July 23, 2015

This article was written by Simon Baggs, Partner and Eloise Preston, Solicitor and first published in Entertainment Law Review, June 2015.

The High Court has recently granted a website blocking order pursuant to Copyright, Designs and Patents Act 1988 (“CDPA 1988”) s.97A directed at so-called “Popcorn Time” websites. This is the first time the court has considered the application of s.97A to this type of website. This article explains the significance of the order and considers the relevance of the case in the context of “communication to the public”.

Introduction

The jurisdiction of the High Court of England and Wales to grant website blocking injunctions against ISPs whose services are being used to infringe copyright is firmly established. Such injunctions are granted pursuant toCDPA 1998 s.97A which implements art.8(3) of the Information Society Directive. The remedy has proved an effective tool against online piracy for applicants from the film, music, publishing and sports industries.

Background

The first application for an order under s.97A was brought by the major Hollywood film studios against BT and concerned the Newzbin2 website. Newzbin2 was an incarnation of the original Newzbin website. The studios had previously taken direct action against the operators of Newzbin in <em >Twentieth Century Fox v Newzbin The Newzbin2 application, which was acknowledged to be a test case, resulted in two landmark rulings given by Arnold J in 2011: the first dealt with major points of principle and the second dealt with the appropriate form of order and costs. The studios subsequently obtained similar orders against the United Kingdom’s other major ISPs.

Since then, the studios and other copyright owners from the music, sports and publishing industries have obtained a number of similar orders. The orders have predominantly been made in relation to streaming and BitTorrent sites. These types of websites have therefore been dealt with comprehensively in a series of judgments. Streaming sites typically operate by indexing and cataloguing content that is hosted on servers operated by third parties and providing links to the hosted content. In these cases, it will appear to the user that content is being made available from the streaming site itself, although it is in fact transmitted to the user from the host website. BitTorrent sites provide the user with a comprehensive index of available content which enables the user to download torrent files using the peer-to-peer network. These sites facilitate the downloading of large pieces of content quickly and efficiently, but require BitTorrent “client” software and a degree of technical knowledge in order to do so.

The present application concerned streaming, BitTorrent and Popcorn Time websites. Birss J held that the issues raised by the streaming and BitTorrent websites had been dealt with comprehensively in earlier judgments, and in so far as it related to them the application was suitable to be dealt with on paper. However, he considered that the Popcorn Time websites raised new and different issues from those considered in previous cases, and in so far as it related to them the application required further consideration at a hearing.

Popcorn Time websites

So-called “Popcorn Time” websites provide access to copyright content, in the form of films and television programmes. To do this, the sites provide a Popcorn Time application or “app” which is downloaded by the user onto his or her computer. The app is a piece of software which operates as a BitTorrent client, but with the addition of an integrated index and catalogue of titles, images and descriptions of titles and integrated media player software. The app typically maintains a connection with the website from which it was downloaded, or with an associated website. This is so that the “app” on the user’s computer can be constantly updated with the latest content available. The result is a user-friendly interface that can be used to access an up-to-date database of unlicensed film and television content quickly and easily.

A particular feature of Popcorn Time is the sophisticated and user-friendly design of the apps and the consistently high quality of the content available. The user experience is akin to legal services such as Netflix or Amazon Prime. The glossy design of the apps lends a feeling of authenticity, and the studios’ analysis of the sites identified genuine confusion in some users who believed the sites to be lawful. An article published by Bloomberg under the title”This Torrenting App Is Too Good to Be Legal”noted that: “Popcorn Time has become the kinder, gentler face of piracy online, taming BitTorrent to make it far more user-friendly and less obviously sketchy”. Popcorn Time has the potential to enhance the appeal of accessing unlawful film and television content to a broader audience, and as such was an obvious target for the studios.

The court’s decision

The basic principles to be considered by the court in assessing a site blocking claim were established in theNewzbin2 case, and have been followed in subsequent applications. There are four matters which need to be established for the court to have jurisdiction unders.97A to make the order sought:

(1) that the ISPs are service providers;

(2) that users and/or the operators of the target websites infringe copyright;

(3) that users and/or the operators of the target websites use the services of the ISPs to do that; and

(4) that the ISPs have actual knowledge of this.

If the jurisdictional requirements are satisfied, the court then has to consider whether an order is appropriate and in what terms.

Birss J held that there was no difficulty in establishing points (1) and (4), and that, in relation to the streaming and BitTorrent sites, this was a clear case for granting the order sought for the same reasons as had been considered in depth in previous cases. However, he considered that the question of whether points (2) and (3) were satisfied in relation to the Popcorn Time websites was less clear.

The studios submitted that the operators of the Popcorn Time websites used the services of the ISPs to infringe copyright in protected film and TV works in three ways:

• by communicating the works to the public contrary to CDPA s.20(2)(b);
• by authorising the infringing communication to the public contrary CDPA to s.16(2) by (i) the operators of the websites that host the infringing content; and/or by (ii) those who place infringing content on the host websites; and
• as joint tortfeasors with the operators of the host websites/those who place infringing content on such websites.

It is notable that the Studios did not rely on authorisation of acts of infringement by users of the Popcorn Time websites who make copies of the accessed films when electing to download/stream them. It was central to the studios’ argument that the sole purpose of the Popcorn Time apps was to infringe copyright; they could not be used for any lawful purpose. The studios contended that in each case the app provided by the Popcorn Time website was the means of infringement; there was no material difference between the Popcorn Time apps and the NZB files in the Newzbin cases and the BitTorrent files in other cases (in which all three forms of infringement had been upheld). Further, the studios contended that in fact it was even clearer in the case of Popcorn Time websites than it was in the case of Newzbin2 or the BitTorrent websites that the operators had “intervened in a highly material way to make the claimants’ films available to a new audience” (as per Kitchin J in the first Newzbin decision;), because the websites provided a sophisticated means of accessing infringing content in a more direct manner than, for example, the BitTorrent site. Birss J accepted that the purpose of Popcorn Time apps is to infringe copyright, stating

“It is manifest that the Popcorn Time application is used in order to watch pirated content on the internet and indeed it is also manifest that that is its purpose. No-one really uses Popcorn Time in order to watch lawfully available content.”

However, the judge did not consider that all of the grounds of infringement relied on by the studios were made out.

In respect of “communication to the public”, Birss J held that neither the operators of the websites that provide access to the app (“the PTAS websites”) nor the operators of the associated websites which communicate updates to the app (“the SUI websites”) communicated copyright works to the public. Regarding the PTAS websites, he reasoned that:

“It is the Popcorn Time application, when running on the user’s computer, that provides catalogued and indexed connections to the sources of infringing copies of the claimants’ copyright works. The operators of the PTAS sites are facilitating the making available of the content by providing this tool but that is a different matter.”

The judge considered the case against the operators of the SUI websites to be stronger on the basis that the SUI sites are the source of the catalogue/index which is presented to the user each time they access the Popcorn Time application. Nonetheless the claim failed on grounds that the users are probably “oblivious” to the SUI sites’ existence:
“From the user’s point of view what presents the catalogue/index to them is the Popcorn Time application itself. It is the application which intervenes to make the films available not the websites.”

As to “authorisation”, Birss J considered that there was insufficient evidence relating to the relationship between the suppliers of Popcorn Time and the host website operators.

Birss J did however uphold the case based on “joint tortfeasance”. While the judge considered that there was insufficient evidence of a relationship to make out the “authorisation” claim, he appeared to have little difficulty in finding the suppliers of Popcorn Time applications to be jointly liable with the operators of the host websites. He stated:

“the suppliers of Popcorn Time have a common design with the operators of the host website to secure the communication to the public of the claimants’ protected works.”

The application therefore succeeded and the order was granted, subject to certain amendments clarifying that both PTAS and SUI websites are subject to the order.

Comment

The case shows that the jurisprudence in this area of the law is still developing, in particular in relation to the boundaries of what comprises “communication to the public”.

In finding that the PTAS websites did not infringe the communication to the public right, the judge considered that: “The PTAS site simply does not communicate any copyright works to anybody. There is no transmission (or retransmission) of the copyright work at all”. In reaching this conclusion, the judge has focused on transmission as an important element. This may be regarded as surprising given that the jurisprudence in this area makes clear that transmission by the site concerned is not an essential requirement. Rather, the site has to “intervene in a highly material way” to make the content available. In drawing a distinction between the making available by the Popcorn Time website of the tool which provides access to the infringing works (i.e., the app) and the making available of the infringing work itself, the judge appears to have drawn quite fine distinction. In Newzbin Kitchin J noted that “I have no doubt that the defendant’s premium members consider that Newzbin is making available to them the films in the Newzbin index”. In the<em >Popcorn Time case, the judge felt that the user would perceive the application itself to be the element that was making available the content. In the writers’ view, this is quite hard to understand. The site operator is the creator of the application. The application is sourced from the Popcorn Time site. No one else other than the site is responsible for providing access to the content using the application.

Some commentators have suggested that the approach taken by the judge is a veiled challenge to the CJEU’s decision in Svensson. This is perhaps understandable given the judge’s greater focus on transmission as an element for communication to the public. However, in the writers’ view, this focus on transmission runs the risk of placing an artificial analysis on this deliberately wide ranging right and is in any event a focus that is inconsistent with the CJEU jurisprudence in<em >Svensson. The balance of case law favours a focus on intervention and the material involvement of the defendant concerned.

Finally, it is interesting to note that the claim for “joint tortfeasance” succeeded despite the claim for “authorisation” not having been made out. In previous s.97A applications similar factors have been considered in relation to each cause of action. Arnold J stated in Dramatico v Sky:

“the matters I have considered in relation to authorisation lead to the conclusion that the operators of TPB induce, incite or persuade its users to commit infringements of copyright, and that they and the users act pursuant to a common design to infringe … Thus they are jointly liable for the infringements committed by users.”

In the present case, Birss J was sure that the operators of the host websites were carrying out infringing acts, but found that there was not enough concrete information about the relationship between Popcorn Time operators and the host websites for the claim to be made out.