When is the UK public targeted by an infringing website?

Kevin Bercimuelle-Chamot

A few weeks ago I posted a note on IPKat on the recent decision of Birss J in Omnibill, a saucy case concerning copyright infringement over escorts' photographs.

I asked my students at the University of Southampton to read and analyse this decision, and I am happy to host on this very blog the thorough account by 1709 Blog friend and French Erasmus student, Kevin Bercimuelle-Chamot (@KevinBerci).

Here's what Kevin writes:

"In Omnibill the Intellectual Property Enterprise Court decided that a South-African subdomain owned by a UK company could infringe the copyright of a South-African claimant through acts of communication to the public if they could be considered as targeted at the UK public, and provided that several circumstances and conditions were met. 

The legal context in the present case called into consideration two provisins of the Copyrights, Designs and Patents Act 1988 (CDPA), ie s20 (infringement by communication to the public), and s16 (as regards the issue of secondary infringement).

Facts

Photographs hosted on the website of a company (Omnibill) providing escort services had been unlawfully reproduced on a competing website (www.escortgps.xxx). Those photographs, generally of pornographic nature, were used as advertisements by escorts. 

The allegedly infringing website was owned by UK company EGPSXXX, of which Mr Carter was the sole director and sole shareholder. He worked jointly with a third party to set up this website. 

Omnibill brought proceedings for copyright infringement against EGPSXXX and Mr Carter in 2013.

Birss J addressed the case by looking into two sets of issues: (1) the first was whether the website or parts of it could be considered as targeted at the UK, so that UK copyright law would apply; (2) the second was whether the sole director of the allegedly infringing company could be held liable for the infringing acts of his company.

Analysis

In the first place the judge found that the copyright of the claimant had been infringed by unauthorised reproduction and communication to the public of its works. Birss J had subsequently to determine if those infringements had taken place in the UK. To decide whether the website and the acts of communication were targeted at the public in the UK multiple factors were taken into account. 

Birss J noted that the language of the website and the subdomain could be considered as pointing towards a finding that they were targeted at a global audience and several countries. Indeed the earlier decision in Victoria's Secret [here] underlined the possibility of a multiple target.

Then Birss J focused on other aspects, including the way the website was structured. He pointed out that the main one, through country flags displayed on it, directed users to different subdomains. As the South-African one was written in English and displayed an international phone number, the judge considered that it could be another element showing that it was targeted at the public in the UK.

Furthermore Birss J examined a number of additional circumstances, including the number of website visitors. Although it could be argued that they are not always reliable, he held that those figures suggested that a substantial part of traffic came from the UK. 

As a result, Birss J found that the acts of communication of the first defendant were targeted at the public in the UK.

Regarding the question of Mr Carter's liability, Birss J referred to the test employed in Newzbin to determine whether there was or not such authorisation to infringe a third party copyright. This requires to analyse “the degree of control of the authoriser, the relationship between the first infringer and the authoriser, the equipment used, and the steps taken to prevent the infringement”. Birss J concluded that Mr Carter was liable for copyright infringement under s16 CDPA for authorising EGPSXXX Ltd to infringe the claimant's copyright.

What does this decision mean?

The present judgment follows the decision of the Court of Justice of the European (CJEU) in Pammer, as regards the circumstances defining when the acts of communication are targeted at the public on a certain territory.

In addition Birss J followed Arnold J’s approach in EMI v BSkyB when considering what elements should be taken into account to determine whether a certain website is targeted at a specific public, including the number of visitors. Overall it appears that the specific circumstances of the case at hand are key to determine whether UK law comes into question.”