Following on from a number of
decisions in which internet service providers (ISPs) were ordered to block their customers from accessing
websites whose content infringed the rights of intellectual property owners,
the High Court has granted an order sought by the Premier League that requires
six major ISPs to block access by their customers to servers that stream live
unauthorised footage of Premier League matches (The Football Association Premier League Limited v British
Telecommunications and Ors [2017] EWHC 480 (Ch)).
Business Impact
- The decision is the latest in a series of cases
which demonstrate that the court recognises that advances in technology
mean that there are now additional methods in which intellectual property
rights may be infringed and it is willing to be creative and to grant
orders to protect those rights. - The decision will be welcomed by owners and
licensees of broadcasting rights in live sporting and other events and is
likely to set a precedent for forms of order against providers of
unauthorised streaming services in the future.
The decision is of interest for the
following reasons:
- Previous blocking orders related to the
prevention of access to websites. This is the first time that a
blocking order goes further up the chain of supply and applies to the
blocking of streaming servers. This is to overcome developments in
technology whereby unauthorised content can now be accessed via means and
devices other than websites, such as media players, mobile apps and set
top boxes. - The application was also supported by five of
the six defendant ISPs (TalkTalk did not oppose the application). - The order itself has several novel features:
- The order is effective only when live Premier
League footage is being broadcast – it was referred to by the judge
(Arnold J) as a ‘live’ blocking order. - The list of target servers named in the order
is to be ‘re-set’ each match week, so as to include new servers and to
ensure old servers are not blocked if they are not streaming offending
footage. - The order is for a short period – until the
end of the Premier League season – so that the Premier League can
evaluate its effectiveness and make changes when applying for a similar
order for the next season. - As an additional safeguard, the order
requires notice to be sent to the hosting provider of the streaming
service each week when its service is subject to blocking and that
provider can apply to set aside or vary the order as can operators of the
servers or customers who claim to be adversely affected by it.
Background
The Premier League licenses to
broadcasters throughout the world the right to provide coverage of Premier
League matches. Each match is filmed on behalf of the Premier League and
recorded before onward transmission to the licensed broadcasters. The Premier
League owns the copyright in these films and in associated logos and graphics.
The Premier League’s revenue from such licensing is £1.7billion a year.
The Premier League applied for an
order pursuant to the Copyright, Designs and Patents Act 1988, s 97A, which
implements Article 8(3) of the InfoSoc Directive 2001/29/EC and provides that:
‘The High Court (in Scotland, the
Court of Sessions) 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.’
The order sought required the
defendants, the six main ISPs in the UK, to block access by their UK customers
to streaming servers that were providing unauthorised live streams of Premier
League matches.
Previous successful blocking orders
had been directed towards identified websites. This application was prompted by
the increasing ability of customers in the UK to readily access high quality
unauthorised live footage of matches not only through websites, but through a
range of devices such as mobile apps, media players and set-top boxes.
The streaming servers are key links
in the chain of distribution of unauthorised coverage. The same stream or the
same server can be accessed by multiple apps, websites and set-top boxes. If
the streaming server is blocked, then the devices cannot access the infringing
footage. Blocking access to the streaming server has an impact closer to the
origin of the unauthorised footage. Further, developments in technology have
facilitated the swift identification of infringing streams.
The application was supported by
other significant sports bodies in the UK and overseas that own and
commercialise their rights in the televising of live sporting events, such as
the England and Wales Cricket Board, the PGA European Tour and the RFU. The
application was also supported by the defendant ISPs (save for TalkTalk
who did not oppose the application). The ISPs included Sky and BT who each have
exclusive licences to transmit coverage of live Premier League matches and
therefore the order sought would protect their own interests to some extent.
Jurisdiction
Unusually, but not unexpectedly,
there was no dispute between the parties and the form of order was agreed. However,
this did not absolve the court from the responsibility of considering whether
the order was justified.
Arnold J therefore considered whether
the four matters required for the court to have jurisdiction under the CDPA
1988, s 97A had been established.
1. Are the defendants
service providers?
This was a well-established fact and
each of the defendants is a service provider within the meaning of the Electronic
Commerce (EC Directive) Regulations 202 (SI 2002/2013), reg 2.
2. Do the operators and
users of the identified streaming servers infringe the Premier League’s
copyrights?
Copying: Copying the work is an act restricted by
copyright. The devices used by customers accessing the streams would create
copies of the footage received in the memory of those devices and such copying
takes place in the UK insofar as the device and customer are in the UK.
Communication to the public: The communication to the public of the work is an
act restricted by copyright. Streaming is an act of communication by electronic
transmission to each customer who accesses a streaming server during a relevant
match. The operators of the streaming servers commit that act of communication
because they intervene deliberately, fully aware of the consequences of that
intervention, to give access to match footage. There is evidence that the
streams are viewed by a large number of users. Further streaming is a technical
means different from the means by which the footage was originally delivered (ie
cable or satellite broadcast) which had not been authorised by the Premier
League. The users accessing the streams are a ‘new public’ which was not taken
into account by the Premier League or Sky or BT, who permit only paying
subscribers to access the footage by these means. Even if the streaming servers
were providing access to freely available coverage of Premier League matches,
they are doing so for profit and therefore are presumed to have the requisite
knowledge for the communication to be to a new public. Finally, this
communication is directed to the public in the UK and therefore the infringing
act is to be regarded as taking place in the UK.
3. Is there use of the defendants’
services?
It is clear that the ISPs’ internet
services were used by their customers to access the streaming servers and
obtain infringing copies of the football coverage.
4. Defendants’ actual knowledge
It was clear that the ISPs had
knowledge of the infringing activities, not least as a result of monitoring of
the streaming servers by the ISPs themselves.
Exercise of Discretion
Arnold J then went on to consider
whether the court should exercise its discretion to make the order, the overriding
issue being whether the order was proportionate having regard to the competing
rights of those affected by it. This required the court to consider the
importance of, and the justification for interfering with, the Premier League’s
copyrights compared with the ISPs’ freedom to carry on business and internet
users’ freedom to convey or receive information.
Considering the Premier League’s
position, it was clear that there was infringement of its copyrights and that
the Premier League had a legitimate interest in seeking to prevent such
infringement (as did its licensees). The Premier League also contended that
there was a wider public interest in protecting its rights, given the
substantial support it gives to sport in the UK and the financial contribution
made by it and its licensees to the UK economy.
Considering the position of the ISPs,
their freedom to carry on business would not be impeded. The main effect of the
order would be to increase operating costs to effect the blocking but the fact
that five of the six ISPs supported the application for the order was strong
evidence that their freedom to operate would not suffer.
Considering the position of the
customers of the ISPs, the freedom to convey or receive information clearly
does not give any right to infringe copyright. The order was designed to take
effect only during the periods when the operators of the streaming services
would be engaged in infringing activity and therefore those operators would
have no rights that required protection.
Insofar as there was any concern that
any lawful activity could be adversely affected, this was addressed by the
targeted nature of the order and the safeguards incorporated into the order
(summarised above). Any lawfully streamed content was likely to be de
minimis and would be short-lived due to the limited duration of the
blocking order.
Arnold J therefore concluded that the
court had jurisdiction to grant the order sought, it was proportionate and he
should exercise his discretion to grant it.
Joel Smith is a
Partner and Head of the Intellectual Property group at Herbert Smith Freehills
LLP in London: joel.smith@hsf.com
