August 10, 2020

The collecting society, Performing Right Society Ltd (PRS), whose members comprise writers, composers and publishers of musical works, issued copyright infringement proceedings against the Qatari airline, Qatar Airways Group QCSC, in December 2019. In the proceedings, PRS seeks a declaration that QA has infringed the worldwide performing rights owned by PRS in its members’ musical works, which are released as sound recordings and used in films, TV shows, games and other audiovisual works. In particular, PRS claims that the inclusion of PRS’s copyright works in QA’s inflight entertainment system, known as “Oryx One” (the IFE System), involves QA in two acts which require the licence of PRS, namely (i) public performance and (ii) communication to the public. Given the absence of any such licence, PRS contends that QA had infringed its copyrights and, in addition to declaratory relief, seeks an injunction to prevent further infringement and an inquiry as to damages (or, alternatively, an account of profits).

PRS contends that QA passengers could access audio/audiovisual content via individual onboard screens and headphones or via an “Oryx One Play” app that is downloaded onto the passenger’s laptop, mobile device or tablet. Further, PRS says, that the “Oryx One” application allowed passengers to create playlists of content prior to boarding the flight. Passengers could therefore access the IFE System before, during and after each flight. PRS has collated a non-exhaustive list of over 5,800 of its members’ musical works which it says were included in the content provided on the IFE System.

PRS claims infringement of both UK copyright and foreign copyrights. It is PRS’s cases that, when the aircraft was in the UK, either on the ground or in UK airspace, the playing or making available of a PRS repertoire work through the IFE System amounted to a public performance and/or a communication to the public of that work under ss 19 and 20 respectively of the Copyright, Designs and Patents Act 1988. Further, when the aircraft was in Qatar or in Qatari international airspace, QA’s actions amounted to a public performance and/or a communication to the public under Articles 7(6) and (7) respectively of the Qatari Law No 7 of 2002 on the Protection of Copyright and Neighbouring Rights. In addition, when the aircraft was in any other country that is a signatory to the Berne Convention, the WIPO Copyright Treaty and/or the TRIPS Agreement, QA’s actions amounted to a public performance and/or a communication to the public under corresponding provisions enacted in that country.QA denies, or at least does not admit, that there has been any public performance or communication to the public of PRS’s musical works, whether in the UK or elsewhere.

With that background, QA applied to the court under Part 11 of the Civil Procedure Rules seeking a stay of the whole of PRS’s claim on grounds of forum non conveniens, alternatively a stay of the claim other than in respect of UK copyright either on grounds of forum non conveniens or as a matter of case management. QA argued that the appropriate forum was Qatar. PRS accepted that Qatar was an available forum, but contended that it was not clearly or distinctly a more appropriate forum, England being the natural forum.

It was common ground that the English court had in personam jurisdiction over QA and that the claims made in the proceedings, whether for infringement of UK copyrights or foreign copyrights, are justiciable in the English court following Lucasfilm Limited v Ainsworth [2011] UKSC 39.

Applying the forum non conveniens test set out in Spiliada Maritime Corp v Cansulex Ltd (The Spiliada) [1987] AC 460, Mr Justice Birss found that, in terms of the personal connections the parties had to the countries in question, each of PRS and QA had a close and genuine link to its home state. QA had rather stronger links to the UK than PRS had to Qatar, but the degree of that difference was small.

As for factual connections, Birss J found that QA’s aircraft clearly spent more time in Qatar than in the UK. Nevertheless, to an appreciable degree, relevant acts did take place in the UK. Further, a great deal of the activity in question took place in other countries.

As for applicable law, since the aircraft spent more time in Qatar than in the UK, it followed that for a given aircraft in which acts restricted by copyright were committed, Qatari law would apply for more of the time than UK law. However, UK law would be applicable in relation to acts carried out in the UK and (as already found) relevant acts did take place in the UK to an appreciable degree. It was also clear that the law of other states would be engaged. Therefore, whichever court handled the case it would be required to examine laws other than its own.

Despite the divergent views of the experts about how a Qatari court would deal with foreign law, Birss J found that it had not been established that the Qatari courts were not capable of dealing with and applying foreign law appropriately.

As for factors affecting convenience or expense, such as the location of witnesses or documents, Birss J found that, assuming infringement was established, at some stage both QA and PRS were likely to call evidence about contracts and licensing, which would require evidence from the UK and Qatar respectively. There would also be a need to translate the evidence.

In ultimately finding that the dispute did not have the most real and substantial connection to Qatar, Birss considered that the position was ‘clear’. Birss J did not agree that the connections to Qatar, either personally or factually, were significantly stronger than those in the UK; there were connections to both places. Birss J accepted that in terms of the amount of time, or the number of plays of a work, Qatari law would apply to many more of those instances than UK law. However, he said, the case was not a Qatari copyright dispute in which the events in, and the laws of, the UK and other countries were an ancillary aspect. Every flight (save for domestic ones) engaged the copyright laws of at least two states. The case was, in essence, a global copyright dispute between a UK holder of those global rights and a Qatari user of the protected content who was using it all over the world. The dispute had a connection to every state to and from which QA flies planes. Nevertheless, the dispute did clearly have a more real connection with the UK and Qatar than it did with any other state. However, as between the two, the fact that a higher share of any damages might be due for acts to which Qatari law was applicable, rather than UK law, did not make Qatar clearly and distinctly the forum with which the dispute had the most real and substantial connection. Therefore, Birss J rejected QA’s case on forum non conveniens. As a result, there was no need to consider the case management issues.

Birss J has refused to give QA permission to appeal the decision.

Wiggin acted for PRS. (Performing Right Society Ltd v Qatar Airways Group QCSC [2020] EWHC 1872 (Ch) (17 July 2020) — to read the judgment in full, click here).