Copyright - Columbia Pictures and others v BT Plc and others

Crossroads of the World

Author Carol M Highsmith   Public domain  Source Wikimedia Commons

 

Jane Lambert

Business and Property Courts, Intellectual Property Lost (Mrs Justice Falk) Columbia Pixtures Inc and others v British Telecommunications Plc and others [2021] EWHC 2799 (ch) (22 Oct 2021) 

This was an application by members and representatives of the US film and television programme-makers industry for a blocking order against the leading British internet service providers under s.97A of the Copyright Designs and Patents Act 1988 ("CDPA").  A blocking order is an injunction requiring an internet service provider to take steps to prevent its subscribers from accessing a proscribed website. 

S.97A provides:

(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.
(2) In determining whether a service provider has actual knowledge for the purpose of this section, a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to--  
(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6 (1) (c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and
(b) the extent to which any notice includes--
(i) the full name and address of the sender of the notice;
(ii) details of the infringement in question.
(3) In this section "service provider" has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002."

An order under s.97A was first sought in Twentieth Century Fox Film Corporation and others v Newzbin Ltd  [2010] EWHC 608 (Ch), [2010] ECDR 8, [2010] ECC 13, [2010] FSR 21, [2011] Bus LR D49, [2010] EMLR 17 which I successfully resisted.  Such an order was first granted by Mr Justice Arnold (as he then was) in Twentieth Century Fox Film Corporation and others v British Telecommunications Plc [2011] EWHC 2714 (Ch) (26 Oct 2011) [2012] 1 All ER 869, [2011] EWHC 2714 (Ch), [2012] Bus LR 1525 following his judgment in Twentieth Century Fox Film Corp and others v British Telecommunications Plc  [2012] 1 All ER 806, [2011] EWHC 1981 (Ch), [2011] RPC 28, [2012] Bus LR 1471.  I discussed those applications in Newzbin and the first British Telecommunications judgment in Copyright: Twentieth Century Fox Film Corp. v British Telecommunications Plc on 3 Aug 2011. 

The film and TV programme-makers sought an order blocking access to five websites that were alleged to have made available for streaming vast quantities of copyright-protected film and TV content without their licence. Those sites were not alleged to have hosted any infringing materials.  Instead, they provided links to such content on other sites.  They indexed those links, provided information about the content such as genres synopses, running times, release dates, language and ratings and regularly updated and promoted their selection of films and programmes.  The activities of those sites were funded by advertising,  

The application was made to Mrs Justice Falk in writing. The internet service providers did not oppose the application or participate in the proceedings though they did discuss the terms of the proposed order with the film and programme-makers.  Her ladyship held a hearing on 18 Oct 2021 at which the applicants were represented.   She handed down judgment on 22 Oct 2021 (see Columbia Pictures Industries Inc and others v British Telecommunications Plc and others [2021] EWHC 2799 (Ch) (22 Oct 2021)).

 At para [23] of her judgment, the judge directed herself as follows:

"The legal principles to apply are now well established. In summary, the jurisdiction to grant an order under section 97A is dependent on the court being satisfied that (1) the ISPs are service providers; (2) users and/or operators of the Target Websites infringe copyright; (3) users and/or operators use the services of the ISPs to do that; and (4) the ISPs have actual knowledge of that fact. If the court has jurisdiction, then it must consider whether, in all the circumstances and in particular having regard to proportionality, it is appropriate to make the order sought."

She had no doubt that the respondent ISPs were "service providers" within the meaning of the Act.  She held that the target sites had infringed copyright by communicating the film and programme-makers' works to the public and by authorizing users of their services in the United Kingdom to make copies of those works on their computers, smartphones, tablets or other devices.  Communicating films to the public is prohibited by s.20 of the CDPA and authorizing others to do an infringing act is prohibited by s.16 (2). The ISPs' subscribers used the ISPs' services to access the target sites and download the infringing material.  The ISPs had been made aware of those infringements by the application and the evidence in support.

Having satisfied herself that she had jurisdiction to make an order under s.97A, her ladyship considered whether it would be proportionate.  She referred to para [41] of Mr Justice Arnold's judgment in Nintendo Co Ltd v Sky UK Ltd and others [2019] ETMR 60, [2020] 2 All ER (Comm) 238, [2019] Bus LR 2773, [2020] ECDR 13, [2019] EWHC 2376 (Ch), [2019] WLR(D) 504, [2020] ECC 7, [2020] 3 All ER 83:

"The injunction must be (i) necessary, (ii) effective, (iii) dissuasive, (iv) not unduly costly or complicated, (v) avoid barriers to legitimate trade, (vi) a fair balance between the fundamental rights engaged, (vii) proportionate and (viii) safeguarded against abuse. Of these factors, proportionality is the key one, since consideration of the other factors feeds into the proportionality analysis."

In Mrs Justice Falk's view,  a blocking order did strike a fair balance between protecting the applicants' intellectual property rights and the subscribers' freedom of expression under art 10 of the Convention on Human Rights.  The public has no legitimate interest in accessing infringing copies of copyright works and any interference with those rights was justified.    She, therefore, made that order.

In 2019 I was invited to share my knowledge and experience of the early case law on blocking orders with the Advisory Committee on Enforcement of the World Intellectual Property Organization.  Professor Frederick Mostert and I were commissioned to write a Study on Intellectual Property Enforcement Measures, Especially Anti-piracy Measures in the Digital Environment and to discuss our findings before the Committee.  Recordings of our presentations can be accessed through my article Another Side of the  WIPO 5 Oct 2019 NIPC News.

On 7 July 2022 my good friend and colleague Christian Panayi will speak on IP Enforcement in the Digital Space: Tackling Online Piracy and Brand Squatting at our seminar Order and Disorder –The Entropy of IntellectualProperty Remedies at The Postal Museum at 18:00.   James Bridgeman SC, Professor Mark Engelman, Elizabeth Nicholls and I will also speak.  If you want to attend call our clerks on 020 7404 5252 or email them at clerks@4-5.co.uk.  Our chambers have acquired a lot of expertise in online enforcement over the years and I note in passing that the applicants' counsel in Columbia Pictures had been our head when he represented the MPAA in the British Telecommunications case.

In the meantime, anyone who wishes to discuss my article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.