Summary

Twentieth Century Fox Film Corporation, together with other film makers and distributors (the Studios) sued the major internet service provider (ISP) British Telecommunications Plc (BT) under Section 97A of the Copyright, Designs and Patents Act (CDPA) 1988.  The new right against service providers.  The Studios won the case against BT; with the Court finding BT had ‘actual knowledge’ of its customers using its service to infringe copyright.   Consequently for the first time in the UK, an ISP has been ordered to prevent its users accessing a site giving links to TV shows and movies without licenses of copyrights. This is also the first occasion on which an effective application for a section 97A order against an ISP has been made.  After this victory, claimants will no doubt seek similar orders against other ISPs in UK. Making this case the potential starting point to take the fight against infringement copyright to the infringers.

Background facts

The claimants sought an order against British Telecommunications Plc. (BT) which is an internet service provider (ISP) with the largest number of internet subscribers in UK. This claim was under s97A of the CDPA 1988 giving UK courts the ‘power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.’  The injunction in this present case requiring BT to block the website ‘NewzBin2’ supplying infringing film and television programme content.

NewzBin2 is the ‘reincarnation’ of NewzBin1 using the same code and database as its predecessor and having the same categories of content available. NewzBin1 having been convicted by the English High Court in 2010 for infringement copyright.[1]  Newzbin located and categorised unlawful copies of films and then (i) displayed the titles of these copies in its indices, (ii) provided a facility for its users to search for particular unlawful copies, (iii) displayed their search results and (iv) provided a simple one-click mechanism for users to acquire the unlawful copies of their choice.  As with NewzBin1, the main focus of Newzbin2 is film and television programmes whose the copyright is held by the claimant.

The applicants sought an injunction not against NewzBin2, as they did in NewzBin1, but rather directly against BT as it was highly probable that a substantial number of BT subscribers were members of NewzBin2.  Before suing BT, the claimants wrote on September 23rd 2010 to ask whether BT would agree to block access to the NewzBins2 website or alternatively would agree not to oppose an application for a court order to that effect. BT replied saying that ‘…with respect to your request, BT requires a Court order to block a service…’  Consequently, the studios sued BT before the Court seeking an order under section 97A.  The defendant, BT, then contended that the court had no jurisdiction to make the injunction for the following reasons:

  1. While the studios argued that both the users and the operators of NewzBin2 are using BT’s service to infringe the Studios’ copyrights, according to the ISP, the subscriber was not using its service, but the service provided by NewzBin2, and it was a false dichotomy to argue the contrary. In addition, the operators of the NewzBin2 website did not use the BT service at all to commit the infringement.
  2. Under s97A of CPDA 1988, ‘actual knowledge’ of another person using the service of BT to infringe copyright is required. According to the studios, it was sufficient if the ISP had actual knowledge of the use of the service to infringe without knowing exactly the person(s) doing this. BT contended that it was not enough to know it. According to BT, it was necessary to have actual knowledge of a specific person using its service to infringe a given copyright work. In this regard, a notice of the precise details of the infringement in question being required. In accordance with the Bunt v Tilley[2] case, the complaint should provide information about the strength or weakness of available defences. It was not the case here because only a general notice was sent to BT.
  3. Under Directive 2000/31 art. 12(1)[3] if BT acted only as a ‘mere conduct,’ it was protected from liability for infringement of copyright by Article 12(1).
  4. BT argued an order as sought would be contrary to Directive 2000/31 art 15(1)[4]; prohibiting Member States from imposing ‘a general obligation on providers… to monitor the information which they transmit.’
  5. It would contravene the European Convention on Human Rights 1950 art.10 on the freedom of expression which states that each restriction to this principle should be ‘prescribed by law.’  In this present case, the order to block the access of a website does not have any legal basis because section 97A per se does not provide such a general order.

Decision

The Court (Arnold J.) rejected BT’s arguments outlined above, finding that the first defence failed when the importance of the nature of the infringing act and its relationship with the service in question was considered.  In relation to the users, the Court applied the guidelines provided by the Court of Justice in LSG-GesellschaftzurWahrnehmung von Leistungsschutzrechten GmbH v Tele2 Telecommunication GmbH (C-557/07) [2009] E.C.R. I-1227[5] and stated that BT’s subscribers who were members of the website were not mere passive recipients of infringing material; they actively downloaded the material. Accordingly, the users did use BT’s service to infringe the claimant’s copyright.   With respect to the operators, NewzBin 1 has already been convicted and found to have infringed the claimants’ copyrights in three ways.[6] De facto, it was sufficient to constitute a use of BT’s service to infringe.

On the second defence, the wording ‘to infringe copyright’ pursuant to section 97A of CDPA 1988, does not necessitate the identification of a specific infringing act, still less a specific infringer. Such details are not mandatory given that section 97A does not mention such requirements. It only requires the knowledge of the use of the service to infringe. In the, Bunt v Tilley case which concerned libel issue, the requirement of specific details in the notice of the infringement was completely understandable because in the defamation context, words may be defamatory without being unlawful, but the same is not true here.

The Court finding that BT not only had knowledge of Newzbin2 infringing copyright, but also which BT subscribers had infringed copyright. Therefore, BT had ‘actual knowledge’ and de facto the requirements of s97A are satisfied.

Regarding the third argument, the Court found that article 12(1) of Directive 2000/31 placed no limit on the type of injunction that could be granted ‘requiring a service provider to terminate or prevent an infringement.’  The Court also found that the order does not contravene article 15(1) of the Directive; citing l’Oréal v eBay[7] the Court approving the definition of a ‘general obligation to monitor’[8] to support his argument. Therefore the order sought by the Studios did not require BT to engage in active monitoring contrary to art.15(1), but simply to block access to the website by automated means that did not involve detailed inspection of the data of any of BT's subscribers.

Finally, the order sought fell within the range of orders which was foreseeable by ISPs on the basis of section 97A and therefore it is not contrary to Article 10 of the Convention.

Comment

The case highlights the English court’s willingness to adopt a tougher approach to online infringement of copyright. This decision paves the way for other sites to be blocked and is a victory for IP Protection.  It also clarifies the limit of the immunity given to ISP under the Directive 2000/31.  It remains to be seen how successful the blocking of NewzBin will be