Infringement – Authorising infringement without licence of owner – Claim arising from downloading of music from three file-sharing websites in breach of copyright

EMI Records Ltd and other companies v British Sky Broadcasting Ltd and other companies: Chancery Division: 28 February 2013

The claimant companies were record companies. The defendants were the six main retail internet service providers in the UK. The proceedings arose out of the illegal downloading of, inter alia, music via torrent files hosted on a number of peer-to-peer file-sharing websites. Those websites were hosted by the defendants. The claimants sought injunctions against the defendants pursuant to s 97A of the Copyright, Designs and Patents Act 1988, which implemented art 8(3) of the European Parliament and Council Directive (EC) 2001/29 (on the harmonisation of certain aspects of copyright and related rights in the information society) (the Directive), requiring the defendants to block or impede access by their customers to websites. Although the defendants did not oppose the making of the order, it was for the claimants to convince the court as to its necessity.

In order for the court to have jurisdiction to make the orders sought by the claimants, four matters had to be established: first, that the defendants were service providers; secondly, that users and/or the operators of the websites had infringed copyright; thirdly, that users and/or the operators of the websites had used the defendants' services to do that; and fourthly, that the defendants had had actual knowledge of that. The court further gave consideration to whether the granting of the orders sought would be proportionate and whether they would outweigh the rights of the operators and the users of the websites under art 11 of the Charter of Fundamental Rights of the European Union. The court had regard to the Electronic Commerce (EC Directive) Regulations 2002, SI 2003/2013 (the Regulations). The claim would be allowed.

(1) On the evidence, there could be no doubt that the defendants were service providers within the meaning of Reg 2 of the Regulations, and hence within the meaning of s 97A of the 1988 Act (see [22] of the judgment).

(2) A user of the websites who selected a torrent file in order to obtain a copy of particular content, and then downloaded the associated content files, copied the content contained in those files onto his computer. It followed that, if the content files comprised a copyright work, and if the user did not have the licence of the copyright owner, the user would infringe copyright. On the evidence, UK users of the websites who had accounts with the defendants had infringed, and were continuing to infringe, the claimants' copyrights by copying the claimants' sound recordings on a large scale. In determining whether the operators of the websites had used the defendants' services to infringe copyright, the first question was whether the users of the websites who were uploaders communicated the claimants' sound recordings to the public.

They had done so, since they had made the recordings available by electronic transmission in such a way that members of the public could access the recordings from a place and at a time individually chosen by those members of the public. They had done that by means of the websites. The second question was whether such users had communicated the recordings to a new public. They had given others access to the claimants' copyright works. Although uploaders might not directly make money from uploading, they had hoped that others would reciprocate, enabling them to download other recordings without payment in their turn.

The third question was whether the act of communication to the public occurred in the UK. On the evidence, that would occur where the person making the work available (namely, the uploader) was located in the UK (see [25], [27], [39]-[41] of the judgment). Users of the websites had infringed the claimants' copyrights both by copying and by communication to the public (see [42] of the judgment). Societa Consortile Fonografici (SCF) v Del Corso (Procuratore generale della Repubblica intervening): C-135/10 (2012) Times, 08 June applied; Football Dataco Ltd v Sportradar GmbH: C-173/11 [2012] All ER (D) 211 (Oct) applied.

(3) On the evidence, the websites were clearly designed to afford their users the easiest and most comprehensible service possible. They went to great lengths to facilitate and promote the download of torrent files by their users. The torrent files, which were conveniently indexed, arranged and presented, constituted precisely the means necessary for users to infringe. The operators of the websites had not taken any meaningful steps to prevent the widespread infringement of copyright which had taken place. Infringement was the objective and intention of the provision of torrent files on the websites. The operators of the websites had authorised their users' infringing acts of copying and communication to the public. They went far beyond merely enabling or assisting. On any view, they had sanctioned, approved and countenanced the infringements of copyright committed by their users. They had also purported to grant users the right to do the acts complained of. The matters considered in relation to authorisation lead to the conclusion that the operators of the websites induced, incited or persuaded their users to commit infringements of copyright, and that they and the users acted pursuant to a common design to infringe. It was further relevant that the operators had profited from their activities, and thus were jointly liable for the infringements committed by users (see [54]-[58], [64], [65], [70], [74] of the judgment). The operators of the websites had infringed the claimants' copyright (see [75] of the judgment).

(4) On the evidence, both users and operators of the websites had used the defendant's services to infringe the claimants' copyrights and the copyrights of those they represented (see [88] of the judgment). Twentieth Century Fox Film Corporation v British Telecommunications plc [2011] All ER (D) 275 (Jul) applied; Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] All ER (D) 30 (May) applied; UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH C-314/12 applied.

(5) The orders sought were proportionate. They were necessary and appropriate to protect the intellectual property rights of the claimants and other copyright users. Those interests clearly outweighed the rights of the users of the websites under art 11 of the Charter, and even more clearly outweighed the rights of the operators of the websites under art 11. They also outweighed the defendants' art 11 rights (see [108] of the judgment). The orders requested would be made (see [108] of the judgment). L'Oréal SA v eBay International AG: C-324/09 [2012] All ER (EC) 501 considered; Golden Eye (International) Ltd v Telefonica UK Ltd [2012] All ER (D) 79 (Jul) considered; Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] All ER (D) 01 (Mar) considered.

Ian Mill QC, Edmund Cullen QC, Tom Richards and Shane Sibbel (instructed by Forbes Anderson Free) for the claimants; The defendants did not appear and were not represented.