Copyright - Warner Music UK Ltd and Others v TuneIn Inc.

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Jane Lambert

Chancery Division (Mr Justice Birss) Warner Music UK Ltd and others v TuneIn Inc [2019] EWHC 2923 (Ch) (1 Nov 2019)

This was an action for copyright infringement brought by the copyright owners or exclusive licensees of sound recordings that account for more than half the market for digital sales of recorded music in the UK and about 43% globally against the audio streaming service TuneIn Inc, which is said to have 75 million active users around the world with access to about 100,000 radio stations.  This action had been heard by Mr Justice Henry Carr who died before he could deliver judgment. Rather than insist on a full retrial, the parties agreed that Mr Justice Birss should read the materials, including the transcripts of the hearing and then hear the parties' arguments.  The hearing before Mr Justice Birss took place on 26 and 27 Sept 2019 and he delivered judgment on 1 Nov 2019.

The Issue

TuneIn offers a service that enables members of the public to listen to a radio station that broadcasts either simultaneously over the internet and on air or exclusively over the internet anywhere in the world using a computer, tablet, smartphone or some other device. That service is funded either by advertising or subscription.  The problem for the claimants is that their music may be licensed to be broadcast by the radio station in the country where that station is located but not everywhere it is heard.  TuneIn benefits from the advertising and subscription income in a listener's country but the music providers do not. The claimants have sought payment from TuneIn for putting listeners to their music in touch with the stations that broadcast it.  TuneIn has refused on the ground that it does not transmit or store any music bur merely provides users with hyperlinks to works which have already been made freely available on the internet without any restriction.

The Cause of Action

One of the acts that is restricted to a copyright owner by s.16 (1) (d) of the Copyright, Designs and Patents Act 1988 ("the CDPA"). S.20 of the CDPA provides:

(1) The communication to the public of the work is an act restricted by the copyright in--
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include--
(a) the broadcasting of the work;
(b) the making available to the public of the work 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."

Those provisions are intended to implement in the UK art 3 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society:

"Right of communication to the public of works and right of making available to the public other subject-matter
1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.
2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:
(a) for performers, of fixations of their performances;
(b) for phonogram producers, of their phonograms;
(c) for the producers of the first fixations of films, of the original and copies of their films;
(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.
3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article."

It was the claimants' case that the defendant's service falls within s.16 (1) (d).

Whether English Law applies to TuneIn's Services

The first question that Mr Justice Birss considered was whether the defendant's service was caught by English law at all.  He explained why between paragraphs [12] and [15] of his judgment:

"[12] The internet is international. Users accessing the world wide web from the UK can gain access to websites all over the world. This is routine. However unlike the internet, intellectual property rights are territorial. In what circumstances therefore does an act undertaken on the internet engage the laws, in particular the intellectual property laws, of a given state? The clear answer to that question is that for the rights in an EU member state to be engaged (at least as far as trade marks and copyright are concerned) the act must be targeted at the public in that member state (see e.g. Pammer v Reederei Karl Schulter Case C-585/03, L'Oreal v eBay Case C-324/09, Football DataCo v Sportradar Case C-173/11, applied in the UK to the communication right in EMI v BskyB [2013] EWHC 379 (Ch) (Arnold J)).
[13] So an organisation providing services through the internet (by a webpage or an app) does not need to be concerned about UK copyright at all if it does not target the UK (ignoring irrelevant points about the location of servers). The fact that members of the public in the UK can and do access those services does not matter if they are not targeted at the UK. If access from the UK happens on an appreciable scale then it might be evidence from which targeting could be inferred (along with other evidence) but that is not the point. The fact that all internet users around the world have free access to the contents of a website does not amount to targeting all potential visitors to the site and does not amount to targeting the public in a particular member state.
[14] Focussing on an internet radio, this principle means that an internet radio station operator playing sound recordings within the claimants' repertoire will, if it targets the UK, need a licence under the claimants' UK copyrights. And that is so irrespective of the physical location of the business premises of the internet radio station. On the other hand an internet radio station which does not target the UK, needs no such licence.
[15] Although in argument the parties always put this point near the end, I will address it first because if TuneIn does not target the UK then UK copyright is not engaged at all."

The Legal Principles relating to Targeting

At paragraph [16] his lordship instructed himself that the main legal principles relating to targeting were as follows

"i) The mere existence of a website and its accessibility by local consumers is never enough to establish a territorial link, see Kitchin LJ in Merck v Merck [2017] EWCA 1834 para 168 and L'Oreal v eBay para 64.
ii) The issue of targeting is to be considered from the perspective of the public in the relevant state (i.e. the UK), see Merck v Merck para 169 and L'Oreal v eBay para 65. The trade mark cases refer to consumers or average consumers because that is the relevant person in trade mark law. For cases about communication to the public, the question focusses on the public, see EMI v BskyB and my decision in OmniBill v EGPSXXX [2014] EWHC 3762 (IPEC).
iii) The test is objective in the sense that a party's subjective intention cannot turn a website or page which is objectively not targeted at the UK into one which is (Argos v Argos [2018] EWCA Civ 2211 para 51). However that does not mean evidence of intention is irrelevant. On the contrary such evidence is relevant and possibly determinative in an appropriate case (Merck v Merck paras 169-170 and Argos v Argos para 51).
iv) The court must carry out an evaluation of all the relevant circumstances, see Merck v Merck para 169 and L'Oreal v eBay para 65.
v) It may be appropriate to treat a website as a whole, but in another case it may be appropriate to conduct a more fine grained analysis. Depending on how a website is organised, not all pages are necessarily targeted at the same place(s), see Argos v Argos para 51 and OmniBill para 15."

In the next paragraph, he set out a non-exhaustive the factors to be considered:

"i) The appearance of the web pages themselves, which can include explicit statements of an intention to provide goods or services to the public in the UK and the highlighting of the UK in lists or maps.
ii) Other aspects of the web pages such as language(s), currency(ies), telephone numbers, and the use of national top level domain names.
iii) The nature and size of the service provider's business, the characteristics of the goods or services offered and provided, and the number of visits made by the public from the UK."

Whether TuneIn's Services are targeted at the UK

Between paragraphs [19] and [33], the judge considered how TuneIn's services appeared to users in the UK. That included the oral and visual advertising, the language in which the services were offered, the categorization of local radio stations by reference to towns and cities within the UK and the language and currency in which premium services were offered.  He concluded that for all relevant purposes the acts of TuneIn complained of are targeted at the UK.

Meaning of "Communication to the Public"

Having found that TuneIn's services had been targeted at the UK it followed that the CDPA applied.  The learned judge referred to Mr Justice Arnold's judgment in Dramatico Entertainment Ltd v British Sky Broadcasting Ltd. [2012] EWHC 268 (Ch), [2012] RPC 27, [2013] Bus LR D24, [2012] ECDR 14, [2012] 3 CMLR 14, art 11bis of the Berne Convention, art 8 of the WIPO Copyright Treaty and Directive 2001/ 29/EC before considering s.20 CDPA.  

There had been a number of decisions of the Court of Justice of the European Union on communication to the public the principles of which had been discerned by Mr Justice Arnold at paragraph [12] of his judgment in Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 3479 (Ch):

"(1) 'Communication to the public. must be interpreted broadly: SGAE [2007] ECDR 2 at [36], [54], FAPL [2013] ECDR 14 at [186], ITV [2013] E.C.D.R. 9 at [20].
(2) 'Communication to the public' covers any transmission or retransmission of the work to the public not present at the place where the communication originates by wire or wireless means: ITV at [23].
(3) 'Communication to the public. does not include any communication of a work which is carried out directly in a place open to the public by means of public performance or direct presentation of the work: Circul (C-283/10) at [36]–[41], FAPL at [200]–[203].
(4) There is no 'communication to the public' where the viewers have no access to an essential element which characterises the work: Bezpecností [2011] ECDR 3 at [57].
(5) 'Communication includes any retransmission of the work by a specific technical means different from that of the original communication: ITV at [24]–[26].
(6) A mere technical means to ensure or improve reception of the original transmission in its catchment area does not constitute a 'communication': SGAE at [42], FAPL at [194], Airfield [2012] E.C.D.R. 3 at [74], ITV at [28].
(7) There is an act of 'communication' when someone gives members of the public access to the work in circumstances where they would not be able to enjoy the work without that intervention: SGAE at [42], FAPL at [194]–[196], Airfield at [72], SCF [2012] E.C.D.R. 16 at [82], PPIL [2012] E.C.D.R. 15 at [31].
(8) It is sufficient for there to be 'communication' that the work is made available to the public in such a way that the persons forming that public may access it whether or not those persons actually access the work: SGAE at [43].
(9) Mere provision of physical facilities does not as such amount to 'communication': SGAE at [46].
(10) Nevertheless, the installation of physical facilities which distribute a signal and thus make public access to works technically possible constitutes 'communication': SGAE at [46]–[47], Organismos (C-136/09) at [39]–[41].
(11) 'The public' refers to an indeterminate number of potential recipients and implies a fairly large number of persons: SGAE at [37]–[38], SCF at [84], PPIL at [33], ITV at [32].
(12) For that purpose, the cumulative effect of making the works available to potential recipients should be taken into account, and it is particularly relevant to ascertain the number of persons who have access to the same work at the same time and successively: SGAE at [39], SCF at [87], PPIL at [35], ITV at [33].
(13) In considering whether there is a communication to 'the public', it is not irrelevant that the communication is of a profit-making nature: SGAE at [44], FAPL at [204]–[206], Airfield at [80], SCF at [88]–[90], PPIL at [36].
(14) There is no communication to 'the public' where sound recordings are broadcast by way of background music to patients of a private dental practice: SCF at [92]–[102].
(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: SGAE at [40], Organismos at [38], FAPL at [197], Airfield at [72], [76], ITV at [38].
(16) There is a communication to a new public where television broadcasts are transmitted to an additional public (that is to say, additional to the public constituted by owners of television sets who receive broadcasts within their own private and family circle) such as customers of hotels and public houses: SGAE at [41], Organismos at [37], FAPL at [198]–[199].
(17) There is also a communication to a new public where a satellite package provider expands the circle of persons having access to the relevant works: Airfield at [77]–[82].
(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: ITV at [39]."

Since Paramount Home Entertainment International there had been further decisions from the Court of Justice from which Mr Justice Birss drew the following additional principles:

"i) Although the individual dimensions of the question need to be considered, ultimately the assessment of whether a party's actions amount to a 'communication to the public' is an individualised and case specific assessment which must be carried out as a whole.
ii) Providing a link to a work is capable of being an act of communication to the public, even if no one actually selects the link or goes to look at or listen to the work, because a link to a work makes a work available. In other words merely providing a link to a work available at another location on the internet can itself be an act of communication (Svensson, GS Media).
iii) An important distinction is between a case in which a work has been placed on the internet with the consent of the relevant rights holder and a case in which there has been no such consent. If the initial posting of the work was done with the relevant consent then it is itself an act of communication to the public and any subsequent alleged acts of communication to the public have to be analysed with that in mind. For a second act of communication to the public on the internet to be an infringement in that case, there must be a new public (or new technical means) and for the former to be determined one must work out what public was taken into account when the first act of communication took place.
iv) However the question of what public was taken into account when a work was the subject of first communication to the public cannot be answered without knowing the nature of the subsequent act of communication which is alleged to infringe (Svensson and Renckhoff). One does not simply ask – what public was taken into account? – rather one has to ask – were the public to whom the act of communication complained of is addressed taken into account in giving the consent to the first act of communication?
v) Approached that way, in a case in which a photograph is taken from one website and reposted on a second website, one asks: were visitors to the second website who will encounter the photograph posted on that website taken into account when the consent to the posting of the photograph on the first website was given? The answer may well be no because the rights holder should only be taken to have consented to the work appearing on the first website and being seen posted on that first site by visitors to that first site, and not be taken to have consented to the work being seen posted on a second website by visitors to that second website, who amount to a different class of visitors (Renckhoff).
vi) By the same token, in a case in which there is, on one website (A), a link to a photograph posted on another website (B), one asks: were visitors to website A who will encounter that link taken into account when the consent to the posting on the photograph on website B was given? The answer may well be yes because the rights holder should be taken to have understood that the internet includes that sort of linking and therefore to have consented to those links appearing on other websites and being seen by anyone on the internet (Svensson).
vii) Turning to cases in which the work was posted initially without the consent of any relevant rights holder, if that is what happened then it was not a relevant act of communication to the public at all. That means that any subsequent act of communication of that work risks being an act of communication to the public. Therefore re-posting the work on another site would be an infringement. However if all that a defendant has done is put up a link to the first posting of the kind in GS Media, then that act of communication is only an infringement if the person posting such a link knew or ought to have known that the original posting was without any consent. This follows from striking a balance between the rights of the copyright owner and the freedoms of expression and information.
viii) In a case in which the initial communication was without consent and the knowledge of the person posting the link is material, persons acting for financial gain will be presumed to have the requisite knowledge but can call evidence to rebut that presumption, while for persons acting not for financial gain the presumption is reversed and they will be presumed not to have the requisite knowledge unless the contrary is proved (GS Media). Either way, once the person posting the link is actually aware that the work was posted without the consent of the rights holder, they will commit an act of communication if they do not take down the link."

Whether Copyright has been infringed

The radio stations to which TuneIn's users could connect fell into 4 categories:
  • Category 1: radio stations licensed in the UK;
  • Category 2: radio stations not licensed in the UK or anywhere else;
  • Category 3: radio stations which are licensed for a territory other than the UK; and
  • Category 4: Premium stations created for TuneIn and made available exclusively for TuneIn's subscribers that are based in the USA, are not licensed for the UK at all and do not pay the statutory US licence fee.
The judge considered the output of the radio stations in category 3 first.  These included VRT Studio Brussel in Belgium, Deutschlandfunk in Germany, Mix Megapol in Sweden, Drechtstad FM, Sky Radio Hits and Shout FM in the Netherlands, and MavRadio in the USA. His lordship found that the claimants had expressly or impliedly licensed the original transmission to each station's local audience but not to an audience in the UK, That was a new public not contemplated within the original licence.

Category 2 stations such as Capital FM Bangladesh and Urban 96.5 Nigeria were located in countries where licensing was available but no licence had been obtained as well as others such as Country 104 in Canada Gakku FM in Kazahstan and Radio Dudelange in Luxembourg where a statutory remuneration scheme applies but had not been complied with.  Stations that had not been licensed even for local broadcasting could be in no better position than those in the third category. Further or alternatively, the 8th of the judge's additional principles based on the Court of Justice's decision in GD Media would apply.  Either way, making those stations' output available to a UK audience would constitute an infringement.

The learned judge dealt with the output of the premium stations in category 4 summarily. He said at paragraph [161]:

"The internet radio station streams in Category 4 were created exclusively for TuneIn. For these streams, there is no prior act of making them available to the public. That means the provision of those streams by TuneIn amounts to an act of communication to the public and, since it is targeted at the UK but unlicensed, it is an act of infringement."

The stations in category 1 included BBC Radio 2, Heart London, Classic FM and Jazz FM all of which were licensed to broadcast the claimants' music on the internet.  The judge held that the defendant's services did not infringe the claimants' copyrights since they did not make the music available to a new public.

Other Matters

The claimants complained of a recording facility on a Pro App which was available to British users until 2017 constituted a further infringement not just in respect of the output of stations in categories 2, 3 and 4 but also in respect of the output of radio stations in category 1 since recording and downloading had not been included in the original licence.  Users of the Pro App would have been personally liable unless they could take advantage of the time-shifting exception provided by s.20 of the CDPA.  In respect of infringements by users of the Pro App, TuneIn would be liable for authorizing infringements and joint tortfeasance. The judge considered the safe harbour provisions in Directive 2001/28/EC but found that TuneIn could not take advantage of any of them,

Summary

Mr Justice Birss summarized his findings at paragraph [213]:

"i) TuneIn's service (web based or via the apps), insofar as it includes or included the sample stations in Categories 2, 3, and 4, infringes the claimants' copyright under s20 of the 1988 Act.
ii) TuneIn's service (web based or via the apps), insofar as it includes the sample stations in Category 1, does not infringe the claimants' copyright under s20 of the 1988 Act.
iii) TuneIn's service via the Pro app when the recording function was enabled infringed the claimants' copyright under s20 of the 1988 Act insofar as it included the sample stations in Categories 1, 2, 3, and 4.
iv) Individual users of the Pro app who made recordings of sound recordings in claimants' repertoire will themselves have committed an act of infringement under s17 of the 1988 Act. Some but not all will have fallen within the defence in s70.
v) The providers of sample stations in Categories 2, 3, and 4 will (or did) infringe when their station was targeted at the UK by TuneIn.
vi) TuneIn is liable for infringement by authorisation and as a joint tortfeasor.
vii) TuneIn cannot rely on the safe harbour defences under Arts 12, 13 and 14 of the E-Commerce Directive."

Comment

This very important and substantial judgment is likely to be referred to for its analysis and reformulation of the law on targeting and also for its analysis and application of the case law on communication to the public.  The law on the topic remains complex but at least it is a lot clearer.  Anyone wishing to discuss this note may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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