The High Court finds that the transmission in a pub of broadcasts containing protected works without the permission of the author is an infringement of UK copyright law, but holds that the publican defendants have a valid defence in relation to certain of the protected works (Football Association Premier League Ltd & others v QC Leisure & others  EWHC 108].
- Section 20 of the Copyright, Designs and Patents Act 1988 ("CDPA") is an effective transposition of Article 3(1) of the Copyright Directive (Directive 2001/29/EC) with the result that the phrase "communication to the public" must be interpreted widely as covering the transmission of the broadcast works, via a television and speakers, to the customers present in a pub.
- Provided that the customers in the pub where the broadcast is to be seen have not paid admission, the publicans have a defence (as set out in section 72(1)(c) CDPA) to claims of infringement of copyright in the broadcast, and certain sound recordings and any film included in it.
- In relation to the broadcast of Premier League football matches, section 72(1)(c) CDPA does not provide a complete defence to publicans showing matches to customers for free, since it does not cover certain of the Football Association Premier League's ("FAPL's") protected works: sound recordings such as the Premier League anthem or the artistic works such as graphics, devices and logos. The free showing or playing of such protected works requires the consent of the rights' holder to avoid infringement.
- The issues raised by this case are of wide interest and of general importance for content distributors.
- Rights holders will need to give thought to identifying the individual copyright works to be relied on when bringing claims of copyright infringement (as well as considering issues relating to subsistence of, and title to, copyright in such works).
- Overall, the rights owner succeeded in enforcing its copyright (albeit only in specific works) and tackling these forms of unauthorised exploitation (but at a cost).
- This judgment serves as a reminder of the potential risks of entering into contracts which contain terms that may be found contrary to the competition and free movement provisions of EU law.
FAPL (the governing body of the English Premier League) is the vehicle through which the Premier League clubs market the Premier League. It acquires ownership of various copyrights in the broadcasts of live Premier League matches.
FAPL grants its licensees the exclusive right to broadcast Premier League matches and to exploit them economically within their respective broadcasting areas (with licence fees varying by territory). To protect such exclusivity, each licensee is contractually obliged to encrypt the satellite signal provided to subscribers in its territory. Subscribers then require decoder devices to decrypt the signal; the licence agreement also imposes restrictions on the circulation of such devices outside the territory of each licensee.
FAPL's practice of licensing sports broadcast rights is seriously threatened by unauthorised dealing in foreign decoder cards and decoder boxes. The defendants in the proceedings comprised suppliers of satellite equipment and decoder cards, as well as publicans who had screened live Premier League football matches using foreign decoder cards.
FAPL claimed that the publican defendants had infringed its copyrights contrary to the CDPA and that the supplier defendants authorised these acts by supplying the decoder cards in the proceedings.
Following a 2008 preliminary reference from the High Court, the Court of Justice of the European Union ("ECJ") gave its ruling on 4 October 2011, relating to whether the reception of broadcasts containing Premier League matches and associated works, and their display on television screens, was subject to restriction by the Copyright Directive. The ECJ also examined the legality of attempts by the defendants to circumvent this exclusivity by the supply and use of lower priced foreign decoder cards in the UK, to enable access to Greek transmissions of live Premier League matches in pubs, and whether the FAPL's contractual terms which sought to prevent this were compatible with EU competition and free movement law. (See our earlier newsflash here).
The case returned to the High Court for Kitchin LJ (who had originally made the 2008 references to the ECJ and who came down from the Court of Appeal for this case) to give effect to the ECJ's judgment.
The Copyright Decision
Infringement by communication to the public – section 20
At the 2008 hearing, FAPL claimed that the publicans had communicated FAPL's copyright works to the public contrary to section 20 CDPA by transmitting the FAPL's broadcasts, via their television screens and speakers, to the customers present in their public houses.
FAPL had claimed copyright in some 25 works falling into three categories: (a) film, (b) artistic and (c) sound recording and musical. The film works included the film of the football matches, film of the opening sequence containing football action and film of highlights of the football match. The artistic works relied upon comprised various graphics, devices and logos. FAPL also relied upon the sound recording of the Premier League anthem (the "Anthem"), which accompanied various films in the broadcast and the Anthem as a musical work.
In 2011, the ECJ ruled that the phrase "communication to the public" in Article 3(1) of Directive 2001/29/EC (the "Copyright Directive"), must be interpreted widely as covering the transmission of the broadcast works, via a television and speakers, to the customers present in a pub.
Following the ECJ's ruling, Kitchin LJ held that section 20 CDPA was an effective transposition of Article 3(1) of the Copyright Directive into national law, and that therefore the publicans were communicating FAPL's works when they screened live Premier League matches in their public houses (such communication to the public requiring authorisation of the author of the works).
Free public showing or playing of broadcast – section 72(1)(c)
Section 72(1)(c) CDPA provides that the free playing in public of a broadcast to an audience who have not paid for admission to the place where the broadcast is played does not infringe any copyright in the broadcast, any sound recording embodied in it (save one category of sound recordings, which is excepted) or any film included in it.
"Excepted sound recordings" are defined by CDPA as sound recordings where the author of the sound recording is not the author of the broadcast in which it is included and is a recording of music with or without words spoken or sung.
Previously, in 2008, the judge held that section 72(1)(c) CDPA provided the publicans with a complete defence to allegations by FAPL of infringement of its copyright under section 19 CDPA, but now Kitchin LJ had to rule whether section 72(1)(c) CDPA also provided a defence to FAPL's claims under section 20.
In the current proceedings, FAPL argued that the defence only applied to section 19 but Kitchin LJ considered that there was overlap between section 19 and section 20 and found that section 72(1)(c) CDPA could also provide a defence to claims under section 20 in addition to claims under section 19.
It was the judge's view that the words of section 72(1)(c) CDPA were clear and unambiguous; thus the showing or playing of a broadcast in a public house to members of the public who have not paid for admission does not infringe any copyright in the broadcast, and certain sound recordings and films included in the broadcast.
The judge had held in 2008 that the Anthem was an excepted sound recording because it is a recording of music and its author was not the author of the broadcast, therefore, on the findings in the current judgment, section 72(1)(c) CDPA did not provide a defence to the infringement of the copyright in the Anthem.
Furthermore, it is clear from the wording of section 72(1)(c) CDPA that it does not provide a defence to infringement of FAPL's copyright in the artistic works (graphics, devices and logos).
Kitchin LJ found that QC Leisure and AV Station, by supplying decoder cards to the publicans, authorised any infringing acts by them. In doing so, the judge rejected the defendants' arguments (which referred to Kitchin LJ's own decision in Twentieth Century Fox v Newzbin Ltd; see our newsflash here) that the supply of decoder cards merely enabled the publican's acts of infringement, rather than constituting authorisation or approval of any infringing use.
However, in the judge's view, the decoder cards were supplied to customers for one purpose only: that of allowing them to watch encrypted television programming in their public houses.
Article 81 declaration (now Article 101 TFEU)
During the course of proceedings, Kitchin LJ was persuaded by the defendants to make a declaration to reflect the ECJ's ruling on competition and free movement provisions of EU law (see our previous newsflash here), even though the defendants had not sought such a declaration in the lead up to the proceedings and despite the fact that the none of the defendants were party to any of the contracts in issue. However, it was the judge's view that the defendants had a legitimate interest in securing a clear statement from the court in light of the ECJ's ruling.
Kitchin LJ therefore declared that the relevant obligations in the agreements in issue constituted a restriction on competition prohibited by Article 101 TFEU and were void under Article 101(2) TFEU to the extent that such obligations prohibited Netmed (a sub-licensee in Greece of the rights to the live broadcasts of Premier League football matches) from supplying for use in the UK satellite decoder cards which were capable of permitting any person to view the relevant transmissions in an intelligible form.
Patents County Court – order for an inquiry or account
The defendants objected to FAPL seeking an order for an inquiry as to damages or an account of profits on the basis that only nominal or trivial damages had been suffered. The judge disagreed with the defendants, but in light of the scale of the infringements, interestingly ordered that the case be transferred to the Patents County Court for such assessment.