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UK: Payam Tamiz v. Google, [2013] EWCA Civ 68

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URL: http://www.bailii.org/ew/cases/EWCA/Civ/2013/68.html
Cite as: [2013] WLR(D) 65, [2013] 1 WLR 2151, [2013] EWCA Civ 68, [2013] EMLR 14
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Neutral Citation Number: [2013] EWCA Civ 68
Case No: A2/2012/0691
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
QUEEN’S BENCH DIVISION
Mr Justice Eady
[2012] EWHC 449 (QB)

Royal Courts of Justice
Strand, London, WC2A 2LL
14/02/2013
B e f o r e :

THE MASTER OF THE ROLLS
LORD JUSTICE RICHARDS
and
LORD JUSTICE SULLIVAN
____________________

Between:
Payam Tamiz
Appellant
– and –

Google Inc
Respondent
____________________

Godwin Busuttil (instructed by Brett Wilson LLP) for the Appellant
Antony White QC and Catrin Evans (instructed by Reynolds Porter Chamberlain LLP) for the Respondent
Hearing dates : 3-4 December 2012
____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

Lord Justice Richards :

The respondent, Google Inc, is a corporation registered in Delaware and with its principal place of business in California. It provides a range of internet services including Blogger (also referred to as Blogger.com), a service based and managed in the USA but available worldwide. Blogger is a platform that allows any internet user in any part of the world to create an independent blog (web log). The service includes design tools to help users create layouts for their blogs and, if they do not have their own URL (web address), enables them to host their blogs on Blogger URLs. The service itself is free of charge but bloggers can sign up to a linked Google service that enables them to display advertisements on their blogs, the revenues from which are shared between the blogger and Google Inc.
One of the blogs hosted on Blogger bears the name “London Muslim”. The appellant, Mr Tamiz, complains that eight specific comments posted on the London Muslim blog between 28 and 30 April 2011 were defamatory of him. There is an issue, considered below, as to when any complaint was first notified by him to Google Inc. It is common ground, however, that his letter of claim was received by Google Inc in early July 2011; that on 11 August 2011, after further email exchanges, the letter was forwarded to the blogger; and that on 14 August 2011 the blogger voluntarily removed all the comments about which complaint is made.
The appellant seeks to bring a claim in libel against Google Inc in respect of the publication of the allegedly defamatory comments during the period prior to their removal. He was granted permission by Master Eyre to serve the claim form on Google Inc in California. On Google Inc’s subsequent application, however, Eady J held that the court should decline jurisdiction and that the Master’s order for service out of the jurisdiction should therefore be set aside. The judge’s order to that effect is the subject of the present appeal. The judge also held that Google UK Ltd had been joined in the proceedings inappropriately and that there was no triable claim against it. There is no appeal against that aspect of his decision.
In summary, Eady J found that three of the comments were arguably defamatory but that on common law principles Google Inc was not a publisher of the words complained of, whether before it was notified of the complaint or after such notification. If, contrary to that view, Google Inc was to be regarded as a publisher at common law, section 1 of the Defamation Act 1996 (“the 1996 Act”) would provide it with a defence, in particular because it took reasonable care in passing the complaint on to the blogger after it had been notified of it. At this point of his judgment Eady J also indicated his acceptance of a submission that the period between notification and removal of the offending blog was so short as to give rise to potential liability on the part of Google Inc only for a very limited period, such that the court should regard its potential liability as so trivial as not to justify the maintenance of the proceedings, in accordance with the principles in Jameel (Yousef) v Dow Jones & Co Inc [2005] QB 946. Nevertheless he went on to consider an alternative defence under regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002 (“the 2002 Regulations”), which he held would provide Google Inc with a defence if it were otherwise needed.
The main issues in the appeal, taking them in the order in which they were considered by the judge below, are (1) whether there is an arguable case that Google Inc was a publisher of the comments, (2) whether, if it was a publisher, it would have an unassailable defence under section 1 of the 1996 Act, (3) whether any potential liability was so trivial as not to justify the maintenance of the proceedings, and (4) whether Google Inc would have a defence, if otherwise necessary, under regulation 19 of the 2002 Regulations.
Before considering those issues it is necessary to say a little more about various background matters.
The comments themselves

An article in the Evening Standard on 27 April 2011 contained an allegation that the appellant had resigned as a Conservative Party candidate for local elections in Thanet after it had been discovered that his Facebook site referred to women as “sluts”. The appellant sued separately in respect of that article and the proceedings were settled by a consent order. The topic was picked up in an article posted on the London Muslim blog on 27 April. This gave rise to a number of comments posted anonymously over the next three days. The comments complained of are set out in Eady J’s judgment at [7]. The judge held that five of the comments could be characterised in this context as “mere vulgar abuse” to which no sensible person would attach much, if any, weight (see Smith v ADVFN Plc [2008] EWHC 1797 (QB) at [13]-[17], and Clift v Clarke [2011] EWHC 1164 (QB) at [32] and [36]). He found, however, that three of the comments (Comments A, B and D) were arguably defamatory. They included allegations that the appellant was a drug dealer, had stolen from his employers and was hypocritical in his attitude towards women.
The arguments on the appeal included a brief submission that the judge ought also to have found other comments to be arguably defamatory: in particular, Comment E which contained a suggestion that the appellant had made a fake asylum claim. But the judge directed himself correctly and I see no sufficient basis for interfering with the assessment he made on this issue.
Notification of the complaint

On the evidence before him, the judge dealt with the factual issue of notification as follows:
“15. According to Mr Tamiz, he first notified his complaint on 28 or 29 April 2011 (i.e. as the postings were taking place) when he used the “Report Abuse” function on the relevant web page. What became of this remains unclear.
16. A letter of claim was sent on 29 June to Google UK Ltd, which was received on 5 July. This complained of the original article, as being defamatory and untrue, although it was not subsequently sued upon in these proceedings. Complaint was also made of what is now described as Comment A. This letter was passed by Google UK Ltd to Google Inc, which responded to Mr Tamiz by email on 8 July. Clarification was sought as to whether the comment in question was said to be untrue, since his letter had not apparently made that clear. It was at this stage that it was pointed out to Mr Tamiz that the blogger service had nothing to do with Google UK Ltd.
17. Mr Tamiz responded promptly on 8 July to the effect that Comment A was indeed “false and defamatory”. At this stage, he introduced a complaint about Comment B as well.
18. The ‘Blogger Team’ within Google Inc sent a further email to Mr Tamiz on 19 July, seeking his permission to forward his complaint to the author of the blog page. He was told, however, that Google Inc itself would not be removing the post complained of. Mr Tamiz responded by giving the necessary permission on 22 July.
19. In that email of 22 July, Mr Tamiz complained about a further five comments on the blog, now identified as Comments C, D, E, F and G. He confirmed that these were alleged to be defamatory and it seemed to be implicit also that he was characterising them as untrue.
20. After considerable delay, Google Inc forwarded the letter of claim to the blogger on 11 August of last year and informed Mr Tamiz that it had done so. As I have said, on 14 August the article and all the comments were removed by the blogger himself. Mr Tamiz was accordingly notified by Google Inc the following day ….”
In his particulars of claim the appellant alleged that between 29 April and the letter of claim he made various telephone calls to Google UK Ltd and sent two letters, dated 29 April and 23 May, to that company’s offices. Those allegations were not admitted by the defendants and were not supported by evidence at the hearing before Eady J. The defendants also contended that communications to Google UK Ltd were not capable of constituting notification to Google Inc. The transcript of the hearing makes it tolerably clear that the appellant was content in the event to proceed on the basis that the date of notification of the complaint to Google Inc was the date when the letter of claim was forwarded to Google Inc by Google UK Ltd, which fell between 5 July (when Google UK Ltd received the letter) and 8 July (when Google Inc first contacted the appellant by email). All this fits with the way the judge dealt with the matter in the passage quoted above.
The appellant has applied to adduce fresh evidence on the appeal, in the form of a witness statement in which he gives detailed further information about the Blogger service and about his dealings with Google UK Ltd and Google Inc, exhibiting inter alia copies of the two letters allegedly sent by him to Google UK Ltd. If that evidence is admitted, Google Inc applies to adduce fresh evidence in response, by way of a witness statement asserting that Google UK Ltd has no record of receiving any telephone calls or letters from the appellant prior to the letter of claim, and giving an update on the procedure for complaints about postings on Blogger.
Ladd v Marshall [1954] 1 WLR 1489 remains central to the exercise of the court’s discretion as to the receipt of fresh evidence under CPR 52.11(2) (see the discussion at para 52.11.2 of Civil Procedure 2012). The first condition in Ladd v Marshall is plainly not met in this case: the evidence the appellant now seeks to adduce could have been obtained with reasonable diligence for use at the hearing below. Indeed, in practice the issue to which the evidence relates fell away at that hearing, since the appellant was content to proceed on the narrower basis that the letter of claim constituted notification of his complaint. I bear in mind that at that stage of the proceedings he was representing himself but I attach relatively little weight to that consideration because he is a law graduate and, as appears from the transcript of the hearing, is intelligent and articulate. Taking everything into account, I do not consider that the case for admission of the fresh evidence has been made out. The issues in the appeal ought in my view to be determined on the factual basis on which the judge proceeded.
Google Inc’s policy

Google Inc’s policy towards the content of blogs hosted by Blogger at the material time is set out in a witness statement of Mr Jaron Lewis, a solicitor with conduct of the company’s case:
“9. Blogger.com is not involved with the creation of content that people post on their blogs. It does not create, select, solicit, vet or approve that content, which is published and controlled by the blog owners ….
10. Blogger.com does operate a ‘Content Policy’ which sets out restrictions on what users can do using the service …. This makes clear that content such as child pornography, or promoting race hatred, is prohibited. The policy is explained in the following terms:
‘Blogger is a free service for communication, self-expression and freedom of speech. We believe that Blogger increases the availability of information, encourages healthy debate and makes possible new connections between people.
We respect our users’ ownership of and responsibility for the content they choose to share. It is our belief that censoring this content is contrary to a service that bases itself on freedom of expression.
In order to uphold these values, we need to curb abuses that threaten our ability to provide this service and the freedom of expression it encourages. As a result, there are some boundaries on the type of content that can be hosted with Blogger. The boundaries we have defined are those that both comply with legal requirements and that serve to enhance the service as a whole.’
11. [Google Inc] also operates a ‘Report Abuse’ feature …. There are eight grounds for reporting abuse, and users have to select one of these. The eight listed are …
Defamation/Libel/Slander

12. If the user selects ‘Defamation/Libel/Slander’, which is what appears to have happened in this case …, a second screen is displayed.
13. The second screen makes clear that the Blogger.com service is operated in accordance with US law, and that defamatory material will only be taken down if it has been found to be libellous (i.e. unlawful) by a court. The reason for this policy is that under US law, [Google Inc] is not a publisher of third party content hosted on blogspot.com. US law works on the basis that claimants must raise their defamation issues directly with the author of the material, not third party service providers such as Blogger.com.
14. Given the volume of content uploaded by users of the Blogger service, it is usually not practicable for [Google Inc] to remove content without first receiving the Court’s determination that the content is, in fact, libellous. Google is not in a position to adjudicate such disputes itself.”
In this case Google Inc appears to have gone slightly further than the stated policy, in that the email of 11 August 2011 by which it passed on to the blogger the details of the appellant’s complaint contained an actual request to “please remove the allegedly defamatory content in your blog within three (3) days of today’s date”. The blogger complied with that request.
Whether Google Inc was a publisher of the comments

The appellant’s pleaded case relates to the period after Google Inc had been notified of his complaint. As Eady J observed, it is therefore only necessary to assess potential legal liability from the point of notification. Nevertheless the judge’s reasons and the arguments in this court extended to the position before as well as after notification.
At [35]-[38] of his judgment, the judge noted inter alia that it was virtually impossible for Google Inc to exercise editorial control over the content of the blogs it hosts, which in the aggregate contain more than half a trillion words, with 250,000 new words added every minute. He referred to the submission that it would be unrealistic to attribute responsibility for publication of material on any particular blog to Google Inc, whether before or after notification of a complaint. He also referred to the importance of striving to achieve consistency in decisions in the face of rapidly developing technology, and to paying proper regard to the values enshrined in the ECHR. He said that the fact that an entity in Google Inc’s position had been notified of a complaint did not immediately convert its status or role into that of a publisher. If Google Inc’s status before notification of a complaint was that of a provider or a facilitator, it was not easy to see why that role should be expanded thereafter into that of a person who authorised or acquiesced in publication. Google Inc claimed to remain as neutral in the process after notification as it was before. It might be true that it had the technical capability of taking down blogs or comments on its platform, yet that was not by any means the same as saying that it had become an author or authoriser of the publication:
“It is no doubt often true that the owner of a wall which has been festooned, overnight, with defamatory graffiti could acquire scaffolding and have it all deleted with whitewash. That is not necessarily to say, however, that the unfortunate owner must, unless and until this has been accomplished, be classified as a publisher.”
The judge went on at [39] to attach significance to the evidence that Google Inc was not required to take any positive step, technically, in the process of continuing the accessibility of the offending material: he said that its role as a platform provider was “a purely passive one”. The situation was thus in his view closely analogous to that described in Bunt v Tilley [2007] 1 WLR 1243, and in striving to achieve consistency in the court’s decision-making he would rule that Google Inc was not liable at common law as a publisher.
Bunt v Tilley concerned internet service providers (ISPs) who were not alleged to have hosted any website relevant to the claims. The issue was whether they could be liable simply in respect of defamatory material communicated via the services they provided. Eady J was again the judge. In a central passage of his judgment he said this:
“21. In determining responsibility for publication in the context of the law of defamation, it seems to me to be important to focus on what the person did, or failed to do, in the chain of communication. It is clear that the state of a defendant’s knowledge can be an important factor. If a person knowingly permits another to communicate information which is defamatory, when there would be an opportunity to prevent the publication, there would seem to be no reason in principle why liability should not accrue. So too, if the true position were that the applicants had been (in the claimant’s words) responsible for ‘corporate sponsorship and approval of their illegal activities’.
22. I have little doubt, however, that to impose legal responsibility upon anyone under the common law for the publication of words it is essential to demonstrate a degree of awareness or at least an assumption of general responsibility, such as has long been recognised in the context of editorial responsibility. As Lord Morris commented in McLeod v St Aubyn [1899] AC 549, 562: ‘A printer and publisher intends to publish, and so intending cannot plead as a justification that he did not know the contents. The appellant in this case never intended to publish.’ In that case the relevant publication consisted in handing over an unread copy of a newspaper for return the following day. It was held that there was no sufficient degree of awareness or intention to impose legal responsibility for that ‘publication’.
23. Of course, to be liable for a defamatory publication it is not always necessary to be aware of the defamatory content, still less of its legal significance. Editors and publishers are often fixed with responsibility notwithstanding such lack of knowledge. On the other hand, for a person to be held responsible there must be knowing involvement in the process of publication of the relevant words [emphasis in the original]. It is not enough that a person merely plays a passive instrumental role in the process. (See also in this context Emmens v Pottle (1885) 16 QBD 354, 357, per Lord Esher MR.)”
At [36] he held that an ISP which performs no more than a passive role in facilitating postings on the internet cannot be deemed to be a publisher at common law. A telephone company or other passive medium of communication, such as an ISP, is not analogous to someone in the position of a distributor, who might at common law be treated as having published so as to need a defence.
In Metropolitan International Schools Ltd v Designtechnica Corpn [2011] 1 WLR 1743 Eady J applied a similar analysis in relation to defamatory comments which, having been posted on a website, appeared as a “snippet” of information when an internet search was carried out under the claimant’s name on Google Inc’s search engine. The judge said that for a person to be fixed at common law with responsibility for publishing defamatory words, there needed to be a mental element, as summarised in Bunt v Tilley. He held that the search in issue was performed automatically and involved no input from Google Inc, which had not authorised or caused the snippet to appear on the user’s screen in any meaningful sense but had merely by the provision of its search service played the role of a facilitator. As to the position once Google Inc had been informed of the defamatory content of the snippet, the judge said that a person can be liable for the publication of libel by acquiescence, that is to say by permitting publication to continue when he or she has the power to prevent it. He drew a distinction between a search engine and someone hosting a website, pointing to the greater difficulty of ensuring that offending words do not appear on a search snippet. Google Inc’s “take-down” procedure might not have operated as rapidly as the claimant would wish, but it did not follow as a matter of law that between notification and take-down Google Inc became liable as a publisher of the offending material. While efforts were being made to achieve a take-down in relation to a particular URL it was hardly possible to fix Google Inc with liability on the basis of authorisation, approval or acquiescence. On the facts of the case, he believed it unrealistic to attribute responsibility for publication to Google Inc.
At the forefront of the appellant’s submissions to this court was an elaborate attack on Bunt v Tilley as applied in Metropolitan International Schools Ltd and the present case. Mr Busuttil submitted that the reasoning in Bunt v Tilley erroneously conflated a number of different threads of law. What Eady J said about the need for “knowing involvement in the process of publication of the relevant words” is at odds with the principle of strict liability for publication, irrespective of knowledge of the defamatory words. Further, in certain circumstances a person may be or become involved in publishing defamatory material by omission, by failing or forbearing to take a step that ought to have been taken, or by remaining passive. The judge’s reasoning does not accurately reflect the distinction between a primary publisher and a secondary publisher (for whom alone the common law defence of innocent dissemination is available). Nor does the reasoning take proper account of the principles of vicarious liability or agency as they apply to render corporations liable for the publication of defamatory material by employees or agents. Mr Busuttil drew our attention to numerous domestic and Commonwealth authorities, submitting in particular that the courts in Australia have not accepted the Bunt v Tilley analysis (see e.g. Trkulja v Google Inc (No.5) [2012] VSC 533, a decision of the Supreme Court of Victoria), although the analysis has been followed by the Canadian Supreme Court (see Crookes v Newton [2011] 3 SCR 269).
Mr Busuttil submitted that Google Inc is a corporation in the business of publishing, acting not just through its employees but also through the myriad of bloggers and all those who post comments on the blogs. It has control over the blogger, who in turn has control over the comments posted on the blog. Google Inc is therefore to be regarded as a primary publisher, potentially liable for defamatory material on the blogs, irrespective of knowledge or fault and irrespective of whether it has been notified of any complaint, subject however to any statutory defences. Alternatively it is a secondary publisher, facilitating publication in a manner analogous to a distributor, subject to the common law defence of innocent dissemination as well as to statutory defences, though it will be difficult to establish the defence of innocent dissemination if it has the power to prevent continuing publication and chooses not to exercise that power.
I do not find it necessary to address the full detail of Mr Busuttil’s criticisms of Bunt v Tilley. I am not persuaded that Eady J fell into any fundamental error of analysis or reached the wrong conclusion in relation to the kind of internet service under consideration in that case. For the reasons set out below, however, I respectfully differ from Eady J’s view that the present case is so closely analogous to Bunt v Tilley as to call for the same conclusion. In my view the judge was wrong to regard Google Inc’s role in respect of Blogger blogs as a purely passive one and to attach the significance he did to the absence of any positive steps by Google Inc in relation to continued publication of the comments in issue.
By the Blogger service Google Inc provides a platform for blogs, together with design tools and, if required, a URL; it also provides a related service to enable the display of remunerative advertisements on a blog. It makes the Blogger service available on terms of its own choice and it can readily remove or block access to any blog that does not comply with those terms (a point of distinction with the search engine under consideration in Metropolitan International Schools Ltd, as the judge himself noted in that case). As a matter of corporate policy and no doubt also for reasons of practicality, it does not seek to exercise prior control over the content of blogs or comments posted on them, but it defines the limits of permitted content and it has the power and capability to remove or block access to offending material to which its attention is drawn.
By the provision of that service Google Inc plainly facilitates publication of the blogs (including the comments posted on them). Its involvement is not such, however, as to make it a primary publisher of the blogs. It does not create the blogs or have any prior knowledge of, or effective control over, their content. It is not in a position comparable to that of the author or editor of a defamatory article. Nor is it in a position comparable to that of the corporate proprietor of a newspaper in which a defamatory article is printed. Such a corporation may be liable as a primary publisher by reason of the involvement of its employees or agents in the publication. But there is no relationship of employment or agency between Google Inc and the bloggers or those posting comments on the blogs: such people are plainly independent of Google Inc and do not act in any sense on its behalf or in its name. The appellant’s reliance on principles of vicarious liability or agency in this context is misplaced.
I am also very doubtful about the argument that Google Inc’s role is that of a secondary publisher, facilitating publication in a manner analogous to a distributor. In any event it seems to me that such an argument can get nowhere in relation to the period prior to notification of the complaint. There is a long established line of authority that a person involved only in dissemination is not to be treated as a publisher unless he knew or ought by the exercise of reasonable care to have known that the publication was likely to be defamatory: Emmens v Pottle (1885) 16 QBD 354, 357-358; Vizetelly v Mudie’s Select Library Ltd [1900] 2 QB 170, 177-180; Bottomley v FW Woolworth and Co Ltd (1932) 48 TLR 521. There are differences in the reasoning in support of that conclusion but the conclusion itself is clear enough. The principle operated in Bottomley to absolve Woolworth from liability for publication of a defamatory article in a consignment of remaindered American magazines that it distributed: the company did not check every magazine for defamatory content, there was nothing in the nature of the individual magazine which should have led it to suppose that the magazine contained a libel, and it had not been negligent in failing to carry out a periodical examination of specimen magazines. Since it cannot be said that Google Inc either knew or ought reasonably to have known of the defamatory comments prior to notification of the appellant’s complaint, that line of authority tells against viewing Google Inc as a secondary publisher prior to such notification. Moreover, even if it were to be so regarded, it would have an unassailable defence during that period under section 1 of the 1996 Act, considered below.
In relation to the position after notification of the complaint, however, additional considerations arise, and it is in relation to this period that I take a different view from that of Eady J on the issue of publication. I am led to do so primarily by the decision of the Court of Appeal in Byrne v Deane [1937] 1 KB 818. That case concerned an allegedly defamatory verse which someone had posted on the wall of a golf club and which was then allowed to remain there for some days. The defendants, who had not been involved in the initial publication, were the proprietors of the golf club, and one of them was also the club secretary. One of the rules of the club provided that “no notice or placard shall be posted in the club premises without the consent of the secretary”. The court held by a majority that the words of the verse were not capable of a defamatory meaning, but all three members of the court agreed that there was evidence of publication by one or both of the defendants. Greer LJ expressed the point in this way (at page 830):
“In my judgment the two proprietors of this establishment by allowing the defamatory statement, if it be defamatory, to rest upon their wall and not to remove it, with the knowledge that they must have had that by not removing it it would be read by people to whom it would convey such meaning as it had, were taking part in the publication of it.”
Slesser LJ considered there to be evidence of publication by the secretary but not by the other defendant. In relation to the secretary he said this (at pages 834-835):
“There are cases which go to show that persons who themselves take no overt part in the publication of defamatory matter may nevertheless so adopt and promote the reading of the defamatory matter as to constitute themselves liable for the publication ….
… She said ‘I read it. It seemed to me somebody was rather annoyed with somebody.’ I think having read it, and having dominion over the walls of the club as far as the posting of notices was concerned, it could properly be said that there was some evidence that she did promote and associate herself with the continuance of the publication.”
Greene LJ agreed with Greer LJ that there was evidence of publication by both defendants. His reasons included the following (at pages 837-838):
“It is said that as a general proposition where the act of the person alleged to have published a libel has not been any positive act, but has merely been the refraining from doing some act, he cannot be guilty of publication. I am quite unable to accept any such general proposition. It may very well be that in some circumstances a person, by refraining from removing or obliterating the defamatory matter, is not committing any publication at all. In other circumstances he may be doing so. The test it appears to me is this: having regard to all the facts of the case is the proper inference that by not removing the defamatory matter the defendant really made himself responsible for its continued presence in the place where it had been put?”
Byrne v Deane was considered in Godfrey v Demon Internet Ltd [2001] QB 201, in which the defendant ISP received and stored on its news server a defamatory article which had been posted by an unknown person using another ISP. The plaintiff notified the defendant of the article and asked it to remove the article, but the defendant failed to do so and the posting remained on the news server for ten days until it expired automatically. The plaintiff claimed against the defendant in respect of that period of ten days. Morland J held that the defendant was liable. Whilst he cited the passage from Greene LJ’s judgment in Byrne v Deane quoted above, he rested his decision on the broader ground that whenever there was a transmission of a defamatory posting from the storage of the defendant’s news server, the defendant was a publisher of that posting but had a defence under section 1 of the 1996 Act until it lost that defence as a result of the plaintiff’s notification.
More directly in point is Davison v Habeeb and Others [2011] EWHC 3031 (QB), which concerned defamatory material posted on a blog hosted by Google Inc itself. HHJ Parkes QC, sitting as a deputy judge of the High Court, considered it arguable that Google Inc was a publisher from the outset, subject to the defence under section 1 of the 1996 Act, but he also relied on Byrne v Deane as an alternative strand in the reasoning that led him to conclude that there was an arguable case against Google Inc:
“38. … The analogy between the ISPs which Eady J was considering in Bunt v Tilley … and the postal service was an apt one, because the ISPs in that case, like the postal or indeed the telephone services, were simply conduits, or facilitators, enabling messages to be carried from one person, or one computer, to another. Blogger.com, by contrast, is not simply a facilitator, or at least not in the same way as the ISPs. It might be seen as analogous to a gigantic noticeboard which is in [Google Inc’s] control, in the sense that [Google Inc] provides the noticeboard for users to post their notices on, and it can take the notices down (like the club secretary in Byrne v Deane …) if they are pointed out to it. However, pending notification it cannot possibly have the slightest familiarity with the notices posted, because the noticeboard contains such a vast and constantly growing volume of material. On that analogy, it ought not to be viewed as a publisher until (at the earliest) it has been notified that it is carrying defamatory material so that, by not taking it down, it can fairly be taken to have consented to and participated in publication by the primary publisher. The alternative is to say that, like Demon Internet in Godfrey v Demon Internet Ltd…, it chose to host material which turned out to be defamatory, and which it was open to anyone to download, so that at common law it was prima facie liable for publication of the material, subject to proof that it lacked the necessary mental state.

42. … In my view it must be at least arguable that [Google Inc] should properly be seen as a publisher responding to requests for downloads like Demon Internet, rather than a mere facilitator, playing a passive instrumental role.

47. Even if [Google Inc] should properly be seen as a facilitator, the mere provider of a gigantic noticeboard on which others published defamatory material, in my judgment it must also at least be arguable that at some point after notification [Google Inc] became liable for continued publication of the material complained of on the Byrne v Deane principle of consent or acquiescence.”
The principles in Byrne v Deane have also been applied in the context of website or search engine content in a number of Commonwealth cases to which Mr Busuttil drew our attention: see, in particular, Sadiq v Baycorp (NZ) Limited [2008] NZHC 403 and A v Google New Zealand Ltd [2012] NZHC 2352.
In the present case, Eady J referred at [32]-[33] to Godfrey v Demon Internet Ltd and to Davison v Habeeb, observing that the position may well be fact sensitive: liability may turn upon the extent to which the relevant ISP has knowledge of the words complained of, and of their illegality or potential illegality, and/or on the extent to which it has control over publication. In relation to Blogger he said nothing about HHJ Parkes QC’s analogy with the provision of a gigantic notice board on which others post comments. Instead, he drew an analogy with ownership of a wall on which various people choose to inscribe graffiti, for which the owner is not responsible (see [16] above). I have to say that I find the notice board analogy far more apposite and useful than the graffiti analogy. The provision of a platform for the blogs is equivalent to the provision of a notice board; and Google Inc goes further than this by providing tools to help a blogger design the layout of his part of the notice board and by providing a service that enables a blogger to display advertisements alongside the notices on his part of the notice board. Most importantly, it makes the notice board available to bloggers on terms of its own choice and it can readily remove or block access to any notice that does not comply with those terms.
Those features bring the case in my view within the scope of the reasoning in Byrne v Deane. Thus, if Google Inc allows defamatory material to remain on a Blogger blog after it has been notified of the presence of that material, it might be inferred to have associated itself with, or to have made itself responsible for, the continued presence of that material on the blog and thereby to have become a publisher of the material. Mr White QC submitted that the vast difference in scale between the Blogger set-up and the small club-room in Byrne v Deane makes such an inference unrealistic and that nobody would view a comment on a blog as something with which Google Inc had associated itself or for which it had made itself responsible by taking no action to remove it after notification of a complaint. Those are certainly matters for argument but they are not decisive in Google Inc’s favour at this stage of proceedings, where we are concerned only with whether the appellant has an arguable case against it as a publisher of the comments in issue.
I do not consider that such an inference could properly be drawn until Google Inc had had a reasonable time within which to act to remove the defamatory comments. It will be recalled that on the judge’s findings the letter of claim containing the complaint about Comment A was received on or about 5 July 2011 (and certainly by 8 July), the complaint about Comment B was introduced in the appellant’s response to Google Inc on 8 July, and the complaint about Comment D was introduced on 22 July. The letter of claim was forwarded to the blogger on 11 August and the material was all removed on 14 August. That means that in relation to Comments A and B, in particular, a period of over five weeks elapsed between notification and removal. In the context of the defence under section 1 of the 1996 Act, considered below, Eady J described Google Inc’s response as somewhat dilatory but not outside the bounds of a reasonable response. Whilst I accept the judge’s assessment in the context of the statutory defence, it is in my view open to argument that the time taken was sufficiently long to leave room for an inference adverse to Google Inc on Byrne v Deane principles.
The period during which Google Inc might fall to be treated on that basis as a publisher of the defamatory comments would be a very short one, but it means that the claim cannot in my view be dismissed on the ground that Google Inc was clearly not a publisher of the comments at all.
The defence under section 1 of the 1996 Act

I therefore turn to consider the defence under section 1 of the 1996 Act. That section provides:
“(1) In defamation proceedings a person has a defence if he shows that –
(a)    he was not the author, editor or publisher of the statement complained of,
(b)    he took reasonable care in relation to its publication, and
(c)    he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.
(2) For this purpose ‘author’, ‘editor’ and ‘publisher’ have the following meanings, which are further explained in subsection (3) –
‘author’ means the originator of the statement, but does not include a person who did not intend that his statement be published at all;
‘editor’ means a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and
‘publisher’ means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business.
(3) A person shall not be considered the author, editor or publisher of a statement if he is only involved –
(a)    in printing, producing, distributing or selling printed material containing the statement;
(b) in processing, making copies of, distributing, exhibiting or selling a film or sound recording (as defined in Part I of the Copyright, Designs and Patents Act 1988) containing the statement;
(c)    in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form;
(d)    as the broadcaster of a live programme containing the statement in circumstances in which he has no effective control over the maker of the statement;
(e)    as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.
In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement.
(4) Employees or agents of an author, editor or publisher are in the same position as the employer or principal to the extent that they are responsible for the content of the statement or the decision to publish it.
(5) In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to –
(a)    the extent of his responsibility for the content of the statement or the decision to publish it,
(b)    the nature or circumstances of the publication, and
(c)    the previous conduct or character of the author, editor or publisher.”
It will be seen that the conditions in subsection (1) are cumulative. Eady J held at [42]-[51] that all three conditions were satisfied in this case.
As to subsection (1)(a), he held that Google Inc was not a “publisher” for these purposes even if, contrary to his primary conclusion, it was to be treated at common law as having been a publisher of the defamatory comments. It did not come within the definition of “commercial publisher” within subsection (2) since in operating the Blogger service it did not itself issue material to the public or a section of the public and, specifically, it did not issue material containing the statements complained of. Eady J also drew support from subsection (3)(e), taking the view that Google Inc could accurately be characterised as providing access to a communications system by means of which the statements were transmitted or made available by a person over whom it had no effective control: by “effective control” it was likely that the draftsman had in mind effective day-to-day control rather than the possibility of intervention in reliance on a contractual term about the permitted content of a web page.
I see no reason to disagree with the judge’s conclusion on that point. In particular, I do not think that Google Inc can sensibly be said to have “issued” the defamatory comments even if it was involved in their publication in a way capable of attracting liability at common law. Its involvement was of a kind analogous to, if not identical to, that described in subsection (3)(e). I share the judge’s view that the existence of a contractual term about the content of blogs is not sufficient to give it “effective control” over the person who posted the defamatory comments.
As to the conditions in subsection (1)(b) and (c), in my judgment they are plainly satisfied in relation to the period prior to notification of the complaint. There is no basis for concluding in relation to that period that Google Inc failed to take reasonable care in relation to publication of the comments or that it knew or had reason to believe that it caused or contributed to their publication. Greater difficulty arises, however, in relation to the application of the conditions to continued publication of the comments after Google Inc had notice of their allegedly defamatory content.
Thus, the relevant question in relation to subsection (1)(b) is whether Google Inc took reasonable care in relation to the continued publication of the comments. Eady J referred to the submissions of counsel for Google Inc that the company took reasonable care in relation to the appellant’s complaint when it passed the complaint on to the blogger and that this was a proportionate response. The judge held at [47]:
“One could certainly say that the response was somewhat dilatory, but I would not consider it, in all the circumstances of this case, to be outside the bounds of a reasonable response”.
This may have been a generous view but I am not persuaded that it was wrong. The factors in subsection (5), to which regard must be had in determining whether Google Inc took reasonable care, tell in its favour: the company had no responsibility for the content of the comments or the decision to publish them; the circumstances of publication include the vast number of blogs that are hosted on Blogger, which may be said to justify a longer response time; and there is no evidence of anything in the previous conduct of the particular blogger or of those who posted the comments that might have called for speedier action to be taken. The situation is distinguishable from that which caused Morland J to hold in Godfrey v Demon Internet that subsection (1)(b) posed an insuperable difficulty for the defendants since “after receipt of the plaintiff’s fax, the defendants knew of the defamatory posting but chose not to remove it from their … news servers”: it is clear why, in the absence of any steps at all, the judge in that case did not think that reasonable care had been exercised.
The relevant question in relation to subsection (1)(c) is whether it can be said that in the period after notification of the complaint Google Inc did not know, and had no reason to believe, that what it did caused or contributed to the publication of a defamatory statement. The judge’s reasoning on this was very brief. He said at [49] that once the complaint in respect of a relevant comment was notified, Google Inc would have had reason to believe that the comment was defamatory, but that this was “far from saying … that Google Inc would have known, or had reason to believe, that it had done anything to cause or contribute to the publication of any of these statements”. But the very considerations that lead me to conclude that Google Inc arguably became a publisher of the defamatory comments on Byrne v Deane principles also tend towards the conclusion that following notification it knew or had reason to believe that what it did caused or contributed to the continued publication of the comments. The judge in Davison v Habeeb and Others, at [46], thought it arguable in that case that at some point after notification Google Inc knew or had reason to believe that its continued hosting of the material in question caused or contributed to the publication of a defamatory statement. In my view the same can be said in the present case.
Mr White QC submitted that Eady J appeared to have had in mind what was said in Milne v Express Newspapers [2005] 1 WLR 772 about the similar language in section 4(3) of the 1996 Act, to the effect that an offer to make amends under section 2 is a defence unless the person by whom the offer was made “knew or had reason to believe” that the statement complained of (a) referred to the aggrieved party or was likely to be understood as referring to him, and (b) was false and defamatory of that party. The court held in that case that a person knew or had reason to believe that a statement was false if he either knew that it was false or was reckless as to whether it was false, in the sense of not considering or caring whether it was true or not. Eady J made reference to that decision when finding in Bunt v Tilley, at [61], that the condition in subsection (1)(c) was satisfied in relation to one of the ISPs because the email sent to it by the complainant “did not effectively put [it] on notice, and its staff were given no reason to believe that they were causing or contributing to the publication of the postings complained of”. That finding turned, however, on the particular terms of the email in question, and it is difficult to read into the judge’s reasoning in the present case any implied reference either to what he said on this point in Bunt v Tilley or to the decision or reasoning in Milne v Express Newspapers. In any event this line of reasoning does not appear to me to provide a satisfactory answer to the concern I have expressed about the judge’s view of subsection (1)(c) in the present case.
In the light of that concern about subsection (1)(c) I am not satisfied that, if Google Inc were found to be a publisher of the defamatory comments on Byrne v Deane principles, section 1 of the 1996 Act would provide it with an unassailable defence.
For that reason it is necessary to move to the next issue considered by the judge, namely the question whether any potential liability on the part of Google Inc was sufficient to justify the maintenance of the proceedings against it. The judge appeared to treat this as a subsidiary point under his consideration of the statutory defence, but it is in truth a distinct issue which assumes real importance in this case if I am correct in the conclusions I have reached so far.
“Real and substantial tort”

At [50] of his judgment, Eady J accepted an argument by counsel for Google Inc that the period between notification of the complaint and removal of the offending blog was so short as to give rise to any potential liability on the part of Google Inc only for a very limited period, such that the court should regard it as so trivial as not to justify the maintenance of the proceedings. The judge said that, to adopt the words in Jameel (Yousef) v Dow Jones & Co Inc (cited above), “the game would not be worth the candle”.
In Jameel (Yousef) the Court of Appeal upheld an application to strike out as an abuse of process defamation proceedings against the publisher of a US newspaper in respect of an article posted on an internet website in the USA which was available to subscribers in England but had been the subject of minimal publication within this jurisdiction. The court considered that the principles relevant to a strike-out application overlapped with those relevant to an application to set aside permission to serve out of the jurisdiction. It was in the latter context that the question whether “a real and substantial tort has been committed within the jurisdiction” had been developed, but the court considered that the question whether a substantial tort had been committed in the jurisdiction was also relevant to an application to strike out as abuse of process. It held that keeping a proper balance between the article 10 right of freedom of expression and the protection of individual reputation required the court to bring to a stop, as an abuse of process, defamation proceedings that were not serving the legitimate purpose of protecting the claimant’s reputation, which included compensating the claimant only if that reputation had been unlawfully damaged. The court went on to consider whether, on the facts of the case before it, vindication of the claimant’s reputation justified the continuance of the action. It concluded:
“69. If the claimant succeeds in this action and is awarded a small amount of damages, it can perhaps be said that he will have achieved vindication for the damage done to his reputation in this country, but both the damage and the vindication will be minimal. The costs of the exercise will have been out of all proportion to what has been achieved. The game will not merely not have been worth the candle, it will not have been worth the wick.
70. If we were considering an application to set aside permission to serve these proceedings out of the jurisdiction we would allow that application on the basis that the five publications that had taken place in this jurisdiction did not, individually or collectively, amount to a real and substantial tort. Jurisdiction is no longer in issue, but subject to the effect of the claim for an injunction that we have yet to consider, we consider for precisely the same reason that it would not be right to permit this action to proceed. It would be an abuse of the process to continue to commit the resources of the English court, including substantial judge and possibly jury time, to an action where so little is now seen to be at stake ….”
In my judgment, Eady J was plainly right to conclude that the application in the present case to set aside permission to serve out of the jurisdiction should be allowed for like reasons. The allegedly defamatory comments were posted between 28 and 30 April, soon after the initial blog of 27 April. By the very nature of a blog, they will have been followed by numerous other comments in the chain and, whilst still accessible, will have receded into history. As I have indicated, the earliest point at which Google Inc could have become liable in respect of the comments would be some time after notification of the complaint in respect of them. But it is highly improbable that any significant number of readers will have accessed the comments after that time and prior to removal of the entire blog. It follows, as the judge clearly had in mind, that any damage to the appellant’s reputation arising out of continued publication of the comments during that period will have been trivial; and in those circumstances the judge was right to consider that “the game would not be worth the candle”. I do not accept Mr Busuttil’s submission that various other features of the claim, including the fact that the appellant’s name is relatively uncommon and distinctive in this jurisdiction, undermined the judge’s conclusion.
It follows that, despite the fact that I have reached certain conclusions favourable to the appellant on the previous issues, this appeal must in my view fail.
In those circumstances, although the issue was the subject of detailed argument before us, it is unnecessary to consider whether Google Inc would have a defence under regulation 19 of the 2002 Regulations.
Lord Justice Sullivan :

I agree.
Master of the Rolls :

I also agree.
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England & Wales: MCGrath vs Dawkins, [2012] EWHC B3 (QB), 30-3-2012

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Cite as: [2012] EWHC B3 (QB)


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Neutral Citation Number: [2012] EWHC B3 (QB)
Case No: IHJ/11/0537

IN THE HIGH COURT OF JUSTICE
QUEEN’S BENCH DIVISION

Royal Courts of Justice
Strand, London, WC2A 2LL
30th March 2012

B e f o r e :

HHJ MOLONEY QC
(sitting as a Judge of the High Court)

____________________

Between:

1. CHRISTOPHER ANTHONY MCGRATH
2. MCG PRODUCTIONS LIMITED

Claimants
– and –
 
1. PROFESSOR RICHARD DAWKINS
2. THE RICHARD DAWKINS FOUNDATION FOR REASON AND SCIENCE
3. AMAZON EU SARL (trading as Amazon.co.uk)
4. VAUGHAN JOHN JONES

Defendants

____________________

The First Claimant in person and on behalf of the Second Claimant
William McCormick QC and Robert Dougans (solicitor advocate) (instructed by Bryan Cave) for the First and Second Defendants
Richard Munden (instructed by Field Fisher Waterhouse LLP) for the Third Defendant
Jonathan Price (instructed by Bryan Cave) for the Fourth Defendant

Hearing dates: 10 and 11 November 2011 
____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

INTRODUCTION AND CHRONOLOGY

    1. This judgment relates to a series of interim applications made by the several Defendants to an internet libel action brought by the 1st Claimant Mr McGrath (C) and his company (MCG). (Except where a distinction needs to be drawn, any references below to C should be taken as covering his company too.) What follows is a summary of the agreed or otherwise indisputable facts which form the background to the issues arising under the applications.

 

 

    1. C is the author of a book entitled “The Attempted Murder of God: Hidden Science You Really Need To Know”, which was published by MCG in 2010 under the pen-name “Scrooby”. None of the parties referred me to the book itself or any part of it in evidence during this hearing, but it purports to be a contribution to the current debate on “religion versus science”, whose purpose is to argue that modern science, properly understood, does not refute the existence of God but proves it.

 

(I say “purports” because C’s case is that the book is not to be taken at face value but is intended as a satirical parody of various aspects of modern life such as conspiracy theories and deception. In view of this assertion it would not be appropriate at this stage of the proceedings for the Court to assume that C’s own intellectual position is necessarily the same in all respects as the book’s. He has pleaded that he is a Roman Catholic by upbringing, though non-practising, a believer in God, but not a “Creationist” at least in the narrow sense of that term; he accepts evolutionary biology as an indisputable fact, but is not certain as to the truth or otherwise of the account of creation in Genesis. See his Part 18 Response dated 25 July 2011.)

 

    1. Also published in 2010 was another book on the same general topic, but taking the opposite side, “The Grand Design: New Answers to the Ultimate Questions of Life” by the very well-known scientist Professor Stephen Hawking and Leonard Mlodinow. Like most books nowadays, both were available for purchase through the Amazon UK website run by the 3rdDefendant. That website is of course primarily a commercial vehicle, written and presented by the 3rd Defendant itself for marketing books and other products. However, it also includes an online public-access facility, through which any member of the public may publish their own review of a book for sale on the site, and others may post comments on that review, or on previous comments, so creating a “thread” which may be read by any internet user worldwide.

 

 

    1. Obviously Prof. Hawking’s book was likely to attract far more interest among readers than C’s, but at least some of those readers might also be interested in C’s book if it came to their attention. C therefore decided to adopt a marketing tactic which some might consider questionable but which he says is not unusual on the internet. On 9 September 2010 he posted a purported review of the Hawking book, signed by “Scrooby”, which began by giving the details of C’s own book, and then went on to claim that C’s book “answered all doubts raised in [Hawking’s] book” and was an “antidote to this misguided book”.

 

 

    1. Not surprisingly this “review” generated a long thread of comments (Thread C), many critical of “Scrooby” for trying to take advantage of Prof Hawking’s established reputation to sell his own book. C participated fully in this thread, using several identities: those of Scrooby and of MCG as was proper, but also those of “Reviewer” and “C. Sheridan” who purported to be third party contributors. In total, of the 60 comments on the thread, 19 were from C in one persona or another, including the two last and longest which were posted by him on 13 September 2010.

 

 

    1. The most active and hostile of the other participants in this thread was the 4th Defendant, Mr Jones, who describes himself as a person with an interest in public affairs who writes on scepticism, religious encroachment on public life, civic religious matters and educational topics such as enforced collective worship. In the science/religion debate, he is unequivocally in the camp of the scientific atheists. The great majority of the words complained of in this action were written by him, in the form of postings on the Amazon website (mostly Thread C, but also on some other threads generated by other reviews) and on the Dawkins website referred to below. Some of the words complained of on the Dawkins website were written (in response to Mr Jones) by other contributors, who are not sued personally.

 

 

    1. I shall consider the various words complained of in detail later on. For present purposes it is sufficient to say that in addition to expressing his own opinions on the topic, and his criticisms of Scrooby’s views (of which in general C does not complain), Mr Jones went further in two main respects: by investigating and “exposing” C personally as the real author of the book, and criticising him and his company with such words as “fraud” and “phony”; and by characterising C as a “creationist”, to which C strongly objects for reasons to be considered below in relation to defamatory meaning. (Mr Jones caused C particular and understandable distress by naming C’s two young children in a pejorative context, which he now accepts he should not have done.) Many of C’s contributions to Thread C were in reply to Mr Jones’s contributions, and vice versa.

 

 

    1. As stated, this heated debate between C and Mr Jones on Amazon took place between 9 and 13 September 2010. On 12 September 2010, Mr Jones opened a second front by commencing a thread on the website richarddawkins.net. The background here differs in important respects from that of the Amazon website.

 

 

    1. Professor Richard Dawkins (the 1st Defendant) is of course a very well-known scientist whose main professional field is biological evolution. In addition he is not merely a scientific atheist but also (which does not always follow) an active opponent of traditional revealed religion, which he views as positively false and as harmful in various respects. In a 2006 web article put in evidence by C (Bundle1/tab2/page 43) Prof Dawkins stated his manifesto:

 

“I am one of those scientists who feel that it is no longer enough just to get on and do science. We have to devote a significant proportion of our time and resources to defending it from deliberate attack from organised ignorance” [in context a plain reference to Judaeo-Christian religion]. “We even have to go out on the attack ourselves for the sake of reason and sanity. But it must be a positive attack, for science and reason have so much to give…My Trustees and I have set up the Richard Dawkins Foundation for Reason and Science. It is actually two sister foundations of the same name, one legally constituted in Britain and the other legally incorporated in the United States.”

 

    1. The website richarddawkins.net bears the heading of the Richard Dawkins Foundation for Reason and Science and includes an online discussion forum, largely it would appear for people like Mr Jones who share the views and aims proclaimed by Prof. Dawkins. There is a live issue considered below as to whether that website is operated by the 2nd Defendant, which is a UK company, or by its similarly-named USA sister, which has not been sued. Whichever corporation is responsible for it, the website’s rule is that no new thread can be opened on the forum without the originating posting first being read and approved for publication by one of its four moderators, who included Prof. Dawkins. Once the thread has been opened in this way, the moderators play no further part, and any later responses will be published without their intervention or approval.

 

 

    1. Mr Jones submitted an originating article entitled “Dare to criticise a creationist? Be prepared to be sued…” in which he gave his version of his ongoing exchange with C/Scrooby on the Amazon website. This was approved by one of the moderators (there is an issue as to which) on Sunday 12 September 2010. There followed over the next four days until 16 September 2010 a thread of some 40 comments in response to Mr Jones’s original entry, including his own further contributions.

 

 

 

    1. The Dawkins thread differs from the Amazon ones in several material respects, reflecting perhaps the different characteristics of the two websites:

 

a. C made no contributions to it.

b. Nor did any other supporters of C or opponents of Mr Jones.

c. It was thus not so much a debate as a conversation between friends, agreeing broadly with Mr Jones and advising him on how best to deal with C.

d. Perhaps as a result, when C came to select the passages from the Dawkins website on which he wished to sue, he did not confine himself to Mr Jones’s words but also included those of others, a point that should be borne in mind when considering the extent of Mr Jones’s personal liability for matter published on the Dawkins website.

 

    1. From an early stage, C protested in the course of the Amazon debate that Mr Jones had gone too far, and threatened legal action; indeed, it was these threats that led Mr Jones to open the Dawkins thread, as the title of his opening contribution shows. The Dawkins thread was taken down on 19 September 2010 following complaint from C. The position in relation to the Amazon thread is more complicated, and will be considered in more detail below in relation to the statutory defences available to ISPs; but it is clear that C tried to have the threads taken down and that many items were removed by Amazon on 30 September 2010; others remained in place until proceedings were served in July 2011.

 

 

    1. On 1 April 2011 C issued his claim form. The original Particulars of Claim ran to some 61 pages (in fairness, the threads containing the words complained of are themselves long and complex) and at the Masters’ suggestion a more compact version running to some 15 pages was served on 4 July 2011. Unlike the other Defendants, Mr Jones has served a Defence (short and unparticularised), but essentially his position is the same as the other Defendants’, namely that the claim is fatally flawed in many respects and should be dismissed summarily. The Defendants have served a series of applications, all of which were listed before me for hearing together. C, who is in person, thus found himself facing a formidable body of opponents and arguments to which it was naturally difficult for him to respond orally. Fortunately he had anticipated this by preparing very lengthy but well-researched written submissions in answer, and it became clear early in the hearing that the fairest course was for me to reserve judgment and consider those submissions alongside the oral and written submissions advanced by counsel.

 

 

    1. The applications before me fall into several different categories, which I shall deal with in the following order:

 

 

a. Responsibility for Publication. Mr Jones is of course the author of most of the words complained of and does not dispute his responsibility for his words. The other Defendants, as website operators, do dispute their responsibility, Prof Dawkins and his UK Foundation on factual grounds, and Amazon on the basis of the statutory defences provided by s. 1 of the Defamation Act 1996 and reg. 19 Electronic Commerce Regulations 2002 (SI 2002/2013).

 

b. Defamatory Meaning. I am asked by each Defendant to rule on whether and to what extent the words complained of against them are capable of bearing the meanings attributed to them by the Particulars of Claim or any and if so what meaning defamatory of the Claimants or either of them.

 

c. Damage. Objection is taken on legal grounds to the pleaded claims for aggravated and exemplary damages, and more generally to the Claimants’ apparent attempt to bring in a wider claim for commercial losses from a separate business venture.

 

d. Abuse of Process. In summary I am asked to rule on whether so much of the claim as may survive the above objections is “a game worth the candle” in comparison with the cost and court time likely to be expended in determining it.

 

(In addition the Defendants object to various aspects of the manner in which the case is pleaded; but since C is a litigant in person I would normally give him the opportunity to put that right by amendment, unless the flaw was a fatal and incurable one.)

 

A. RESPONSIBILITY FOR PUBLICATION

    1. The 2nd Defendant. As stated, the 2nd Defendant, (the UK company), is incorporated in England, and has a “sister” corporation with a similar name (but for the word “Limited”) incorporated in the USA. The words complained of were published on the website richarddawkins.net, for which C says the UK company is responsible. The UK company’s case is principally set out in the Witness Statements of Prof. Dawkins and of Paula Kirby (who is a consultant manager/administrator for the UK company), and may be summarised as follows:

 

– The UK company bears no responsibility for that website or its contents, because the .net website is run by the US company. The UK company has a separate website,richarddawkinsfoundation.org, which has no open-access forum of its own. The reason for this distinction is specifically to protect the assets of the UK company from defamation liability for third-party web contributions. (The US company is of course potentially liable in the UK for its publications read here, but as is well known UK libel judgments are in effect unenforceable against assets in the USA for constitutional reasons.) Also for that reason, the USA website has a hyperlink to the UK website, but (I was assured) not vice versa.

On this basis, the UK company has applied for summary judgment, contending that it is clear now that the claim against it has no real prospect of success. The burden is on the 2ndDefendant to satisfy me of this, and I should refuse the application if the evidence it puts before me is not convincing, and/or if I consider that there is a real prospect that (following pleading, disclosure and trial) the Claimants may ultimately succeed on this issue.

 

    1. C’s case on this issue is set out very fully in his general written response dated 8 November 2011 (which repeats and consolidates arguments also made in his earlier submissions dated 17 and 30 September 2011, which I have also taken into account). He begins with four main points, the second and third of which are directly relevant to this particular application:

 

a. This case has been ruinous to him.

b. Mr Jones is a proven liar, and the fact that the other Defendants are willing to rely on his evidence casts doubt on their evidence too.

c. As a matter of fact, the .net website is run by the 1st and 2nd Defendants from England (for various reasons considered more fully below).

d. The 3rd Defendant Amazon has also failed to prove its case.

 

    1. I should first deal with the contention that Mr Jones is a proven liar, because it is a matter of great significance to Mr McGrath. He points in particular to Mr Jones’s claim in his evidence to the Court to have consulted C’s LinkedIn entry before commencing his campaign, and states that this must be false because he together with the Claimant company did not join LinkedIn until later. C also refers to other serious matters which if true might affect Mr Jones’s credibility, But:

 

a. These matters are disputed in various respects and the stage to determine them has not yet been reached.

b. Mr Jones’s credibility would be relevant, if the Court had to decide a disputed issue of fact which turned in whole or part on his evidence. As it happens, I do not think any such issue arises at this stage; but if it did, then on a summary judgment application I would have to assume that that dispute had been resolved in C’s favour, so it would not yet be necessary to assess Mr Jones’s credibility.

c. On the present issue of the 2nd Defendant’s responsibility, Mr Jones has no relevant evidence to give. C’s point is that the other Defendants’ reliance on him diminishes their own credibility in respect of other matters unconnected with Mr Jones. I am not very impressed with this point, the connection between Mr Jones and the other Defendants being a tenuous one, and their reliance on his disputed evidence of fact being very limited. But in any event, as above stated, if I found myself having to consider their credibility at this stage, I would be bound to assume the disputed matter in C’s favour.

It follows that I do not consider this question relevant to the present application.

 

    1. I turn now to C’s substantive objections to the 2nd Defendant’s case, which are relevant and important. He accepts that what he calls the “heavy machinery” of the .net website is located in the USA (i.e. the hosting servers and the ICANN registration) but contends:

 

 

a. that this is an artificial and unimportant distinction, and that in fact there is but one RDFRS charity, run by Professor Dawkins and his colleagues from England, and that responsibility for the websites is not fixed with one or the other company and can be switched from country to country to suit their convenience;

b. that one proof of this, or clue to the reality, is that the first posting on the website bears a UK time of 11.18 am (the time when the moderator approved it) – if this is an American website, why does it use UK time?

c. and that in her evidence Ms Kirby effectively admits liability by saying that the 2nd Defendant “wishes to ensure that it has prior sight of all material posted on the British Website to attempt to mitigate any such liability”.

d. He also contests the 1st and 2nd Defendants’ assertion that there is no hyperlink from the UK to the US website, but only the other way.

 

(In considering the applications, I remind myself that it is not, at this stage, for C to prove that his points are good; it is for the Defendants to prove that they are bound to fail, as being false or irrelevant, and that C has no real prospect of establishing at trial that the 1st and/or 2nd Defendants are answerable in law for any of the publications complained of.)

 

    1. In respect of point (a), artificiality, in a popular sense C is of course quite right, as Professor Dawkins’s manifesto quoted above itself suggests. It would be perfectly fair and understandable to speak broadly of a single Dawkins movement or school of thought, centring on him in England, and manifesting itself in, for example, the two websites. But for the purposes of tort litigation, every act complained of must be or be shown to be attributable to one or more legal persons, either natural (a human being) or artificial (some form of corporate body). And, so far as corporations are concerned, English law permits limited liability; that is, if an act is performed by a corporation, the shareholders or other human beings behind it are not thereby personally liable for that act (except that their investment is at risk), and the staff or management are liable only in respect of their direct personal participation in that act.

 

Put another way, in law the Dawkins movement, foundation or charity does not exist, and cannot act, except through one or both of its corporate vehicles (which in turn act through their human representatives); and it is incumbent on a claimant to establish that the particular vehicle he has sued is the one through which the tort was committed.

 

    1. At this point I should deal briefly with a related point taken by C. He refers to the established UK legal doctrine that an internet libel is treated as having been published where it is downloaded and read, so that for example the American publisher of an American website is subject to the English court’s libel jurisdiction insofar as people here access it. This is correct; but it does not mean that the English associates of that American publisher are also liable (unless of course they played a sufficient part in the particular publication complained of).

 

 

    1. A similar source of confusion lies in the common or overlapping management of the two companies. At the material time, Prof. Dawkins among others was a director of both companies, and an administrator of the .net website. On his own case, he discharged some of his functions in respect of the US company and charity from the UK by email and internet, most relevantly the moderating of the US website. C points to this as proof that the distinction between the US and the UK arms of the Foundation is an imaginary one.

 

But again, this is to misunderstand the doctrine of corporate personality. The same person may, and quite commonly does, own and operate two companies, perhaps in two different jurisdictions. Nowadays he may manage them actively by email and internet from almost anywhere in the world. But they remain distinct bodies, and provided the tortious act is clearly attributable to Company A and not Company B, B will not be liable even if the man who committed that act on A’s behalf (and may well be personally liable for it) is also the guiding mind of B.

 

    1. It follows that the time-zone question is not likely to be decisive, or even of great weight, in deciding if the .net website is owned or operated by the US company; if its management were largely UK-based, they might perfectly well choose to use UK time even on a US website. But in fact, the 2nd Defendant’s case is different. It is that the website has no specific time zone of its own; each posting is logged at the time of entry, but that time is displayed to any given reader in his own local time (e.g. a UK user posts at midday on 1 April, UK time; whenever a New York user looks at that posting, it will bear the time of 7am New York time, assuming his own computer uses that time). During the hearing, I gave the 2nd Defendant leave to file additional evidence corroborating this, which they did, and in consequence allowed C to file evidence and submissions after the hearing in reply to that fresh evidence, as he too has done. (His submissions also went beyond that, as further considered below.) His evidence on this point does not refute or cast serious doubt on the clear evidence that the timing system is as the 2nd Defendant asserts, and even at the interim stage I am satisfied that he will not be able to prove otherwise.

 

 

    1. As to Ms Kirby’s alleged admission, at para. 12 of her Witness Statement dated 12 October 2011, I have considered it in its context. What she is plainly there saying is that because, for reasons of English law, the 2nd Defendant wishes to have prior sight of all material posted on the British website, it has chosen not to have a discussion board (which might permit direct postings). It is clear to me that this is not an admission in the terms claimed by C but rather the reverse.

 

 

    1. Were it not for the hyperlink question, I would therefore conclude on this issue that the 2nd Defendant had satisfied me that it plainly bore no responsibility for the US website or its contents. However, C has maintained from his first submissions that “the websites link to each other and there is no clear distinction for users” (para. 9f, submission of 17 September 2011). So far as I can see, this is not dealt with expressly in the 2nd Defendant’s evidence; at the hearing I was assured that the link ran from the US to the UK website but not vice versa, and this appeared to be true so far as any express hyperlink was concerned. In his 18 November 2011 response following the hearing, Mr McGrath went a little beyond my limited permission to make further submissions by stating at para. 3 that: “this is demonstrably untrue; simply click the “home” button on the UK .org website and one is taken to the “US” .netsite where the comments section is clearly visible”. I have done so, on several occasions and with several different devices, and he appears to be correct. One goes straight into the .netsite, and indeed to the index to its .net forum, without even being notified (whether by the usual “click” hyperlink or otherwise) that one is changing websites. This is a short point, but of considerable importance, and apparently inconsistent with the 2nd Defendant’s original evidence and submissions.

 

(The 2nd Defendant has since this judgment was circulated in draft accepted that its evidence was wrong on this point, and the structure of the UK website has been altered to remove this or any similar link to the forum, which of course remains accessible via the US website.)

 

    1. The law on liability for hyperlinks is in a state of some uncertainty at present. Even if the general English rule were to be as recently held in Canada, that a mere hyperlink does not render the operator of the linking website liable for the content of the linked site, the decision may well be a fact-sensitive one, especially when, as here, the two websites are very closely associated, the link is hidden, and the point of contact is the “Home” button which is normally regarded as taking you to the central hub of the same website you are already on. I therefore conclude that I am not satisfied at this stage that the 2nd Defendant was not answerable for the .net forum at the material time, and that it is a question fit for trial. This part of the 2nd Defendant’s application fails.

 

 

    1. The 1st Defendant. As above stated, an individual will not normally be held liable for a libel published by a company with which he is connected, unless he himself played a sufficient part in the particular publication to render himself personally liable for it. The case against Prof. Dawkins was originally put on the basis of his general responsibility for the website, and as such would have failed for that reason. However, in his evidence he has very frankly admitted that he was, at the material time, one of the four administrators of the US website, any one of whom might have read the 4th Defendant’s original posting and authorised its publication on the website (thus exposing themself to personal liability for that item). There is said to be no record of who approves a particular item. He does not remember reading this item, and if, as appears to be the case, it was approved at 11.18 on a Sunday morning UK time, the likelihood is that he did not because his usual practice is to visit his parents at about that time. (Ms Kirby adds that neither she nor the other two administrators can say whether they did so.)

 

 

    1. It appears to me that this is a classic instance of a disputed issue of fact which cannot properly be dealt with on an application such as the present. It is true that, if the above evidence is correct (and C is not obliged to accept it), then it would appear on the balance of probabilities that Prof. Dawkins is not personally liable. At present C has no direct evidence to refute it. But this litigation is at the earliest possible stage. The 1st and 2nd Defendants have not even filed a Defence. There has been no disclosure, for example of the diaries or emails of Prof. Dawkins and his colleagues for the relevant day which might affect, one way or another, the probabilities as to who approved this item. Two of the four candidates have not served witness statements, and none has been cross-examined. Following some or all of these processes, it is entirely possible that Prof. Dawkins’s present recollection may at trial prove likely to be in error. I therefore refuse this part of the application by the 1st Defendant, so far as it relates to the original posting which he may actually have approved for publication; in relation to the later contributions, no case is made out against him personally.

 

 

    1. The 3rd Defendant. Amazon is of a different nature from the campaigning and polemic 1st and 2nd Defendants, as their different websites show. For this reason, Amazon’s case on liability for publication is also different. It accepts that the words complained of appeared on a website which it operates. But it relies on the two overlapping statutory defences which have come into existence to update for the internet age the common law defence of “innocent dissemination”, traditionally available to newsagents and others who distribute libellous books and papers without knowledge of their offending content. These are s.1 of the Defamation Act 1996 and Reg. 19 of the Electronic Commerce Regulations 2002, SI 2002/2013 (in turn based on an EU directive).

 

 

    1. Section 1(1) of the 1996 Act is as follows:

 

 

“In defamation proceedings a person has a defence if he shows that:

a. he was not the author, editor or publisher of the statement complained of;

b. he took reasonable care in relation to its publication; and

c. he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement”.

 

The remainder of the section expands on this basic rule and the material provisions are considered below.

 

    1. Reg. 19, which is usually regarded as somewhat more liberal, states:

 

 

“Where an information society service is provided which consists of the storage of information provided by a recipient of the service, the service provider (if he otherwise would) shall not be liable for damages or for any other pecuniary remedy or for any criminal sanction as a result of that storage where –

a. the service provider –

i. does not have actual knowledge of unlawful activity or information and, where a claim for damages is made, is not aware of facts or circumstances from which it would have been apparent to the service provider that the activity or information was unlawful; or

ii. upon obtaining such knowledge or awareness, acts expeditiously to remove or disable access to the information,

and

b. the recipient of the service was not acting under the authority or the control of the service provider”.

 

Again there are supplementary explanatory provisions.

 

    1. Amazon seeks to strike out the claim against it on the ground that it is bound to succeed in one or both of these defences. I caution myself that they are fact-based and that I must not do so if there is any real possibility that a crucial fact may not be established at trial, or that other facts may emerge which rebut the defence. Subject to that, Amazon’s evidence on the two crucial areas of fact (its general pre-publication processes and its post-publication responses) was not credibly challenged by any of C’s evidence and may be summarised as follows.

 

 

    1. As to pre-publication processes, the Amazon website is of course of enormous size, since reviews and comments on any of the thousands of books and other products it sells may be posted by any customer. Its user guidelines forbid defamatory material, and it can blacklist offending users. The principal active precaution taken is the use of an automatic filter excluding reviews or comments which either contain certain forbidden words or are submitted by blacklisted users. None of the postings complained of failed either of these tests, so they were displayed without any human intervention. (Reviews, but not comments, which contain the forbidden words are then submitted for manual, i.e. human, review before the final decision to exclude is taken. There was a dispute between C and Amazon about the distinction between reviews and comments, but it is largely of academic interest because there is no reason to suppose that any manual review took place here, the forbidden words not having been used .) I do not understand C to be saying that Amazon was at fault so far as the selection of filtering criteria is concerned.

 

 

    1. Post-publication, there are several steps open to a person who is aggrieved by a review or comment.

 

a. Each item contains a “Report Abuse” button which permits the reader to report the item as “inappropriate”. C says he did so, and Amazon accepts that he did on some occasions. But it turns out that this would have been of little effect because (unknown to readers) Amazon will not consider an item for removal on this ground unless 3 or more different users report it, which did not happen.

b. Pressing the “Report Abuse” button also gives one the option of reporting the item as defamatory by pressing a further link, which takes one to Amazon’s Notice and Takedown Procedure.

c. The Notice and Takedown Procedure forms part of Amazon’s general Conditions of Use and Sale, to which there is a link on every webpage. Condition 8 reads as follows:

 

“Defamation Claims

Because Amazon.co.uk lists millions of products for sale on the website and hosts many thousands of comments, it is not possible for us to be aware of the contents of each product listed for sale or each comment or review that is displayed. Accordingly Amazon.co.uk operates on a “notice and takedown” basis. If you believe that any content on, or advertised for sale on, the website contains a defamatory statement, please notify us immediately by following our Notice and Procedure for Notifying of Defamatory Content. Once this procedure has been followed, Amazon.co.uk will make all reasonable endeavours to remove the defamatory content complained about within a reasonable time.”

d. Clicking on the words underlined leads one to a pro forma document which one is invited to fill in, print off, sign and post to Amazon’s legal department in Slough. That pro forma is in the form of a witness statement, but with content not dissimilar to a defamation protocol letter before action. The complainant is invited to provide:

i. name, address and occupation;

ii. details of the location of the defamatory words, including the web page address;

iii. the exact words complained of;

iv. the reason the words are defamatory;

v. the reasons they are untrue, and what the true position is.

e. Upon receipt, this would be considered by Amazon’s lawyers and dealt with as they considered appropriate, no doubt often by way of taking down the offending item.

 

    1. Of course, though the above procedures are provided by Amazon, there is no legal obligation on the complainant to use them, and the court will consider any communications in fact made in order to assess their terms and effect.

 

 

    1. As above stated, C did report some items as “inappropriate” but that had no effect. He did not use the Notice of Defamatory Content procedure, which in his submissions he pejoratively described as “snail mail” since (presumably because Amazon wants the reassurance of a signed document as a basis for taking action which might be harmful to the other party) the pro forma cannot simply be emailed direct to the legal department. He did take the following steps to bring his grievance to Amazon’s notice:

 

 

a. On 17 September 2010 he emailed Amazon’s Technical Support address complaining about the 4th Defendant’s postings, which he described as “abusive” and “slandering”, referring in particular to a “vendetta” and to being called a “liar”. He named the 4th Defendant and gave his email address, but did not give specific details of the location of the words complained of (though he did refer to “the thread under The Grand Design by Stephen Hawking”). He asked for Mr Jones’s comments to be removed and his account to be considered for suspension or deletion.

Technical Support replied the next day saying that they were unable to take any action – they did not forward the email to the legal department or give C any help or advice as to how to pursue the matter. When on 20 September he asked them to pass it on to the appropriate department he received no reply, though this appears to be because he did not use the suggested address.

b. On 30 September 2010 C did make effective contact with the legal department (understandably copying his email to the CEO of Amazon in the USA and to other departments in the hope of ensuring a response). The material parts of this email are as follows:

” http://www.amazon.co.uk/review/T3TIGPA68KMZEQ

The above review and the reviewer Mr V.J.Jones “vjohn82″ are the subject of legal action by McG Productions through solicitors Tollers of Milton Keynes. We have already flagged this person’s comments and reviews against the book The Attempted Murder of God: Hidden Science You Really Need to Know as inappropriate as they attack the author and company in a libellous and defamatory manner. To date Amazon.co.uk has done nothing about it. Please remove immediately all comments by this gentleman in relation to the book, the company and the author and submit for removal all Google cache entries. By allowing these comments on Amazon.co.uk, Amazon.co.uk also becomes implicated in the legal action.”

This was promptly acknowledged the same day by Mr Collins, then head of legal, who then procured the removal of the particular review identified in C’s email; it was taken down before midnight on 30 September 2010, and C so informed.

c. Also removed that night were 14 comments by the 4th Defendant (many but not all of those he had posted). This may have been done by the Customer Service Department independently of the legal department; on 30 September 2010 they emailed C saying that:

“…these comments have been removed from our database and will shortly disappear from the website. We do exercise some editorial control over our customer reviews and strive to block these kinds of reviews. Amazon.co.uk does not tolerate profane or spurious customer reviews. Our intention is to make the customer review forum a place for constructive commentary and feedback, so reviews that fall outside these guidelines are removed from the website.”

d. On 7 November 2010 C emailed Mr Collins again, giving four specific links to reviews and demanding that they be permanently removed as being “subtle defamation” coloured by atheism. No response was sent nor was any action taken. Amazon has given no explanation of this. It appears however that none of these specific items is now sued on.

e. On 1 April 2011 C notified Amazon that he had issued proceedings. Following service, what comments by the 4th Defendant remained on the website were eventually removed on 11 and 12 July 2011.

 

    1. The above account is based on contemporary documents and is not materially disputed by C. It appears to me that there is no sufficient likelihood of a different picture emerging at trial such as would render it inappropriate for me to assess the merits of the proposed statutory defences on a summary judgment application. Although the two defences differ in several material respects, the main factual questions arising each case are broadly similar, and relate to:

 

 

a. the status of the defendant – does he qualify for protection at all?

b. the defendant’s conduct and state of knowledge (and consequent responsibility) in relation to the particular publication complained of, prior to complaint;

c. the defendant’s response upon being informed of the defamation – is it sufficient?

 

    1. As to whether the defendant qualifies for protection, Reg. 19 sets a positive test:

 

– does D provide an information society service which consists of the storage of information provided by a recipient of the service? And does the claim arise as a result of that storage?

S.1 of the 1996 Act sets a negative test:

– D must not be the author, editor or publisher of the statement; but a person will not be considered the author, editor or publisher if (to give the most applicable statutory example) he is only involved in operating or providing any system or service by means of which the statement is made available in electronic form.

So far as the Reg. 19 test is concerned, it is clear that the service Amazon provides to its users, of storing their reviews and comments for reading by others, falls within that definition.

 

    1. So far as s.1(1)a of the 1996 Act is concerned, the position is made more complex by the introduction of the concepts of editing and publishing, and by the use of the word “only” in relation to the operation of the system or service.

 

On this issue, C objects:

a. that Amazon cannot be regarded as merely a passive or neutral medium for storing and distributing material provided by others. It is running the website for its own profit and has a clear commercial interest in encouraging lively debates between its customers on the product-related forums; and

b. that it does exercise a measure of editorial control over content, sufficient to deprive it of protection.

 

    1. The first point is, in effect, that Amazon is a “publisher” within the definition of s.1(2) of the Act, which is:

 

“a commercial publisher, that is, a person whose business is issuing material to the public or a section of the public, who issues material containing the statement in the course of that business”.

So far as the concept of “issuing” is concerned, there is no doubt that the 1996 Act was intended to preserve the established distinction between publishers who originate books and other publications, and distributors and sellers who pass on to the public the books originating from the publishers; see s. 1(3)a. “Issuing” refers to the former process, not the latter one.

Amazon’s primary business (for present purposes) is of course that of an online bookseller rather than a publisher. That is where its revenue comes from, not from the operation of the website (which is free to users). Ancillary to its business, a traditional bookseller might well issue free publications of its own such as catalogues and advertisements, but nobody would therefore describe its business as that of a publisher. In the same way, it follows that even though Amazon may well be the “publisher” of the website and its user-generated content, in the broad sense in which that term is used in defamation law, and may well do so in the course of its business (i.e. as a means to its primary purpose of retailing the products of others) it is nevertheless plainly not a “commercial” publisher within the definition of s.1(2).

 

    1. As to the second point, whether by adopting a policy of limited pre-publication control Amazon has become an “editor” (i.e. “a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it” under s.1(2)), this is an illustration of the notorious “Catch-22” under which an ISP seeking to attract the statutory defence by taking reasonable care may find that it has instead forfeited it by becoming an editor. In the present case, Amazon took no steps in relation to the content of any of the statements, and no part in any decision to publish it, except by way of the automatic process referred to above. (The manual review was never triggered; had it been, the position might have been very different.) So far as these publications were concerned, Amazon’s only role was as provider of the system or service through which Mr Jones was able to publish them, and I conclude that it is clear by virtue of s. 1(3)c that it was not an editor. (I note that this is the “cautious” view of the editors of Duncan and Neill (3rd edn. 2009) at 20.08).

 

 

    1. It being established that Amazon is in principle entitled to rely on each of the statutory defences, the next set of issues concerns its conduct and state of knowledge prior to being informed of C’s complaints. Under Reg.19, the question is again a simple one with a clear answer: Did Amazon have actual knowledge of unlawful activity or information, and/or was it aware of facts or circumstances from which it would have been apparent that the activity or information was unlawful?

 

A corporation can have actual knowledge only through a human representative, and given the vast size and diverse nature of Amazon’s website there is no reason to suppose that anyone in Amazon was actually aware of these postings, let alone of their possible unlawfulness, prior to C’s complaints. C does not put forward any case for such actual prior knowledge.

 

    1. The position under s.1 is again more onerous to the defendant. Even during the pre-complaint period, it must show that it both took reasonable care in relation to the publication and did not know and had no reason to believe that what it did caused or contributed to the publication of a defamatory statement.

 

The use of the word “defamatory” (as opposed to Reg. 19’s “unlawful”) is significant here, because subject to the question of legal innuendo it would be apparent to Amazon upon a first reading whether the words were defamatory, i.e. injurious to reputation. The word “unlawful” in Reg. 19 has been held to import the further requirement that the defendant should also “know something of the strength or weakness of available defences”; see Bunt v. Tilley [2007] 1 WLR 1243, per Eady J at para. 72.

 

    1. On the question of reasonable care, Amazon submits that its procedures as summarised at [33] above meet that standard. The problem on an interim strike-out application is that questions of reasonableness are generally fact-sensitive and will vary from case to case. I note the provisional view of Eady J in Metropolitan International Schools Ltd v. Designtechnica Corpn[2009] EWHC 1765 QB at para. 75 that it was difficult to comprehend how reasonable care could have been taken, when the publication took place without any human input on the part of the defendant (in that case a search engine rather than a website operator, but the point is a similar one here). The counter-arguments are not difficult to envisage (for example, that the automatic processes set a reasonable hurdle, or even that it might be reasonable in the context of a vast website like this to take no pre-publication steps at all) but I cannot say that the answer is obvious at this stage, so the attempt to strike out by reference to s.1 must fail.

 

 

    1. One specific point taken by C on “reasonable care” should however be dealt with. The Act identifies “the previous conduct or character of the author, editor or publisher” as being relevant to whether the distributor took reasonable care. C points out that Amazon has in the past twice been found liable to Lord Trimble for defamation, and that this indicates a bad character for libel, precluding it from relying on the statutory defence. But it is the character of the author (Mr Jones), not that of the distributor (Amazon), which is relevant for this purpose; if Amazon had known him to have a bad record as a defamer, and still allowed him to use its pages (as opposed to putting him on the blacklist) that would plainly be relevant to reasonable care; but there is no evidence that it knew or ought to have known anything about him. (In any event, with so vast a website, one or two such incidents in the past are not likely to be of much assistance in deciding whether reasonable care was taken in this case.)

 

 

    1. Finally on s.1, if I had been satisfied as to reasonable care, there would have been no difficulty in concluding that (pre-complaint) Amazon did not know, and had no reason to believe, that what it did caused or contributed to the publication of a defamatory statement.

 

 

    1. The remaining issue is whether, for Reg. 19 purposes, Amazon:

 

i. had actual knowledge of unlawful activity, and/or was made aware of facts or circumstances from which it would have been apparent that the postings were unlawful (as opposed to defamatory); and if so

ii. acted expeditiously to remove or disable access to them.

This provision of Reg. 19 is amplified by Reg. 22, which provides that in determining actual knowledge a court shall take into account all the circumstances, and in particular:

“whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)c” [which requires the provider to make available to the recipient rapid and effective contact details including its e-mail address]

“and the extent to which any notice includes-

i. the name and address of the sender of the notice;

ii. details of the location of the information in question; and

iii. details of the unlawful nature of the activity or information in question”.

(C does not accept that Amazon’s Notice and Takedown Procedure, detailed above, complies with Reg. 22; but assuming that to be correct, a breach of Reg. 6 would not of itself invalidate a Reg. 19 defence.)

Amazon’s case is that in his communications with it C never even clearly specified the location of the postings of which he now complains, let alone set out facts and matters that would show them to be untrue or unfair. As to location, I am not persuaded of the merits of this point. Although C did not give URL addresses for each and every posting, he did specify Mr Jones’s own username, and the topic (Scrooby’s book) to which the objectionable statements related. Amazon’s website includes the facility to look up all other reviews from any reviewer, and as stated it had no difficulty in immediately identifying and removing 14 of Mr Jones’s comments about C.

It remains true, however, that not everything the 4th Defendant has said about C or his book is the subject of complaint. Quite rightly, C recognises others’ rights to comment in strong terms on the literary and intellectual merits of his book and has tried to confine his complaints to other, less obviously legitimate areas. How was Amazon to perform that exercise of discrimination for him, if he did not specify the particular postings, or even parts of postings, of which he complained?

 

    1. But even if he had done that (which, it is plain from his communications with Amazon set out above, he did not) Reg. 19 demands more from a complainant, if the defence is to be overcome. He must disclose facts or circumstances making it apparent that the postings were unlawful. In fairness to Amazon, its pro forma recognises this and invites such disclosure. But C did not use the pro forma, and perhaps as a result did not address this requirement at all. If he omitted to put forward a case on the merits, it would not be possible for Amazon to investigate or adjudicate upon it, nor did the framers of Reg. 19 expect it to do so. For the above reasons, I conclude that the Reg. 19 defence is bound to succeed in respect of Amazon’s liability for all the publications complained of against it, and the claim against the 3rd Defendant must be struck out.

 

(I will however go on to consider in the alternative its case on the other grounds relied on.)

 

 

 

 

 

B. DEFAMATORY MEANING

    1. All four Defendants invite me to address the issue of meaning, and (bearing in mind that the question what the words actually mean is for the jury which may hear the trial of this action) to determine whether the words are capable of bearing the meanings attributed to them by C, and if not then to define the gravest defamatory meanings they are capable of bearing. The claims are pleaded both as natural and ordinary meanings and as “true” or “legal” innuendoes, which require separate consideration. If any of the words are not capable of being defamatory they should be struck out. The less serious the defamatory meanings that survive, the stronger will be the case for dismissing some or all of the remaining claims under Jameelabuse of process principles.

 

 

    1. The principles governing how to determine the meanings which words bear or are capable of bearing are well known, having been set out by Neill LJ in Gillick v. BBC [1996] EMLR 267 at 272-3 and applied in many cases since. The central one for present purposes defines the characteristics of the hypothetical reasonable reader, who: is not naïve but not unduly suspicious; can read between the lines; reads in implications more readily than a lawyer, and indulges in a certain amount of loose thinking; but is not avid for scandal and does not select one bad meaning when other non-defamatory ones are available. Also material to this case is the guidance of the Court of Appeal in Jeynes v. News Magazines [2008] EWCA Civ 130that the characteristics of the publication itself need to be borne in mind, since the hypothetical reasonable reader is taken to be representative of those who read that publication.

 

 

    1. Having determined what meanings the words are capable of bearing, it is then necessary to determine in each case whether that meaning is capable of being a defamatory one. There are various definitions of what is defamatory, the classic one being that set out by the Court of Appeal in Skuse v. Granada [1996] EMLR 278 AT 286 and cited by the editors of Duncan and Neill (supra) at 4.01:

 

 

“A statement should be taken to be defamatory if it would tend to lower the claimant in the estimation of right-thinking members of society generally, or be likelysubstantially to affect a person adversely in the estimation of reasonable people generally or have a tendency to do so“.

(The italicised words are not in the original definition, but have in effect been incorporated into it by the important decision of Tugendhat J in Thornton v. Telegraph Media Group[2010] EWHC 141 QB which recognised the need for a threshold of seriousness as one of the elements of the tort.)

Another aspect of meaning which must be borne in mind in this case is the concept of “vulgar abuse”, which is often relevant now in chatroom or forum internet cases. This is an application of the familiar principle that there is a distinction between the literal meaning of words and their natural and ordinary one; apparently serious words may in their context be so plainly outrageous that they are clearly not intended or understood literally, and may even become devoid of content and not defamatory at all.

Also relevant is the doctrine of “bane and antidote” by which replies and rebuttals can not merely act as mitigation but actually dilute or even eliminate the defamatory meaning, provided they are contained within the same publication.

 

    1. A special feature of chatroom or forum publications is the way in which the thread of words published on the site is continually evolving by the addition of new comments. Depending when a particular reader views the thread, he may see some or all of the eventual total number of comments. In theory this can have several consequences for defamatory meaning and liability.

 

a. While the website operator is prima facie liable for all the contents of the thread, individual contributors are of course liable only for their own words.

b. Those individual contributions must be read in the context of the earlier contributions, which may affect the meaning of the latest one.

c. As later contributors add further comments, the context of the thread as a whole will change. This will affect the meaning of the whole thread, for which the operator is liable; but an individual contributor cannot be held liable for a change in the meaning of his contribution, brought about by the later contributions of third parties which alter its context.

d. Strictly speaking, whenever a new contribution was added, the thread would become a new publication with a different meaning. In the case of a thread with more than a few entries, it would rapidly become impracticable for a judge, let alone a jury, to ascribe a separate defamatory meaning at each point, and then apply it to such meaning-dependent issues as justification.

e. The only practicable course here is to adopt the general approach of treating the final thread as a single publication for context and meaning purposes (albeit with several authors of distinct parts), while carefully avoiding the injustice of holding an individual contributor liable for any material changes in the meaning of his contribution brought about by later contributions from others.

 

    1. Amazon: Words Complained Of. For the above reasons, the essential unit of publication in these cases is the thread, which is equivalent in website terms to a long article in a traditional newspaper, within which the words complained of appear. Unfortunately, in the Particulars of Claim C has obscured this by pleading the 4th Defendant’s Amazon contributions in chronological order without much regard to which threads they appeared in. Helpfully, the 3rd Defendant in its submissions has largely cured this defect by setting out each thread in full and highlighting the words complained of. These schedules will be an appendix to this judgment, but I summarise the essential points below.

 

 

    1. Thread C. This is the original and much the longest thread, eventually comprising 60 comments running to some 60 typed pages. It begins on 9 September with C’s purported review of the Hawking book, in fact a plug for his own. There follow 12 comments in which C and third parties (one of them his alias C.Sheridan) exchange views. At Comment 13, the 4thDefendant joins in, including the following words complained of:

 

– McG Publications is indeed a “publishing” company in the same way that my shed is a large scale production factory churning out hundreds of guitars every year.

– I think that it’s really his own company.

– Don’t take my word for it, do the investigation for yourself….Companies House is a useful resource too especially when you consider that McG Productions (and Publishers) are actually a residentially based business; i.e. it’s a home setup and not what you would realistically call an enterprise. It’s essentially an ego trip for Scrooby.

C replied at length in Comment 14, and added Comment 15 on a different point. They then exchanged Comments 16 and 17, and Mr Jones added 18, which includes the following words complained of:

– The problem I have is when a small publisher is set up for a specific purpose- creationist dogma.

– (1) McG Productions has a “publishing arm” run out of a residential address (despite your denial to the contrary because if you publish the business address on your website and Companies House, a cursory Google Earth search on the address reveals residential addresses….A publishing company that promotes 1 author in 9 months of operation is not a company that is destined to make money.

C replied at length in Comment 19, and the 4th Defendant in Comment 20, which includes the following words complained of:

-someone with a creationist mindset and also one so close minded that they restrict their search for god under the guise of one religion.

– I cannot stand those who try to piggy back off the success of others.

– I do not need to hide behind phony publishing companies operating from a back bedroom to try to give myself some credibility. Your attempt to piggy back on Hawking et al shows the desperation of your creed…

– Now hide behind your pseudonym Chris, hide behind your phony publishing company, hide in your back bedroom.

– I’ve proven that you are a fraud. (The surrounding words, not complained of, are of particular importance as context given the usual significance of the word “fraud”. They are: “You FAKE reviews on other sites, you SET UP accounts to generate FAKE interest, you piggy-back on the success of others-it doesn’t get any more INTELLECTUALLY DISHONEST than that”.)

Their exchange continued in Comments 21, 22, 24, 25, 26, 27 and 28, (comments 23 and 29 were from other users). In Comment 25 Mr Jones did, very regrettably, name C’s two young children (whose names he had found elsewhere on the web) saying that he felt sorry they would be subjected to their father’s “bullsh*t for some time; not surprisingly this distressed C further.

Comment 30 contained the following words complained of:

– he has stooped to the level of contacting someone on facebook to ask about me and try to find out some personal information.

In Comment 31, C threatened the author of Comment 29 (LH) with defamation action. The 4th Defendant’s Comment 32 included the following words complained of:

– You can cite defamation as much as you like but there is such a legal privilege as “fair comment”.

In Comment 33, C set out his complaint to the police against Mr Jones for naming his children, and told him he would be contacted by solicitors. Comment 34 was from LH. In Comment 35, Mr Jones replied to Comment 33, including the following words complained of:

– Content is hostile? What, showing you up to be a fraud?

– …actual attempts to coerce information from other people about me

He also added Comment 36; C replied with Comment 37. Comment 38 was from LH and 39 and 40 from Mr Jones again. At 41, he included the following words complained of (referring to a statement of C’s in his letter to the police that MCG was protecting its employees and their children):

– Are you an employee then Chris? Looks like you are falsely representing your position here…

Perhaps surprisingly in view of the accusations of fakery, C chose to reply to this (at 42) with a long posting under his other alias of “Reviewer”, purporting to be an independent reader of the book and urging Mr Jones “in all candour and kindness” not to post a single word more. At 43, a real third party urged them to stop “poking each other”. At Comment 44 the 4thDefendant posted the last words complained of under this thread:

– …”Catholic Creationist takes Amazon critic to court for saying his book is BS”…

– it really is too much fun to show up creationist book writer wannabes who spread ridiculous science around the place

– A parody? The best a dying man can come up with is a “parody”…?

(This was on 12 September 2010.)

Comment 45 was from “Reviewer” (i.e. C again) saying that Mr Jones’s “deceits and slanders will not look good in court” and accusing him of “hypocrisy, small-mindedness, ill-placed vanity, intellectual dishonesty” and “psychological and emotional disturbance”. The thread continued with further contributions from Mr Jones (46, 49, 53, 55, 57), C or his aliases (47, 51, 59 and 60), and third parties (48, 50, 52, 54, 56, 58). The last two comments, on 13 September 2010, were effectively one very long 6-page posting by C, dealing mainly with the intellectual side of the debate and in particular the question of parody.

 

    1. Amazon; Thread D. This thread also began with a review of the Hawking book, but this time a bona fide review (by Emc2) posted on 9 September 2010. There followed a series of 9 comments debating the book’s thesis in an intelligent and polite manner. At Comment 10, C (as Scrooby) intervened with a long plug for his own book, beginning “Here’s just a taster of why Hawking’s book is nonsense and why he knows God exists; the rest is in “The Attempted Murder of God”. (This is of course a serious attack on the intellectual honesty of Prof. Hawking, and demonstrates how far C was prepared to go to provoke a reaction that might help his book.)

 

The original debaters responded at Comments 11 to 14.

At Comment 15, on 13 September 2010, the 4th Defendant entered the fray; the whole Comment is complained of.

– Scrooby has already been outed as a chancer. I can’t believe he is still pimping his book out to all and sundry. I wrote a review on his book and received threats of police and legal action…ridiculous. The guy is a delusional crackpot.

At Comments 16, 17 and 18, the original debaters ignored this and continued their discussion. C joined in at Comment 19, ignoring Comment 15 and saying he would never mock people for their non-belief. Mr Jones responded to that at Comment 20 (17 September 2010) including the following words complained of:

– “I would never mock people for their non-belief”. Liar. Simple as that. In fact Chris was so incensed with my critique of his book and for my Atheist belief that he complained to Thames Valley Police and threatened legal action….You’re an embarrassment to the human race and you were found out.

The thread appears to have ended there.

 

    1. Amazon; Thread G. This thread begins with a review, not of the Hawking book but of the Scrooby book itself. It was posted on 10 September 2010 by “Lifesagame”. Its tone is clear from its headline: “Complete garbage written by a moronic hack”. It was not written by Mr Jones, but (perhaps understandably) C thought it had been and posted Comment 1, which attacked him and his views in no uncertain terms. Lifesagame replied with Comment 2, and then Mr Jones with Comment 3 which included the following words complained of, similar to some of Thread C:

 

– You set up a publishing company in your bedroom to peddle this pathetic piece of literature and then hide behind the pseudonym “Scrooby”. Shall I tell you how desperate you are? You’ve piggybacked your book on the back of Stephen Hawking’s work; a chronically disabled guy…

– Are you really that sick and depraved to have to resort to this sort of behaviour?

– I feel sorry for your kids who it seems will be subjected to your bullsh*t for some time to come.

C replied with Comments 4 and 5, threatening police action; Mr Jones in turn posted Comments 6 and 7. This was on September 11th; the thread then lay dormant until 9 July 2011 when Mr Jones added Comment 8, reporting that libel proceedings had been issued.

 

    1. Amazon; Thread H. Again, this thread begins with a review of Scrooby’s book, posted by a third party C.J. Cook, and summarised by its headline ” * Don’t believe the 5-star reviews”. (Apparently C had opened other threads on his book with 5-star reviews posted by himself under his aliases, as Cook pointed out.) The 4th Defendant and Cook were the only contributors, and at Comment 5 on 4 October 2010 Mr Jones posted the following words complained of:

 

– The legal claim was completely unfounded, the police were not interested in him using his corporation as a soapbox for his insidious views and he has been shown up to be quite the charlatan.

The only other entry was his posting on 9 July 2011 that legal proceedings had been issued.

 

    1. Amazon; Pleaded Natural and Ordinary Meanings. Because of the way in which C set out the words complained of, it is difficult to attribute his pleaded meanings to the different threads as they should have been. However, the claimant’s pleaded meanings are not binding on a court ruling on what meanings the words are capable of bearing, except that they set an upper limit of gravity, and that the court will not put forward a new meaning of its own, different in nature from those complained of. It is therefore right to summarise the pleaded natural and ordinary meanings attributed by the Particulars of Claim to the 4th Defendant’s words on the 3rd Defendant’s website; I have sought to group them according to two broad subject areas.

 

 

a. Misconduct in business

i. that the Claimants have no good professional standing in business and should not be traded with or engaged for their goods or services;

ii. that the business takes place in a bedroom and is therefore not a realistic business enterprise;

iii. that the 2nd Claimant was set up for the sole purpose of realising the failed writing and publishing ambitions of the 1st Claimant in a vanity publishing venture; therefore the content of the book can have no merit and should not be bought or read, and the Claimants lack professional integrity;

iv. that the Claimants set up a fraudulent publishing company operated by a fraudulent character;

v. that they are liars when they claim their business address is not a residential address;

vi. that the 2nd Claimant company is run by a man with the bad personal characteristics of the 1st Claimant (see below).

b. Personal dishonesty or misconduct of the 1st Claimant

i. that he is a narrow-minded religious fundamentalist;

ii. that he lied about believing that he had a terminal illness;

iii. that he engaged in an act of persuasion to make an unwilling person disclose information about him through force or threats;

iv. that he is immoral, cognitively deficient, and intends to deceive the public by hiding behind a pseudonym;

v. that he lied to the police about being an employee;

vi. that he is mentally unstable with lunatic notions;

vii. that he lies when he says he would not mock people for their non-belief;

viii. that he is a swindler with repellent religious beliefs;

ix. that he is a liar when he claims that his book was intended as a parody.

 

    1. Amazon; Legal Innuendo Meanings. At various points in the Particulars of Claim C uses the term “innuendo”. Sometimes he uses it in the sense of a “false innuendo”, that is, simply a natural and ordinary meaning, albeit one that is implicit in the words and needs to be spelt out. But in one important respect his case (in respect of both websites) goes further. It is his case that the word “creationist” has acquired a special meaning in recent years, going beyond its literal and non-defamatory one of “a person who believes in the divine or supernatural creation of the universe, as opposed to a purely natural cause”. He says that it now means, at least to some people, a person who is: a malicious liar, a fascist, homophobic, anti-western society and a danger to the education of children.

 

In relation to the Dawkins website, which is aimed at a specialist audience of people not merely interested in the science/religion debate but taking a hard line on one side, it is easy to see why C makes that case for a legal innuendo meaning, and it will be considered in detail below. But in relation to the Amazon website, whose readership even of reviews of specialist books is drawn from the general population (albeit readers who are likely to have some prior interest in the book under review or its author or subject) he has laid no groundwork for the proposition that some of those readers are possessed of any special knowledge or information which would lead them to understand the word “creationist” differently from the public at large, let alone in the strongly pejorative sense set out above. So in relation to the Amazon website, I am satisfied that there is no case for any true innuendo meaning of the kind sought to be relied on, and that it should be struck out.

(I should add that it is arguable that, even in general use, the word “creationist” has now developed a more specific natural and ordinary meaning than the literal one set out above, such as “a fundamentalist Christian who believes in the literal truth of the biblical account of creation and rejects Darwin’s theory of natural selection”; but that again is a perfectly respectable and widely-held belief, and not one the holding of which would lower a person’s reputation in the estimation of reasonable people or have a tendency to do so.)

 

    1. I therefore turn to the two related questions:

 

– What are the highest or most serious meanings about the Claimants which the Amazon words (all written by Mr Jones) are capable of bearing?

– And in each case, is that capable of being a defamatory meaning?

For the reasons given above, this is best approached on a thread-by-thread basis rather than in the manner used in the Particulars of Claim.

 

    1. As to Thread C, applying the principles summarised above, and having read the thread as a whole from the standpoint of the hypothetical reasonable reader, I find that the 1st Claimant has a sufficient case that it is capable of bearing the following meanings defamatory of him personally, and passing the Thornton level of seriousness; (I indicate the particular sections of the words complained of that may generate those meanings when considered in context):

 

 

a. that he has behaved unethically by trying to piggy-back off the success of others (Comment 20);

b. that he is an intellectual fraud because he fakes reviews, seeks to generate fake interest, piggy-backs off the success of others and is for these reasons intellectually dishonest (Comments 20, 35,);

c. that he has acted improperly by contacting one of Mr Jones’s Facebook friends and seeking to coerce personal information about Mr Jones from them (Comments 30 and 35);

d. that he has falsely represented to the Police that he is an employee of the 2nd Claimant company when he is not (Comment 41, read in the context of Comment 37 in particular);

e.(i). that the scientific views in his book are ridiculous;

e.(ii). so is his claim to have written his book as a parody when he believed that he was dying (Comment 44).

 

    1. I also accept that Thread C is capable of bearing the meaning or meanings that he is a creationist, a dogmatist, a Christian, a Catholic, and a person who seeks God through one religion only (Comments 20 and 44); but, even allowing for the opprobrious manner in which the 4th Defendant expresses himself on these points, I am satisfied that no jury properly directed could conclude that it was defamatory of the 1st Claimant to hold those views known to be shared by many well-respected members of society, even if others including the 4th Defendant vigorously disagree with those views.

 

(This topic is further considered below in relation to innuendoes on the Dawkins website.)

 

    1. In relation to the 2nd Claimant company, and the 1st Claimant in his capacity as its human principal, I accept that the words complained of are capable of bearing the following meanings in relation to them:

 

i. that it is a very small company;

ii. that it has no separate premises but is run from Mr McGrath’s home;

iii. that it was set up by Mr McGrath for the sole purpose of giving credibility to his creationist book;

iv. that for this reason it is not destined to make any money;

v. and that also for this reason it is phony.

(See particularly Comments 13, 18, and 20.)

 

    1. However, I do not consider that meanings i-iv are capable of being defamatory of either Claimant. I accept the 3rd and 4th Defendants’ contentions that these matters, taken separately or together, do not impute any misconduct, nor would they tend to injure the Claimants’ reputation or standing in business. There is nothing wrong with a business being small or unprofitable, or having a limited, even a propagandist, purpose, or with it being run from home; and no reasonable jury would think so. (The position would be different if it was suggested that the company had made false claims to be larger and better established than was in fact the case; but that allegation is not to be found in the words complained of.)

 

As to meaning v., of course the word “phony” is an opprobrious one, and generally capable of bearing a defamatory sting; but here I conclude that the principle of vulgar abuse applies, and that a reasonable reader would certainly recognise that Mr Jones was using it as shorthand for his previous observations about the company rather than as implying that it was phony in any different or stronger sense.

 

    1. I should also deal specifically with Comment 32, in which Mr Jones responded to C’s threats of libel action by referring to “fair comment”. In the context of the stage their debate had reached by that point, I do not consider that any reasonable reader would think the less of C by reason of that observation, however limited their knowledge of the law of libel. (Had he said he would rely on the defence of “truth”, the position might perhaps have been different.)

 

 

    1. It follows that on meaning grounds:

 

a. those of the words complained of from Thread C which do not give rise to the meanings set out at 62 a-e above should be struck out;

b. those meanings should be substituted for the meanings at present pleaded by the 1st Claimant, which insofar as they are not to the same effect I consider to be rhetorical and far-fetched and to go beyond any meaning a reasonable reader might draw from this Thread;

c. the 2nd Claimant has no case in respect of Thread C.

 

    1. Applying a similar approach to the other, shorter threads complained of, my conclusions are as follows:

 

 

Thread D As to Comment 15, the words used are strong but their content is minimal; it is a clear example of vulgar abuse, especially in the context of this otherwise thoughtful and measured thread. (The word “pimping” in relation to the marketing of a book conveys no sexual or otherwise seriously derogatory connotation nowadays.)

Comment 20 however is capable of bearing the following defamatory meaning of the 1st Claimant only:

f. that he is a liar who falsely claims not to mock non-believers, when in fact he is so hostile to Mr Jones’s atheist beliefs that for that reason he threatened him with police and legal action.

 

Thread G For the reasons above stated, the allegation in Comment 3 that the book has been published from a bedroom is not capable of being defamatory of either Claimant. The Comment does however bear the following meanings defamatory of the 1st Claimant:

g. that he has improperly sought to gain commercial advantage for himself by piggy-backing on the work of a disabled person; and

h. that this conduct can fairly be described as desperate, sick and depraved.

The remark about C’s children cannot add anything but emphasis to the above stings. In that sense it is vulgar abuse, but it remains a proper subject of complaint as part of the passage complained of and as being relevant to damage.

(I should add, since it is a point of some importance to C, that although he complained of the words which referred to the well-known fact that Prof. Hawking suffers from a very serious physical disability, he did not refer to that disability in his pleaded meaning, because he respects the fact that Prof. Hawking does not seek to take any advantage of his disability. I understand this; but the defamatory implication here, which I consider it plain that right-thinking people would or might share, is that it is particularly wrong for others to take improper advantage of the work of a disabled person.)

 

Thread H A special feature of this thread is that, unlike the others, it consists solely of exchanges between Mr Jones and one other contributor, C.J. Cook, who appears to be familiar with the dispute from other threads ; it does not contain as much contextual material as the others, and therefore its words are much more easily taken at face value by a reader.

Comment 5 is plainly capable of bearing a defamatory meaning about the 1st Claimant, as follows:

i. that he is a charlatan because he makes unfounded threats of legal action.

(This was in fact partially corrected by the 4th Defendant himself in July 2011, when he added Comment 6 – “You might be interested to know that a legal claim has been issued”.)

It is also capable of bearing the following meaning about both Claimants: that the 2nd Claimant is a vehicle used by the 1st Claimant to put forward insidious views. But any defamatory element in this meaning would only be conveyed by the word “insidious” which in the context of this thread is no more than a shorthand for “religious views of which I disapprove” and is plainly vulgar abuse.

 

The same consequences must follow as set out at [66] above, except that in relation to Thread H the company will also have a claim.

 

    1. Dawkins Website; Words Complained Of. There is only one thread on the Dawkins website; but not all the words complained of were written by the 4th Defendant. It begins with an article by the 4th Defendant, posted on 12 September 2010 and headlined “Dare to criticise a creationist? Be prepared to be sued…” and continues with 40 comments, taking up some 24 typed pages; again these should be annexed to this judgment. Of the 40 comments, 11 are from Mr Jones, but only one (Comment 33) is sued on. 10 other comments are sued on, from Roger J. Stanyard (1, 2 and 11), Steve Hill (15, 17 and 27), Alan4discussion (20, 28 and 40), and Steve Zara (23).

 

 

    1. In the original article, the following passages are complained of:

 

 

– Dare to criticise a creationist? Be prepared to be sued.

– The Grand Design by Stephen Hawking and Leonard Mlodinow…is being sold on Amazon.

– One such person decided, rather than actually read the book, to instead pimp their own book called “The Attempted Murder of God: Hidden Science You really Need to Know” by author Scrooby…clearly a pseudonym.

-Anyway, I’m a Historian by degree and tend to look at books in a different way. For instance I will not only read the book but I’ll research the author, the publisher, the sources, and look for behavioural patterns to ascertain the writer’s intentions, motives and bias. I did exactly the same for Scrooby that I do for any author/publisher… the most pertinent facts are: …

2. The McG Publishing company and McG Publications are run out of a bedroom somewhere…

3. The company was set up to bring out the author Scrooby who is in fact Chris McGrath…

4. Chris McGrath has claimed that he has scientific proof for the evidence of god, however this does not appear in the book. There are also zero scientific sources in the book from any peer reviewed scientist or indeed any scientist for that matter.

5. Indeed Chris McGrath is not a scientist … he is in fact a failed film student from Bournemouth University…

– Anyway, this guy has now claimed he is informing the police and taking legal action for my criticisms of his work…

– I’ve never heard of legal action being taken where you take apart a creationist’s case.

– TAGGED: CREATIONISM, DISHONESTY, FLEAS, IRRATIONALITY, LAW, STEPHEN HAWKING, WINGNUTS. (These tag-words appear alongside the article and can be used to link it to other articles on the website similarly tagged. The tags were apparently selected by Mr Jones from a list available on the website.)

 

    1. In response to this article the following words complained of were posted, mostly as part of longer comments. (Again, I am obliged to counsel for the 1st and 2nd Defendants for disentangling them from the pleading and allocating them to their respective sources.)

 

 

Comment 1- The police have long experience of receiving letters or whatever from one-man-band religious nutters. The guy you’re dealing with doesn’t even have any connections with other nutters. When we (I) was hit by the nutters we had good reason to believe that the shooting match was organised by at least two well known creationist organisations (one with an annual budget of millions); the front man also did a runner afterwards (to Kenya).

Comment 2- I forgot to add, please continue to kick Scooby in the goolies and that is how he is treating you. [Only the italicised words are complained of.]

Comment 11- McGrath appears to have a wife and family to support out of the proceeds of sale of his one and only book. That’s the real measure of his desperation. He’s set up a business and is screwing up at the first stage… Better off on the dole. [Just sit back and] let him hang himself.

Comment 15- Small point – a company is a “person” in law. It has human rights. It can sue for libel. But this clown won’t get anywhere.

Comment 17- The usual wingnut drivel.

Comment 20- The fundamentalist who knows he’s right. You could for a few pounds get details of his company’s assets and directors from Companies House….Try to do this in a way that makes HIM do all the work. Don’t give an unnecessary detail or justification. Let him write and ask again. Be mimalist [sic] in any letters to any third parties he tries to use and keep a folder of any letters.

Comment 27- Any fool can set up a publishing company and a pretty website and put a sample chapter on line. The danger is that creationism’s army of useful idiots will be impressed by the free sample chapters and question no more (if they ever did). But then they’re the sort of people who probably never get to the end of a book anyway because it hurts their brains.

Comment 28- A try-on by a disreputable idiot.

Comment 33 [From the 4th Defendant]- Glad I’m not the only one who thinks he’s a chancer.

Comment 40- This is a classic example of creationist thinking. CMcG …sets up a commercial organisation to make money and spread his confused ideas, also giving him apparent status as managing director…The big money creationists of like mind make a similar pretense of independense by reviewing each other’s work. The posing as managing director of a non-entity company is similar. The big money outfits set up creationist “educational institutions”.

 

    1. The Dawkins Website; Natural and Ordinary Meanings. The meanings pleaded in respect of the original article and subsequent comments are similar to those alleged in the case of Amazon, but the distinction between the personal and business allegations is less clear-cut, and little attempt is made to attribute them to particular passages or comments. They are in summary as follows.

 

 

The Claimants are:

i. liars and swindlers of ill-repute;

ii. exhibiting cognitive deficiencies;

iii. morally corrupt Creationist writers and publishers;

iv. both deserving of the utmost ridicule;

v. (the 1st Claimant only) deserving of physical violence to his genital area;

vi. people who will sue you if criticised;

vii. despicable self-publicists with cognitive deficiency;

viii. not a realistic business but a business which takes place in a bedroom and should not be traded with;

ix. not intellectually credible, all the science in their book being from their own imagination;

x. (the 1st Claimant is) a failed film student, so failure attends all his enterprises and his business is not one with which to deal;

xi. anti-Atheist bigots, obstinately and intolerantly devoted to their own opinions and prejudices, and exhibiting intolerance and animosity towards atheists.

(Meanings vi-xi are described in the alternative as innuendoes, but this must refer to “false” innuendo because a case on “legal or true” innuendo is pleaded separately.)

 

    1. Reading the Dawkins thread as a whole, while addressing myself particularly to the words actually complained of, my conclusion is that it is capable of bearing the following meanings, defamatory or potentially defamatory, of the Claimants. Unless otherwise specified, the 4th Defendant shares responsibility for that meaning.

 

 

The 1st Claimant

j. that he had abused his right to review the Hawking book, by using the review to promote his own book;

k. that he had falsely claimed to have scientific proof in his book for the existence of God, when in fact no scientific sources are relied on;

l. that he had failed his university course in film studies; I reject unhesitatingly the 1st, 2nd and 4th Defendants’ contention that it is not capable of being defamatory to say that someone has failed his degree.

(All the above are derived principally from the 4th Defendant’s originating review.)

m. that he was failing financially in business (Comment 11, not the 4th Defendant’s);

n. that he had engaged in a pretence by reviewing his own work (Comment 40, not the 4th Defendant’s).

 

The 2nd Claimant

o. that it was failing financially in business (Comment 11, not the 4th Defendant’s).

 

    1. As to the other passages and allegations complained of, I have already indicated why it is not capable of being defamatory of either Claimant to allege that the 2nd Claimant company is “run out of a bedroom” or set up to publish one book, as alleged in the originating posting. The allegation in the review that he is informing the police and taking legal action is likewise not capable of bearing a defamatory meaning in this context, those being his rights. And the references to him as a creationist or fundamentalist are not capable of being defamatory in their natural and ordinary meaning; see [63] above.

 

 

    1. The other comments complained of, though unpleasant, are plainly vulgar abuse which would carry no weight with an internet reader of this website:

 

– “nutter” (Comment 1);

– “please continue to kick him in the goolies [as that is how he is treating you]” (Comment 1);

– “Let him hang himself” (Comment 11) plainly in context not literally intended;

– “clown” (Comment 15);

– “the usual wingnut drivel” (Comment 17);

– “fool…idiots…hurts their brains” (Comment 27);

– “a try-on by a disreputable idiot” (Comment 28);

– “a chancer” (Comment 33).

 

    1. For these reasons the pleaded natural and ordinary meanings relied on against the 1st and 2nd Defendants (and the 4th Defendant insofar as he is the author of the passages giving rise to them) are again rhetorical and far-fetched, and they and the words complained are liable to be struck out except insofar as they are within the limits of [72] above.

 

 

    1. The Dawkins Website; Legal Innuendo Meanings. A legal or true innuendo gives rise to a further cause of action, separate from that based on natural and ordinary meaning. As already stated, the Dawkins website (unlike Amazon’s) is directed at a group of people with a well-defined special interest and indeed a definite intellectual position within it. It is therefore entirely possible that its readers, or many of them, may share specific knowledge or a specific jargon so that particular words or phrases convey something different to them than to the general reader, that is, a legal innuendo. In his Particulars of Claim, C refers for this purpose to the tags CREATIONISM, DISHONESTY, FLEAS, IRRATIONALITY, LAW, STEPHEN HAWKING and WINGNUTS annexed to the thread. He pleads (and it must be accepted at this stage of the case) that (to summarise):

 

 

a. Prof. Dawkins has adopted a quotation from W.B. Yeats about his imitators, “But was there ever dog that praised his fleas?” to belittle a theologian who wrote a book with the name “Dawkins” in the title, and his followers are well aware of this as a pejorative epithet for his critics;

b. the Dawkins website contains many harsh criticisms of creationists as “superstitious”, “drooling morons”, “the lunatic fringe of religious people” and so forth, and again its readers are familiar with this usage.

 

    1. The question is whether a reasonable reader of the Dawkins website, familiar with these matters, would or might as a result attribute to the words “creationist” and “fundamentalist” or the other criticisms of the Claimants made on that website a defamatory meaning different from or stronger than that which would be applied by a reader of the same words without that knowledge. The legal innuendo meanings proposed by C at Para. 38 of the Particulars of Claim are as follows:

 

 

– “the Claimants are not merely as inhuman and repugnant as fleas, they are in fact fleas;

– they possess clear mental instability and intellectual feeblemindedness;

– they are lying fundamentalist creationists lacking moral and ethical integrity”.

 

    1. The fallacy in the Claimants’ approach to legal innuendo meanings is that it disregards the fundamental rule that for defamation purposes words bear a single meaning, which is that of the reasonable, right-thinking reader. Knowledge of legal innuendo facts may lead a particular group of readers to a different meaning from that apparent to the general public; but it must remain a meaning which a reasonable person knowing those facts would perceive. For example, if A tells B, a racist, that X is black (or tells him something about X which when added to other information about X in his possession leads him to conclude that X is black), then the racist may draw various adverse inferences about X’s character and think the less of him. But that would not be the conclusion of a reasonable or right-thinking person possessed of the same knowledge; so A’s words would not become defamatory by reason of his hearer’s unreasonable prejudices.

 

I do not of course mean to suggest by this analogy that the followers of Prof. Dawkins are to be compared with racists. But C does, broadly speaking, take that line. It is his case that the typical reader of the Dawkins website is so prejudiced against religious believers that, upon hearing that a person is a believer or a creationist, he will automatically assume that that person has the negative characteristics stated in the innuendo meaning set out at [77] above. This may not be true; but even if it is true, it is not enough to establish a legal innuendo meaning.

 

    1. In respect of “fleas”, no reasonable person, whatever their knowledge or belief-system, would think that the use of that word in connection with C conveyed the exaggerated meaning alleged; and in respect of “wingnuts” C does not appear to be suggesting that it conveys anything more than its dictionary meaning, which could not be an innuendo. For these reasons the innuendo claim fails against both the 1st and 2nd Defendants.

 

 

C. DAMAGES ISSUES 

    1. As a matter of law, the Defendants take objection to two aspects of C’s claim for damages:

 

a. the contention that the 2nd Claimant company is entitled to aggravated damages;

b. the contention that both Claimants are entitled to exemplary damages.

 

    1. In respect of aggravated damages, the law is clear. Libel damages are intended to compensate for injury to reputation, to act as a public vindication, and to take account of the distress, hurt and humiliation which the libel has caused. (See John v. MGN [1997] QB 586, CA, cited in Duncan and Neill, supra, at 23.07.) Since a limited company has no feelings, it cannot recover aggravated damages; see Collins Stewart v. Financial Times [2006] EMLR 5, Gray J. This is a long-established principle, and C has produced no good reason to doubt its authority or its correctness. (He refers to “religious aggravation”; while disrespect to his religion might well cause aggravation to a human being, a company cannot have a religion.)

 

 

    1. In respect of exemplary damages, C’s arguments merit closer consideration. The two relevant situations in which exemplary damages may be claimed are:

 

a. oppressive, arbitrary or unconstitutional action by servants of the government;

b. the deliberate commission of a tort with the intention of gaining some advantage which will outweigh the compensation otherwise payable.

(See Duncan and Neill, supra, at 23.33.)

Much of C’s pleading and argument on this issue goes to the alleged malice of the 1st, 2nd and 4th Defendants (he accepts that Amazon’s moral guilt is less); but malice alone, absent one of those elements, only gives rise to aggravated damages, not exemplary.

 

    1. As to head (a), C argues that charities are bodies of a public nature, and often discharge public functions, so that the same principles should apply to their conduct as to that of governmental bodies. I remind myself that if this issue is in any way fact-sensitive it would not be appropriate to dismiss it at the outset, before even pleading and disclosure. However, I hold that it is plain and obvious that the facts that charities have to be registered with a public body, and do work of public benefit, do not of themselves give charities a public character, let alone a governmental one, in the sense that those concepts are used in relation to liability for exemplary damages.

 

I do see plenty of room, in a world where government delegates many of its established public functions to charities (in the spheres of housing or health-care for example), for an arguable exemplary claim against a charity if it was acting as an agent of government in committing the act complained of. That is because the purpose of this head is to provide a deterrent sanction against the abuse of public power, especially when that abuse is backed by the public purse and the individuals responsible are hard to call to account.

But there is no sense at all in which the 1st and 2nd Defendants (let alone the 3rd or 4th) are exercising public power when they criticise religion or advocate atheism. A charity of this sort is essentially a private vehicle by which its supporters can educate and inform the public about their standpoint, which very often, and perhaps particularly in this case, will be one which bears no relation to any governmental policy or interest. Such a charity has no power except the power of its ideas. I therefore conclude that it is plain and obvious that head (a) has no application to this case.

 

    1. As to head (b), C again concentrates mostly on the 1st and 2nd Defendants, and contends that their policy is to further their cause, and raise funds to do so, by vilifying those who argue against them. Their response is, firstly, that the law requires that the tort be committed deliberately for financial gain. I am not satisfied that this is correct. The editors of Duncan and Neill, supra, carefully use the phrase “some advantage”, though they indicate at 23.35 that it needs to be a “material” one. They quote an observation of Lord Wilberforce in Cassell v. Broome [1972] AC 1027 that he was far from convinced that Lord Devlin (in Rookes v. Barnard [1964] AC 1129) ever intended to limit punitive damages to cases where a profit motive was shown. I am not aware that the outer limits of “advantage” have yet been authoritatively defined so as to warrant striking out on this point alone.

 

 

    1. The Defendants are on firmer ground with their other two objections:

 

a. that the anticipated advantage in question needs to be derived from the commission of the particular tort, not simply from a general course of business (see the authorities cited byDuncan and Neill at 23.35, note 7); and

b. that the defendant must both know or be reckless that his words are tortious (i.e. not merely defamatory but unlawful) and consciously decide to go ahead having calculated that the chance of advantage outweighs the chance of penalty.

Nowhere in his pleadings or arguments does C put forward a credible case, let alone any evidence, that either of these requirements is fulfilled in the case of any of the Defendants. It is difficult to envisage how the two website campaigns in question, criticising so little-known a target to so small an audience, could materially advance the cause of atheism or damage that of religion; and (unusually) the question of potential libel liability is actually discussed extensively in several of the threads complained of, including the first Dawkins website publication, but always from the standpoint that the publications are justified in the legal and/or popular senses rather than that “we know it’s wrong but we can get away with it (and it’s worth it even if we don’t)”.

For these reasons, I conclude that it is already clear that these claims for exemplary damages are misconceived and bound to fail, and that they should therefore be struck out.

 

    1. Finally on the subject of damages, it is relevant to the Jameel abuse of process arguments, about to be considered, to refer briefly to another matter pleaded by C under the damages heading. He refers to a potentially valuable trademark “20XII”, apparently owned by the 1st or 2nd Claimant. But as I read the pleading, he is not contending that the value of that trademark or of the company’s business in relation to it has actually been damaged as a direct result of these website publications. He fears that it may be, and therefore seeks an injunction; and he refers to the distraction which his involvement in this litigation is causing to the company’s pursuit of that business. In the absence of a claim for special damage, it does not appear to me that that matter is one which adds much weight to C’s case in respect of the Jameel issues.

 

 

D. ABUSE OF PROCESS

    1. All four Defendants invite me to strike out the claim as an abuse of process, under the by now well-established principles first set out in Jameel v. Dow Jones [2005] QB 946, CA. If it can be shown that there has been no real and substantial tort in this jurisdiction, and/or that the Claimant has no prospect of obtaining any damages or other valuable relief proportionate to the resources likely to be expended on the trial, then the action may be struck out as an abuse of process. This is however a jurisdiction to be exercised with the greatest caution, since if misused it would deprive the Claimant of both his Article 6 right to a fair trial and his Article 8 right to protection of his reputation. As stated by Eady J in Kaschke v. Osler [2010] EWHC 1075 (QB) at para.22 “…the court must be vigilant to recognise the small minority of cases in which the legitimate object of vindication is not required or at least cannot be achieved without a wholly disproportionate interference with the rights of the defendants”.

 

 

    1. In support of the contention that this is such a case, the Defendants point me to the following factors:

 

a. the limited extent of publication (in the case of the Dawkins website but not the Amazon one);

b. the limited defamatory meanings (in the light of my rulings on that issue above);

c. the limited margin between the truth about the Claimants’ activities, as admitted by them, and the defamatory stings of which they may properly complain;

d. the mitigating/extinguishing effect of the Claimants’ own publications and responses on Amazon (but not on Dawkins);

e. in the light of all the above, the limited remedies which the Claimants may expect by contrast with the considerable anticipated costs of trial.

The Claimants of course maintain that there are triable issues on all of these points, and that they have a real and substantial case both for worthwhile damages and for an injunction restraining all the Defendants, but in particular the 1st, 2nd and 4th, from repeating these or similar allegations in the future.

 

    1. As to extent of publication within the jurisdiction, Amazon has not sought to rely on this ground whether by evidence or in submissions. It is clear from the threads themselves that a modest but appreciable number of people other than C and the 4th Defendant either actually participated in the online debate or read it and posted their “vote” on whether they found it helpful; and that is likely to be the tip of the iceberg.

 

 

    1. The 1st and 2nd Defendants have put in evidence about the extent of publication. Again, the debate itself had about 13 active participants (some or all of them likely to be within the jurisdiction). The 1st and 2nd Defendants’ technical evidence is that between 147 and 303 devices within the jurisdiction downloaded at least some of the thread, though by the end the number was down to 45. The number of actual readers may have been less. This sets a lower limit for readership of the words complained of; but though it is relatively small I would not regard it as minimal, especially given the likelihood that most of those who read it shared C’s interest in the science/religion debate, though probably not his views on it. (However, these Defendants also correctly observe that C has never alleged that any readers of their website have actually contacted him or had any connection with him; the same is true in respect of Amazon.)

 

C has put forward evidence that the world readership of the .net site as a whole is of the order of 200,000; while of course the number who read it in this country, and the number of those who read the particular discussion strand complained of, are likely to be much less, this casts doubt on the 1st and 2nd Defendant’s figures. He also points out that in relation to any website publication of this sort one must allow for a considerable degree of foreseeable republication by users of the original website.

It follows that in respect of each website I should approach abuse of process on the basis that the number of readers of the words complained of is certainly not so small that the claim should be dismissed on that ground alone, and indeed may be a good deal larger than the Defendants contend. However, the points considered below are of similar force whether the number of readers is small or relatively large.

 

    1. As to the gravity of the defamatory meanings, I refer to the meanings (underlined and lettered a-o) which I have found the words to be capable of bearing, as set out at [62] and [67] (Amazon) and [72] (Dawkins). Though not of the utmost gravity, nor as serious as C would contend, they are by no means trivial allegations.

 

 

    1. However, an important issue in this case, as for example in Kaschke (supra), is the extent of the marginal damage to C’s reputation caused by the words complained of, in the light of what C has himself published or otherwise admitted. Since this exercise involves predicting the likely prospects of success of defences which have not even been pleaded yet, it must be carried out with extreme caution, and based only on C’s own admissions read as narrowly in his favour as is possible. Nevertheless certain matters are clear beyond argument:

 

i. C did seek to promote sales of his own book by means of false reviews, purporting to be the favourable reaction of real independent readers when in fact he had written them himself.

ii. He did seek to take advantage of the reputation of Prof Hawking (a disabled man) to promote his own book, by inserting a puff for his book into the Amazon site for the Hawking book under the false guise of a review of that book.

iii. He did participate in the online Amazon debates using false identities purporting to be real people agreeing with and defending him, when in fact they were just his aliases.

iv. The book is published by his own company, which is a very small business that has only published his book and has no independent premises of its own.

v. The book contains no scientific source references to back up its purported scientific contentions.(This is admitted by C at para. 72.2 of his submission dated 8 November 2011, in which he refers approvingly to his own Yahoo review of his book, again pretending to be independent.)

 

    1. In the light of these very material admissions, it can already be stated with confidence that, in respect of each of the following potential defamatory meanings, a., b., e (i), g., h., j., k., n., and o., as set out above :

 

 

i. The respective Defendants answerable for that meaning are overwhelmingly likely to succeed in defending it on the basis of justification and/or fair comment/honest opinion.

(In reaching this conclusion so far as comment/opinion is concerned I bear in mind the live issue of malice, particularly against the 4th Defendant, but also the rule that in this context “malice” refers only to the putting forward of an opinion which one does not genuinely hold; see Cheng v Paul [2001] EMLR 31. Given that Mr Jones is clearly a person who holds strong opinions of his own on the matters in question, and that in the light of the matters at [92] above there is a strong factual substratum on which his comments/opinions could be based, proving his malice in this strict sense would be a very challenging exercise. Although C has asserted his insincerity he has not indicated any facts or matters which point clearly towards it, as opposed to malice in the wider and more popular sense of hostility or spite.)

In addition, s. 5 of the Defamation Act 1952 would be likely to operate to improve the Defendants’ prospects of success on liability even in respect of the remaining allegations of fact not directly covered by the admissions.

ii. If, contrary to (i) above, such defences should not succeed completely in respect of one or more of those allegations, the effect of the admitted facts and matters at [92] above would be to reduce the damages recoverable for them, probably to a very low or even nominal level.

 

    1. In respect of the Amazon website, and the 4th Defendant’s contributions to it, a further important consideration arises, similar to that referred to by Eady J at para. 10 of Kaschke (supra) when he said:

 

“At all events, the publication of the “right of reply” is a relevant factor to take into account when assessing the application based on abuse of process.”

In this case, we are not dealing merely with a reply by a claimant to allegations previously published by a defendant. As set out at [55] – [58] above, C actually began Amazon Thread C with his spurious review of the Hawking book, inserted himself and his own book into Thread D, and attacked the 4th Defendant on Thread G before the latter had played any part in it. In each of these cases, but particularly Thread C, the Claimants participated fully in the debate on that thread and had full opportunity (which they frequently took) to answer the criticisms made by the 4th Defendant and others. Only in Thread H did C play no part. This participation by C will not only have a substantial effect on any jury’s assessment of the actual defamatory meaning of the words complained of (particularly where the 3rd Defendant’s liability is concerned), but it will certainly operate as a very substantial mitigation. It raises an obvious question: what real and substantial need does C have for a vindication through the courts, when he has already put his case to the original audience at the time of the original publication?

 

    1. So far as remedy is concerned, the above considerations lead to the conclusion that if C recovers any damages they will be minimal by comparison with the very substantial costs of bringing the action to trial. For example, Amazon has put in bills suggesting that its costs for these applications alone already exceed £70,000; and the Claimants’ pleadings and submissions are so voluminous and randomly organised as to suggest that the action will be a long and complicated one.

 

 

    1. As to injunctive relief, there is no reason to suppose that the 1st or 3rd Defendants are likely to defame the Claimants in the future, at least not deliberately so as to be deterred by an injunction or liable in contempt for breaching it.

 

The position is by no means so clear where the 2nd and 4th Defendants are concerned. The 4th Defendant’s intellectual and personal hostility to the Claimants (not the same thing as malice vitiating comment/opinion) is apparent from his postings; and the .net forum (for which the 2nd Defendant may well have been liable and might be again) is a natural home for attacks on those holding C’s views, and is not fully moderated so as to exclude defamatory comments.

 

    1. At this point, it may be helpful to set out again those defamatory allegations which I have found the words to be capable of bearing, and in respect of which there may not be a good substantive defence. (I ignore for this purpose the issues of the 3rd Defendant’s liability for publication, and the mitigating effect of C’s published responses, since those are not relevant to the question of future repetition by the 2nd or 4th Defendants.) They are:

 

 

On the Amazon website:

c. that the 1st Claimant acted improperly by contacting one of the 4th Defendant’s Facebook friends and seeking to coerce personal information about the 4th Defendant from them;

d. that he falsely claimed to the police that he was an employee of the 2nd Claimant when he was not;

e (ii). that his claim to have written the book as a parody when he was dying is ridiculous;

f. that he is a liar who falsely claims not to mock non-believers, when in fact he is so hostile to the 4th Defendant’s atheist views that for that reason he threatened him with police and legal action;

i. that he is a charlatan because he makes unfounded threats of legal action

 

On the Dawkins website:

l. that he had failed his university course in film studies.

 

    1. As to the above allegation concerning the university course, both the 2nd and 4th Defendants have offered undertakings to the Court not to repeat that allegation, and in those circumstances no useful purpose would be served by pursuing the claim against either of them for injunctive relief in that respect. That is an end of the claim against the 2nd Defendant.

 

The 4th Defendant has not offered any undertakings in respect of the above allegations published by him on Amazon (for which the 3rd Defendant is not liable). Further, it appears likely, given his apparent hostility to the 1st Claimant, and the fact that he has recently made further internet publications concerning this case, that he wishes to continue his campaign of criticism of the 1st Claimant (as may be his right).

In these circumstances, unless such undertakings are offered, his application for summary judgment will be allowed only in part, and the action will continue against him alone for the purpose of injunctive relief against republication of those allegations. [At the handing-down of judgment the 4th Defendant indicated that he was reconsidering the question of undertakings and I have granted time for him and C to consider this further.]

 

    1. My conclusions in relation to the abuse of process applications, in the light of all the above considerations taken together, are as follows:

 

a. The 2nd Claimant company has no claim against any of the Defendants worth pursuing, and its claims should therefore all be struck out.

b. The 1st Claimant’s claim against the 3rd Defendant (already dismissed by virtue of the reg.19 defence) should also be struck out as an abuse of process. In this decision I give particular weight to the 1st Claimant’s admissions and to his own active participation in most of the Amazon publications.

c. For the same reasons, the 1st Claimant’s claim against the 4th Defendant for damages in respect of his Amazon publications should be struck out.

d. In respect of the Dawkins website publications, there is no credible claim for damages, proportionate to the costs of the action, against any of the 1st, 2nd and 4thDefendants, particularly in the light of my rulings on meaning and the 1st Claimant’s admissions. The only surviving allegation is a relatively trivial one by comparison with what the Defendants will be able to prove against the Claimants.

e. The 1st Claimant has no credible claim against the 1st or 2nd Defendant for injunctive relief either, and the claim against them should therefore be struck out (upon the limited undertaking by the 2nd Defendant referred to above).

f. As indicated, the action will continue against the 4th Defendant for the purpose of injunctive relief, to the extent indicated above, [subject to satisfactory undertakings being offered], the balance of the claim against him being struck out.

 

**************************************************************************************

 

 


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Metropolitan v Google EadyJ 16 July 2009

 

Between :

METROPOLITAN INTERNATIONAL SCHOOLS

LIMITED (T/A SKILLSTRAIN and/or

TRAIN2GAME)

Claimant

– and –

(1) DESIGNTECHNICA CORPORATION

(T/A DIGITAL TRENDS)

(2) GOOGLE UK LIMITED

(3) GOOGLE INC Defendants

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Cite as: [2012] EWHC 449 (QB)


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Neutral Citation Number: [2012] EWHC 449 (QB)
Case No: HQ11D03178

IN THE HIGH COURT OF JUSTICE
QUEEN’S BENCH DIVISION

Royal Courts of Justice
Strand, London, WC2A 2LL
2 March 2012

B e f o r e :

THE HONOURABLE MR JUSTICE EADY
____________________

Between:

PAYAM TAMIZ

Claimant
– and –

 
GOOGLE INC
GOOGLE UK LIMITED

Defendants

____________________

The Claimant appeared in person
Catrin Evans (instructed by Reynolds Porter Chamberlain LLP) for the First Defendant
The Second Defendant was not represented
Hearing date: 16 February 2012 

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

Mr Justice Eady :

The parties

    1. In this libel action Mr Payam Tamiz has sued both Google Inc and Google UK Ltd (as, respectively, First and Second Defendants) in relation to eight comments which are said to be defamatory of him and which were posted on a blog bearing the name “London Muslim” at various times between 28 and 30 April 2011. He does not sue in relation to the original blog or article to which these comments related, nor in respect of some 37 other comments contained in the same thread. Nevertheless, it may be that such matters would need to be taken into account as part of the context for the words sued upon.

 

    1. Google Inc is a corporation registered in Delaware, in the USA, and its principal place of business is in California. On 22 September 2011 Mr Tamiz was granted permission by Master Eyre to serve the claim form on Google Inc in California. It is now sought by Ms Evans on its behalf to have that order (which was made, in the usual way, on a without notice application) set aside in accordance with the provisions of CPR Part 11(1) and (6).

 

    1. Ms Evans also asks that the court should declare that there is no jurisdiction to try the claim; alternatively, should the court hold that there is such jurisdiction, that it should not be exercised.

 

    1. Google Inc provides a range of Internet services including via Blogger.com (also based in and managed from the USA). This is described as a “platform” which allows any Internet user, in any part of the world, to create an independent blog free of charge. If someone uses that service, without having his/her own web address (“URL”), then Blogger.com allows users to host their blogs on Blogger.com URLs. This was the case with the blog on which the comments complained of in these proceedings were posted. Google UK Ltd simply carries on a sales support and marketing business within this jurisdiction. It does not operate or control Blogger.com and has therefore been joined in these proceedings inappropriately. This was explained in a defence served on 8 December 2011. The English company takes no part in the applications before me.

 

    1. It seems that Mr Tamiz was in the news for a brief period in or about April 2011 in relation to allegations that he had resigned as a Conservative Party candidate for local elections in Thanet after making inappropriate remarks. Indeed, this was the subject of the original post or article on the London Muslim blog, to which the eight comments sued upon were supposed to be in response. It had been headed “Tory Muslim candidate Payam Tamiz resigns after calling girls ‘sluts'”. As I have already made clear, Mr Tamiz has brought no proceedings against either the original blogger or the individual commentators, who would undoubtedly be responsible in law for any defamatory words they had posted. This may not be altogether surprising, since most of these communications are made anonymously and it is not easy to track down who was responsible. In the absence of any such problems, however, Mr Tamiz has sued in respect of an article appearing (originally on 27 April 2011) in the Evening Standard by Joe Murphy, described as Political Editor, and dealing with the allegation that he had resigned after it had been discovered that his Facebook site referred to women as “sluts”.

 

The words complained of

    1. I shall set out the initial blog or article appearing on the London Muslim website on 27 April simply because it is relevant background context for what followed. The words appeared under a photograph of Mr Tamiz:

 

“Payam Tamiz a Tory Muslim council candidate with a 5 o’clock shadow has resigned from the party after calling Thanet girls ‘sluts’.

Tamiz who on his Twitter page describes himself as an ‘ambitious British Muslim’ is bizarrely studying law so one would have though (sic) this Tory prat with Star Trek Spock ears might have engaged the odd brain cell before making these offensive remarks.”

    1. Thereafter a range of comments appears and I shall set out only those complained of, which have been conveniently labelled A to H for ease of reference.

 

Comment A

“Anonymous said …

I know Mr Tamiz very well and am surprised that it has taken this long for all this to come out, Payam is a known drug dealer in thanet and has been taken to court for theft from his employers tescos in Ramsgate. His whole family are criminals his mother Mrs Sohela Tamiz has several convictions for theft and shoplifting and got sentenced at maidstone crown court

28 April 2011 14:53″

Comment B

“Anonymous said …

Can’t deny what he said is true but isn’t this the same Payam Tamiz that use to take girls back to his ‘houseparties’ practically every weekend with his friends and sleep with them? Hypocritical much?

30 April 2011 12:28″

Comment C

“Anonymous said …

The blokes a class A prat not only for the comments he recently made. He may have a few half wits as a following but I speak for the people that have known payam for several years and have been on the reciving (sic) end of his abuse a disrespect and his not such a nice person. I’m sure we’ll be hearing alot more from his past which will paint a true picture of him.

28 April 2011 23:04″

Comment D

“Anonymous said …

So Mr Whacker is a voilent (sic) racist, certainly doesn’t like white people does he?!

If you’d ever been to Margate you would find the majority are white women, even those from the Eastern bloc. To tar all Margate women with the word slut is very derogatory, how does he know? Does he make a habit of chasing women around? Or as someone implys above, does he sell drugs to them?

28 April 23:51″

(Only the last two questions are the subject of complaint.)

Comment E

“Anonymous said …

I’ve only read that Payams claiming to be 21, I’m sure he told me that his older than that. Fake asylum claim was it. The good old home office and all us wankers that pay tax for waste of spaces like him.

29 April 2011 01:09″

Comment F

“Anonymous said …

Before Payam starts to call women sluts it might be an idea for him to look closer to home, how may (sic) brothers and sisters has he got, all with different fathers. I thought Muslim men were the one who were meant to have more than one wife, not the women with more than one husband. Is there not a 30 year gap between the ages of his younger to older brother and sister. Look closer to home pal.

29 April 2011 09:40″

Comment G

“Anonymous said …

The only reason his callig (sic) girls slags is cos he aint getting none himself. And he blames a relationship breakup for his comments, but the only problem with that being is that Payams never had a girlfriend since I known him and thats been a couple of years, that makes him single at the time.

Poor little Payam, has you giving it the large one to your friends blown up in your face and back fired.

It couldn’t have happeneded (sic) to a better person, his a little snake and he knows it. I’d put my money on him still being a virgin, not being funny but you only got to look at his picture to work that out.

29 April 2011 21:26″

Comment H

“Anonymous said …

And his brothers girl friend is an escort girl, Claudine Lear, look closer to home pal.

29 April 2011 18:43″

 

A summary of the case advanced by Google Inc

    1. In general terms, the stance of Google Inc is that it has no control over any of this content. It is thus not a publisher of the material but merely a neutral service provider. In due course, following the Claimant’s complaint, Google Inc after a considerable delay passed it on to the blogger in question, who remains unidentified so far as the Claimant is concerned, and he took all the material down, along with the original article, on a voluntary basis. There is no evidence that it has been re-posted at any time since.

 

    1. Google Inc makes the point that it has no way of knowing whether the comments complained of were true or not (or subject to some other defence in law). It argues that it cannot reasonably be expected to investigate and determine the truth or falsity of allegations made by bloggers.

 

    1. One needs to be wary of analogies when considering modern technology, but it may perhaps be said that the position is, according to Google Inc, rather as though it owned a wall on which various people had chosen to inscribe graffiti. It does not regard itself as being more responsible for the content of these graffiti than would the owner of such a wall.

 

    1. Against this background, Ms Evans has developed the following arguments. First, she submits that the particulars of claim do not go so far as asserting that the words complained of have been accessed or downloaded by a substantial number of readers in this jurisdiction. On that ground alone, she argues that the Claimant has not even pleaded that a “real and substantial tort” has been committed in this jurisdiction: see Jameel (Yousef) v Dow Jones & Co Inc [2005] QB 946. He sought to deal with this by introducing a skeleton argument and a number of witness statements shortly before the hearing. He being a litigant in person, no objection was taken to this course. Ms Evans also argues, however, that in any event the content of the words complained of does not reach what she describes as the necessary “threshold of seriousness required to establish a cause of action in libel”.

 

    1. Secondly, Ms Evans argues that Google Inc is not a publisher for the purposes of the English law of defamation.

 

    1. Thirdly, even if Google Inc is to be regarded as a publisher of the words complained of, Ms Evans argues that it would be protected against liability by Regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002. These implement in the law of the United Kingdom the provisions of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council dated 8 June 2000 relating to electronic commerce.

 

The complaints made to Google Inc

    1. It is appropriate to address these submissions both by reference to the period before Google Inc received any notification of Mr Tamiz’ complaint and to the period afterwards, in order to see whether it makes any difference as a matter of law. For that reason, I should go into a little further detail as to the history of the communications between the parties, as described in the evidence of Mr Jaron Lewis, who is Ms Evans’ instructing solicitor.

 

    1. According to Mr Tamiz, he first notified his complaint on 28 or 29 April 2011 (i.e. as the postings were taking place) when he used the “Report Abuse” function on the relevant web page. What became of this remains unclear.

 

    1. A letter of claim was sent on 29 June to Google UK Ltd, which was received on 5 July. This complained of the original article, as being defamatory and untrue, although it was not subsequently sued upon in these proceedings. Complaint was also made of what is now described as Comment A. This letter was passed by Google UK Ltd to Google Inc, which responded to Mr Tamiz by email on 8 July. Clarification was sought as to whether the comment in question was said to be untrue, since his letter had not apparently made that clear. It was at this stage that it was pointed out to Mr Tamiz that the blogger service had nothing to do with Google UK Ltd.

 

    1. Mr Tamiz responded promptly on 8 July to the effect that Comment A was indeed “false and defamatory”. At this stage, he introduced a complaint about Comment B as well.

 

    1. The “Blogger Team” within Google Inc sent a further email to Mr Tamiz on 19 July, seeking his permission to forward his complaint to the author of the blog page. He was told, however, that Google Inc itself would not be removing the post complained of. Mr Tamiz responded by giving the necessary permission on 22 July.

 

    1. In that email of 22 July, Mr Tamiz complained about a further five comments on the blog, now identified as Comments C, D, E, F and G. He confirmed that these were alleged to be defamatory and it seemed to be implicit also that he was characterising them as untrue.

 

    1. After considerable delay, Google Inc forwarded the letter of claim to the blogger on 11 August of last year and informed Mr Tamiz that it had done so. As I have said, on 14 August the article and all the comments were removed by the blogger himself. Mr Tamiz was accordingly notified by Google Inc the following day. It was on or about 10 August that he sent the claim form in these proceedings, together with the original particulars of claim, to the court. It was issued by the court on 16 August.

 

    1. After the Master gave permission to serve the claim form in California, on 22 September, the particulars of claim incorporated an additional complaint relating to Comment H and were served on 2 November.

 

The reasons for seeking permission to serve out of the jurisdiction

    1. When Mr Tamiz applied for permission to serve out, he seems to have been relying on PD6B of CPR Pt 6 with specific reference to sub-paragraph 3.1(3) and/or 3.1(9). It would appear that the first ground was based on a misapprehension, since the provision specifies circumstances in which:

 

“(3) A claim is made against a person (‘the defendant’) on whom the claim form has been or will be served (otherwise than in reliance on this paragraph) and –

(a) there is between the claimant and the defendant a real issue which it is reasonable for the court to try; and

(b) the claimant wishes to serve the claim form on another person who is a necessary or proper party to that claim.”

Here, the only relevant “defendant” on whom the claim form had been served within this jurisdiction was Google UK Ltd, in respect of which there is and was no “real issue which it is reasonable for the court to try”.

    1. That leaves sub-paragraph 3.1(9) to be considered as a basis for service out. This presupposes a claim in tort “where – (a) damage was sustained within the jurisdiction; or (b) the damage sustained resulted from an act committed within the jurisdiction”. Here, it is to be assumed that Mr Tamiz contends that damage has been sustained to his reputation within the jurisdiction: that is what any libel action is supposed to be concerned with. It is true that under English common law damage is presumed, but publication has first to be proved. It is clear that publication cannot be inferred solely by reason of the fact that defamatory allegations have been accessible on the Internet: see Jameel (Yousef), cited above, and Al Amoudi v Brisard [2007] 1 WLR 113. Thus, the burden lies upon the relevant claimant to establish at the outset a “real and substantial” publication with this jurisdiction.

 

 

Is there any evidence of a “real and substantial tort” within this jurisdiction?

    1. Ms Evans’ first point was that Mr Tamiz has so far not even pleaded any instances of substantive publication. That is an omission he sought to correct, at the last minute before the hearing, by adducing witness statements from various individuals who had seen some of the material complained of. He further claimed that, given time, he would be able to produce similar evidence from others. Nowadays, of course, it will not generally suffice for a claimant merely to prove that the relevant material has been accessed, read or downloaded by some identified person(s). It is necessary to go further and show some ground for believing that it has been given a measure of credence and thus been liable to affect the claimant’s reputation in the eyes of such person(s). It is not enough to show, for example, that the words have been read by someone in the claimant’s “camp”, such as a solicitor, friend, relative or colleague who has attached no weight to it at all, as happened in Jameel (Yousef). Mr Tamiz, however, suggests that not all of the deponents or potential deponents he has introduced are friends or acquaintances of his and that some may well have attached a degree of credence to what was alleged. In particular, someone at Conservative Central Office had asked for some of the allegations to be investigated or refuted.

 

    1. Ms Evans argues that anyone accessing the material complained of in these proceedings, and quoted above, would recognise it as being typical of the mindless rubbish to be found all over the Internet. People realise, she submits, that often contributors to threads of this kind are merely shooting from the hip, and without giving the matter any forethought or mature reflection: no weight should be attached to what they are saying, any more than to casual bar room gossip. She referred in this context to the discussion in Smith v ADVFN Plc [2008] EWHC 1797 (QB) at [14]-[17] and to Clift v Clarke [2011] EWHC 1164 (QB) at [32] and [36].

 

    1. It seems to me necessary to consider carefully each of the eight comments individually. They cannot all necessarily be readily dismissed as “mere vulgar abuse” or as being obviously not intended to be taken seriously. For example, Comment A contains two clear allegations (i) of being a drug dealer and (ii) of having stolen from a former employer. What is more, the author suggests that the information is widely known and that there has even been a conviction for theft. Those were apparently the matters on which the Conservative Party, not surprisingly, required reassurance.

 

    1. Less significant is Comment B, which alleges substantively only that Mr Tamiz used to sleep with girls at “houseparties”. Nowadays, I do not suppose that would be taken to be defamatory by “right-thinking members of society”, but it is coupled with an accusation of hypocrisy and I do not feel able at this stage to conclude that this is incapable of founding a cause of action.

 

    1. As to Comments C, E, F, G and H, I would agree with Ms Evans that they can each be characterised as effectively “mere vulgar abuse”. No sensible person would attach much, if any, weight to them. They do not seem to represent examples of a real and substantial tort such as to suggest any need for the vindication of Mr Tamiz’ reputation.

 

    1. On the other hand, I am not so persuaded in relation to Comment D, which rehearses (albeit with a question mark attached) the earlier charge of being a drug dealer. As with Comment A, I believe that I cannot simply dismiss this complaint out of hand.

 

    1. An allegation of criminal offending, whether of theft from an employer or of dealing in drugs, cannot be discounted on the basis of a mere “numbers game”. Such allegations are apt to cause damage to reputation, in some circumstances, even in the case of restricted publication. If this were an application to strike out, I would accordingly leave in Comments A and D. I would also leave Comment B, but I would remove the other five comments.

 

    1. It is submitted that whatever defamatory sting is contained in those comments is, at least, significantly diluted by the surrounding context of the thread. They too would therefore be likely to be dismissed as part of the generally abusive banter. That seems to me the kind of argument that could be developed at trial, rather than on an application analogous to a strike out. The fact that some contributors to a thread are talking nonsense does not in itself mean that all the others should be similarly dismissed

 

Is Google Inc a “publisher” according to common law principles?

    1. Ms Evans next raised the argument that Google Inc should not be regarded, as a matter of English law, as a publisher of the words complained of. It is probably fair to say that none of the decisions so far relating to the role of Internet service providers (ISPs) has definitively established, in general terms, exactly how such entities fit into the traditional framework of common law principles. In the recent decision of His Honour Judge Parkes QC in Davison Habeeb [2011] EWHC 3031 (QB), he recognised that ” … there is in my judgment an arguable case that [Google Inc] is the publisher of the material complained of, and that at least following notification it is liable for publication of that material”.

 

    1. The position may well be fact-sensitive. Liability may turn upon the extent to which the relevant ISP entity has knowledge of the words complained of, and of their illegality or potential illegality, and/or on the extent to which it has control over publication. For example, in Godfrey v Demon Internet Ltd [2001] QB 201, it was held that an ISP which continued to store a defamatory posting on its news server, after having been asked to remove it by the claimant, was responsible for the publications which occurred when that posting was later accessed. (That case was decided some 18 months before the Human Rights Act came into effect.) On the other hand, in Bunt v Tilley [2007] 1 WLR 1243, a claim was struck out against three separate ISPs on the basis that ” … persons who truly fulfil no more than the role of a passive medium for communication cannot be characterised as publishers”.

 

    1. In a rather different context, where Google Inc had been sued in respect of its role as operator of the widely used search engine, it was held not to be responsible for publication of defamatory “snippets”, derived from automated searches by “web-crawling robots”, even though published on the “results” page in response to Google searches. Because the process is automated, and searches are framed by those making the enquiry without any human input from Google Inc, it was held that the mental element traditionally involved in responsibility for publication at common law was absent: see Metropolitan International Schools Ltd v Designtechnica Corpn [2011] 1 WLR 1743.

 

    1. No allegation is made in this case of liability on the part of Google Inc in respect of any of the “comments” complained of prior to notification by Mr Tamiz of his objections. It is only necessary, therefore, to assess potential legal liability from the point of notification (whenever that occurred). It is relevant to have in mind, although it cannot be determinative as a matter of law, that Google Inc promulgates and attempts to follow a well known policy of its own; that is to say, it will not remove offending material because it is not in a position to investigate or come to a decision upon any legal challenge. As I understand it, this is partly a question of principle and partly a matter of sheer practicality. Google Inc regards itself as providing a platform for the free exchange of information and ideas and would not wish to be seen as a censor. In any event, the blogs on Blogger.com contain, I am told, more than half a trillion words and 250,000 new words are added every minute. In these circumstances, it is virtually impossible for the corporation to exercise editorial control over content. The position was summarised by Ms Evans’ instructing solicitor in paragraph 9 of his witness statement:

 

“[Blogger.com] does not create, select, solicit, vet or approve that content, which is published and controlled by the blog owners. Blogger.com merely provides the tools for users to operate and maintain their sites.”

    1. Ms Evans invites me to adopt a similar approach to that in the Designtechnica case and to conclude that it would be “unrealistic” to attribute responsibility for publication of material on any particular blog to Google Inc, whether before or after notification of a complaint.

 

    1. Where the law is uncertain, in the face of rapidly developing technology, it is important that judges should strive to achieve consistency in their decisions and that proper regard should be paid, in doing so, to the values enshrined in the European Convention on Human Rights and Fundamental Freedoms. In particular, one should guard against imposing legal liability in restraint of Article 10 where it is not necessary or proportionate so to do. In this context, Ms Evans argues that it is unnecessary to impose liability on ISPs when a complainant, in order to have access to justice, may alternatively have resort to those who undoubtedly are responsible for publishing the offending words. This would include primarily the authors and possibly also the persons who have control of the blog in question. As I have indicated already, this is an approach which may be regarded as more theoretical than real because of problems of anonymity, but it is certainly not an argument that can be simply ignored. In Bunt v Tilley, cited above, the claims against AOL UK Ltd, Tiscali UK Ltd and British Telecommunications Plc were all struck out. Against that background, I concluded the judgment with these words:

 

“The Claimant is not deprived of access to justice. His remedies lie against the First to Third Defendants (if he can establish the necessary ingredients in respect of each). They may not be persons of substance, such as to make it worthwhile pursuing them. Even if that is right, it is clearly not a sufficient reason for bringing in the present applicants …”

The important question, in the present context, would appear to be, not whether Mr Tamiz can identify the authors or bloggers in question, still less whether they are worth powder and shot, but rather whether he is in a position to establish against Google Inc the necessary attributes of a publisher in accordance with common law principles.

    1. Google Inc accepts the responsibility of notifying (albeit not always with great promptitude) the blogger(s) in question. It does not, however, accept that it should investigate every complaint received, whether by way of establishing the facts or obtaining advice on the relevant domestic law or laws that may be applicable. The fact that an entity in Google Inc’s position may have been notified of a complaint does not immediately convert its status or role into that of a publisher. It is not easy to see that its role, if confined to that of a provider or facilitator beforehand, should be automatically expanded thereafter into that of a person who authorises or acquiesces in publication. It claims to remain as neutral in that process after notification as it was before. It takes no position on the appropriateness of publication one way or the other. It may be true that it has the technical capability of taking down (or, in a real sense, censoring) communications which have been launched by bloggers or commentators on its platform. Yet that is not by any means the same as saying that it has become an author or authoriser of publication. It is no doubt often true that the owner of a wall which has been festooned, overnight, with defamatory graffiti could acquire scaffolding and have it all deleted with whitewash. That is not necessarily to say, however, that the unfortunate owner must, unless and until this has been accomplished, be classified as a publisher.

 

    1. It seems to me to be a significant factor in the evidence before me that Google Inc is not required to take any positive step, technically, in the process of continuing the accessibility of the offending material, whether it has been notified of a complainant’s objection or not. In those circumstances, I would be prepared to hold that it should not be regarded as a publisher, or even as one who authorises publication, under the established principles of the common law. As I understand the evidence its role, as a platform provider, is a purely passive one. The situation would thus be closely analogous to that described in Bunt v Tilley and thus, in striving to achieve consistency in the court’s decision-making, I would rule that Google Inc is not liable at common law as a publisher. It would accordingly have no need to rely upon a defence (statutory or otherwise).

 

The alternative arguments based on s.1 of the Defamation Act 1996

    1. Ms Evans invites me also to consider the terms of s.1 of the Defamation Act 1996 and its possible impact on circumstances of this kind. The provisions are as follows:

 

“Responsibility for publication

(1) In defamation proceedings a person has a defence if he shows that –

(a) he was not the author, editor or publisher of the statement complained of,

(b) he took reasonable care in relation to its publication, and

(c) he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.

(2) For this purpose ‘author’, ‘editor’ and ‘publisher’ have the following meanings, which are further explained in subsection (3) –

‘author’ means the originator of the statement, but does not include a person who did not intend that his statement be published at all;

‘editor’ means a person a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and

‘publisher’ means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business.

(3) A person shall not be considered the author, editor or publisher of a statement if he is only involved –

(a) in printing, producing, distributing or selling printed material containing the statement;

(b) in processing, making copies of, distributing, exhibiting or selling a film or sound recording (as defined in Part I of the Copyright, Designs and Patents Act 1988) containing the statement;

(c) in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form;

(d) as the broadcaster of a live programme containing the statement in circumstances in which he has no effective control over the make of the statement;

(e) as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.

In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement.

(4) Employees or agents of an author, editor or publisher are in the same position as the employer or principal to the extent that they are responsible for the content of the statement or the decision to publish it.

(5) In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to –

(a) the extent of his responsibility for the content of the statement or the decision to publish it,

(b) the nature or circumstances of the publication, and

(c) the previous conduct or character of the author, editor or publisher.

(6) This section does not apply to any cause of action which arose before the section came into force.”

    1. Since the object of these provisions is inter alia to narrow the scope of a publisher’s potential liability for defamation, they would only become relevant on the hypothesis that I am wrong in my primary conclusion, in accordance with the common law principles, that Google Inc should not be held responsible as a publisher of the eight comments complained of. Ms Evans argues, on that assumption, that Google Inc would escape any such liability (including after notification) by reason of these provisions.

 

    1. Whereas Google Inc in the course of its business makes facilities available, including by way of a platform for bloggers who use Blogger.com, it cannot be said to fall within the definition of a “commercial publisher”. That is because it does not itself issue material to the public, or a section of the public. The blogger behind the “London Muslim” blog and/or those persons who comment upon its contents may very well be regarded as “issuing material to the public” (albeit quite possibly not in the course of a business). But that is, Ms Evans submits, a quite different activity from merely making the platform available. More specifically, she argues that it would be unrealistic and misleading to regard her client as issuing material containing any of the eight comments in the course of such a business.

 

    1. Ms Evans also suggests that it is implicit in the statutory notion of “issuing material to the public” in the course of a business that there is a direct relationship, of a commercial or contractual nature, between the relevant “publisher” and its readers. I would not necessarily accept that in order to qualify as such a “publisher” it would be necessary to be remunerated directly by the reader. The London Evening Standard nowadays, for example, is distributed without charge to its readers. It nonetheless represents a commercial publishing activity, even though the proprietor looks to advertisers for its revenue stream and ultimately for any profit. I am not sure, however, that this undermines Ms Evans’ argument overall, since the proprietor of the Evening Standard undoubtedly issues material to the public in the course of a business. There are obviously other publishers who operate in the same way. But that is not the case with Google Inc.

 

    1. It is relevant in the present context to consider the terms of s.1(3)(e), since it seems likely that Google Inc could be characterised as providing access to a communications system by means of which statements are transmitted by a person or persons over whom it has no effective control. That seems to me to be an accurate description of the service Google Inc provides. Ms Evans referred to a passage in Gatley on Libel and Slander (11th edn) at para 6.23, where the learned editors consider the position of a service provider who hosts a subscriber’s web page in circumstances where there is a contract containing conditions about the content of the page, which might include restrictions on the inclusions of defamatory matter. They comment:

 

“However, if this were to be held to amount to ‘effective control’ over the originator of the material that would seriously reduce the protection afforded by s.1.”

It seems to me to be likely that the draftsman had in mind, not so much the possibility of intervention and reliance on such a contractual term, but rather the situation where there was effective day-to-day control.

    1. Reference was also made to the decision of Morland J in Godfrey v Demon Internet Ltd, cited above, at pp205-207, where his Lordship was considering the application of these very provisions to the facts before him. He was there concerned with a defendant ISP which carried a newsgroup and stored postings within the hierarchy for about a fortnight, during which time the posting would be available to be read by the customers. An unknown person in the United States made a posting which was “squalid, obscene and defamatory of the plaintiff”. It followed a path from its originating American ISP to the defendant’s news-server in England. It was not disputed that it could have obliterated the posting from its news-server after receiving a request from Mr Godfrey. Having referred to the relevant passages of s.1 of the 1996 Act, Morland J concluded with these words:

 

“In my judgment the defendants were clearly not the publisher of the posting defamatory of the plaintiff within the meaning of section 1(2) and (3) and incontrovertibly can avail themselves of section 1(1)(a). However the difficulty facing the defendants is section 1(1)(b) and (c). After 17 January 1997, after receipt of the plaintiff’s fax, the defendants knew of the defamatory posting but chose not to remove it from their Usenet news servers. In my judgment this places the defendants in an insuperable difficulty so that they cannot avail themselves of the defence provided by section 1.”

    1. In this context, Ms Evans also adverted to what she considered a somewhat opaque passage in the judgment in the Designtechnica case at [80]:

 

“There is no need to address the possible defence under section 1 of the 1996 Act in the light of my finding in the Third Defendant’s favour on primary liability. If, however, it should correctly be considered as a ‘publisher’, contrary to my conclusion, it is difficult to see how it would then qualify under section 1(1)(a).”

I can understand her puzzlement. In this brief and passing comment, I was contemplating the somewhat counter-intuitive hypothesis that Google Inc should be considered as a “publisher”, contrary to my primary finding, and this led to her confusion. I was obviously finding it difficult to envisage how it could on that hypothesis, in any meaningful sense, not be “a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business”. I do not believe there is an inconsistency between my conclusion and that of Morland J in Godfrey. Unlike Morland J, I did not go on to consider s.1(1)(b) and (c). It was not relevant to do so in the context of a search engine. All I was suggesting, in the passage at [80], was that if Google Inc was to be regarded as a publisher of the search “snippets”, it was difficult to see how it would not fall within the definition of a commercial publisher. It would, on that hypothesis, not qualify for exemption under s.1(1)(a) and would be counted a “publisher”.

    1. For the sake of completeness, I will also address Ms Evans’ arguments on s.1(1)(b) and (c). First, she submits that Google Inc did take “reasonable care” in relation to Mr Tamiz’ complaint when they passed it on to the blogger in question. She argues that it was a proportionate response in view of the huge number of posts on the Blogger.com pages and the unreality of expecting Google Inc to investigate the truth of the offending allegations and the availability, or otherwise, of other defences under English law. One could certainly say that the response was somewhat dilatory, but I would not consider it, in all the circumstances of this case, to be outside the bounds of a reasonable response.

 

    1. Section 1(1)(c) contemplates a third element in the statutory defence; namely, that a defendant must demonstrate that “he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement”. The natural interpretation of the phrase “a defamatory statement”, to an English lawyer, is that the statement in question is prima facie defamatory. That is to say, it is not concerned with the assessment of the merits of any available defence, but only with the question of whether the words are defamatory on their face (or, perhaps, by way of innuendo if a proper explanation has been provided of the extraneous facts which would convey a defamatory meaning to persons with the relevant knowledge).

 

    1. In the case of Mr Tamiz, of course, there is no suggestion that any relevant knowledge on the part of Google Inc predated his notification. As a matter of fact, different complaints were raised on different dates. He complained in relation to Comment A on 29 June 2011, although this was not received by Google Inc until about 5 July. He drew Comment B to its attention on or about 8 July and Comments C to G on or about 22 July. As I have already indicated, I would only consider that Comments A, B and D are arguably defamatory. Each of these had obviously a different date of notification. In each case, however, once the complaint was notified, I think that Google Inc would have had reason to believe that the relevant comment was defamatory. That is because allegations of theft, drug dealing and hypocrisy are on their face defamatory. That is far from saying, on the other hand, that Google Inc would have known, or had reason to believe, that it had done anything to cause or contribute to the publication of any of these statements.

 

    1. Furthermore, Ms Evans argues that, in each case, the period between notification and the removal of the offending blog (on 14 August 2011) was so short as to give rise to potential liability on the part of Google Inc only for a very limited period – such that the court should regard its potential liability, if any, as being so trivial as not to justify the maintenance of these proceedings. In other words, to adopt the language of the Court of Appeal in Jameel (Yousef), “the game would not be worth the candle”. I believe she must be right about that.

 

    1. If there were any need for Google Inc to rely on s.1 of the 1996 Act, I believe it would provide a defence.

 

The alternative argument based on Reg 19 of the 2002 Regulations

    1. I turn now to Ms Evans’ third line of argument. Even assuming that there were a reasonable prospect of establishing that Google Inc should be regarded as a publisher in accordance with common law, it is submitted that this claim would be defeated in any event by reason of Regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002 (“the Regulations”). The recent decision of Davison v Habeeb provides an example where that statutory defence succeeded and I am invited to take a similar approach.

 

    1. The wording of the Regulation is as follows:

 

“Where an information society service is provided which consists of the storage of information provided by a recipient of the service, the service provider (if he otherwise would) shall not be liable for damages or for any other pecuniary remedy or for any criminal sanction as a result of that storage where –

(a) the service provider –

(i) does not have actual knowledge of unlawful activity or information and, where a claim for damages is made, is not aware of facts or circumstances from which it would have been apparent to the service provider that the activity or information was unlawful; or

(ii) upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information, and

(b) the recipient of the service was not acting under the authority or the control of the service provider.”

    1. The somewhat unfamiliar expression “information society service” is explained in Regulation 2, which refers to Recital 17 of the E Commerce Directive. Such services cover “any service normally provided for remuneration, at a distance, by means of electronic equipment for the processing (including digital compression) and storage of data, and at the individual request of a recipient of a service”. Further assistance is to be found in Article 1(2) of the European Directive 98/48/EC (the Amended Technical Standards Directive):

 

“For the purposes of this definition:

  • ‘at a distance’ means that the service is provided without the parties being simultaneously present,
  • ‘by electronic means’ means that the service is sent initially and received at its destination by means of electronic equipment for the processing (including digital compression) and storage of data, and entirely transmitted, conveyed and received by wire, by radio, by optical means or by other electro-magnetic means,
  • ‘at the individual request of a recipient of services’ means that the service is provided through the transmission of data on individual request.”
    1. In the Regulations the term “recipient of the service” is defined by Regulation 2 as being “any person who, for professional ends or otherwise, uses an information society service, in particular for the purposes of seeking information or making it accessible”. It is thus clear, according to the evidence, that Google Inc is the provider of Blogger.com which is an information society service; correspondingly, the “London Muslim” blogger is a “recipient” of the service, which he uses for the purpose of making information accessible.

 

    1. Thus, Ms Evans submits that Mr Tamiz will only have a viable claim against Google Inc if he has a reasonable prospect of establishing at trial that it had, at the time the proceedings were commenced, “actual knowledge of unlawful information” or was “aware of facts and circumstances from which it would have been apparent to the service provider that the information was unlawful”.

 

    1. It is clearly important to focus on the meaning of the word “unlawful” in this context. As I have already noted, under the common law, it is generally reckoned that the publication of a “defamatory” allegation is not necessarily unlawful. While it may bear a prima facie defamatory meaning on its face, such a publication may ultimately prove not to be unlawful if some recognised defence is available. The point was addressed in Bunt v Tilley, at [72], where it was observed that “in order to be able to characterise something as ‘unlawful’ a person would need to know something of the strength or weaknesses of the available defences”. I was invited to consider also the terms of paragraph 16.75 of Dr Matthew Collins’ work The Law of Defamation and the Internet (3rd edn):

 

“Suppose, for example, that a host knows that its server contains information imputing that an individual is guilty of a serious crime, but knows no facts or circumstances bearing one way or the other on the truth or falsity of that imputation. In those circumstances, it seems likely that the host would be entitled to rely on the Regulation 19 defence. The host does not have actual knowledge that the information on its server is unlawful, and is not aware of factual circumstances from which it is or would have been apparent that that information is unlawful.”

A similar approach was adopted in Kaschke v Gray [2011] 1 WLR 452, at [100], by Stadlen J and in Davison v Habeeb, at [64], by Judge Parkes QC. As was recognised, in each of the passages cited, the intention underlying Regulation 19 is to afford a powerful and clear defence to a provider unless the relevant state of knowledge can be established.

    1. It is important now to take account of the recent decision of the Grand Chamber in Luxembourg in L’Oréal SA and ors v eBay International AG and ors, 12 July 2011. That was concerned with interpreting Article 14 of the E Commerce Directive upon which Regulation 19 itself is based. Ms Evans invited my attention especially to paragraphs [120]-[122]:

 

“120. As the case in the main proceedings may result in an order to pay damages, it is for the referring court to consider whether eBay has, in relation to the offers for sale at issue and to the extent that the latter have infringed L’Oréal’s trademarks, been ‘aware of facts or circumstances from which the illegal activity or information is apparent’. In the last-mentioned respect, it is sufficient, in order for the provider of an information society service to be denied entitlement to the exemption from liability provided for in Article 14 of Directive 2000/31, for it to have been aware of facts or circumstances on the basis of which a diligent economic operator should have identified the illegality in question and acted in accordance with Article 14(1)(b) of Directive 2000/31.

121. Moreover, if the rules set out Article 14(1)(a) of Directive 2000/31 are not to be rendered redundant, they must be interpreted as covering every situation in which the provider concerned becomes aware, in one way or another, of such facts or circumstances.

122. The situations thus covered include, in particular, that in which the operator of an online marketplace uncovers, as the result of an investigation undertaken on its own initiative, an illegal activity or illegal information, as well as a situation in which the operator is notified of the existence of such an activity or such information. In the second case, although such a notification admittedly cannot automatically preclude the exemption from liability provided for in Article 14 of Directive 2000/31, given that notifications of allegedly illegal activities or information may turn out to be insufficiently precise or inadequately substantiated, the fact remains that such notification represents, as a general rule, a factor of which the national court must take account when determining, in the light of the information so transmitted to the operator, whether the latter was actually aware of facts or circumstances on the basis of which a diligent economic operator should have identified the illegality.”

    1. Ms Evans highlights particularly the words “insufficiently precise or inadequately substantiated”, set out in paragraph 122, as being consistent with the approach taken in the English cases to which I have referred. Accordingly, she submits, a provider who simply receives notification that particular words are alleged to be defamatory will not have received notification of illegality in terms that are adequately substantiated. Such a provider would not have actual knowledge of illegality; nor an awareness of facts or circumstances from which it would have been apparent that the information was unlawful. In order to achieve that state of mind, it would be necessary to examine and consider, on an informed basis, the validity or strength of any available defences (including, for example, those of justification, fair comment and qualified privilege in one or other of its recognised forms).

 

    1. For good measure, Ms Evans also referred to Regulation 22, which is concerned with the notice by which actual knowledge is said to be imputed:

 

“In determining whether a service provider has actual knowledge for the purposes of regulations 18(b)(v) and 19(a)(i), a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, among other things, shall gave regard to –

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c), and

(b) the extent to which any notice includes –

(i) the full name and address of the sender of the notice;

(ii) details of the location of the information in question; and

(iii) details of the unlawful nature of the activity or information in question.”

In this particular case Ms Evans highlights the absence of any “details of the unlawful nature of the activity or information in question”; in other words, no explanation is offered as to the extent of inaccuracy or the inadequacy of any defence. It may be thought by Mr Tamiz to be implicit in his complaints that he was denying, outright, any allegation of theft or drug dealing, but it cannot be right that any provider is required, in the light of the strict terms of Regulation 19, to take all such protestations at face value. Clearly more is required for a provider to acquire a sufficient state of knowledge to be deprived of the statutory protection.

    1. I would conclude, therefore, that if I am incorrect, or unduly precipitate, in reaching my earlier conclusion that Google Inc should not be regarded as a publisher of the offending words at all, in accordance with common law principles, I would hold in any event that it would be exempted from liability in accordance with Regulation 19.

 

The outcome of the application

    1. For these reasons it seems to be appropriate, in accordance with Ms Evans’ submissions, that the court should decline jurisdiction in these proceedings. Accordingly, the Master’s order for service out of the jurisdiction will be set aside.

 

 

 


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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Tamiz v Google Inc [2013] EWCA Civ 68 (14 February 2013)
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Cite as: [2013] EWCA Civ 68


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Neutral Citation Number: [2013] EWCA Civ 68
Case No: A2/2012/0691

IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
QUEEN’S BENCH DIVISION
Mr Justice Eady
[2012] EWHC 449 (QB)

Royal Courts of Justice
Strand, London, WC2A 2LL
14/02/2013

B e f o r e :THE MASTER OF THE ROLLS
LORD JUSTICE RICHARDS
and
LORD JUSTICE SULLIVAN

____________________

Between:

Payam Tamiz
Appellant
– and –
 
Google Inc
Respondent

____________________

Godwin Busuttil (instructed by Brett Wilson LLP) for the Appellant
Antony White QC and Catrin Evans (instructed by Reynolds Porter Chamberlain LLP) for the Respondent
Hearing dates : 3-4 December 2012 

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

Lord Justice Richards :

    1. The respondent, Google Inc, is a corporation registered in Delaware and with its principal place of business in California. It provides a range of internet services including Blogger (also referred to as Blogger.com), a service based and managed in the USA but available worldwide. Blogger is a platform that allows any internet user in any part of the world to create an independent blog (web log). The service includes design tools to help users create layouts for their blogs and, if they do not have their own URL (web address), enables them to host their blogs on Blogger URLs. The service itself is free of charge but bloggers can sign up to a linked Google service that enables them to display advertisements on their blogs, the revenues from which are shared between the blogger and Google Inc.
    1. One of the blogs hosted on Blogger bears the name “London Muslim”. The appellant, Mr Tamiz, complains that eight specific comments posted on the London Muslim blog between 28 and 30 April 2011 were defamatory of him. There is an issue, considered below, as to when any complaint was first notified by him to Google Inc. It is common ground, however, that his letter of claim was received by Google Inc in early July 2011; that on 11 August 2011, after further email exchanges, the letter was forwarded to the blogger; and that on 14 August 2011 the blogger voluntarily removed all the comments about which complaint is made.
    1. The appellant seeks to bring a claim in libel against Google Inc in respect of the publication of the allegedly defamatory comments during the period prior to their removal. He was granted permission by Master Eyre to serve the claim form on Google Inc in California. On Google Inc’s subsequent application, however, Eady J held that the court should decline jurisdiction and that the Master’s order for service out of the jurisdiction should therefore be set aside. The judge’s order to that effect is the subject of the present appeal. The judge also held that Google UK Ltd had been joined in the proceedings inappropriately and that there was no triable claim against it. There is no appeal against that aspect of his decision.
    1. In summary, Eady J found that three of the comments were arguably defamatory but that on common law principles Google Inc was not a publisher of the words complained of, whether before it was notified of the complaint or after such notification. If, contrary to that view, Google Inc was to be regarded as a publisher at common law, section 1 of the Defamation Act 1996 (“the 1996 Act”) would provide it with a defence, in particular because it took reasonable care in passing the complaint on to the blogger after it had been notified of it. At this point of his judgment Eady J also indicated his acceptance of a submission that the period between notification and removal of the offending blog was so short as to give rise to potential liability on the part of Google Inc only for a very limited period, such that the court should regard its potential liability as so trivial as not to justify the maintenance of the proceedings, in accordance with the principles in Jameel (Yousef) v Dow Jones & Co Inc [2005] QB 946. Nevertheless he went on to consider an alternative defence under regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002 (“the 2002 Regulations”), which he held would provide Google Inc with a defence if it were otherwise needed.
    1. The main issues in the appeal, taking them in the order in which they were considered by the judge below, are (1) whether there is an arguable case that Google Inc was a publisher of the comments, (2) whether, if it was a publisher, it would have an unassailable defence under section 1 of the 1996 Act, (3) whether any potential liability was so trivial as not to justify the maintenance of the proceedings, and (4) whether Google Inc would have a defence, if otherwise necessary, under regulation 19 of the 2002 Regulations.
    1. Before considering those issues it is necessary to say a little more about various background matters.

The comments themselves

    1. An article in the Evening Standard on 27 April 2011 contained an allegation that the appellant had resigned as a Conservative Party candidate for local elections in Thanet after it had been discovered that his Facebook site referred to women as “sluts”. The appellant sued separately in respect of that article and the proceedings were settled by a consent order. The topic was picked up in an article posted on the London Muslim blog on 27 April. This gave rise to a number of comments posted anonymously over the next three days. The comments complained of are set out in Eady J’s judgment at [7]. The judge held that five of the comments could be characterised in this context as “mere vulgar abuse” to which no sensible person would attach much, if any, weight (see Smith v ADVFN Plc [2008] EWHC 1797 (QB) at [13]-[17], and Clift v Clarke [2011] EWHC 1164 (QB) at [32] and [36]). He found, however, that three of the comments (Comments A, B and D) were arguably defamatory. They included allegations that the appellant was a drug dealer, had stolen from his employers and was hypocritical in his attitude towards women.
    1. The arguments on the appeal included a brief submission that the judge ought also to have found other comments to be arguably defamatory: in particular, Comment E which contained a suggestion that the appellant had made a fake asylum claim. But the judge directed himself correctly and I see no sufficient basis for interfering with the assessment he made on this issue.

Notification of the complaint

    1. On the evidence before him, the judge dealt with the factual issue of notification as follows:

“15. According to Mr Tamiz, he first notified his complaint on 28 or 29 April 2011 (i.e. as the postings were taking place) when he used the “Report Abuse” function on the relevant web page. What became of this remains unclear.

16. A letter of claim was sent on 29 June to Google UK Ltd, which was received on 5 July. This complained of the original article, as being defamatory and untrue, although it was not subsequently sued upon in these proceedings. Complaint was also made of what is now described as Comment A. This letter was passed by Google UK Ltd to Google Inc, which responded to Mr Tamiz by email on 8 July. Clarification was sought as to whether the comment in question was said to be untrue, since his letter had not apparently made that clear. It was at this stage that it was pointed out to Mr Tamiz that the blogger service had nothing to do with Google UK Ltd.

17. Mr Tamiz responded promptly on 8 July to the effect that Comment A was indeed “false and defamatory”. At this stage, he introduced a complaint about Comment B as well.

18. The ‘Blogger Team’ within Google Inc sent a further email to Mr Tamiz on 19 July, seeking his permission to forward his complaint to the author of the blog page. He was told, however, that Google Inc itself would not be removing the post complained of. Mr Tamiz responded by giving the necessary permission on 22 July.

19. In that email of 22 July, Mr Tamiz complained about a further five comments on the blog, now identified as Comments C, D, E, F and G. He confirmed that these were alleged to be defamatory and it seemed to be implicit also that he was characterising them as untrue.

20. After considerable delay, Google Inc forwarded the letter of claim to the blogger on 11 August of last year and informed Mr Tamiz that it had done so. As I have said, on 14 August the article and all the comments were removed by the blogger himself. Mr Tamiz was accordingly notified by Google Inc the following day ….”

    1. In his particulars of claim the appellant alleged that between 29 April and the letter of claim he made various telephone calls to Google UK Ltd and sent two letters, dated 29 April and 23 May, to that company’s offices. Those allegations were not admitted by the defendants and were not supported by evidence at the hearing before Eady J. The defendants also contended that communications to Google UK Ltd were not capable of constituting notification to Google Inc. The transcript of the hearing makes it tolerably clear that the appellant was content in the event to proceed on the basis that the date of notification of the complaint to Google Inc was the date when the letter of claim was forwarded to Google Inc by Google UK Ltd, which fell between 5 July (when Google UK Ltd received the letter) and 8 July (when Google Inc first contacted the appellant by email). All this fits with the way the judge dealt with the matter in the passage quoted above.
    1. The appellant has applied to adduce fresh evidence on the appeal, in the form of a witness statement in which he gives detailed further information about the Blogger service and about his dealings with Google UK Ltd and Google Inc, exhibiting inter alia copies of the two letters allegedly sent by him to Google UK Ltd. If that evidence is admitted, Google Inc applies to adduce fresh evidence in response, by way of a witness statement asserting that Google UK Ltd has no record of receiving any telephone calls or letters from the appellant prior to the letter of claim, and giving an update on the procedure for complaints about postings on Blogger.
    1. Ladd v Marshall [1954] 1 WLR 1489 remains central to the exercise of the court’s discretion as to the receipt of fresh evidence under CPR 52.11(2) (see the discussion at para 52.11.2 of Civil Procedure 2012). The first condition in Ladd v Marshall is plainly not met in this case: the evidence the appellant now seeks to adduce could have been obtained with reasonable diligence for use at the hearing below. Indeed, in practice the issue to which the evidence relates fell away at that hearing, since the appellant was content to proceed on the narrower basis that the letter of claim constituted notification of his complaint. I bear in mind that at that stage of the proceedings he was representing himself but I attach relatively little weight to that consideration because he is a law graduate and, as appears from the transcript of the hearing, is intelligent and articulate. Taking everything into account, I do not consider that the case for admission of the fresh evidence has been made out. The issues in the appeal ought in my view to be determined on the factual basis on which the judge proceeded.

Google Inc’s policy

    1. Google Inc’s policy towards the content of blogs hosted by Blogger at the material time is set out in a witness statement of Mr Jaron Lewis, a solicitor with conduct of the company’s case:

“9. Blogger.com is not involved with the creation of content that people post on their blogs. It does not create, select, solicit, vet or approve that content, which is published and controlled by the blog owners ….

10. Blogger.com does operate a ‘Content Policy’ which sets out restrictions on what users can do using the service …. This makes clear that content such as child pornography, or promoting race hatred, is prohibited. The policy is explained in the following terms:

‘Blogger is a free service for communication, self-expression and freedom of speech. We believe that Blogger increases the availability of information, encourages healthy debate and makes possible new connections between people.

We respect our users’ ownership of and responsibility for the content they choose to share. It is our belief that censoring this content is contrary to a service that bases itself on freedom of expression.

In order to uphold these values, we need to curb abuses that threaten our ability to provide this service and the freedom of expression it encourages. As a result, there are some boundaries on the type of content that can be hosted with Blogger. The boundaries we have defined are those that both comply with legal requirements and that serve to enhance the service as a whole.’

11. [Google Inc] also operates a ‘Report Abuse’ feature …. There are eight grounds for reporting abuse, and users have to select one of these. The eight listed are …

  • Defamation/Libel/Slander

12. If the user selects ‘Defamation/Libel/Slander’, which is what appears to have happened in this case …, a second screen is displayed.

13. The second screen makes clear that the Blogger.com service is operated in accordance with US law, and that defamatory material will only be taken down if it has been found to be libellous (i.e. unlawful) by a court. The reason for this policy is that under US law, [Google Inc] is not a publisher of third party content hosted on blogspot.com. US law works on the basis that claimants must raise their defamation issues directly with the author of the material, not third party service providers such as Blogger.com.

14. Given the volume of content uploaded by users of the Blogger service, it is usually not practicable for [Google Inc] to remove content without first receiving the Court’s determination that the content is, in fact, libellous. Google is not in a position to adjudicate such disputes itself.”

    1. In this case Google Inc appears to have gone slightly further than the stated policy, in that the email of 11 August 2011 by which it passed on to the blogger the details of the appellant’s complaint contained an actual request to “please remove the allegedly defamatory content in your blog within three (3) days of today’s date”. The blogger complied with that request.

Whether Google Inc was a publisher of the comments

    1. The appellant’s pleaded case relates to the period after Google Inc had been notified of his complaint. As Eady J observed, it is therefore only necessary to assess potential legal liability from the point of notification. Nevertheless the judge’s reasons and the arguments in this court extended to the position before as well as after notification.
    1. At [35]-[38] of his judgment, the judge noted inter alia that it was virtually impossible for Google Inc to exercise editorial control over the content of the blogs it hosts, which in the aggregate contain more than half a trillion words, with 250,000 new words added every minute. He referred to the submission that it would be unrealistic to attribute responsibility for publication of material on any particular blog to Google Inc, whether before or after notification of a complaint. He also referred to the importance of striving to achieve consistency in decisions in the face of rapidly developing technology, and to paying proper regard to the values enshrined in the ECHR. He said that the fact that an entity in Google Inc’s position had been notified of a complaint did not immediately convert its status or role into that of a publisher. If Google Inc’s status before notification of a complaint was that of a provider or a facilitator, it was not easy to see why that role should be expanded thereafter into that of a person who authorised or acquiesced in publication. Google Inc claimed to remain as neutral in the process after notification as it was before. It might be true that it had the technical capability of taking down blogs or comments on its platform, yet that was not by any means the same as saying that it had become an author or authoriser of the publication:

“It is no doubt often true that the owner of a wall which has been festooned, overnight, with defamatory graffiti could acquire scaffolding and have it all deleted with whitewash. That is not necessarily to say, however, that the unfortunate owner must, unless and until this has been accomplished, be classified as a publisher.”

    1. The judge went on at [39] to attach significance to the evidence that Google Inc was not required to take any positive step, technically, in the process of continuing the accessibility of the offending material: he said that its role as a platform provider was “a purely passive one”. The situation was thus in his view closely analogous to that described in Bunt v Tilley [2007] 1 WLR 1243, and in striving to achieve consistency in the court’s decision-making he would rule that Google Inc was not liable at common law as a publisher.
    1. Bunt v Tilley concerned internet service providers (ISPs) who were not alleged to have hosted any website relevant to the claims. The issue was whether they could be liable simply in respect of defamatory material communicated via the services they provided. Eady J was again the judge. In a central passage of his judgment he said this:

“21. In determining responsibility for publication in the context of the law of defamation, it seems to me to be important to focus on what the person did, or failed to do, in the chain of communication. It is clear that the state of a defendant’s knowledge can be an important factor. If a person knowingly permits another to communicate information which is defamatory, when there would be an opportunity to prevent the publication, there would seem to be no reason in principle why liability should not accrue. So too, if the true position were that the applicants had been (in the claimant’s words) responsible for ‘corporate sponsorship and approval of their illegal activities’.

22. I have little doubt, however, that to impose legal responsibility upon anyone under the common law for the publication of words it is essential to demonstrate a degree of awareness or at least an assumption of general responsibility, such as has long been recognised in the context of editorial responsibility. As Lord Morris commented inMcLeod v St Aubyn [1899] AC 549, 562: ‘A printer and publisher intends to publish, and so intending cannot plead as a justification that he did not know the contents. The appellant in this case never intended to publish.’ In that case the relevant publication consisted in handing over an unread copy of a newspaper for return the following day. It was held that there was no sufficient degree of awareness or intention to impose legal responsibility for that ‘publication’.

23. Of course, to be liable for a defamatory publication it is not always necessary to be aware of the defamatory content, still less of its legal significance. Editors and publishers are often fixed with responsibility notwithstanding such lack of knowledge. On the other hand, for a person to be held responsible there must be knowing involvement in the process of publication of the relevant words [emphasis in the original]. It is not enough that a person merely plays a passive instrumental role in the process. (See also in this context Emmens v Pottle (1885) 16 QBD 354, 357, per Lord Esher MR.)”

    1. At [36] he held that an ISP which performs no more than a passive role in facilitating postings on the internet cannot be deemed to be a publisher at common law. A telephone company or other passive medium of communication, such as an ISP, is not analogous to someone in the position of a distributor, who might at common law be treated as having published so as to need a defence.
    1. In Metropolitan International Schools Ltd v Designtechnica Corpn [2011] 1 WLR 1743 Eady J applied a similar analysis in relation to defamatory comments which, having been posted on a website, appeared as a “snippet” of information when an internet search was carried out under the claimant’s name on Google Inc’s search engine. The judge said that for a person to be fixed at common law with responsibility for publishing defamatory words, there needed to be a mental element, as summarised in Bunt v Tilley. He held that the search in issue was performed automatically and involved no input from Google Inc, which had not authorised or caused the snippet to appear on the user’s screen in any meaningful sense but had merely by the provision of its search service played the role of a facilitator. As to the position once Google Inc had been informed of the defamatory content of the snippet, the judge said that a person can be liable for the publication of libel by acquiescence, that is to say by permitting publication to continue when he or she has the power to prevent it. He drew a distinction between a search engine and someone hosting a website, pointing to the greater difficulty of ensuring that offending words do not appear on a search snippet. Google Inc’s “take-down” procedure might not have operated as rapidly as the claimant would wish, but it did not follow as a matter of law that between notification and take-down Google Inc became liable as a publisher of the offending material. While efforts were being made to achieve a take-down in relation to a particular URL it was hardly possible to fix Google Inc with liability on the basis of authorisation, approval or acquiescence. On the facts of the case, he believed it unrealistic to attribute responsibility for publication to Google Inc.
    1. At the forefront of the appellant’s submissions to this court was an elaborate attack on Bunt v Tilley as applied in Metropolitan International Schools Ltd and the present case. Mr Busuttil submitted that the reasoning in Bunt v Tilley erroneously conflated a number of different threads of law. What Eady J said about the need for “knowing involvement in the process of publication of the relevant words” is at odds with the principle of strict liability for publication, irrespective of knowledge of the defamatory words. Further, in certain circumstances a person may be or become involved in publishing defamatory material by omission, by failing or forbearing to take a step that ought to have been taken, or by remaining passive. The judge’s reasoning does not accurately reflect the distinction between a primary publisher and a secondary publisher (for whom alone the common law defence of innocent dissemination is available). Nor does the reasoning take proper account of the principles of vicarious liability or agency as they apply to render corporations liable for the publication of defamatory material by employees or agents. Mr Busuttil drew our attention to numerous domestic and Commonwealth authorities, submitting in particular that the courts in Australia have not accepted the Bunt v Tilley analysis (see e.g. Trkulja v Google Inc (No.5) [2012] VSC 533, a decision of the Supreme Court of Victoria), although the analysis has been followed by the Canadian Supreme Court (see Crookes v Newton [2011] 3 SCR 269).
    1. Mr Busuttil submitted that Google Inc is a corporation in the business of publishing, acting not just through its employees but also through the myriad of bloggers and all those who post comments on the blogs. It has control over the blogger, who in turn has control over the comments posted on the blog. Google Inc is therefore to be regarded as a primary publisher, potentially liable for defamatory material on the blogs, irrespective of knowledge or fault and irrespective of whether it has been notified of any complaint, subject however to any statutory defences. Alternatively it is a secondary publisher, facilitating publication in a manner analogous to a distributor, subject to the common law defence of innocent dissemination as well as to statutory defences, though it will be difficult to establish the defence of innocent dissemination if it has the power to prevent continuing publication and chooses not to exercise that power.
    1. I do not find it necessary to address the full detail of Mr Busuttil’s criticisms of Bunt v Tilley. I am not persuaded that Eady J fell into any fundamental error of analysis or reached the wrong conclusion in relation to the kind of internet service under consideration in that case. For the reasons set out below, however, I respectfully differ from Eady J’s view that the present case is so closely analogous to Bunt v Tilley as to call for the same conclusion. In my view the judge was wrong to regard Google Inc’s role in respect of Blogger blogs as a purely passive one and to attach the significance he did to the absence of any positive steps by Google Inc in relation to continued publication of the comments in issue.
    1. By the Blogger service Google Inc provides a platform for blogs, together with design tools and, if required, a URL; it also provides a related service to enable the display of remunerative advertisements on a blog. It makes the Blogger service available on terms of its own choice and it can readily remove or block access to any blog that does not comply with those terms (a point of distinction with the search engine under consideration in Metropolitan International Schools Ltd, as the judge himself noted in that case). As a matter of corporate policy and no doubt also for reasons of practicality, it does not seek to exercise prior control over the content of blogs or comments posted on them, but it defines the limits of permitted content and it has the power and capability to remove or block access to offending material to which its attention is drawn.
    1. By the provision of that service Google Inc plainly facilitates publication of the blogs (including the comments posted on them). Its involvement is not such, however, as to make it a primary publisher of the blogs. It does not create the blogs or have any prior knowledge of, or effective control over, their content. It is not in a position comparable to that of the author or editor of a defamatory article. Nor is it in a position comparable to that of the corporate proprietor of a newspaper in which a defamatory article is printed. Such a corporation may be liable as a primary publisher by reason of the involvement of its employees or agents in the publication. But there is no relationship of employment or agency between Google Inc and the bloggers or those posting comments on the blogs: such people are plainly independent of Google Inc and do not act in any sense on its behalf or in its name. The appellant’s reliance on principles of vicarious liability or agency in this context is misplaced.
    1. I am also very doubtful about the argument that Google Inc’s role is that of a secondary publisher, facilitating publication in a manner analogous to a distributor. In any event it seems to me that such an argument can get nowhere in relation to the period prior to notification of the complaint. There is a long established line of authority that a person involved only in dissemination is not to be treated as a publisher unless he knew or ought by the exercise of reasonable care to have known that the publication was likely to be defamatory: Emmens v Pottle (1885) 16 QBD 354, 357-358; Vizetelly v Mudie’s Select Library Ltd [1900] 2 QB 170, 177-180; Bottomley v FW Woolworth and Co Ltd (1932) 48 TLR 521. There are differences in the reasoning in support of that conclusion but the conclusion itself is clear enough. The principle operated in Bottomley to absolve Woolworth from liability for publication of a defamatory article in a consignment of remaindered American magazines that it distributed: the company did not check every magazine for defamatory content, there was nothing in the nature of the individual magazine which should have led it to suppose that the magazine contained a libel, and it had not been negligent in failing to carry out a periodical examination of specimen magazines. Since it cannot be said that Google Inc either knew or ought reasonably to have known of the defamatory comments prior to notification of the appellant’s complaint, that line of authority tells against viewing Google Inc as a secondary publisher prior to such notification. Moreover, even if it were to be so regarded, it would have an unassailable defence during that period under section 1 of the 1996 Act, considered below.
    1. In relation to the position after notification of the complaint, however, additional considerations arise, and it is in relation to this period that I take a different view from that of Eady J on the issue of publication. I am led to do so primarily by the decision of the Court of Appeal in Byrne v Deane [1937] 1 KB 818. That case concerned an allegedly defamatory verse which someone had posted on the wall of a golf club and which was then allowed to remain there for some days. The defendants, who had not been involved in the initial publication, were the proprietors of the golf club, and one of them was also the club secretary. One of the rules of the club provided that “no notice or placard shall be posted in the club premises without the consent of the secretary”. The court held by a majority that the words of the verse were not capable of a defamatory meaning, but all three members of the court agreed that there was evidence of publication by one or both of the defendants. Greer LJ expressed the point in this way (at page 830):

“In my judgment the two proprietors of this establishment by allowing the defamatory statement, if it be defamatory, to rest upon their wall and not to remove it, with the knowledge that they must have had that by not removing it it would be read by people to whom it would convey such meaning as it had, were taking part in the publication of it.”

    1. Slesser LJ considered there to be evidence of publication by the secretary but not by the other defendant. In relation to the secretary he said this (at pages 834-835):

“There are cases which go to show that persons who themselves take no overt part in the publication of defamatory matter may nevertheless so adopt and promote the reading of the defamatory matter as to constitute themselves liable for the publication ….

… She said ‘I read it. It seemed to me somebody was rather annoyed with somebody.’ I think having read it, and having dominion over the walls of the club as far as the posting of notices was concerned, it could properly be said that there was some evidence that she did promote and associate herself with the continuance of the publication.”

    1. Greene LJ agreed with Greer LJ that there was evidence of publication by both defendants. His reasons included the following (at pages 837-838):

“It is said that as a general proposition where the act of the person alleged to have published a libel has not been any positive act, but has merely been the refraining from doing some act, he cannot be guilty of publication. I am quite unable to accept any such general proposition. It may very well be that in some circumstances a person, by refraining from removing or obliterating the defamatory matter, is not committing any publication at all. In other circumstances he may be doing so. The test it appears to me is this: having regard to all the facts of the case is the proper inference that by not removing the defamatory matter the defendant really made himself responsible for its continued presence in the place where it had been put?”

    1. Byrne v Deane was considered in Godfrey v Demon Internet Ltd [2001] QB 201, in which the defendant ISP received and stored on its news server a defamatory article which had been posted by an unknown person using another ISP. The plaintiff notified the defendant of the article and asked it to remove the article, but the defendant failed to do so and the posting remained on the news server for ten days until it expired automatically. The plaintiff claimed against the defendant in respect of that period of ten days. Morland J held that the defendant was liable. Whilst he cited the passage from Greene LJ’s judgment in Byrne v Deane quoted above, he rested his decision on the broader ground that whenever there was a transmission of a defamatory posting from the storage of the defendant’s news server, the defendant was a publisher of that posting but had a defence under section 1 of the 1996 Act until it lost that defence as a result of the plaintiff’s notification.
    1. More directly in point is Davison v Habeeb and Others [2011] EWHC 3031 (QB), which concerned defamatory material posted on a blog hosted by Google Inc itself. HHJ Parkes QC, sitting as a deputy judge of the High Court, considered it arguable that Google Inc was a publisher from the outset, subject to the defence under section 1 of the 1996 Act, but he also relied on Byrne v Deane as an alternative strand in the reasoning that led him to conclude that there was an arguable case against Google Inc:

“38. … The analogy between the ISPs which Eady J was considering in Bunt v Tilley … and the postal service was an apt one, because the ISPs in that case, like the postal or indeed the telephone services, were simply conduits, or facilitators, enabling messages to be carried from one person, or one computer, to another. Blogger.com, by contrast, is not simply a facilitator, or at least not in the same way as the ISPs. It might be seen as analogous to a gigantic noticeboard which is in [Google Inc’s] control, in the sense that [Google Inc] provides the noticeboard for users to post their notices on, and it can take the notices down (like the club secretary in Byrne v Deane …) if they are pointed out to it. However, pending notification it cannot possibly have the slightest familiarity with the notices posted, because the noticeboard contains such a vast and constantly growing volume of material. On that analogy, it ought not to be viewed as a publisher until (at the earliest) it has been notified that it is carrying defamatory material so that, by not taking it down, it can fairly be taken to have consented to and participated in publication by the primary publisher. The alternative is to say that, like Demon Internet in Godfrey v Demon Internet Ltd…, it chose to host material which turned out to be defamatory, and which it was open to anyone to download, so that at common law it was prima facie liable for publication of the material, subject to proof that it lacked the necessary mental state.

42. … In my view it must be at least arguable that [Google Inc] should properly be seen as a publisher responding to requests for downloads like Demon Internet, rather than a mere facilitator, playing a passive instrumental role.

47. Even if [Google Inc] should properly be seen as a facilitator, the mere provider of a gigantic noticeboard on which others published defamatory material, in my judgment it must also at least be arguable that at some point after notification [Google Inc] became liable for continued publication of the material complained of on the Byrne v Deaneprinciple of consent or acquiescence.”

    1. The principles in Byrne v Deane have also been applied in the context of website or search engine content in a number of Commonwealth cases to which Mr Busuttil drew our attention: see, in particular, Sadiq v Baycorp (NZ) Limited [2008] NZHC 403 and A v Google New Zealand Ltd [2012] NZHC 2352.
    1. In the present case, Eady J referred at [32]-[33] to Godfrey v Demon Internet Ltd and to Davison v Habeeb, observing that the position may well be fact sensitive: liability may turn upon the extent to which the relevant ISP has knowledge of the words complained of, and of their illegality or potential illegality, and/or on the extent to which it has control over publication. In relation to Blogger he said nothing about HHJ Parkes QC’s analogy with the provision of a gigantic notice board on which others post comments. Instead, he drew an analogy with ownership of a wall on which various people choose to inscribe graffiti, for which the owner is not responsible (see [16] above). I have to say that I find the notice board analogy far more apposite and useful than the graffiti analogy. The provision of a platform for the blogs is equivalent to the provision of a notice board; and Google Inc goes further than this by providing tools to help a blogger design the layout of his part of the notice board and by providing a service that enables a blogger to display advertisements alongside the notices on his part of the notice board. Most importantly, it makes the notice board available to bloggers on terms of its own choice and it can readily remove or block access to any notice that does not comply with those terms.
    1. Those features bring the case in my view within the scope of the reasoning in Byrne v Deane. Thus, if Google Inc allows defamatory material to remain on a Blogger blog after it has been notified of the presence of that material, it might be inferred to have associated itself with, or to have made itself responsible for, the continued presence of that material on the blog and thereby to have become a publisher of the material. Mr White QC submitted that the vast difference in scale between the Blogger set-up and the small club-room in Byrne v Deanemakes such an inference unrealistic and that nobody would view a comment on a blog as something with which Google Inc had associated itself or for which it had made itself responsible by taking no action to remove it after notification of a complaint. Those are certainly matters for argument but they are not decisive in Google Inc’s favour at this stage of proceedings, where we are concerned only with whether the appellant has an arguable case against it as a publisher of the comments in issue.
    1. I do not consider that such an inference could properly be drawn until Google Inc had had a reasonable time within which to act to remove the defamatory comments. It will be recalled that on the judge’s findings the letter of claim containing the complaint about Comment A was received on or about 5 July 2011 (and certainly by 8 July), the complaint about Comment B was introduced in the appellant’s response to Google Inc on 8 July, and the complaint about Comment D was introduced on 22 July. The letter of claim was forwarded to the blogger on 11 August and the material was all removed on 14 August. That means that in relation to Comments A and B, in particular, a period of over five weeks elapsed between notification and removal. In the context of the defence under section 1 of the 1996 Act, considered below, Eady J described Google Inc’s response as somewhat dilatory but not outside the bounds of a reasonable response. Whilst I accept the judge’s assessment in the context of the statutory defence, it is in my view open to argument that the time taken was sufficiently long to leave room for an inference adverse to Google Inc on Byrne v Deane principles.
    1. The period during which Google Inc might fall to be treated on that basis as a publisher of the defamatory comments would be a very short one, but it means that the claim cannot in my view be dismissed on the ground that Google Inc was clearly not a publisher of the comments at all.

The defence under section 1 of the 1996 Act

    1. I therefore turn to consider the defence under section 1 of the 1996 Act. That section provides:

“(1) In defamation proceedings a person has a defence if he shows that –

(a) he was not the author, editor or publisher of the statement complained of,

(b) he took reasonable care in relation to its publication, and

(c) he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.

(2) For this purpose ‘author’, ‘editor’ and ‘publisher’ have the following meanings, which are further explained in subsection (3) –

‘author’ means the originator of the statement, but does not include a person who did not intend that his statement be published at all;

‘editor’ means a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and

‘publisher’ means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business.

(3) A person shall not be considered the author, editor or publisher of a statement if he is only involved –

(a) in printing, producing, distributing or selling printed material containing the statement;

(b) in processing, making copies of, distributing, exhibiting or selling a film or sound recording (as defined in Part I of the Copyright, Designs and Patents Act 1988) containing the statement;

(c) in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form;

(d) as the broadcaster of a live programme containing the statement in circumstances in which he has no effective control over the maker of the statement;

(e) as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.

In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement.

(4) Employees or agents of an author, editor or publisher are in the same position as the employer or principal to the extent that they are responsible for the content of the statement or the decision to publish it.

(5) In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to –

(a) the extent of his responsibility for the content of the statement or the decision to publish it,

(b) the nature or circumstances of the publication, and

(c) the previous conduct or character of the author, editor or publisher.”

    1. It will be seen that the conditions in subsection (1) are cumulative. Eady J held at [42]-[51] that all three conditions were satisfied in this case.
    1. As to subsection (1)(a), he held that Google Inc was not a “publisher” for these purposes even if, contrary to his primary conclusion, it was to be treated at common law as having been a publisher of the defamatory comments. It did not come within the definition of “commercial publisher” within subsection (2) since in operating the Blogger service it did not itself issue material to the public or a section of the public and, specifically, it did not issue material containing the statements complained of. Eady J also drew support from subsection (3)(e), taking the view that Google Inc could accurately be characterised as providing access to a communications system by means of which the statements were transmitted or made available by a person over whom it had no effective control: by “effective control” it was likely that the draftsman had in mind effective day-to-day control rather than the possibility of intervention in reliance on a contractual term about the permitted content of a web page.
    1. I see no reason to disagree with the judge’s conclusion on that point. In particular, I do not think that Google Inc can sensibly be said to have “issued” the defamatory comments even if it was involved in their publication in a way capable of attracting liability at common law. Its involvement was of a kind analogous to, if not identical to, that described in subsection (3)(e). I share the judge’s view that the existence of a contractual term about the content of blogs is not sufficient to give it “effective control” over the person who posted the defamatory comments.
    1. As to the conditions in subsection (1)(b) and (c), in my judgment they are plainly satisfied in relation to the period prior to notification of the complaint. There is no basis for concluding in relation to that period that Google Inc failed to take reasonable care in relation to publication of the comments or that it knew or had reason to believe that it caused or contributed to their publication. Greater difficulty arises, however, in relation to the application of the conditions to continued publication of the comments after Google Inc had notice of their allegedly defamatory content.
    1. Thus, the relevant question in relation to subsection (1)(b) is whether Google Inc took reasonable care in relation to the continued publication of the comments. Eady J referred to the submissions of counsel for Google Inc that the company took reasonable care in relation to the appellant’s complaint when it passed the complaint on to the blogger and that this was a proportionate response. The judge held at [47]:

“One could certainly say that the response was somewhat dilatory, but I would not consider it, in all the circumstances of this case, to be outside the bounds of a reasonable response”.

    1. This may have been a generous view but I am not persuaded that it was wrong. The factors in subsection (5), to which regard must be had in determining whether Google Inc took reasonable care, tell in its favour: the company had no responsibility for the content of the comments or the decision to publish them; the circumstances of publication include the vast number of blogs that are hosted on Blogger, which may be said to justify a longer response time; and there is no evidence of anything in the previous conduct of the particular blogger or of those who posted the comments that might have called for speedier action to be taken. The situation is distinguishable from that which caused Morland J to hold in Godfrey v Demon Internet that subsection (1)(b) posed an insuperable difficulty for the defendants since “after receipt of the plaintiff’s fax, the defendants knew of the defamatory posting but chose not to remove it from their … news servers”: it is clear why, in the absence of any steps at all, the judge in that case did not think that reasonable care had been exercised.
    1. The relevant question in relation to subsection (1)(c) is whether it can be said that in the period after notification of the complaint Google Inc did not know, and had no reason to believe, that what it did caused or contributed to the publication of a defamatory statement. The judge’s reasoning on this was very brief. He said at [49] that once the complaint in respect of a relevant comment was notified, Google Inc would have had reason to believe that the comment was defamatory, but that this was “far from saying … that Google Inc would have known, or had reason to believe, that it had done anything to cause or contribute to the publication of any of these statements”. But the very considerations that lead me to conclude that Google Inc arguably became a publisher of the defamatory comments on Byrne v Deane principles also tend towards the conclusion that following notification it knew or had reason to believe that what it did caused or contributed to the continued publication of the comments. The judge in Davison v Habeeb and Others, at [46], thought it arguable in that case that at some point after notification Google Inc knew or had reason to believe that its continued hosting of the material in question caused or contributed to the publication of a defamatory statement. In my view the same can be said in the present case.
    1. Mr White QC submitted that Eady J appeared to have had in mind what was said in Milne v Express Newspapers [2005] 1 WLR 772 about the similar language in section 4(3) of the 1996 Act, to the effect that an offer to make amends under section 2 is a defence unless the person by whom the offer was made “knew or had reason to believe” that the statement complained of (a) referred to the aggrieved party or was likely to be understood as referring to him, and (b) was false and defamatory of that party. The court held in that case that a person knew or had reason to believe that a statement was false if he either knew that it was false or was reckless as to whether it was false, in the sense of not considering or caring whether it was true or not. Eady J made reference to that decision when finding in Bunt v Tilley, at [61], that the condition in subsection (1)(c) was satisfied in relation to one of the ISPs because the email sent to it by the complainant “did not effectively put [it] on notice, and its staff were given no reason to believe that they were causing or contributing to the publication of the postings complained of”. That finding turned, however, on the particular terms of the email in question, and it is difficult to read into the judge’s reasoning in the present case any implied reference either to what he said on this point in Bunt v Tilley or to the decision or reasoning in Milne v Express Newspapers. In any event this line of reasoning does not appear to me to provide a satisfactory answer to the concern I have expressed about the judge’s view of subsection (1)(c) in the present case.
    1. In the light of that concern about subsection (1)(c) I am not satisfied that, if Google Inc were found to be a publisher of the defamatory comments on Byrne v Deane principles, section 1 of the 1996 Act would provide it with an unassailable defence.
    1. For that reason it is necessary to move to the next issue considered by the judge, namely the question whether any potential liability on the part of Google Inc was sufficient to justify the maintenance of the proceedings against it. The judge appeared to treat this as a subsidiary point under his consideration of the statutory defence, but it is in truth a distinct issue which assumes real importance in this case if I am correct in the conclusions I have reached so far.

“Real and substantial tort”

    1. At [50] of his judgment, Eady J accepted an argument by counsel for Google Inc that the period between notification of the complaint and removal of the offending blog was so short as to give rise to any potential liability on the part of Google Inc only for a very limited period, such that the court should regard it as so trivial as not to justify the maintenance of the proceedings. The judge said that, to adopt the words in Jameel (Yousef) v Dow Jones & Co Inc (cited above), “the game would not be worth the candle”.
    1. In Jameel (Yousef) the Court of Appeal upheld an application to strike out as an abuse of process defamation proceedings against the publisher of a US newspaper in respect of an article posted on an internet website in the USA which was available to subscribers in England but had been the subject of minimal publication within this jurisdiction. The court considered that the principles relevant to a strike-out application overlapped with those relevant to an application to set aside permission to serve out of the jurisdiction. It was in the latter context that the question whether “a real and substantial tort has been committed within the jurisdiction” had been developed, but the court considered that the question whether a substantial tort had been committed in the jurisdiction was also relevant to an application to strike out as abuse of process. It held that keeping a proper balance between the article 10 right of freedom of expression and the protection of individual reputation required the court to bring to a stop, as an abuse of process, defamation proceedings that were not serving the legitimate purpose of protecting the claimant’s reputation, which included compensating the claimant only if that reputation had been unlawfully damaged. The court went on to consider whether, on the facts of the case before it, vindication of the claimant’s reputation justified the continuance of the action. It concluded:

“69. If the claimant succeeds in this action and is awarded a small amount of damages, it can perhaps be said that he will have achieved vindication for the damage done to his reputation in this country, but both the damage and the vindication will be minimal. The costs of the exercise will have been out of all proportion to what has been achieved. The game will not merely not have been worth the candle, it will not have been worth the wick.

70. If we were considering an application to set aside permission to serve these proceedings out of the jurisdiction we would allow that application on the basis that the five publications that had taken place in this jurisdiction did not, individually or collectively, amount to a real and substantial tort. Jurisdiction is no longer in issue, but subject to the effect of the claim for an injunction that we have yet to consider, we consider for precisely the same reason that it would not be right to permit this action to proceed. It would be an abuse of the process to continue to commit the resources of the English court, including substantial judge and possibly jury time, to an action where so little is now seen to be at stake ….”

    1. In my judgment, Eady J was plainly right to conclude that the application in the present case to set aside permission to serve out of the jurisdiction should be allowed for like reasons. The allegedly defamatory comments were posted between 28 and 30 April, soon after the initial blog of 27 April. By the very nature of a blog, they will have been followed by numerous other comments in the chain and, whilst still accessible, will have receded into history. As I have indicated, the earliest point at which Google Inc could have become liable in respect of the comments would be some time after notification of the complaint in respect of them. But it is highly improbable that any significant number of readers will have accessed the comments after that time and prior to removal of the entire blog. It follows, as the judge clearly had in mind, that any damage to the appellant’s reputation arising out of continued publication of the comments during that period will have been trivial; and in those circumstances the judge was right to consider that “the game would not be worth the candle”. I do not accept Mr Busuttil’s submission that various other features of the claim, including the fact that the appellant’s name is relatively uncommon and distinctive in this jurisdiction, undermined the judge’s conclusion.
    1. It follows that, despite the fact that I have reached certain conclusions favourable to the appellant on the previous issues, this appeal must in my view fail.
    1. In those circumstances, although the issue was the subject of detailed argument before us, it is unnecessary to consider whether Google Inc would have a defence under regulation 19 of the 2002 Regulations.

Lord Justice Sullivan :

    1. I agree.

Master of the Rolls :

  1. I also agree.
Neutral Citation Number: [2012] EWHC 268 (Ch)
Case No: HC11C04518

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Rolls Building, Fetter Lane, London EC4A 1NL
20 February 2012

B e f o r e :

THE HON MR JUSTICE ARNOLD
____________________

Between:

DRAMATICO ENTERTAINMENT LIMITED
EMI RECORDS LIMITED
MERCURY RECORDS LIMITED
POLYDOR LIMITED
ROUGH TRADE RECORDS LIMITED
SONY MUSIC ENTERTAINMENT UK LIMITED
VIRGIN RECORDS LIMITED
WARNER MUSIC UK LIMITED
679 RECORDINGS LIMITED
Claimants
– and –

BRITISH SKY BROADCASTING LIMITED
BRITISH TELECOMMUNICATIONS PLC
EVERYTHING EVERYWHERE LIMITED
TALKTALK TELECOM GROUP PLC
TELEFÓNICA UK LIMITED
VIRGIN MEDIA LIMITED
Defendants

____________________

Ian Mill QC, Edmund Cullen and Tom Richards (instructed by Forbes Anderson Free) for the Claimants
The Defendants did not appear and were not represented
Hearing date: 9 February 2012 

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

MR JUSTICE ARNOLD :

Contents

Topic Paras
Introduction 1-8
The absence of the operators and users of TPB 9-15
The Claimants’ rights 16-18
Bittorrent 19-20
TPB 21-29
Legal Framework 30-38
    International treaties 30-33
        Berne Convention 30
        WIPO Copyright Treaty 31-32
        WIPO Performances and Phonograms Treaty 33
    Information Society Directive 34-36
    Domestic Implementation of the Information Society Directive 37
    The 1988 Act 38
Infringement by users of TPB 39-71
    Copying 40-43
    Communication to the public 44-71
Infringement by the operators of TPB 72-83
    Authorisation 73-81
        The nature of the relationship 75-76
        The means used to infringe 77
        Inevitability of infringement 78
        Degree of control 79
        Steps to prevent infringement 80
        Conclusion 81
    Joint tortfeasance 82-83
Conclusion 84

Introduction

    1. The Claimants are record companies claiming on their own behalf and in a representative capacity on behalf of the other members of BPI (British Recorded Music Industry) Ltd (“BPI”) and Phonographic Performance Ltd (“PPL”). The Defendants are the six main retail internet service providers (“ISPs”). Between them they have a fixed line market share of some 94% of UK internet users. By this claim the Claimants seek an injunction against the Defendants pursuant to section 97A of the Copyright, Designs and Patents Act 1988 (“the 1988 Act”), which implements Article 8(3) of European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“the Information Society Directive”), requiring the Defendants to take measures to block or at least impede access by their customers to a peer-to-peer (“P2P”) file-sharing website called The Pirate Bay (“TPB”).
    1. In Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch)[2011] RPC 28 (“20C Fox v BT“) I held that the Court had jurisdiction, and that it was appropriate to exercise my discretion, to make a blocking order against the Second Defendant (“BT”) with respect to a website called Newzbin2. In Twentieth Century Fox Film Corp v British Telecommunications plc (No 2) [2011] EWHC 2714 (Ch) I determined the terms of that order.
    1. On 12 December 2011 Vos J made a similar order against the First Defendant (“Sky”) in respect of Newzbin2. The making of the order was not opposed by Sky, and its wording was agreed. Paragraph 1 of that order provides:

“In respect of its residential fixed line Sky Broadband customers to whose service the system known as Mohawk is applied, the Respondent shall within 7 working days adopt the following technical means to block or attempt to block access by its customers to the website currently known as Newzbin2 and currently accessible at http://www.newzbin.com, its domains and sub-domains and including payments.newzbin.com and any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin2 website. The technology to be adopted is:

(i) IP blocking in respect of each and every IP address from which the said website operates and which is:

(a) notified in writing to the Respondent by the Applicants or their agents; and

(b) in respect of which the Applicants or their agents notify the Respondent that the server with the notified IP address blocking does not also host a site that is not part of the Newzbin2 website.

(ii) IP address re-routing in respect of all IP addresses that provides access to each and every URL available URL available from the said website and its domains and sub-domains and which URL is notified in writing to the Respondent by the Applicants or their agents; and

(iii) URL blocking in respect of each and every URL available from the said website and its domains and sub-domains and which is notified in writing to the Respondent by the Applicants or their agents.”

    1. On 9 February 2012 I made a similar order against the Fourth Defendant (“TalkTalk”) in respect of Newzbin2. Again, the making of the order was not opposed by TalkTalk, and its wording was agreed. Paragraphs 1-4 of that order provide:

“1. In respect of its customers to whose internet access service the system known as SIG (Service Inspection Gateway) is applied whether optionally or otherwise, the Respondent shall within 10 working days adopt the following technical means to block or attempt to block access to the website currently known as Newzbin2 and currently accessible at http://www.newzbin.com and/or http://www.newzbin2.es, its domains and sub-domains and including payments.newzbin.com and any other URL the sole or predominant purpose of which is to enable or facilitate access to the Newzbin2 website. The technical means to be adopted is:

URL blocking in respect of each and every URL from which the said website (and its domains and sub-domains which are notified in writing to the Respondent by the Applicants or their agents) operates.

2. For the avoidance of any doubt, paragraph 1 is complied with if the Respondent uses the system known as SIG.

3. In respect of its customers to whose internet access service the system known as blackholing is applied, the Respondent shall within 10 working days adopt the following technical means to block or attempt to block access to any IP address the sole or predominant purpose of which is to enable or facilitate access to the Newzbin2 website. The technical means to be adopted is:

IP blocking in respect of each and every IP address from which the said website operates and which is:

(a) notified in writing to the Respondent by the Applicants or their agents; and

(b) in respect of which the Applicants or their agents notify the Respondent that the server with the notified IP address does not also host a site that is not part of the Newzbin2 website.

4. For the avoidance of any doubt, paragraph 3 is complied with if the Respondent uses the system known as blackholing.”

    1. As I explained in 20C Fox v BT at [2], that application was a sequel to a successful claim for copyright infringement brought by the applicants in that case against Newzbin Ltd, which had operated an almost identical website to Newzbin2 (“Newzbin1”). Newzbin Ltd was found by Kitchin J to have infringed the claimants’ copyrights on a large scale: Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch)[2010] FSR 21 (“20C Fox v Newzbin“). He granted an injunction against Newzbin Ltd to restrain further infringements of the claimants’ copyrights. Subsequently the Newzbin1 website ceased operation. Shortly afterwards, however, the Newzbin2 website commenced operation at the same location. As was explained in more detail in 20C Fox v BT at [48]-55], Newzbin2 operated in essentially the same manner as Newzbin1. It followed that Kitchin J’s findings of infringement of copyright in respect of Newzbin1 were equally applicable to Newzbin2: see 20C Fox v BT at [113].
    1. In the present case, however, the Claimants have not brought proceedings for copyright infringement against the operators of TPB in this jurisdiction, although both civil and criminal proceedings have been brought in a number of other jurisdictions. Accordingly, the Claimants and the Defendants agreed to a consent order made by Henderson J on 20 January 2012 directing the trial of two preliminary issues, namely whether on the evidence before the Court, (i) users and (ii) the operators of TPB infringe the Claimants’ copyrights in the UK. The remaining issues raised by the claim were left to be dealt with at a second hearing if the Claimants prevailed on either or both of the preliminary issues. In the particular circumstances of the present case, I accept that this was a sensible way in which to proceed, but I wish to make it clear that I do not regard it as essential for claims of this nature to be dealt with in two stages.
    1. Understandably, the Defendants did not choose to appear or be represented at the trial of the preliminary issues. I was informed by counsel for the Claimants that the Defendants’ position is that it is not for the Defendants to decide whether or not users or the operators of TPB infringe the Claimants’ rights, but for the Court to do so. Be that as it may, I have considered the Claimants’ contentions with care to see if they are made out on the evidence and the law.
    1. The Claimants have filed a considerable volume of evidence in support of the claim. Some of this evidence relates to issues other than the preliminary issues. I do not consider that it is necessary to summarise all the evidence relevant to the preliminary issues in this judgment, although I have taken it all into account.

The absence of the operators and users of TPB

    1. The operators of TPB have not been joined as defendants to this claim, nor has it been served upon them. They did not appear at the hearing, nor have they been represented. Nor has any user been joined, served, appeared or been represented. It might be asked why it would be appropriate for this Court to determine the preliminary issues in their absence. Counsel for the Claimants gave four answers to that question, the first three of which I agree with.
    1. First, there is no jurisdictional requirement to join or serve the operators or users of TPB. Article 8(3) of the Information Society Directive and section 97A of the 1988 Act (set out below) confer jurisdiction on the Court to grant injunctions against intermediaries whose services are used by a third party to infringe copyright. Neither Article 8(3) nor section 97A requires joinder or service of the third party.
    1. Secondly, the courts both in this jurisdiction and in other Member States have proceeded on the basis that it is not necessary to join or serve the third party. In 20C Fox v BT the operators of Newzbin2 claimed to be different to the operators of Newzbin1. I granted the order sought even though the operators of Newzbin2 had not been joined or served and no user was joined or served (although one user did apply to be joined prior to the second hearing). The same approach has been adopted by courts in Belgium, Denmark and the Netherlands. Thus in Stichting Bescherming Rechten Entertainment Industrie Neederland BREIN v Ziggo BV (case 374634/HA ZA 10-3184, judgment dated 11 January 2012) the District Court of the Hague (Judges Blok, Kalden and Loos) held at [4.42]:

“The District Court considers on that as follows. The imposing of the claimed order meets the conditions of due process. After all, the measure is imposed after a prior, fair and impartial procedure, i.e. the present proceedings. Contrary to what Ziggo and XS4ALL argue, it is not required that all its subscribers are parties to the proceedings or are heard. It provides that ‘the person or persons concerned’ must be heard. In a case like the present one, in which an order is claimed against intermediaries, such intermediaries can be considered to be the persons concerned in the sense of this provision. Said intermediaries have been heard. Any different interpretation would render the regulation for orders against intermediaries which the European legislator has implemented with the Enforcement Directive meaningless. It is inherent in such regulation that an order can be imposed upon inter alia internet providers to cease their services in proceedings to which the alleged infringer is not, at least not necessarily a party and so is not heard in it. One of the reasons for implementing such an option is precisely, after all, the situation that the alleged infringer cannot be sued, for instance because his identity is not known (see Memorandum, following the report, Parliamentary Documents II 2005-2006, 30 392, no. 6, p. 10 and 11).”

    1. Thirdly, it would be impracticable, or at least disproportionate, to require joinder or service of the operators or users of TPB. TPB was set up and originally operated by four Swedish individuals (Fredrik Neij, Gottfrid Svartholm Warg, Peter Sunde Kolmisoppi and Carl Lundström) who were convicted of criminal offences of aiding and abetting copyright infringement by the Swedish courts. It appears that, while their (unsuccessful) appeals against conviction were pending, they left the jurisdiction of the Swedish courts. While Warg is said to be in Cambodia, it is unclear where the others are. Furthermore, they have claimed that TPB is now operated by a Seychelles company called Reservella Ltd, although this is disputed. In subsequent civil proceedings brought by a number of record companies in Sweden against Warg, Neij and Sunde, the court has thus far been unable to serve the proceedings on the defendants. There is no reason to believe that any attempt to serve English proceedings on them would be any more successful.
    1. Even if proceedings could be served upon the operators of TPB, there is no reason to believe that they would seek to defend them or to make representations to this court. The BPI wrote to the operators complaining of infringement on 12 July 2011 and subsequently sent a copy of the letter by email on 10 August 2011, but received no reply. The operators’ attitude is clear from the following passage on the “about” page of TPB:

“Only torrent files are saved at the server. That means no copyrighted and/or illegal material are stored by us. It is therefore not possible to hold the people behind The Pirate Bay responsible for the material that is being spread using the tracker. Any complaints from copyright and/or lobby organisations will be ridiculed and published at the site.”

True to their word, the “legal threats” page of the website contains links to copies of a series of cease and desist letters sent by right owners together with the operators’ responses, which tend to the profane. The page ends:

“No action (except ridiculing the senders) has been taken by us because of these. 🙂

Nice graphs for the law firms who don’t get the hint above:

(we used to have a nice graph here, but it’s simpler to just say: 0 torrents has been removed, and 0 torrents will ever be removed.)”

There is more evidence of this kind.

    1. Turning to the users of TPB, the evidence is that there is a considerable number of these in the UK. While in theory it would be possible to identify those users, or most of them, who were using TPB during a particular period by means of Norwich Pharmacal orders directed to ISPs, that would be a costly exercise in itself. It would be wholly disproportionate to attempt to join or serve all such users, and there would be no basis for singling out particular users for joinder or service. Nor, I suspect, would most users wish to defend the proceedings or even make representations.
    1. The fourth answer given by counsel was that any findings of infringement made in these proceedings would not be binding upon the operators or users of TPB. While technically correct, I do not regard this point as particularly persuasive, since if the order sought by the Claimants is granted the operators and users of TPB will be adversely affected.

The Claimants’ rights

    1. Each of the Claimants is in the business of making and exploiting sound recordings of musical works. To that end they own or exclusively license the copyrights in such sound recordings. As noted above, they represent the members of BPI and PPL. BPI is an industry body which represents the interests of independent and major record companies in the UK. Currently BPI has some 361 members. It is a member of the International Federation of the Phonographic Industry (“IFPI”), which represents the interests of the recording industry worldwide. IFPI has 1,400 members in 66 countries, and affiliated industry associations in 45 countries. PPL is a UK collective licensing body which administers certain of the rights conferred by copyright on behalf of its members. The members of BPI and PPL between them hold the UK rights for approximately 99.8% of all sound recordings sold legally in the UK. The Claimants’ evidence is that, with one exception, none of the members of BPI or PPL has granted a licence to TPB.
    1. For the purposes of these proceedings, the Claimants rely in particular upon the copyrights which the relevant Claimant owns in each of the recordings in the following sample albums:

Recording Claimant
“The House” by Katie Melua Dramatic Entertainment Ltd
“It’s Not Me, It’s You” by Lily Allen EMI Records Ltd
“Last Night On Earth” by Noah & The Whale Mercury Records Ltd
“Lights” by Ellie Goulding Polydor Ltd
“Valhalla Dancehall” by British Sea Power Rough Trade Records Ltd
“Everybody Wants To Be On TV” by Scouting For Girls Sony Music Entertainment UK Ltd
“What Did You Expect From The Vaccines?” by The Vaccines Sony Music Entertainment UK Ltd
“Hold Me Down” by You Me At Six Virgin Records Ltd
“Seasons Of My Soul” by Rumer Warner Music UK Ltd
“The Defamation of Strickland Banks” by Plan B 679 Recordings Ltd
    1. Each Claimant has confirmed that it has not granted TPB a licence in respect of the respective sample recording(s).

Bittorrent

    1. The Bittorrent P2P protocol is described in an expert report by Michael Walsh of Kerna Communications Ltd, a specialist computer networking and security consultancy based in Dublin. It is convenient to quote the key passages of his report:

“65. Peer to peer technologies are in continuing development. Since the successful prosecution of a previous service, Limewire, in 2010 Bittorrent has emerged as the dominant P2P protocol. P2P services each differ from one another in many technical details, but they all share certain basic elements:

(a) The user downloads and installs on his or her computer a piece of software, for example µTorrent (also known as uTorrent). This software is easily found using an internet search engine and is downloaded for free without any personal identification required.

(b) Once the software is installed on a computer, whenever that computer connects to the Internet it becomes part of a P2P network or system consisting of many other computers using the same software. P2P software often installs itself so that it runs in the background whenever the computer is started.

(c) A user locates files for download in different places depending on the P2P technology in use. Bittorrent users may use The Pirate Bay because it is simple to search and find music, video, games and software.

(d) Once a user is a participant in a P2P network, he or she can download files hosted and being made available by other users of the P2P network. At the same time the user’s computer acts as an uploader, making the files that it has locally available to others. The files are not stored or hosted on a central server. Instead, each computer that is part of the network can act as a mini-server from which other P2P users on the network can download files.

(e) P2P technology distributes large data files by breaking them up into small pieces (chunks) and sends them over the Internet to the requesting user. The P2P software may request chunks of the file from different members of the P2P network. When all the data is received by the user’s computer, the file is reassembled as a whole.

(f) Because of their organisation, where users in a P2P network will generally act both as a client and a server (i.e. uploader as well as downloader), each participant provides resources to the network such as bandwidth, storage space and computing power, thereby increasing capacity as the network grows. P2P networks scale well as they grow in size and are resilient where there is no central component.

66. When an uploader using an ISP’s Internet service chooses to share a copyright work stored on his or her computer such as a sound recording or film in the form of a digital file and connects to a P2P service using an ISP’s Internet service, he or she makes that file publicly available to substantial numbers of other P2P users who are able to search for the file and, on a request made automatically by one PC to another, transfer and share further copies of that file over the Internet.

Sharing a file for the first time

68. In the Bittorrent system, when a user has a new file to share with other peers (i.e. no other copies already exist in P2P networks) they first need to make available details relating to that file so that others can find it.

69. They first select two related entities that will facilitate P2P distribution of the new file – the ‘tracker’ that will co-ordinate the distribution of the file among the peers and the torrent site itself where the user will publish the information necessary to share the file.

70. The tracker is commonly needed because, during the sharing process, the identity of the computers which can provide pieces that make up the file contents change regularly as other users acquire the content and make it available (and others may become unavailable).

71. The tracker monitors the computers that have all or some of the pieces available for download and makes that information available to any user’s Bittorrent client when it commences the download process.

72. The user then creates, typically with a piece of software, a torrent file that provides all the information necessary for others to download the shared file using P2P software. The torrent file is a small text file. It provides a set of instructions to the Bittorrent client installed on a user’s computer. The torrent file does not itself contain any of the content to which it relates. The Torrent file contains the file list, file sizes and hash values that the Bittorrent software assigns to the files to, in effect, uniquely identify the content. The hash value is a reference code comprising a string of letters and numbers, which is used to identify each piece of the content to be shared. This enables the tracker to recognise pieces of the content file as they are shared and is intended to ensure that the content files are correctly downloaded and unmodified.

73. The user uploads that torrent file to the torrent site. The user then runs their P2P client software on the machine containing the complete file to be shared – a process known as providing the seed, or seeding.

74. The P2P client software then interacts with the torrent site and associated tracker to allow others to find and share that new file.

Downloading and sharing a file that is already available

75. A computer user would typically download and share a file using Bittorrent P2P in the following manner:

(a) Identify the file they wish to download – either by using a web browser and search engine to find a site hosting torrent files, or alternatively going directly to a known dedicated torrent website and browsing its contents.

(b) Retrieve and open the torrent file associated with that file using the Bittorrent client software running on their computer.

(c) The Bittorrent client software uses the information in that torrent file to communicate with the tracker server that identifies all users (‘peers’) who are able to share the file.

(d) Computers that are online, running P2P software and are able to share the file, report back regularly to the tracker to let it know they can provide (pieces of) the file to other peers.

(e) The tracker server links peers together and each peer then sends pieces of the file to the user’s computer where the P2P client software receives them and reassembles them into the complete file.

76. Often, through the course of downloading a single file, one peer will connect to hundreds of others. Therefore, unlike other systems (where high demand for a particular content file may slow the download process), where demand for a specific file via Bittorrent is high, the more efficient the download performance for all users.

77. A Bittorrent user that has a complete file available for upload is called a ‘Seeder’ and their file copy is called a ‘Seed’. A user that is downloading, but does not yet have the complete file, is called a Leecher.

78. The community of Bittorrent computers sharing a file at any time is called a Swarm. The size and membership of a swarm will change over time as computers come and go.”

    1. As is clear from this account, the key part of the Bittorrent protocol is the creation and distribution of torrent files associated with particular content files. The torrent files do not themselves contain any material from the associated content files. Rather, they enable the identification, and hence the uploading and downloading, of the relevant content files. Thus they serve a somewhat similar function to the NZB files described in 20C Fox v Newzbin at paragraphs [29] to [31] (summarised in 20C Fox v BT at [32]).

TPB

    1. TPB describes itself on the “about” page as follows:

“The Pirate Bay is the worlds largest bittorrent tracker. Bittorrent is a filesharing protocol that in reliable way enables big and fast file transfers.

This is an open tracker, where anyone can download torrent files. To be able to upload torrent files, write comments and personal messages one must register at the site. This is of course free.”

    1. TPB provides an organised directory of content which users can browse and from which they can select the content of their choice. Among the search options available are “music” and “audio”. By use of the various search options it is easy to find, among other things, recordings by particular artists. It is also possible to select files that are popular with other users. Furthermore, users can select file types including “music” and “FLAC” (i.e. Free Lossless Audio Codec, an audio format similar to MP3).
    1. Having selected the content, the user downloads the relevant torrent file for that content from TPB. The Bittorrent software on the user’s computer will then use the information in the torrent file to download the “pieces” of the content file from the “swarm” in the manner described by Mr Walsh.
    1. As Mr Walsh explains in a second report TPB used to offer so-called Magnet links as an alternative to downloading a torrent file directly from its website. Recently TPB has made provision of a Magnet link the default option (while retaining the facility for direct download if the user wishes it). A Magnet link simply provides a different means whereby TPB enables users to download torrent files. The Magnet link connects the user either to a Bittorrent tracker or to the “swarm” in order to obtain the torrent file rather than obtaining it directly from The Pirate Bay. It is not necessary to go into the technical details of this. Once the torrent file has been acquired, the user can download the content to which it relates.
    1. TPB also provides a simple facility for registered users to upload torrent files. Registration is straightforward and free.
    1. TPB is a very widely-used website. As at 19 December 2011, over 30 million users worldwide were using its service. As of 21 December 2011, it was the 43rd most popular website in the UK according to the authoritative Alexa rankings. According to Comscore measurements, in October 2011 it received 3,669,050 unique visitors from the UK (8.61% of the worldwide total).
    1. As for the content that is available on TPB, it is vast in scale. As at 19 December 2011, its index listed 4,021,772 torrent files. In order to provide evidence of the extent to which BPI’s members’ works are included in that content, Dr David Price, who is Head of Piracy Intelligence at Envisional Ltd, a consultancy based in Cambridge, has undertaken an analysis of its distribution between different categories of content using a sample of 62,380 files. He concludes that 25.59% of the content is comprised of music (including music videos).
    1. Dr Price has also analysed the proportion of this content which is commercially available, and therefore highly likely to be protected by copyright. In the music category, 75.1% of the files chosen for verification were confirmed as being commercially available. An additional 3% were considered to be likely to be protected by copyright. Applying these figures to the total number of torrents available as at 19 December 2011, it implies that over 1 million “music” torrents were listed on TPB, of which over 750,000 were commercially available. As at that date, torrents for 72 of the top 75 albums in the UK chart were available on TPB.
    1. It should be noted that the operators of TPB do not operate the website for altruistic reasons. On the contrary, the website carries click-through advertising. Dr Price estimates the revenue generated by such advertising, based on some fairly conservative assumptions, at somewhere in the range US$1.7 to 3 million in the month of October 2011. In addition the operators sell merchandise, the revenue from which is more difficult to estimate.

Legal framework

International treaties

    1. Berne Convention. The International Convention for the Protection of Literary and Artistic works signed at Berne on 9 September 1886 (Paris Act of 1971 as amended in 1979) (“the Berne Convention”), to which all Member States of the European Union are parties, includes the following provisions:

Article 2

(1) The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Article 11bis

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:

(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images;

(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;

(iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.

…”

    1. WIPO Copyright Treaty. The World Intellectual Property Organisation Copyright Treaty agreed in Geneva on 20 December 1996 (“the WIPO Copyright Treaty”), to which the European Union and all its Member States are parties, includes the following provisions:

Article 1

Relation to the Berne Convention

(1) This Treaty is a special agreement within the meaning of Article 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Parties that are countries of the Union established by that Convention. This Treaty shall not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties.

(2) Nothing in this Treaty shall derogate from existing obligations that Contracting Parties have to each other under the Berne Convention for the Protection of Literary and Artistic Works.

(3) Hereinafter, ‘Berne Convention’ shall refer to the Paris Act of July 24, 1971 of the Berne Convention for the Protection of Literary and Artistic Works.

(4) Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the Berne Convention.

Article 8

Rights of communication to the public

Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing 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 these works from a place and at a time individually chosen by them.”

    1. At the Diplomatic Conference at which the WIPO Copyright Treaty was adopted, a number of statements concerning its interpretation were agreed. These include the following statement in relation to Article 8:

“It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention. …”

    1. WIPO Performances and Phonograms Treaty. The World Intellectual Property Organisation Performances and Phonograms Treaty (“the WIPO Performances and Phonograms Treaty”), which was agreed at the same time as the WIPO Copyright Treaty, and to which the European Union and all its Member States are also parties, includes the following provisions:

Article 10

Right of Making Available of Fixed Performances Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, 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.

Article 14

Right of Making Available of Phonograms

Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public of their phonograms, 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.”

Information Society Directive

    1. The Information Society Directive contains 61 recitals. For present purposes, it is sufficient to refer to the following:

“(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.

(25) The legal uncertainty regarding the nature and the level of protection of acts of on-demand transmission of copyright works and subject-matter protected by related rights over networks should be overcome by providing for harmonised protection at Community level. It should be made clear that all rightholders recognised by this Directive should have an exclusive right to make available to the public copyright works or any other subject-matter by way of interactive on-demand transmissions. Such interactive on-demand transmissions are characterised by the fact that members of the public may access them from a place and at a time individually chosen by them.

(26) With regard to the making available in on-demand services by broadcasters of their radio or television productions incorporating music from commercial phonograms as an integral part thereof, collective licensing arrangements are to be encouraged in order to facilitate the clearance of the rights concerned.

(27) The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.

(58) Member States should provide for effective sanctions and remedies for infringements of rights and obligations as set out in this Directive. They should take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for should be effective, proportionate and dissuasive and should include the possibility of seeking damages and/or injunctive relief and, where appropriate, of applying for seizure of infringing material.

(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network. This possibility should be available even where the acts carried out by the intermediary are exempted under Article 5. The conditions and modalities relating to such injunctions should be left to the national law of the Member States.”

    1. Article 3 provides as follows:

Right of communication to the public of works and right of making available to the public other subject-matter

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.”

    1. Article 8 provides as follows:

Sanctions and remedies

1. Member States shall provide appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive and shall take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for shall be effective, proportionate and dissuasive.

2. Each Member State shall take the measures necessary to ensure that rightholders whose interests are affected by an infringing activity carried out on its territory can bring an action for damages and/or apply for an injunction and, where appropriate, for the seizure of infringing material as well as of devices, products or components referred to in Article 6(2).

3. Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Domestic implementation of the Information Society Directive

    1. The Information Society Directive was transposed into domestic law by the Copyright and Related Rights Regulations 2003, SI 2003/2498 (“the 2003 Regulations”). Article 3 was implemented by Regulations 6 and 7, which amended section 20 in Part I of the 1988 Act and inserted new section 182CA into Part II of the 1988 Act, although as discussed below the amendment to section 20 went further than Article 3 required. Article 8(3) was implemented by Regulation 27, which inserted new sections 97A and 191JA into Parts I and II respectively of the 1988 Act.

The 1988 Act

    1. As amended by the 2003 Regulations, the 1988 Act includes the following provisions:

The acts restricted by copyright in a work

16.(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom –

(a) to copy the work (see section 17);

(d) to communicate the work to the public (see section 20);

and those acts are referred to in this Part as the ‘acts restricted by the copyright’.

(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.

(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it –

(a) in relation to the work as a whole or any substantial part of it

(b) either directly or indirectly;

and it is immaterial whether any intervening acts themselves infringe copyright.

Infringement of copyright by copying

17.(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.

(2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means.

(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work.

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.

97A Injunctions against service providers

(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.

(2) In determining whether a service provider has actual knowledge for the purpose of this section, a Court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to –

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and

(b) the extent to which any notice includes –

(i) the full name and address of the sender of the notice;

(ii) details of the infringement in question.

(3) In this section ‘service provider’ has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002.”

Infringement by users of TPB

    1. The Claimants contend that UK users of TPB infringe their copyrights in two ways. First, by copying sound recordings within section 17 of the 1988 Act. Secondly, by communicating sound recordings to the public within section 20 of the 1988 Act. I will consider these in turn.

Copying

    1. It is clear that a user of TPB who selects a torrent file in order to obtain a copy of particular content, and then downloads the associated content files, copies the content contained in those files on his or her computer. It follows that, if the content files comprise a copyright work, and if the user does not have licence of the copyright owner, he or she will be infringing copyright.
    1. The Claimants have adduced evidence from Thomas Sehested of MarkMonitor Inc, a company that specialises in evidence gathering on the internet. MarkMonitor has conducted an investigation into the exploitation of the sample recordings by the operators and users of TPB. Mr Sehested’s evidence demonstrates that between 11 and 29 November 2011 (i) torrent files for all of the sample recordings were available for download on TPB, (ii) by means of those torrent files, at least 15% of each album comprised in the sample recordings was being shared by a user via an account held at each of the Defendants and (iii) at least 1% of each album had been downloaded by MarkMonitor from each user account. Thus users of TPB who have accounts with each of the Defendants (and who are therefore in the UK) have been engaged in sharing (and thereby making unlicensed copies of) the sample recordings.
    1. More generally, Mr Sehested explains that since 2007 MarkMonitor has monitored the activities of P2P users in the UK for the IFPI. For this purpose the IFPI have supplied MarkMonitor with sample lists of copyright-protected record label repertoire, selected on the basis of the UK Singles and Album charts. As at 20 December 2011, the list comprised 15,000 titles. MarkMonitor monitors P2P networks to ascertain the number of instances where titles on the list are made available to, and downloaded by, P2P users via the Defendants. This information has been utilised for the purpose of providing notifications to the Defendants of instances where their services have been used for the illegal downloading of works of the BPI’s members. By 21 November 2011, some 3,299,337 such instances had been identified. The vast majority of these involved the Bittorrent protocol. Since TPB is the most popular torrent site, it may be inferred that a substantial proportion involved use of TPB.
    1. I therefore conclude that UK users of the TPB who have accounts with the Defendants have infringed, and are continuing to infringe, the Claimants’ copyrights by copying the Claimants’ sound recordings on a large scale.

Communication to the public

    1. At this point a difference between the claims advanced by the claimants in 20C Fox v Newzbin and the claims advanced by the Claimants in the present case should be noted. In 20C Fox v Newzbin the claimants contended that the users had infringed their copyrights by copying (see [85] and [97]) and that Newzbin Ltd had (in addition to authorising and being jointly liable for infringements by the users) infringed their copyrights by communicating the copyright works (namely films) to the public. The claimants did not contend that the users had communicated the works to the public. By contrast, in the present case the Claimants do contend that the users of TPB are communicating the copyright works to the public, but for present purposes do not contend that the operators of TPB are doing so. The reason why the Claimants do not presently assert communication to the public by the operators of TPB is the pending reference to Court of Justice of the European Union made by the Court of Appeal in Football Dataco Ltd v Sportradar Gmbh [2011] EWCA Civ 330, [2011] 1 WLR 3044. I shall return to this point below.
    1. Article 3(1) of the Information Society Directive and section 20 of the 1988 Act have been considered in a number of recent cases which I shall consider in chronological order.
    1. In Case C-306/05 Sociedad General de Autores v Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I-11519 SGAE, a collective licensing body in Spain, complained that the installation and use of television sets in Rafael’s hotel involved the communication to the public of works falling within the repertoire which it managed. The Audienca Provincial (Provincial Court) of Barcelona referred to the CJEU three questions, the first and third of which the Court interpreted as asking, essentially, whether the distribution of a signal through television sets to customers in hotel rooms constituted communication to the public within the meaning of Article 3(1), and whether the installation of television of sets in hotel rooms constituted in itself an act of that nature.
    1. In considering this question, the Court of Justice said at [36] that “‘communication to the public’ must be interpreted broadly”. The Court went on:

“40. It should also be pointed out that a communication made in circumstances such as those in the main proceedings constitutes, according to Article 11bis(1)(ii) of the Berne Convention, a communication made by a broadcasting organisation other than the original one. Thus, such a transmission is made to a public different from the public at which the original act of communication of the work is directed, that is, to a new public.

41. As is explained in the Guide to the Berne Convention, an interpretative document drawn up by the WIPO which, without being legally binding, nevertheless assists in interpreting that Convention, when the author authorises the broadcast of his work, he considers only direct users, that is, the owners of reception equipment who, either personally or within their own private or family circles, receive the programme. According to the Guide, if reception is for a larger audience, possibly for profit, a new section of the receiving public hears or sees the work and the communication of the programme via a loudspeaker or analogous instrument no longer constitutes simple reception of the programme itself but is an independent act through which the broadcast work is communicated to a new public. As the Guide makes clear, such public reception falls within the scope of the author’s exclusive authorisation right.

42. The clientele of a hotel forms such a new public. The transmission of the broadcast work to that clientele using television sets is not just a technical means to ensure or improve reception of the original broadcast in the catchment area. On the contrary, the hotel is the organisation which intervenes, in full knowledge of the consequences of its action, to give access to the protected work to its customers. In the absence of that intervention, its customers, although physically within that area, would not, in principle, be able to enjoy the broadcast work.

43. It follows from Art.3(1) of Directive 2001/29 and Art.8 of the WIPO Copyright Treaty that for there to be communication to the public it is sufficient that the work is made available to the public in such a way that the persons forming that public may access it. Therefore, it is not decisive, contrary to the submissions of Rafael and Ireland, that customers who have not switched on the television have not actually had access to the works.

44. Moreover, it is apparent from the documents submitted to the court that the action by the hotel by which it gives access to the broadcast work to its customers must be considered an additional service performed with the aim of obtaining some benefit. It cannot be seriously disputed that the provision of that service has an influence on the hotel’s standing and, therefore, on the price of rooms. Therefore, even taking the view, as does the Commission of the European Communities, that the pursuit of profit is not a necessary condition for the existence of a communication to the public, it is in any event established that the communication is of a profit-making nature in circumstances such as those in the main proceedings.

46. While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal.”

    1. Accordingly the Court ruled as follows:

“While the mere provision of physical facilities does not as such amount to communication within the meaning of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of copyright and related rights in the information society, the distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, constitutes communication to the public within the meaning of Article 3(1) of that directive.”

    1. In Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v Divani Akropolis Anonimi Xenodocheiaki kai Touristiki Etaireia [2010] ECR I-37 the Court of Justice ruled by way of reasoned order that a hotelier who installed television sets in the rooms of its hotel and connected them to a central antenna thereby committed an act of communication to the public within Article 3(1).
    1. In 20C Fox v Newzbin Kitchin J held at [113]-[125] that Newzbin Ltd had communicated the claimants’ films to the public applying the guidance of the Court of Justice in SGAE v Rafael. In particular, he found that Newzbin Ltd had made the films available to the public by electronic transmission in such a way that members of the public might access them from a place and at a time chosen by them within section 20(2)(b) of the 1988 Act.
    1. In Case C-393/09 Bezpecnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury [2010] ECR I-0000 the Court of Justice ruled that television broadcasting of a graphic user interface did not constitute communication to the public within Article 3(1) for reasons connected with the particular character of a graphic user interface.
    1. As noted above and as I shall discuss in more detail below, the amendment to section 20 of the 1988 Act by Regulation 6 of the 2003 Regulations went further than was required by Article 3 of the Information Society Directive. In ITV Broadcasting Ltd v TVCatchup Ltd (No 2) [2011] EWHC 1874 (Pat)[2011] FSR 40 at [49]-[79] Floyd J rejected an argument that the amendment was ultra vires the power to make those Regulations conferred by section 2(2) of the European Communities Act 1972 in so far as it introduced section 20(1)(c). In my judgment his reasoning must apply equally to section 20(1)(b).
    1. In that case the claimant television broadcasters contended that the defendant, which operated an internet-based service for the live streaming of television programmes, had infringed the claimants’ copyrights in their broadcasts and in films included therein. Having considered SGAE v Rafael at [80]-[104], Floyd J’s provisional conclusion was that the defendant had communicated the claimants’ broadcasts and the films included therein to the public, but that the law was not clear and so a question should be referred to the CJEU.
    1. Shortly afterwards the CJEU handed down two judgments in quick succession. The first was Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd v QC Leisure[2011] ECR I-0000. One of the questions which Kitchin J had referred to the Court of Justice in Football Association Premier League Ltd v QC Leisure (No 2) [2008] EWHC 1411 (Ch), [2008] FSR 32 was interpreted by the Court as asking, in essence, whether “communication to the public” within the meaning of Article 3(1) of the Information Society Directive was to be interpreted as covering transmission of broadcast works, via a television screen and speakers, to the customers present in a public house. The Court held that this question was to be answered in the affirmative. Its reasoning, so far as presently relevant, was as follows:

“191. As regards, first, the concept of communication, it is apparent from Article 8(3) of the Related Rights Directive and Articles 2(g) and 15 of the Performance and Phonograms Treaty that such a concept includes ‘making the sounds or representations of sounds fixed in a phonogram audible to the public’ and that it encompasses broadcasting or ‘any communication to the public’.

192.     More specifically, as Article 11bis(1)(iii) of the Berne Convention expressly indicates, that concept encompasses communication by loudspeaker or any other instrument transmitting, by signs, sounds or images, covering – in accordance with the explanatory memorandum accompanying the proposal for a copyright directive (COM(97) 628 final) – a means of communication such as display of the works on a screen.

193.     That being so, and since the European Union legislature has not expressed a different intention as regards the interpretation of that concept in the Copyright Directive, in particular in Article 3 thereof (see paragraph 188 of the present judgment), the concept of communication must be construed broadly, as referring to any transmission of the protected works, irrespective of the technical means or process used.

194. In Case C-403/08, the proprietor of a public house intentionally gives the customers present in that establishment access to a broadcast containing protected works via a television screen and speakers. Without his intervention the customers cannot enjoy the works broadcast, even though they are physically within the broadcast’s catchment area. Thus, the circumstances of such an act prove comparable to those in SGAE.

196.     Accordingly, it must be held that the proprietor of a public house effects a communication when he intentionally transmits broadcast works, via a television screen and speakers, to the customers present in that establishment.

197.     That said, in order for there to be a ‘communication to the public’ within the meaning of Article 3(1) of the Copyright Directive in circumstances such as those of the main proceedings, it is also necessary for the work broadcast to be transmitted to a new public, that is to say, to a public which was not taken into account by the authors of the protected works when they authorised their use by the communication to the original public (see, to this effect, SGAE, paragraphs 40 and 42, and the order of 18 March 2010 in Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38).

198.     When those authors authorise a broadcast of their works, they consider, in principle, only the owners of television sets who, either personally or within their own private or family circles, receive the signal and follow the broadcasts. Where a broadcast work is transmitted, in a place accessible to the public, for an additional public which is permitted by the owner of the television set to hear or see the work, an intentional intervention of that kind must be regarded as an act by which the work in question is communicated to a new public (see, to this effect, SGAE, paragraph 41, and Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 37).

199.     That is so when the works broadcast are transmitted by the proprietor of a public house to the customers present in that establishment, because those customers constitute an additional public which was not considered by the authors when they authorised the broadcasting of their works.”

    1. The second judgment was Joined Cases C-431/09 and C-432/09 Airfield NV v Belgische Vereniging van Auteurs, Compositien en Uitgevers CVBA (SABAM) [2011] ECR I-0000. In that case the CJEU had to consider the meaning of “communication to the public” in Council Directive 93/83/EEC of 27 September on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (“the Satellite Broadcasting Directive”). Airfield was a Belgian satellite television provider which offered to the public a package of channels that could be viewed by means of a satellite decoder. The package included encrypted channels. Customers entered into a subscription agreement with Airfield which provided them with a decoder card enabling them to view the encrypted channels. Airfield concluded a series of agreements with broadcasting organisations, to obtain broadcast television programs for broadcast. Through its technical services provider, Canal, Airfield leased capacity on the Astra Satellite for onward transmission of the signals via the satellite to its customers.
    1. The Court of Justice had to consider what it described as “indirect” as well as “direct” transmission of TV programmes. Under indirect transmission, the broadcasting organisations sent the programmes via a fixed link to Canal, who compressed and scrambled them, sent them to their station in the Netherlands from whence they were beamed, in encrypted form, to the Astra satellite. Under a variation of this indirect method, the broadcasting organisations sent the programmes via satellite to Canal, who again beamed them up in encrypted form. Airfield was authorised by the broadcasting organisations to do all this, and paid the broadcasting organisation a fee dependent on the numbers of subscribers. The direct method of transmission avoided the first link (either the fixed link or the satellite link) between the broadcasting organisation and Canal. The broadcasting organisation transmitted the encrypted programmes directly to the satellite. Airfield and Canal merely provided the key to the broadcasting organisations and to their subscribers so that the programmes were encrypted in a way which their subscribers could decode.
    1. Various collecting societies brought actions in Belgium complaining that Airfield’s activities amounted to a re-broadcast of television programmes already broadcast by the broadcasting organisations, and therefore Airfield could not benefit from the authorisation already granted by the collecting societies to the broadcasting organisations. The Court of Justice interpreted the questions asked by the Belgian court as asking, in essence, whether the Satellite Broadcasting Directive was to be interpreted as requiring a satellite package provider to obtain authorisation from the right holders concerned for a communication to the public of works that was effected in the course of the direct or indirect transmission of television programmes, such as the transmissions at issue in the main proceedings. In answering this question the Court applied its jurisprudence regarding Article 3(1) of the Information Society Directive for reasons which it explained as follows:

“44. First of all, it should be borne in mind that Directive 93/83 is not the only European Union instrument in the field of intellectual property and that, in view of the requirements deriving from the unity and coherence of the legal order of the European Union, the terms used by that directive must be interpreted in the light of the rules and principles established by other directives relating to intellectual property, such as, in particular, Directive 2001/29 (see, by analogy, Case C-271/10 VEWA [2011] ECR I-0000, paragraph 27).

71.       … it is clear from Article 2 of Directive 93/83 that copyright holders must authorise any communication of the protected works to the public by satellite.

72.       Next, it follows from the Court’s case-law that such authorisation must be obtained in particular by a person who triggers such a communication or who intervenes when it is carried out, so that, by means of that communication, he makes the protected works accessible to a new public, that is to say, a public which was not taken into account by the authors of the protected works within the framework of an authorisation given to another person (see, by analogy, with regard to communication to the public within the meaning of Article 3 of Directive 2001/29, Case C-306/05 SGAE [2006] ECR I-11519, paragraphs 40 and 42, and the order of 18 March 2010 in Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38).”

    1. The Court of Justice went on at [77]-[82] to conclude that the satellite package provider expanded the circle of persons having access to the relevant programmes and thereby enabled a new public to have access to the works and other protected subject-matter. The Court also held at [83] that it followed that the satellite package provider was required to obtain authorisation from the right holders concerned. Accordingly it ruled as follows:

“Article 2 of Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission must be interpreted as requiring a satellite package provider to obtain authorisation from the right holders concerned for its intervention in the direct or indirect transmission of television programmes, such as the transmission at issue in the main proceedings, unless the right holders have agreed with the broadcasting organisation concerned that the protected works will also be communicated to the public through that provider, on condition, in the latter situation, that the provider’s intervention does not make those works accessible to a new public.”

    1. Floyd J considered Airfield v SABAM in ITV Broadcasting Ltd v TVCatchup Ltd (No 3) [2011] EWHC 2977 (Pat) at [5]-[24] and concluded as follows:

“23. Whilst the decision in Airfield is consistent with the provisional view which I expressed [in ITV v TVCatchup (No 2)], I am not persuaded that the principle of law engaged in the present case is rendered acte claire by Airfield. The Court’s multi-factorial approach does not make it easy to distil a clear principle as to what amounts to a communication to the public in this context. The extent to which the creation of a new link from the broadcasting organisation to the subscriber is to be equated, without more, with the creation of a ‘new public’ is not clear. It is also not clear whether the subscribers in the present case can be described as ‘unable to enjoy the broadcasts although physically within the catchment area’, given that they are entitled to receive the original broadcast in their own homes and on their laptops without intervention from TVC. Equally it is not clear whether the audience reached by these broadcasts is an audience which is additional to the public targeted by the broadcasting organisation concerned.

24. I therefore intend to refer a question, notwithstanding Airfield. The question I propose to send is as follows:

‘Does the right to authorise or prohibit a “communication to the public of their works by wire or wireless means” in Article 3.1 of the Directive extend to a case where:

(i) Authors authorise the inclusion of their works in a terrestrial free-to-air television broadcast which is intended for reception either throughout the territory of a Member State or within a geographical area within a Member State;

(ii) A third party (i.e. an organisation other than the original broadcaster), provides a service whereby individual subscribers within the intended area of reception of the broadcast who could lawfully receive the broadcast on a television receiver in their own homes may log on to the third party’s server and receive the content of the broadcast by means of an internet stream?

Does it make any difference to the answer to the above question if:

(a) The third party’s server allows only a “one-to-one” connection for each subscriber whereby each individual subscriber establishes his or her own internet connection to the server and every data packet sent by the server onto the internet is addressed to only one individual subscriber?

(b) The third party’s service is funded by advertising which is presented “pre-roll” (i.e. during the period of time after a subscriber logs on but before he or she begins to receive the broadcast content) or “in-skin” (i.e. within the frame of the viewing software which displays the received programme on the subscriber’s viewing device but outside the programme picture) but the original advertisements contained within the broadcast are presented to the subscriber at the point where they are inserted in the programme by the broadcaster?

(c) the intervening organisation is:

(i) providing an alternative service to that of the original broadcaster, thereby acting in competition with the original broadcaster for viewers; or

(ii) acting in competition with the original broadcaster for advertising revenues?'”

    1. In Football Association Premier League Ltd v QC Leisure (No 4) [2012] EWHC 108 (Ch) Kitchin LJ had to consider the application of the Court of Justice’s rulings on the questions he had referred, and in particular the issue of whether the defendants had communicated any of the claimant’s copyright works (in particular the Anthem and the artistic works and films contained in the broadcasts) to the public within section 20 of the 1988. He considered that issue at [4]-[59], and concluded that the defendants had communicated the claimant’s copyright works to the public.
    1. Against this background I can now turn to the present case, which concerns copyright in sound recordings. The first point to note is the difference between Article 3(1) of the Information Society Directive and Article 3(2). Article 3(1) requires Member States to provide “authors” with an 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” etc. By contrast Article 3(2) requires Member States to provide four other categories of right holder with an exclusive right only to authorise or prohibit the “making available to the public” of the relevant subject-matter etc.
    1. It is clear from the jurisprudence of the Court of Justice (see in particular Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 at [32]-[37]) that references to “authors’ works” in the Information Society Directive are to be interpreted as meaning literary and artistic works within the meaning of Article 2 of the Berne Convention, consistently with European Parliament and Council Directive 2006/116/EC of 12 December 2006 on the term of protection of copyright and certain related rights, Article 1(1) of which is explicit in this respect. It is generally accepted that phonograms (i.e. sound recordings) and broadcasts are not literary or artistic works within the meaning of Article 2 of the Berne Convention: see e.g. Ricketson and Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (2nd ed, Oxford University Press, 2007), pp. 505-508, 1205-1208; Goldstein and Hugenholtz,International Copyright: Principles, Law and Practice (2nd ed, Oxford University Press, 2010), pp. 104, 156, 186-189; Ficsor, Guide to the Copyright and Related Rights Treaties Administered by WIPO (WIPO, 2003), p. 27. Instead, phonograms (and performances) are protected under the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations of 1961 (“the Rome Convention”) and the WIPO Performances and Phonograms Treaty and broadcasts are protected under the Rome Convention. This explains the different treatment of authors’ works on the one hand and the other types of subject matter on the other hand in Article 3 of the Information Society Directive.
    1. Care needs to be taken with films. “Cinematographic works” are literary or artistic works within Article 2 of the Berne Convention. What the Information Society Directive and other EU copyright Directives call “first fixations of films” are not. It is frequently overlooked that what the 1988 Act calls a “film” is what the Directives call a “first fixation of a film”. The right conferred by the 1988 Act on “films” is a right in the signal, not a right in the content: see Norowzian v Arks Ltd (No 1) [1999] EMLR 57. Under current UK law, the content of a film (i.e. the cinematographic work or what some other laws call the audiovisual work) is protected as a dramatic work: see Norowzian v Arks Ltd (No 2) [2000] EMLR 67. Both under the Directives and under the 1988 Act, the rights in the cinematographic work (dramatic work) and in the first fixation (“film”) are distinct, although they may be owned by the same person (as to which, see generally the recent judgment of the CJEU in Case C-277/10 Luksan v van der Let [2012] ECR I-0000).
    1. It follows that the Information Society Directive required the UK to grant the Article 3(1) right of communication to the public to dramatic works embodied in “films” and to grant the Article 3(2) right of making available to “films” within the meaning of the 1988 Act. In fact the 2003 Regulations went further and extended the Article 3(1) right to “films”. Similarly, the Information Society Directive only required the UK to grant the Article 3(2) right of making available to sound recordings and broadcasts, but the 2003 Regulations went further and extended the Article 3(1) right of communication to the public. As noted above, Floyd J has held that this was permissible in the case of broadcasts and his reasoning is equally applicable to sound recordings and films.
    1. The result, as both Floyd J in ITV v TVCatchup and Kitchin LJ in FA v QC Leisure recognised, is that the CJEU’s jurisprudence with regard with Article 3(1) of the Information Society Directive is applicable to section 20(1)(b) and (c) as well as section 20(1)(a) of the 1988 Act.
    1. Although Floyd J held in ITV v TVCatchup that it was not clear how the test laid down by the CJEU to determine whether a work has been communicated to the public within Article 3(1) was to be applied in the circumstances of that case, I consider that there is no difficulty in applying it to the facts of this case.
    1. Before doing so, however, I must revert to Football Dataco v Sportradar. In that case the Court of Appeal referred questions to the Court of Justice concerning the interpretation of Article 7(2)(b) of European Parliament and Council Directive of 11 March 1996 on the legal protection of databases, and in particular the words “any form of making available to the public … by online or other forms of transmission”. In essence, the questions referred ask whether the transmission occurs in the location from where the data is transmitted (the “emission theory”) or in the location where it is received (the “transmission theory”). Although the questions referred do not concern Article 3(1) of the Information Society Directive, the Claimants accept that it is not entirely clear from the CJEU’s existing jurisprudence under Article 3(1) whether communication to public in Article 3(1) occurs where the communication originates or where it is received (or perhaps both). This matters so far as any claim against the operators of TPB under section 20 is concerned, because TPB’s servers are located outside the United Kingdom.
    1. Counsel for the Claimants submitted that this issue does not matter for present purposes. For the purpose of their claim that users of TPB infringe under section 20, the Claimants focus upon users who allow copies of the sound recordings on their computers to be uploaded to the “swarm”. Since it is clear from the evidence that UK users are involved as both uploaders and downloaders, it is immaterial whether the act of communication to the public is committed at the place of origination or the place of reception. I accept this submission.
    1. I turn, therefore, to consider whether such users thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). In any event, however, it is clear from the CJEU’s judgment in FA v QC Leisure at [193] that the concept of communication must be construed broadly.
    1. Secondly, do they communicate the recordings to a new public, that is to say a public which was not taken into account by the right holders when authorising the distribution of the recordings, applying the test laid down by the CJEU in SGAE v Rafael, FA v QC Leisure and Airfield v SABAM? In my judgment they do, since copies of the sound recordings are made available to users who have not purchased them from an authorised source.
    1. Accordingly, I conclude that UK users of TPB infringe the Claimants’ copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].

Infringement by the operators of TPB

    1. The Claimants contend that the operators of TPB are liable for infringement of their copyrights on two bases. First, on the basis that the operators have committed the tort of authorising infringements by UK users. Secondly, on the basis that the operators are jointly liable for infringements by UK users (i.e. liable as accessories).

Authorisation

    1. The law with regard to authorisation was considered by Kitchin J in 20C Fox v Newzbin at [85]-[95]. At [89] he cited a passage from the speech of Lord Templeman in CBS Songs Ltd v Amstrad Consumer Electronics plc [1988] 1 AC 1013 at 1053-1055 in which Lord Templeman approved the definition of “to authorise” given by Atkin LJ in Monckton v Pathe Freres Pathephone Ltd [1914] 1 KB 395 at 499, namely “to grant or purport to grant to a third person the right to do the act complained of”. Kitchin J continued at [90]:

“In my judgment it is clear from this passage that ‘authorise’ means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances.”

He went on at [98]-[102] to conclude on the fact of that case that Newzbin Ltd had indeed authorised infringements of the claimants’ copyrights by its premium members.

    1. I shall consider each of the factors identified by Kitchin J in turn.
    1. The nature of the relationship. TPB provides a sophisticated and user-friendly environment in which its users are able to search for and locate content. John Hodge, BPI’s Head of Internet Investigations, describes in his witness statement how the website is organised and the functions that are available to users. As he explains:

i) TPB indexes and arranges torrent files so that users can choose between various different search facilities to assist them in browsing for content to download or in locating specific content or categories of content.

ii) When uploading a torrent file, users are required to provide detailed information about it. This information provides TPB with the ability to index it and make it available for searching. It also assists users in deciding whether or not to download it.

iii) TPB does not merely receive the upload of the torrent file, it processes it. For example, TPB deletes any tracker server that may have been nominated by the uploader in the torrent file and replaces it with tracker servers of TPB’s choosing.

iv) Users are provided with assistance and advice as to how to download from the site and as to the trustworthiness of particular torrents. Status badges are awarded to uploaders to provide an indication of number and popularity of their uploads.

v) Users are also provided with assistance and advice as to how to circumvent blocking measures taken as a result of court orders.

vi) Users are offered links to “cyberlocker” storage facilities for downloaded material.

vii) Registered users are able to set preferences which allow them to choose what material can be downloaded and how information is displayed on the website.

viii) TPB provides a forum for users to share information about content and even to ask other users to upload particular content which might not currently be available.

ix) Users are offered a choice of 35 different languages to facilitate and encourage the widest possible participation in the use of its services by those engaged in P2P file-sharing.

    1. These features are plainly designed to afford to users of TPB the easiest and most comprehensive service possible. TPB is in no sense a passive repository of torrent files. It goes to great lengths to facilitate and promote the download of torrent files by its users.
    1. The means used to infringe. The torrent files which are so conveniently indexed, arranged and presented by TPB constitute precisely the means necessary for users to infringe. It is the torrent files which provide the means by which users are able to download the “pieces” of the content files and/or to make them available to others.
    1. Inevitability of infringement. Infringement is not merely an inevitable consequence of the provision of torrent files by TPB. It is the operators of TPB’s objective and intention. That is clear from the following:

i) Its name – The Pirate Bay – and associated pirate ship logo are clearly a reference to the popular terminology applied to online copyright infringement: online piracy.

ii) According to a statement published on its site, it was founded by a “Swedish anti copyright organisation”.

iii) The matters described in paragraph 13 above.

iv) In the first instance judgment in the Swedish criminal proceedings, Lundström was recorded as stating that “the purpose of the site was pirate copying”.

v) It is also evident from the numerous proceedings in other European jurisdictions that the operators of TPB are well aware that it is engaged in copyright infringement. Injunctions and other orders against the operators of TPB have been ignored. Orders against TPB’s hosting service providers have been circumvented by moving TPB to new providers.

    1. Degree of control. TPB would be able to prevent infringement of copyright, should its operators so wish. As the website makes clear, torrents can be removed. They will be removed if “the name isn’t in accordance with the content” or if they are “child porn, fakes, malware, spam and miscategorised torrents”. As a matter of policy, however, the rights of copyright owners are excluded from the criteria by which the operators of TPB choose to exercise this power.
    1. Steps to prevent infringement, Despite their ability to do so and despite the judicial findings that have been made against them, the operators of TPB take no steps to prevent infringement. On the contrary, as already explained, they actively encourage it and treat any attempts to prevent it (judicial or otherwise) with contempt. Indeed, according to a statement on the website, the reason for its recent adoption of Magnet links as the default option is that “it’s not as easy to block as .torrent files”. This confirms the operators’ determination to do whatever they can to provide users with unrestricted access to torrent files and thereby enable the users to continue to infringe. As noted above, BPI has asked TPB to cease infringing its members’ and PPL’s members’ copyrights, but this request has been ignored.
    1. Conclusion. In my judgment, the operators of TPB do authorise its users’ infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting. On any view, they “sanction, approve and countenance” the infringements of copyright committed by its users. But in my view they also purport to grant users the right to do the acts complained of. It is no defence that they openly defy the rights of the copyright owners. I would add that I consider the present case to be indistinguishable from 20C Fox v Newzbin in this respect. If anything, it is a stronger case.

Joint tortfeasance

    1. Kitchin J considered the law with regard to joint tortfeasance in 20C Fox v Newzbin at [103]-[111]. He concluded as follows:

“108. I derive from these passages that mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act.

109. All of these cases were referred to in the recent decision of Arnold J in L’Oréal v eBay [2009] EWHC 1094[2009] RPC 21. In this action L’Oréal advanced a number of claims arising from the sale through the eBay online marketplace of goods bearing L’Oréal’s trade marks. One of the issues which arose was whether eBay was liable for trade mark infringement as a joint tortfeasor with the sellers of such goods. Arnold J rejected this claim on the facts, essentially because eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable.

110. I must now apply these principles to the facts of this case. In doing so I recognise at the outset that the claimants are not able to point to specific acts of infringement by particular infringers which the defendant may be said to have procured. However, I do not understand Lord Templeman’s speech in Amstrad to preclude a finding of liability in such a case. Clearly it is one of the matters to be taken into account and absent the identification of such specific acts a finding of procurement would not in general be appropriate. Nevertheless, the question to be answered remains the same, namely whether the defendant has engaged in a common design by so involving himself in the infringement as to make it his own; or whether the defendant has procured an infringement by inducement, incitement or persuasion.”

Again he concluded on the facts of the case that Newzbin Ltd had procured and engaged in common design with its premium members to infringe the claimants’ copyrights.

    1. In the present case, 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. It is also relevant in this regard that the operators profit from their activities. Thus they are jointly liable for the infringements committed by users.

Conclusion

  1. For the reasons set out above, I conclude that both users and the operators of TPB infringe the copyrights of the Claimants (and those they represent) in the UK.

Godfrey v. Demon Internet Limited [1999] EWHC QB 244 (26th March, 1999)

Case No: 1998-G-No 30

IN THE HIGH COURT OF JUSTICE
QUEEN’S BENCH DIVISION
(Handed Down at Leicester Crown Court)

Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 26th March 1999

B e f o r e :

THE HON MR JUSTICE MORLAND

Laurence Godfrey

Plaintiff

– and –

Demon Internet Limited

Defendant

– – – – – – – – – – – – – – – – – – – – –

Mr Justin Rushbrooke (instructed by Bindman & Partners for the Plaintiff)
Mr Manuel Barca 
(instructed by Messers Olswang for the Defendants)

– – – – – – – – – – – – – – – – – – – – –

“Approved by the Court for handing down (Subject to editorial corrections)”

This Judgment may be posted on the Court Service Website.

. . . . . . . . . . . . . . . . . . . . . . . . .

(The Hon. Mr Justice Morland)

Mr Justice Morland:

JUDGMENT.

  1. According to Counsel this is the first defamation action involving the Internet to come up for judicial decision within this jurisdiction. However I had number of American cases cited before me. The United States was in forefront of the early development of the Internet. Care has to be taken before American cases are applied in English defamation cases. The impact of the First Amendment has resulted in a substantial divergence of approach between American and English defamation law. For example in innocent dissemination cases in English law the Defendant publisher has to establish his innocence whereas in American law the Plaintiff who has been libelled has to prove that the publisher was not innocent. Nevertheless the American decisions are educative and instructive as to the workings of the Internet and the problems which arise when defamatory material finds its way onto the Internet.
  2. The Plaintiff by his summons (pages 40 and 41 of the Court Bundle) seeks to strike-out parts of the Defence as disclosing no sustainable defence. In short the Defendants’ contention is that they were not at common-law the publishers of the Internet posting defamatory of the Plaintiff and that even if they were there is material upon which they can avail themselves of the defence provided by Section 1 of the Defamation Act 1996, “a modern equivalent of the common law defence of innocent dissemination” (See per Lord Mackay L.C. Hansard. 2nd April 1996. Col 214 Defamation Bill (H.L.)).

THE FACTUAL BACKGROUND

  1. The Plaintiff is a lecturer in physics, mathematics and computer science resident in England.
  2. The Defendant is an Internet Service Provider (I.S.P.) carrying on a business in England and Wales.
  3. The Internet is a world wide computer network. Three facilities (amongst others) are provided via the Internet: email, the World Wide Web and Usenet. This case is primarily concerned with Usenet.
  4. Email is normally electronic mailing of a message from one sender to one recipient. The sender makes a connection to his own local ISP to whom he transmits his Email message. The sender’s ISP transmits the message via the Internet to the recipient’s ISP. At the recipient’s request his local ISP sends the message to the recipient.
  5. The World Wide Web provides a facility for one to many publication. “Web Pages” are held at a particular site (usually operated by an ISP) in such a way that they can be accessed by Internet users world wide. The creator of Web pages sends them to his local ISP who stores them. An Internet user can access and download copies of the pages by connecting to his own local ISP and requesting transmission of those pages via the Internet.
  6. Usenet is one to many publication from author to readers round the world. An article (known as a posting) is submitted by its author to the Usenet news-server based at his own local ISP (the originating ISP) who disseminates via the Internet the posting. Ultimately it is distributed and stored on the news-servers of every (or nearly every) ISP in the world that offers Usenet facilities to its customers. Internet users world wide can read and download the posting by connecting to their local ISP’s news-servers.
  7. “Usenet News” is the name given to the system by which postings are sent by Internet users to forums know as “Newsgroups”. A posting is readable anywhere in the world by an Internet user whose own ISP offer access to the Newsgroup in question. Newsgroups are organised into broad subject areas known as “Hierarchies”. One such hierarchy is the “SOC” hierarchy which contains Newsgroups in which social issues are discussed for example the Newsgroups “soc.culture.thai” and “soc.culture.british”.
  8. Postings on Newsgroups can be read by the customers of a particular ISP by accessing that ISP’s “news server”. In reading a Usenet posting an Internet user requests the posting from the ISP’s news server and a copy of the posting is then transmitted by the news server to the user’s computer where it can be held in the user’s computer for as long as he wishes. A posting may originate from anywhere in the world entering the Internet through the author’s own ISP and follow a “path” through a succession of news servers before eventually reaching a particular reader.
  9. The Defendant ISP carries the Newsgroup “soc culture thai” and stores postings within that hierarchy for about a fortnight during which time the posting is available to be read by its customers.
  10. On the 13th January 1997 someone unknown made a posting in the U.S.A. in the Newsgroup “soc.culture.thai”. The posting followed a path from its originating American ISP to the Defendants’ news server in England. This posting was squalid, obscene and defamatory of the Plaintiff. It is set out in Tab 1 page 1 of the Court Bundle. It purports to come from the Plaintiff although “Lawrence” is misspelt with a “W”. It invites replies by giving the Plaintiff’s Email address. It was a forgery.
  11. On the 17th January 1997 the Plaintiff sent a letter by “fax” to Mr Stanford, the Defendant’s Managing Director, informing him that the posting was a forgery, and that he was not responsible for it and requesting that the Defendants remove the posting from its Usenet news server.
  12. Although denying that Mr Stanford personally received the fax, the Defendants admit its receipt and that the posting was not removed as requested but remained available on its news-server until its expiry on about the 27th January 1997. There is no dispute that the Defendants could have obliterated the posting from its news-server after receiving the Plaintiff’s request.
  13. As is clear from the prayer for relief in the Statement of Claim the Plaintiff only claims damages for libel in respect of the posting after the 17th January 1997 when the Defendants had knowledge it was defamatory.

THE LAW.

  1. The governing statute is the Defamation Act 1996Section 1 is headed “Responsibility for Publication”.
  2. The relevant words are as follows:-

“1(1) In defamation proceedings a person has a defence if he shows that-

(a) he was not the author, editor or publisher of the statement complained of,

(b) he took reasonable care in relation to its publication, and

(c) he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.”

  1. It should be noted that for the defence to succeed (a) and (b) and (c) have to be established by the Defendant.

“1(2) For this purpose…….”publisher” have the following meanings, which are further explained in sub-section (3)

“………”publisher” means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business.”

“1(3) A person shall not be considered the author, editor or publisher of a statement if he is only involved-

(a) in printing, producing, distributing or selling printed material containing the statement;

(c) in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form;

(e) as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.

In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement.”

“1(5) In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to-

(a) the extent of his responsibility for the content of the statement or the decision to publish it,

(b) the nature or circumstances of the publication, and

(c) the previous conduct or character of the author, editor or publisher.”

  1. In my judgment the Defendants were clearly not the publisher of the posting defamatory of the Plaintiff within the meaning of Section 1(2) and 1(3) and incontrovertibly can avail themselves of Section 1(1)(a).

  • However the difficulty facing the Defendants is Section 1(1)(b) and 1(1)(c). After the 17th January 1997 after receipt of the Plaintiff’s fax the Defendants knew of the defamatory posting but chose not to remove it from their Usenet news servers. In my judgment this places the Defendants in an insuperable difficulty so that they cannot avail themselves of the defence provided by Section 1.

 

  • I am fortified in this conclusion by the contents of the Consultation Document issued by the Lord Chancellor’s Department in July 1995 and the words of Lord Mackay L.C. during debate on the Defamation Bill on the 2nd April 1996 (see Hansard Col. 214).

 

  • In the Consultation Document it is said:-

    “2.4 The defence of innocent dissemination has never provided an absolute immunity for distributors, however mechanical their contribution. It does not protect those who knew that the material they were handling was defamatory, or who ought to have known of its nature. Those safeguards are preserved, so that the defence is not available to a defendant who knew that his act involved or contributed to publication defamatory of the plaintiff. It is available only if, having taken all reasonable care, the defendant had no reason to suspect that his act had that effect. Sub-sections (5) and (6) describe factors which will be taken into account in determining whether the defendant took all reasonable care.

2.5 Although it has been suggested that the defence should always apply unless the plaintiff is able to show that the defendant did indeed have the disqualifying knowledge or cause for suspicion, only the defendant knows exactly what care he has taken. Accordingly, as in most defences, it is for the defendant to show that the defence applies to him.”

  1. Lord Mackay L.C. said in moving rejection of an amendment of Lord Lester of Herne Hill:-

“Clause 1 is intended to provide a defence for those who have unwittingly provided a conduit which has enabled another person to publish defamatory material. It is intended to provide a modern equivalent of the common law defence of innocent dissemination, recognising that there may be circumstances in which the unwitting contributor to the process of publication may have had no idea of the defamatory nature of the material he has handled or processed.”

“The amendment proposed by the noble Lord would, in effect, create an entirely new defence. It would give a defence to a person who was indeed aware, or on notice that he was contributing to a defamatory publication, but nevertheless chose to do so.”……….

“It is imperative that we do not lose sight of the effect on plaintiffs of giving a defence to those who have in fact been instrumental in bringing material which has defamed the plaintiff to its audience”. ………

“But in my submission it would not be right to deprive a plaintiff of his cause of action against a defendant who was aware that he might be wronging the plaintiff and misjudged the plaintiff’s chances of succeeding in a defamation action”

  1. Mr Barca, for the Defendants, submitted that at Common Law the Defendants did not publish the defamatory posting and there was no publication.
  2. Section 17 of the 1996 Act reads:-

“Publication” and “publish”, in relation to a statement, have the meaning they have for the purposes of the law of defamation generally, but “publisher” is specially defined for the purposes of section 1.”

  1. At Common Law liability for the publication of defamatory material was strict. There was still publication even if the publisher was ignorant of the defamatory material within the document. Once publication was established the publisher was guilty of publishing the libel unless he could establish, and the onus was upon him, that he was an innocent disseminator.
  2. An early example of the application of this principle is Day .v. Bream (1837) 2 Moody and Robinson 54.
  3. The facts were:-

“The libel complained of was a printed handbill, containing imputations on the plaintiff clearly libellous. The plaintiff lived at Marlborough; the defendant was the porter of the coach-office at that place, and it was his business to carry out and deliver the parcels that came by the different coaches to the office. For the plaintiff it was shewn that the defendant had delivered on the same day papers parcels, tied up, and containing a large quantity of the handbills in question, to two or three inhabitants of the place, to whom the parcels were directed”

  1. Patteson J., a great master of Common Law,

“in summing up, left it to the jury to say whether the defendant delivered the parcels in the course of his business without any knowledge of their contents; if so, find for him, observing, thatprima facie he was answerable, inasmuch as he had in fact delivered and put into publication the libel complained of, and was therefore called upon to shew his ignorance of the contents.”

  1. In Pullman .v. Hill & Co [1891] 1.Q.B. 524 Lord Esher M.R. said at page 527:-

    “The first question is, assuming the letter to contain defamatory matter, there has been a publication of it. What is the meaning of “publication”? The making known the defamatory matter after it has been written to some person other than the person of whom it is written”

    “If the writer of a letter shews it to his own clerk in order that the clerk may copy it for him, is that a publication of the letter? Certainly it is shewing it to a third person; the writer cannot say to the person to whom the letter is addressed, “I have shewn it to you and to no one else”. I cannot, therefore, feel any doubt that, if the writer of a letter shews it to any person other than the person to whom it is written, he publishes it. If he wishes not to publish it, he must, so far as he possibly can, keep it to himself, or he must send it himself straight to the person to whom it is written. There was therefore, in this case a publication to the type-writer”

  2. The principle in Day .v. Bream was applied by the Court of Appeal in Emmens .v. Pottle (1885) 16 QBD 354 where Lord Esher M.R. said at page 357

    “But the defendants did not compose the libel on the plaintiff, they did not write it or print it; they only disseminated that which contained the libel. The question is whether, as such disseminators, they published the libel? If they had known what was in the paper, whether they were paid for circulating it or not, they would have published the libel, and would have been liable for so doing. That, I think, cannot be doubted. But here, upon the findings of the jury, we must take it that the defendants did not know that the paper contained a libel.”

  3. In the Golf Club notice board case Byrne .v. Deane [1937] 1K.B. 818 Greene L.J. said at page 837:-

    “Now on the substantial question of publication, publication, of course, is a question of fact, and it must depend on the circumstances in each case whether or not publication has taken place. It is said that as a general proposition where the act of the person alleged to have published a libel has not been any positive act, but has merely been the refraining from doing some act, he cannot be guilty of publication. I am quite unable to accept any such general proposition. It may very well be that in some circumstances a person, by refraining from removing or obliterating the defamatory matter, is not committing any publication at all. In other circumstances he may be doing so. The test it appears to me is this: having regard to all the facts of the case is the proper inference that by not removing the defamatory matter the defendant really made himself responsible for its continued presence in the place where it had been put?”

  4. In my judgment the Defendants, whenever they transmit and whenever there is transmitted from the storage of their news server a defamatory posting, publish that posting to any subscriber to their ISP who accesses the newsgroup containing that posting. Thus everytime one of the Defendants’ customers accesses “soc culture thai” and sees that posting defamatory of the Plaintiff there is a publication to that customer.
  5. The situation is analogous to that of the bookseller who sells a book defamatory of the Plaintiff (see Weldon .v. “The Times” Book Co. Ltd (1911) 28 T.L.R. 143 the case about the books on Gounod), to that of the circulating library who provided books to subscribers (see Vizetelly .v. Mudie’s Select Library [1900] 2 Q.B. 170, the case about the book on Stanley’s search for Emir Pasha in Africa) (see in particular the judgment of Romer L.J. pages 178-181) and to that of distributors (see Bottomley .v. F.W. Woolworth [1932] 48 T.L.R.530, the case about “The detective story magazine” containing the article “Swindlers and Scoundrels. Horatio Bottomley, Editor and Embezzler.”) and (See Sun Life Assurance .v. W.H. Smith (1934) 150 L.T. 211, the case about newspaper posters announcing “More grave Sun Life of Canada Disclosures”).
  6. I do not accept Mr Barca’s argument that the Defendants were merely owners of an electronic device through which postings were transmitted. The Defendants chose to store “soc.culture.thai” postings within their computers. Such postings could be accessed on that newsgroup. The Defendants could obliterate and indeed did so about a fortnight after receipt.

THE AMERICAN AUTHORITIES

  1. In deference to the researches of Mr Barca I refer to them but only shortly because I found them of only marginal assistance because of the different approach to defamation across the Atlantic.
  2. Mr Barca prayed in aid Anderson .v. New York Telephone Co. [1974] 35 N.Y. 2d 746 where the New York Court of Appeals held there was no publication by the telephone company in the following circumstances. The Plaintiff was a Bishop. One Jackson broadcast on radio urging his listeners to ring two telephone numbers

“A person calling these numbers would hear accusations against plaintiff involving him in all sorts of scurrilous activities not the least of which was illegitimately fathering children by women and girls in the church.

Jackson’s telephones were attached to equipment leased to Jackson by the defendant. This equipment contained the recorded messages which would automatically play upon activation of the telephone by a caller”

  1. Gabrielli J. said

“The telephone company’s role is merely passive and no different from any company which leases equipment to another for the latter’s use”

“In order to be deemed to have published a libel a defendant must have had a direct hand in disseminating the material whether authored by another or not”

“It could not be said, for example, that International Business Machines, Inc, even if it had notice, would be liable were one of its leased typewriters used to publish a libel. Neither would it be said that the Xerox Corporation, even if it had notice, could be held responsible were one of its leased photocopy machines used to multiply a libel many times”

  1. In my Judgment Anderson does not assist the Defendants who in the present case did not play a merely passive role. They chose to receive the “soc.culture.thai” postings to store them, to make them available to accessors and to obliterate them.
  2. Mr Barca referred me to Cubby .v. CompuServe 776 F.Supp. 135 (S.D.N.Y. 1991) which illustrates clearly the difference in approach between New York and England.
  3. The headnote reads:-

“Action was brought against computer service company for its alleged libel, business disparagement, and unfair competition. On company’s motion for summary judgment, the District Court, Leisure, J., held that: (1) computer service company that provided its subscribers with access to electronic library of news publications put together by independent third party and loaded onto company’s computer banks was mere “distributor” of information, which could not be held liable for defamatory statements made in news publications absent showing that it knew or had reason to know of defamation.”

  1. Leisure D.J. said:-

“CompuServe develops and provides computer-related products and services, including CompuServe Information Service (“CIS”), an on-line general information service or “electronic library” that subscribers may access from a personal computer or terminal. Subscribers to CIS pay a membership fee and on-line time usage fees, in return for which they have access to the thousands of information sources available on CIS. Subscribers may also obtain access to over 150 special interest “forums” which are comprised of electronic bulletin boards, interactive on-line conferences, and topical databases.

One forum available is the Journalism Forum, which focuses on the journalism industry. Cameron Communications, Inc. (“CCI”), which is independent of CompuServe, has contracted to “manage, review, create, delete, edit and otherwise control the contents” of the Journalism Forum “in accordance with editorial and technical standards and conventions of style as established by CompuServe”

“New York courts have long held that vendors and distributors of defamatory publications are not liable if they neither know nor have reason to know of the defamation”

“The requirement that a distributor must have knowledge of the contents of a publication before liability can be imposed for distributing that publication is deeply rooted in the First Amendment, made applicable to the states through the Fourteenth Amendment”

“CompuServe’s CIS product is in essence an electronic, for profit library that carries a vast number of publications and collects usage and membership fees from its subscribers in return for access to the publications. CompuServe and companies like it are at the forefront of the information industry revolution. High technology has markedly increased the speed with which information is gathered and processed: it is now possible for an individual with a personal computer, modem, and telephone line to have instantaneous access to thousands of news publications from across the world. While CompuServe may decline to carry a given publication altogether, in reality, once it does decide to carry a publication, it will have little or no editorial control over that publication’s contents. This is especially so when CompuServe carries the publication as part of a forum that is managed by a company unrelated to CompuServe”

“CompuServe has no more editorial control over such a publication than does a public library, book store, or newstand, and it would be no more feasible for CompuServe to examine every publication it carries for potentially defamatory statements than it would be for any other distributor to do so. “First Amendment guarantees have long been recognised as protecting distributors or publications….Obviously, the national distributor of hundreds of periodicals has no duty to monitor each issue of every periodical it distributes. Such a rule would be an impermissible burden on the First Amendment””

“Technology is rapidly transforming the information industry. A computerised database is the functional equivalent of a more traditional news vendor, and the inconsistent application of a lower standard of liability to an electronic news distributor such as CompuServe than that which is applied to a public library, book store, or newstand would impose an undue burden on the free flow of information. Given the relevant First Amendment considerations, the appropriate standard of liability to be applied to CompuServe is whether it knew or had reason to know of the allegedly defamatory Rumorville statements”

  1. Cubby was followed in Stratton Oakmont .v. Progidy [1995] N.Y. Misc. Lexis 229;23 Media L. Rep 1794, where Ain.J. said:-

    “A computerised database is the functional equivalent of a more traditional news vendor, and the inconsistent application of a lower standard of liability to an electronic news distributor such as CompuServe than that which is applied to a public library, book store, or newstand would impose an undue burden [*10] on the free flow of information.”

    “That such control is not complete and is enforced both as early as the notes arrive and as late as a complaint is made, does not minimise or eviscerate the simple fact that PRODIGY has uniquely arrogated to itself the role of determining what is proper for its members to post and read on its bulletin boards. Based on the foregoing, this Court is compelled to conclude that for the purposes of plaintiffs’ claims in this action, PRODIGY is a publisher rather than a [*11] distributor”

    “Let it be clear that this Court is in full agreement with Cubby and Auvil. Computer bulletin boards should generally be regarded in the same context as book-stores, libraries and network affiliates”

    “It is Prodigy’s own policies, technology and staffing decisions which have altered the scenario and mandated the finding that it is a publisher”

  2. Zeran .v. America Online [1997] 129 F3d 327 illustrates how far the United States by statute has sought to protect Internet providers. Wilkinson C.J. said:-

    “Section 230 creates a federal immunity to any cause of action that would make service providers liable for information originating with a third-party user of the service. Specifically, Section 230 precludes courts from entertaining claims that would place a computer service provider in a publisher’s role. Thus, lawsuits seeking to hold a service providers liable for its exercise of a publisher’s traditional editorial functions — such as deciding whether to publish, withdraw, postpone or alter content — are barred”

    “None of this means, of course, that the original culpable party who posts defamatory messages would escape accountability. While Congress acted to keep government regulation of the Internet to a minimum, it also found it to be the policy of the United States “to ensure vigorous enforcement of Federal criminal laws to deter and punish trafficking in obscenity, stalking, and harassment by means of computer”. Congress made a policy choice, however, not to deter harmful on-line speech through the separate route of imposing tort liability on companies that serve as intermediaries for other parties’ potentially injurious messages”

  3. In my judgment the English 1996 Act did not adopt this approach or have this purpose.
  4. Lunney .v. Progidy Services [1998] WL 999836 (NYAD 2 Dept) has factual similarity to the present case.
  5. Bracken J.P. stated the facts:-

“Some infantile practical joker with access to a computer sent an offensive electronic message (hereinafter email) to a Boy Scout leader, infusing the text of the message with threats more likely to perplex than actually to intimidate an adult recipient. The intended victim of this prank appears to be less the Boy Scout leader himself than the plaintiff, Alex G. Lunney, who was then a 15 year old prospective Eagle Scout, and whose name appeared as the signatory and author of the e-mail message in question. The charade was, as they say, crude but effective, in that the plaintiff was initially suspected of having sent the threatening piece of electronic correspondence”

In his amended complaint, the plaintiff expanded his factual allegations in order to encompass two “bulletin board” messages posted with the help of Prodigy’s service.”

  1. Bracken J.P. said

“We conclude that Prodigy cannot be held legally responsible for it, nor for the allegedly defamatory bulletin board postings, because (1) Prodigy did not publish the statement, and (2) even if Prodigy could be considered a publisher of the statement, a qualified privilege protects it from any liability given the absence of proof that Prodigy knew such a statement would be false”

“our application of the common-law qualified privilege recognised in Anderson also renders the outcome in this case in complete harmony with current Federal statutory law contained in the Communications Decency Act (47 USC Section 230 et seq”)

  1. In my judgement at English Common Law Progidy would clearly have been the publisher of the practical joker’s message and therefore Lunney does not assist the Defendants.

CONCLUSION

  1. In my judgment the defamatory posting was published by the Defendants and, as from the 17th January 1997 they knew of the defamatory content of the posting, they cannot avail themselves of the protection provided by Section 1 of the Defamation Act 1996 and their defence under Section 1 is in law hopeless. Therefore the Plaintiff’s summons to strike-out succeeds.
  2. With regard to the Defendants’ application to amend the Defence I make no definitive ruling but indicate that it is likely to succeed.
  3. It may also be helpful to suggest that on the basis of the proposed Amended Defence any award of damages to the Plaintiff is likely to be very small.
Neutral Citation Number: [2011] EWHC 1981 (Ch)
Case No: HC10C04385

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Royal Courts of Justice
Strand, London, WC2A 2LL
28 July 2011

B e f o r e :

THE HON MR JUSTICE ARNOLD
____________________

Between:

(1) TWENTIETH CENTURY FOX FILM CORPORATION
(2) UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP
(3) WARNER BROS. ENTERTAINMENT INC
(4) PARAMOUNT PICTURES CORPORATION
(5) DISNEY ENTERPRISES, INC.
(6) COLUMBIA PICTURES INDUSTRIES, INC.
Applicants
– and –

BRITISH TELECOMMUNICATIONS PLC
Respondent

____________________

Richard Spearman QC and Adrian Speck (instructed by Wiggin LLP) for the Applicants
Antony White QC and Roger Wyand QC (instructed by BT Legal) for the Respondent
Hearing dates: 28-29 June 2011

Further written submissions: 15, 19 July 2011 
____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

MR JUSTICE ARNOLD :

 

Contents

Topic Paragraphs
Introduction 1-4
Procedure 5-10
The order sought 11-13
The expert evidence 14-17
Factual background 18-74
       The problem of online copyright infringement 19-22
       Solutions to the problem 23-24
       Newzbin1 25-44
       Events following the judgment 45-47
       Newzbin2 48-58
       BT’s services 59-63
       Other NZB sites 64
       The IWF’s blocking system 65-69
       Cleanfeed 70-74
The legal context 75-91
       The Human Rights Act 1998 76
       The Convention rights 77-78
       E-Commerce Directive 79-82
       Domestic implementation of the E-Commerce Directive 83
       Information Society Directive 84-85
       Domestic Implementation of the Information Society Directive 86
       The Enforcement Directive 87-90
       Domestic implantation of the Enforcement Directive 91
Relevant principles of interpretation 92-95
       Interpretation of domestic legislation in the context of European directives 93
       Interpretation of European directives 94-95
Other European cases 96-97
Jurisdiction 98-177
      1. No use of BT’s service to infringe copyright 99-113
              Users 100-108
              Operators 109-113
       2. No actual knowledge 114-158
              What must the service provider have “actual knowledge” of? 116-148
              In what manner may a service provider be given “actual knowledge”? 149
              What is the scope of the injunction that may be granted? 150-156
              The present case 157-158
       3. Contrary to Article 12(1) of the E-Commerce Directive 159-160
       4. Contrary to Article 15(1) of the E-Commerce Directive 161-162
       5. Contrary to Article 10 ECHR 163-177
Discretion 178-201
       1. The Studios are not interested in the whole of the Newzbin2 website 179-186
       2. Exposure to multiple claims 187-191
       3. Efficacy 192-198
       4. Proportionality 199-201
A reference to the Court of Justice? 202-203
Conclusion 204

 

Introduction

    1. This case is about the legal remedies that can be obtained to combat online copyright infringement. The Applicants (“the Studios”) are six well-known film production companies or studios that carry on business in the production and distribution of films and television programmes. The Studios are members of the Motion Picture Association of America Inc, and they bring this application in a representative capacity on behalf of all group companies of the Studios that are owners or exclusive licensees of copyrights in films and television programmes. The Respondent (“BT”) is the largest internet service provider (“ISP”) in the United Kingdom. By this application the Studios seek an injunction against BT pursuant to section 97A of the Copyright, Designs and Patents Act 1988 (“CDPA 1988”). I will set out the precise terms of the order sought below, but in essence it is intended to block or at least impede access by BT’s subscribers to a website currently located at http://www.newzbin.com (“the Newzbin2 website” or just “Newzbin2”). The Studios have made it clear that this is a test case: if they are successful in obtaining an order against BT, then they intend to seek similar orders against all the other significant ISPs in the UK. The other ISPs were informed of the present application in case they wished to intervene, but have not done so.

 

    1. The application is a sequel to a successful claim for copyright infringement brought by the Studios against Newzbin Ltd, which formerly operated an almost identical website located at the same uniform resource locator or URL (“the Newzbin1 website” or just “Newzbin1”). As explained in more detail below, Newzbin Ltd was found by Kitchin J to have infringed the Studios’ copyrights on a large scale: Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch)[2010] FSR 21 (“20C Fox v Newzbin“). He granted an injunction against Newzbin Ltd to restrain further infringements of the Studios’ copyrights. Subsequently the Newzbin1 website ceased operation. Shortly afterwards, however, the Newzbin2 website commenced operation at the same location. It operates in essentially the same manner as the previous website, and thus provides the means for continued large-scale infringement of the Studios’ copyrights. As described in more detail below, the operators of the Newzbin2 website are unknown, but the operation appears to have moved offshore. It is thus effectively beyond the reach of this court.

 

    1. In these circumstances, the Studios contend that the only way in which they can obtain effective relief to prevent, or at least reduce the scale of, these infringements of their copyrights is by means of an order against BT (and thereafter the other ISPs) of the kind now sought.

 

    1. Although the Studios are formally the only applicants, the application is supported by the following organisations representing other groups of rightholders, a representative of each of which has made a witness statement in support of the application:

 

i) BPI (British Recorded Music Industry) Ltd, which represents the interests of record companies in the UK. It currently has about 400 members who produce about 90% of the sound recordings sold legally in the UK.

ii) International Federation of the Phonographic Industry, which represents the interests of the recording industry worldwide. It has 1,400 members in 66 countries and affiliated associations in 45 countries.

iii) The Association for UK Interactive Entertainment, which represents the interests of almost all major companies involved in the development and publication of video games in the UK.

iv) The Publishers’ Association, which represents the interests of UK book publishers.

Procedure

    1. I was informed by counsel that, so far as they and their professional and lay clients are aware, this is the first occasion on which an effective application for a section 97A order against an ISP has been made. For that reason, it is worth describing the procedure adopted in a little more detail than I otherwise would.

 

    1. The Motion Picture Association wrote to BT on 23 September 2010 asking whether BT would agree to block access to the Newzbin2 website or alternatively would agree not to oppose an application for a court order to that effect. The letter summarised the conclusions of Kitchin J in 20C Fox v Newzbin and provided evidence about the operation of the Newzbin2 website. On 7 October 2010 BT replied as follows:

 

“BT does not support or condone copyright infringement. We have a strong commercial interest in seeing legitimate content services flourish online. …

With respect to your requests, BT requires a Court order to block a service otherwise it would face business exposures, including potential legal liabilities, on a number of fronts.

Further, BT cannot commit to take a particular position in court ahead of reviewing the relevant papers and evidence and understanding the full implications for our business.”

    1. The Studios commenced the application on 15 December 2010 by issuing and serving a claim form and an application notice, both seeking an order under section 97A, together with evidence in support. BT wrote the following day to say that it would oppose the application.

 

    1. At BT’s suggestion, both parties served statements of case: the Studios served Particulars of Claim on 9 February 2011, and BT served a Defence on 8 March 2011. I am not sure that this was essential, but it was a sensible step to take in the circumstances of the present case.

 

    1. BT served its evidence in answer to the application on 11 April 2011. The Studios served evidence in reply on 20 May 2011. BT served evidence in rebuttal on 6 June 2011. The Studios served a further witness statement on 16 June 2011. The parties’ counsel then prepared sequential skeleton arguments. I found that a helpful course.

 

    1. The evidence filed by the parties reveals a great deal that is either common ground or at least not seriously disputed. There are, however, certain limited conflicts of evidence. It was agreed between counsel at the outset of the hearing that it was not necessary to direct cross-examination in order to resolve those conflicts. Rather, the court would be entitled to prefer the evidence of one witness to another if there were rational grounds for doing so. If the court was unable to decide whose evidence was to be preferred on a particular point without the benefit of cross-examination, then the Studios as the party bearing the burden of proof would fail on that point. Again, I regard this as a sensible approach.

 

The order sought

    1. The Studios’ application notice sought an order in the following form:

 

“The Defendant shall prevent its services being used by users and operators of the website known as NEWZBIN and NEWZBIN2 to infringe copyright.”

Some of the objections raised by BT to the application arose out of this form of order, although it is fair to say that the Studios’ solicitors’ covering letter dated 15 December 2010 stated that they expected that BT would adopt the methods explained in Mr Clark’s first statement in compliance with that order. Furthermore, by letter dated 13 May 2011 the Studios’ solicitors stated that they would be content with BT’s use of the hybrid system currently used to block websites or URLs contained on the IWF block list (as to which, see below) or an equivalent and equally efficacious mechanism.

    1. On the day before the hearing, the Studios produced a revised draft of the order sought. Following discussion during the course of argument, this was further modified by the addition of a provision giving permission to apply. The revised draft now reads as follows:

 

“1. The Respondent shall adopt the following technology directed to the website known as Newzbin or Newzbin2 currently accessible at http://www.newzbin.com and its domains and sub domains. The technology to be adopted is:

(i) IP address blocking in respect of each and every IP address from which the said website operates or is available and which is notified in writing to the Respondent by the Applicants or their agents.

(ii) DPI based blocking utilising at least summary analysis in respect of each and every URL available at the said website and its domains and sub domains and which is notified in writing to the Respondent by the Applicants or their agents.

2. For the avoidance of doubt paragraph 1(i) and (ii) is complied with if the Respondent uses the system known as Cleanfeed and does not require the Respondent to adopt DPI based blocking utilising detailed analysis.

3. Liberty to the parties to apply on notice in the event of any material change of circumstances (including, for the avoidance of doubt, in respect of the costs, consequences for the parties, and effectiveness of the implementation of the above measures as time progresses).”

    1. As I think counsel for the Studios accepted, the drafting of paragraph 1 still leaves a certain amount to be desired; but, as counsel for BT accepted, it is now reasonably clear what it is that the Studios are asking the court to order BT to do. I will explain what this involves below.

 

The expert evidence

    1. The Studios adduced expert evidence from Andrew Clark, formerly of Detica Ltd and now of Primary Key Associates Ltd. Mr Clark gave evidence before Kitchin J, who described him at [5] as “well qualified” and “careful and objective”. The Studios’ evidence in support of the present application includes Mr Clark’s report prepared for those proceedings, which sets out his qualifications and experience. Surprisingly, Mr Clark’s evidence in this case takes the form of two witness statements rather than experts’ reports complying with CPR rule 35.10 and all of the requirements of Practice Direction 35 paragraphs 3.2 and 3.3, although it is fair to say that some of his evidence is evidence of fact rather than opinion. BT took no point on that, however.

 

    1. BT adduced expert evidence from Malcolm Hutty, who has been Head of Public Affairs at the London Internet Exchange (“LINX”) since July 2003. LINX is a membership association for internet network operators. Since December 2008 Mr Hutty has been President of EuroISPA, the umbrella interest group representing ISPs in Europe. As I understand it, BT is a member of both LINX and EuroISPA. Prior to working for LINX, Mr Hutty worked as a policy advisor for the Internet Watch Foundation (“IWF”) and a number of other bodies. Mr Hutty produced an expert report which complied with CPR rule 35.10 and all of the requirements of Practice Direction 35 paragraphs 3.2 and 3.3, and a witness statement commenting on the Studios’ reply evidence which did not. In the Studios’ skeleton argument counsel for the Studios submitted that Mr Hutty’s evidence should be given less weight than Mr Clark’s both because he was not properly qualified to give expert evidence and because he was not independent. In response to this BT filed a statement by Mr Hutty setting out his expertise in more detail. In essence, he says that, although his role is mainly concerned with policy issues, it includes giving technical advice and that he has sufficient technical knowledge to give the evidence he gives.

 

    1. I accept that Mr Hutty has sufficient technical knowledge to give the evidence he gives, but nevertheless it remains the case that he lacks Mr Clark’s technical qualifications and experience. Furthermore, he also lacks Mr Clark’s independence. Both of these points mean that I would be disposed to give his evidence less weight than that of Mr Clark if it were simply a question of deciding whose technical evidence I prefer. On purely technical matters, however, I do not detect much dispute between Mr Clark and Mr Hutty. What is more important, moreover, is the cogency of their respective analyses. As discussed below, these involve not merely technical considerations, but also other factors, and in particular human behaviour.

 

    1. A separate point made by counsel for the Studios was that some of Mr Hutty’s evidence was not within the province of expert evidence anyway. I think there is force in this point, but on the other hand this is an area where it is difficult to draw a clear line between evidence that is properly expert evidence and evidence that is not.

 

Factual background

    1. I have received a considerable volume of evidence on this application. I do not consider that it is necessary to summarise all the evidence in this judgment, although I have taken it all into account. Indeed, the parties were agreed that it was undesirable for me to condescend to too much technical detail in a public judgment. I must nevertheless describe sufficient of the factual background to make my reasons, and the factual bases for them, intelligible.

 

The problem of online copyright infringement

    1. The problem of online copyright infringement is by now a very well-known one. The nature and scale of the problem so far as sound recordings are concerned were eloquently described by Charleton J of the High Court of Ireland in his judgment in EMI Records (Ireland) Ltd v UPC Communications Ireland Ltd [2010] IEHC 377 at [8]-[21].

 

    1. The Studios relied on two recent studies of the scale of the problem so far as the film and television industries are concerned. A study by Ipsos MediaCAT dated April 2010 analysing the scale of film and television piracy in the UK in 2009 estimated the overall loss from film piracy at £477 million and the overall loss from television piracy at £58 million. A study by Tera Consultants dated March 2010 concluded that in 2008 the audio and audiovisual industries in the UK lost almost 670 million euros in revenues to physical and digital piracy, with the larger proportion of that lost revenue attributable to digital piracy.

 

    1. This evidence has not been challenged by BT. Nevertheless, I cannot ignore the analysis of Professor Ian Hargreaves in his recent report commissioned by the Prime Minister, Digital Opportunity: A Review of Intellectual Property and Growth (May 2011). In paragraph 8.9 he stated that:

 

“… in the Review’s four months of evidence gathering, we have failed to find a single UK survey that is demonstrably statistically robust. For many surveys, methodology is not available for peer review.”

As he explained, there are a number of problems with trying to quantify the scale of online copyright infringement. He went on to summarise the findings of a considerable number of studies both in the UK and elsewhere, and to describe the problems with them. In paragraph 8.17, he attempted to quantify the scale of copyright infringement expressed as a percentage of the economy as a whole using industry estimates, and concluded that “copyright infringement appears to account for just under 0.1 per cent of economic activity”. In paragraph 8.19 he considered a study by Business Action to Stop Counterfeiting and Piracy that estimated the losses from piracy as equivalent to 1.24% of the contribution made by the core copyright industries to the UK economy, and concluded that 1.24% was “at the upper end of probability”. His overall conclusion at paragraph 8.23 was as follows:

“… Certainly … many creative businesses are experiencing turbulence, which translates into fears about the further, future impact of copyright infringement on sales, profitability and sources of investment. However, at the level of the whole economy or even at the level of whole creative business sectors, the measured impacts to date are not as stark as is sometimes suggested by the language used to describe them. That said, copyright infringement is a stubborn fact of the digital landscape which might well get worse and which justifies serious government effort in identifying the right mix of measures to address it. “

    1. I accept that online copyright infringement is a serious problem for copyright owners such as the Studios and the other rightholders who support this application, but in general it is one whose impact is difficult to quantify with any confidence. As will appear, however, in the present case there is fairly good evidence of the scale of the wrongdoing.

 

Solutions to the problem

    1. A number of solutions to the problem of online copyright infringement have been proposed. In EMI v UPC at [34]-[49] Charleton J described and assessed three different potential technical solutions, including the CopySense system produced by Audible Magic referred to below. The Digital Economy Act 2010, and similar laws in other countries such as France’s HADOPI (Haute Autorité pour la diffusion des œuvres et la protection des droits sur internet) law, represent another approach. In Digital Britain Professor Hargreaves listed at paragraph 8.24 eight different categories of measures for tackling digital piracy which rightholders had advocated to his Review, one of which was “working with ISPs as gatekeepers to the internet to ensure legitimate businesses do not suffer at the hands of illegal services”. At paragraph 8.45 he concluded that “we need a combination of enforcement, education and a big push to expand the legitimate market for digital content”.

 

    1. As will become clear, the present application represents an attempt by copyright owners indirectly to enforce their rights in circumstances where direct enforcement has been tried and failed.

 

Newzbin1

    1. Kitchin J’s judgment in 20C v Newzbin should be read in full by anyone trying to understand this judgment, since his findings about the Newzbin1 website represent the starting point for the present application. I provide the following summary for convenience.

 

    1. The Newzbin1 website operated as part of an internet system called Usenet. Usenet allows its users to upload and view messages on an electronic equivalent of public bulletin boards. It was developed in the early 1980s and predated the world wide web by some 10 years. It was originally designed to support text content only, but subsequently evolved so as to support non-text (referred to as “binary”) content. Individuals who upload or “post” messages to the system or who download messages from the system are referred to as Usenet users. The infrastructure for the system is provided by Usenet servers which are interconnected to allow messages to be shared between them. The servers store the content uploaded to them in a hierarchy of newsgroups that are named to reflect their content.

 

    1. The content posted by users to a newsgroup is generally categorised as text or binary. Text materials essentially comprise alphanumeric characters and are designed to be read by other users without further processing. Binary materials, including films, tend to be substantially larger in size than text materials and require processing in two ways which reflect the fact that Usenet was only designed to deal with text messages of relatively small size. First, they need to be encoded in a text form, and secondly, they need to be split into multiple parts so that they can be posted as a set of individual, but related messages. This has important consequences to users.

 

    1. Generally, a user needs a system called a news client to post messages to, or download messages from, newsgroups on a server hosted by a service provider with which he has a subscription. A user interacts with his news client in the following way. First, he enters details of his chosen server. He then selects the newsgroups to which he would like ready access and to which he will post or from which he will download messages. Once he has selected one or more newsgroups, he is then in a position to download some or all of the headings of the messages in that newsgroup and, subsequently, to download the body of any particular message. This is generally done by clicking on its heading.

 

    1. Binary files are frequently split up by a mechanism known as RAR encoding. In summary, a large file of, for example, a film is first split into a series of smaller parts called RAR archive files (typically up to a hundred), each of which is in turn split into fifty or more messages. Each of these messages is posted to the newsgroup separately. As a result, the film is distributed across a significant number, perhaps hundreds or thousands, of messages. If a user wishes to download a copy of a film, he must identify every one of those messages from a list of messages available on the Usenet server to which he has access. The server normally lists these messages in the order in which it has received them with the result that the messages comprising a film posted by one user get mixed up with other messages added to the newsgroup during the time required to complete the original film posting. Each message file must be downloaded into appropriate RAR archive files and then these must be assembled together to form the whole copy.

 

    1. Newzbin1 was run by Chris Elsworth (known as “Caesium”), Thomas Hurst (known as “Freaky”) and Lee Skillen (known as “Kalante”), who were the shareholders in and directors of Newzbin Ltd until shortly before trial, when David Harris acquired their shares and became the sole director. Access to Newzbin1 was restricted to members, and Newzbin Ltd accepted applications for membership only from users who had had an invitation from a current member. Basic members paid no fee, but were not given the ability to download files sourced using Newzbin1. Premium members entered into an agreement with Newzbin Ltd which permitted them to use Newzbin1 to do this for a fee of £0.30 per week. Newzbin Ltd had around 700,000 members, though not all premium. In the year ending 31 December 2009 Newzbin Ltd had a turnover in excess of £1 million and a profit in excess of £360,000.

 

    1. Newzbin1 described itself as “the most comprehensive Usenet search that exists on the Internet today”. It indexed the contents of Usenet in two forms, “reports” and “files”, and provided tools for searching them. The focus of the site was binary content. It processed and stored information about films, television programmes and other works in three main indices: the RAW index, the Condensed index and the Newzbin index. The Newzbin index was the highest level index and showed entries with reports, which had been created by a team of about 250 “editors” who checked that the subject matter of the report related to a complete set of Usenet messages. The Newzbin index listed the reports by the name of the film or other work in question. The editors also added further descriptive information, such as the overall file size and details of other attributes such as the source, genre and language of the work. In the case of entries relating to films, the reports typically provided the user with a link to an internet address (URL) with other available information on that work. Such URLs might link to the websites of Amazon or the comprehensive motion picture database known as IMDb. The reports often included an information or “NFO” file in which it was common for uploaders of infringing copies of films or television programmes to identify themselves so as to take the credit for creating the copy in question.

 

    1. A crucial element of Newzbin1 was that it provided a facility for premium members to create “NZB” files. In the case of binary content, each NZB file contained all the information a news client required to fetch all the Usenet messages and reassemble the original binary work from its component parts. Using the Newzbin index view, an NZB file could be retrieved using one of two techniques; first, by clicking the check box in the relevant entry and then clicking the “Create NZB” button at the top of the page; secondly, by simply clicking the “Download Report NZB” icon in the relevant entry. In either case the NZB file was created and delivered to the user’s computer. When the user ran his news client, the final output was a set of files suitable for burning to a DVD and which could be played in a typical DVD player. If a user wished to retrieve such a large group of files directly from Usenet, he would have to identify all the messages they incorporate, download them one at a time and then use a separate software application to assemble them together. This would be an onerous and inconvenient task and take days to accomplish. It could also be extremely frustrating. A user might spend a great deal of time and effort downloading the majority of the messages only to discover that one message, the final piece in the jigsaw, was missing. In that event he would be prevented from reconstituting the work and his days of effort would have been wasted.

 

    1. Newzbin1 permitted a premium member to search its indices by reference to various categories into which the Usenet messages which it retrieved were grouped. So far as binary content was concerned, there were categories for “Anime” (animated films produced in Japan), “Apps” (application software), “Books” (both audio books and formats for displaying electronic book readers), “Consoles” (video games for dedicated games consoles), “Emulation” (video games playable on a PC using a program which allows the PC to emulate a games console), “Games” (video games playable on a PC), “Misc”, “Movies”, “Music”, “PDA” (software or content files playable on a personal digital assistant or handheld computing device, such as a Blackberry or an iPhone), “Resources” (creative resource material such as fonts and clip art) and “TV”.

 

    1. A number of these categories were broken down into various sub-categories. Thus the “Movies” category was sub-categorised by “Source” (for example “CAM”, “Screener”, “Telesync”, “R5 Retail”, “Blu-Ray”, “DVD” and “HD-DVD”), “Video Fmt” (for example, “DivX”, “XviD”, “Blu-Ray” and “HD-DVD”), “Region”, “Video Genre”, “Audio Fmt”, “Language” and “Subtitles”. Several of the Source sub-categories were indicative of piracy. For example, CAM referred to the use of a handheld cam or video recorder in a cinema to record a film shown there; Screener referred to a copy of a film supplied on a restricted basis to persons within the industry, such as critics, before the film has been released commercially; Telesync referred to a copy of a film made in a cinema using professional camera equipment and a direct connection to the sound source, and sometimes with the frame capture rate of the camera synchronised with that of the film being shown; and so on.

 

    1. The overwhelming majority of the reports in the Movies category of the Newzbin index related to content which was commercially available and very likely to be protected by copyright. Thus one analysis of about 50,000 reports showed that 97.5% had a valid link to the IMDb site, 0.7% had a valid link to Amazon and a further 1.5% were shown to be commercially available upon further investigation. Only 0.3% were not shown to be commercially available.

 

    1. Newzbin1 dealt with binary content and text content in different ways and by separate parts of the code. The facilities provided in relation to text content were very rudimentary indeed.

 

    1. Kitchin J found at [78] that Newzbin Ltd knew that the vast majority of films in the Movies category were commercial and very likely to be protected by copyright and that members who used the NZB facility to download those materials, including the Studios’ films, were infringing copyright.

 

    1. Newzbin Ltd admitted that one or other of the Studios was the owner of copyright subsisting in six sample films. A witness for the Studios had downloaded unlicensed copies of these films using the Newzbin1 website and its NZB facility.

 

    1. Kitchin J held at [97] that the Studios had established that their copyrights had been infringed by Newzbin Ltd’s premium members. There were a very substantial number of premium members, and they were primarily interested in films. Although the Studios were unable to identify which particular films individual premium members had copied, because Newzbin Ltd chose not to record details of the NZB files they downloaded, it was overwhelmingly likely that the premium members had downloaded copies of the Studios’ films, including the examples specifically relied on.

 

    1. Kitchin J also held that Newzbin Ltd had infringed the Studios’ copyrights in three different ways:

 

i) It had authorised its premium members to make infringing copies of the Studios’ films because a reasonable member would deduce from its activities that it purported to possess the authority to grant any required permission to copy any film that a member may choose from the Movies category on Newzbin1, and it had sanctioned, approved and countenanced the copying of the Studios’ films, including each of the films specifically relied on (see [85]-[102]);

ii) For similar reasons, it had procured the premium members to infringe, had participated in a common design with the premium members to infringe, the Studios’ copyrights. It was immaterial that the Studios were not able to point to specific acts of infringement by particular infringers which Newzbin Ltd might be said to have procured (see [103]- [112]);

iii) Newzbin Ltd had itself infringed the Studios’ copyrights by communicating the copyright works to the public, specifically by making each work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time chosen by them within section 20(2)(b) CDPA 1988 which implements Article 3(2) of the Information Society Directive (see [113]- [125]).

    1. Kitchin J also held at [128] that the fact that Newzbin Ltd had engaged in a deliberate course of conduct well knowing that the vast majority of the materials in the Movies category were protected by copyright and that the users of the website who downloaded the materials were infringing copyright, was to be taken into account in assessing whether additional damages were required. Although not expressed as a finding of flagrancy, in substance that is what it is.

 

    1. So far as relief is concerned, Kitchin J concluded at [129] that it was both appropriate and necessary in order to provide the Studios with effective relief to grant an injunction restraining infringement of the copyrights in the Studios’ repertoire both now and in the future. He declined, however, to grant an injunction against Newzbin Ltd pursuant to section 97A (see [130]-[135]).

 

    1. Kitchin J handed down judgment on 29 March 2010. Following a further hearing on 14 April 2010, Kitchin J granted injunctions in the following form:

 

“2. The Defendant shall be restrained (whether acting by its directors, officers, servants, agents or any of them or otherwise howsoever) from infringing copyright in or relating to the following motion pictures and television programmes:

(i) Those identified in the lists provided to the Defendant on 21 May 2008, 29 May 2009 and 8 April 2010;

(ii) Those identified in any other written list provided in electronic form to the Defendant or its solicitors hereafter;

(iii) Those identified in any list that is made available on-line at any URL of which the Defendant or its solicitors are notified in writing hereafter.

3. The Defendant shall ensure that users of its Newzbin Website or any other service its provides cannot, by use of the said website or service, infringe copyright in or relating to the following motion pictures and television programmes, episodes and series:

(i) Those identified in the lists provided to the Defendant on 21 May 2008, 29 May 2009 and 8 April 2010;

(ii) Those identified in any other written list provided in electronic form to the Defendant or its solicitors hereafter;

(iii) Those identified in any list that is made available on-line at any URL of which the Defendant or its solicitors are notified in writing hereafter.”

    1. In addition Kitchin J made orders for an inquiry as to damages, for Newzbin Ltd to pay the Studios’ costs assessed on the indemnity basis and for Newzbin Ltd to pay the sum of £230,000 by 28 April 2010 on account of those costs.

 

Events following the judgment

    1. On 26 April 2010 Mr Harris informed Newzbin Ltd’s creditors of his intention to seek their approval for a creditors’ voluntary liquidation. Newzbin Ltd subsequently entered into voluntary liquidation. Due to concerns regarding the affairs of Newzbin Ltd in the months leading up to the voluntary liquidation, the Studios presented a petition for the compulsory winding up of Newzbin Ltd on 14 May 2010. The petition was withdrawn following assurances as to the investigations to be undertaken by the liquidator.

 

    1. The costs which Kitchin J ordered Newzbin Ltd to pay have not been paid. There is very little likelihood that the Studios will recover any of their costs, let alone damages.

 

    1. The Newzbin1 website was still operating on 17 May 2010, but ceased to operate shortly thereafter. The cessation of the Newzbin1 website coincided with stories of the theft of the source code for the Newzbin1 website appearing on certain websites. Rumours subsequently circulated on the internet concerning a threatened “reincarnation” of the Newzbin1 website, “Newzbin2”.

 

Newzbin2

    1. On or around 28 May 2010 the Newzbin2 website began operating. The Newzbin2 website is very similar to the Newzbin1 website. Currently, when the Newzbin2 website is accessed, the first screen reveals listings of content available using the site. This feature is new to the Newzbin2 website. Apart from this, and the fact that the name “NEWZBIN” is now followed by the numeral 2, the design and manner of operation of the Newzbin2 website is substantially the same as that of the Newzbin1 website. Content can only be obtained using the Newzbin2 website by members who have purchased premium credit. As with the previous Newzbin1 operation, premium credit is sold in blocks of weeks, with the minimum purchase being an 8 week block. The Newzbin2 website has the same categories of content available as Newzbin1. It also has the same sub-categories of content in the “Movies” and “TV” categories, including “CAM”, “Screener” and so on.

 

    1. Evidence adduced at the 20C Fox v Newzbin trial indicated that the Newzbin1 Website had a substantial UK user base. The same appears likely to be the case with the Newzbin2 website. Users are required to pay for membership in pounds sterling, the site uses English as the only language and the site’s terms and conditions refer to UK legislation such as the Computer Misuse Act 1990, the Data Protection Act 1998 and the Contracts (Rights of Third Parties) Act 1999.

 

    1. The Studios have adduced evidence to show that the vast majority of the content accessible via the Newzbin2 website is commercially available and thus highly likely to be protected by copyright. An analysis by Detica of 34,510 records found in the “Movies” category in early September 2010 found that 32,547 (94.3%) related to commercially available content. A trainee employed by the Studios’ solicitors checked a sample of the remaining 1,963 records (5.7%), and found that they all related to content that was commercially available from Amazon’s UK website.

 

    1. In addition, similar analyses were carried out of samples of records from “TV”, “Music”, “Books”, “Games” and “Consoles” categories:

 

i) In the case of “TV”, 704 of the 750 results analysed were found to relate to TV shows that have been broadcast. A further 36 shows were found to be likely to be protected by copyright. These were predominantly sports broadcasts. Accordingly, 99% of the records analysed were found to relate to commercially available content or content that was otherwise likely to be copyright protected.

ii) In the case of “Music”, 564 of the 750 records that were analysed were found to relate to commercially available content. Of the remaining 186 records, 112 were found to relate to content otherwise likely to be protected by copyright e.g. compilations of tracks by well-known artists. Accordingly, 676 of the 750 records analysed (90%) were found to relate to commercially available content or content that was otherwise likely to be copyright protected.

iii) In the case of “Books”, 201 of the 268 records that were analysed relate to commercially available content. Of the remaining 67 records, 48 were found to relate to content that is otherwise likely to be protected by copyright e.g. titles by commercially published authors. Accordingly, 249 of the 268 records analysed (93%) were found to relate to commercially available content or content that was otherwise likely to be copyright protected.

iv) In the case of “Games”, 114 out of 128 records that were analysed were found to relate to commercially available content. Of the remaining 14 records, 4 were found to relate to content that is otherwise likely to be protected by copyright. Accordingly, 118 of the 128 records analysed (92%) were found to relate to commercially available content or content that was otherwise likely to be copyright protected.

v) In the case of “Consoles”, 254 out of 278 records that were analysed were found to relate to commercially available content. Of the remaining 24 records, 10 were found to relate to content that is otherwise likely to be protected by copyright. Accordingly, 264 of the 278 records analysed (94%) were found to relate to commercially available content or content that was otherwise likely to be copyright protected.

    1. The evidence of the representatives of each of the trade organisations referred to in paragraph 4 above is that none of their members have granted the operators of the Newzbin2 website a licence. Each says that their organisation welcomed the judgment of Kitchin J and is concerned that Newzbin2 appears to be circumventing it.

 

    1. As with Newzbin1, the main focus of Newzbin2 is film and television programmes. As at 11 November 2010 the relative proportions of content contained in each of the categories on the Newzbin2 website were as follows:

 

i) Anime: 9,017 reports (4.89%);

ii) Apps: 3,477 reports (1.88%);

iii) Books: 6,576 reports (3.56%);

iv) Consoles: 5,495 reports (2.98%);

v) Games: 2,321 reports (1.26%);

vi) Movies: 34,841 reports (18.88%);

vii) Music: 26,118 reports (14.15%);

viii) TV: 95,115 reports (51.55%);

ix) Other categories: 1,559 reports (0.84%).

    1. In December 2010 one of the Studios’ witnesses downloaded the following 12 sample films using the Newzbin2 website. The copyright in these films is owned (wholly or jointly) by, or exclusively licensed to, the following Studios:

 

BFilm Studio
“Knight and Day” Twentieth Century Fox Film Corporation
“Wall Street: Money Never Sleeps” Twentieth Century Fox Film Corporation
“Despicable Me” Universal City Studios LLLP
“Nanny McPhee and the Big Bang” Universal City Studios LLLP
“Harry Potter and the Deathly Hallows: Part 1” Warner Bros. Entertainment Inc
“Inception” Warner Bros. Entertainment Inc
“Dinner for Schmucks” Paramount Pictures Corporation
“3D Jackass” Paramount Pictures Corporation
“Alice in Wonderland” Disney Enterprises, Inc.
“The Sorcerer’s Apprentice” Disney Enterprises, Inc.
“Takers” Columbia Pictures Industries, Inc.
“The Other Guys” Columbia Pictures Industries, Inc.

 

    1. It appears to be quite hard to find any content on Newzbin2 that is not protected by copyright. BT’s best shot was to point to a reference to the 1891 Lancashire census, but the Studios’ evidence strongly suggests that, although the underlying information is in the public domain, the item in question is likely to be protected by copyright and/or database right.

 

    1. The Newzbin2 website is operated by unidentified individuals acting under pseudonyms. The operators refer to themselves as “Team R Dogs” (which appears to be a reference to the film “Reservoir Dogs”) and use pseudonyms such as “Mr White”, “Mr Black” and “Mr Pink”. “Mr White”, the spokesman of Team R Dogs, has been quoted in an interview on a blog and in a post on the Newbzin2 website as saying:

 

“Team R Dogs are a small team of digital highwaymen who, thank you, prefer to remain behind their face-masks. … we have no association with WCIS Ltd who own the domain … we sought to buy the domain but in the end we were offered a lease on the name. Nor do we have any association with the Newzbin1 team…”

“Newzbin2 is using its own assets which are nothing to do with Newzbin1. The domain is not an asset of Newzbin1 since they sold it to a 3rd party. The code maybe Newzbin’s but let the liquidator come after us for that.”

    1. On 21 June 2010, an investigator from the Federation Against Copyright Theft (“FACT”) made a covert payment to the Newzbin2 website. This showed that the recipient of payments made to the Newzbin2 website is Kthxbai Ltd (i.e. OK thanks bye). Kthxbai Ltd was incorporated on 21 December 2009. Mr Harris is the sole director and shareholder of Kthxbai Ltd, but Mr Harris denies any involvement in the operation of the Newzbin2 website.

 

    1. According to statements made by “Mr White” in interviews on blogs, the operators of Newzbin2 have made various plans to avoid enforcement action by the Studios. They have already taken steps to protect themselves from potential actions that the Studios might take against them in the UK. The servers used to host the Newzbin2 website are not located in the UK (as was the case with the servers of the Newzbin1 website) and are currently located in Sweden. The domain name http://www.newzbin.com is registered to a company in the Seychelles.

 

BT’s services

    1. BT has the largest number of internet subscribers in the UK of any ISP, over 5.3 million. Its retail market share of the digital subscriber line (DSL) and local loop unbundling (LLU) markets is around 35%.

 

    1. BT’s retail customers may use BT’s broadband service to access the internet and access particular websites. In so far as BT’s customers communicate with third party websites, they will send and receive data over the internet. BT facilitates this communication through its service. BT neither initiates that communication nor receives the actual content of the data packet in a permanent form. In so far as BT’s servers and routers receive a data packet and send it on, that equipment will hold transient copies of the data packet for a very short period of time. Those packets are neither stored nor cached by BT. It is the customer (or other user) who decides which internet websites to access and what data to send and receive over the internet. BT has no knowledge of the content of any particular communication. It does not monitor those communications.

 

    1. It is probable that a substantial number of BT subscribers were members of Newzbin1 and are members of Newzbin2. Indeed, on 2 February 2011 the Studios’ solicitors sent BT copies of selected postings to the Newzbin2 website stating “these postings identify individuals who are BT subscribers (and in one case even a BT employee) and also users of the Newzbin2 website”. It would be more accurate to state that the postings are by individuals who state that they are BT subscribers and appear to be Newzbin2 members. As is common in internet discussion fora, these individuals identify themselves by means of self-chosen IDs. For the most part, the IDs do not appear to be real names, although they may be based on real names or at least nicknames e.g. “kenachir”, “leesez” and “23johnw”. In at least one case (“markfisher”), however, the ID appears to correspond to a real name, although this may not in fact be the case.

 

    1. Even when a BT subscriber accesses a copyright work using Newzbin2, BT never holds in one place all of the data packets of any communications with Newzbin’s or third party websites which would amount to a media file that contains that material. The end user is only able to re-assemble all the relevant data on his or her personal computer, and it is at that point that the media file will be capable of being “played.”

 

    1. It should be emphasised that BT does not provide any services to the operators of the Newzbin2 website, and in particular it does not “host” the website.

 

Other NZB sites

    1. BT’s evidence is that NZB files are used by a range of software and communications providers and do not appear to be proprietary to Newzbin. Furthermore, NZB files for binary content are available from many other websites.

 

The IWF’s blocking system

    1. The IWF describes itself on the home page of its website as follows:

 

Who we are

The IWF has been combating child sexual abuse content on the internet since 1996″

If one clicks on the “Who we are” link, one is taken to the following page:

About the Internet Watch Foundation (IWF)

The IWF was established in 1996 by the internet industry to provide the UK internet Hotline for the public and IT professionals to report criminal online content in a secure and confidential way. The Hotline service can be used anonymously to report content within our remit. We work in partnership with the online industry, law enforcement, government, and international partners to minimise the availability of this content, specifically:

  • child sexual abuse images hosted anywhere in the world
  • criminally obscene adult content hosted in the UK
  • non-photographic child sexual abuse images hosted in the UK.

Self-regulation

We are an independent self-regulatory body, funded by the EU and the wider online industry, including internet service providers, mobile operators and manufacturers, content providers, filtering companies, search providers, trade associations, and the financial sector. Our self-regulatory partnership approach is widely recognised as a model of good practice in combating the abuse of technology for the dissemination of criminal content.

Sharing Good Practice

We work with UK government to influence initiatives developed to combat online abuse and this dialogue goes beyond the UK and Europe to promote greater awareness of global issues, trends and responsibilities. We work internationally with INHOPE Hotlines and other relevant organisations to encourage united global responses to the problem and wider adoption of good practice in combating child sexual abuse images on the internet.

Success

We help internet service providers and hosting companies to combat the abuse of their networks through our ‘notice and takedown’ service which alerts them to content within our remit so they can remove it from their networks. We also provide unique data to law enforcement partners in the UK and abroad to assist investigations into the distributors. As a result of this approach the content we deal with has been virtually eradicated from UK networks. As sexually abusive images of children are primarily hosted abroad, we facilitate the industry-led initiative to protect users from inadvertent exposure to this content by blocking access to it through our provision of a dynamic list of child sexual abuse web pages.

Tactics

There are a number of tactics carried out by the IWF on a national and, where relevant, international basis which minimise the availability of child sexual abuse content online:

  • Reporting mechanism for the public to report any inadvertent exposure to potentially criminal child sexual abuse content.
  • ‘Notice and takedown’ system to swiftly remove child sexual abuse content at source in the UK.
  • Targeted assessment and monitoring system to remove child sexual abuse content in newsgroups.
  • Provision of a child sexual abuse URL list to internet service providers, mobile operators, search providers and filtering providers to help disrupt access to child sexual abuse content which is hosted outside the UK and not yet taken down.
  • Working with domain name registries and registrars to deregister domain names dedicated to the distribution of child sexual abuse content.”
    1. The blocking system broadly works as follows. Based on reports from members of the public, police and other agencies, the IWF produces a list of URLs, updated twice daily, that contain images of child abuse. The URLs may be for whole domains, but more commonly they are for subdomains or specific pages. This list is supplied in encrypted form to most ISPs, including BT, who then implement automated measures to prevent, or at least disrupt, access to these URLs. I will describe these measures in outline below. In addition to the blocking system, the IWF operates a notice and takedown system to remove such images from websites hosted in the UK.

 

    1. It is a curious feature of BT’s evidence in this case that it emphasises that the blocking system is only intended to prevent “inadvertent” access to the URLs, and hence images, in question and that the only effective remedy is removal of the images at source. It is true that a careful reading of some parts of the IWF website supports this, as can be seen from the second page quoted above. Other parts of the website convey a somewhat different message, however. For example, a page headed “IWF Facilitation of the Blocking Initiative” includes the following passage:

 

“Every URL on the list depicts indecent images of children, advertisements for or links to such content. The list typically contains 500 URLs at any one time and is updated twice a day to ensure all entries are live. As well as making the internet a safer place for everyone, this initiative can help to diminish the re-victimisation of children by restricting opportunities to view their sexual abuse and may disrupt the accessibility and supply of images to those who seek them out.

Unfortunately, blocking cannot put an end to offenders abusing children nor can it effectively deny determined criminals who are actively seeking such material.”

I read this passage as acknowledging that blocking is ineffective against “determined criminals who are actively seeking such material”, but nevertheless helps to “disrupt the accessibility and supply of images to those who seek them out”.

    1. Furthermore, I do not think that a more cursory visitor to the site would necessarily pick up the careful wording of some of the passages quoted. On the contrary, the overall impression conveyed is that the IWF “combats” the availability of images of child sexual abuse on the internet i.e. prevents, or at least restricts, access to them.

 

    1. Moreover, this is precisely how BT itself has portrayed its implementation of the blocking system described below, or at least has been reported as doing so, on several occasions. It is sufficient to refer by way of example to a BBC News report dating from 30 July 2004, shortly after BT’s Cleanfeed system was launched:

 

“BT says it is blocking up to 20,000 attempts each day to access child porn.

BT said in its first three weeks its new system, which bars access to particular sites, registered nearly 250,000 attempts to view web pages containing images of child pornography.

That represents an average of about 10,000 requests each day.

Anyone trying to access such a site would be presented with a message ‘Website not found’.

[The chief executive of BT retail] said the company had no way of telling how many users were navigating to such sites by accident.

A BT spokesman added ‘It could be that one dedicated pervert is making hundreds of attempts to get on websites each day’.”

Other examples are more recent in date.

Cleanfeed

    1. In essence, what the Studios seek by their revised form of order is that BT should implement the same measures with regard to the Newzbin2 website as it already operates with regard to URLs reported to it by the IWF. It is therefore necessary to describe that system in outline.

 

    1. Three methods of attempting to block access to websites that can be employed by ISPs such as BT are as follows:

 

i) DNS name blocking. The Domain Name System (DNS) is the system that associates a domain name (such as http://www.newzbin.com, colloquially known as a web address) with the Internet Protocol (IP) address (such as 85.112.165.70) that ISPs use to route traffic to the web server that is operating the website in question. ISPs operate DNS servers that their customers’ computers automatically call upon to look up IP addresses corresponding to DNS names. The customers’ computers request these lookups so that they can address their communications to the website in question using its IP address, which is the necessary form of address for their communications to be delivered. DNS name blocking involves an ISP removing or modifying its records of the IP address(es) for a particular DNS name, so that when the ISP’s DNS server is asked by a customer’s computer for the IP address corresponding to the DNS name, the ISP’s system either returns no IP address or points the customer to an IP address defined by the ISP that in actuality does not correspond to the DNS name.

ii) IP address blocking using routers. This is implemented in network devices ISPs operate known as border gateway (edge) routers that send customer communications to their destinations based on the destination IP addresses of the communications. An ISP can configure its routers to discard communications destined for the IP address of the website in question or route them to an IP address defined by the ISP that is different from the actual IP address of the website. This method thus blocks a customer’s communications to a website even if the customer’s computer uses the correct IP address for the website.

iii) DPI-based URL blocking using ACLs on network management systems. This mechanism involves configuring the ISP’s network management system to monitor traffic by means of Deep Packet Inspection (DPI) and reset or block a customer’s connection to specific Uniform Resource Locators (URLs) as defined in the network management system’s Access Control Lists. A URL is an IP address, which usually consists of the access protocol (e.g. http), the domain name and the resource (i.e. the page). This mechanism can also be used to implement IP address blocking as an alternative to the router method described above. DPI-based URL blocking is necessary in cases where a website to be blocked shares an IP address with other websites which are not to be blocked. Further, this mechanism is necessary to block access to only a portion of a website. For example, blocking only the URL “www.example.com/home.html” would block access to the specific page named “home.html” on the website “www.example.com” while leaving the remainder of the site accessible.

    1. DPI may take place at three levels. There may be: (i) a minimal analysis; (ii) summary analysis; or (iii) detailed, invasive analysis of the contents of a data packet.

 

    1. In 2004 BT launched a system known as Cleanfeed with the aim of disrupting access by its subscribers to URLs listed on the IWF list. Cleanfeed is a hybrid system of IP address blocking and DPI-based URL blocking which operates as a two-stage mechanism to filter specific internet traffic. It involves the first two levels of DPI analysis, but not the third. It is not necessary or appropriate to describe how it operates in any more detail than I have given above.

 

    1. Subsequently, other ISPs have adopted similar systems. These are frequently referred to as “Cleanfeed” systems as well.

 

The legal context

    1. The legal context for the present application consists primarily of (a) domestic and European human rights legislation and (b) three European Union directives relevant to copyright enforcement and the domestic implementing legislation. I shall set out the relevant provisions here. I shall also have occasion to make reference to certain other legislative provisions later in this judgment.

 

The Human Rights Act 1998

    1. Section 3(1) of the Human Rights Act 1998 (“HRA 1998”) requires that “So far as possible, primary legislation and subordinate legislation must be read and given effect in a way which is compatible with human rights.” Section 6(1) provides that “It is unlawful for a public authority to act in a way which is incompatible with a Convention right”, and section 6(2)(a) defines “public authority” as including a court. Section 12 of the HRA 1988 includes the following provisions:

 

“12.(1) This section applies if a court is considering whether to grant any relief which, if granted, might affect the exercise of the Convention right to freedom of expression.

(3) No such relief is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed.

(4) The court must have particular regard to the importance of the Convention right to freedom of expression …”

The Convention rights

    1. The Convention rights that are relevant in the present case are those guaranteed by Article 10 of, and Article 1 of the First Protocol to, the European Convention on Human Rights. Article 10 provides:

 

“1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. This Article shall not prevent States from requiring the licensing of broadcasting, television or cinema enterprises.

2. The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society, in the interests of national security, territorial integrity or public safety, for the prevention of disorder or crime, for the protection of health or morals, for the protection of the reputation or rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.”

    1. Article 1 of the First Protocol provides:

 

“Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law. The preceding provisions shall not, however, in any way impair the right of a state to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties.”

E-Commerce Directive

    1. European Parliament and Council Directive 2000/31/EC of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (“the E-Commerce Directive”) contains no less than 65 recitals which explain its purpose and guide its interpretation. My attention was drawn to all or part of recitals (3), (4), (7), (8), (10), (17), (20), (40), (41), (42)-(48), (50) and (60). Of these, I consider the most relevant to be the following:

 

“(7) In order to ensure legal certainty and consumer confidence, this Directive must lay down a clear and general framework to cover certain legal aspects of electronic commerce in the internal market.

(8) The objective of this Directive is to create a legal framework to ensure the free movement of information society services between Member States and not to harmonise the field of criminal law as such.

….

(17) The definition of information society services already exists in Community law in Directive 98/34/EC of the European Parliament and of the Council of 22 June 1998 laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on information society services and in Directive 98/84/EC of the European Parliament and of the Council of 20 November 1998 on the legal protection of services based on, or consisting of, conditional access; this definition covers any service normally provided for remuneration, at a distance, by means of electronic equipment for the processing (including digital compression) and storage of data, and at the individual request of a recipient of a service; those services referred to in the indicative list in Annex V to Directive 98/34/EC which do not imply data processing and storage are not covered by this definition.

(20) The definition of ‘recipient of a service’ covers all types of usage of information society services, both by persons who provide information on open networks such as the Internet and by persons who seek information on the Internet for private or professional reasons.

(40) Both existing and emerging disparities in Member States’ legislation and case-law concerning liability of service providers acting as intermediaries prevent the smooth functioning of the internal market, in particular by impairing the development of cross-border services and producing distortions of competition; service providers have a duty to act, under certain circumstances, with a view to preventing or stopping illegal activities; this Directive should constitute the appropriate basis for the development of rapid and reliable procedures for removing and disabling access to illegal information; such mechanisms could be developed on the basis of voluntary agreements between all parties concerned and should be encouraged by Member States; it is in the interest of all parties involved in the provision of information society services to adopt and implement such procedures; the provisions of this Directive relating to liability should not preclude the development and effective operation, by the different interested parties, of technical systems of protection and identification and of technical surveillance instruments made possible by digital technology within the limits laid down by Directives 95/46/EC and 97/66/EC.

….

(42) The exemptions from liability established in this Directive cover only cases where the activity of the information society service provider is limited to the technical process of operating and giving access to a communication network over which information made available by third parties is transmitted or temporarily stored, for the sole purpose of making the transmission more efficient; this activity is of a mere technical, automatic and passive nature, which implies that the information society service provider has neither knowledge of nor control over the information which is transmitted or stored.

(45) The limitations of the liability of intermediary service providers established in this Directive do not affect the possibility of injunctions of different kinds; such injunctions can in particular consist of orders by courts or administrative authorities requiring the termination or prevention of any infringement, including the removal of illegal information or the disabling of access to it.

(46) In order to benefit from a limitation of liability, the provider of an information society service, consisting of the storage of information, upon obtaining actual knowledge or awareness of illegal activities has to act expeditiously to remove or to disable access to the information concerned; the removal or disabling of access has to be undertaken in the observance of the principle of freedom of expression and of procedures established for this purpose at national level; this Directive does not affect Member States’ possibility of establishing specific requirements which must be fulfilled expeditiously prior to the removal or disabling of information.

(47) Member States are prevented from imposing a monitoring obligation on service providers only with respect to obligations of a general nature; this does not concern monitoring obligations in a specific case and, in particular, does not affect orders by national authorities in accordance with national legislation.

(48) This Directive does not affect the possibility for Member States of requiring service providers, who host information provided by recipients of their service, to apply duties of care, which can reasonably be expected from them and which are specified by national law, in order to detect and prevent certain types of illegal activities.

(50) It is important that the proposed directive on the harmonisation of certain aspects of copyright and related rights in the information society and this Directive come into force within a similar time scale with a view to establishing a clear framework of rules relevant to the issue of liability of intermediaries for copyright and relating rights infringements at Community level.”

    1. Article 2 of the E-Commerce Directive contains definitions of a number of terms, including the following:

 

“(a) ‘information society services’: services within the meaning of Article 1(2) of Directive 98/34/EC as amended by Directive 98/48/EC;

(b) ‘service provider’: any natural or legal person providing an information society service;

(d) ‘recipient of the service’: any natural or legal person who, for professional ends or otherwise, uses an information society service, in particular for the purposes of seeking information or making it accessible.”

    1. Article 1(2) of Directive 98/34/EC as amended by Directive 98/48/EC contains the following definition:

 

“‘service’: any Information Society service, that is to say, any service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services.

For the purposes of this definition:

  • ‘at a distance’: means that the service is provided without the parties being simultaneously present,
  • ‘by electronic means’: means that the service is sent initially and received at its destination by means of electronic equipment for the processing (including digital compression) and storage of data and entirely transmitted, conveyed and received by wire, by radio, by optical means or by other electromagnetic means,

– ‘at the individual request of a recipient of the service’: means that the service is provided through the transmission of data on individual request. “

    1. Articles 12, 13, 14, 15, 18(1) and 20 of the E-Commerce Directive provide:

 

Article 12‘Mere conduit’

1. Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, or the provision of access to a communication network, Member States shall ensure that the service provider is not liable for the information transmitted, on condition that the provider:

(a) does not initiate the transmission;

(b) does not select the receiver of the transmission; and

(c) does not select or modify the information contained in the transmission.

2. The acts of transmission and of provision of access referred to in paragraph 1 include the automatic, intermediate and transient storage of the information transmitted in so far as this takes place for the sole purpose of carrying out the transmission in the communication network, and provided that the information is not stored for any period longer than is reasonably necessary for the transmission.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement.

Article 13

‘Caching’

1. Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the information’s onward transmission to other recipients of the service upon their request, on condition that:

(a) the provider does not modify the information;

(b) the provider complies with conditions on access to the information;

(c) the provider complies with rules regarding the updating of the information, specified in a manner widely recognised and used by industry;

(d) the provider does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information; and

(e) the provider acts expeditiously to remove or disable access to the information it has stored upon obtaining actual knowledge of the fact that the information at the initial source of the transmission has been removed from the network, or access to it has been disabled, or that a court or an administrative authority has ordered such removal or disablement.

2. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement.

Article 14

Hosting

1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

2. Paragraph 1 shall not apply when the recipient of the service is acting under the authority or the control of the provider.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information

Article 15

No general obligation to monitor

1. Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.

2. Member States may establish obligations for information society service providers promptly to inform the competent public authorities of alleged illegal activities undertaken or information provided by recipients of their service or obligations to communicate to the competent authorities, at their request, information enabling the identification of recipients of their service with whom they have storage agreements.

Article 18

Court actions

1. Member States shall ensure that court actions available under national law concerning information society services’ activities allow for the rapid adoption of measures, including interim measures, designed to terminate any alleged infringement and to prevent any further impairment of the interests involved.

Article 20

Sanctions

Member States shall determine the sanctions applicable to infringements of national provisions adopted pursuant to this Directive and shall take all measures necessary to ensure that they are enforced. The sanctions they provide for shall be effective, proportionate and dissuasive.”

Domestic implementation of the E-Commerce Directive

    1. The E-Commerce Directive was transposed into domestic law by the Electronic Commerce (EC Directive) Regulations 2002, SI 2002/2013 (“the 2002 Regulations”). In particular, Articles 12-14 of the E-Commerce Directive are implemented by regulations 17-20 of the 2002 Regulations. There is little difference between the wording of the respective provisions, however, and it was not suggested by either side that they bore different meanings. Regulation 22 of the 2002 Regulations provides:

 

Notice for the purposes of actual knowledge

In determining whether a service provider has actual knowledge for the purposes of regulations 18(b)(v) and 19(a)(i), a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, among other things, shall have regard to—

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c), and

(b) the extent to which any notice includes—

(i) the full name and address of the sender of the notice;

(ii) details of the location of the information in question; and

(iii) details of the unlawful nature of the activity or information in question.”

Information Society Directive

    1. European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“the Information Society Directive”) contains 61 recitals. My attention was drawn to all or part of recitals (2)-(4), (7)-(16) and (58)- (60). Of these, I consider the most relevant to be the following:

 

“(4) A harmonised legal framework on copyright and related rights, through increased legal certainty and while providing for a high level of protection of intellectual property, will foster substantial investment in creativity and innovation, including network infrastructure, and lead in turn to growth and increased competitiveness of European industry, both in the area of content provision and information technology and more generally across a wide range of industrial and cultural sectors. This will safeguard employment and encourage new job creation.

(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.

(11) A rigorous, effective system for the protection of copyright and related rights is one of the main ways of ensuring that European cultural creativity and production receive the necessary resources and of safeguarding the independence and dignity of artistic creators and performers.

(12) Adequate protection of copyright works and subject-matter of related rights is also of great importance from a cultural standpoint. Article 151 of the Treaty requires the Community to take cultural aspects into account in its action.

(13) A common search for, and consistent application at European level of, technical measures to protect works and other subject-matter and to provide the necessary information on rights are essential insofar as the ultimate aim of these measures is to give effect to the principles and guarantees laid down in law.

(16) Liability for activities in the network environment concerns not only copyright and related rights but also other areas, such as defamation, misleading advertising, or infringement of trademarks, and is addressed horizontally in Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’), which clarifies and harmonises various legal issues relating to information society services including electronic commerce. This Directive should be implemented within a timescale similar to that for the implementation of the Directive on electronic commerce, since that Directive provides a harmonised framework of principles and provisions relevant inter alia to important parts of this Directive. This Directive is without prejudice to provisions relating to liability in that Directive.

(22) The objective of proper support for the dissemination of culture must not be achieved by sacrificing strict protection of rights or by tolerating illegal forms of distribution of counterfeited or pirated works.

(58) Member States should provide for effective sanctions and remedies for infringements of rights and obligations as set out in this Directive. They should take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for should be effective, proportionate and dissuasive and should include the possibility of seeking damages and/or injunctive relief and, where appropriate, of applying for seizure of infringing material.

(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network. This possibility should be available even where the acts carried out by the intermediary are exempted under Article 5. The conditions and modalities relating to such injunctions should be left to the national law of the Member States.

(60) The protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas, such as industrial property, data protection, conditional access, access to public documents, and the rule of media exploitation chronology, which may affect the protection of copyright or related rights.”

    1. Article 8 provides as follows:

 

Sanctions and remedies

1. Member States shall provide appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive and shall take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for shall be effective, proportionate and dissuasive.

2. Each Member State shall take the measures necessary to ensure that rightholders whose interests are affected by an infringing activity carried out on its territory can bring an action for damages and/or apply for an injunction and, where appropriate, for the seizure of infringing material as well as of devices, products or components referred to in Article 6(2).

3. Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Domestic implementation of the Information Society Directive

    1. The Information Society Directive was transposed into domestic law by the Copyright and Related Rights Regulations 2003, SI 2003/2498 (“the 2003 Regulations”). In particular, Article 8(3) was implemented by Regulation 27, which inserted sections 97A and 191JA into Parts I and II respectively of the CDPA 1988. These are as follows:

 

97A Injunctions against service providers

(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.

(2) In determining whether a service provider has actual knowledge for the purpose of this section, a Court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to –

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and

(b) the extent to which any notice includes –

(i) the full name and address of the sender of the notice;

(ii) details of the infringement in question.

(3) In this section ‘service provider’ has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002.

191JA Injunctions against service providers

(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe a performer’s property right.

(2) In determining whether a service provider has actual knowledge for the purpose of this section, a Court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to –

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and

(b) the extent to which any notice includes –

(i) the full name and address of the sender of the notice;

(ii) details of the infringement in question.

(3) In this section ‘service provider’ has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002.

(4) Section 177 applies in respect of this section as it applies in respect of Part I.”

The Enforcement Directive

    1. European Parliament and Council Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (“the Enforcement Directive”) contains a mere 32 recitals. I was referred to recitals (22)-(24). These read as follows:

 

“(22) It is also essential to provide for provisional measures for the immediate termination of infringements, without awaiting a decision on the substance of the case, while observing the rights of the defence, ensuring the proportionality of the provisional measures as appropriate to the characteristics of the case in question and providing the guarantees needed to cover the costs and the injury caused to the defendant by an unjustified request. Such measures are particularly justified where any delay would cause irreparable harm to the holder of an intellectual property right.

(23) Without prejudice to any other measures, procedures and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary whose services are being used by a third party to infringe the rightholder’s industrial property right. The conditions and procedures relating to such injunctions should be left to the national law of the Member States. As far as infringements of copyright and related rights are concerned, a comprehensive level of harmonisation is already provided for in Directive 2001/29/EC. Article 8(3) of Directive 2001/29/EC should therefore not be affected by this Directive.

(24) Depending on the particular case, and if justified by the circumstances, the measures, procedures and remedies to be provided for should include prohibitory measures aimed at preventing further infringements of intellectual property rights. Moreover there should be corrective measures, where appropriate at the expense of the infringer, such as the recall and definitive removal from the channels of commerce, or destruction, of the infringing goods and, in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods. These corrective measures should take account of the interests of third parties including, in particular, consumers and private parties acting in good faith.”

    1. Article 2(3) provides:

 

“This Directive shall not affect:

(a) the Community provisions governing the substantive law on intellectual property, Directive 95/46/EC, Directive 1999/93/EC or Directive 2000/31/EC, in general, and Articles 12 to 15 of Directive 2000/31/EC in particular;

…”

    1. Article 3 provides:

 

General obligation

1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.”

    1. Article 11 provides:

 

Injunctions

Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.”

Domestic implementation of the Enforcement Directive

    1. The Enforcement Directive was transposed into domestic law primarily by the Intellectual Property (Enforcement, etc.) Regulations 2006, SI 2006/1028. The UK did not take any specific steps to implement the last sentence of Article 11, but instead relied upon its pre-existing law as being in compliance with that provision. This is despite the fact that Article 8(3) of the Information Society Directive had been specifically implemented in the manner described above.

 

Relevant principles of interpretation

    1. As discussed below, the application gives rise to a number of issues of interpretation of the legislation set out above. The following principles of interpretation are particularly relevant to these issues.

 

Interpretation of domestic legislation in the context of European directives

    1. It is well established that domestic legislation, and in particular legislation specifically enacted or amended to implement a European directive, must be construed so far as is possible in conformity with, and to achieve the result intended by, the directive: Case C-106/89 Marleasing SA v La Comercial Internacional de Alimentación SA [1990] ECR I-4135 at [8]; Litster v Forth Dry Dock and Engineering Co Ltd [1990] 1 AC 546, HL at 558C-H (Lord Templeman) and 576E-577D (Lord Oliver of Aylmerton); Cases C-397/01 to C-403/01 Pfeiffer v Deutsches Rotes Kreuz, Kreisverband Waldshut eV [2004] ECR I-8835 at [113]-[117]; and R (IDT Card Services Ireland Ltd) v Commissioners for Her Majesty’s Revenue and Customs [2006] EWCA Civ 29[2006] STC 1252 at [73]-[92] (Arden LJ). This is a strong duty of interpretation. Indeed, at the end of the passage in her judgment in IDT that I have referred to, Arden LJ suggests that there is little difference between the Court’s duty under the Marleasing principle and its duty under section 3 of the Human Rights Act 1998 to interpret domestic legislation as far as possible in a manner which is compatible with Convention rights under the European Convention on Human Rights. As held by the House of Lords in Ghaidan v Godin-Mendoza [2004] UKHL 30,[2004] 2 AC 557, this is (to adopt the words of Lord Nicholls of Birkenhead at [30]) an interpretative obligation of “an unusual and far-reaching character” which “may require a court to depart from the unambiguous meaning the legislation would otherwise bear”.

 

Interpretation of European directives

    1. A European directive falls to be interpreted according to principles of interpretation of European Union legislation developed by the Court of Justice of the European Union. The basic rule of interpretation, which has been frequently reiterated by the European Court of Justice, is that stated in Case C-306/05 Sociedad General de Autores y Editores de España v Rafael Hoteles SA[2006] ECR I-11519 at [34]:

 

“According to settled case-law, in interpreting a provision of Community law it is necessary to consider not only its wording, but also the context in which it occurs and the objectives pursued by the rules of which it is part (see, in particular, Case C-156/98 Germany v Commission [2000] ECR I-6857, paragraph 50, and Case C-53/05 Commission v Portugal [2006] ECR I-6215, paragraph 20)”.

    1. As is well known, in applying this rule the ECJ routinely refers to the recitals of the measure as well as its operative provisions, and frequently refers to pre-legislative materials such as the Explanatory Memoranda which accompany the Commission’s legislative proposals.

 

Other European cases

    1. Counsel for the Studios helpfully referred me to a series of other cases in which similar applications had been considered elsewhere in Europe. In chronological order, and with one addition supplied by counsel for BT, these are as follows:

 

i) IFPI Danmark v Tele 2 A/S (Copenhagen City Court, 25 October 2006): order granted on application of the Danish branch of IFPI requiring ISP to block access to http://www.allofmymp3.com, it appears by DNS blocking;

ii) SABAM v Tiscali SA (Brussels Court of First Instance, 29 June 2007): order granted on application of Belgian collecting society requiring ISP to filter and block infringing content;

iii) IFPI Danmark v DMT2 A/S (Frederiksberg Court, 29 October 2008) upheld sub nom Sonofon A/S v IFPI (High Court of Eastern Denmark, 26 November 2008) and sub nom Telenor v IFPI (Danish Supreme Court, 27 May 2010): order granted on application of the Danish branch of IFPI requiring ISP to block access to http://www.thepiratebay.org (“the Pirate Bay”);

iv) Bergamo Public Prosecutor’s Officer v Kolmisappi (Italian Supreme Court of Cessation, 29 Sept 2009): order requiring ISPs to block access to the Pirate Bay as part of preventative seizure in criminal proceedings;

v) Columbia Pictures Industries Inc v Portlane AB (Swedish Court of Appeal, 4 May 2010): order granted on the application of the Studios requiring ISP to block access to a tracker website associated with the Pirate Bay;

vi) Nordic Records Norway AS v Telenor ASA (Borgarting Court of Appeal, 9 February 2010): application for preliminary injunction by various rightholders requiring ISP to cease contributing to infringements committed through the Pirate Bay refused, Article 8(3) of the Information Society Directive not having been specifically implemented;

vii) Stichting Bescherming Rechten Entertainment Industrie Nederland (BREIN) v. Ziggo BV (District Court of the Hague, 19 July 2010): interim injunction to block access to the Pirate Bay refused;

viii) EMI v UPC (cited above): application by rightholders against ISP for blocking injunction refused since no equivalent of section 97A CDPA 1988 implementing Article 8(3) of the Information Society Directive;

ix) Constantin Film v UPC (Commercial Court of Austria, 13 May 2011): order granted on application of two film companies requiring ISP to block http://www.kino.te using IP blocking.

    1. Apart from the second and eighth cases, aspects of which are considered below, I do not propose further to increase the length of what is already a lengthy judgment by discussing these cases individually, although I have considered them with interest. The main conclusion I draw from them is that, so far, no uniform approach has emerged among European courts to such applications. I do not find this surprising given that Member States have implemented Article 8(3) of Information Society Directive in different ways and given that the Court of Justice has only provided relevant guidance recently. I will return to this point below.

 

Jurisdiction

    1. BT accepts that it is a “service provider” within the meaning of section 97A of the CDPA 1988. BT contends, however, that the court has no jurisdiction to make the order sought by the Studios for five different reasons.

 

1. No use of BT’s service to infringe copyright

    1. As noted above, section 97A implements Article 8(3) of the Information Society Directive, which requires Member States to ensure that “rights holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right”. It is common ground that, so far as is relevant to the present case, BT acts as a “mere conduit” within Article 12 of the E-Commerce Directive and regulation 17 of the 2002 Regulations. As noted above, it is probable that a substantial number of BT’s subscribers use Newbin2 to obtain infringing copies of the Studios’ films and television programmes. The Studios contend that both the users and the operators of Newzbin2 are using BT’s service to infringe the Studios’ copyrights (and third party copyrights in other types of works). BT disputes that either the users or the operators use its service to infringe copyright.

 

    1. Users. The question here is whether, when a BT subscriber who is a member of Newzbin2 visits the Newzbin2 website, downloads an NZB file and then downloads an infringing copy of a film or a television programme, that subscriber is using BT’s service to infringe copyright. BT contends that the subscriber is not using its service, but the service provided by Newzbin2. In my view this is a false dichotomy. It is common ground that the subscriber uses the Newzbin2 website to infringe, but it does not necessarily follow that the subscriber is not using BT’s service to infringe. The subscriber may be using both services to infringe.

 

    1. Counsel for BT argued that the position was analogous to obtaining pirate video cassettes or DVDs by mail order, as follows. It is not the sending of the request to the supplier, or the receipt of the cassette or DVD by post from the supplier, which amounts to an infringement. The infringement occurs using the services of the supplier, not the postal service through which the request is sent and the cassette delivered. The position would be the same if the infringing article was a book, and it would make no difference if the supplier arranged for 100 sub-suppliers to each send one page of the book to the customers who then compiled and bound the book themselves upon receipt.

 

    1. He also sought to gain support from section 17 of the Digital Economy Act 2010, sub-sections (1) and (2) of which provide:

 

“(1) The Secretary of State may by regulations make provision about the granting by a court of a blocking injunction in respect of a location on the internet which the court is satisfied has been, is being or is likely to be used for or in connection with an activity that infringes copyright.

(2) ‘Blocking injunction’ means an injunction that requires a service provider to prevent its service being used to gain access to the location.”

He submitted that these sub-sections distinguish between the location which is used to infringe copyright, and the service provider’s service which is used to gain access to the location which is used to infringe copyright.

    1. In my judgment this issue depends on the true construction of the words “intermediaries whose services are used by a third party to infringe a copyright or related right” in Article 8(3), since the corresponding words in section 97A must be interpreted in the same way. I do not consider that it is legitimate to attempt to construe those words by reference to later national legislation such as the Digital Economy Act 2010. Furthermore, I am doubtful that analogies of the kind advanced by counsel for BT are helpful in this context. In my view, it is important to consider the nature of the infringing act and its relationship with the service in question. In the present case, the infringing acts by the users consist of making digital copies of the Studios’ films and television programmes on their computers. Each of those digital copies is made by assembling thousands of packets received via BT’s service. No complete copy is necessarily made on BT network equipment at any single point in time, but transient copies of all the packets that in aggregate make up a complete copy will be made on BT network equipment. Does that amount to use of BT’s service to infringe copyright?

 

    1. Guidance on this question is provided by the judgment of the Court of Justice in Case C-557/07 LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten GmbH v Tele2 Telecommunication GmbH [2009] ECR I-1227. In that case LSG was a collecting society which enforced the rights of recorded music producers in their sound recordings and the rights of the recording artists in respect of the exploitation of those recordings in Austria, in particular the right to reproduce and distribute the recordings and the right to make them available to the public.  Tele2 was an internet access provider which assigned to its clients IP addresses, which were usually dynamic rather than static. Tele2 was able to identify individual clients on the basis of the IP address and the period or date when it was assigned.  The rightholders were suffering financial loss as a result of the creation of file-sharing systems which make it possible for participants to exchange copies of recordings. In order to be able to bring civil proceedings against the perpetrators, LSG applied for an order requiring Tele2 to disclose the names and addresses of persons to whom it had provided an Internet access service and whose IP addresses, together with the day and time of the connection, were known.

 

    1. The Oberster Gerichtshof (Austrian Supreme Court) referred two questions to the Court of Justice, the first of which was as follows:

 

“Is the term ‘intermediary’ in Article 5(1)(a) and Article 8(3) of Directive [2001/29] to be interpreted as including an access provider who merely provides a user with access to the network by allocating him a dynamic IP address but does not himself provide him with any services such as email, FTP or file-sharing services and does not exercise any control, whether de iure or de facto, over the services which the user makes use of?”

    1. Tele2 argued that it was not an “intermediary” for reasons which the Court of Justice summarised at [38] as follows:

 

“Tele2 maintains, inter alia, that intermediaries must be in a position to bring copyright infringements to an end. Internet access providers, on the other hand, in as much as they exercise no control, whether de iure or de facto, over the services accessed by the user, are not capable of bringing such infringements to an end and, accordingly, are not ‘intermediaries’ within the meaning of Directive 2001/29.”

    1. The Court of Justice rejected this argument for the following reasons:

 

“42. … under Article 8(3) of Directive 2001/29, Member States are to ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.

43.       Access providers who merely enable clients to access the Internet, even without offering other services or exercising any control, whether de iure or de facto, over the services which users make use of, provide a service capable of being used by a third party to infringe a copyright or related right, inasmuch as those access providers supply the user with the connection enabling him to infringe such rights.

44.       Moreover, according to Recital 59 in the preamble to Directive 2001/29, rightholders should have the possibility of applying for an injunction against an intermediary who ‘carries a third party’s infringement of a protected work or other subject-matter in a network’. It is common ground that access providers, in granting access to the Internet, make it possible for such unauthorised material to be transmitted between a subscriber to that service and a third party.

45.       That interpretation is borne out by the aim of Directive 2001/29 which, as is apparent in particular from Article 1(1) thereof, seeks to ensure the legal protection of copyright and related rights in the framework of the internal market. The protection sought by Directive 2001/29 would be substantially diminished if ‘intermediaries’, within the meaning of Article 8(3) of that directive, were to be construed as not covering access providers, which alone are in possession of the data making it possible to identify the users who have infringed those rights.

46       In view of the foregoing, the answer to the first question is that access providers which merely provide users with Internet access, without offering other services such as email, FTP or file-sharing services or exercising any control, whether de iure or de facto, over the services which users make use of, must be regarded as ‘intermediaries’ within the meaning of Article 8(3) of Directive 2001/29.”

    1. Counsel for the Studios submitted that it was clear from this reasoning, and in particular [43]-[44], that the users in the present case do use BT’s service to infringe the Studio’s copyrights within the meaning of Article 8(3). Counsel for BT submitted that the Court of Justice was concerned in those paragraphs with the situation of an ISP which provided access to users who transmitted material in infringement of copyright or related rights, whereas the present case was concerned with an ISP which provided access to users who merely received such material. I do not accept that the present case can be distinguished from LSG v Tele2 in this way. There is nothing in [43]-[44] to suggest that the Court of Justice considered that it mattered whether the users were transmitting or receiving copyright materials. Given that the case concerned file-sharing, the users could have been doing either or both. The language used by the Court in the last sentence of [44], which refers to unauthorised material “transmitted between a subscriber to that service and a third party [emphasis added]”, is apt to cover both activities. Furthermore, I do not accept the implicit characterisation of the BT subscribers who are members of Newzbin2 as mere passive recipients of infringing material. On the contrary, they actively download the material in the manner described above. I therefore conclude that the users do use BT’s service to infringe the Studios’ copyrights. This conclusion is consistent with that of Charleton J regarding users of peer-to-peer (“P2P”) software and UPC’s service in EMI v UPC at [99].

 

    1. Operators. The question here is whether, when a BT subscriber who is a member of Newzbin2 visits the Newzbin2 website, downloads an NZB file and then downloads an infringing copy of a film or a television programme, the operators of the Newzbin2 website are using BT’s service to infringe copyright.

 

    1. Counsel for BT pointed out that section 97A(3) provides that “service provider” has the meaning given to it by regulation 2 of the 2002 Regulations, which defines “service provider” as “any person providing an information society service”, and provides that “information society services” has the meaning set out in Article 2(a) of the E-Commerce Directive. Article 2(a) of the E-Commerce Directive provides that “information society services” means services within the meaning of Article 1(2) of Directive 98/34/EC as amended by Directive 98/48/EC. I have set this definition out above.

 

    1. Counsel for BT submitted that it was apparent from this definition that a service such as BT’s is provided at the individual request of recipients of the service, that is to say, through the transmission of data on individual request. In this case, he said, the request in question is made by the BT subscriber, not by the operators of the Newzbin2 website. Accordingly, he argued that the operators of the Newzbin2 website do not use BT’s service at all, let alone to infringe copyright.

 

    1. He also submitted that this conclusion was supported by Article 12(1) of the E-Commerce Directive, which refers to a service that consists of “the transmission in a communication network of information provided by a recipient of the service, or the provision of access to a communication network”. He argued that this referred to two different alternatives, and that the second protected BT in respect of information provided to the recipient of the service, not the first.

 

    1. I do not accept this argument for the following reasons. I accept that an information society service is provided to BT’s subscribers, and that they are the recipients of the service who request the transmission of data. In my view, it does not follow that the operators of the Newzbin2 website do not use the service to infringe copyright. Again, it is important to consider the nature of the infringing act and its relationship with the service in question. In the present case Kitchin J’s judgment in 20C Fox v Newzbin establishes that the operators of the Newzbin2 website infringe the Studios’ copyrights in three ways. First, they authorise the users’ infringements. Secondly, they are jointly liable for the users’ infringements. Thirdly, they infringe by making available. The first two ways are different forms of accessory liability for acts committed by the users. Once it is concluded, as I have, that the users are using BT’s service to infringe copyright, then it follows that the operators are too. As for the third way, this consists of “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 a time individually chosen by them”. The operators make the works available in such a way that users can access them over BT’s network (among others). In my judgment that is sufficient to constitute use of BT’s service to infringe. I do not consider that Article 12(1) of the E-Commerce Directive is relevant to this issue.

 

2. No actual knowledge

    1. Recital (59) of the Information Society Directive states that “The conditions and modalities relating to such injunctions should be left to the national law of Member States”. In implementing Article 8(3), the UK has chosen in section 97A of CDPA 1988 to impose a condition that the service provider “has actual knowledge of another person using their service to infringe copyright”. BT disputes that it has such “actual knowledge”.

 

    1. This gives rise to three questions of interpretation. First, what must the service provider have “actual knowledge” of? Secondly, in what manner may a service provider be given “actual knowledge” of something which it did not know before? Thirdly, if some actual knowledge is proved, what is the scope of the injunction that may be granted? The differences between the parties are mainly with regard to the first and third questions, but it is also necessary to touch on the second question.

 

    1. What must the service provider have “actual knowledge” of? The Studios contend that it is sufficient if the service provider has actual knowledge of use of its service for infringing activity. BT contends that the service provider must have actual knowledge of use of its service to commit a particular infringement of a particular copyright work by a particular identified or identifiable individual.

 

    1. Counsel for the Studios advanced three main arguments in support of the Studios’ interpretation. First, he pointed to the requirement imposed by Article 20 of the E-Commerce Directive, Article 8(1) of the Information Society Directive and Article 3(2) of the Enforcement Directive that the sanctions provided by Member States be “effective, proportionate and dissuasive”. He submitted that it was not open to Member States to impose “conditions and modalities” relating to Article 8(3) which undermined the effectiveness and dissuasiveness of the sanction provided for by that provision. Accordingly, he argued, while it was permissible for the UK to impose a requirement of “actual knowledge”, that requirement should not be interpreted in a manner which unduly constrained the availability of injunctions against service providers.

 

    1. Secondly, he suggested that the inspiration for the requirement of “actual knowledge” had come from Articles 13(1)(e) and 14(1)(a) of the E-Commerce Directive. Furthermore, he argued that those provisions, and in particular the reference in Article 14(1)(a) to “illegal activity or information”, supported the Studios’ interpretation.

 

    1. Thirdly, he relied on the reference to “details of the unlawful nature of the activity or information in question” in regulation 22(b)(iii) of the 2002 Regulations, which deals with actual knowledge under regulations 18(b)(iv) and 19(a)(i) corresponding to Articles 13(1)(e) and 14(1)(a) of the E-Commerce Directive. He submitted that the different wording in section 97A(2)(b)(ii), which refers to “details of the infringement in question”, was not intended to limit the scope of section 97A, but was to the same effect.

 

    1. Counsel for BT relied on six main arguments in support of BT’s interpretation. First, he submitted that a number of other provisions in the CDPA 1988, in particular sections 22-24 and 26, imposed a requirement for knowledge and that, in enacting section 97A, Parliament was to be taken to be aware of the manner in which “knowledge” in the predecessors to sections 22-24 and 26 had been interpreted by the courts. He particularly relied on the judgment of Scott J (as he then was) in Columbia Film Industries Inc v Robinson [1987] 1 Ch 38 as showing that actual knowledge of a particular infringement was required.

 

    1. Secondly, he relied upon the wording of section 191JA(1), and in particular the words “to infringe a performer’s property right”, as supporting this conclusion.

 

    1. Thirdly, he relied on the reference in section 97A(2)(b)(ii) to “details of the infringement in question” as supporting this conclusion.

 

    1. Fourthly, he again relied on section 17 of the Digital Economy Act 2010. This contains no requirement of “actual knowledge”. He submitted that it was hard to see why Parliament thought that this new provision was necessary if section 97A of the CDPA 1988 already allowed a “blocking injunction” to be granted where a website has been, is being or is likely to be used to infringe copyright.

 

    1. Fifthly, he relied on the observations of Eady J and Stadlen J respectively concerning the requirement for “actual knowledge of unlawful activity or information” in regulation 19(a)(i) of the 2002 Regulations in two defamation cases, Bunt v Tilley [2006] EWHC 407 (QB)[2007] 1 WLR 1243 and Kaschke v Gray [2010] EWHC 690 (QB), [2011] WLR 452 as supporting this conclusion.

 

    1. Sixthly, he argued that actual knowledge of a specific infringement by a specific individual was required because the primary remedy available against an ISP under section 97A was an order requiring the ISP to terminate the subscription of the individual in question.

 

    1. It is convenient to begin with counsel for BT’s first argument. There is a line of cases dealing with the requirement for “knowledge” for secondary infringement under the Copyright Acts 1911 and 1956. The first is Van Dusen v Kritz [1936] 2 KB 176. This was a case on section 2(2) of the 1911 Act, which provided that “Copyright in a work shall also be deemed to be infringed by any person who …. (c) by way of trade exhibits in public …. any work which to his knowledge infringes copyright. …”. The plaintiff was the owner of copyright in fashion illustrations for men’s clothes. In 1935, the defendant, a tailor, caused to be exhibited in his shop, show-cards displaying a man in morning-dress. He also put up posters at railway stations displaying a man in evening-dress. On October 16 the plaintiff wrote to the defendant complaining that the posters and show-cards infringed the plaintiff’s copyright. On October 18 the plaintiff supplied the defendant’s solicitor with copies of the work said to be infringed. The defendant at once removed the show-cards from his premises, and took steps to find out whether or not he was infringing the plaintiff’s copyright. On October 23 he wrote to the plaintiff saying that, although he did not admit any infringement of the plaintiff’s copyright, he thought it best to remove any cause of complaint by discontinuing the exhibition. On the same day the plaintiff issued a writ claiming from the defendant damages for infringement of copyright. Goddard J held that, where the defendant acquired the work without any knowledge that it infringed copyright, no “knowledge” within the meaning of the subsection could be imputed to the defendant until he had had a reasonable opportunity to investigate the plaintiff’s claim that it infringed. On the evidence, the time when the defendant acquired that knowledge was October 23. Therefore, at the time the writ was issued, there was no exhibition by way of trade of any work which, to the defendant’s knowledge, infringed the plaintiff’s copyright. Accordingly the action failed.

 

    1. Infabrics Ltd v Jaytex Shirt Co Ltd [1978] FSR 451 was a case under section 5(2) of the 1956 Act, which provided that “Copyright in a … work is infringed by any person who … imports an article … if to his knowledge the making of that article constituted an infringement of that copyright, or would have constituted such an infringement if the article had been made in the place into which it is so imported”. The defendants had imported shirts from Hong Kong bearing a design similar to one they had previously been shown by the plaintiffs. The plaintiffs sent a letter before action on 21 February 1976. It was common ground that, in the light of Van Dusen v Kritz, knowledge could be imputed to the defendants by 5 March 1975, 14 days after receipt of the letter. One of the issues was whether the defendants had had the requisite knowledge prior to receipt of the letter. Having cited Van Dusen v Kritz, Whitford J adopted the approach of Harvey J in Albert v Hoffnung & Co Ltd (1921) 22 SR (NSW) 75 at 81 that “‘Knowledge’ means … notice of facts such as would suggest to a reasonable man that a breach of copyright law was being committed”. On that basis, he held on the facts that the defendants had not had the requisite knowledge prior to receipt of the letter.

 

    1. Hoover plc v George Hulme (Stockport) Ltd [1982] FSR 565 was a case under section 5(3) of the 1956 Act, which provided that “Copyright in a … work is infringed by any person who … (a) sells, lets for hire, or by way of trade offers or exposes for sale or hire any article … if to his knowledge the making of that article constituted an infringement of that copyright, or (in the case of an imported article) would have constituted such an infringement if the article had been made in the place into which it was imported”. The plaintiffs brought a claim for copyright infringement in respect of the defendants’ sales of spare parts for the plaintiffs’ vacuum cleaners based on manufacturing drawings. Whitford J again cited a passage from Van Dusen v Kritz and a passage from RCA Corporation v Custom Cleared Sales Pty Ltd [1978] FSR 576 in which the Court of Appeal of New South Wales held that “the knowledge which has to be proved is actual but not constructive”. The court apparently considered this conclusion to be consistent with Van Dusen v Kritz and Albert v Hoffnung if the latter was properly understood, saying “the true position is that the court is not concerned with the knowledge of a reasonable man but is concerned with reasonable inferences to be drawn from a concrete situation as disclosed in the evidence as it affects the particular person whose knowledge is in issue”. Whitford J went on to hold that the defendants did not have the requisite knowledge at the date of the writ because, although the plaintiffs had sent the defendants a letter before action which was followed by meetings to discuss the matter, the plaintiffs had failed to make it clear which parts were alleged to infringe which drawings and had not allowed the defendants a reasonable time to investigate their claims.

 

    1. Sillitoe v McGraw-Hill Book Company (UK) Ltd [1983] FSR 545 was another case under section 5(2) and (3) of the 1956 Act. The defendants had imported and distributed a series of “study notes” for students which the plaintiffs alleged infringed the copyrights in the works under discussion. Having considered Van Dusen v Kritz, Albert v HoffnungRCA v Custom and Infabric v Jaytex, His Honour Judge Mervyn Davies QC sitting as a High Court Judge held that the defendants had been “fixed with knowledge” 14 days after letters before action sent by the plaintiffs, that being a reasonable time in which to consider their position.

 

    1. Against this background I can turn to CPI v Robinson. That was a case under section 16(3) of the 1956 Act, which was in essentially the same terms as section 5(3), but applied to inter aliacinematograph films. The case concerned infringing video cassettes. Scott J held at 67-68:

 

“The question, therefore, is whether Mr. Robinson had knowledge that the tapes being sold or let on hire at the Mill Street shop were pirate tapes.

There is some useful judicial authority on the meaning of ‘knowledge’ for the purposes of subsection (3). In Infabrics Ltd. v. Jaytex Shirt Co. Ltd. [1978] F.S.R. 451, 464-465, Whitford J. cited with approval a dictum from the judgment of Harvey J. in an Australian case, Albert v. Hoffnung & Co. Ltd. (1921) 22 S.R. (N.S.W.) 75 . Harvey J. said, at p. 81:

‘”Knowledge” in the section cannot mean in my opinion any more than notice of facts such as would suggest to a reasonable man that a breach of the copyright law was being committed … In my opinion knowledge means notice, which would put a reasonable man on inquiry.’

In another Australian case, R.C.A. Corporation v. Custom Cleared Sales Pty. Ltd. [1978] F.S.R. 576, it was held by the New South Wales Federal Court of Appeal that the requisite knowledge was actual knowledge and that constructive knowledge was not sufficient.

I accept that actual knowledge is necessary, but subject to this proviso. In this area of jurisprudence, as in many others, a person who deliberately refrains from inquiry and shuts his eyes to that which is obvious, cannot be heard to say that he lacked the requisite knowledge.

In these circumstances, I conclude that Mr. Robinson knew throughout the period that he and the company were proprietors of the Mill Street shop and that a large proportion of the stock must be pirate tapes. I do not accept that he ever made or caused to be made any check of the tapes with a view to weeding out those that were pirates. Any checks that were made had as their purpose the weeding out of those of poor quality.

If a check had been made by Mr. Robinson in order to identify those tapes that were pirates he would, in my view, by reason of his professional expertise, have had a good degree of success. I do not doubt that there would have been some pirates that he would not have identified but he would, I think, have identified most of them.

The question for decision is whether this general knowledge on Mr. Robinson’s part, coupled with his ability to have made a reasonably successful check, coupled with his unconcern as to whether or not the shop was selling or hiring pirate tapes, is sufficient to fix him with the requisite knowledge for the purposes of section 16 (3). In my judgment, it is not.

The subsection is contemplating a specific knowledge about the circumstances in which a specific article was made. A general knowledge of the sort which Mr. Robinson possessed is consistent with a specific video tape being a pirate tape. It is also consistent with a specific tape being legitimate. Unless a defendant has some degree of specific knowledge about a specific tape, his general knowledge that a tape is quite likely to be a pirate does not, in my judgment, fix him with knowledge sufficient for the purposes of section 16 (3), that the tape was made in breach of copyright.”

    1. As noted above, counsel for BT relied on this decision in support of his submission that actual knowledge of a particular infringement was required. I do not accept that it does support that submission for the following reasons.

 

    1. First, CPI v Robinson was a decision under the 1956 Act. When Parliament approved regulation 27 of the 2003 Regulations, which were made by the Secretary of State under section 2(2) of the European Communities Act 1972, so as to introduce section 97A, it was approving an amendment to the CDPA 1988, not the 1956 Act. In those circumstances I do not see why Parliament should be taken to have implicitly adopted Scott J’s interpretation of section 16(3) of the 1956 Act. That is all the more so given that, by 2003, there was a separate line of authority in relation to the requirement of “knowledge or reason to believe” under sections 22-24 and 26 of the CDPA 1988: see in particular LA Gear Inc v Hi-Tec Sports plc [1992] FSR 121 and ZYX Music GmbH v King [1995] EMLR 319.

 

    1. Secondly, I agree with counsel for the Studios that it is much more likely that the requirement for “actual knowledge” was transplanted from Articles 13 and 14 of the E-Commerce Directive, and the corresponding provisions of the 2002 Regulations. Indeed, section 97A(2) is closely modelled on regulation 22 of the 2002 Regulations, although differing in certain respects.

 

    1. Thirdly, there are in any event clear differences between section 97A of the CDPA 1988 and section 16(3) of the 1956 Act and the other provisions which were under consideration in this line of cases. Section 16(3) required proof of knowledge that “the making of that article constituted an infringement of that copyright [emphasis added]”. In those circumstances it is not surprising that Scott J held that it contemplated “specific knowledge about the circumstances in which a specific article was made”. By contrast, the wording of section 97A is much more general and open-ended.

 

    1. Finally, although this goes more to the second question, it should be noted that Scott J did not purport to decide that a defendant could not be “fixed with knowledge” by a suitable communication from the copyright owner and a reasonable opportunity to investigate.

 

    1. Turning to counsel for BT’s second argument based on section 191JA of the CDPA 1988, I do not find this persuasive for the following reasons. First, although counsel for BT suggested that there was a distinction between the wording of this provision and that of other provisions in Part II referring to “performers’ rights”, in fact almost all of the substantive provisions in Part II refer to “a performer’s rights” or “a performer’s property rights” or “a performers’ non-property rights” as the case may be. This is an aspect of the rather cumbersome way in which Part II is drafted so to as avoid use of the word “copyright”: see Performers’ Rights (4th ed) at §1.86. In these circumstances I do not consider that the phraseology employed in section 191JA is particularly significant. Secondly, the wording “to infringe a performer’s property rights” naturally covers infringement of one or more performers’ property rights. Similarly, the wording “to infringe copyright” naturally covers infringement of one or more copyrights. Even if this requires identification of the copyright(s) or performers’ property right(s) which are being infringed, it does not follow that it requires identification of a specific infringing act, still less a specific infringer.

 

    1. In my view counsel for BT’s third argument is his strongest. Section 97A(2)(b)(ii) certainly suggests that it should be possible to provide “details of the infringement in question”. Furthermore, this wording is different to the wording of regulation 22(2)(b)(iii), and it does not say “details of the infringing activity in question”. On the other hand, it does not specify what “details” are to be provided. Furthermore, section 97A(2) does not make provision of such details mandatory, or even any details, it merely requires the court to “have regard to” “the extent to which” any notice includes such details.

 

    1. As for section 17 of the Digital Economy Act 2010, I do not consider that this provides any assistance with regard to the interpretation of the requirement for actual knowledge in section 97A. It is a later, purely domestic provision with a different genesis and a different reach. It does not require proof of actual knowledge on the part of the service provider, it extends to “locations” that are merely being used “in connection with an activity that infringes copyright” and it extends to the grant of an injunction that specifically “requires the service provider to prevent its service being used to gain access” to such locations.

 

    1. Turning to the two defamation cases, Bunt v Tilley was a case in which the claimant brought proceedings for libel against the six defendants. He alleged that the first to third defendants had posted defamatory messages on websites hosted by third parties and that they had done so by means of the services provided by the fourth to sixth defendants, their respective ISPs. It was not alleged that the fourth to sixth defendants had any role other than that of affording access to the internet to the first to third defendants. The fourth to sixth defendants applied for orders striking out or granting summary judgment on the claims against them, contending that they were not publishers of the messages at common law. The claimant appeared in person. Eady J struck out the claims against the fourth to sixth defendants. He held at [23] that, to be liable for a defamatory publication, a defendant must be knowingly involved in the process of publication of the relevant words, and it was not enough that the defendant merely played a passive instrumental role in the process. He went on to hold at [36] that there no realistic prospect of the claimant establishing that any of the fourth to sixth defendants had knowingly participated in the relevant publications. He also held that more generally as a matter of law that an ISP which performed no more than a passive role in facilitating postings on the internet could not be deemed to be a publisher at common law.

 

    1. Eady J went on at [38]ff to address various alternative arguments raised by the fourth to sixth defendants. In view of his previous conclusions, this part of his judgment was obiter. At [68]-[73] he considered regulation 19 of the 2002 Regulations, which was relied on by the sixth defendant (BT as it happens). Having set out regulations 6(1)(c) and 22, he held at [72]:

 

“In the light of these provisions it is submitted by [counsel for BT] that the requirements of regulation 6(1)(c) are satisfied, since the claimant was able to send an e-mail to BT on 1 May 2005. Also, his purported notice would fail to satisfy the factors identified in regulation 22(1)(b)(ii) and (iii) for the reasons considered above. None of that information was included. As I have already observed, in order to be able to characterise something as ‘unlawful’ a person would need to know something of the strength or weakness of available defences.”

    1. Counsel for BT relied on the last sentence of this paragraph. I agree with counsel for the Studios that this does not assist BT. First, it was an obiter observation in a case involving an unrepresented claimant. Secondly, Eady J was considering substantive liability for defamation. Thirdly, given the defamation context, it is understandable why Eady J said what he did, since words may be defamatory without being unlawful, most obviously where the statement is justified. Fourthly, Eady J was not considering section 97A or Article 8(3), which were not in issue before him.

 

    1. Similar comments apply to the observations of Stadlen J in Kaschke v Gray at [93]-[100].

 

    1. As for the sixth argument advanced by counsel for BT, I regard this as really being about the scope of the injunction that may be granted pursuant to section 97A, and I will consider it in that context.

 

    1. I have already commented on the second and third points made by counsel for the Studios. As for his first argument, I consider that has some force. Nevertheless, it is difficult to place too much weight on this argument given his acceptance that it was permissible for the UK to impose a requirement of “actual knowledge”.

 

    1. In my judgment what is decisive is the context, purpose and wording of section 97A(1). So far as the context is concerned, as noted above, section 97A implements Article 8(3) of the Information Society Directive. The Information Society Directive was promulgated at the same time as the E-Commerce Directive, and the recitals to both Directives make it clear that they were intended to be complementary and to be transposed into national law at the same time: see recital (50) of the E-Commerce Directive and recital (16) of the Information Society Directive. Against that background, it is significant that service providers lose the protection against liability conferred by Articles 13 and 14 of the E-Commerce Directive once they have actual knowledge of the matters specified in those articles. By contrast, a service provider does not lose the protection of Article 12(1) of the E-Commerce Directive even if it has actual knowledge of another person using its service to infringe copyright. This suggests that the requirement for actual knowledge should not be interpreted too restrictively.

 

    1. Turning to the purpose, given that section 97A implements Article 8(3), illumination is provided by recital (59) of the Information Society Directive, and in particular the following statements:

 

“In the digital environment … the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore … rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network.”

As these indicate, the purpose of Article 8(3), and hence section 97A, is to enable an injunction to be granted against a service provider which “carries” an infringement because service providers are best placed to bring “infringing activities” to an end. This again suggests that the requirement for actual knowledge should not be interpreted too restrictively.

    1. As for the wording of section 97A(1), this requires “actual knowledge of another person using their service to infringe copyright”. Although both sides split this into two separate elements in the course of argument, it is a single composite requirement. Furthermore, it seems to me that the focus of the composite requirement is knowledge of the use of the service to infringe, rather than upon the infringements committed thereby. In any event, the sub-section simply does not say “to commit a particular infringing act in relation to a particular copyright work”. As I have already observed, the wording is much more general and open-ended than that. Furthermore, it does not require that the “other person” be identified or even identifiable. One can know that someone is infringing copyright without knowing who that person is or even being able to find out who that person is.

 

    1. Accordingly, I consider that what must be shown is that the service provider has actual knowledge of one or more persons using its service to infringe copyright. The more information the service provider has about the infringing activity, the more likely it is that the service provider will have actual knowledge. Thus it may well be relevant to consider whether or to what extent the service provider has knowledge of particular copyright works (or at least classes of copyright works) being involved, of particular restricted acts (or at least types of restricted act) being committed and of particular persons (or at least groups of persons) committing those acts; but it is not essential to prove actual knowledge of a specific infringement of a specific copyright work by a specific individual.

 

    1. In what manner may a service provider be given “actual knowledge”? It is clear from section 97A(2) that, in considering whether a service provider has actual knowledge, it is relevant to consider whether the service provider has been given notice of the infringement. There was little dispute between counsel in the end that a service provider may be given actual knowledge of infringement by receipt of a sufficiently detailed notice and a reasonable opportunity to investigate the position.

 

    1. What is the scope of the injunction that may be granted? Counsel for the Studios submitted that, once it was shown that a service provider had actual knowledge that its service was being use to infringe copyright, then a broad injunction could be granted pursuant to section 97A. Counsel for BT submitted that the scope of the injunction was limited to the particular infringements of which the service provider had actual knowledge. Both counsel recognised that the answer given by the Court of Justice of the European Union to question (10) in Case C-324/09 L’Oréal SA v eBay International AG was likely to bear closely on this question. Although they addressed me on the answer proposed by Advocate General Jääskinen in his Opinion dated 9 December 2010, it was agreed that both parties would make written submissions on the Court’s judgment after it became available on 12 July 2011.

 

    1. Before turning to the judgment of the Court of Justice in that case, it is convenient first to consider 20C Fox v Newzbin. As related above, Kitchin J granted an injunction against Newzbin Ltd restraining it from infringing copyrights in the Studios’ repertoire. He declined, however, to grant an injunction pursuant to section 97A restraining Newzbin Ltd “from including in its indices or databases entries identifying any material posted to or distributed through any Usenet group in infringement of copyright”. He expressed his reasons for this as follows at [135]:

 

“… I do not believe it would be appropriate to grant an injunction of the breadth sought by the claimants for a number of reasons. First, it is apparent from the terms of Directive 2001/29/EC that it is contemplating the grant of an injunction upon the application of rights holders, yet the claimants are seeking an injunction to restrain activities in relation to all binary and all text materials in respect of which they own no rights and about which I have heard little or no evidence. Second, I do not accept that the defendant has actual knowledge of other persons using its service to infringe all such rights. Therefore I am not persuaded I have the jurisdiction to grant such an injunction in any event. Third, the rights of all other rights holders are wholly undefined and consequently the scope of the injunction would be very uncertain. In my judgment the scope of any injunction under section 97A(2) [sic] should extend no further than that to which I have already concluded the claimants are entitled, namely an injunction to restrain the defendant from infringing the claimants’ copyrights in relation to their repertoire of films.”

    1. As I read this paragraph, the first and third reasons given by Kitchin J are discretionary reasons for refusing the injunction. I will consider those below. The second reason, however, goes to the extent of the court’s jurisdiction. I accept that it supports BT’s position on this issue. On the other hand, Kitchin J’s conclusion on the point was not necessary to his decision in view of the other reasons he gave. Furthermore, his conclusion was a limited one: he was not persuaded that he had jurisdiction to grant the injunction, he did not positively conclude that he did not have jurisdiction. Still further, it appears that he received very limited argument on the point. In particular, it does not appear that he was referred to L’Oréal v eBay.

 

    1. Turning to L’Oréal v eBay, it is important to be clear as to the legislative context of that case. As discussed above, Article 8(3) of the Information Society Directive was specifically implemented by the UK in the form of sections 97A and 191JA of the CDPA 1988. Subsequently, the European Community legislature extended the protection afforded to copyrights and related rights by Article 8(3) of the Information Society Directive to other intellectual property rights, such as registered trade marks, by the third sentence of Article 11 of the Enforcement Directive. Despite the fact that the UK had specifically implemented Article 8(3) of the Information Society Directive, it did not specifically implement Article 11 of the Enforcement Directive.

 

    1. Confronted with this problem in L’Oréal v eBay [2009] EWHC 1094 (Ch)[2009] RPC 21, I concluded at [447]-[454] that the court had power under section 37(1) of the Supreme Court Act 1981 (now known as the Senior Courts Act 1981) to grant an injunction against an intermediary whose service had been used by third parties to infringe an intellectual property right, such as a registered trade mark, to the extent that this is what Article 11 of the Information Society Directive required. The question, therefore, was what scope of injunction the third sentence of Article 11 required Member States to make available. Having considered that question at [455]-[465], I concluded that it was a matter upon which the guidance of the Court of Justice was required. Accordingly, I referred the following question to the Court, which is question 10 of the questions referred in that case:

 

“Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, does Article 11 of European Parliament and Council Directive 2004/48 of 29 April 2004 on the enforcement of intellectual property rights (“the Enforcement Directive”) require Member States to ensure that the trade mark proprietor can obtain an injunction against the intermediary to prevent further infringements of the said trade mark, as opposed to continuation of that specific act of infringement, and if so what is the scope of the injunction that shall be made available?”

    1. The Court of Justice considered this question in its judgment at [125]-[144]. At [128]-[130] the Court held that the injunction referred to in the third sentence of Article 11 could not be equated with the injunction aimed at prohibiting the continuation of the infringement referred to in the first sentence. At [131]-[134] the Court held that consideration of the objective pursued by the Enforcement Directive, and of Article 18 of the E-Commerce Directive and recital (24) of the Enforcement Directive led to the conclusion that the jurisdiction conferred by the third sentence of Article 11 was not limited to bringing infringements to an end but extended to preventing further infringements. At [135]-[138] the Court held that the rules relating to the conditions to be met and the procedure to be followed to obtain injunctions under the third sentence of Article 11 were a matter for national law, but that the rules must be both designed and applied in such a manner that the measures were effective and dissuasive, and observed the limitations of the Enforcement Directive and the sources of law to which it referred. The Court continued:

 

“139.    First, it follows from Article 15(1) of Directive 2000/31, in conjunction with Article 2(3) of Directive 2004/48, that the measures required of the online service provider concerned cannot consist in an active monitoring of all the data of each of its customers in order to prevent any future infringement of intellectual property rights via that provider’s website. Furthermore, a general monitoring obligation would be incompatible with Article 3 of Directive 2004/48, which states that the measures referred to by the directive must be fair and proportionate and must not be excessively costly.

140.     Second, as is also clear from Article 3 of Directive 2004/48, the court issuing the injunction must ensure that the measures laid down do not create barriers to legitimate trade. That implies that, in a case such as that before the referring court, which concerns possible infringements of trade marks in the context of a service provided by the operator of an online marketplace, the injunction obtained against that operator cannot have as its object or effect a general and permanent prohibition on the selling, on that marketplace, of goods bearing those trade marks.

141.     Despite the limitations described in the preceding paragraphs, injunctions which are both effective and proportionate may be issued against providers such as operators of online marketplaces. As the Advocate General stated at point 182 of his Opinion, if the operator of the online marketplace does not decide, on its own initiative, to suspend the perpetrator of the infringement of intellectual property rights in order to prevent further infringements of that kind by the same seller in respect of the same trade marks, it may be ordered, by means of an injunction, to do so.

142.     Furthermore, in order to ensure that there is a right to an effective remedy against persons who have used an online service to infringe intellectual property rights, the operator of an online marketplace may be ordered to take measures to make it easier to identify its customer-sellers. In that regard, as L’Oréal has rightly submitted in its written observations and as follows from Article 6 of Directive 2000/31, although it is certainly necessary to respect the protection of personal data, the fact remains that when the infringer is operating in the course of trade and not in a private matter, that person must be clearly identifiable.

143.     The measures that are described (non-exhaustively) in the preceding paragraphs, as well as any other measure which may be imposed in the form of an injunction under the third sentence of Article 11 of Directive 2004/48, must strike a fair balance between the various rights and interests mentioned above (see, by analogy, Promusicae, paragraphs 65 to 68).

144.     In view of the foregoing, the answer to the tenth question is that the third sentence of Article 11 of Directive 2004/48 must be interpreted as requiring the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, dissuasive and must not create barriers to legitimate trade.”

    1. The UK’s implementation of Article 8(3) of Information Society Directive means that the particular problem which confronted me in L’Oréal v eBay does not arise here. Although subject to the condition that actual knowledge must be proved, section 97A confers on the court a specific and broad jurisdiction to grant an injunction against service providers. On its face, the jurisdiction is not confined to granting an injunction prohibiting the continuation of infringements of which the service provider has actual knowledge. In any event, section 97A must be interpreted and applied consistently with the Court of Justice’s guidance in L’Oréal v eBay. In my judgment the Court’s reasoning demonstrates that the jurisdiction is not confined to the prevention of the continuation, or even repetition, of infringements of which the service provider has actual knowledge. On the contrary, an injunction may be granted requiring the service provider “to take measures which contribute to … preventing further infringements of that kind”. Although such measures may consist of an order suspending the subscriber’s account or an order for disclosure of the subscriber’s identity, the Court of Justice makes it clear at [143] that these examples are not exhaustive, and that other kinds of measures may also be ordered.

 

    1. The present case. Turning to the present case, counsel for the Studios accepted that he could not show that BT had actual knowledge of a particular infringement of a particular copyright work by a particular individual, but he nevertheless submitted that BT had actual knowledge of users and the operators of Newzbin2 using its service to infringe the Studios’ copyrights. Counsel for BT expressly accepted that BT had actual knowledge of all the facts and matters stated in Kitchin J’s judgment in 20C Fox v Newzbin. Furthermore, I did not understand him to dispute that BT had actual knowledge of the facts and matters concerning Newzbin2 revealed by the Studios’ evidence in support of the present application as summarised in paragraphs 48-58 and 61-62 above. In my judgment it follows that BT has actual knowledge of other persons using its service to infringe copyright: it knows that the users and operators of Newbin2 infringe copyright on a large scale, and in particular infringe the copyrights of the Studios in large numbers of their films and television programmes, it knows that the users of Newzbin2 include BT subscribers, and it knows that those users use its service to receive infringing copies of copyright works made available to them by Newzbin2. For the reasons given above, that knowledge satisfies the requirements of section 97A(1). Furthermore, I would add that BT also has some actual knowledge regarding individual BT subscribers who use Newzbin2, in particular from the information enclosed with the Studios’ solicitors’ letter dated 2 February 2011. (Indeed, in principle it ought to be possible for BT to ascertain the identities of those persons by means of a Norwich Pharmacal order (or local equivalent) directed against the ISP which hosts Newzbin2.)

 

    1. Accordingly, I conclude that, subject to the three points discussed below, there is jurisdiction to grant an injunction against BT pursuant to section 97A and that the scope of that jurisdiction is sufficient to enable me to make the order sought by the Studios.

 

3. Contrary to Article 12(1) of the E-Commerce Directive

    1. Counsel for BT submitted that the court had no jurisdiction to make the order sought by the Studios because the making of such an order would contravene Article 12(1) of the E-Commerce Directive. As noted above, it is common ground that, so far as is relevant to this case, BT acts as a “mere conduit”. Accordingly, it is common ground that it is protected from liability for infringement of copyright by Article 12(1). Article 12(3) provides that this protection does not “affect the possibility for a court … of requiring a service provider to terminate or prevent an infringement”. Counsel for BT drew a contrast between the wording of Article 12(3) and that of Article 14(3). As he pointed out, the latter also allows “Member States [to establish] procedures governing the removal or disabling of access to information”. He argued that the order sought by the Studios was designed to disable access to information, which is a type of measure that could be imposed under Article 14(3) but not Article 12(3).

 

    1. I do not accept this argument for the following reasons. First, Article 12(1) places no limit on the type of injunction that may be granted “requiring a service provider to terminate or prevent an infringement”. Secondly, the part of Article 14(3) relied on by counsel for BT is not concerned with court orders, but with administrative procedures established by Member States, such as a “notice and takedown” procedure operated by an administrative body. Indeed, the part of Article 14(3) that relates to court orders has the same wording as Article 12(3). Thirdly, Article 14(3) must be read in the context of Article 14 as a whole. Article 14 is concerned with service providers who act as “hosts”, that is to say, they store information provided by a recipient of the service. In those circumstances, it is understandable why Article 14(3) refers to the establishment of procedures for the removal or disabling of access to such information. This does not justify a restrictive interpretation of Article 12(3). Fourthly, recital (45) of the E-Commerce Directive says that injunctions against intermediary service providers can consist of “orders by courts … requiring the termination or prevention of any infringement, including the removal of illegal information or the disabling of access to it”. This makes it clear that Article 12(3) should be interpreted as extending to orders requiring service providers to disable access to illegal information. Fifthly, this interpretation also receives some support from Article 18(1) of the E-Commerce Directive.

 

4. Contrary to Article 15(1) of the E-Commerce Directive

    1. Counsel for BT submitted that the court had no jurisdiction to make the order sought by the Studios because the making of such an order would contravene Article 15(1) of the E-Commerce Directive. Article 15(1) prohibits Member States from imposing “a general obligation on providers … to monitor the information which they transmit”. Counsel for BT argued that the order sought by the Studios would contravene this prohibition because it amounted to a general obligation to monitor the information they transmitted. Counsel for the Studios accepted that the order required BT to monitor traffic on its service and disrupt traffic between BT’s users and the Newzbin2 website, but submitted it did not involve monitoring the information transmitted, alternatively it did not involve a general obligation to monitor, but rather a specific and limited one.

 

    1. In my judgment the submission of counsel for the Studios is supported both by recital (47) of the E-Commerce Directive and by the judgment of the Court of Justice in L’Oréal v eBay. Recital (47) makes it clear that Article 15(1) does not “concern monitoring obligations in a specific case and, in particular, does not affect orders by national authorities in accordance with national legislation”. In L’Oréal v eBay the Court of Justice at [139] equated “a general obligation to monitor” with “an active monitoring of all the data of each of [a website’s] customers in order to prevent any future infringement via that provider’s website”. Furthermore, it went on at [141]-[144] to make it clear that Article 15(1) does not prevent courts from making orders requiring intermediaries “to take measures which contribute … to preventing further infringements”. The order sought by the Studios does not require BT to engage in active monitoring of the kind described by the Court of Justice at [139], but simply to block (or at least impede) access to the Newzbin2 website by automated means that do not involve detailed inspection of the data of any of BT’s subscribers. To the extent that this amounts to monitoring, it is specific rather than general. Furthermore, it would be imposed by a case-specific order made under national legislation which implements Article 8(3) of the Information Society Directive.

 

5. Contrary to Article 10 ECHR

    1. Counsel for BT submitted that section 97A did not provide an adequate legal basis for the order sought by the Studios. Although he did not articulate it in precisely this way, the essence of the submission is that the order sought would be contrary to Article 10 ECHR because it is not “prescribed by law”.

 

    1. Before considering this argument, it is convenient to begin with the position with regard to Convention rights adopted by counsel for the Studios in his skeleton argument before the argument was advanced by counsel for BT. This may be summarised in the following propositions. First, the Studios’ copyrights are property rights protected by Article 1 of the First Protocol. Secondly, the right of freedom of expression under Article 10(1) is engaged by the present application. As counsel for the Studios accepted during the course of argument, this particularly applies with regard to BT’s subscribers’ right to receive information. Thirdly, the Studios’ copyrights are “rights of others” within Article 10(2). Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S [2004] UKHL 47[2005] 1 AC 593 at [17] is also applicable where a balance falls to be struck between Article 1 of the First Protocol and Article 10. That approach is as follows: (i) neither Article as such has precedence over the other; (ii) where the values under the two Articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test – or “ultimate balancing test” – must be applied to each. Fifthly, in the case of copyright, the balance between Article 1 of the First Protocol and Article 10 is primarily struck by the provisions of the CDPA 1988, and in particular the exceptions and limitations contained in Chapter III of Part I, but nevertheless the court is bound, so far as possible, to apply the CDPA 1988 in a manner which accommodates freedom of expression: see Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142[2002] Ch 149 and Case C-275/06Productores de Musica de España (Promusicae) v Telefonica de España SAU [2008] ECR I-271. Sixthly, the fact that the outcome of the balancing exercise may involve an interference with use of the internet does not in itself give rise to any special considerations: see KU v Finland (2009) 48 EHRR 52 at [49].

 

    1. None of these propositions was challenged by counsel for BT. Instead, he relied upon the reasoning of Advocate General Villalón in his Opinion dated 14 April 2011 in Case C-70/10 Scarlet Extended SA v Société belge des auteurs compositeurs et éditeurs (Sabam). At the time of the hearing, this Opinion was only available in French, Spanish and Latvian, but I was provided with an unofficial translation. In addition, I was helpfully provided with a translation of the key first instance decision in the national proceedings, which clarifies the factual circumstances of the case. Since these are not very clear from the Advocate General’s opinion, it is necessary to begin by setting them out.

 

    1. On 24 June 2004 SABAM, which is a Belgian collecting society, commenced proceedings against Tiscali SA, a Belgian ISP which later changed its name to Scarlet Extended SA (“Scarlet”), seeking an order that Scarlet stop infringements of copyrights in musical compositions in SABAM’s repertoire committed by unauthorised exchanges of digital music files using P2P software. In a judgment dated 26 November 2004 the Brussels Tribunal de Première Instance (Court of First Instance) held that (i) SABAM had standing to bring a claim for injunctive relief against Scarlet as an intermediary, (ii) infringement of the copyrights in musical compositions in SABAM’s repertoire occurred with the unauthorised exchange of digital music files using P2P software through Scarlet’s network, (iii) in principle this required the court to order the prevention of such activities, but (iv) the court did not have enough information concerning the feasibility of technical measures that could be implemented by Scarlet to prevent copyright infringements by users of its service. Accordingly, an opinion from a court-appointed expert was ordered on the latter point.

 

    1. For reasons that are not wholly clear, the expert’s report was not delivered until 3 January 2007. In his report he identified 11 solutions for filtering P2P, of which seven were applicable to Scarlet’s network. Of those seven, the expert concluded that only one, CopySense by Audible Magic, sought to identify the protected music content in P2P flows and hence tried to respond specifically to the problem. That solution, however, was targeted to the education industry and was not designed for the volume traffic of an ISP such as Scarlet. Recourse to this technique by an ISP would entail high acquisition and operating costs, but the technique might only be viable for 2-3 years given the increasing use of encryption in P2P exchanges. Pausing there, none of the judgments in Scarlet v SABAM that I have seen contains a technical description of CopySense. A description of it is given, however, by Charleton J in EMI v UPC at [43]-[49]. My understanding is that it involves DPI with detailed, invasive analysis of the contents of data packets.

 

    1. Following the delivery of the expert’s report and further submissions from the parties, the Brussels Court of First Instance gave a further judgment on 29 June 2007. In this judgment, the Court summarised the expert’s conclusions as set out above. It went on, however, to record that SABAM had submitted evidence that CopySense had been adopted by MySpace, that Microsoft had announced its intention to use it, that “a leading Asian ISP” had installed it on its network to evaluate it in 2005 and found that the technology could be used to filter copyright protected content and that an Iometrix study had demonstrated the capacity of CopySense to deal with very large traffic volume. It also recorded that the expert had admitted that he had not examined the feasibility of encryption in P2P networks. It also recorded that Scarlet had not contested these points. The Court concluded that “future potential encryption cannot today be an obstacle to injunctive measures since this one is currently technically possible and capable of producing a result, as it is in the case before this court”, that “the average cost of implementing these measures does not appear excessive” on the basis of 150,000 users and an amortisation period of three years and that “it results from the above considerations that today there exist possible effective technical measures to prevent the copyright infringements found in the 26 November 2004 judgment”.

 

    1. The Court went on to consider a series of legal arguments raised by Scarlet against the relief sought, namely that (i) it would constitute a general obligation to monitor contrary to Article 15 of the E-Commerce Directive, (ii) it would be contrary to Article 12 of the E-Commerce Directive, and (iii) it would violate fundamental rights, in particular the rights to privacy, confidentiality of correspondence and freedom of expression. The Court rejected each of these arguments.

 

    1. Finally, the Court allowed Scarlet a period of six months to comply with this injunction (this period was subsequently extended to 31 October 2008), set a daily penalty of 2,500 euros for non-compliance thereafter and held that Scarlet should bear the cost of compliance.

 

    1. It is important to note that, although it is clear from the Court’s judgment that it was expecting Scarlet to implement CopySense on its network and that it was not looking further ahead than the following three years, the order it actually made was in the following terms:

 

“Order [Scarlet] to stop the copyrights found in the 26 November 2004 judgment by making impossible any form of sending or receipt by its clients, by means of ‘peer to peer’ software, of electronic files containing musical works that are part of the SABAM repertoire, under penalty of euros 2,500 per day where Scarlet does not respect this judgment after a 6 month deadline from notification.”

    1. Although it is not referred to in the Court’s judgment, it appears that from the Advocate General’s Opinion that the jurisdiction on which the Court based this order was that conferred by Article 87(1) of the Belgian Law of 30 June 1994 on Copyright and Rights, as amended by the Law of 10 May 2007 transposing Article 8(3) of the Information Society Directive and Article 11 of the Enforcement Directive. That provision is in almost identical terms to Article 8(3).

 

    1. Scarlet appealed to Brussels Cour d’Appel (Court of Appeal), which decided to refer questions to the Court of Justice. I have not seen the judgment of the Court of Appeal, and so I do not know the precise reasons for the reference. The questions referred, however, were as follows:

 

“1. Do Directives 2001/29 and 2004/48, in conjunction with Directives 95/46, 2000/31 and 2002/58, construed in particular in the light of Articles 8 and 10 of the European Convention on the Protection of Human Rights and Fundamental Freedoms, permit Member States to authorise a national court, before which substantive proceedings have been brought and on the basis merely of a statutory provision stating that: ‘They [the national courts] may also issue an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right’to order an Internet Service Provider (ISP) to introduce, for all its customers, in abstracto and as a preventive measure, exclusively at the cost of that ISP and for an unlimited period, a system for filtering all electronic communications, both incoming and outgoing, passing via its services, in particular those involving the use of peer-to-peer software, in order to identify on its network the sharing of electronic files containing a musical, cinematographic or audio-visual work in respect of which the applicant claims to hold rights, and subsequently to block the transfer of such files, either at the point at which they are requested or at which they are sent?

2. If the answer to the question in paragraph 1 is in the affirmative, do those directives require a national court, called upon to give a ruling on an application for an injunction against an intermediary whose services are used by a third party to infringe a copyright, to apply the principle of proportionality when deciding on the effectiveness and dissuasive effect of the measure sought?”

    1. As I understand the position, the part of the first question from the words “to order” onwards represents the Court of Appeal’s characterisation of the actual order made by the Court of First Instance (and not the Court of First Instance’s reasons for making that order).

 

    1. The Advocate General’s opinion was that the answer to the first question was no, and accordingly there was no need to answer the second question. His reasoning may be summarised as follows:

 

i) He began at [29]-[34] by reformulating the question in terms of Articles 7, 8, 11 and 52(1) of the European Union’s Charter of Fundamental Rights rather than Articles 8 and 10 ECHR. It does not appear to me that this makes any substantive difference to his reasoning, particularly since he went on to cite and apply the jurisprudence of the European Court of Human Rights.

ii) He proceeded at [46]-[52] to consider the filtering and blocking system which the order required the ISP to implement. It is important to note that his analysis was entirely based on the nature of the order as described in the first question. Indeed, in relation to the filtering mechanism, he stated at [49] that “neither the referring court nor SABAM has provided the slightest indication of the concrete methods by which this monitoring could or should be performed”, and in relation to the blocking mechanism, he stated at [52] that “it is impossible to describe the practical modus operandi of the filtering system or the blocking mechanism which the measure sought would impose”. It appears from this that the order for the reference made by the Court of Appeal did not include details of CopySense.

iii) He next considered the characteristics of the injunction at [53]-[65], observing that it (a) was for an unlimited period, (b) covered all communications passing through the ISP’s network, (c) applied to transmissions sent from any Scarlet subscriber to another web user and from other web users to Scarlet subscribers, (d) was purely preventative and (e) was at the cost of the ISP, although its economic impact had not been and could not be estimated in any way. Furthermore, he took the view that, although the present dispute was between SABAM and Scarlet, the solution was doubtless intended to be applied on a widespread basis, across all ISPs and to other major players involved in the internet, not merely in Belgium but beyond. He concluded from these points at [66] that the measure was “general in all respects, whether personal, spatial or temporal”.

iv) He then proceeded at [73]-[87] to consider the impact of the measure on (a) personal data protection (Article 8 of the Charter), (b) privacy of electronic communications (Article 7 of the Charter) and (c) freedom of expression (Article 11 of the Charter), and concluded that it was likely to have a negative effect on the enjoyment of these rights and freedoms.

v) Next he considered the conditions for limiting those rights and freedoms prescribed by Article 52(1) of the Charter, and in particular the condition relating to the “quality of the law”, at [88]-[100]. In this connection, he cited the jurisprudence of the European Court of Human Rights which establishes that the requirement in provisions such as Article 10(2) that restrictions on fundamental rights be “prescribed by law” implies not only that the measure in question must have a legal basis, but also that it must satisfy certain criteria regarding “the quality of the law”. In particular, the law must be sufficiently clear and foreseeable as to the meaning and nature of the applicable measures and must define with adequate clarity the scope and conditions of the exercise of the power to limit rights guaranteed by the Convention.

vi) Finally, he considered whether the national legislation in issue satisfied the condition relating to the “the quality of the law” imposed by Article 52(1) of the Charter at [101]-[114], and concluded that it did not. In short, the legislation did not provide an adequate basis for an order of the kind described in the first question. It may be noted that this part of the Opinion does not specifically refer to Article 8(3) of the Information Society Directive, although it does refer generally to “the national statutory provisions designed to transpose Directives 2001/29 and 2004/48”.

    1. At the time of writing this judgment, the judgment of the Court of Justice on this reference is still awaited, and it seems unlikely that it will be delivered until later this year or early next year. Furthermore, the Advocate General pointed out in footnote 33 to his Opinion that an identical question to the first question had been referred to the Court of Justice in Case C-360/10 Belgische Vereniging van Auteurs, Componisten en Uitgevers (SABAM) v NETLOG NV, a case involving a social networking platform. The hearing in that case was held shortly after the hearing before me. Thus the full picture may not become clear until the Court of Justice delivers its judgment in that case.

 

    1. Even if it is assumed that the Court of Justice will entirely endorse the Opinion of the Advocate General in Scarlet v SABAM, I consider that the present case is clearly distinguishable from that case. Quite simply, the Studios are not seeking an order that BT “introduce, for all its customers, in abstracto and as a preventive measure, exclusively at the cost of that ISP and for an unlimited period, a system for filtering all electronic communications, both incoming and outgoing, passing via its services, in particular those involving the use of peer-to-peer software, in order to identify on its network the sharing of electronic files containing a musical, cinematographic or audio-visual work in respect of which the applicant claims to hold rights, and subsequently to block the transfer of such files, either at the point at which they are requested or at which they are sent”. On the contrary, the order sought by the Studios is clear and precise; it merely requires BT to implement an existing technical solution which BT already employs for a different purpose; implementing that solution is accepted by BT to be technically feasible; the cost is not suggested by BT to be excessive; and provision has been made to enable the order to be varied or discharged in the event of a future change in circumstances. In my view, the order falls well within the range of orders which was foreseeable by ISPs on the basis of section 97A, and still more Article 8(3) of the Information Society Directive. I therefore conclude that the order is one “prescribed by law” within Article 10(2) ECHR, and hence is not contrary to Article 10 ECHR. I will consider the question of proportionality below.

 

Discretion

    1. BT contends that, even if the court has jurisdiction to make the order sought by the Studios, it should decline to do so in the exercise of its discretion for three reasons. I shall also consider a fourth potential reason that was not in terms advanced by counsel for BT, although it underlay some of his submissions on the other points.

 

1. The Studios are not interested in the whole of the Newzbin2 website

    1. It can be seen from the figures quoted in paragraph 53 above that films and television programmes comprise about 70% of the material accessible via Newzbin2, while about 30% of that material consists of other types of content. Furthermore, while the Studios own or control the copyrights in a large proportion of the films and television programmes indexed by Newzbin2, it is clear that other rightholders are also substantially affected by it. Counsel for BT submitted that in these circumstances it would be wrong in principle to grant an injunction which extended beyond the films and television programmes in which the Studios have rights, and to require BT to prevent its subscribers visiting any part of the Newzbin2 website for any purpose.

 

    1. Counsel for BT relied on two authorities in support of this submission. The first is CPI v Robinson. In a passage reported at [1986] 3 All ER 338 at 364-5 which is not included in the Chancery law report, Scott J said this:

 

“In the circumstances, I have no doubt but that the plaintiffs have established in this case that they are entitled to the protection of an injunction.

Counsel, however, has sought on the plaintiffs’ behalf an injunction of a very great breadth. He has sought an injunction restraining the defendants from knowingly infringing copyright in any film for the time belonging to any of the plaintiffs (meaning any member of the MPAA besides the named plaintiffs) or in respect of which any of them is for the time being the exclusive licensee.

It would be impossible for the defendants to know what films were covered by an injunction in that form. In my judgment it would be wrong in principle to grant an injunction the scope of which the defendants subject to it could not know and could not discover. Experience in this litigation has underlined the very great difficulty that is often experienced in ascertaining in whom copyright or exclusive rights in a particular film are for the time being vested.

I am prepared to grant an injunction protecting the copyright or exclusive rights of any of the present plaintiffs in the films in respect of which their respective titles have been established in this action. I am not prepared to extend this protection to companies who are not plaintiffs, that is to say to future MPAA members. Nor am I prepared to extend this protection to cover other films. I am, however, willing to give the present plaintiffs or any of them liberty to apply from time to time on notice to the defendants to extend the injunction to other films. In order to obtain that extension, I contemplate that the applicant would have to satisfy the court, first, that it had copyright or exclusive rights in the film or films in question and, second, either that it had applied to the defendants for suitable undertakings which had not been given, or that for some reason undertakings by the defendants would not be sufficient. The costs of any such application would of course depend on the circumstances of that application.”

    1. This passage does not support counsel for BT’s submission. It is not addressing the question of whether an injunction may be granted which protects third party rightholders, but rather the breadth of the injunction to which the plaintiffs themselves were entitled. As can be seen, Scott J was concerned about the fact that the plaintiffs had encountered great difficulty in proving ownership of (or an exclusive licence under) the copyrights they had asserted in the proceedings. Accordingly, in the exercise of his discretion, he granted an injunction limited to the copyrights proved at trial with liberty to apply to extend it. CPI v Robinson is not even authority for the proposition that a claimant in a copyright action cannot obtain an injunction extending beyond the specific copyrights proved to have been infringed. On the contrary, as counsel for BT accepted, it is commonplace for rightholders such as Phonographic Performance Ltd to be granted injunctions covering the entire repertoire controlled by them even though infringements of only a small number of copyrights have been proved. Furthermore, the copyrights are typically identified only by reference to the trade marks under which the copyright recordings have been released: see Phonographic Performance Ltd v Maitra [1998] 1 WLR 870 and Independiente Ltd v Music Trading Online (UK) Ltd [2003] EWHC 470 (Ch). As can be seen from paragraph 43 above, in 20C Fox v Newzbin Kitchin J granted an injunction which not only covered the Studios’ existing repertoire, but also future additions to the repertoire notified to Newzbin Ltd.

 

    1. The second authority is 20C Fox v Newzbin itself. Counsel for BT relied on the fact that Kitchin J refused to grant an injunction extending beyond the Studios’ copyrights in their repertoire for the reasons he gave at [135] (quoted in paragraph 151 above). As discussed above, he gave three reasons for this refusal, one going to jurisdiction and two going to discretion. I have already considered the question of jurisdiction above. So far as the discretionary reasons are concerned, it seems to me that the third reason given by Kitchin J, namely that “the scope of the injunction would be very uncertain”, was decisive. The order sought by the Studios on the present application is quite different, and does not suffer from that vice. Turning to the first reason, key to this was that Kitchin J had heard “little or no evidence” about third party rights. By contrast, in the present case I have received evidence (a) that third party rights are being infringed and (b) that third party rightholders support the application.

 

    1. I do not read Kitchin J as having said that, if the court has jurisdiction to grant an injunction which protects third party rightholders in addition to the applicant rightholders, nevertheless it would be wrong in principle to grant such an injunction. Furthermore, as noted above, it is clear that the matter was not argued before Kitchin J in any depth. In particular, it seems clear that Kitchin J was not referred to any of the relevant jurisprudence under the Human Rights Act 1998. As counsel for the Studios pointed out, it is now well-established that, where the court is aware from the evidence that the Convention rights of persons other than the parties are engaged, then it is not merely entitled, but obliged, to take them into account. This is particularly well-established in the privacy context, where the courts now routinely take into account, and where appropriate protect, the Article 8 ECHR rights of third parties which are engaged: see e.g. ETK v News Group Newspapers Ltd [2011] EWCA Civ 439, [2011] EMLR 22 at [14]-[21].

 

    1. Counsel for BT sought to distinguish cases such as ETK on the basis that the applicants there were entitled to the whole of the relief claimed, and the Article 8 rights of third parties merely provided further support for the making of the order. I am not convinced that that is an accurate reading of those cases, but in any event I do not consider that it provides a real point of distinction from the present case.

 

    1. In my judgment, subject to the points that remain to be considered, the Studios have established their entitlement to an injunction under section 97A. It appears from the evidence that the Studios form the biggest single group of rightholders interested in obtaining such relief. In any event, it is clear that the Studios’ rights are being infringed on a massive scale. In those circumstances, I consider that they have a sufficient interest to justify the making of the order sought. It is true that the order sought will also benefit other rightholders, but I do not regard this as a reason for refusing the order. On the contrary, I consider that it supports the making of the order. So far as the groups of rightholders referred to in paragraph 4 above are concerned, they all support the application. It is immaterial that they have not formally joined in the application. So far as other rightholders are concerned, their rights under Article 1 of the First Protocol are also engaged and there is no reason to believe that they would not be equally supportive of the application.

 

    1. Finally, I recognise that the order would potentially prevent BT subscribers from making use of Newzbin2 for non-infringing uses. On the evidence, however, the incidence of such uses is de minimis.

 

2. Exposure to multiple claims

    1. Counsel for BT submitted that, if the present application succeeded, there would be nothing to stop countless other applicants coming forward to demand that BT block access to websites alleged to contain unlawful material, and that the court should exercise its discretion to refuse the application for that reason. In this connection he prayed in aid the comments of Advocate General Villalón in Scarlet v SABAM at [61].

 

    1. I accept that it is likely that, if the present application is successful, the Studios are likely to seek similar orders against other ISPs relating to Newzbin2. I do not accept that is a matter that is, or should be, of any concern to BT. On the contrary, as counsel for BT understandably said, BT would be concerned if an order was made against BT, but not against its competitors. If such orders are made, it will be unnecessary for other rightholders to seek orders against ISPs relating to Newzbin2.

 

    1. Turning to other websites that provide access to infringing copies of copyright material, I accept that it is likely that rightholders will wish to obtain similar orders relating to those. It should be borne in mind, however, that in this case the Studios started from the point that they had already obtained judgment against Newzbin Ltd. Even so, the Studios have had to obtain and put before the Court a substantial quantity of evidence in support of the present application. In addition, the application involved the preparation by counsel for the Studios of a lengthy and detailed skeleton argument, a two-day hearing and written submissions following the hearing. Thus this will have been a costly application for the Studios to bring. I recognise, of course, that some of this effort and expenditure is attributable to the present application being a test case, and that subsequent applications ought to require less effort and less expenditure, but on the other hand subsequent applicants will have to prove things that the Studios had already established in 20C Fox v Newzbin. Furthermore, although I cannot prejudge later arguments in this case, it is not inevitable that future applicants will recover all their costs even if successful: compare the practice in respect of Norwich Pharmacal orders, as to which see Totalise plc v Motley Fool Ltd[2001] EWCA Civ 1897[2002] 1 WLR 1233. For these reasons, even if the present application is successful, I think it is clear that rightholders will not undertake future applications lightly. On the contrary, I consider it probable that they will concentrate their resources on seeking relief in respect of the more egregious infringers. I therefore do not anticipate a flood of such applications.

 

    1. In my judgment the fact there may be further applications in future is not a sufficient reason to refuse the present application. BT is concerned that the order sought, if replicated numerous times, would undermine the IWF blocking system and/or put strain on BT’s network and/or impose substantial compliance costs on BT. In my view BT’s evidence does not establish that the making of the present order on its own would have any of these effects. Whether the making of further orders would have those effects can be addressed in evidence as and when they are applied for, in the light of experience gained as a result of the present order assuming it is granted.

 

    1. Counsel for BT also suggested that applications would be made in respect of websites alleged to contain defamatory allegations or private information. In my view applications in respect of websites of those kinds would be likely to raise separate issues to the present application, as well as common ones, and would require separate consideration. Even if the present application succeeds, it does not automatically follow that applications in respect of such websites would succeed.

 

3. Efficacy

    1. Counsel for BT argued that, even if the order sought by the Studios were made, it would be ineffective. It is common ground that, if the order were to be implemented by BT, it would be possible for BT subscribers to circumvent the blocking required by the order. Indeed, the evidence shows the operators of Newzbin2 have already made plans to assist users to circumvent such blocking. There are at least two, and possibly more, technical measures which users could adopt to achieve this. It is common ground that it is neither necessary nor appropriate for me to describe those measures in this judgment, and accordingly I shall not do so.

 

    1. Mr Hutty’s opinion in summary is that users of Newzbin2 would be able to, and would, circumvent the blocking. Mr Clark’s opinion in summary is that, while some users would do this, others would not. Counsel for BT submitted that Mr Hutty’s opinion was to be preferred, because Mr Hutty took into account the level of technical expertise required by users to download infringing content using Newbzin2. Mr Hutty’s opinion is that the level of technical expertise required to circumvent the blocking is little greater. In my judgment Mr Hutty makes a valid point that, in considering the likely efficacy of the order, it is material to consider the technical expertise of those affected by it. Furthermore, his assessment of the comparative level of technical expertise required to use Newzbin2 and to circumvent the blocking appears reasonable. Nevertheless, I am not persuaded that it follows that the order would be ineffective, for the following reasons.

 

    1. First, it seems likely that circumvention will require many users to acquire additional expertise beyond that they presently possess. Even assuming that they all have the ability to acquire such expertise, it does not follow that they will all wish to expend the time and effort required.

 

    1. Secondly, evidence filed by the Studios suggests that circumvention measures are likely to lead to slower performance and lower quality downloads, at least unless users are prepared to pay for a certain service provided by a different provider. Again, it is not necessarily the case that all users will be prepared to do this. This is not merely a question of money: there is also a potential security issue with using such services.

 

    1. Thirdly, it is important not to overlook the question of economics. As I have explained above, Newzbin2 members have to pay a subscription to use it to access content. They will also need to have a Usenet service. For the reasons Mr Hutty himself explains, they will commonly need to use a paid service. Thus they are not getting infringing content for free even as matters stand. If, in addition to paying for (a) a Usenet service and (b) Newzbin2, the users have to pay for (c) an additional service for circumvention purposes, then the cost differential between using Newzbin2 and using a lawful service (such as a DVD rental service) will narrow still further. This is particularly true for less active users. The smaller the cost differential, the more likely it is that at least some users will be prepared to pay a little extra to obtain material from a legitimate service.

 

    1. Fourthly, I agree with counsel for the Studios that the words of Kenneth Parker J in R (on the application of British Telecommunications plc) v Secretary of State for Business, Innovation and Skills [2011] EWHC 1021 (Admin) at [232] are equally applicable here:

 

“It is not disputed that technical means of avoiding detection are available, for those knowledgeable and skilful enough to employ them. However, the central difficulty of this argument is that it rests upon assumptions about human behaviour. Experts can seek to establish a profile of those who engage in P2P file sharing, and their various reasons for doing so, and may then attempt to predict how these users may be likely to respond if confronted with the kind of regime that the DEA enacts. In theory, some may cease or substantially curtail their unlawful activities, substituting or not, for example, lawful downloading of music; others may simply seek other means to continue their unlawful activities, using whatever technical means are open. The final outcome is uncertain because it is notoriously difficult accurately to predict human behaviour…”

As it happens, the Studios’ evidence is that when a similar kind of order was made by an Italian court blocking access to the Pirate Bay, use of the site appears to have been markedly reduced. It is fair to observe that, as BT’s evidence points out, diverted traffic may not have been picked up by the monitoring results relied on; but there is no hard evidence of a substantial quantity of diverted traffic.

    1. Finally, I agree with counsel for the Studios that the order would be justified even if it only prevented access to Newzbin2 by a minority of users.

 

4. Proportionality

    1. A point which underlies some of the submissions made by counsel for BT, although it was not relied upon by him as a free-standing ground of objection to the proposed order, is the question of proportionality. As set out above, counsel for the Studios accepted that the proposed order engaged the Article 10 ECHR rights of BT’s subscribers, and accordingly that it was incumbent on the Studios to satisfy the court that the interference with those rights was proportionate having regard to the Studios’ rights protected by Article 1 of the First Protocol. The requirement for proportionality is also laid down by the judgments of the Court of Justice in Promusicae and L’Oréal v eBay.

 

    1. In general, I am satisfied that the order sought by the Studios is a proportionate one. It is necessary and appropriate to protect the Article 1 First Protocol rights of the Studios and other copyright owners. Those interests clearly outweigh the Article 10 rights of the users of Newzbin2, and even more clearly outweigh the Article 10 rights of the operators of Newzbin2. They also outweigh BT’s own Article 10 rights to the extent that they are engaged. The order is a narrow and targeted one, and it contains safeguards in the event of any change of circumstances. The cost of implementation to BT would be modest and proportionate.

 

    1. A specific issue which arose in this connection is that counsel for BT submitted that, if the court was minded to grant an order, the order should require the Studios to identify individual URLs corresponding to the individual NZBs files indexed by Newzbin2 which relate to infringing copies of individual copyright works. Notwithstanding the reference in the Studios’ draft order to “and its domains and sub domains”, counsel for the Studios opposed this. In my judgment such a requirement would not be proportionate or practicable since it would require the Studios to expend considerable effort and cost in notifying long lists of URLs to BT on a daily basis. The position might be different if Newzbin2 had a substantial proportion of non-infringing content, but that is not the case.

 

A reference to the Court of Justice?

    1. Counsel for BT suggested during the hearing that it might be necessary to refer questions of interpretation of European law to the Court of Justice in order to determine this application. Counsel for the Studios resisted a reference, while recognising that the question might depend on the Court’s judgment in L’Oréal v eBay. Following that judgment, he submitted that no reference was necessary. I accept that submission. In my view the principles of European law to be applied are now sufficiently clear to enable me to determine this application without recourse to a reference. For the sake of clarity, it should be appreciated that one of the key issues I have considered, namely the interpretation of the requirement of “actual knowledge” in section 97A is primarily a matter of domestic law, albeit within the framework created, and the constraints imposed, by European law.

 

    1. It is worth recording that counsel for the Studios submitted that, in the event that I concluded that a reference was required, an interim injunction should be granted in the meantime. It was common ground between counsel that the test to be applied in that event was the normal American Cyanamid test subject to the modification required by section 12(3) of the HRA 1988 as interpreted by the House of Lords in Cream Holdings Ltd v Banerjee [2004] UKHL 44[2005] 1 AC 253, namely that the Studios would have to show that they were more likely than not to succeed.

 

Conclusion

    1. For the reasons given above, I will make an order substantially in the form sought by the Studios. I will hear counsel on the precise wording of the order, as well as any other matters arising.

 

 

 

Neutral Citation Number: [2012] EWHC 268 (Ch)
Case No: HC11C04518

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Rolls Building, Fetter Lane, London EC4A 1NL
20 February 2012

B e f o r e :

THE HON MR JUSTICE ARNOLD
____________________

Between:

DRAMATICO ENTERTAINMENT LIMITED
EMI RECORDS LIMITED
MERCURY RECORDS LIMITED
POLYDOR LIMITED
ROUGH TRADE RECORDS LIMITED
SONY MUSIC ENTERTAINMENT UK LIMITED
VIRGIN RECORDS LIMITED
WARNER MUSIC UK LIMITED
679 RECORDINGS LIMITED
Claimants
– and –

BRITISH SKY BROADCASTING LIMITED
BRITISH TELECOMMUNICATIONS PLC
EVERYTHING EVERYWHERE LIMITED
TALKTALK TELECOM GROUP PLC
TELEFÓNICA UK LIMITED
VIRGIN MEDIA LIMITED
Defendants

____________________

Ian Mill QC, Edmund Cullen and Tom Richards (instructed by Forbes Anderson Free) for the Claimants
The Defendants did not appear and were not represented
Hearing date: 9 February 2012 

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

MR JUSTICE ARNOLD :

Contents

Topic Paras
Introduction 1-8
The absence of the operators and users of TPB 9-15
The Claimants’ rights 16-18
Bittorrent 19-20
TPB 21-29
Legal Framework 30-38
    International treaties 30-33
        Berne Convention 30
        WIPO Copyright Treaty 31-32
        WIPO Performances and Phonograms Treaty 33
    Information Society Directive 34-36
    Domestic Implementation of the Information Society Directive 37
    The 1988 Act 38
Infringement by users of TPB 39-71
    Copying 40-43
    Communication to the public 44-71
Infringement by the operators of TPB 72-83
    Authorisation 73-81
        The nature of the relationship 75-76
        The means used to infringe 77
        Inevitability of infringement 78
        Degree of control 79
        Steps to prevent infringement 80
        Conclusion 81
    Joint tortfeasance 82-83
Conclusion 84

 

 

Introduction

    1. The Claimants are record companies claiming on their own behalf and in a representative capacity on behalf of the other members of BPI (British Recorded Music Industry) Ltd (“BPI”) and Phonographic Performance Ltd (“PPL”). The Defendants are the six main retail internet service providers (“ISPs”). Between them they have a fixed line market share of some 94% of UK internet users. By this claim the Claimants seek an injunction against the Defendants pursuant to section 97A of the Copyright, Designs and Patents Act 1988 (“the 1988 Act”), which implements Article 8(3) of European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“the Information Society Directive”), requiring the Defendants to take measures to block or at least impede access by their customers to a peer-to-peer (“P2P”) file-sharing website called The  Pirate  Bay (“TPB”).

 

    1. In Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch)[2011] RPC 28 (“20C Fox v BT“) I held that the Court had jurisdiction, and that it was appropriate to exercise my discretion, to make a blocking order against the Second Defendant (“BT”) with respect to a website called Newzbin2. In Twentieth Century Fox Film Corp v British Telecommunications plc (No 2) [2011] EWHC 2714 (Ch) I determined the terms of that order.

 

    1. On 12 December 2011 Vos J made a similar order against the First Defendant (“Sky”) in respect of Newzbin2. The making of the order was not opposed by Sky, and its wording was agreed. Paragraph 1 of that order provides:

 

“In respect of its residential fixed line Sky Broadband customers to whose service the system known as Mohawk is applied, the Respondent shall within 7 working days adopt the following technical means to block or attempt to block access by its customers to the website currently known as Newzbin2 and currently accessible at http://www.newzbin.com, its domains and sub-domains and including payments.newzbin.com and any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin2 website. The technology to be adopted is:

(i) IP blocking in respect of each and every IP address from which the said website operates and which is:

(a) notified in writing to the Respondent by the Applicants or their agents; and

(b) in respect of which the Applicants or their agents notify the Respondent that the server with the notified IP address blocking does not also host a site that is not part of the Newzbin2 website.

(ii) IP address re-routing in respect of all IP addresses that provides access to each and every URL available URL available from the said website and its domains and sub-domains and which URL is notified in writing to the Respondent by the Applicants or their agents; and

(iii) URL blocking in respect of each and every URL available from the said website and its domains and sub-domains and which is notified in writing to the Respondent by the Applicants or their agents.”

    1. On 9 February 2012 I made a similar order against the Fourth Defendant (“TalkTalk”) in respect of Newzbin2. Again, the making of the order was not opposed by TalkTalk, and its wording was agreed. Paragraphs 1-4 of that order provide:

 

“1. In respect of its customers to whose internet access service the system known as SIG (Service Inspection Gateway) is applied whether optionally or otherwise, the Respondent shall within 10 working days adopt the following technical means to block or attempt to block access to the website currently known as Newzbin2 and currently accessible at http://www.newzbin.com and/or http://www.newzbin2.es, its domains and sub-domains and including payments.newzbin.com and any other URL the sole or predominant purpose of which is to enable or facilitate access to the Newzbin2 website. The technical means to be adopted is:

URL blocking in respect of each and every URL from which the said website (and its domains and sub-domains which are notified in writing to the Respondent by the Applicants or their agents) operates.

2. For the avoidance of any doubt, paragraph 1 is complied with if the Respondent uses the system known as SIG.

3. In respect of its customers to whose internet access service the system known as blackholing is applied, the Respondent shall within 10 working days adopt the following technical means to block or attempt to block access to any IP address the sole or predominant purpose of which is to enable or facilitate access to the Newzbin2 website. The technical means to be adopted is:

IP blocking in respect of each and every IP address from which the said website operates and which is:

(a) notified in writing to the Respondent by the Applicants or their agents; and

(b) in respect of which the Applicants or their agents notify the Respondent that the server with the notified IP address does not also host a site that is not part of the Newzbin2 website.

4. For the avoidance of any doubt, paragraph 3 is complied with if the Respondent uses the system known as blackholing.”

    1. As I explained in 20C Fox v BT at [2], that application was a sequel to a successful claim for copyright infringement brought by the applicants in that case against Newzbin Ltd, which had operated an almost identical website to Newzbin2 (“Newzbin1”). Newzbin Ltd was found by Kitchin J to have infringed the claimants’ copyrights on a large scale: Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch)[2010] FSR 21 (“20C Fox v Newzbin“). He granted an injunction against Newzbin Ltd to restrain further infringements of the claimants’ copyrights. Subsequently the Newzbin1 website ceased operation. Shortly afterwards, however, the Newzbin2 website commenced operation at the same location. As was explained in more detail in 20C Fox v BT at [48]-55], Newzbin2 operated in essentially the same manner as Newzbin1. It followed that Kitchin J’s findings of infringement of copyright in respect of Newzbin1 were equally applicable to Newzbin2: see 20C Fox v BT at [113].

 

    1. In the present case, however, the Claimants have not brought proceedings for copyright infringement against the operators of TPB in this jurisdiction, although both civil and criminal proceedings have been brought in a number of other jurisdictions. Accordingly, the Claimants and the Defendants agreed to a consent order made by Henderson J on 20 January 2012 directing the trial of two preliminary issues, namely whether on the evidence before the Court, (i) users and (ii) the operators of TPB infringe the Claimants’ copyrights in the UK. The remaining issues raised by the claim were left to be dealt with at a second hearing if the Claimants prevailed on either or both of the preliminary issues. In the particular circumstances of the present case, I accept that this was a sensible way in which to proceed, but I wish to make it clear that I do not regard it as essential for claims of this nature to be dealt with in two stages.

 

    1. Understandably, the Defendants did not choose to appear or be represented at the trial of the preliminary issues. I was informed by counsel for the Claimants that the Defendants’ position is that it is not for the Defendants to decide whether or not users or the operators of TPB infringe the Claimants’ rights, but for the Court to do so. Be that as it may, I have considered the Claimants’ contentions with care to see if they are made out on the evidence and the law.

 

    1. The Claimants have filed a considerable volume of evidence in support of the claim. Some of this evidence relates to issues other than the preliminary issues. I do not consider that it is necessary to summarise all the evidence relevant to the preliminary issues in this judgment, although I have taken it all into account.

 

The absence of the operators and users of TPB

    1. The operators of TPB have not been joined as defendants to this claim, nor has it been served upon them. They did not appear at the hearing, nor have they been represented. Nor has any user been joined, served, appeared or been represented. It might be asked why it would be appropriate for this Court to determine the preliminary issues in their absence. Counsel for the Claimants gave four answers to that question, the first three of which I agree with.

 

    1. First, there is no jurisdictional requirement to join or serve the operators or users of TPB. Article 8(3) of the Information Society Directive and section 97A of the 1988 Act (set out below) confer jurisdiction on the Court to grant injunctions against intermediaries whose services are used by a third party to infringe copyright. Neither Article 8(3) nor section 97A requires joinder or service of the third party.

 

    1. Secondly, the courts both in this jurisdiction and in other Member States have proceeded on the basis that it is not necessary to join or serve the third party. In 20C Fox v BT the operators of Newzbin2 claimed to be different to the operators of Newzbin1. I granted the order sought even though the operators of Newzbin2 had not been joined or served and no user was joined or served (although one user did apply to be joined prior to the second hearing). The same approach has been adopted by courts in Belgium, Denmark and the Netherlands. Thus in Stichting Bescherming Rechten Entertainment Industrie Neederland BREIN v Ziggo BV (case 374634/HA ZA 10-3184, judgment dated 11 January 2012) the District Court of the Hague (Judges Blok, Kalden and Loos) held at [4.42]:

 

“The District Court considers on that as follows. The imposing of the claimed order meets the conditions of due process. After all, the measure is imposed after a prior, fair and impartial procedure, i.e. the present proceedings. Contrary to what Ziggo and XS4ALL argue, it is not required that all its subscribers are parties to the proceedings or are heard. It provides that ‘the person or persons concerned’ must be heard. In a case like the present one, in which an order is claimed against intermediaries, such intermediaries can be considered to be the persons concerned in the sense of this provision. Said intermediaries have been heard. Any different interpretation would render the regulation for orders against intermediaries which the European legislator has implemented with the Enforcement Directive meaningless. It is inherent in such regulation that an order can be imposed upon inter alia internet providers to cease their services in proceedings to which the alleged infringer is not, at least not necessarily a party and so is not heard in it. One of the reasons for implementing such an option is precisely, after all, the situation that the alleged infringer cannot be sued, for instance because his identity is not known (see Memorandum, following the report, Parliamentary Documents II 2005-2006, 30 392, no. 6, p. 10 and 11).”

    1. Thirdly, it would be impracticable, or at least disproportionate, to require joinder or service of the operators or users of TPB. TPB was set up and originally operated by four Swedish individuals (Fredrik Neij, Gottfrid Svartholm Warg, Peter Sunde Kolmisoppi and Carl Lundström) who were convicted of criminal offences of aiding and abetting copyright infringement by the Swedish courts. It appears that, while their (unsuccessful) appeals against conviction were pending, they left the jurisdiction of the Swedish courts. While Warg is said to be in Cambodia, it is unclear where the others are. Furthermore, they have claimed that TPB is now operated by a Seychelles company called Reservella Ltd, although this is disputed. In subsequent civil proceedings brought by a number of record companies in Sweden against Warg, Neij and Sunde, the court has thus far been unable to serve the proceedings on the defendants. There is no reason to believe that any attempt to serve English proceedings on them would be any more successful.

 

    1. Even if proceedings could be served upon the operators of TPB, there is no reason to believe that they would seek to defend them or to make representations to this court. The BPI wrote to the operators complaining of infringement on 12 July 2011 and subsequently sent a copy of the letter by email on 10 August 2011, but received no reply. The operators’ attitude is clear from the following passage on the “about” page of TPB:

 

“Only torrent files are saved at the server. That means no copyrighted and/or illegal material are stored by us. It is therefore not possible to hold the people behind The  Pirate Bay responsible for the material that is being spread using the tracker. Any complaints from copyright and/or lobby organisations will be ridiculed and published at the site.”

True to their word, the “legal threats” page of the website contains links to copies of a series of cease and desist letters sent by right owners together with the operators’ responses, which tend to the profane. The page ends:

“No action (except ridiculing the senders) has been taken by us because of these. 🙂

Nice graphs for the law firms who don’t get the hint above:

(we used to have a nice graph here, but it’s simpler to just say: 0 torrents has been removed, and 0 torrents will ever be removed.)”

There is more evidence of this kind.

    1. Turning to the users of TPB, the evidence is that there is a considerable number of these in the UK. While in theory it would be possible to identify those users, or most of them, who were using TPB during a particular period by means of Norwich Pharmacal orders directed to ISPs, that would be a costly exercise in itself. It would be wholly disproportionate to attempt to join or serve all such users, and there would be no basis for singling out particular users for joinder or service. Nor, I suspect, would most users wish to defend the proceedings or even make representations.

 

    1. The fourth answer given by counsel was that any findings of infringement made in these proceedings would not be binding upon the operators or users of TPB. While technically correct, I do not regard this point as particularly persuasive, since if the order sought by the Claimants is granted the operators and users of TPB will be adversely affected.

 

The Claimants’ rights

    1. Each of the Claimants is in the business of making and exploiting sound recordings of musical works. To that end they own or exclusively license the copyrights in such sound recordings. As noted above, they represent the members of BPI and PPL. BPI is an industry body which represents the interests of independent and major record companies in the UK. Currently BPI has some 361 members. It is a member of the International Federation of the Phonographic Industry (“IFPI”), which represents the interests of the recording industry worldwide. IFPI has 1,400 members in 66 countries, and affiliated industry associations in 45 countries. PPL is a UK collective licensing body which administers certain of the rights conferred by copyright on behalf of its members. The members of BPI and PPL between them hold the UK rights for approximately 99.8% of all sound recordings sold legally in the UK. The Claimants’ evidence is that, with one exception, none of the members of BPI or PPL has granted a licence to TPB.

 

    1. For the purposes of these proceedings, the Claimants rely in particular upon the copyrights which the relevant Claimant owns in each of the recordings in the following sample albums:

 

 

Recording Claimant
“The House” by Katie Melua Dramatic Entertainment Ltd
“It’s Not Me, It’s You” by Lily Allen EMI Records Ltd
“Last Night On Earth” by Noah & The Whale Mercury Records Ltd
“Lights” by Ellie Goulding Polydor Ltd
“Valhalla Dancehall” by British Sea Power Rough Trade Records Ltd
“Everybody Wants To Be On TV” by Scouting For Girls Sony Music Entertainment UK Ltd
“What Did You Expect From The Vaccines?” by The Vaccines Sony Music Entertainment UK Ltd
“Hold Me Down” by You Me At Six Virgin Records Ltd
“Seasons Of My Soul” by Rumer Warner Music UK Ltd
“The Defamation of Strickland Banks” by Plan B 679 Recordings Ltd

 

    1. Each Claimant has confirmed that it has not granted TPB a licence in respect of the respective sample recording(s).

 

Bittorrent

    1. The Bittorrent P2P protocol is described in an expert report by Michael Walsh of Kerna Communications Ltd, a specialist computer networking and security consultancy based in Dublin. It is convenient to quote the key passages of his report:

 

“65. Peer to peer technologies are in continuing development. Since the successful prosecution of a previous service, Limewire, in 2010 Bittorrent has emerged as the dominant P2P protocol. P2P services each differ from one another in many technical details, but they all share certain basic elements:

(a) The user downloads and installs on his or her computer a piece of software, for example µTorrent (also known as uTorrent). This software is easily found using an internet search engine and is downloaded for free without any personal identification required.

(b) Once the software is installed on a computer, whenever that computer connects to the Internet it becomes part of a P2P network or system consisting of many other computers using the same software. P2P software often installs itself so that it runs in the background whenever the computer is started.

(c) A user locates files for download in different places depending on the P2P technology in use. Bittorrent users may use The  Pirate  Bay because it is simple to search and find music, video, games and software.

(d) Once a user is a participant in a P2P network, he or she can download files hosted and being made available by other users of the P2P network. At the same time the user’s computer acts as an uploader, making the files that it has locally available to others. The files are not stored or hosted on a central server. Instead, each computer that is part of the network can act as a mini-server from which other P2P users on the network can download files.

(e) P2P technology distributes large data files by breaking them up into small pieces (chunks) and sends them over the Internet to the requesting user. The P2P software may request chunks of the file from different members of the P2P network. When all the data is received by the user’s computer, the file is reassembled as a whole.

(f) Because of their organisation, where users in a P2P network will generally act both as a client and a server (i.e. uploader as well as downloader), each participant provides resources to the network such as bandwidth, storage space and computing power, thereby increasing capacity as the network grows. P2P networks scale well as they grow in size and are resilient where there is no central component.

66. When an uploader using an ISP’s Internet service chooses to share a copyright work stored on his or her computer such as a sound recording or film in the form of a digital file and connects to a P2P service using an ISP’s Internet service, he or she makes that file publicly available to substantial numbers of other P2P users who are able to search for the file and, on a request made automatically by one PC to another, transfer and share further copies of that file over the Internet.

Sharing a file for the first time

68. In the Bittorrent system, when a user has a new file to share with other peers (i.e. no other copies already exist in P2P networks) they first need to make available details relating to that file so that others can find it.

69. They first select two related entities that will facilitate P2P distribution of the new file – the ‘tracker’ that will co-ordinate the distribution of the file among the peers and the torrent site itself where the user will publish the information necessary to share the file.

70. The tracker is commonly needed because, during the sharing process, the identity of the computers which can provide pieces that make up the file contents change regularly as other users acquire the content and make it available (and others may become unavailable).

71. The tracker monitors the computers that have all or some of the pieces available for download and makes that information available to any user’s Bittorrent client when it commences the download process.

72. The user then creates, typically with a piece of software, a torrent file that provides all the information necessary for others to download the shared file using P2P software. The torrent file is a small text file. It provides a set of instructions to the Bittorrent client installed on a user’s computer. The torrent file does not itself contain any of the content to which it relates. The Torrent file contains the file list, file sizes and hash values that the Bittorrent software assigns to the files to, in effect, uniquely identify the content. The hash value is a reference code comprising a string of letters and numbers, which is used to identify each piece of the content to be shared. This enables the tracker to recognise pieces of the content file as they are shared and is intended to ensure that the content files are correctly downloaded and unmodified.

73. The user uploads that torrent file to the torrent site. The user then runs their P2P client software on the machine containing the complete file to be shared – a process known as providing the seed, or seeding.

74. The P2P client software then interacts with the torrent site and associated tracker to allow others to find and share that new file.

Downloading and sharing a file that is already available

75. A computer user would typically download and share a file using Bittorrent P2P in the following manner:

(a) Identify the file they wish to download – either by using a web browser and search engine to find a site hosting torrent files, or alternatively going directly to a known dedicated torrent website and browsing its contents.

(b) Retrieve and open the torrent file associated with that file using the Bittorrent client software running on their computer.

(c) The Bittorrent client software uses the information in that torrent file to communicate with the tracker server that identifies all users (‘peers’) who are able to share the file.

(d) Computers that are online, running P2P software and are able to share the file, report back regularly to the tracker to let it know they can provide (pieces of) the file to other peers.

(e) The tracker server links peers together and each peer then sends pieces of the file to the user’s computer where the P2P client software receives them and reassembles them into the complete file.

76. Often, through the course of downloading a single file, one peer will connect to hundreds of others. Therefore, unlike other systems (where high demand for a particular content file may slow the download process), where demand for a specific file via Bittorrent is high, the more efficient the download performance for all users.

77. A Bittorrent user that has a complete file available for upload is called a ‘Seeder’ and their file copy is called a ‘Seed’. A user that is downloading, but does not yet have the complete file, is called a Leecher.

78. The community of Bittorrent computers sharing a file at any time is called a Swarm. The size and membership of a swarm will change over time as computers come and go.”

    1. As is clear from this account, the key part of the Bittorrent protocol is the creation and distribution of torrent files associated with particular content files. The torrent files do not themselves contain any material from the associated content files. Rather, they enable the identification, and hence the uploading and downloading, of the relevant content files. Thus they serve a somewhat similar function to the NZB files described in 20C Fox v Newzbin at paragraphs [29] to [31] (summarised in 20C Fox v BT at [32]).

 

TPB

    1. TPB describes itself on the “about” page as follows:

 

“The  Pirate  Bay is the worlds largest bittorrent tracker. Bittorrent is a filesharing protocol that in reliable way enables big and fast file transfers.

This is an open tracker, where anyone can download torrent files. To be able to upload torrent files, write comments and personal messages one must register at the site. This is of course free.”

    1. TPB provides an organised directory of content which users can browse and from which they can select the content of their choice. Among the search options available are “music” and “audio”. By use of the various search options it is easy to find, among other things, recordings by particular artists. It is also possible to select files that are popular with other users. Furthermore, users can select file types including “music” and “FLAC” (i.e. Free Lossless Audio Codec, an audio format similar to MP3).

 

    1. Having selected the content, the user downloads the relevant torrent file for that content from TPB. The Bittorrent software on the user’s computer will then use the information in the torrent file to download the “pieces” of the content file from the “swarm” in the manner described by Mr Walsh.

 

    1. As Mr Walsh explains in a second report TPB used to offer so-called Magnet links as an alternative to downloading a torrent file directly from its website. Recently TPB has made provision of a Magnet link the default option (while retaining the facility for direct download if the user wishes it). A Magnet link simply provides a different means whereby TPB enables users to download torrent files. The Magnet link connects the user either to a Bittorrent tracker or to the “swarm” in order to obtain the torrent file rather than obtaining it directly from The  Pirate Bay. It is not necessary to go into the technical details of this. Once the torrent file has been acquired, the user can download the content to which it relates.

 

    1. TPB also provides a simple facility for registered users to upload torrent files. Registration is straightforward and free.

 

    1. TPB is a very widely-used website. As at 19 December 2011, over 30 million users worldwide were using its service. As of 21 December 2011, it was the 43rd most popular website in the UK according to the authoritative Alexa rankings. According to Comscore measurements, in October 2011 it received 3,669,050 unique visitors from the UK (8.61% of the worldwide total).

 

    1. As for the content that is available on TPB, it is vast in scale. As at 19 December 2011, its index listed 4,021,772 torrent files. In order to provide evidence of the extent to which BPI’s members’ works are included in that content, Dr David Price, who is Head of Piracy Intelligence at Envisional Ltd, a consultancy based in Cambridge, has undertaken an analysis of its distribution between different categories of content using a sample of 62,380 files. He concludes that 25.59% of the content is comprised of music (including music videos).

 

    1. Dr Price has also analysed the proportion of this content which is commercially available, and therefore highly likely to be protected by copyright. In the music category, 75.1% of the files chosen for verification were confirmed as being commercially available. An additional 3% were considered to be likely to be protected by copyright. Applying these figures to the total number of torrents available as at 19 December 2011, it implies that over 1 million “music” torrents were listed on TPB, of which over 750,000 were commercially available. As at that date, torrents for 72 of the top 75 albums in the UK chart were available on TPB.

 

    1. It should be noted that the operators of TPB do not operate the website for altruistic reasons. On the contrary, the website carries click-through advertising. Dr Price estimates the revenue generated by such advertising, based on some fairly conservative assumptions, at somewhere in the range US$1.7 to 3 million in the month of October 2011. In addition the operators sell merchandise, the revenue from which is more difficult to estimate.

 

Legal framework

International treaties

    1. Berne Convention. The International Convention for the Protection of Literary and Artistic works signed at Berne on 9 September 1886 (Paris Act of 1971 as amended in 1979) (“the Berne Convention”), to which all Member States of the European Union are parties, includes the following provisions:

 

Article 2

(1) The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Article 11bis

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:

(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images;

(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;

(iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.

…”

    1. WIPO Copyright Treaty. The World Intellectual Property Organisation Copyright Treaty agreed in Geneva on 20 December 1996 (“the WIPO Copyright Treaty”), to which the European Union and all its Member States are parties, includes the following provisions:

 

Article 1

Relation to the Berne Convention

(1) This Treaty is a special agreement within the meaning of Article 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Parties that are countries of the Union established by that Convention. This Treaty shall not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties.

(2) Nothing in this Treaty shall derogate from existing obligations that Contracting Parties have to each other under the Berne Convention for the Protection of Literary and Artistic Works.

(3) Hereinafter, ‘Berne Convention’ shall refer to the Paris Act of July 24, 1971 of the Berne Convention for the Protection of Literary and Artistic Works.

(4) Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the Berne Convention.

Article 8

Rights of communication to the public

Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing 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 these works from a place and at a time individually chosen by them.”

    1. At the Diplomatic Conference at which the WIPO Copyright Treaty was adopted, a number of statements concerning its interpretation were agreed. These include the following statement in relation to Article 8:

 

“It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention. …”

    1. WIPO Performances and Phonograms Treaty. The World Intellectual Property Organisation Performances and Phonograms Treaty (“the WIPO Performances and Phonograms Treaty”), which was agreed at the same time as the WIPO Copyright Treaty, and to which the European Union and all its Member States are also parties, includes the following provisions:

 

Article 10

Right of Making Available of Fixed Performances Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, 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.

Article 14

Right of Making Available of Phonograms

Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public of their phonograms, 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.”

Information Society Directive

    1. The Information Society Directive contains 61 recitals. For present purposes, it is sufficient to refer to the following:

 

“(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.

(25) The legal uncertainty regarding the nature and the level of protection of acts of on-demand transmission of copyright works and subject-matter protected by related rights over networks should be overcome by providing for harmonised protection at Community level. It should be made clear that all rightholders recognised by this Directive should have an exclusive right to make available to the public copyright works or any other subject-matter by way of interactive on-demand transmissions. Such interactive on-demand transmissions are characterised by the fact that members of the public may access them from a place and at a time individually chosen by them.

(26) With regard to the making available in on-demand services by broadcasters of their radio or television productions incorporating music from commercial phonograms as an integral part thereof, collective licensing arrangements are to be encouraged in order to facilitate the clearance of the rights concerned.

(27) The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.

(58) Member States should provide for effective sanctions and remedies for infringements of rights and obligations as set out in this Directive. They should take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for should be effective, proportionate and dissuasive and should include the possibility of seeking damages and/or injunctive relief and, where appropriate, of applying for seizure of infringing material.

(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network. This possibility should be available even where the acts carried out by the intermediary are exempted under Article 5. The conditions and modalities relating to such injunctions should be left to the national law of the Member States.”

    1. Article 3 provides as follows:

 

Right of communication to the public of works and right of making available to the public other subject-matter

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.”

    1. Article 8 provides as follows:

 

Sanctions and remedies

1. Member States shall provide appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive and shall take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for shall be effective, proportionate and dissuasive.

2. Each Member State shall take the measures necessary to ensure that rightholders whose interests are affected by an infringing activity carried out on its territory can bring an action for damages and/or apply for an injunction and, where appropriate, for the seizure of infringing material as well as of devices, products or components referred to in Article 6(2).

3. Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Domestic implementation of the Information Society Directive

    1. The Information Society Directive was transposed into domestic law by the Copyright and Related Rights Regulations 2003, SI 2003/2498 (“the 2003 Regulations”). Article 3 was implemented by Regulations 6 and 7, which amended section 20 in Part I of the 1988 Act and inserted new section 182CA into Part II of the 1988 Act, although as discussed below the amendment to section 20 went further than Article 3 required. Article 8(3) was implemented by Regulation 27, which inserted new sections 97A and 191JA into Parts I and II respectively of the 1988 Act.

 

The 1988 Act

    1. As amended by the 2003 Regulations, the 1988 Act includes the following provisions:

 

The acts restricted by copyright in a work

16.(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom –

(a) to copy the work (see section 17);

(d) to communicate the work to the public (see section 20);

and those acts are referred to in this Part as the ‘acts restricted by the copyright’.

(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.

(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it –

(a) in relation to the work as a whole or any substantial part of it

(b) either directly or indirectly;

and it is immaterial whether any intervening acts themselves infringe copyright.

Infringement of copyright by copying

17.(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.

(2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means.

(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work.

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.

97A Injunctions against service providers

(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.

(2) In determining whether a service provider has actual knowledge for the purpose of this section, a Court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to –

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and

(b) the extent to which any notice includes –

(i) the full name and address of the sender of the notice;

(ii) details of the infringement in question.

(3) In this section ‘service provider’ has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002.”

Infringement by users of TPB

    1. The Claimants contend that UK users of TPB infringe their copyrights in two ways. First, by copying sound recordings within section 17 of the 1988 Act. Secondly, by communicating sound recordings to the public within section 20 of the 1988 Act. I will consider these in turn.

 

Copying

    1. It is clear that a user of TPB who selects a torrent file in order to obtain a copy of particular content, and then downloads the associated content files, copies the content contained in those files on his or her computer. It follows that, if the content files comprise a copyright work, and if the user does not have licence of the copyright owner, he or she will be infringing copyright.

 

    1. The Claimants have adduced evidence from Thomas Sehested of MarkMonitor Inc, a company that specialises in evidence gathering on the internet. MarkMonitor has conducted an investigation into the exploitation of the sample recordings by the operators and users of TPB. Mr Sehested’s evidence demonstrates that between 11 and 29 November 2011 (i) torrent files for all of the sample recordings were available for download on TPB, (ii) by means of those torrent files, at least 15% of each album comprised in the sample recordings was being shared by a user via an account held at each of the Defendants and (iii) at least 1% of each album had been downloaded by MarkMonitor from each user account. Thus users of TPB who have accounts with each of the Defendants (and who are therefore in the UK) have been engaged in sharing (and thereby making unlicensed copies of) the sample recordings.

 

    1. More generally, Mr Sehested explains that since 2007 MarkMonitor has monitored the activities of P2P users in the UK for the IFPI. For this purpose the IFPI have supplied MarkMonitor with sample lists of copyright-protected record label repertoire, selected on the basis of the UK Singles and Album charts. As at 20 December 2011, the list comprised 15,000 titles. MarkMonitor monitors P2P networks to ascertain the number of instances where titles on the list are made available to, and downloaded by, P2P users via the Defendants. This information has been utilised for the purpose of providing notifications to the Defendants of instances where their services have been used for the illegal downloading of works of the BPI’s members. By 21 November 2011, some 3,299,337 such instances had been identified. The vast majority of these involved the Bittorrent protocol. Since TPB is the most popular torrent site, it may be inferred that a substantial proportion involved use of TPB.

 

    1. I therefore conclude that UK users of the TPB who have accounts with the Defendants have infringed, and are continuing to infringe, the Claimants’ copyrights by copying the Claimants’ sound recordings on a large scale.

 

Communication to the public

    1. At this point a difference between the claims advanced by the claimants in 20C Fox v Newzbin and the claims advanced by the Claimants in the present case should be noted. In 20C Fox v Newzbin the claimants contended that the users had infringed their copyrights by copying (see [85] and [97]) and that Newzbin Ltd had (in addition to authorising and being jointly liable for infringements by the users) infringed their copyrights by communicating the copyright works (namely films) to the public. The claimants did not contend that the users had communicated the works to the public. By contrast, in the present case the Claimants do contend that the users of TPB are communicating the copyright works to the public, but for present purposes do not contend that the operators of TPB are doing so. The reason why the Claimants do not presently assert communication to the public by the operators of TPB is the pending reference to Court of Justice of the European Union made by the Court of Appeal in Football Dataco Ltd v Sportradar Gmbh [2011] EWCA Civ 330, [2011] 1 WLR 3044. I shall return to this point below.

 

    1. Article 3(1) of the Information Society Directive and section 20 of the 1988 Act have been considered in a number of recent cases which I shall consider in chronological order.

 

    1. In Case C-306/05 Sociedad General de Autores v Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I-11519 SGAE, a collective licensing body in Spain, complained that the installation and use of television sets in Rafael’s hotel involved the communication to the public of works falling within the repertoire which it managed. The Audienca Provincial (Provincial Court) of Barcelona referred to the CJEU three questions, the first and third of which the Court interpreted as asking, essentially, whether the distribution of a signal through television sets to customers in hotel rooms constituted communication to the public within the meaning of Article 3(1), and whether the installation of television of sets in hotel rooms constituted in itself an act of that nature.

 

    1. In considering this question, the Court of Justice said at [36] that “‘communication to the public’ must be interpreted broadly”. The Court went on:

 

“40. It should also be pointed out that a communication made in circumstances such as those in the main proceedings constitutes, according to Article 11bis(1)(ii) of the Berne Convention, a communication made by a broadcasting organisation other than the original one. Thus, such a transmission is made to a public different from the public at which the original act of communication of the work is directed, that is, to a new public.

41. As is explained in the Guide to the Berne Convention, an interpretative document drawn up by the WIPO which, without being legally binding, nevertheless assists in interpreting that Convention, when the author authorises the broadcast of his work, he considers only direct users, that is, the owners of reception equipment who, either personally or within their own private or family circles, receive the programme. According to the Guide, if reception is for a larger audience, possibly for profit, a new section of the receiving public hears or sees the work and the communication of the programme via a loudspeaker or analogous instrument no longer constitutes simple reception of the programme itself but is an independent act through which the broadcast work is communicated to a new public. As the Guide makes clear, such public reception falls within the scope of the author’s exclusive authorisation right.

42. The clientele of a hotel forms such a new public. The transmission of the broadcast work to that clientele using television sets is not just a technical means to ensure or improve reception of the original broadcast in the catchment area. On the contrary, the hotel is the organisation which intervenes, in full knowledge of the consequences of its action, to give access to the protected work to its customers. In the absence of that intervention, its customers, although physically within that area, would not, in principle, be able to enjoy the broadcast work.

43. It follows from Art.3(1) of Directive 2001/29 and Art.8 of the WIPO Copyright Treaty that for there to be communication to the public it is sufficient that the work is made available to the public in such a way that the persons forming that public may access it. Therefore, it is not decisive, contrary to the submissions of Rafael and Ireland, that customers who have not switched on the television have not actually had access to the works.

44. Moreover, it is apparent from the documents submitted to the court that the action by the hotel by which it gives access to the broadcast work to its customers must be considered an additional service performed with the aim of obtaining some benefit. It cannot be seriously disputed that the provision of that service has an influence on the hotel’s standing and, therefore, on the price of rooms. Therefore, even taking the view, as does the Commission of the European Communities, that the pursuit of profit is not a necessary condition for the existence of a communication to the public, it is in any event established that the communication is of a profit-making nature in circumstances such as those in the main proceedings.

46. While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal.”

    1. Accordingly the Court ruled as follows:

 

“While the mere provision of physical facilities does not as such amount to communication within the meaning of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of copyright and related rights in the information society, the distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, constitutes communication to the public within the meaning of Article 3(1) of that directive.”

    1. In Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v Divani Akropolis Anonimi Xenodocheiaki kai Touristiki Etaireia [2010] ECR I-37 the Court of Justice ruled by way of reasoned order that a hotelier who installed television sets in the rooms of its hotel and connected them to a central antenna thereby committed an act of communication to the public within Article 3(1).

 

    1. In 20C Fox v Newzbin Kitchin J held at [113]-[125] that Newzbin Ltd had communicated the claimants’ films to the public applying the guidance of the Court of Justice in SGAE v Rafael. In particular, he found that Newzbin Ltd had made the films available to the public by electronic transmission in such a way that members of the public might access them from a place and at a time chosen by them within section 20(2)(b) of the 1988 Act.

 

    1. In Case C-393/09 Bezpecnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury [2010] ECR I-0000 the Court of Justice ruled that television broadcasting of a graphic user interface did not constitute communication to the public within Article 3(1) for reasons connected with the particular character of a graphic user interface.

 

    1. As noted above and as I shall discuss in more detail below, the amendment to section 20 of the 1988 Act by Regulation 6 of the 2003 Regulations went further than was required by Article 3 of the Information Society Directive. In ITV Broadcasting Ltd v TVCatchup Ltd (No 2) [2011] EWHC 1874 (Pat)[2011] FSR 40 at [49]-[79] Floyd J rejected an argument that the amendment was ultra vires the power to make those Regulations conferred by section 2(2) of the European Communities Act 1972 in so far as it introduced section 20(1)(c). In my judgment his reasoning must apply equally to section 20(1)(b).

 

    1. In that case the claimant television broadcasters contended that the defendant, which operated an internet-based service for the live streaming of television programmes, had infringed the claimants’ copyrights in their broadcasts and in films included therein. Having considered SGAE v Rafael at [80]-[104], Floyd J’s provisional conclusion was that the defendant had communicated the claimants’ broadcasts and the films included therein to the public, but that the law was not clear and so a question should be referred to the CJEU.

 

    1. Shortly afterwards the CJEU handed down two judgments in quick succession. The first was Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd v QC Leisure[2011] ECR I-0000. One of the questions which Kitchin J had referred to the Court of Justice in Football Association Premier League Ltd v QC Leisure (No 2) [2008] EWHC 1411 (Ch), [2008] FSR 32 was interpreted by the Court as asking, in essence, whether “communication to the public” within the meaning of Article 3(1) of the Information Society Directive was to be interpreted as covering transmission of broadcast works, via a television screen and speakers, to the customers present in a public house. The Court held that this question was to be answered in the affirmative. Its reasoning, so far as presently relevant, was as follows:

 

“191. As regards, first, the concept of communication, it is apparent from Article 8(3) of the Related Rights Directive and Articles 2(g) and 15 of the Performance and Phonograms Treaty that such a concept includes ‘making the sounds or representations of sounds fixed in a phonogram audible to the public’ and that it encompasses broadcasting or ‘any communication to the public’.

192.     More specifically, as Article 11bis(1)(iii) of the Berne Convention expressly indicates, that concept encompasses communication by loudspeaker or any other instrument transmitting, by signs, sounds or images, covering – in accordance with the explanatory memorandum accompanying the proposal for a copyright directive (COM(97) 628 final) – a means of communication such as display of the works on a screen.

193.     That being so, and since the European Union legislature has not expressed a different intention as regards the interpretation of that concept in the Copyright Directive, in particular in Article 3 thereof (see paragraph 188 of the present judgment), the concept of communication must be construed broadly, as referring to any transmission of the protected works, irrespective of the technical means or process used.

194. In Case C-403/08, the proprietor of a public house intentionally gives the customers present in that establishment access to a broadcast containing protected works via a television screen and speakers. Without his intervention the customers cannot enjoy the works broadcast, even though they are physically within the broadcast’s catchment area. Thus, the circumstances of such an act prove comparable to those in SGAE.

196.     Accordingly, it must be held that the proprietor of a public house effects a communication when he intentionally transmits broadcast works, via a television screen and speakers, to the customers present in that establishment.

197.     That said, in order for there to be a ‘communication to the public’ within the meaning of Article 3(1) of the Copyright Directive in circumstances such as those of the main proceedings, it is also necessary for the work broadcast to be transmitted to a new public, that is to say, to a public which was not taken into account by the authors of the protected works when they authorised their use by the communication to the original public (see, to this effect, SGAE, paragraphs 40 and 42, and the order of 18 March 2010 in Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38).

198.     When those authors authorise a broadcast of their works, they consider, in principle, only the owners of television sets who, either personally or within their own private or family circles, receive the signal and follow the broadcasts. Where a broadcast work is transmitted, in a place accessible to the public, for an additional public which is permitted by the owner of the television set to hear or see the work, an intentional intervention of that kind must be regarded as an act by which the work in question is communicated to a new public (see, to this effect, SGAE, paragraph 41, and Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 37).

199.     That is so when the works broadcast are transmitted by the proprietor of a public house to the customers present in that establishment, because those customers constitute an additional public which was not considered by the authors when they authorised the broadcasting of their works.”

    1. The second judgment was Joined Cases C-431/09 and C-432/09 Airfield NV v Belgische Vereniging van Auteurs, Compositien en Uitgevers CVBA (SABAM) [2011] ECR I-0000. In that case the CJEU had to consider the meaning of “communication to the public” in Council Directive 93/83/EEC of 27 September on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (“the Satellite Broadcasting Directive”). Airfield was a Belgian satellite television provider which offered to the public a package of channels that could be viewed by means of a satellite decoder. The package included encrypted channels. Customers entered into a subscription agreement with Airfield which provided them with a decoder card enabling them to view the encrypted channels. Airfield concluded a series of agreements with broadcasting organisations, to obtain broadcast television programs for broadcast. Through its technical services provider, Canal, Airfield leased capacity on the Astra Satellite for onward transmission of the signals via the satellite to its customers.

 

    1. The Court of Justice had to consider what it described as “indirect” as well as “direct” transmission of TV programmes. Under indirect transmission, the broadcasting organisations sent the programmes via a fixed link to Canal, who compressed and scrambled them, sent them to their station in the Netherlands from whence they were beamed, in encrypted form, to the Astra satellite. Under a variation of this indirect method, the broadcasting organisations sent the programmes via satellite to Canal, who again beamed them up in encrypted form. Airfield was authorised by the broadcasting organisations to do all this, and paid the broadcasting organisation a fee dependent on the numbers of subscribers. The direct method of transmission avoided the first link (either the fixed link or the satellite link) between the broadcasting organisation and Canal. The broadcasting organisation transmitted the encrypted programmes directly to the satellite. Airfield and Canal merely provided the key to the broadcasting organisations and to their subscribers so that the programmes were encrypted in a way which their subscribers could decode.

 

    1. Various collecting societies brought actions in Belgium complaining that Airfield’s activities amounted to a re-broadcast of television programmes already broadcast by the broadcasting organisations, and therefore Airfield could not benefit from the authorisation already granted by the collecting societies to the broadcasting organisations. The Court of Justice interpreted the questions asked by the Belgian court as asking, in essence, whether the Satellite Broadcasting Directive was to be interpreted as requiring a satellite package provider to obtain authorisation from the right holders concerned for a communication to the public of works that was effected in the course of the direct or indirect transmission of television programmes, such as the transmissions at issue in the main proceedings. In answering this question the Court applied its jurisprudence regarding Article 3(1) of the Information Society Directive for reasons which it explained as follows:

 

“44. First of all, it should be borne in mind that Directive 93/83 is not the only European Union instrument in the field of intellectual property and that, in view of the requirements deriving from the unity and coherence of the legal order of the European Union, the terms used by that directive must be interpreted in the light of the rules and principles established by other directives relating to intellectual property, such as, in particular, Directive 2001/29 (see, by analogy, Case C-271/10 VEWA [2011] ECR I-0000, paragraph 27).

71.       … it is clear from Article 2 of Directive 93/83 that copyright holders must authorise any communication of the protected works to the public by satellite.

72.       Next, it follows from the Court’s case-law that such authorisation must be obtained in particular by a person who triggers such a communication or who intervenes when it is carried out, so that, by means of that communication, he makes the protected works accessible to a new public, that is to say, a public which was not taken into account by the authors of the protected works within the framework of an authorisation given to another person (see, by analogy, with regard to communication to the public within the meaning of Article 3 of Directive 2001/29, Case C-306/05 SGAE [2006] ECR I-11519, paragraphs 40 and 42, and the order of 18 March 2010 in Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38).”

    1. The Court of Justice went on at [77]-[82] to conclude that the satellite package provider expanded the circle of persons having access to the relevant programmes and thereby enabled a new public to have access to the works and other protected subject-matter. The Court also held at [83] that it followed that the satellite package provider was required to obtain authorisation from the right holders concerned. Accordingly it ruled as follows:

 

“Article 2 of Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission must be interpreted as requiring a satellite package provider to obtain authorisation from the right holders concerned for its intervention in the direct or indirect transmission of television programmes, such as the transmission at issue in the main proceedings, unless the right holders have agreed with the broadcasting organisation concerned that the protected works will also be communicated to the public through that provider, on condition, in the latter situation, that the provider’s intervention does not make those works accessible to a new public.”

    1. Floyd J considered Airfield v SABAM in ITV Broadcasting Ltd v TVCatchup Ltd (No 3) [2011] EWHC 2977 (Pat) at [5]-[24] and concluded as follows:

 

“23. Whilst the decision in Airfield is consistent with the provisional view which I expressed [in ITV v TVCatchup (No 2)], I am not persuaded that the principle of law engaged in the present case is rendered acte claire by Airfield. The Court’s multi-factorial approach does not make it easy to distil a clear principle as to what amounts to a communication to the public in this context. The extent to which the creation of a new link from the broadcasting organisation to the subscriber is to be equated, without more, with the creation of a ‘new public’ is not clear. It is also not clear whether the subscribers in the present case can be described as ‘unable to enjoy the broadcasts although physically within the catchment area’, given that they are entitled to receive the original broadcast in their own homes and on their laptops without intervention from TVC. Equally it is not clear whether the audience reached by these broadcasts is an audience which is additional to the public targeted by the broadcasting organisation concerned.

24. I therefore intend to refer a question, notwithstanding Airfield. The question I propose to send is as follows:

‘Does the right to authorise or prohibit a “communication to the public of their works by wire or wireless means” in Article 3.1 of the Directive extend to a case where:

(i) Authors authorise the inclusion of their works in a terrestrial free-to-air television broadcast which is intended for reception either throughout the territory of a Member State or within a geographical area within a Member State;

(ii) A third party (i.e. an organisation other than the original broadcaster), provides a service whereby individual subscribers within the intended area of reception of the broadcast who could lawfully receive the broadcast on a television receiver in their own homes may log on to the third party’s server and receive the content of the broadcast by means of an internet stream?

Does it make any difference to the answer to the above question if:

(a) The third party’s server allows only a “one-to-one” connection for each subscriber whereby each individual subscriber establishes his or her own internet connection to the server and every data packet sent by the server onto the internet is addressed to only one individual subscriber?

(b) The third party’s service is funded by advertising which is presented “pre-roll” (i.e. during the period of time after a subscriber logs on but before he or she begins to receive the broadcast content) or “in-skin” (i.e. within the frame of the viewing software which displays the received programme on the subscriber’s viewing device but outside the programme picture) but the original advertisements contained within the broadcast are presented to the subscriber at the point where they are inserted in the programme by the broadcaster?

(c) the intervening organisation is:

(i) providing an alternative service to that of the original broadcaster, thereby acting in competition with the original broadcaster for viewers; or

(ii) acting in competition with the original broadcaster for advertising revenues?'”

    1. In Football Association Premier League Ltd v QC Leisure (No 4) [2012] EWHC 108 (Ch) Kitchin LJ had to consider the application of the Court of Justice’s rulings on the questions he had referred, and in particular the issue of whether the defendants had communicated any of the claimant’s copyright works (in particular the Anthem and the artistic works and films contained in the broadcasts) to the public within section 20 of the 1988. He considered that issue at [4]-[59], and concluded that the defendants had communicated the claimant’s copyright works to the public.

 

    1. Against this background I can now turn to the present case, which concerns copyright in sound recordings. The first point to note is the difference between Article 3(1) of the Information Society Directive and Article 3(2). Article 3(1) requires Member States to provide “authors” with an 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” etc. By contrast Article 3(2) requires Member States to provide four other categories of right holder with an exclusive right only to authorise or prohibit the “making available to the public” of the relevant subject-matter etc.

 

    1. It is clear from the jurisprudence of the Court of Justice (see in particular Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 at [32]-[37]) that references to “authors’ works” in the Information Society Directive are to be interpreted as meaning literary and artistic works within the meaning of Article 2 of the Berne Convention, consistently with European Parliament and Council Directive 2006/116/EC of 12 December 2006 on the term of protection of copyright and certain related rights, Article 1(1) of which is explicit in this respect. It is generally accepted that phonograms (i.e. sound recordings) and broadcasts are not literary or artistic works within the meaning of Article 2 of the Berne Convention: see e.g. Ricketson and Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (2nd ed, Oxford University Press, 2007), pp. 505-508, 1205-1208; Goldstein and Hugenholtz,International Copyright: Principles, Law and Practice (2nd ed, Oxford University Press, 2010), pp. 104, 156, 186-189; Ficsor, Guide to the Copyright and Related Rights Treaties Administered by WIPO (WIPO, 2003), p. 27. Instead, phonograms (and performances) are protected under the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations of 1961 (“the Rome Convention”) and the WIPO Performances and Phonograms Treaty and broadcasts are protected under the Rome Convention. This explains the different treatment of authors’ works on the one hand and the other types of subject matter on the other hand in Article 3 of the Information Society Directive.

 

    1. Care needs to be taken with films. “Cinematographic works” are literary or artistic works within Article 2 of the Berne Convention. What the Information Society Directive and other EU copyright Directives call “first fixations of films” are not. It is frequently overlooked that what the 1988 Act calls a “film” is what the Directives call a “first fixation of a film”. The right conferred by the 1988 Act on “films” is a right in the signal, not a right in the content: see Norowzian v Arks Ltd (No 1) [1999] EMLR 57. Under current UK law, the content of a film (i.e. the cinematographic work or what some other laws call the audiovisual work) is protected as a dramatic work: see Norowzian v Arks Ltd (No 2) [2000] EMLR 67. Both under the Directives and under the 1988 Act, the rights in the cinematographic work (dramatic work) and in the first fixation (“film”) are distinct, although they may be owned by the same person (as to which, see generally the recent judgment of the CJEU in Case C-277/10 Luksan v van der Let [2012] ECR I-0000).

 

    1. It follows that the Information Society Directive required the UK to grant the Article 3(1) right of communication to the public to dramatic works embodied in “films” and to grant the Article 3(2) right of making available to “films” within the meaning of the 1988 Act. In fact the 2003 Regulations went further and extended the Article 3(1) right to “films”. Similarly, the Information Society Directive only required the UK to grant the Article 3(2) right of making available to sound recordings and broadcasts, but the 2003 Regulations went further and extended the Article 3(1) right of communication to the public. As noted above, Floyd J has held that this was permissible in the case of broadcasts and his reasoning is equally applicable to sound recordings and films.

 

    1. The result, as both Floyd J in ITV v TVCatchup and Kitchin LJ in FA v QC Leisure recognised, is that the CJEU’s jurisprudence with regard with Article 3(1) of the Information Society Directive is applicable to section 20(1)(b) and (c) as well as section 20(1)(a) of the 1988 Act.

 

    1. Although Floyd J held in ITV v TVCatchup that it was not clear how the test laid down by the CJEU to determine whether a work has been communicated to the public within Article 3(1) was to be applied in the circumstances of that case, I consider that there is no difficulty in applying it to the facts of this case.

 

    1. Before doing so, however, I must revert to Football Dataco v Sportradar. In that case the Court of Appeal referred questions to the Court of Justice concerning the interpretation of Article 7(2)(b) of European Parliament and Council Directive of 11 March 1996 on the legal protection of databases, and in particular the words “any form of making available to the public … by online or other forms of transmission”. In essence, the questions referred ask whether the transmission occurs in the location from where the data is transmitted (the “emission theory”) or in the location where it is received (the “transmission theory”). Although the questions referred do not concern Article 3(1) of the Information Society Directive, the Claimants accept that it is not entirely clear from the CJEU’s existing jurisprudence under Article 3(1) whether communication to public in Article 3(1) occurs where the communication originates or where it is received (or perhaps both). This matters so far as any claim against the operators of TPB under section 20 is concerned, because TPB’s servers are located outside the United Kingdom.

 

    1. Counsel for the Claimants submitted that this issue does not matter for present purposes. For the purpose of their claim that users of TPB infringe under section 20, the Claimants focus upon users who allow copies of the sound recordings on their computers to be uploaded to the “swarm”. Since it is clear from the evidence that UK users are involved as both uploaders and downloaders, it is immaterial whether the act of communication to the public is committed at the place of origination or the place of reception. I accept this submission.

 

    1. I turn, therefore, to consider whether such users thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). In any event, however, it is clear from the CJEU’s judgment in FA v QC Leisure at [193] that the concept of communication must be construed broadly.

 

    1. Secondly, do they communicate the recordings to a new public, that is to say a public which was not taken into account by the right holders when authorising the distribution of the recordings, applying the test laid down by the CJEU in SGAE v Rafael, FA v QC Leisure and Airfield v SABAM? In my judgment they do, since copies of the sound recordings are made available to users who have not purchased them from an authorised source.

 

    1. Accordingly, I conclude that UK users of TPB infringe the Claimants’ copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].

 

Infringement by the operators of TPB

    1. The Claimants contend that the operators of TPB are liable for infringement of their copyrights on two bases. First, on the basis that the operators have committed the tort of authorising infringements by UK users. Secondly, on the basis that the operators are jointly liable for infringements by UK users (i.e. liable as accessories).

 

Authorisation

    1. The law with regard to authorisation was considered by Kitchin J in 20C Fox v Newzbin at [85]-[95]. At [89] he cited a passage from the speech of Lord Templeman in CBS Songs Ltd v Amstrad Consumer Electronics plc [1988] 1 AC 1013 at 1053-1055 in which Lord Templeman approved the definition of “to authorise” given by Atkin LJ in Monckton v Pathe Freres Pathephone Ltd [1914] 1 KB 395 at 499, namely “to grant or purport to grant to a third person the right to do the act complained of”. Kitchin J continued at [90]:

 

“In my judgment it is clear from this passage that ‘authorise’ means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances.”

He went on at [98]-[102] to conclude on the fact of that case that Newzbin Ltd had indeed authorised infringements of the claimants’ copyrights by its premium members.

    1. I shall consider each of the factors identified by Kitchin J in turn.

 

    1. The nature of the relationship. TPB provides a sophisticated and user-friendly environment in which its users are able to search for and locate content. John Hodge, BPI’s Head of Internet Investigations, describes in his witness statement how the website is organised and the functions that are available to users. As he explains:

 

i) TPB indexes and arranges torrent files so that users can choose between various different search facilities to assist them in browsing for content to download or in locating specific content or categories of content.

ii) When uploading a torrent file, users are required to provide detailed information about it. This information provides TPB with the ability to index it and make it available for searching. It also assists users in deciding whether or not to download it.

iii) TPB does not merely receive the upload of the torrent file, it processes it. For example, TPB deletes any tracker server that may have been nominated by the uploader in the torrent file and replaces it with tracker servers of TPB’s choosing.

iv) Users are provided with assistance and advice as to how to download from the site and as to the trustworthiness of particular torrents. Status badges are awarded to uploaders to provide an indication of number and popularity of their uploads.

v) Users are also provided with assistance and advice as to how to circumvent blocking measures taken as a result of court orders.

vi) Users are offered links to “cyberlocker” storage facilities for downloaded material.

vii) Registered users are able to set preferences which allow them to choose what material can be downloaded and how information is displayed on the website.

viii) TPB provides a forum for users to share information about content and even to ask other users to upload particular content which might not currently be available.

ix) Users are offered a choice of 35 different languages to facilitate and encourage the widest possible participation in the use of its services by those engaged in P2P file-sharing.

    1. These features are plainly designed to afford to users of TPB the easiest and most comprehensive service possible. TPB is in no sense a passive repository of torrent files. It goes to great lengths to facilitate and promote the download of torrent files by its users.

 

    1. The means used to infringe. The torrent files which are so conveniently indexed, arranged and presented by TPB constitute precisely the means necessary for users to infringe. It is the torrent files which provide the means by which users are able to download the “pieces” of the content files and/or to make them available to others.

 

    1. Inevitability of infringement. Infringement is not merely an inevitable consequence of the provision of torrent files by TPB. It is the operators of TPB’s objective and intention. That is clear from the following:

 

i) Its name – The  Pirate  Bay – and associated  pirate  ship logo are clearly a reference to the popular terminology applied to online copyright infringement: online piracy.

ii) According to a statement published on its site, it was founded by a “Swedish anti copyright organisation”.

iii) The matters described in paragraph 13 above.

iv) In the first instance judgment in the Swedish criminal proceedings, Lundström was recorded as stating that “the purpose of the site was  pirate  copying”.

v) It is also evident from the numerous proceedings in other European jurisdictions that the operators of TPB are well aware that it is engaged in copyright infringement. Injunctions and other orders against the operators of TPB have been ignored. Orders against TPB’s hosting service providers have been circumvented by moving TPB to new providers.

    1. Degree of control. TPB would be able to prevent infringement of copyright, should its operators so wish. As the website makes clear, torrents can be removed. They will be removed if “the name isn’t in accordance with the content” or if they are “child porn, fakes, malware, spam and miscategorised torrents”. As a matter of policy, however, the rights of copyright owners are excluded from the criteria by which the operators of TPB choose to exercise this power.

 

    1. Steps to prevent infringement, Despite their ability to do so and despite the judicial findings that have been made against them, the operators of TPB take no steps to prevent infringement. On the contrary, as already explained, they actively encourage it and treat any attempts to prevent it (judicial or otherwise) with contempt. Indeed, according to a statement on the website, the reason for its recent adoption of Magnet links as the default option is that “it’s not as easy to block as .torrent files”. This confirms the operators’ determination to do whatever they can to provide users with unrestricted access to torrent files and thereby enable the users to continue to infringe. As noted above, BPI has asked TPB to cease infringing its members’ and PPL’s members’ copyrights, but this request has been ignored.

 

    1. Conclusion. In my judgment, the operators of TPB do authorise its users’ infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting. On any view, they “sanction, approve and countenance” the infringements of copyright committed by its users. But in my view they also purport to grant users the right to do the acts complained of. It is no defence that they openly defy the rights of the copyright owners. I would add that I consider the present case to be indistinguishable from 20C Fox v Newzbin in this respect. If anything, it is a stronger case.

 

Joint tortfeasance

    1. Kitchin J considered the law with regard to joint tortfeasance in 20C Fox v Newzbin at [103]-[111]. He concluded as follows:

 

“108. I derive from these passages that mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act.

109. All of these cases were referred to in the recent decision of Arnold J in L’Oréal v eBay [2009] EWHC 1094[2009] RPC 21. In this action L’Oréal advanced a number of claims arising from the sale through the eBay online marketplace of goods bearing L’Oréal’s trade marks. One of the issues which arose was whether eBay was liable for trade mark infringement as a joint tortfeasor with the sellers of such goods. Arnold J rejected this claim on the facts, essentially because eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable.

110. I must now apply these principles to the facts of this case. In doing so I recognise at the outset that the claimants are not able to point to specific acts of infringement by particular infringers which the defendant may be said to have procured. However, I do not understand Lord Templeman’s speech in Amstrad to preclude a finding of liability in such a case. Clearly it is one of the matters to be taken into account and absent the identification of such specific acts a finding of procurement would not in general be appropriate. Nevertheless, the question to be answered remains the same, namely whether the defendant has engaged in a common design by so involving himself in the infringement as to make it his own; or whether the defendant has procured an infringement by inducement, incitement or persuasion.”

Again he concluded on the facts of the case that Newzbin Ltd had procured and engaged in common design with its premium members to infringe the claimants’ copyrights.

    1. In the present case, 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. It is also relevant in this regard that the operators profit from their activities. Thus they are jointly liable for the infringements committed by users.

 

Conclusion

    1. For the reasons set out above, I conclude that both users and the operators of TPB infringe the copyrights of the Claimants (and those they represent) in the UK.

 

 

 

IN THE HIGH COURT OF JUSTICE

QUEEN’S BENCH DIVISION

Case No: HQ09X01852 Royal Courts of Justice

Strand, London, WC2A 2LL Date: 16 July 2009

Before :

THE HONOURABLE MR JUSTICE EADY

———————

Between :

METROPOLITAN INTERNATIONAL SCHOOLS LIMITED (T/A SKILLSTRAIN and/or TRAIN2GAME)

– and –

(1) DESIGNTECHNICA CORPORATION (T/A DIGITAL TRENDS) (2) GOOGLE UK LIMITED (3) GOOGLE INC

——————— ———————

Claimant

Defendants

Desmond Browne QC and David Hirst (instructed by Eversheds LLP) for the Claimant Antony White QC and Catrin Evans (instructed by Reynolds Porter Chamberlain LLP) for the Third Defendant

Hearing dates: 24-25 June 2009 ———————

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.

Metropolitan v Google EadyJ 16 July 2009