Author: Nedim Malovic (University of Southampton)
Omnibill (Pty) Ltd v Egpsxxx Ltd (in liquidation) and Another  EWHC 3762 (IPEC), Intellectual Property Enterprise Court, 17 November 2014
Journal of Intellectual Property Law & Practice (2015), doi: 10.1093/jiplp/jpv007, first published online: February 21, 2015
Conclusive evidence brought Birss J to hold a UK company responsible for targeting the UK public by communicating infringing content on a website issued through its services in South Africa.
Legal context and facts
This case related to photographs of escorts that were used on the defendants' website without permission from the claimant. The court had to consider whether infringement had occurred by communicating those works to the public under s 20 of the Copyright Designs and Patents Act 1988 (CPDA). There was no dispute that copyright in the photographs belonged to the claimant.
The first defendant was a UK company which had no employees. The allegedly infringing website was owned by the defendant company and was, at an earlier stage, registered in South Africa, although the company director, Mr Carter, had made arrangements to move its content to the UK. Mr Carter denied any liability for the contents of the website, because it had been set up by a third party who was not an employee, director or shareholder of the defendant company.
Under UK law, for liability to arise the defendant's act must infringe a substantial portion of the copyright owner's exclusive economic rights under s 16 CDPA. Birss J addressed two primary questions: (1) whether the defendants' website or relevant parts of it had been targeted at the UK public, and if so (2) whether the second defendant in the proceedings (Mr Carter), was jointly liable with the first defendant company for damages in tort.
Was there a communication to the public, directed at the UK?
Birss J reasoned that the question of whether a website is targeted at a particular country requires a multi-factorial analysis which depends on the circumstances of the case, as well as consideration of both aspects which can be inferred from looking at the content on the website itself and elements arising from the inherent nature of the services offered by the website.
Both parties referred to Arnold J's judgment in EMI Records Ltd v British Sky Broadcasting Ltd  EWHC 379. This had considered a number of rulings of the Court of Justice of the European Union (CJEU) in the ambit of ‘targeting’ towards specific Member States, including Football Dataco v Sportradar GmbH & Sportradar AG (C-173/11, EU:C:2012:642) and Peter Pammer v Reederei Karl Sclüter GmbH & Co KG (C-585/08, EU:C:2010:740). In those decisions, the CJEU suggested a number of non-exhaustive criteria to determine when targeting occurs. These criteria include factors such as whether the trader's activity is directed to the Member State of the consumer's domicile; whether the trader uses a language or a currency other than the language or currency generally used in the Member State in which the trader is established; whether there is any mention of telephone numbers with an international code; whether the trader uses a top-level domain name other than that of the Member State in which the trader is established; and whether there is any mention of an international clientele composed of customers domiciled in various Member States.
In EMI, Arnold J accepted the claimant's argument that, where a communication to the public which originated outside the UK is received inside the UK, the communication would be treated as occurring within the UK if it targets the UK public.
Birss J emphasized that evidence that a substantial proportion of visitors to a website is based in the UK may not be determinative, but may nonetheless support a conclusion that the relevant communication is aimed at the public in the UK. A ‘substantial proportion’ may vary between 10 and 25 per cent. Birss J was not convinced that the share of UK visitors to the South African sub-domain was either less then 10 per cent or more then 25 per cent, thus amounting to a substantial proportion.
While the sole purpose of companies placing their services online is to reach out to international clientele, it would be surprising if the intention were to target an international public. The finding that the site is at least in part aimed at the UK is consistent with the purpose of that concept in copyright law. Birss J held that targeting a substantial proportion of the public in the UK could be regarded as conclusive evidence that the claimant's exclusive right to communication to the public was infringed under s 20 CDPA.
Was the second defendant liable?
Birss J established that the first defendant company had been set up in order to shelter liability. Mr Carter had directed the transfer of the content of another website (already hosting unauthorized copies of the claimants' works) to the allegedly infringing website with a view to communicate that content to the public. Because the latter website was found to have infringed the claimant's rights in the UK, Birss J referred with approval to the judgment of Kitchin J in Twentieth Century Fox v Newzbin  EWCH 608 in order to determine Mr Carter's liability in tort for authorizing infringement under s 16 CDPA. Kitchin J held that, in cases involving supply, or authorization by supply, the following circumstances must be considered: the nature of the relationship between authoriser and infringer; whether the equipment or other material supplied constitutes the means used to infringe; the degree of control which the supplier retains; and whether he has taken any steps to prevent infringement.
Birss J concluded that, even if a third party had materially transferred the content of another website to the allegedly infringing website, this had taken place because of Mr Carter's authorization. So Birss J held Mr Carter liable in tort for infringing the claimant's right under s 20 CDPA.
The factors to consider in determining when targeting occurs appear clearer following a number of decisions of the CJEU and their application in UK courts. As regards the application, it is notable that Birss J confirmed his judgment in Thomas Pink Ltd v Victoria's Secret UK Ltd  EWHC 2631. In this case, he held that, though this is a question of fact, it is not necessary that all the contents of a website target the same country to establish that there is an intention to target the public on a certain territory. In Omnibill, Birss J elaborated on this, clarifying that, even if the different sub-domains were aimed at different countries, the website as a whole could be considered as targeting the UK public, provided that certain conditions are met.