EMI Records Ltd and others v British Sky Broadcasting Ltd and others  EWHC 379 (Ch), Chancery Division, England and Wales, 28 February 2013
Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt097, first published online: June 13, 2013
It looks as though s 97A blocking injunctions may now be the film and music industries' weapon of choice against peer-to-peer file sharing. The Pirate Bay, a notorious BitTorrent tracker, was blocked this way last year and now the music industry has succeeded in an application for blocks against three more culprits by the names of KAT (KickassTorrents), H33T and Fenopy.
Earlier “Current Intelligence” pieces provide the background to blocking injunctions (Darren Meale ‘Avast, ye file sharers! The Pirate Bay is sunk’ (2012) 7(9) JIPLP 646). Section 97A of the UK's Copyright, Designs and Patents Act 1988 (CDPA) provides that
The High Court … 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.
The evidence was that KAT enjoyed around 3.7 million UK visitors a month, making as much as US$22 million a year in advertising revenue; H33T 400 000 and US$2.6 million and Fenopy about 500 000 and US$1.3 million. Each was found to be a ‘substantial profit-making business’.
Before considering the substantive decision, one must bear in mind the following:
No claim for copyright infringement had been brought against KAT, H33T, Fenopy or any of their users. Further, the judge found that there was no need to serve the operators of the sites, as it would be ‘impracticable and pointless’ to try to do so. The ISPs were not represented. They did not oppose the making of the orders sought provided that the court felt it was proper and appropriate to make them.Mr Justice Arnold considered the application on paper, without a hearing.
The applications were brought by way of the CPR Part 8 alternative claims procedure.
Turning to the substance of the decision, four matters had to be established if the blocks were to be ordered. Each was carefully considered by Arnold J as follows.
Were the ISPs ‘service providers’?
The defendants did not deny this and, as the judge had held in previous s 97A applications, they were indeed ‘service providers’ within the meaning of regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002, implementing the E-Commerce Directive (2000/31).
Do the users and/or the operators of the websites infringe copyright?
Yes, by copying or downloading unlawful copies of copyright protected material. A further ‘yes’ in respect of uploaders (ie users who allowed material on their computers to be uploaded to the internet and passed on to others), by ‘communication to the public’ of copyright works, contrary to s 20 of the CDPA. Infringement by ‘communication to the public’ is a less than straightforward infringing act; it continues to be subject to significant attention from the Court of Justice of the European Union (CJEU), as well as domestic courts in Europe. Mr Justice Arnold updated his analysis from The Pirate Bay litigation (see here Meale ‘Avast, ye file sharers! The Pirate Bay is sunk’). One issue was whether the users communicated works to a ‘new public, that is to say a public which was not taken into account by the rightholders when authorizing the distribution of the recordings’. Arnold J recounted Case C-135/10 Societá Consortile Fonografici v Del Corso  ECR I-0000, in which the CJEU held that a dentist playing background music in his private dental practice did not partake in communication to the public. Relevant to this finding were the facts that (1) the patients constituted a determinate circle of potential listeners, who only heard the recordings one at a time; (2) the patients attended for the purposes of dental treatment and had no choice over the recordings they listened to; and (3) the broadcast was not of a profit-making nature.
The judge also referred to Case C-173/11 Football Dataco Ltd v Sportradar Gmbh  ECR I-0000. In essence, this case asked whether, where a server in jurisdiction A sends data to a user in jurisdiction B, there could be an infringing act in A, B or both jurisdictions. The CJEU held that the act takes place ‘at least’ in B provided that ‘there is evidence from which it may be concluded that the act discloses an intention on the part of the person performing the act to target members of the public’ in B. Although it did not explicitly deal with the point, Arnold J opined that the CJEU also accepted that, in this situation, an infringing act occurred in jurisdiction A as well.
Applying this case law, Arnold J held that uploaders communicated works to a new public, a ‘large and indeterminate class of people’, in the hope that other users would make other recordings available which they could download free, thereby providing them with an indirect financial benefit as a result of their activity. He found that there would be infringement in the UK where the uploader, who made recordings available, was in the UK. He was not so sure if there would be infringement where only the person receiving the work, the downloader, was in the UK, ‘since it is not clear to me that the act of communication by the uploaders is targeted at members of the public in the UK’. Having already found infringement by UK uploaders, he did not reach a conclusion on this point.
Operators of the websites
Operators were also held to infringe in three ways: (1) by communication of works to the public; (2) by authorizing the infringements of UK users; and (3) on the basis of joint liability with UK users as accessories.
On (1), Arnold J held that both the operators of the websites (who provide a mechanism designed to achieve the act) and its users (who provide the actual sound recordings etc) were involved in the act of communication to the public. Like the users, the operators made the relevant works available to a ‘large and indeterminate class of people’ and benefitted financially from doing so. Each of three websites was found to be targeting the UK with factors such as the number of UK users, the large number of UK artists whose recordings were available, and the default language of the sites being English was considered as relevant. It was also thought relevant that KAT served its users with adverts with prices in sterling (although it was not discussed whether this was KAT's doing or the action of the adserving provider responsible for managing KAT's adverts). These factors led the judge to conclude that KAT clearly targeted the UK, while H33T and Fenopy did as well, albeit less clearly.
On (2), all three sites had made obvious efforts to afford their users ‘the easiest and most comprehensive service possible’, going to great lengths to facilitate and promote the download of torrent files by users (eg providing an easy-to-use interface, indexing torrents in specific categories, explaining how to download and how to get round court-ordered blocks). Infringement was not merely an inevitable consequence of the provision of torrents on the site, but their objective and intention. Mass copyright infringement was the ‘cornerstone’ of the sites' business models; each site showed an obvious disregard for copyright law; and each had sought to evade international investigations by constantly changing domain registrant details and moving ISPs. Stated content removal policies were mere window-dressing. H33T asks for payment of a US$50 fee before it will take a torrent down.
On (3), Arnold J applied much the same reasoning and found accessory liability in the same way as he did in NewzBin2 and The Pirate Bay.
Do the users and/or the operators of the websites use the ISPs' services to infringe?
Again, Arnold J answered this question in the affirmative following his reasoning in the earlier blocking cases. He did, however, note that the pending CJEU reference in Case C-314/12 UPC v Constantin, a reference from the Austrian Supreme Court, had asked for guidance in this area. The judge noted that the Austrian Supreme Court's preliminary view was in agreement with his.
Did the ISPs have actual knowledge of this?
Indeed, not least as a result of their involvement in the case. The industry also wrote to ISPs on a weekly basis prior to their application to notify them of infringing activity.
With all these affirmative answers, Arnold J then considered whether he should exercise his discretion to order a block. Again he answered yes, holding that blocks would be proportionate here and could be implemented at a modest cost. Noting that they might easily be circumvented, he remarked that evidence indicated that blocking orders could be reasonably effective: a block in Italy of The Pirate Bay had led to a reduction of 73 per cent of those visiting it and a 96 per cent reduction in page views. While questions of proportionality were pending before the CJEU in UPC v Constantin, he felt able to make a decision and order the blocks.
Takedown policies not good enough?
The websites in this case had what are fairly standard takedown policies, offering to take down infringing content once notified by way of the provision of a specific URL (though none of them did this). Arnold J remarked that such a policy was, even if complied with, ‘overly burdensome’, impractical and ineffective. One URL was no good when multiple users might have uploaded multiple versions of each infringing recording and were constantly uploading additional ones. In order to ensure the cessation of infringing activity in respect of a particular copyright work, a rightholder would have to monitor a website on a continuous and on-going basis. Arnold J concluded:
A ‘provision of URL’ policy might work for a website which generally hosts legal content, but which suffers from isolated instances of infringing content. It is entirely unworkable where the website is geared towards offering a constantly replenished stock of infringing content.‘Provision of URL’ policies are fairly standard for online service providers. The world's largest video sharing website, YouTube, operates one. While it cannot be said that YouTube is ‘geared towards’ infringement, it does suffer more than isolated instances of infringing content, as do many other such services. Do Arnold J's comments suggest that this kind of policy will not be enough for the service provider to benefit from the ‘hosting’ safe harbour provided by Article 14 of the E-Commerce Directive, which is only available where a service provider acts expeditiously to remove an infringement once it becomes aware of it? Do they also indicate that, following the CJEU's decision in Case C-324/09 L'Oréal v eBay, 12 July 2011, Article 11 of the Enforcement Directive (2004/48) may require intermediaries to take more active steps when it comes to removing infringing content present on their services, rather than just reacting to notifications on a piecemeal basis?
As with NewzBin2 and The Pirate Bay, this was another example of an attack on an unlawful website in circumstances where the traditional route—going after the infringing service itself—was not practical (these services are generally based outside of the jurisdiction, move around a lot and generally have no regard for the law or legal process). Being no different on the facts to The Pirate Bay, it is no surprise the application succeeded. The music and film industries will continue to pursue blocks by ISPs against other infringing services, and it will be interesting to find out whether other service providers become targets (this author has previously wondered whether search engines like Google might be asked to block users from accessing The Pirate Bay etc).
Now that the content industries have secured a number of favourable decisions, it can be seen that they and their lawyers are becoming quite practised at the exercise. ISPs do not appear to be interested in actively opposing blocking applications, and the courts have been clear that there is no need to even attempt to involve the offending websites themselves (or their offending users). On this occasion, the record companies used the streamlined CPR Part 8 alternative claims procedure and Arnold J made his decision without need of an oral hearing. All of these factors will have reduced the cost of the application, probably making it quicker and easier to do. The evidence put in by the record industry will also be similar each time and therefore cheaper on each occasion. That points to s 97A applications becoming fairly fixed in terms of time and cost and so much easier for the industry to fund and to evaluate their effectiveness by way of a cost/benefit analysis. The author's instinct is that we will see several more of these applications within the next 12 months (indeed, as this article was being proofed, there were reports that the UK music industry was readying an application against as many as 25 more services and domain names).