Copyright - Warner Music UK Ltd and Others v TuneIn Inc, - The Order

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Jane Lambert

Chancery Division (Mr Justice Birss) Warner Music UK Ltd and another v Tunein Inc [2019] EWHC 3374 (Ch) (18 Dec 2019)

The claimants, and the groups they represent, own or hold the exclusive licences to copyright in sound recordings of music. Together, they account for more than half the market for digital sales of recorded music in the UK and about 43% globally.   If a radio station wishes to play a record in the claimant's repertoire it needs a licence from the claimant which it can obtain directly from one of the claimants or indirectly from a collecting society.

As most radio stations broadcast primarily to listeners who can receive their radio signals those licences tend to be restricted to the country in which they are located.  It is now possible for radio stations to broadcast over the internet. Some stations such as the BBC broadcast over the air and internet simultaneously.  Others broadcast only over the internet.  Potentially, every radio station that broadcasts over the internet has a worldwide audience for its transmissions.

The problem for copyright owners is that they usually receive payments only for transmissions of their music to listeners who can receive a station's radio signal.  They receive nothing for transmissions to listeners many miles away who receive a broadcast over the internet.  That did not matter while the audience for internet broadcasts was small but the defendant provides a service through its website that facilitates reception over 200 platforms including smartphones, tablets,  personal computers, televisions, car audio systems, smart speakers and all sorts of wearable devices.  The defendant's website links to over 100,000 radio stations, broadcast by third parties from many different geographic locations around the world. The service is monetized through advertising and subscriptions none of which goes to the claimants or other copyright owners.

The claimants sued the defendant for copyright infringement by communicating their work to the public which is restricted by s.20 of the Copyright, Designs and Patents Act 1988.  The action came on first before Mr Justice Henry Carr who died before he could deliver judgment.   Rather than hold a fresh trial, the parties agreed that Mr Justice Birsss should try the action on the basis of the transcripts of oral evidence as well as the written evidence that had been before Mr Justice Henry Carr and any submissions that either party might wish to make to Mr Justice Birss.

Mr Justice Birss heard the parties' submissions on 26 and 27 Sept 2019 and delivered judgment on 1 Nov 2019.  By his judgment which I discussed in  Copyright - Warner Music UK Ltd and Others v TuneIn Inc. on 4 Nov 2019, Mr Justice Birss held that the defendant had infringed copyright by facilitating reception of all broadcasts other than those that were transmitted over the air primarily to listeners in the UK. 

In a further hearing held on 18 Dec 2019, Mr Justice Birss decided the appropriate injunctive and other relief, whether or not to grant permission to appeal and costs.

Because the defendant's service carries between 70,000 and 100,000 radio stations, the case was managed so that the liability trial was conducted by reference to samples.  At a case management conference held on 23 April 2018, the master made the following order:

"9. The trial of the claim in relation to the issues of liability will proceed by way of determination of the Issues by reference to a sample as follows:
(1) By no later than 4.00pm on 18 June 2018, the claimants and the defendant will each nominate 5 radio stations which they allege fall into the following categories (together the "Sample Stations"):
(i) 5 music radio stations which are or have been indexed on the defendant's platform and are licensed in the UK; and
(ii) 5 music radio stations which are or have been indexed on the defendant's platform and are not licensed in the UK or elsewhere;
(iii) 5 music radio stations which are or have been indexed on the defendant's platform and are licensed for a territory other than the UK;
(iv) 5 Premium music radio stations which are or have been indexed on the defendant's platform.
(2) [terms as to sample sound recordings]
(3) The trial of the issues in relation to radio stations, and the directions set out in the remainder of this Order, will be limited to the Sample Stations and the Sample Recordings.
(4) Until further order, the determination of any issues in relation to the Sample Stations shall apply only in respect of those Sample Stations. Following the determination of those issues, the parties shall have permission to apply for further directions as to (i) the scope and effect of the Court's findings and (ii) the determination of all and any issues as to the extent to which acts of infringement of copyright in the Claimants' Works (and/or in any particular Claimants' Work) have taken place.
(5) The parties have permission to apply for such further or other directions as may be appropriate (including as to the sampling of stations or recordings) to enable the issues of liability to be determined."

The defendant submitted that any injunctive relief or damages should be limited to the individual sample stations unless and until there had been a finding about other stations. The claimants contended that the relief should be in general terms. Mr Justice Birss agreed with the claimants for the following reason:

"In my judgment the answer to the defendant's submission is that the conclusion reached in the main judgment justifies relief in general terms, not limited to the individual samples. The mechanism set out in the directions was an appropriate one because until one knew what the conclusion of the trial was, one could not say in advance what its effect and the consequences would be. For example, for all one knew at the time of making the directions, the result could have turned on a detailed examination of differences between different sample sound recordings or between different stations within the individual categories. However in the result it did not. Putting this in terms of the process envisaged by paragraph 9(4), I find that the scope and effect of the findings actually made means that relief in general terms is appropriate. The result does not turn on any details about individual sound recordings at all, nor does the result turn on distinctions between stations in the four categories, nor has there emerged a fifth category of station which the findings do not apply to."

Much the same applied to the scope of the inquiry as to damages:

"In terms of the inquiry as to damages, it is a commonplace in intellectual property disputes that liability is decided by reference to particular instances of the activity alleged to infringe (i.e. samples) but that the scope of the damages inquiry is general. Now if, on the inquiry, instances emerge which raise issues which the main trial has not determined, then there are various ways forward. Experience shows that these problems are usually readily resolved by case management in the inquiry. It is not the law that detailed issues of liability not decided at the liability trial cannot be decided in the inquiry; the test is one of justice and convenience (see Norris J in Fabio Perini v LPC [2012] EWHC 911 (Ch) at paragraphs 44-51). If it is really necessary, then a distinct second liability trial could be conducted. In the present case I can see no justification at all for limiting the inquiry to the sample stations."

The claimants sought an injunction to restrain the defendant from infringing the claimants' copyright. The immediate difficulty with that was that the claimants' repertoire was not defined. The claimants resisted having to do that. In the judge's view, there was a close analogy between the case before him and those brought by collecting societies such as PPL and PRS against defendants such as retailers and public house owners who do not have a licence to play the works in public. Once infringement is established based on samples, a general injunction to restrain infringement of the collecting societies' rights is granted but it is limited to a defined repertoire. His lordship noted:

"Crucially, the collecting society also gives an undertaking to maintain a searchable database of its repertoire on the internet and to keep it reasonably up to date. The collecting society also undertakes to answer reasonable questions about particular sound recordings. This strikes a fair and proportionate balance between the rights of the copyright owners and the position of the infringer. Notably, the rights in issue, in this case, are likely to be covered by these sorts of injunctions when PPL takes action because Warner and Sony are members of PPL"

The learned judge concluded at paragraph [28] that:

"The just and proportionate injunction to grant following the finding in the main judgment is a general injunction to restrain copyright infringement with a provision providing reasonable clarity about the claimants' repertoire."

According to paragraph [17] of his decision, Mr Justice Birss gave permission to appeal and he also stayed execution of the final injunction pending appeal for the following reason:

"The stay was appropriate considering the balance of convenience because any injunction would be disruptive to the defendant, whereas the claimants license their rights. I also took into account that this stay gives the defendant plenty of lead time so that, in the event the appeal is unsuccessful, it cannot then say it had no warning what the consequences would be. The time allows the defendant to start now to prepare for the final injunction to come into effect."

Finally, the judge reduced the claimants' costs by 25% because the defendant had successfully argued that facilitating access to radio stations in the UK that broadcast primarily to listeners in the UK did not infringe copyright.

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