Twentieth Century Fox & Others v BT
Twentieth Century Fox & Others v BT
The Hon Mr Justice Arnold
The Claimants were the members of the Motion Picture Association of America Inc. The Claimants sought an injunction against BT the largest UK ISP to stop its customers accessing a website at www.newzbin.co.uk (pursuant to s97A of the Copyright Designs and Patents Act 1988 (“the Act”) alleging BT , a service provider, had actual knowledge of another person using their service to infringe copyright). The case follows the Complainant’s successful action against the first site at that URL for copyright infringement (see ECLP issue XXX) which resulted initially in that site’s closure. A new almost identical site located offshore had, however, sprung up since at the same URL. As this new site was now outside UK jurisdiction the Claimants applied for an order against BT instead asking it to use technology to stop its customers accessing the site and announcing that if successful they would apply against other ISPs too.
BT accepted that it was a service provider. However it contended there was no jurisdiction to make the order on five grounds: neither the users or the operators of the site were using BT’s services to infringe copyright, it did not have actual knowledge of the infringements, it was a mere conduit, there was no general obligation on ISPs to monitor and it was contrary to human rights. It also said that even if there was jurisdiction, the order should not be granted because it would go beyond implementation of the rights of the Claimants and affect users that were not infringing, it would be deluged with similar claims, any blocking could be circumvented, the relief was not proportional and suggested it might be necessary to refer the questions to the CJEU.
The Judge agreed to grant the order requested by the Claimants in principle subject to hearing counsel on the precise wording of the order and refused a reference to the CJEU.
Unauthorised material was transmitted and likely to have been received and actively downloaded by BT Customers. The users were using the Newzbin service to infringe, but were also using BT’s services to infringe as well. Also Kitchen J in the previous copyright action against Newzbin had found that operators of a site like Newzbin’s authorised and were jointly liable for users’ infringements, so if the users were using the BT service to infringe then Newzbin was also. Kitchin J’s judgment also held that Newzbin were infringing by making available works in such a way that they could be accessed on BT’s network. As such that was sufficient for the operator of the Newzbin site to be using BT’s service to infringe. Article 12 (1) of the E Commerce Directive giving immunity for mere conduits was not relevant to this issue which specifically does not affect a Court’s power to direct a service provider to prevent an infringement.
“Actual Knowledge” in this context meant knowledge of use of the service to infringe and it was not necessary to prove actual knowledge of a specific infringement of a specific copyright work by a specific individual. Such knowledge can be given by a sufficiently detailed notice and a reasonable opportunity to investigate the position. BT had actual knowledge of users and the operators of the Newzbin site using its service to infringe copyright from the copyright action judgement and from such matters disclosed in evidence from the Studios. This was sufficient in itself, but BT also had knowledge from correspondence from the Studios that specific users were using its service to infringe copyright.
Section 97A of the Act gives the Court a specific and broad jurisdiction to grant an injunction against service providers which is not confined to granting an injunction prohibiting infringements of which service providers have actual knowledge. Following the CJEU decision in L’Oreal v EBay it was not confined to preventing continuation of infringements of which the service provider had actual knowledge, but could cover further infringements of the same kind and involve relief such as, but not limited to, suspension of accounts and disclosure of customer details.
Such an injunction was not contrary to the requirement of Article 15 (1) of the E Commerce Directive that service providers were not required to generally monitor information they transmit as the order would require them simply to block access to the relevant site by automatic means which did not involve detailed inspection of any data of users.
Such an injunction was also not contrary to Article 10 ECHR as the rights of property and freedom of expression were balanced by the Act and so it was “prescribed by law” within the meaning in Article 10 and was not excessive.
As such the Judge held he had jurisdiction to grant the order requested by the Studios. He declined to use his discretion not to grant the order. The Claimants’ rights were being infringed on a massive scale, non infringing uses of the Newzbin site were de minimis and, although other rights holders not joined into the action would benefit, this, in fact, supported the making of the order as they would be likely to support the application. BT had not shown that the granting of the order would lead to an undermining of its existing blocking systems for illegal material or put a strain on its network or impose substantial compliance costs. The fact that some users would circumvent the blocking measures did not mean that all would do so or that it would be ineffective especially as such circumvention methods could slow down the service and might cost users money. The order would be justified even if it only prevented access by a minority of users. The order was proportionate, necessary and appropriate to protect property rights and outweighed the rights to freedom of expression of users, the operators of the Newzbin site and if relevant, BT. The order was narrow and targeted and, if there was a change of circumstances, it could be varied. Costs to BT would be modest.
Requiring the studios to provide individual urls corresponding to files to BT would not be proportionate or practicable since it would require considerable ongoing effort and cost.
This is a major development and if the granting of such injunctions to copyright owners becomes commonplace the Digital Economy Act (“the DEA”) will be less widely used. Of course, applying to the Court for such an injunction is quite expensive and so the DEA may still be viable especially for SMEs. As for ISPs if they know that such injunctions will readily be granted they may, of course, agree more readily to co-operate with rights owners in very clear cases to avoid the management time and irrecoverable costs of going to court. Particularly interesting is the interpretation of the meaning of “actual knowledge” of ISPs and the nature of the injunction which the Judge indicated he was prepare to grant which was quite broad and very generous to those seeking the injunction. The Judge, no doubt mindful of the unfairness of delay to the rights owners, declined to make a reference to the CJEU. We await, of course, the final decision of the CJEU in the case of SABAM v Netlog NV involving similar issues and that could change things again. However, no doubt the film companies will be following up on their avowed intention to apply for more of these injunctions while the winds are still blowing in their favour.
Palmer Biggs Legal
If you require further information please contact us