Determining a website’s jurisdiction (or jurisdictions) can be complex. For example, the website may be hosted in one country, but receive visitor traffic from all over the world, or it may be specifically targeted to an audience in another country.  The UK Intellectual Property Enterprise Court recently dealt with the issue of jurisdiction in Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor[1], in the context of an escort referral website based in the United Kingdom who had copied online pictures from a South African escort agency’s website.

Background

Copyright infringement does not occur until the work has been both copied and communicated to the public.  Communication to the UK public will occur, and therefore UK courts will have jurisdiction, if a website provider targets a UK audience.

In 2013, the UK Chancery court in EMI v BSkyB[2] adopted factors from the Court of Justice of the European Union to determine that communications coming from a foreign-hosted website had been targeted to the UK public. These factors included: the international nature of the activity, mention of itineraries from other locations, use of a foreign language and/or currency, use of country codes in telephone listings, paying for international web referral services, use of another jurisdiction’s top-level domain name and mention of an international clientele.  As a further factor, the court considered the proportionate number of website visitors from the UK.

The Facts in Omnibill

The plaintiff Omnibill was a South African-based escort service who found their photographs of escorts appearing on a referral website also based in South Africa.   Upon discovering the copied pictures, Omnibill’s trademark lawyers contacted a Mr. van Tonder, the website developer.  Later that same day, a separate website with the same content was registered with the domain name www.escortgps.xxx.  Shortly thereafter, the defendant Egpsxxx was incorporated in the UK with the second defendant, Mr. Carter, a British citizen, listed as its sole director and sole shareholder.  Mr. Carter claimed to have no right to access or modify the content, and that all actual control over the website and its contents remained in the hands of Mr. van Tonder.  Although he acknowledged a financial investment in the website, there was no official agreement drawn up at any point. 

Omnibill brought an action for copyright infringement against Egpsxxx, which was in liquidation at the time of decision, and against Mr. Carter in his personal capacity.  The defendants did not dispute that both copying and communication had occurred, but challenged the UK courts’ jurisdiction to decide the matter on the basis that they had not targeted the UK public, and that the website was based in South Africa, as the photographs were taken and the website was hosted there.  Mr. Carter also claimed that he did not in fact control Egpsxxx, and that he was simply a “fall guy” for Mr. van Tonder.

The Decision in Omnibill

It was common ground that for an infringement action to be successful in a UK court, the infringing website had to be targeted at a UK audience.  The non-exhaustive list of factors from EMI v BSkyB was applied, looking at all the circumstances of the case.  Both the actual content of the website and the inherent nature of its services were considered.  In a very fact-based analysis, the court determined that the website was targeting the UK.  Three points can be drawn from the court’s decision:

Firstly, while mere accessibility on the internet was not sufficient to show infringement (otherwise any website on the internet could be vulnerable to actions from any and all jurisdictions), the court stated that a single website could infringe in multiple jurisdictions by targeting multiple states’ populations. 

Secondly, although over half of the unique visitors to the pages with infringing photographs were South African and only 10-25% were British, the court still found this constituted a “substantial proportion”.  This factor was not considered determinative, but was influential in the overall consideration.

Thirdly, the website as a whole was considered to be global in nature.  The Egpsxxx website had a main front page that invited users to click through to one of seven country-specific sub-domains.  The infringing photographs were on the South African sub-domain, which was by far the most popular in terms of user access.  However, when considered as whole, the court found the website could be characterized as “a single global offering with national elements”, largely due to the fact that revenue was partially generated by hosting advertisements, and was therefore based on world-wide traffic.

With regards to the issue of personal liability, Mr. Carter was found liable under the UK tort of authorisation.  He had agreed to act for and incorporate Egpsxxx in the UK primarily to avoid potential litigation in South Africa, and was aware of that potential litigation when he authorized the transfer of the infringing content to the new website.  Mr. van Tonder performed the actual transfer and retained the access codes, but Mr. Carter could have requested that information.  Mr. Carter was also found liable as a joint tortfeasor with Egpsxxx, as Egpsxxx could act only through him, the sole director and shareholder.  Again, Mr. Carter’s actual knowledge of the allegations of infringement was significant.  Although the court acknowledged that Mr. van Tonder was clearly the “real brains behind the scheme”, it found that Mr. Carter should have known what he was getting into and it would be “unreal” to find that he was not personally liable for Egpsxxx’s infringement.

Significance

This decision by a UK court may have a global impact.  Although there may be separate issues with enforcement, a website provider should be aware of the factors the courts may consider when determining the location of their target audience, particularly if they do business in or have a large percentage of website visitors from the UK.  Further, many international organizations have regional sites hosted under a global domain.  They should be aware that the website as a whole may be targeting multiple geographic areas, and therefore there is potential for infringement actions in multiple jurisdictions.

In Canada, jurisdiction is determined using the real and substantial connection test. However, the Supreme Court of Canada’s decision in Society of Composers, Authors and Music Publishers of Canada v Canadian Assn of Internet Providers did mention that where a foreign transmission was aimed at Canada, liability in copyright may be found.[3]  It is likely that had Omnibill been tried in Canada, the courts would have reached the same conclusion regarding jurisdiction, albeit using slightly different considerations.