November 11, 2019

In a test case concerning infringement of copyright in sound recordings under s 20 of the Copyright, Designs and Patents Act 1988, which provides for the communication right in UK law, the High Court had to consider the “tense” relationship between copyright and the internet. In doing so, it had to balance the interests of the copyright owner in protecting its exclusive rights, and the interests of the public in freedom of access to the internet. The claimants said that a finding for the defendant would fatally undermine copyright, whilst the defendant said that a finding for the claimants would “break the internet”.

Facts

Warner Music UK Ltd and Sony Music Entertainment UK Ltd, and the groups they represent, own or hold the exclusive licences to copyright in sound recordings of music.

The defendant, TuneIn Inc., operates a global online radio service, providing its users with access to tens of thousands of music radio stations from around the world. TuneIn essentially acts as a ‘one-stop shop’ for users wishing to browse, search for and listen to radio stations. It aggregates links to radio station streams, categorises and curates station lists, and recommends stations to users based on their location and other factors.

The TuneIn Radio service is available through a website and via associated mobile apps. It is also available on over 200 platform connected devices, including smart phones, tablets, televisions, car audio systems, smart speakers and wearable technologies. The service is monetised through subscriptions to TuneIn’s “premium” service, payments received for download its “Pro app” and advertising.

When a user chooses a particular internet radio station on the TuneIn service, there follows a “pre-roll” advertisement (unless the ad-free service is used) and the radio station then starts playing on his/her device. The user is not taken to the internet radio station’s website, but stays on the TuneIn page. Whilst TuneIn does not transmit the audio content it does collect and store metadata about the content being transmitted by internet radio stations (e.g. the artist, track and album names) from data provided by the stations.

The claimants contended that TuneIn itself requires a licence where it includes in its service radio stations that play sound recordings within the claimants’ repertoire. This was disputed by TuneIn on the basis that it does not transmit or host any music content and merely provides hyperlinks to radio streams which are freely available on the internet without any geographic or other restriction.

Decision

Mr Justice Birss found that, on the facts, TuneIn targeted consumers in the UK, meaning that UK copyright was engaged.

Birss J applied the main principles from the Court of Justice of the European Union decisions in Case C-466/12 Svensson v Retriever Sverige AB and Case C-160/15 GS Media BV v Sonoma Media Netherlands BV, which both concerned the provision of links to protected works. As the judgment observes, Svensson was a case in which the rightholders were taken to have authorised the communication of the works in question to the general internet public. Hyperlinking to those works was not an infringement because the hyperlink did not have the effect of communicating the works to any ‘new public’ (i.e. a public that was not already in the rightholders’ contemplation when the initial authorisation was granted). By contrast, GSMedia was a case in which the initial posting of the copyright work was without the copyright owner’s consent.

Birss J considered four categories of music radio stations on TuneIn Radio:

1. stations that were licensed in the UK (Category 1);
2. stations that were not licensed in the UK or elsewhere (Category 2);

• stations that were licensed for a territory other than the UK (Category 3); and

1. premium music radio stations (Category 4).

The Category 3 stations, which were each licensed in their ‘home’ territory under statutory regimes, gave rise to a factual position that was not considered by the CJEU in the linking cases of either Svensson or GSMedia. Birss J approached the Category 3 stations on the basis that the obligation on the station operators to pay royalties under the applicable local law should be treated as a form of deemed consent by the claimants to their works appearing on the internet in a manner that was aimed at users of the operator’s local website or otherwise at users in the locality in question.

The impact of TuneIn’s intervention was to target the Category 3 stations at users in the UK, who constituted a ‘new public’ not taken into account in the initial communication. Accordingly, TuneIn’s act of communication in relation to the Category 3 stations amounted to an unlawful act under s20 of the 1988 Act unless licensed by the UK rightholder.

Given that the Category 2 stations were either unlicensed, or otherwise not licensed in accordance with the local rights regime, the Judge’s starting point was that they “cannot be in a better position than Category 3 stations”. They therefore either fell to be treated in the same way as the Category 3 stations (at best) or fell to be analysed in accordance with the approach taken in GSMedia. Following GSMedia, TuneIn would therefore commit an act of infringement where it “links with knowledge, actual or presumed, that the works were placed on the internet without permission.”

On the facts, Birss J’s view was that it was reasonable to expect TuneIn to carry out the necessary checks; that the linking in issue was the core of TuneIn’s commercial operation; that it was not unreasonable to expect TuneIn to pay particular attention to rights clearance issues; and that, accordingly, the knowledge presumption established by the CJEU in GSMedia applied. The Judge considered that the number of internet radio stations indexed by TuneIn was not so large as to make the necessary checks unduly troublesome. Therefore, there was a GS Media presumption of knowledge.

TuneIn sought to rebut the presumption by saying that it required all internet radio stations to provide a warranty that they had the necessary licences and that no further licences or payments were necessary. Birss J did not accept this, as the evidence showed that a substantial number of stations had provided no warranties and TuneIn was aware of this. As for the stations for which it could be said a warranty had been given, such warranty amounted to a mere representation that the station was operating lawfully in its home state and was not a representation about the position in the UK. In addition, on the evidence, Birss J concluded that TuneIn did not take the obtaining of warrants seriously.

Therefore, Birss J, said TuneIn had failed to rebut the GS Media presumption: it knew that the Category 2 stations had been made available without any consent. Assuming the stations had broadcast relevant content, TuneIn had infringed s20 of the 1988 Act.

As for Category 4 stations, these stations were created exclusively for TuneIn and made available to TuneIn’s premium (subscription-paying) users. There was no prior act of making them available to the public. Birss J therefore held that TuneIn’s provision of the relevant station streams amounted to an act of communication which was targeted at the UK and, given the absence of any applicable licence, was an act of infringement.

As for Category 1 stations, whilst the Judge acknowledged that “there is scope for a different view”, he differentiated these sample stations from the Category 3 stations on the basis that territorial issues did not apply. Although Birss J considered TuneIn’s act of communication to be a different kind of activity from that of the station operator, he said that it was directed to users in the same territory. In essence, the Judge’s view was therefore TuneIn was not communicating works in the Category 1 station streams to any ‘new public’ because the UK public had already been taken into account by the rightholders when the stations were licensed for reception in the UK.

The claim relating to the TuneIn Pro app concerned the in-built recording functionality provided by TuneIn. When this functionality was enabled for UK users, the Pro app allowed users to record, replay, pause and fast forward content from station streams indexed by TuneIn. It also included an ‘intelligent skip’ function. In providing this integrated functionality, the Judge considered that TuneIn “converted the internet radio station’s streaming service into a permanent download on demand service.” This amounted to a different technical means to that provided by the original internet radio station. Accordingly, when the record function was enabled, TuneIn’s Pro app infringed the claimants’ copyright under s20 in so far as it included sample stations in any of the categories.

The authorisation and joint tortfeasorship claims brought by the claimants related to (i) infringing acts of reproduction by UK users who had made copies of the Claimants’ recordings using the Pro app; and (ii) infringing acts of communication of the public by the operators of stations not licensed for the UK.

As to the first, Birss J considered that there “can be no real doubt that a significant number of recordings will have been made by users of TuneIn’s Pro app in the UK” which would not have fallen within the ‘time shifting’ exception in s.70 of the 1988 Act.

As to the second, Birss J considered that the operators of the Category 2, 3 and 4 sample stations committed an act of infringement under s.20 1988 At when the station stream is played to a UK user through the TuneIn service.

In both cases, TuneIn was found to have authorised the infringement and acted as a joint tortfeasor: it had requisite control; it could have taken steps to prevent the infringement but did not; it directly intervened to provide streams to users in the UK and played an indispensable role in the way that UK users experienced the streams; and, in relation to its knowledge of infringement, TuneIn knew all it needed to know about the sample stations in Categories 3 and 4.

Finally, Birss J held that none of the safe harbours relied on by TuneIn – namely the caching, mere conduit and hosting safe harbours under the Electronic Commerce (EC Directive) Regulations 2002 – were relevant.

The hosting safe harbour was not relevant to the recording function on the Pro app. When a user made a recording using TuneIn’s Pro app software, that recording was not stored on any TuneIn servers, but was stored on the user’s personal device. TuneIn was not therefore hosting the infringing copy at all. The fact that TuneIn authorised a user to commit an act of copyright infringement by making a copy of one of the protected works was irrelevant, Birss J said, and was not an act of hosting either.

As for mere conduit, the internet radio station provider itself was not a conduit on any view since it initiated (and then transmitted) the stream to the user. As for TuneIn, it did not transmit the stream to a user, as it did not pass through TuneIn’s servers. (Warner Music UK Ltd v TuneIn Inc [2019] EWHC 2923 (Ch) (1 November 2019) — to read the judgment in full, click here).