Infringement - Artistic work - Claim arising from use of peer-to-peer file-sharing website

Dramatico Entertainment Ltd and others companies v British Sky Broadcasting Ltd and other companies (Mr Justice Arnold): Chancery Division: 20 February 2012

The claimant companies were record companies claiming on their own behalf and in a representative capacity on behalf of other members of British Recorded Music Industry Ltd and Phonographic Performance Ltd (BPI). Each claimant was in the business of making and exploiting sound recordings of musical works. To that end they owned or exclusively licensed the copyrights in such recordings.

The defendant companies were the six main retail internet service providers. The claimants sought an injunction against the defendants pursuant to section 97A of the Copyrights, Designs and Patents Act 1988 (the 1988 act), requiring the defendants to take measures to block or impede access by their customers to a peer-to-peer file-sharing website called The Pirate Bay.

The Pirate Bay described itself as the world's largest BitTorrent tracker. BitTorrent was a file-sharing protocol that enabled large and fast file transfers and had emerged as the dominant peer-to-peer protocol. It was an open tracker, where anyone could download and upload torrent files. The key part of the BitTorrent protocol was the creation and distribution of torrent files associated with particular content files. The operators of The Pirate Bay, who were Swedish, had left the Swedish jurisdiction after being convicted of criminal offences of aiding and abetting copyright infringement by the Swedish courts. They had proved difficult to locate. The parties agreed to a consent order directing the trial of two preliminary issues.

The issues were: first, on the evidence, whether users of The Pirate Bay had infringed the claimants' copyright in the UK and, secondly, whether the operators of The Pirate Bay had infringed the claimants' copyright in the UK. In relation to the first issue, two further issues arose as to whether the users of The Pirate Bay infringed their copyrights by: (i) copying sound recordings within section 17 of the 1988 act and (ii) communicating sound recordings to the public within section 20 of the 1988 act.

In relation to the operators, two further issues arose, as to whether (i) the operators had committed the tort of authorising infringements by UK users; and (ii) the operators were jointly liable for infringements by UK users. The 1988 act implemented article 8(3) of European Parliament and Council Directive (EC) 2001/29 (on the harmonisation of certain aspects of copyright and related rights in the information society). A further issue arose as to whether it was appropriate for the court to decide the preliminary issues in the absence of the operators of The Pirate Bay, since they had not appeared, been joined as parties or been served with the claim. The claim would be allowed.

(1) With regard to the non-addition of the owners of The Pirate Bay as parties to the instant claim: firstly, it was established law that there was no jurisdictional requirement to join them. Secondly, the case law suggested that in both the UK and other member states of the European Union it was not necessary to serve or join the third party in similar actions. Thirdly, the owners of The Pirate Bay had proved very difficult to locate following their departure from the Swedish jurisdiction. There was no reason to believe that the English courts would have any more success in locating them than the Swedish courts had done, and it would be impracticable, or at least disproportionate, to join them as parties (see [10]-[12] of the judgment).

(2) On the evidence, users of The Pirate Bay who had accounts with each of the defendants, and were hence in the UK, had been engaged in sharing (and hence making unlicensed copies of) the sample recordings. More broadly, on the evidence adduced by the claimants, over three million instances of illegal downloading of works of the BPI's members had been registered by the claimants' software, the vast majority of which had involved the BitTorrent protocol. Since The Pirate Bay was the most popular torrent site, it could be inferred that a substantial proportion of those downloads involved the use of The Pirate Bay (see [41], [42] of the judgment).

UK users of The Pirate Bay who had accounts with the defendants had infringed, and continued to infringe, the claimants' copyrights by copying the claimants' sound recordings on a large scale (see [43] of the judgment). Twentieth Century Fox Film Corp v Newzbin Ltd [2010] All ER (D) 43 (Apr) applied.

(3) On the case law, it was clear that the concept of communication had to be construed broadly. In deciding whether the recordings had been communicated to the public, it was necessary to decide (i) whether the recordings had been communicated by electronic transmission and (ii) whether the recordings had been communicated to a new public, as in a public which had not been taken into account by the right holders when authorising the distribution of the recordings (see [47], [69], [70] of the judgment).

In the instant case, since it was clear that UK users had been involved as both uploaders and downloaders, it was immaterial whether the act of communication to the public had been committed at the place of origination or the place of reception. As to whether such users had been communicating such recordings available to the public, they had made the recordings available by electronic transmission in such a way that member of the public could access the recordings from a place and time chosen by them. Since copies of the sound recordings had been made available to users who had not purchased them from an authorised source, the recordings had been communicated to a new public (see [68]-[70] of the judgment). The UK users of The Pirate Bay had infringed the claimants' copyrights by communicating recordings available to the public to a new public (see [71] of the judgment).

Norowzian v Arks Ltd (No 2) [1999] All ER (D) 1214 applied; Sociedad General de Autores y Editores de Espana v Rafael Hoteles SA: C-306/05 [2006] All ER (D) 103 (Dec) applied; Football Dataco Ltd v Sportradar GmbH [2010] All ER (D) 185 (Nov) applied; Bezpecnostni softwarova asociace - Svaz softwarove ochrany v Ministerstvo kultury [2010] ECR I-0000 considered; Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v Divani Akropolis Anonimi Xenodocheiaki kai Touristiki Etaireai [2010] ECR I-37 considered; Twentieth Century Fox Film Corp v Newzbin Ltd [2010] All ER (D) 43 (Apr) distinguished; ITV Broadcasting Ltd v TV Catchup Ltd [2011] All ER (D) 175 (Jul) considered; Airfield NV and Canal Digitaal BV v Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (Sabam) (C-431/09) and Airfield NV v Agicoa Belgium BVBA (C-432/09) [2011] ECR I-0000 considered; Football Association Premier League Ltd v QC Leisure: C-403/08 and C-429/08 [2011] All ER (D) 26 (Oct) considered.

(4) The grant or purported grant to do a relevant act might be express or implied from all the relevant circumstances. In a case which involved an allegation of authorisation by supply, those circumstances might include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constituted the means used to infringe, whether it was inevitable that it would be used to infringe, the degree of control which the supplier retained and whether he had taken any steps to prevent infringement. Those were matters to be taken into account and might or might not be determinative depending upon all the other circumstances (see [73] of the judgment).

The defendants had gone far beyond enabling or assisting acts of infringement. On any view they had sanctioned, approved and countenanced the infringements of copyright committed by users of The Pirate Bay. They had also purported to grant users the right to do the acts complained of (see [81] of the judgment). The operators had committed the tort of authorising infringements by UK users (see [81] of the judgment). Twentieth Century Fox Film Corp v Newzbin Ltd [2010] All ER (D) 43 (Apr) applied.

(5) Mere assistance or facilitation of a primary infringement would not be sufficient to prove the existence of joint tortfeasance. The joint tortfeasor had to have involved himself in the tort so as to make it his own. That would be the case if he had induced, incited or persuaded the primary infringer to engage in the infringing act, or if there was a common design or concerted action or agreement on a common action to secure the doing of the infringing act (see [82] of the judgment).

On the evidence, the operators of The Pirate Bay had induced, incited or persuaded the users of The Pirate Bay to commit infringements of copyright, and they and the users had acted pursuant to a common design to infringe. It was also relevant that the operators had profited by their activities (see [83] of the judgment). The operators were jointly liable for the infringements committed by users (see [83] of the judgment). Twentieth Century Fox Film Corp v Newzbin Ltd [2010] All ER (D) 43 (Apr) applied.

Ian Mill QC, Edmund Cullen and Tom Richards (instructed by Forbes Anderson Free) for the claimants; The defendants did not appear and were not represented.