Infringement – Defence

ITV Broadcasting Ltd and other companies v TV Catchup Ltd: Chancery Division, Patents Court: 18 July 2011

The defendant company, TVC, operated an interest based live streaming service of broadcast television programmes, including films, in which the claimant companies, the claimants, owned the copyright. The claimants brought a case of infringement of copyright against TVC relying on two categories of copyright work, namely, broadcasts and films. The claimants alleged that copyright in each category of work had been infringed by (a) communication of the works to the public contrary to s 20(1)(c) of the Copyright Design and Patents Act 1988, as amended, (the 1988 Act) and (b) by making, or authorising the making of, transient copies of the works in TVC's servers and on the screens of users.

Section 20 of the 1988 Act, before the amendment, provided that 'the broadcasting of work or its inclusion in a cable programme service is an act restricted by the copyright in literary, dramatic, musical or artistic work, sound recording or film or a broadcast or cable programme'. The amendment replaced 'broadcasting' with 'the communication to the public' and included both wired and wireless transmissions. Exceptions to s 20 of the 1988 Act were provided by s 28A which provided, inter alia, that copyright in a literary work, other than a computer program, or in a dramatic, musical or artistic work was not infringed by the making of a temporary copy which was transient or incidental.

Broadcasts were apparently omitted from s 28A of the 1988 Act. TVC answered the case of infringement of broadcast copyright by communication to the public in two main ways. First it contended that the amended version of s 20 of the 1988 Act was invalidly enacted, as it lay outside the power of the Secretary of State to introduce the legislation under s 2(2)(b) of the European Communities Act 1972 (the 1972 Act), namely Council Directive (EC) 2000/29 (on the harmonisation of certain aspects of copyright and related rights in the information society) (the Directive). Secondly, it contended that what it did was not in any event 'communication to the public' within the meaning of the amended section. The main defence relied on by TVC in relation to the allegation of making or authorising the making of transient copies of broadcasts were, firstly, that the copies were not substantial parts of the works relied on and secondly that s 28A of the 1988 Act (temporary copies having no independent significance) applied.

Turning to film copyright, TVC contended, as with broadcasts, that its service was not a communication to the public of the film, that they were not making or authorising the making of transient copies of a substantial part of the film, and that their activity was again protected by s 28A of the 1988 Act. In addition to those main defences and in relation to some only of the channels which TVC broadcast, TVC contended that they had the defence afforded by s 73(2)(b) of the 1988 Act, which stated that copyright in a broadcast was not infringed if the broadcast was made for reception in the area in which it was re-transmitted by cable and formed part of a qualifying service, and 73(3) of the 1988 Act (the reception area defence). If it applied, it applied to the qualifying services as a defence to both broadcast and film copyright and however the case on infringement was put.

The issues were, inter alia, (i) whether s 20 of the 1988 Act, as amended, went further than was required by the provisions of the Directive and if so whether it was within the powers given to the secretary of state under s 2(2) of the 1972 Act; (ii) whether, having regard to the principles in SAGE v Rafael Hotels [2006] All ER (D) 103 (Dec)(Rafael), TVC had been communicating the claimants broadcasts or films to the public within s 20 of the 1988 Act; (iii) whether by re-transmitting the broadcasts and films, TVC had made a copy of the whole or a substantial part thereof, or had authorised other to do so; (iv) whether having regard to the principles of interpretation in Marleasing SA v Commercial Internacional de Alimentation SA [1992] 1 CMLR 305, (Marleasing) the list of rights in s 28A of the 1988 Act included broadcast copyright; (v) whether, having regard to the case of Football Association Premier League v QC Leisure [2008] EWHC 1411 (CH) (FAPL), in which an opinion was awaited from the Court of Justice of the European Communities (ECJ), the s 28A defence applied to the facts of the instant case; (vi) whether TVC were entitled to the defence in s 73(2)(b) of the 1988 Act.

The court ruled: Section 2(2)(b) of the 1972 Act was not to be approached restrictively. The primary objective of any legislation implemented under that section had to be to bring into force laws which, by treaty, the United Kingdom had agreed to make as part of her laws. Section 2(2)(b) allowed for legislation which was not necessarily for the implementation of the Directive, which was consistent with the Directive but which did not have the same purpose (see [66] of the judgment).

(1) In the instant case, the amendments were closely and naturally related to the subject matter of the Directive. The purpose of the Directive was merely to require member states to implement the provisions of substantive law. However, the Directive provided for minimum standards of harmonisation, and had been enacted in a context of progressive overall European harmonisation which had recognised the rights of member states to go further. The extent to which s 20 of the 1988 Act had gone further than the Directive required could be fairly regarded as a small further step along the same road as was pursued by the Directive and the other European legislation in relation to copyright (see [74] of the judgment).

Section 20(1)(c) of the 1988 Act had not been enacted without proper powers (see [79] of the judgment).

R v Secretary of State for Trade and Industry, ex p UNISON [1996] IRLR 438 considered; Oakley Inc v Animal Ltd (Secretary of State for Trade and Industry intervening) [2005] All ER (D) 222 (Oct) considered; R (on the application of Cukurova Finance International Ltd) v HM Treasury [2008] All ER (D) 02 (Nov) considered.

(2) The principles which it was possible to extract from Rafael did not go far enough to enable the court to answer the question of whether TVC had been communicating the claimants' broadcasts or films to the public within s 20 of the Act and therefore the question would be referred for the opinion of the ECJ (see [80], [90] of the judgment).

Sociedad General de Autores y Editores de Espana v Rafael Hoteles SA: C-306/05 [2006] All ER (D) 103 (Dec) considered.

(3) The issue as to whether by re-transmitting the broadcasts and films, TVC had made a copy of the whole or a substantial part thereof, or had authorised another to do so would also be referred for the opinion of the ECJ (see [105], [112] of the judgment).

(4) The English courts when interpreting statutes designed to give effect to European Union legislation was obliged to construe the English legislation so far as possible to make it compatible with the EU legislation (the Marleasing principle). That approach to construction went further than permitted under purely domestic law (see [116] of the judgment).

In the instant case, no material had been shown which had suggested that there had been any policy reason for the omission of broadcast copyright from the list of rights in s 28A of the 1988 Act. There was nothing inconsistent with the grain of the legislation to read s 28A as if it had contained a reference to broadcast copyright (see [119] of the judgment).

The list of rights in s 28A of the 1988 Act included broadcast copyright (see [121] of the judgment).

Marleasing SA v La Comercial Internacional de Alimentacion SA: C-106/89 [1992] 1 CMLR 305 applied; Litster v Forth Dry Dock and Engineering Co Ltd [1989] 1 All ER 1134 applied; Revenue and Customs Comrs v IDT Card Services Ireland Ltd [2006] All ER (D) 220 (Jan) applied; Ghaidan v Godin-Mendoza [2004] All ER (D) 210 (Jun) considered.

(5) The court would defer judgment on s 28A of the 1988 Act until the outcome of the FAPL case was known (see [129] of the judgment).

(6) In the instant case, TVC were entitled to the benefit of the defence under s 73 of the 1988 Act, in respect of qualifying services, except to the extent (a) that it re-transmitted for reception by mobile phone and (b) for reception outside the regional area of the service in question (see [143] of the judgment).

James Mellor QC and Jessie Bowhill (instructed by Olswang LLP) for the claimants. Martin Howe QC and James Whyte (instructed by Hamlins LLP) for TVC. James Eadie QC, Charlotte May and Ben Jaffey (instructed by the Treasury Solicitor) for the Intervenor, the secretary of state.