United Kingdom Copyright Decisions 2019

Abstract

This report highlights the main UK copyright decisions in 2019, which relate to joint authorship of copyright works; the right to communicate a work to the public in the context of an audio streaming service; blocking injunctions in cases involving a breach of the statutory protections against the circumvention of technological protection measures; the subsistence of copyright in unconventional subject matter; and the availability of Norwich Pharmacal orders against internet service providers.

FormalPara Legislation

Copyright, Designs and Patents Act 1988 (UK); Data Protection Act 2018 (UK); European Enforcement Directive 2004/48/EC; European Information Society Directive 2001/29/EC; General Data Protection Regulation 2016/672

FormalPara Cases

Cartier International AG v. British Sky Broadcasting Ltd [2014] EWHC 3354 (Ch); Cartier International AG v. British Sky Broadcasting Ltd [2016] EWCA Civ 658; Cartier International AG v. British Sky Broadcasting Ltd [2018] UKSC 28; Donoghue v. Allied Newspapers Ltd [1938] Ch 106; GS Media BV v. Sanoma Media Netherlands BV C-160/15; Islestarr Holdings Ltd v. Aldi Stores Ltd [2019] EWHC 1473 (Ch); Golden Eye International Ltd v. Telefónica UK Ltd [2012] EWHC 723 (Ch); Golden Eye International Ltd v. Telefónica UK Ltd [2012] EWCA Civ 1740; Kenrick v. Lawrence (1890) 25 QBD 99; L’Oreal SA v. eBay International AG C-324/09; Land Nordrhein-Westfalen v. Renckhoff C-161/17; Martin v. Kogan [2017] EWHC 2927 (IPEC); Martin v. Kogan [2019] EWCA Civ 1645; Mircom International Content Management & Consulting Ltd and Golden Eye International Ltd v. Virgin Media Ltd [2019] EWHC 1827 (Ch); Nintendo Co Ltd v. Sky UK Ltd [2019] EWHC 2376 (Ch); Norwich Pharmacal Co v. Customs and Excise Commissioners [1974] AC 133; Racing Partnership Ltd v. Ladbrokes Betting & Gaming Ltd [2019] EWHC 1156 (Ch); Robin Ray v. Classic FM Plc [1998] FSR 622; Soulier and Doke v. Premier Ministre and Ministre de la Culture et de la Communication C-301/15; Svensson v. Retriever Sverige AB C-466/12; Warner Music UK Ltd and Sony Music Entertainment UK Ltd v. TuneIn Inc [2019] EWHC 2923 (Ch)

1 Authorship

This report highlights a number of UK copyright decisions from the previous year that may be of interest to comparative lawyers. Perhaps the most significant of these is the decision of the Court of Appeal in Martin v. Kogan,¹ which concerned the authorship of the screenplay on which the film Florence Foster Jenkins was based. The claimant, a professional writer of film and television scripts, sought a declaration that he was the sole author of the screenplay. The defendant, who had lived with the claimant as his partner during the period when early drafts of the screenplay were being produced, filed a counterclaim for a declaration that she was a joint author of the screenplay. This was on the basis that she had provided the technical musical language featured in the screenplay, as well as suggestions for a number of scenes.

At first instance, HHJ Judge Hacon found in favour of the claimant, holding that the defendant’s contributions were insufficient to qualify her as a joint author.² In particular, he described the defendant’s non-textual contributions to a number of scenes as no more than “minor plot suggestions”. In doing so, the judge drew a distinction between the “primary skill” required to create a work and other “secondary skills”. In the context of a screenplay, he explained, the primary skill lay in the selection and arrangement of words in the course of setting them down, while secondary skills included inventing plot and character. He also observed that a putative joint author whose contribution lay in the use of secondary skills would find it more difficult to establish joint authorship, as previous case law “sets the bar high when it comes to secondary skills”.

On appeal, the distinction drawn by the first instance judge between primary and secondary skills was rejected by the Court of Appeal. The Court of Appeal described the distinction as being “positively unhelpful”, as it “tends to imply that less weight is to be given to ideas than to written words, when both are essential components of the work”. The Court of Appeal went on to explain that it was wrong to describe the invention of plot and character as a secondary skill. It emphasised that “[t]he arrangement of situation and plot, as well as character development, can be of the essence of a literary or dramatic work”. On this basis, the Court of Appeal found that the first instance judge had failed to take full account of the defendant’s non-textual contributions to the plot of the screenplay and the shaping of the main character. The Court of Appeal also observed that, in dismissing some of the defendant’s contributions as “minor plot suggestions”, it was likely that the first instance judge had in mind an unduly high bar for claims of joint authorship based on the exercise of secondary skills. Accordingly, the defendant’s appeal was allowed, and a retrial before a different judge was ordered. The Court of Appeal’s judgment thus comes as a welcome corrective to a line of case law on joint authorship which has tended to emphasise contributions to the text of the work itself, while giving less weight to equally important non-textual contributions.³

2 Communication to the Public

In Warner Music UK Ltd and Sony Music Entertainment Ltd v. TuneIn Inc,⁴ the High Court had the opportunity to consider the scope of the right to communicate a work to the public in the context of an audio streaming service. The claimants in this case were the owners and exclusive licensees of the copyright in sound recordings of a large number of musical works. The defendant was the operator of an online platform called TuneIn Radio, which enabled its users to access radio stations from around the world. It was the claimants’ contention that the defendant required a licence from the claimants in order to carry out its activities lawfully. However, this was disputed by the defendant, on the basis that TuneIn Radio itself did not transmit or store any music, but merely provided its users with hyperlinks to third-party radio stations.

In arriving at his judgment, Birss J reviewed the jurisprudence of the CJEU on the right of communication to the public in the online environment, focusing on the cases of Svensson v. Retriever Sverige AB,⁵GS Media BV v. Sanoma Media Netherlands BV,⁶Soulier and Doke v. Premier Ministre and Ministre de la Culture et de la Communication,⁷ and Land Nordrhein-Westfalen v. Renckhoff.⁸ From this body of case law, he summarised the following eight principles: (i) the assessment of whether a party’s actions amount to “communication to the public” is an individualised and case-specific assessment which must be carried out as a whole; (ii) providing a hyperlink to a work is capable of being an act of communication to the public, even if no one actually selects the link or goes to look at or listen to the work; (iii) if the initial posting of the work on the internet was done with the consent of the rightholder, then a subsequent act of communication to the public on the internet of the same work will only be an infringement where the communication is to a “new public”. To determine whether this is the case, it is necessary to work out what public was taken into account when the first act of communication took place; (iv) the question of what public was taken into account when the first act of communication took place cannot be answered without knowing the nature of the subsequent act of communication which is alleged to be infringing. One must ask: was the public to whom the subsequent act of communication was addressed taken into account by the rightholder in giving consent to the first act of communication? (v) following that approach, where a photograph is taken from one website and reposted on a second website, the rightholder might be taken only to have consented to the work being seen posted on that first website by visitors to that first website, and not be taken to have consented to the work being seen posted on a second website by visitors to that second website, who amount to a different class of visitors;⁹ (vi) where a website contains a hyperlink to a photograph posted on another website, the rightholder might be taken to have understood that the internet includes this sort of hyperlinking and therefore to have consented to those hyperlinks appearing on other websites and being seen by anyone on the internet; (vii) where the work was posted initially on the internet without the consent of the rightholder, then any subsequent act of communication risks being an infringing act of communication to the public. However, if all that the defendant has done is provide a hyperlink to the work, then the act of communication will only be infringing if the defendant knew or ought to have known that the initial posting was without the consent of the rightholder; and (viii) where the initial posting of the work was done without the rightholder’s consent and the knowledge of the person providing the hyperlink is material, persons acting for financial gain will be presumed to have the requisite knowledge but can call evidence to rebut that presumption, while persons acting not for financial gain will be presumed not to have the requisite knowledge until the contrary is proved.

Applying these principles to the facts of the present case, Birss J held that the defendant’s provision to UK-based users of hyperlinks to radio stations that already held licences to communicate the claimants’ sound recordings to the public in the UK did not amount to an act of communication to the public, and was therefore non-infringing. Although the nature of TuneIn Radio’s activities might be different from those of the radio stations, it was still directed at the very same users in the very same territory. In contrast, the defendant’s provision to UK-based users of hyperlinks to radio stations that either did not hold licences to communicate the claimants’ sound recordings to the public in the UK, or did not hold licences in respect of those sound recordings at all, was held to be an infringing act of communication to the public. In cases where the radio stations held licences for a territory other than the UK, their initial communication to the public of the claimants’ sound recordings would indeed be made with the rightholders’ consent. However, the scope of this consent only applied to users within the territory covered by the licence. Because of this, the effect of the defendant’s activities was to communicate the sound recordings to a new public, and therefore infringing unless licensed by the claimants. In cases where the radio stations held no licence in respect of the claimants’ sound recordings at all, the position was even more clear-cut. In such circumstances, the initial communication by the radio stations would indisputably be made without the consent of the rightholders. Because the defendant was acting for financial gain, this gave rise to the presumption that it knew those sound recordings had been made available without the necessary consent. This meant that its subsequent act of hyperlinking to those radio stations would amount to an infringing act of communication unless it could successfully rebut that presumption. The defendant attempted to do so, arguing that it required all internet radio stations to provide it with a warranty that they had the necessary licences. On the facts, however, Birss J found that not all of the radio stations associated with the defendant had provided such a warranty. Furthermore, even taken at its highest, the warranties amounted only to a representation that the radio stations to which they applied were operating lawfully in their home jurisdictions, and made no representation as to the legal position in the UK. In any event, Birss J was not satisfied on the facts of the case that the defendant took the warranties sufficiently seriously for them to be relevant to the state of the defendant’s knowledge under the case law relating to hyperlinking.

3 Blocking Injunctions

The case of Nintendo Co Ltd v. Sky UK Ltd¹⁰ represents the latest development in the case law on website blocking injunctions. The claimant was the manufacturer and distributor of the popular Nintendo Switch games console. It sought an injunction requiring the defendant internet service providers (“ISPs”) to block, or at least impede, their customers’ access to four websites which advertised, distributed and offered for sale devices enabling the circumvention of technological protection measures (“TPMs”) built into the Nintendo Switch console. The basis of the claimant’s application was primarily the protection of its trade mark rights, but it also relied on the statutory protections against the circumvention of TPMs set out in Secs. 296 and 296ZD of the Copyright, Designs and Patents Act 1988 (“CDPA”).

Website blocking injunctions were first granted against ISPs whose services were being used by their customers to infringe copyright pursuant to Sec. 97A of the CDPA. This confers a power on the High Court to issue an injunction against a service provider where that service provider has actual knowledge of another person using their service to infringe copyright.¹¹ While there is no equivalent legislative provision in relation to other types of intellectual property rights, the UK Supreme Court has confirmed in Cartier International AG v. British Sky Broadcasting Ltd¹² that such an injunction can be granted in respect of infringements of other types of intellectual property rights under the general jurisdiction of the court. Cartier International AG also laid down four threshold conditions that would need to be satisfied in order for such an injunction to be granted, namely: (i) the defendants must be intermediaries within the meaning of the Enforcement Directive; (ii) the users and/or operators of the websites are infringing the claimants’ intellectual property rights; (iii) those users and/or operators are using the defendants’ services to infringe; and (iv) the defendants have actual knowledge of this, which may be the result of a notification from the claimants.

In the present case, Arnold J held that the court’s jurisdiction to grant website blocking injunctions was not confined to cases involving the infringement of intellectual property rights, but also extended to cases involving the infringement of the statutory protections against the circumvention of TPMs. He also held that the criteria to be applied in granting such an injunction were analogous to the four threshold conditions set out in Cartier International AG, subject to the qualification that it might not be necessary for the defendants to be intermediaries within the meaning of the Enforcement Directive. On the facts, Arnold J held that these four conditions were fulfilled, as: (i) it was well-established that the defendants were intermediaries; (ii) the operators of the four websites were infringing the claimant’s rights in the UK; (iii) the evidence showed that the operators were using the defendants’ services to do so; and (iv) the defendants had actual knowledge of this, having been notified by the claimant.

Arnold J then went on to apply eight further criteria that had been developed through the CJEU’s jurisprudence on blocking injunctions, namely that the injunction must: (i) be necessary; (ii) be effective; (iii) be dissuasive; (iv) not be unduly costly or complicated; (v) avoid barriers to legitimate trade; (vi) strike a fair balance between the fundamental rights engaged; (vii) be proportionate; and (viii) contain safeguards against abuse.¹³ On the facts, he held that injunction was necessary to prevent, or at least reduce, substantial damage to the claimant, as substantial quantities of pirated games had already been downloaded and installed on Nintendo Switch consoles by users in the UK using the circumvention devices. The evidence from Cartier International AG showed that blocking injunctions were both effective and dissuasive: while they were quite easily circumvented, they did have the effect of reducing traffic to the target websites. Because the defendants already had the necessary technology for implementing blocking injunctions, it would not be unduly costly or complicated for them to do so. As the target websites did not appear carry on any legitimate trade, the injunction sought by the claimant would not present a barrier to legitimate trade. The injunction also struck a fair balance between protection of the claimant’s rights and the fundamental rights of the defendants and the general public, as the defendants’ rights to carry on business was unaffected, while the public had no legitimate interest in being informed about or purchasing circumvention devices. For all of these reasons, the injunction was proportionate and ought to be granted.

4 Subsistence of Copyright

Questions relating to the subsistence of copyright were discussed in two cases. The first of these was Islestarr Holdings Ltd v. Aldi Stores Ltd,¹⁴ which involved a makeup palette sold by the claimant under its well-known Charlotte Tilbury brand. At issue were two artistic works featured in the palette: the “Starburst Design” which decorated the lid of the palette, and the “Powder Design” which was embossed into the two makeup powders in the palette. The defendant, a well-known retailer of so-called “copycat” products, had produced a similar makeup palette, which was sold at a much lower price compared to the claimant’s palette. The claimant contended that both the Starburst Design and Powder Design had been copied by the defendant’s palette.

On the facts, Deputy Master Linwood found both that copyright subsisted in the claimant’s artistic works and that the defendant had infringed the claimant’s copyright by reproducing a substantial part of the works in question. The most interesting aspect of the judgment concerns the subsistence of copyright in works that are ephemeral in nature. The defendant sought to argue that no copyright could subsist in the Powder Design, as it would disappear once the powder was used. This argument was rejected by the judge, who held that the Powder Design could, in principle, be the subject matter of copyright protection notwithstanding its ephemerality. This, the judge indicated, was the correct position as a matter of both principle and policy, as otherwise the creator of a sculpture made out of sand on a tidal beach that was subsequently washed away, or the creator of a bespoke wedding cake, would be unable to claim copyright over their work.

The second case to raise issues relating to the subsistence of copyright was Racing Partnership v. Ladbrokes Betting and Gambling Ltd.¹⁵ The claimant was in the business of producing live betting and horse-racing data collated at racecourses, which it sold to off-course bookmakers. A particularly vital piece of information for off-course bookmakers was the “Betting Show”, or a single representative price for each horse in a race, which enabled off-course bookmakers to offer odds to their customers which reflected the odds being offered by on-course bookmakers. This was generated by an algorithm into which was fed a selection of the fixed odds offered by a sample of on-course bookmakers. The claimant contended that the copyright in its Betting Shows had been infringed by the defendant, which was also in the business of producing live betting and horse-racing data. This was on the basis that the defendant, in generating to its own Betting Shows, routinely referred to the claimant’s Betting Shows, and was in the practice of changing its prices so as to be close to the claimant’s Betting Shows.

One of the issues that arose was whether copyright subsisted in the claimant’s Betting Shows in the first place. Zacaroli J answered this question in the negative, holding that the way in which the Betting Shows were generated meant each Betting Show did not reach the required threshold of originality. What is notable, however, is that in making his assessment of originality, Zacaroli J referred exclusively to the traditional British test of “labour, skill and judgment”, and made no mention of the European standard of “author’s own intellectual creation”. In particular, he described the process of arriving at each Betting Show as “pure routine work, involving no sufficient skill, labour and judgment”.

Zacaroli J also went on to hold that, even if copyright did subsist in the claimant’s Betting Shows, it had not been infringed by the defendant. It was the claimant’s contention that, in publishing a price that was close to, but not the same as, the price appearing in the claimant’s Betting Shows, the defendant was copying a substantial part of the claimant’s work. However, this contention was rejected by the judge, who held that, given the simplicity of the Betting Shows, only exact copying was capable of constituting infringement. This echoes the well-known decision in Kenrick v. Lawrence,¹⁶ which involved a very rudimentary drawing of a hand pointing to a square on a ballot paper. While the High Court held that the drawing was protected by copyright notwithstanding its simplicity, it also held that the minimal level of labour, skill and judgment invested in the drawing meant that nothing short of an exact reproduction would infringe.

5 Norwich Pharmacal Order

In Mircom International Content Management & Consulting Ltd and Golden Eye International Ltd v. Virgin Media Ltd,¹⁷ the High Court had an opportunity to consider the rules surrounding the availability of Norwich Pharmacal orders that would compel ISPs to disclose to rightholders the names and addresses of internet users who appeared to have unlawfully downloaded the claimants’ pornographic films.¹⁸ One of the claimants in the present action had previously succeeded in obtaining a Norwich Pharmacal order in Golden Eye International Ltd v. Telefónica UK Ltd (“the first Golden Eye litigation”),¹⁹ on facts that were virtually identical to those of the present case. On the facts and evidence before him, Mr Recorder Douglas Campbell QC (sitting as a High Court judge) refused to grant the order sought. This was because of the very poor quality of the evidence provided by the claimants in support of their application.

Two aspects of this case are particularly interesting. The first concerns the impact of the General Data Protection Regulation (“GDPR”) on applications for Norwich Pharmacal orders. It was the defendant’s contention that the correct legal approach to such applications had been altered by the GDPR. This resulted in three issues to be decided in the present case: (i) were the IP addresses in the claimants’ possession “personal data” within the meaning of Art. 4(1) of the GDPR? (ii) if the Norwich Pharmacal order was granted, would the claimants become “data controllers” within the meaning of Art. 4(7) of the GDPR, or merely “data recipients” within the meaning of Art. 4(9)? and (iii) did it make a difference that the claimants had promised to register as a data controller with the Information Commissioner’s Office within 14 days of the grant of the order sought in the present case?

The judge answered the first of these questions in the affirmative. He held that, if the Norwich Pharmacal order sought were to be granted, the IP addresses in the hands of the claimants would become personal data within the meaning of the GDPR, as they would allow the identification of individuals. In relation to the second question, he held that if the Norwich Pharmacal order were to be granted, the claimants would not be “data controllers” within the meaning of the GDPR, but merely “data recipients” and therefore subject to much less onerous obligations. This was because the Data Protection Act 2018, which supplements the GDPR, contains provisions disapplying some of the more onerous obligations imposed by the GDPR for purposes connected with legal proceedings.²⁰ The judge also concluded that, in any event, the claimants’ proposed undertaking to register as a data controller would have been sufficient to deal with any issues arising from the GDPR. In light of this, it seems that the GDPR has not significantly altered the requirements for the grant of a Norwich Pharmacal order in such cases.

The second notable aspect of this case concerns the defendant’s allegation that the claimants did not genuinely intend to sue any infringers. Instead, it was said, the claimants’ intention was to carry out so-called “speculative invoicing”, by sending letters of demand to individual subscribers whose names and addresses were disclosed through the Norwich Pharmacal order, claiming a substantial sum as compensation for alleged infringements of copyright. This had already been raised as a concern in the first Golden Eye litigation, where the court had described the practice as a “tactic … to scare people into paying the sums by threatening to issue court proceedings”. To determine whether the claimants had a genuine intention to vindicate their intellectual property rights, therefore, it was necessary for the judge to know how they had used the information which they had obtained from the first Golden Eye litigation. In the present case, the claimants had not provided any evidence on this issue. This was therefore a further reason for the judge to refuse the application sought.