the screens should await the outcome of the Football Association Premier League case -- but the judge's provisional view is that the defence does apply to the reproductions in the buffers;
• the CDPA section 73 defence ['Reception and re-transmission of wireless broadcast by cable': the Kat isn't even going to try to explain this one here] applies to the qualifying services ...
• ... but not in respect of re-transmission to mobile phones or of out of area services. [Throwing caution to the wind, Merpel says "the finding that, for s.73 purposes, "internet streaming" is "cable" is no great shock, since it reflects obiter observations in two earlier decisions, even though the scope of the s.73 defence now looks rather limited. However, it will be fun to see how the distinction Floyd J makes between mobile phone access and land line access will work in practice"].

So, all in all, errors and omissions excepted and without prejudice to anything that the Court of Justice may say, do or think in the future, this looks like a fairly good day in court for the commercial broadcasters. But what do the Kats say?

Without the aid of an abacus on which to count them, the IPKat finds it increasingly difficult to keep track of the increasing number of cases in which the meaning of the words "communication to the public" has been referred to Europe's highest court for an authoritative ruling. Is it six now? Merpel quips, soon we'll have as many rulings on "communication to the public" as we have on "use of a sign" in trade mark law.

Compensation for Irish bedroom shenanigans: a matter of Opinion

Determined to avoid making payments
if the ECJ rules against the Irish State,
some hotel owners will make their guests
play phonograms only off the premises

Today saw an all-Irish contest in Luxembourg when Advocate General Trstenjak rendered an Opinion to guide the Court of Justice of the European Union (ECJ) in Case C-162/10 Phonographic Performance (Ireland) Ltd v Ireland and Others, a reference for a preliminary ruling from the Commercial Division of the Irish High Court.  Before getting down to the serious matter of identifying the relevant law and advising the ECJ what they should tell the Irish to be doing with it, the AG treated us to a little scene-setting:

"1. Just as Gutenberg’s invention of the printing press ultimately led to copyright protection of written works [and to copyright infringement, notes Merpel], Edison’s invention of the phonograph not only increased the economic importance of copyright protection of musical works, but also paved the way for the introduction of related rights for performers and phonogram producers. If a phonogram is used, this affects not only the author’s right to the communicated copyright work, but also the related rights of performers and phonogram producers.

2. The present reference for a preliminary ruling from the High Court of Ireland ... concerns the right to equitable remuneration under Article 8(2) of Council Directive 92/100 ... on rental right and lending right and on certain rights related to copyright in the field of intellectual property ... and of Directive 2006/115 ... on rental right and lending right and on certain rights related to copyright in the field of intellectual property ... which must be paid in respect of communication to the public of a phonogram already published for commercial purposes.

3. The referring court wishes to know ... whether such a right also arises where a hotel operator provides televisions and/or radios in guest bedrooms to which it distributes a broadcast signal. The answer to this question depends on whether in such a case the operator uses the phonograms contained in the radio and television broadcasts for communication to the public.

4. Secondly, the referring court asks whether such an operator also uses those phonograms for communication to the public where it does not provide radios or televisions in the bedrooms, but players and the relevant phonograms.

5. Thirdly, the referring court is seeking to ascertain whether a Member State which does not provide for a right to equitable remuneration in such cases may rely on the exception under Article 10(1)(a) of Directive 92/100 and of Directive 2006/115, on the basis of which the Member States may provide for limitations to the right to equitable remuneration in respect of private use.

6. The substance of these questions is closely connected with SGAE [noted by the IPKat here]. In that case, the Court found ... that communication to the public within the meaning of Article 3(1) of Directive 2001/29 ... on the harmonisation of certain aspects of copyright and related rights in the information society exists where a hotel operator distributes a signal by means of television sets provided in its bedrooms, irrespective of the technique used to transmit the signal. It also found that the private nature of hotel rooms does not preclude communication to the public. In the present case, the question arises in particular whether these principles, which concern communication to the public of copyright works under Article 3(1) of Directive 2001/29, can be applied to the notion of communication to the public within the meaning of Article 8(2) of Directive 92/100 and of Directive 2006/115, which concerns the related rights of performers and phonogram producers.

7. ... the present case is closely connected with Case C-135/10 SCF, in which I deliver my Opinion on the same date as in the present case [and which, frustratingly, has not been made available yet in English]. SCF relates ... to whether a dentist who makes radio broadcasts audible to his patients in his practice using a radio provided in his practice must pay equitable remuneration pursuant to Article 8(2) of Directive 92/100 and of Directive 2006/115 because he communicates the phonograms used in the radio programme indirectly to the public".

So what happened in this case? The facts were simple:

" The applicant ... is a licensing body. Its members are phonogram producers who hold related rights in phonograms. The applicant asserts, on behalf of its members, their rights arising from the communication of their phonograms to the public.

40. The defendant in the main proceedings is the Irish State.

41. The applicant in the main proceedings takes the view that the Irish State has not properly transposed Directives 92/100 and 2006/115. Section 97(1) of the Act of 2000 is not compatible with Article 8(2) of Directive 92/100 and of Directive 2006/115 in so far as it provides that there can be no right to equitable remuneration for the communication of phonograms which takes place in the bedrooms of Irish hotels and guesthouses, as part of their service, on radios, televisions and sound systems.

42. The applicant in the main proceedings has brought an action against the Irish State in which it seeks a declaration, first of all, that in adopting section 97(1) of the Act of 2000, the Irish State has failed to fulfil its obligation to transpose Article 8(2) of Directive 92/100 and of Directive 2006/115 and Article 10 EC. Secondly, it seeks compensation for damage which it has suffered as a result."

That's the easy bit.  The issues are clear but the questions have to be converted into something more precise, but sadly far less intelligible:

"(i) Is a hotel operator which provides in guest bedrooms televisions and/or radios to which it distributes a broadcast signal a ‘user’ making a ‘communication to the public’ of a phonogram which may be played in a broadcast for the purposes of Article 8(2) of Directive 2006/115?

(ii) If the answer to paragraph (i) is in the affirmative, does Article 8(2) of Directive 2006/115 oblige Member States to provide a right to payment of equitable remuneration from the hotel operator in addition to equitable remuneration from the broadcaster for the playing of the phonogram?

(iii) If the answer to paragraph (i) is in the affirmative, does Article 10 of Directive 2006/115 permit Member States to exempt hotel operators from the obligation to pay ‘a single equitable remuneration’ on the grounds of ‘private use’ within the meaning of Article 10(1)(a) of Directive 2006/115?

(iv) Is a hotel operator which provides in a guest bedroom apparatus (other than a television or radio) and phonograms in physical or digital form which may be played on or heard from such apparatus a ‘user’ making a ‘communication to the public’ of the phonograms within the meaning of Article 8(2) of Directive 2006/115?

(v) If the answer to paragraph (iv) is in the affirmative, does Article 10 of Directive 2006/115 permit Member States to exempt hotel operators from the obligation to pay ‘a single equitable remuneration’ on the grounds of ‘private use’ within the meaning of Article 10(1)(a) of Directive 2006/115?"

For to make things a little easier for the ECJ, the referring court specified that the proceedings before it did not concern the public areas of hotels and guesthouses, but only hotel and guesthouse bedrooms and that, to the relief of us all, they did not concern any interactive or on-demand transmissions".
The Advocate General advised the ECJ to tell the referring court that

"(1) Article 8(2) of Directive 2006/115 ... and of Council Directive 92/100 ...[means] that a hotel or guesthouse operator which provides televisions and/or radios in bedrooms to which it distributes a broadcast signal uses the phonograms played in the broadcasts for indirect communication to the public.

(2) In such a case, the Member States are required, in transposing Directives 2006/115 and 92/100, to provide for a right to equitable remuneration vis-à-vis the hotel or guesthouse operator even if the radio and television broadcasters have already paid equitable remuneration for the use of the phonograms in their broadcasts.

(3) Article 8(2) of Directive 2006/115 and of Directive 92/100 [mean] that a hotel operator which provides its customers, in their bedrooms, with players for phonograms other than a television or radio and the related phonograms in physical or digital form which may be played on or heard from such apparatus uses those phonograms for communication to the public.

(4) Article 10(1)(a) of Directive 2006/115 and of Directive 92/100 is to be interpreted to the effect that a hotel or a guesthouse operator which uses a phonogram for communication to the public does not make private use of it and an exception to the right to equitable remuneration under Article 8(2) of Directive 2006/115 is not possible even if the use by the customer in his bedroom has private character".

There's a lot to read in this Opinion and this Kat hasn't had time to digest it yet.  One thing that did catch his eye, though, was the sheer breadth of the concept of communication to the public as viewed through the lens of "making accessible" (see extract below, with emphases added). He wonders whether, at the point at which the legislation was drafted, its originators would have assumed that the concept ran so widely:

"164. Recital 27 in the preamble to Directive 2001/29 does not preclude the existence of communication in a case like the present one, however. It must be construed as meaning that persons providing players, without at the same time controlling access to copyright works, do not make any communication to the public. This is the case, for example, where televisions or radios are sold or rented or where an internet service provider merely provides access to the internet. In a case like the present one, however, the hotel operator does not simply provide the players. Instead, it also deliberately provides hotel customers with phonograms, and thus provides hotel customers with direct access to the sounds fixed in the phonograms.

165. It can be stated, in conclusion, that a hotel operator which provides its customers with not only players, but also the relevant phonograms, makes the copyright works embodied in phonograms accessible and makes the phonograms audible, with the result that there is communication to the public both within the meaning of Article 3(1) of Directive 2001/29 and within the meaning of Article 8(2) of Directive 2006/115".

For the record, the Opinion in Case C‑135/10 SCF Consorzio Fonografici contre Marco Del Corso, kindly translated into English by Lord Justice Google and slightly tickled up by the IPKat, goes like this:

"1. Article 8(2) of Council Directive 92/100 ... or Directive 2006/115 ... must be interpreted the sense that a dentist who places a radio in his waiting room and, through it, making a radio show heard by his patients, is required to pay fair compensation for indirect communication public of phonograms used in the radio.

2. On the basis of the criteria of EU law, neither Article 12 of the Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations [Rome 1961] nor Article 15 of the WIPO Performances and Phonograms Treaty, nor Article 14 of [TRIPS] are the provisions of international law that a party may invoke directly as part of a dispute between individuals".

A fable for modern times: the Fox and the Newzbin

Hot off the press this morning is a seminal judgment of Mr Justice Kitchin, of the Chancery Division of the High Court for England and Wales, in Twentieth Century Fox Film Corporation and others v Newzbin Ltd [2010] EWHC 608 (Ch).

Fox and other film makers and distributors sued Newzbin, which ran an internet discussion system called Usenet, for copyright infringement, alleging that Newzbin is focused on piracy in that it locates and categorises unlawful copies of films and then (i) displays the titles of these copies in its indices, (ii) provides a facility for its users to search for particular unlawful copies, (iii) displays their search results and (iv) provides a simple one-click mechanism for users to acquire the unlawful copies of their choice. The defendant company, which owned and ran Newzbin, says its website is simply a search engine like Google -- but that it was directed to Usenet rather than to the worldwide web. It also said it is "content agnostic", being designed to index the entire content of Usenet. Where possible, it provided hyperlinks so that any supply of unlawful material is an act occurring exclusively between the hyperlink user and the relevant Usenet server operators -- but that it played no part in any such activity.

In a long and carefully-expressed judgment in which he explains how Usenet and Newzbin work and what Newzbin actually does, Kitchin J concluded from the evidence that Newzbin clearly knew that its facility was used mainly by its members for the unauthorised downloading of infringing copies of the claimants' films. He then turned to Fox's action, which was based on the following:

(i) authorising acts of infringement by Newzbin's members;
(ii) procuring, encouraging and entering into a common design with its members to infringe;
(iii) communicating the claimants' copyright works to the public, namely the defendant's members;
(iv) categorisation of Newzbin as a service provider with actual knowledge of other persons using its service to infringe copyright, in respect of which the claimants seek an injunction under section 97A of the Copyright, Designs and Patents Act 1988.

As to "authorisation", Kitchin J reviewed and analysed the law relating to that word as it affected copyright infringement, with particular regard to the narrow, literal interpretation placed upon it by the House of Lords in C.B.S. Songs Ltd and others v Amstrad Consumer Electronics Plc [1988] 1 A.C. 1013, when the sale of tape-to-tape recording machines was not regarded as "authorising" infringement of the music copied by them since the company that made and sold the machines had not acted as though it had an entitlement to permit infringing acts by those machines' users. At paragraph 90 he summarises the position:

"... "authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances".

Applying this to the facts, he held Newzbin liable:

" ... I am entirely satisfied that a reasonable member would deduce from the defendant's activities that it purports to possess the authority to grant any required permission to copy any film that a member may choose from the Movies category on Newzbin and that the defendant has sanctioned, approved and countenanced the copying of the claimants' films ...".

As for "procuring, encouraging and entering into a common design" to infringe, the judge drew again on C.B.S. v Amstrad and the stiff test which had to be satisfied if liability were to be found:

"... mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act" (para.108).

Even so, there was ample evidence from which to conclude that Newzbin had so involved itself.

On the question of whether Newzbin had communicated the claimants' Films to the public, Kitchin J found guidance in a European Court of Justice ruling in rather a different context, Case C-306/05 Sociedad General de Autores v Editores de España (SGAE) v Rafael Hoteles SA. In that preliminary ruling on a reference from Spain, the Court had said:

"46 While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal".

On this basis, since Newzbin's premium members indeed downloaded the claimants' films from a place and at a time individually chosen by them, and since its members consider Newzbin to be making the films available to them, liability was established. An enquiry into damages, including additional damages for flagrant infringement was ordered. Injunctive relief would however be less dramatic:

"In my judgment the scope of any injunction under section 97A(2) should extend no further than that to which I have already concluded the claimants are entitled, namely an injunction to restrain the defendant from infringing the claimants' copyrights in relation to their repertoire of films" (para. 135).

The IPKat thinks that this is a good example of a copyright owner taking its time, getting its evidence together, marshalling its legal arguments in order to get maximum benefit from the litigation process.

Fox movies here

Cat movies here