THE COPYKAT

Our first CopyKat from our new intern, Kelsey Farish

Anthem of the Civil Rights Movement “We Shall Overcome” is freed into public domain

On the third Monday of January each year, Americans observe the birthday of civil rights leader Rev. Martin Luther King, Jr. This year, two weeks following the national holiday, the civil rights anthem “We Shall Overcome” entered the public domain.

The song was an unofficial theme of the 1960’s Civil Rights Movement in the American south. It was made famous during the Montgomery bus boycotts led by Martin Luther King Jr., when, in front of television cameras, a group of protestors sang it into a hostile mob. The Library of Congress, which is the oldest federal cultural institution in the United States, describes the song as America’s “most powerful song.”

The lawsuit was filed by the We Shall Overcome Foundation, an organisation that wanted to make a documentary about the song, and the producers of the 2013 film "The Butler." The registered copyright owner, Ludlow Music, initially refused both requests before demanding “as much as $100,000” to use the song.

Several months ago a federal judge in New York ruled that the key verse in the song was not protected under copyright for lack of originality. With an additional trial date set for February 5 to contest the other aspects of the song, Ludlow Music instead opted to enter into a settlement, whereby it released its copyright in both the melody and lyrics. More here.

Randall Newman, an attorney at Wolf Haldenstein (the same law firm that freed "Happy Birthday to You" from copyright protection), stated: “We are pleased that this settlement resolves the litigation and puts the melody and all verses of the iconic song 'We Shall Overcome' into the public domain where it belongs.” (You can read the press release here). However, with the release of the song into the public domain, the song may be used in future for commercial purposes or in other contexts which could threaten or diminish its powerful history and message. More here.

Documentary filmmakers to receive free legal advice from California law students on intellectual property and other matters

The Ziffren Center for Media, Entertainment, Technology and Sports Law at the University of California Los Angeles has launched a new pro-bono Documentary Film Legal Clinic.

Without the support of a large film studio’s in-house lawyers, independent documentary filmmakers may not be aware of the legal issues that may arise their work, including copyright problems.

Bolstered by the University’s proximity to the Hollywood film industry, law students will be helping independent documentary filmmakers with legal issues they face. Such issues will often include making public records requests for newsgathering and seeking location approvals, as well as intellectual property matters. In particular, law students will provide copyright counsel and training, advice regarding fair use, clearance of music, visuals and archival materials, and rights of publicity.

Dale Cohen, the clinic’s founder and director, is special counsel to the PBS channel’s documentary series “Frontline” and co-author of “Media and the Law.” He noted that the clinic will provide filmmakers with “top-notch legal guidance, and students will work side-by-side with these journalists and artists, learning about the filmmaking process and helping to tell stories that are increasingly important to our democracy.”

Facebook’s inks new global, multi-year agreements with Universal and Sony Music

Facebook first inked a deal with Universal Music in late December 2017. The deal with Sony,  the largest music publisher in the world, was announced on 9 January. These deals allow Facebook and Instagram users to upload homemade video clips containing songs owned by Universal or Sony, without generating a takedown notice.

As more and more Facebook users share music or videos in their posts, some of the content may include copyright-protected material: for example, songs by a famous pop singer playing in the background of a makeup tutorial video.

Facebook offers monitoring tools that alert copyright owners about suspected copies of their videos and songs on Facebook, or other unauthorised uses of their brand. Rightsholders can send takedown requests to a team of Facebook content analysts. In the first six months of 2017, nearly 3 million posts - including videos, ads and other forms of content - were removed from Facebook platform following complaints of intellectual property rights infringement.

Accordingly, Facebook has been attempting to enter agreements with major record labels and music publishers to allow its users to include songs in the videos they upload. Universal Music Group and Sony Music are now the first two major music companies to license their recorded music and video catalogues for use across Facebook and Instagram.

If Facebook or Instagram users upload a homemade video clip that has a part of a song owned by Universal or Sony playing in the background, the clip will now stay up without generating a takedown notice. That has obvious benefits for Facebook, as the social media giant encourages people to make and share content on its services.

For the record labels, the deals will provide significant new revenue source. While no comments have been made on the financial arrangements of the deal, Facebook likely wrote the music labels a large cheque upfront, with more money to follow over the coming years. Perhaps most importantly for Universal and Sony is that these labels now have increased bargaining power in respect of negotiating with Google’s YouTube, which remains the most popular online destination for listening to music.

European Commission to produce a Counterfeit and Piracy “Naughty” List

While Brexit negotiations rumble on, the European Union is charging ahead with plans for a modernised intellectual property enforcement system. Reports from the European Union Intellectual Property Office (EUIPO) and the OECD estimate that the annual trade in counterfeit and pirated products is worth 338 billion Euros (£298B). Within the European Union, an estimated 5% of all goods imported into the EU (worth €85 billion) are counterfeited or pirated.

In its attempts to tackle the counterfeiting problem, the EU will adopt a “follow the money” approach which focuses on commercial-scale IP infringers, rather than individuals. One of the Commission’s key goals is to reduce the volume of counterfeited products reaching the EU market by engaging in cooperation programmes with third countries, and in particular China, South-East Asia, and Latin America. As part of this initiative, he EU aims to create a regularly updated watch-list of markets that are reported to engage in, or facilitate, substantial IPR infringement.

The proposed watch-list will identify both online and physical marketplaces where counterfeiting, piracy and other forms of intellectual property abuse are common. This list is likely inspired by the US Trade Representative (USTR) annual Special 301 Out-of-Cycle Review of Notorious Markets report, which provides an overview of copyright holder complaints, which may be used to encourage site operators and foreign governments to take action.

Interestingly, the American list only includes foreign counterfeiting and piracy markets, and thereby excludes any American infringers. This has been a contentious point with other governments and companies, including China’s Alibaba, who criticise the USTR’s failure to obtain data from US entities. It is therefore worth noting that the European watch list will reveal some new information in respect of America’s own “notorious markets.”

The public is welcome to submit comments before 31 March 2018 as part of the consultation process. The final list is expected to be released later in the year.

High Court grants football match blocking injunction to UEFA under copyright rules

Union Des Associations Européennes De Football (UEFA), the football organisation which consists of 55 national football associations, has obtained an injunction against the six main retail internet service providers in the UK.

In its application before the High Court, UEFA established ownership of the copyright in television broadcasts of all UEFA matches. This extends to all films (particularly replays), artistic works and musical works incorporated within those broadcasts.

As a substitute for paid subscriptions to sport packages through Sky, BT and others, some football fans are instead using devices such as "kodi boxes" to connect directly to streaming servers via their IP addresses. Infringement in this way is on the rise, especially as an increasing proportion of UK consumers mistakenly believe using devices to access unauthorised streams is lawful,

Get in!  Image by Ben Challis

UEFA therefore sought an injunction against BT, EE, Plusnet, Sky, TalkTalk and Virgin Media on the grounds of section 97A of the Copyright, Designs and Patents Act 1988, which implements Article 8(3) of the Information Society Directive (2001/29/EC). The Act requires ISPs to take measures to block, or at least impede, viewers from accessing pirated live streams of UEFA matches in the UK.

UEFA’s application was supported by the Football Association's Premier League, which won an identical court order against BT and other ISPs in March 2017 (see Football Association Premier League Ltd v British Telecommunications plc [2017] EWHC 1877 (Ch)). Although ISPs often receive requests from rights holders to restrict illegal download sites, the arrangement with the Premier League is unique in that it requires illegal streams to be blocked as matches are played, in real-time.

UEFA’s application to the High Court for a similar injunction was therefore simply a formality, not least because the application itself was supported by each of the Defendant ISPs except for TalkTalk (which neither supported nor opposed the application). The injunction will cover the entirety of the Europe-wide UEFA Champions League tournament, from 13 February through 26 May.

As an aside, it is unsurprising that some aspects of the application and court order have been kept confidential, as the particular technology used to find such live streams is considered “commercially sensitive.”

The case is Union Des Associations Européennes De Football v British Telecommunications Plc [2017] EWHC 3414 (Ch) (21 December 2017), available to read here.

THE COPYKAT

This CopyKat is the first from our new intern, Mateusz Rachubka

The Author of ‘White Noise’ Video Claims that the Youtube’s Content ID System is Broken

Following the report made on the CopyKat [read here], as well Tibbie McIntyre’s insightful blog post on limitations of the YouTube Content ID system [read here], the story of 10-hour White Noise video published by Sebastian Tomczak continues. In his recent interview Mr Tomczak indicated that the Content ID system used by YouTube “incentivises to make spurious copyright claims”. In brief, the system allows copyright holders to upload their content to YouTube, which is then automatically matched against other content of YouTube videos and where a copyright infringement is detected, it generates automatic copyright claim. Although the author of the White Noise video was released from copyright claims two days following his tweet, he hopes that the cases like his will get YouTube to introduce changes to its automated system and prevent copyright claimants who do not have claims in a given work from diverting the money.

Negotiations over ‘Safe Harbour’ in NAFTA Talks

With North American Free Trade Agreement (NAFTA) negotiations being underway the debate is heating up over the ‘Safe Harbour’ provisions. Internet law experts and advocacy groups want to expand the provisions that already exist in the US into Canada and Mexico, which allow Internet Service Providers (ISPs) to be shielded from copyright infringement liability provided that they promptly remove pirated content following the request of copyright holder. Certain organisations believe that the current balanced copyright system should be preserved and promoted into trade agreements.

On the other hand, 37 content groups being aware of the ‘whack-a-mole’ problem in trying to prevent copyrighted works being illegally posted online argue against ‘Safe Harbour’ measures. In their view, such provisions “fail to adequately protect our industry, disincentivize taking reasonable measures to protect intellectual property, and provide immunity from liability without sufficient safeguards for copyright holders”. Therefore, only passive platforms, which are not “engaged in communicating and do not generate any revenue from pirated content” shall be subject to ‘safe harbour’ protection.

Whether the position of both sides can be reconciled, remains to be seen. At the same time, there are many doubts if the agreement will still be in place, following threats of President Trump to withdraw from NAFTA if there is no substantive progress made.

Irish and Dutch Courts Order ISPs to Block More Copyright Infringing Websites

The music industry, which successfully took action in Ireland in 2013 against The Pirate Bay, in order to prevent pirate sites from freely distributed copyrighted works was recently followed by the film-makers. Last year the movie studios secured a court order to block three websites with infringing content. To the delight of Motion Pictures Association, representing inter alia Warner Brothers, Paramount, Disney, Columbia and Sony Pictures, last week the Commercial Court issued injunction and ordered internet service providers (ISPs) to block access to eight more pirate websites. In the view of the Court these sites were illegally streaming films and TV shows, some of which also provided an extensive library of unauthorised copies of works.

Provisional blocking injunctions were also granted by the Dutch district court of Lelystand, in the Netherlands ordering major ISPs to block access to The Pirate Bay within 10 days. The order contains around 200 domains names that access the service and are used by the site. The decision and obligation on ISPs to block the websites will remain in force until the final decision will be given by the Supreme Court, expected later this year.

The Pirate Bay and vKontakte Appear on the Annual US Notorious Markets List

The annual Notorious Markets List prepared by the Office of the United States Trade Representative (USTR) has come out. The report observes positive developments in the fight against copyright infringing companies and websites, such as successful closure of the ‘biggest stream-reaping’ Youtube-MP3 website.  Although the Office notes that the stream ripping sites may have legitimate uses, majority of operations “contribute overwhelmingly to copyright infringement”.

The USTR list also identifies prominent online websites, on which pirated works are reportedly available. One of such is The Pirate Bay, which despite numerous efforts and enforcement actions across various jurisdictions is still among top 100 most popular sites worldwide, continuously enables users to illegally download copyrighted content. Another worth mentioning website on the list is popular in Russia and neighbouring countries social networking site, vKontakte. VK according to the publication reportedly “facilitates the distribution of copyright-infringing files” and despite taking steps to fight piracy it is still a “hub of infringing activity”.

The Story of Copyright Trolling: On the Rise in Finland, Troubled in the US

Copyright trolls, who often in a dubious and ‘extortion-like’ practices aim to extract money through litigation or settlement from alleged pirates, have been present in the United States for over fifteen years. Recently, it can be observed that the move, starting from 2013, has been increasingly popular in the Scandinavian countries, particularly in Finland. As examined by NGO activist Ritva Puolakka, in the period between 2013 and 2017, the Market Court in Finland, which deals with the matters of Intellectual Property, has ordered internet service providers to release the details of almost 200,000 Finnish internet users. TorrentFreak notes that even though each IP address provided “might not lead to a unique individual, the number is huge when one considers the potential returns if everyone pays up hundreds of euros to make supposed court cases go away”.

Good news from TechDirt is that is seems that copyright trolls are not always as successful in their pursuits against alleged infringers. This has reportedly happened in the US to Venice Pi, which claimed to have rights in the movie called ‘Once Upon a Time in Venice’ and attempted to sue 91-year-old man, who later passed away. With concerns over the quality and validity of the evidence Judge Zilly demanded information about the way in which evidence was collected. However, the details provided have raised even more concerns as to the company filing the lawsuit, evidence collection process or even existence of the key experts. The Judge being suspicious over the trolling activities has order against Venice Pi and required the company provide details in over dozen cases. This may open up the copyright troll to even more troubles.

Sports Fans Coalition to Stream NFL Games For Free

Sports Fans Coalition (SFC), a non-profit advocacy group is planning to use its recently launched Locast service to stream NFL games through local broadcast networks in the New York City, without making a payment for a license. In their view, such service will be legal and in accordance with exception in 17 U.S. Code § 111(5), which allows non-profit organisation to rebroadcast programs provided that there is no commercial motive. Since its launch on 11^th January, as stated by SFC’s founder David Goodfriend “tens of thousands of New Yorkers have taken advantage of Locast”, which is “more than double the number of users we wanted to have after 30 days.” The enthusiasm cannot be however observed on the side of the pitch, namely the reaction of the sports broadcasters. According to the National Association of Broadcasters such service must be illegal and similarly to efforts made by its predecessors (think of Aereo or FilmOn), SFC is unlikely to “survive legal scrutiny”.

Is Formula 1 on the Track of Copyright Dispute Over its New Logo?

 Formula 1 enthusiasts would also be aware that at the end of the last race of 2017 season a new logo was unveiled replacing the iconic logo designed in 1987.  The rebranding however has not received a particularly warm welcome amongst the fans and the drivers (although perhaps not as bad as the reaction to the now dropped new logo for Leeds United Football club in the United Kingdom). It now turns out that the new logo too closely resembles a logo of US-based company 3M, which claims infringement of copyright. The similarity of the branding appears in the slanted letter ‘F’, which is comparable to the one used in 3M’s ‘Futuro’-branded flight compression tights. 3M has not confirmed yet whether it will seek legal action against F1 or whether F1 will aim to pay settlement fee to be able to use the logo on the merchandising. Nevertheless, with potential copyright action, as well as the fact that 3M has filed applications for both US and the EU trademarks, a new F1 logo story may bring a lot of interesting off-track action before the lights go out and the season officially begins in the end of March.  

Cat Celebrity has Won $710,001 in a Copyright Case Against Californian Coffee Company

And finally, we come to an end of this CopyKat with the story of a cat, which became a hero of internet memes, gathered over 6 million likes on Facebook and is estimated to have generated about $100 million in revenue – Grumpy Cat. Grenade Beverage, as part of the license agreement with Grumpy Cat owners, has paid a one-off $150,000 fee for the use of Grumpy Cat’s image on its iced coffee products branded as ‘Grumppucions’. However, the coffee-selling company was sued by the owners of the cat for ‘blatantly infringing’ their copyrights and trademarks by selling other types of coffee and T-shirts with the cat’s image. Following the long-lasting dispute between Grumpy Cat Limited and Grenade Beverage the California federal court awarded the cat’s owner the sum of $710,001 for the copyright and trade mark infringement. In a brief comment, the attorney representing Grumpy Cat Limited stated that “Grumpy Cat feels vindicated and feels the jury reached a just verdict”.

THE COPYKAT - Goodbye to October and to Judge Richard Posner!

Judge Posner

Apologies for the lengthier format of this CopyKat. It has been somewhat of a copyright heavy few weeks. As such we have a lot to cover! All of the CopyKats here were surprised to hear of the shock retirement of Judge Richard Posner from the Seventh Circuit Court of Appeals. Judge Posner co-penned influential articles on copyright law, authored dozens of opinions on copyright issues and, even in cases not involving copyright, frequently employed copyright analogies (far more often than his famous cat analogies). As such we thought you may enjoy this article that sets out 10 of his most influential copyright decisions.

Slow and Steady Fails to Win the Race for the Turtles

Members of 1960s rock band The Turtles have lost a major legal battle in their quest to collect copyright royalties from their old hit songs.

The Florida Supreme Court held today (PDF) that the state doesn't recognize any copyrights in pre-1972 music recordings, despite the band's arguments to the contrary. All seven justices concurred in the ruling. Flo & Eddie, a company that represents two members of The Turtles, had claimed that even though there is no federal copyright in sound recordings for pre-1972 songs, they are entitled to payments because their songs are protected by state copyrights and common law. The band members sued Sirius XM in 2013, and lawsuits against streaming services like Pandora followed. The major record labels also got involved, essentially copying The Turtles' strategy, by suing Sirius as well as Pandora.

The RIAA lawsuit against Sirius was settled for $210 million, and the labels' case against Pandora was settled for $90 million. The Turtles settled a lawsuit against Sirius just before trial last year.

However, following those settlements, copyright owners were dealt a setback. Last year, New York's highest court voted 6-2 that there's no right to control public performances under the state's common law. New York state copyright is strictly about copying. Today's ruling out of Florida is in many ways similar to that New York ruling.

Our Friends at ALAI Provides Further Guidance On EU Copyright Proposals

ALAI has learned that EU Member States have put a number of questions to the Legal Service of the Council regarding Article 13 and Recital 38 of the Commission Proposal for a Directive on copyright in the Digital Single Market1.

ALAI herewith offers some assistance on the basis of its previous reflections and Resolution adopted on 18 February 2017 (hereinafter “ALAI Resolution”, see: http://www.alai.org/en/assets/files/resolutions/170218-value-gap-en.pdf ).

A Proposed Fix: A Blanket Mechanical Licensing System For The U.S.

The National Music Publishers Association, the Digital Media Association. and various songwriter and record label groups are negotiating legislation that they hope will solve the mechanical licensing problems that have plagued digital music services, while hopefully achieving higher rates for music publishers and songwriters.

It's a proposed law that will create a mechanism and a new entity that will issue and oversee a blanket mechanical license for digital music services and record labels.

That news came out of the monthly meeting of the Assn. of Independent Music Publishers, where NMPA president and CEO David Israelite was the guest speaker. He was scheduled to lay out the parameters of the legislation once again on Thursday in Nashville and on Monday in Los Angeles at those cities AIMP meetings, too.

While music publishers can hope for 'pie in the sky' legislation that would abolish the consent decrees and the compulsory license, Israelite says such a bill would never pass, considering it would be opposed by corporate giants like Google, Facebook, the MIC Coalition and the National Assn. of Broadcasters.

New Book, New Copyright Suit. Poor Dan is Still Not Out of The Woods

Author Dan Brown (right) is certainly not a stranger to copyright claims and lawsuits over his bestseller The Da Vinci Code. Not long after publishing the book in 2003 to wide acclaim, several legal actions took place against Brown and his publisher, as well as some action initiated by the publisher to stave off claims of copyright infringement and plagiarism.

One such case that we did not cover here was brought by Jack Dunn of Massachusetts, who authored a book called The Vatican Boys, and sued Brown in Massachusetts for copyright infringement over the usual claims: there were claimed similarities in characters, plots, and factual assertions (including some that are erroneous in both). In 2007, Judge Michael Ponsor threw out the case, claiming that all the evidence Dunn's legal team provided amounted to thematic and structural similarities, which are not copyrightable.

For the proceeding decade, Dunn simply went away. That is until he found another law firm willing to file another copyright suit against Brown, but this time in the UK. We'll see if this suit gets filed. Given Brown's track record for defeating these sorts of attempts, I know on which party I'd be putting my money.

Compare and Contrast – The EU and US positions on Online Copyright Controls

There has been a marked increase in the amount of discourse relating to the control of copyright material online. Many proponents argue for greater regulation of online intermediaries that readily supply content to the masses. Detractors argue for the freedom of the internet to be maintain using often cited free speech arguments. In my view this is an issue that is not going go away. In an ever increasing ideas based society, copyright (along with the other associated IP rights) are only going to become more valuable. It is therefore paramount that we follow the discussion so that we can all take part when the time comes. I have selected a few of the recent articles that highlight the conversations going on in the Eu and in the US.

Tech sector opposes proposed landmark web-block injunction in the US – Perhaps unsurprisingly, the Computer And Communications Industry Association has hit out against a web-block injunction being proposed in an American copyright infringement case between the American Chemical Society and a website called Sci-Hub, which makes academic papers available without a licence.

Cloudflare CEO faces two-hour deposition over his company’s piracy policies - The US record industry again laid into Cloudflare earlier this month in its annual submission to the American government on piracy matters around the world. And now the internet firm’s CEO Matthew Prince is set to be questioned about his company’s policies regarding its copyright infringing customers.

Digital Rights Groups Demand Deletion of Unlawful Filtering Mandate From Proposed EU Copyright Law - The European Parliament's Civil Liberties (LIBE) Committee is due to vote on its opinion on the Digital Single Market proposals this Thursday, 19 October. Although it's not the final vote on these measures, it could be the most decisive one, since a recommendation for deletion of Article 11 and Article 13 at the LIBE committee would be influential in convincing the lead committee (the Legal Affairs or JURI Committee) to follow suit.

Abandon Proactive Copyright Filters, Huge Coalition Tells EU Heavyweights - Dozens of influential civil rights groups have called on EU decision-makers to abandon proposals for compulsory proactive copyright filters. Their open letter, addressed to European Commission President Jean-Claude Juncker and colleagues, warns that monitoring citizens' Internet traffic would restrict fundamental rights while running counter to the Electronic Commerce Directive.

And Finally…. some interesting copyright disputes in the news

Eminem wins $600,000 after New Zealand political party breached his copyright.

High Court: TV formats can be protected by copyright even if elements of the shows are spontaneous or changeable - Judgement

CGI copyright conflict court case could change cinema

This busy CopyKat by Matthew Lingard (Walker Morris LLP)

First live blocking order granted in the UK

this update from Eleonora Rosati on the IPKat

Can an injunction be sought against an access provider that would require this to block access not to a website [as per the standard scenario] but rather streaming servers giving unauthorised access to copyright content? Can such an injunction consist of a 'live' blocking, ie a block limited to when the relevant content is being streamed? 

An application of this kind was recently and successfully made - for the first time as far as the UK is concerned - by the Football Association Premier League (FAPL, supported by other rightholders) against 6 main retail internet service providers (ISPs).

In yesterday's decision in FAPL v BT [2017] EWHC 480 Ch Arnold J concluded that the High Court has jurisdiction to make an order of the kind sought by FAPL.

The law

Arnold J noted at the outset how the law on copyright blocking injunctions under s97A of the Copyright, Designs and Patents Act (CDPA) [by which the UK transposed Article 8(3) of the InfoSoc Directive into its own law] "is now fairly well established" [the first blocking injunction was granted in Newzbin 2 - here - in 2011], and was recently reviewed by the Court of Appeal of England and Wales in Cartier, ie in the context of trade mark blocking injunctions under s37(1) of the Senior Courts Act 1981 [here and here].

The application: what has changed

As explained by the learned judge [para 10], through its application for a blocking order FAPL sought to combat the growing problem of live Premier League footage being streamed without authorisation on the internet. 

Since the decision in FAPL v Sky in 2013, things have gotten worse for a rightholder like FAPL.

First, consumers are increasingly turning to set-top boxes, media players and mobile device apps to access infringing streams, rather than web browsers running on computers. The direct consequence of this is that "traditional blocking orders (targeting websites) will not be able to prevent the growing majority of infringements, because these devices do not rely upon access to a specific website in order to enable consumers to access infringing material. Instead, such devices can connect directly to streaming servers via their IP addresses." [para 11].

Secondly, access to and use of the devices mentioned above does not present many challenges [para 12].

Thirdly, there is a significant availability of high-quality infringing streams of footage of each Premier League match [para 13].

Fourthly, evidence suggests that a "significantly higher proportion of UK consumers believes that it is lawful to access unauthorised streams using such devices and software than believes that it is lawful to access unauthorised content via file-sharing websites." [para 14]

A stream and a Kat

Fifthly, the streaming servers [these being crucial to making the content accessible to the viewers] used to make available infringing streams to the public have increasingly been moved to offshore hosting providers who do not cooperate with rightholders' requests to take down infringing content either at all or in a timely manner [the latter being essential for a rightholder like FAPL; para 15]. 

According to Arnold J, as a result of these factors, evidence supports the view that football fans are turning to streaming devices instead of paid subscription services [para 16].

The order sought: identification of streaming servers

In light of the above, FAPL sought an order that would order 6 ISPs to block access to a number of streaming servers identified in different ways and according to a 2-stage process. 

While one identification criterion remains confidential, Arnold J held the view that other criteria should be described for public interest reasons [para 21].

These are that FAPL (and its appointed contractor) [para 21]:

• must reasonably believe that the server has the sole or predominant purpose of enabling or facilitating access to infringing streams of Premier League match footage; or
• must not know or have reason to believe that the server is being used for any other substantial purpose.

The order sought: what is new

In addition, the order sought by FAPL was different from previous ones for a number of reasons.

First, it is "a "live" blocking order which only has effect at the times when live Premier League match footage is being broadcast". [para 24]

Secondly, the order provides for the list of target servers to be "re-set" each match week during the Premier League season. [para 25]

Thirdly, the order sought would be only for a short period: 18 March 2017 - 22 May 2017 [that is when 2016/17 Premier League season ends].

Fourthly, in addition to the safeguards which have become standard in section 97A orders, the order would require a notice to be sent to each hosting provider each week when one of its IP addresses is subject to blocking. [para 27]

Profit made

The decision: communication to the public by streaming servers (and first UK application of GS Media)

While reviewing the (classic) jurisdictional requirements under s97A CDPA, Arnold J also tackled the issues of whether the operators of the target servers would make acts of communication to the public within s20 CDPA. 

He concluded in the affirmative for a number of interesting reasons, including that the operators "intervene deliberately, and in full knowledge of the consequences of their actions, to give access to the Works in circumstances where the users would not in principle be able to enjoy the Works without that intervention" [para 34, referring to the decision of the Court of Justice of the European Union (CJEU) in GS Media].

As far as I know, this is the first UK application of GS Media. Of particular interest is paragraph 37, in which Arnold J touched upon the issue of 'profit-making intention':

"Generally speaking, the operators of the Target Servers are not merely linking to freely available sources of Premier League footage. Even if in some cases they do, the evidence indicates that they do so for profit, frequently in the form of advertising revenue, and thus are presumed to have the requisite knowledge for the communication to be to a new public". 

Conclusion

This is an important order that demonstrates how technological advancement prompts a re-consideration of traditional approaches, including whether intermediary injunctions should be only aimed at blocking access to infringing websites [the answer appears to be no, and this order may pave the way to even more creative enforcement strategies in the future].

Arnold J's decision shows how the law - including the one on blocking orders - is subject to evolution. This is so also to permit that the 'high level of protection' that the InfoSoc Directive [from which s97A CDPA derives] intends to provide is actually guaranteed.

As far as the GS Media 'profit-making intention' is concerned, to some extent the view of Arnold J appears somewhat narrower (but practically not dissimilar) than that of other courts, eg the District Court of Attunda in Sweden [here, here, and here] that have applied GS Media so far. Further applications of GS Media by UK courts are however keenly awaited.

Posted By Eleonora Rosati to The IPKat on 3/14/2017 06:03:00 pm