In this article for Entertainment Law Review first published in June 2016, Andrew Crystal and Joshua Charalambous discuss Snowden J's decision in the Football Association Premier League Limited -v- Richard Alan Wells (& Ors)  EWHC 3910 (Ch).
The High Court has granted a Norwich Pharmacal Order in a copyright infringement case involving the transmission of Premier League football matches in a pub. The main differentiator in this case is that the court found that it had jurisdiction to grant Norwich Pharmacal relief against an infringer as opposed to the standard scenario against innocent parties who have somehow become mixed up in the infringement. Snowden J relied on the provisions of Enforcement of Intellectual Property Rights Directive (IPR Directive) art.8 finding that art.8 was “directly targeted at the type of relief that is sought in this case”.
This material was first published by Sweet & Maxwell in Entertainment Law Review (Volume 27; Issue 5; issn 0959-3799), and is reproduced by agreement with the Publishers.
The FAPL was the owner of the copyright in the graphics associated with Premier League games. Mr and Mrs Wells owned a pub in Grimsby called the Spiders Web.
This case was the hearing of an application by the FAPL for (i) judgment in default; and (ii) a Norwich Pharmacal Order. The facts presented to the court were that the FAPL issued proceedings against the pub owners after two Premier League games were shown to the public without permission. On the claim form issued, the FAPL sought a declaration of infringement and a prohibitory injunction against the defendants.
The defendants had failed to acknowledge service of the claim. Snowden J concluded that the claim form was validly served. The FAPL was therefore successful in its application for judgment in default. The hearing then focused on the application for a Norwich Pharmacal Order. The claimants requested that the order demands that the defendants provide details of the suppliers of the goods and/or services that were used to screen the matches. Typically pubs would use a decoder, set top box or an IPTV box.
This is not the usual backdrop for an order of this type. A Norwich Pharmacal Order requires the respondent to disclose certain documents or information to the applicant. It differs from disclosure orders under CPR 31 for pre-action disclosure and for non-party disclosure and applies where a potential claimant knows that a wrongdoing has taken place, does not know the identity of the wrongdoer, but does know a third party who can identify the wrongdoer. Typically that third party may have innocently been caught up in the wrongdoing, but in this case the respondent is also a defendant wrongdoer and the application is made within separate proceedings against that defendant.
Snowden J satisfied himself that he did have jurisdiction relying on Wilko Retail Ltd v Buyology Ltd (Wilko). In Wilko, Hacon J found that he had the jurisdiction to award a Norwich Pharmacal Order against a wrongdoer under IPR Directive art.8 although he declined to on the facts in front of him.
The relevant extract from art.8 provides that:
"1. Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:
(a) was found in possession of the infringing goods on a commercial scale;
(b) was found to be using the infringing services on a commercial scale;
(c) was found to be providing on a commercial scale services used in infringing activities; or
(d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services."
Snowden J found that this section of art.8 is directly targeted at the type of relief sought in this case. However, as art.8 does not have direct effect under English law (by contrast to Scottish law), Snowden J relied on the comments of Arnold J in Cartier International v British Sky Broadcasting Ltd (Richemont). Arnold J stated that the English courts have a duty through Senior Courts Act 1981 s.37(1) to give effect to the Directive so far as possible:
"The High Court may by order (whether interlocutory or final) grant an injunction ... in all cases in which it appears to be just and convenient to do so."
It was most likely the reason which underpinned Hacon J's decision in Wilko that he did have the jurisdiction to make the type order which was sought in this case. Snowden J therefore concluded that he should make a similar conclusion.
The court made the order that Mr and Mrs Wells must within 14 days provide the information identifying the persons who provided them with the goods or services which enabled them to show the infringing Premier League games.
This is a particularly interesting development for litigators generally as wrongdoers will not be able to roll over and default on proceedings in an attempt to avoid disclosure. The Wells were unrepresented and did not appear at this hearing but that did not prevent the court from ordering them to disclose information that they most certainly would not want to disclose.
It is a positive development for rights holders, particularly in sports broadcasting, as many of those individuals who are infringing, or are contemplating infringing, are now faced with the precedent that if they are found liable, they will be forced by order of the court to disclose the identities of those providing the equipment that facilitates infringement.
Snowden J relies very readily on Arnold J's decision and full commentary in relation to Senior Courts Act 1981 s.37(1) and the court's jurisdiction to implement Directives directly into English law. Although Snowden J does not comment at length on this point, in following Arnold J he is endorsing the point made in Richemont that s.37(1) should, if possible, be interpreted as empowering the court to grant an injunction to comply with EU Directives and that "if it were otherwise, the UK would be in breach of its obligations under the Directive".