Copyright - Infringement - Disclosure and inspection of documents - Claimants holding licences in copyrighted works
Golden Eye (International) Ltd and others v Telefonica UK Ltd: ChD (Mr Justice Arnold): 26 March 2012
The defendant was a retail internet service provider. The second claimant partnership granted the first claimant company a royalty-free worldwide exclusive licence of all copyrights and rights in the nature of copyright in specified films for five years (the agreement).
The agreement further empowered the first claimant to decide what, if any, action to take in respect of any suspected infringements of copyright, gave it sole control over and conduct of all proceedings on terms that it shall bear the costs and be entitled to retain all sums recovered. The third to 14th claimants (the other claimants) were also owners of the copyrights under agreements with the first claimant for two years in the territory of England and Wales (the limited agreements).
In September 2011, the claimants sought a Norwich Pharmacal order against the defendant to obtain disclosure of the names and addresses of the defendant’s customers who were alleged to have committed infringements of copyright through peer-to-peer filesharing. In October 2011, the defendant’s solicitor filed an acknowledgement of service, stating that the defendant had not intended to contest the claim. The court granted the intervener, a statutory body created to represent the interests of consumers, particularly low income and vulnerable consumers, permission to intervene and present adversarial argument on behalf of the intended defendants. The intervener contended that the instant claim was a manifestation of ‘speculative invoicing’ and the claimants were not genuinely intending to try to seek redress.
It fell to be determined: (i) whether arguable wrongs had been committed against the claimants; (ii) whether the claimants were intending to try to seek redress for those arguable wrongs; (iii) whether disclosure of the information was necessary for the claimants to pursue that redress; and (iv) whether the order sought was proportionate. Section 92(1) of the Copyright, Designs and Patents Act 1988, articles 1, 8 and 10 of the first protocol to the European Convention on Human Rights and articles 7, 8, 17(2) and 52(1) of the Charter of Fundamental Rights of the European Union were considered. The application would be allowed.
(1) The agreement had fulfilled the requirements for an exclusive licence in section 92(1) of the act, so as to give the first claimant title to sue the intended defendants for infringement of copyright, but the limited agreements had not. All of the agreements were not likely to jeopardise the proper administration of justice and were not champertous. Further, the claimants’ evidence had been sufficiently cogent to establish a good arguable case that: (i) filesharing of the claimants’ copyright works had taken place via the internet protocol addresses, and at the dates and times that had been identified; and (ii) many, but not all, of the subscribers to whom those internet protocol addresses had been allocated by the defendant at those dates and times had been the persons engaged in such filesharing (see , ,  of the judgment).
(2) The evidence had established a genuine commercial desire on the part of the first and second claimants to obtain compensation for infringements of their copyrights. On balance, the court was satisfied that the other claimants had been genuinely intending to try to seek redress (see ,  of the judgment).
(3) To the extent that the claimants’ copyrights had been infringed, it would plainly be necessary for the information sought to be disclosed for the claimants to be able to protect those rights by seeking redress (see  of the judgment).
(4) It was settled law that the correct approach to considering proportionality could be summarised in the following propositions. First, the claimants’ copyrights had been property rights protected by article 1 of the first protocol to the convention and intellectual property rights within article 17(2) of the charter. Second, the right to privacy under article 8(1) of the convention and article 7 of the charter, and the right to the protection of personal data under article 8 of the charter would be engaged by the instant claim. Third, the claimants’ copyrights would be ‘rights of others’ within article 8(2) of the convention and article 52(1) of the charter.
Fourth, the approach that had been laid down where both rights under articles 8 and 10 of the convention had been involved would further be applicable where a balance would fall to be struck between article 1 of the first protocol to the convention and article 17(2) of the charter on the one hand, and article 8 of the convention and articles 7 and 8 of the charter on the other hand.
That approach would be: (i) neither article as such would have precedence over the other; (ii) where the values under the two articles would be in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case would be necessary; (iii) the justifications for interfering with or restricting each right should be taken into account; and (iv) the proportionality test or ‘ultimate balancing test’ should be applied to each (see  of the judgment).
In the circumstances, the first and second claimants’ interest in enforcing their copyrights had outweighed the intended defendants’ interest in protecting their privacy and data protection rights, and thus it would be proportionate to order disclosure, provided that the order and the proposed letter of claim were framed so as properly to safeguard the legitimate interests of the intended defendants, and in particular the interests of intended defendants who had not in fact committed the infringements in question.
To make such an order in favour of the other claimants would not proportionately and fairly balance their interests with the intended defendants’ interests. The court would exercise its discretion to make an order in favour of the first and second claimants but decline to exercise its discretion in favour of the other claimants (see -,  of the judgment).