In the recent case of Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others[1], the High Court granted an order to several major film studios blocking access to four film and television programme streaming websites. The decision is the latest in a long line of cases in which copyright owners have sought website blocking orders and provides a useful overview of the requirements that have to be met in order for such an application to succeed.

Background: Legislation

Article 3(1) of the Copyright Directive[2] provides that communicating a copyright work to the public without the copyright owner's consent is an infringement of copyright.

Under section 20 of the Copyright Designs and Patents Act 1988 ("CDPA"), a communication to the public of a copyright work is an act restricted by the copyright in a literary, dramatic, musical or artistic work, a sound recording or film, or a broadcast. Section 20(2) of the CDPA defines "communication to the public" as a communication to the public by electronic means, which includes: (i) broadcasting the relevant work; and (ii) making the relevant work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.

Section 97A of the CDPA gives the High Court the power to grant an injunction against an internet service provider ("ISP") where the ISP has actual knowledge of another person using its service to infringe copyright. In determining whether a service provider has "actual knowledge", the court will take into account all matters which appear to be relevant in the particular circumstances.

Section 97A was inserted into the CDPA for the purposes of implementing Article 8(3) of the Copyright Directive into domestic law. The recitals of the Copyright Directive make it clear that there should be effective sanctions in domestic law for infringements of the rights set out in the directive and that such sanctions should be effective, proportionate and dissuasive and should include the possibility of seeking injunctive relief.

Background: Case law

It is believed that the court first exercised its power under section 97A of the CDPA in 2011, when it upheld an application by film producers for an order that an ISP, BT, take measures to block access to a website, Newzbin, which provided indexing and search services for a worldwide internet discussion system called Usenet[3] ("Newzbin"). The court ordered BT to block access to the Newzbin website within fourteen days and ruled that the order should cover not only the offending website, but any other IP address or URL whose sole or predominant purpose was to enable or facilitate access to the site[4].

In the years since Newzbin, the court has considered a long line of applications for similar orders as a result of which a number of principles to be applied when considering such applications have developed.

In the 2013 case of Paramount Home Entertainment International Ltd & Others v British Sky Broadcasting Ltd & Others[5]("Paramount v BSB 2013"), in which six major film studios made a successful application for an order blocking access to two film and television programme streaming websites, the court set out these eighteen principles in full and confirmed that they are now established matters of law.

Following on from Paramount v BSB 2013, in February of this year, the CJEU settled one outstanding point by confirming that the mere provision of access to a copyright work by means of a hyperlink will amount to a "communication to the public" within the meaning of Article 3(1) of the Copyright Directive where the communication is to a "new public". This point, and the case law principles, are discussed in more detail below (for the full list of the eighteen principles refer to Paramount v BSB 2013 at paragraph 12).

The current position: Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others

(1)           Facts

The most recent application for a website blocking order was made, as was the case in Paramount v BSB 2013,  by a number of major film studios suing in representative capacity on behalf of companies in their respective groups. The defendants were the six main ISPs in the United Kingdom. The targets of the application were four websites located at viooz.co, megashare.info, www.1.zmovie.tw and watch32.com (together referred to as the "Target Websites"). Between 87 and 100 percent of the content made available on the Target Websites was alleged to be protected by copyright.

The Target Websites did not host the infringing content themselves, but provided a database that could be searched by users to allow them to quickly find the relevant film or television programme. The user would then click on a link to get to the content, which was typically displayed via an embedded player located on the Target Website which allowed the content to be streamed to the user, whilst being hosted on a separate site. The website operators provided editorial oversight over the content; categorising, referencing and moderating the films and television shows contained on the database. 

(2)           Decision

In its judgment, the High Court confirmed the four factors which need to be established in order to satisfy the jurisdictional requirements of section 97A CDPA:

(i)            The defendants are service providers

It was clear to the court that the defendants in the case were ISPs, and none of the defendants sought to contend the contrary.

(ii)           The users and/or the operators of the Target Websites infringe copyright

This was the crux of the decision and the court considered the issue in some detail. The key question was whether the operators of the Target Websites communicated works to the public under section 20(2)(b) of the CDPA. The claimants argued that this was the case as the operators actively intervened in order to make the protected works available to their users, a large and indeterminate class of the public, many of whom were in the UK.

The court considered the concept of "communication to the public" by referring to the aforementioned eighteen principles set out in Paramount v BSB 2013. Amongst others, the court highlighted the following three principles:

"(1) "Communication to the public" must be interpreted broadly[6];

(15) Where there is a communication which does not use a different technical means to that of the original communication, it is necessary to show that the communication is to a new public, that is to say, a public which was not considered by the authors concerned when they authorised the original communication[7]; and

(18) Where there is a communication using a different technical means to that of the original communication, it is not necessary to consider whether the communication is to a new public[8]."

In relation to (15), the court emphasised that the necessary comparison is with the public that was taken into account by the authors when they authorised the initial publication. It also said that it follows from (18) that the concept of "communication to the public" within the meaning of Article 3(1) of the Copyright Directive covers, in certain circumstances, a retransmission of works included in a terrestrial television broadcast[9].

All of the principles, the court said, demonstrate the breadth of the concept of "communication to the public" and the importance of considering precisely what it is that is authorised by the copyright owners at the stage of the initial communication.

The court took the view that the website operators were intervening in a highly material way: namely, by categorising, referencing, editing and providing search facilities to the content, to make the copyright works available to a new audience (its users) at a place and time convenient to them. There would be no doubt that their users would consider that the Target Websites were making the films and television programmes available to them in the relevant database. Accordingly, taking all of the principles into account, the actions of the website operators amounted to a communication to the public of the copyright works.

With regard to whether a sufficient section of the public in the UK were targeted, the court was satisfied that evidence showing the degree of popularity of the Target Websites in the UK, the fact that advertisements on them were clearly aimed at the UK market and the fact that English was their default language was sufficient to fulfil the requirement.

For all of these reasons, the website operators were found to be infringing the copyright in the protected films and television programmes.

(iii)         The users and/or the operators of the Target Websites use the services of the defendants to infringe copyright

This point was dealt with briefly. It was clear to the court that, on the facts, both the users and the operators of the Target Websites used the services of the ISPs to infringe the claimants' copyrights.

(iv)          The defendants have actual knowledge of the infringement

Again this point caused little issue for the court. In November 2013 the defendants received emails giving them advanced notice of the application and a schedule containing samples of the evidence and had been served with the application itself and supporting evidence. They therefore clearly had actual knowledge of the infringement.

Proportionality

The final issue for the court to consider, once it was satisfied that the four jurisdictional requirements had been met, was whether the orders sought by the claimants were proportionate.

The rights in question in this case were the claimants' rights to privacy and protection of personal data and the defendants' and Target Websites' users' and operators' right to freedom of expression under Article 10 of the European Convention on Human Rights.

It was clear, in the court's opinion, that the rights of the claimants to protection of their copyright should prevail over the rights to freedom of expression of the defendants and the Target Websites' users and operators. Both the operators and the users were involved in an activity which they must have known was unlawful.

The defendant ISPs, who were in the position of intermediaries, had at their disposal the technical measures to give effect to the order and had agreed to the terms of the order. The cost of compliance would therefore be relatively modest and not cause them any particular difficulty. Accordingly, the court found that the order sought by to block access to the Target Websites was proportionate. (For a full consideration of the correct approach to the assessment of proportionality refer to EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch) at paragraphs 91 – 106).

Comment

The online infringement of copyright in films and television programmes through the use of streaming websites is a major problem for the audio-digital industries, causing losses of an estimated several hundred million pounds.

The issue raises strong feelings on both sides of the debate. The court's use of its power under section 97A of the CDPA to grant orders blocking access to such websites in recent years has been welcomed by the creative industries as a concerted attempt to deal with the issue. On the other hand, some believe that the granting of such orders constitutes an unwarranted attack on ISPs, who find themselves in the unfortunate position of intermediaries.

The debate is likely to intensify when certain provisions of the Digital Economy Act 2010 come into force in 2015. These provisions will impose new obligations on ISPs aimed at reducing online infringement, including the introduction of a new statutory notice-and-take-down procedure. ISPs who fail to comply with these obligations could face penalties of up to £250,000 (or more by order of the Secretary of State).

In the meantime, where rights holders can establish that the four requirements of section 97A of the CDPA have been met, they will be able to obtain some relief in the form of a website blocking order, requiring ISPs to block access to the websites which are infringing their rights.