John Dominick James Mahon and Another v FBN Bank (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | HHJ Simon Barker |
| Judgment Date | 06 June 2011 |
| Neutral Citation | [2011] EWHC 1432 (Ch),[2010] EWHC 3063 (Ch) |
| Docket Number | Appeal Nos. CH/AP/397 & CH/AP/398,Claim No: HC10C01057 |
| Court | Chancery Division |
| Date | 06 June 2011 |
[2010] EWHC 3063 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
INTELLECTUAL PROPERTY
Before: Mr Justice Kitchin
Claim No: HC10C01057
James Mellor QC and Jessie Bowhill (instructed by Messrs Olswang LLP) for the Claimants
Anthony Boswood QC and Madeleine Heal (instructed by Hamlins LLP) for the Defendant
Hearing dates: 17 November 2010
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
MR. JUSTICE KITCHIN:
Introduction
The claimants are all well known broadcasters and in this action they allege that the defendant has infringed the copyrights in their broadcasts by communicating those broadcasts to the public by electronic transmission. The defendant maintains that the claimants have no real prospect of succeeding in the claim and there is no other reason why the case should be disposed of at trial. Accordingly it has applied for summary judgment under Part 24.
Background
The claimants are responsible for the transmission of a wide range of television programmes on major television channels. There is no dispute that these transmissions are broadcasts within the meaning of section 6 of the Copyright Designs and Patents Act 1988 (“the Act”), that copyright subsists in them and that such copyright belongs to the claimants.
The defendant operates a website at www.tvcatchup.com which allows members of the public to watch live UK television, including the claimants’ channels, on their computers, iPhones and games consoles. Any member of the public wishing to access the service must first become a member. He can then select one of over 50 channels by pressing on the appropriate icon, whereupon he is taken to a new screen on which the defendant provides a stream of the programme being broadcast on that channel. There is a slight delay before the member sees the programme because the defendant first shows one of its own advertisements. This is how it makes its money.
For the purposes of this application, there is no dispute that the defendant's service operates in the following way:
i) ordinary domestic aerials are set up to receive UK free-to-air broadcasts;
ii) these aerials are connected to a cluster of servers, each containing a television tuner card which acts as a decoder; this converts the broadcast signal into an audio-visual data stream which is then sent to second cluster of servers;
iii) the second cluster of servers convert the data stream into a format (called a flash stream) suitable for delivery by the internet; the flash stream is sent to a third set of servers called the streaming servers;
iv) when a member clicks on a channel on the defendant's website, his computer or other device connects to one of the streaming servers and receives a flash stream of all the programming on the channel he has selected.
Legislative framework
Section 6 of the Act (as amended by the Copyright and Related Rights Regulations 2003 (SI 2003/2498)(“the 2003 Regulations”) defines a broadcast in these terms:
“ Broadcasts
6-(1) In this Part a “broadcast” means an electronic transmission of visual images, sounds or other information which—
(a) is transmitted for simultaneous reception by members of the public and is capable of being lawfully received by them, or
(b) is transmitted at a time determined solely by the person making the transmission for presentation to members of the public,
and which is not excepted by subsection (1A); and references to broadcasting shall be construed accordingly.
(1A) Excepted from the definition of “broadcast” is any internet transmission unless it is—
(a) a transmission taking place simultaneously on the internet and by other means,
(b) a concurrent transmission of a live event, or
(c) a transmission of recorded moving images or sounds forming part of a programme service offered by the person responsible for making the transmission, being a service in which programmes are transmitted at scheduled times determined by that person.”
Under section 16 of the Act, the owner of the copyright in a broadcast has, in accordance with the following provisions of Chapter II, the exclusive right to do certain acts in the United Kingdom, namely:
(a) to copy the broadcast (see section 17);
(b) to issue copies of the broadcast to the public (see section 18);
(c) to communicate the broadcast to the public (see section 20).
These proceedings are concerned with the alleged communication of the claimants’ broadcasts to the public and, in that regard, section 20 (as substituted by the 2003 Regulations) reads:
“ Infringement by communication to the public
20- (1) The communication to the public of the work is an act restricted by the copyright in—
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include—
(a) the broadcasting of the work;
(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.”
By contrast, the protection conferred by the former section 20 was limited to the broadcasting of the work or its inclusion in a cable programme service:
“20. The broadcasting of the work or its inclusion in a cable programme service is an act restricted by the copyright in –
(a) a literary, dramatic, musical or artistic work;
(b) a sound recording or a film, or
(c) a broadcast or cable programme.”
Section 20 implements Article 3 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 (“the Information Society Directive”). This reads:
“1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.
2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:
(a) for performers, of fixations of their performances;
(b) for phonogram producers, of their phonograms;
(c) for the producers of the first fixations of films, of the original and copies of their films;
(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.
3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.”
The general purpose and importance of these and other rights contemplated by the Information Society Directive is evident from recitals (9) and (10):
“(9) Any harmonisation of copyright and related rights must take as a basis a high level of protection, since such rights are crucial to intellectual creation. Their protection helps to ensure the maintenance and development of creativity in the interests of authors, performers, producers, consumers, culture, industry and the public at large. Intellectual property has therefore been recognised as an integral part of property.
(10) If authors or performers are to continue their creative and artistic work, they have to receive an appropriate reward for the use of their work, as must producers in order to be able to finance this work. The investment required to produce products such as phonograms, films or multimedia products, and services such as ‘on-demand’ services, is considerable. Adequate legal protection of intellectual property rights is necessary in order to guarantee the availability of such a reward and provide the opportunity for satisfactory returns on this investment.”
Guidance as to how these rights should be understood is provided in recitals (23) and (24):
“(23) This Directive should harmonise further the author's right of communication to the public. This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts.
(24) The right to make available to the public subject-matter referred to in Article 3(2) should be understood as covering all acts of making available such subject-matter to members of the public not present at the place where the act of making available originates, and as not covering any other acts.”
The European Court of Justice has also reiterated that the right of communication to the public must be interpreted broadly in Case C-306/05 Sociedad General de Autores v Editores de Espana (SGAE) v Rafael Hoteles SA [2006] ECR I-11519 at [36]:
“36. It follows from the 23rd recital in the preamble to Directive 2001/29 that “communication to the public” must be interpreted broadly. Such an interpretation is moreover essential to achieve the principal objective of that Directive, which, as can be seen from its ninth and tenth recitals, is to establish a high level of protection of, inter alios, authors, allowing them to obtain an...
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