Omnibill (Pty) Ltd v Egpsxxx Ltd ((in Liquidation)) and Another
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss |
| Judgment Date | 17 November 2014 |
| Neutral Citation | [2014] EWHC 3762 (IPEC) |
| Docket Number | Case No: IP13M05063 |
| Court | Intellectual Property Enterprise Court |
| Date | 17 November 2014 |
[2014] EWHC 3762 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr. Justice Birss
Case No: IP13M05063
Henry Ward (instructed by Stevens & Bolton LLP) for the claimant
Jeremy Heald (instructed by Greenwoods LLP) for the second defendant
Hearing dates: 6 October 2014
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.
This is a copyright action. It relates to copyright in a large number of photographs. The photographs appear on a website operated by the claimant for the provision of escort services in South Africa. The claim arises because copies of the photographs have appeared on a website providing similar and competing services at www.escortgps.xxx. I will refer to this website as the Escortgps website. There is not now any dispute that copyright in the photographs belongs to the claimant or that copies of the photographs were taken from the claimant's website and placed onto the Escortgps website in question. The photographs are used as part of advertisements by escorts offering escort services. The advertisements are generally pornographic in nature.
The claimant contends the Escortgps website was and is the first defendant's website.
The first defendant is a UK company. It was incorporated on 20 th June 2012. It has no employees. The proceedings were issued in November 2013. The first defendant went into liquidation on 17 th April 2014 and since then took no part in the action. The second defendant, Mr Carter, is a British citizen. He was the sole director and is the sole shareholder in the company. The claimant claims that Mr Carter is personally liable for the infringements. The claim for personal liability is put in different ways which I will return to. Mr Carter denies he is personally liable.
The technical work to set up the website was undertaken by a Mr van Tonder, a South African national. Mr van Tonder is a man Mr Carter met at a party in South Africa. Mr van Tonder is neither an employee, director nor shareholder in the first defendant. It is plain that the Escortgps website was supposed to have been the first defendant's website all along but a question I have to decide is whether the first defendant bears legal responsibility for it.
Mr Carter denies that the first defendant is responsible for the website on the following basis. Although Mr Carter and Mr van Tonder were working together in relation to this website from June 2012 onwards, they fell out in about November 2013 after these proceedings were issued. Mr Carter says that in the course of these proceedings he has discovered that in fact Mr Van Tonder had kept all the access codes for the website and retained registration of the domain name. As a result Mr Carter (and therefore the first defendant) has no actual control over it.
That may be so but it is not determinative of the question of legal responsibility. It is clear from Mr Carter's evidence (i) that the domain name should have been registered in the first defendant's name, (ii) that Mr Carter paid all the relevant costs so that the website would belong to the first defendant company and (iii) that he gave all the instructions to Mr van Tonder on the company's behalf. When Mr van Tonder undertook the work setting up the Escortgps website itself he was doing so on the instructions of Mr Carter acting in his capacity as the director of the first defendant. In my judgment the first defendant is and always has been entitled to require Mr van Tonder to provide the access codes and transfer the domain registration. I find that at all material times the first defendant has been and is legally responsible for the Escortgps website.
In the joint Defence of the first and second defendants dated 30 th January 2014, signed with a statement of truth by Mr Carter personally and as a director of the first defendant, the first defendant has admitted reproducing a substantial part of each of the copyright works and admitted communicating the same to the public. However it denied that it has done so in the UK and therefore denied that the first defendant has infringed the claimant's copyright.
A major issue in this case is whether the website or the relevant parts of it are targeted at the UK. It is common ground that if they are targeted at the UK then infringement of UK copyright has been committed by the first defendant. If the website is not targeted at the UK then no infringement of UK copyright has taken place at all.
The claimant's evidence consisted simply of the Particulars of Claim and Reply which were signed using the appropriate statements of truth applicable in the Intellectual Property Enterprise Court. The order made at the case management conference on 19 April 2014 directed that they stand as evidence at trial. In the end the defendant elected not to cross examine the relevant individuals on the claimant's side.
The defendant's evidence consisted of the Defence and Mr Carter's first and second witness statements. Mr Carter was cross-examined on his evidence and I will deal with that below in the context of the issue of his personal liability.
Communication to the public, targeting the UK
Mr Carter's position was that the servers which hosted the website are not located in the UK. Although the claimant did not entirely believe this evidence there is no evidence to the contrary. I will work on the basis that the servers are not UK based. Accordingly it was common ground that the relevant question was whether the acts of communication to the public are targeted at the public in the UK. Both sides referred to the analysis of this question by Arnold J in EMI v BSkyB [2013] EWHC 379 (Ch), and in particular to paragraphs 48 to 51, as follows:
48. The third question is whether the act of communication to the public occurs in the UK. Since the operators appear to be based outside the UK, the question is whether their acts of communication to the public are targeted at the public in the UK.
49. In considering this question, it appears from the judgment of the CJEU in Football Dataco v Sportradar at [35]-[46] that it is relevant to take into account, by analogy, criteria which the CJEU has treated as relevant to the issue of targeting in a number of other contexts: see Joined Cases C-585/08 and C-144/09 Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller [2010] ECR I-12527 (Article 15 of Council Regulation 44/2001/EC of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters ("the Brussels I Regulation")); Case C-324/09 L'Oréal SA v eBay International AG [2011] ECR I-0000, [2012] EMLR 6 (Article 5 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ("the Trade Marks Directive") and Article 9 of Council Regulation 207/2009/EC of 20 December 1993 on the Community trade mark ("the CTM Regulation")); and Case C-5/11 Donner [2012] ECR I-0000 (Article 4 of the Information Society Directive).
50. In Pammer and Hotel Alpenhof the Court of Justice held at [93] as follows:
"The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader's activity is directed to the Member State of the consumer's domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader's site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists."
51. The Claimants rely upon the following factors as indicating that the Websites, and hence the operators' acts of communication to the public, are targeted at the UK. First, there are a large number of users of each Website in the UK. Secondly, a substantial proportion of the visitors to each Website is from the UK. Thirdly, the recordings listed on each of the Websites include large numbers of both (a) recordings by UK artists and (b) recordings that are in demand in the UK. Fourthly, the default language of each of the Websites is English. In addition, in the case of KAT, it includes advertisements with prices in sterling. In my judgment KAT is reasonably clearly targeted at the public in the UK. The position is less clear in the case of H33T and Fenopy, but I reach the same conclusion.
It is clear that the question of whether a website is targeted to a particular country is a multi-factorial one which depends on all the circumstances. Those circumstances include things 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. These are the kinds of factors listed by the CJEU in Pammer in the passage cited by Arnold J. However as can be seen from...
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Table of Cases
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