Case law update: Football Association Premier League Ltd v British Telecommunication Plc and others [2017]

The High Court recently ordered a number of Internet service providers (“ISPs”) to block access to Internet servers that allowed viewers to illegally view English Premier League games. Mr Justice Arnold (the “Judge”), who heard this case, noted that whilst this matter dealt with established copyright principles, this was the first time the Court had dealt directly with the Internet servers providing the illegal streams, as opposed to just the websites that advertised the infringing content.

 Technical note: Before dealing with the details of this case, it is worth reviewing the basics of how illegal streaming works. There are numerous websites, which advertise streaming of live Premier League games. Once the viewer selects a game to view, the website lists a number of links to other websites which purport to show the game. When one of the links is clicked the first website directs you to a second website hosted on a server, which then streams the game directly back to the viewer, circumventing the initial website. Previously, when websites that advertise content have been blocked they reappear with a slightly website name (and a different IP address). They are then able to re-link the viewers to the servers that show the infringing content. Therefore, an effective anti-piracy law would seek to target the servers that host the content, as opposed to merely the websites that advertise it.

Background

Whilst the Claimant was the Football Association Premier League Ltd (“FAPL”), they were supported by a number of other right holders including the Rugby Football Union, the England and Wales Cricket Board and the British Broadcasting Corporation (The fact that the Claimant had the backing of some of the biggest UK sports rights holders indicates how important this issue is). The Defendants’ are the leading ISPs in the United Kingdom and included British Telecommunication, SKY UK and Virgin Media. The Claimant sought an injunction, pursuant to Section 97A of the Copyrights, Designs and Patents Act 1988 (which implements a variety of European Community law) (the “Act”) against the Defendants’ requiring them to prevent their customers from accessing the servers which illegally show Premier League games.

The Judge noted that in a previous case (FAPL v British Sky Broadcasting) in 2013 he had dealt with a similar request for an injunction, however in the three years since, the situation has been complicated in a number of ways:-

1. The ‘traditional’ method of blocking streaming services, which consisted of blocking websites that advertised Premier League games, needed updating. Since 2013 there has been a range of new devices that connect directly to televisions (ie: the popular Amazon Fire stick). These devices then access the streaming servers directing, avoiding the need to use specific websites;

2. Accessing illegal and increasingly high quality streaming services requires less technical know-how than ever before. Customers that purchase the Amazon Fire stick simply plug the device into their TV with the software already uploaded;

3. There is large proportion of the public that believe these new streaming devices are legal, and that because such devices are freely available (from legal websites) accessing streaming services through them is perfectly fine; and

4. Many servers which provide the illegal streams are now based off shore, and do not respond to requests by rights holders to take down material (see ‘Alternative measures’ section below).

As a result of these factors, viewers are increasingly using illegal services as a substitute for paid subscriptions, which undermines the value of the rights being offered by the FAPL. Considering that the FAPL rights are now worth £1.7 billion, the stakes involved in resolving the issue are high.

The Blocking Order (“the Order”)

The Order contained a confidential list of IP server addresses, which were to be blocked in the first instance (These had been identified by a contractor employed by the FAPL). In addition the Order aimed to address the issues outlined in 1 – 4 above, in the following ways:-

1. The Order is ‘live’, so it only works when the Premier League games are being broadcast;
2. The list of servers to block will be reset every week, meaning new infringing servers get quickly blocked whilst old servers get unblocked if they are no longer infringing;
3. The Order is only valid until the end of the current Premier League season (22 May 2017). This allows the Order to be tweaked if necessary in time for the next Premier League season; and
4. Finally as a safeguard (against unjustified blocking) a notice must be given to the hosting server and the operating website once a relevant IP address is blocked. This means the hosting server, operating website or one of the Defendants’ have the opportunity to apply to set aside the Order.

Jurisdictional requirements

The Judge then outlined the Court’s jurisdiction to make the Order by going through the relevant criteria:-

1. The Defendants are service providers within the meaning of regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002, SI 2002/2013;

2. Both the operators of the servers and the users of the servers infringe the Claimant’s rights. The reasoning behind the Judge’s conclusion are summarised briefly below (for more detail see paragraphs 30 – 42 of the Judgment):-

• When a user streams the football match, it illegally creates copies of the game in the memory of the device the game is being watched on.
• The steps taken by the providers of the streaming service are deliberately intended to allow users to illegally watch a live Premier League game.
• The servers are designed to be, and often are, viewed by a large number of users.
• It is often the case that the servers are not only infringing the rights of the FAPL, but also profiting from doing so, through advertising revenue.
• Whilst the servers often operate from abroad (as previously outlined) they are aimed at UK consumers and therefore are in effect operating under UK law; and

3. The Defendant’s services are used to commit the infringement, and the Defendants are aware that this is the case.

Reasons for Order

Having established the wording of the Order and that jurisdiction was satisfied, the Judge looked at the balance between the Defendants’ right to carry on its business and the Claimants’ copyright. Overall the Judge held that the terms of the order were appropriate for the reasons explained below:

Effectiveness and dissuasiveness (ie: will the Order see a reduction in piracy)

Here the Judge drew on experience of similar blocking orders made by the High Court. In particular he highlighted previous orders in connection with ‘Bit Torrent’ websites (which enabled users to illegally download music) and online streaming websites, which enabled users to watch pirated films. Academic research done on the effect of these orders concluded:-

1. ‘Bit Torrent’ blocking orders reduced traffic to the affected websites by 90% from the UK (whilst they can still be accessed, the technical know how required to do so is high); and

2. Piracy by the users in the UK affected by the blocking orders fell by 22% and in turn subscription websites like Netflix saw a rise in users.

The Judge also stated, as he alluded to earlier in the Judgment, that he hoped the Order would educate UK consumers that using online streaming services was illegal.

Substitutability (ie: that users will simply use non blocked servers)

The Judge made two main observations:-

1. Drawing on the EU case (see judgment paragraph 55) which blocked the music download website Pirate Bay, the fact that users could use other websites, did not detract from the effectiveness of the blocking order in reducing piracy; and

2. The flexible nature of the Order allows for it to be updated as servers come and go. So whilst there will inevitably be some servers still offering illegal streaming this will be reduced.

Alternative measures

The Judge looked at what methods had previously been tried and whether the Order was the best way to combat online piracy (see Judgment paragraph 57 – 63). His observations included that:-

1. Previously the Premier League has tried to engage with hosts of the servers showing the football games, but it proved difficult, due to the fact that many of these hosts operate from offshore; and

2. It has been difficult preventing the sale of devices (ie: on Ebay or Amazon) that are configured to access infringing material. Sellers have become quite sophisticated in the way they market the devices to avoid detection.

Having regard to such factors the Judge was of the opinion the Order was an appropriate method of prevention. It was not unnecessarily complicated or costly to pursue and the targeted nature of enforcement meant the Order did not prevent legitimate trade. The main purpose of these streaming servers was to show infringing material and any legitimate content they did show was minimal and was not a reason for not granting the order.

Comment

When introducing this case the Judge referred to the ‘traditional’ method of preventing streaming being inadequate, and ‘traditional’ in this context was not even a decade old. The difficulty for lawmakers is how to keep up with innovative infringement methods and indeed it seems inevitable there will be lag periods between these new methods and an appropriate legal response. When an appropriate legal response was devised in this case, it is noticeable how labour intensive it is for the rights holder. Every week during the Premier League season the Order is reset and updated to incorporate newly infringing servers and each newly blocked server has to receive notice of this blocking order. Whilst this seems like a burden on the FAPL who have to pay to detect infringing servers, the pace of change online means the battle against illegal streaming requires such an unremitting and flexible approach.

Equally, as the Judge observed, a key part of the problem is the perception of online infringement. People are either unsure whether online streaming is a crime or they think it is less of a crime. What further clouds the issue in people’s minds is the existence of devices such as the widely available Amazon Fire Stick, which is designed to facilitate infringement (but is itself legal).

Whilst at the date of this article, a quick search online for an illegal football stream shows that the options have been severely reduced; it will be interesting to assess the situation in 12 months. To misquote former British Prime Minster Harold Wilson, ‘ a year is a long time online’.

Click here for the full Judgment text

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Case Law Update: Ecb vs Fanatix

Case Law Update: Spring 2016

Practice Area: Intellectual Property (Copyright Law)

England and Wales Cricket Board (ECB) and Sky UK Limited (Sky) vs Tixdaq Limited and Fanatix Limited

The Chancery Division of the High Court recently held that an App, which allowed users to upload and watch eight-second clips of cricket matches, breached the Claimant’s copyright. The Judge decided that clips constituted a ‘substantial part of the sporting broadcast’ and that the Defendant could not rely on the defence of ‘fair dealing’ in its distribution of the clips.

Background

The Claimants, ECB and Sky owned the copyright for both the live television broadcast of all cricket matches under the auspices of the ECB and the film made in the course of these broadcasts (ie: analysis of clips, action replays etc). The Claimants alleged that these rights had been infringed by the Defendants, Tixdaq and Fanatix, who had created a platform for iphone and ipad users which allowed the uploading, sharing (on twitter, facebook etc.) and watching of cricket clips. The Defendants denied the breach stating that the clips did not constitute a substantial part of the sporting broadcast (required to be protected under copyright for the broadcast). The Defendants also invoked the defence contained in section 30(2) of the Copyright Design and Patents Act 1988 (CDPA), which was that the clips reported current events, and as such where deemed to be ‘fair dealing’, which would mean there was no copyright breach.

Case Summary

Considering a range of UK and EU case law the Judge set out the applicable legal principles and then assessed whether there had been a breach. The Judgment, which was extensive, goes into considerable detail and includes obiter comments of use to practitioners, however the key elements of the case are summarised below:-

1. Were the clips a substantial part of the broadcast and therefore protected under Copyright?

The Judge commented that the length of the clip, was not in itself relevant and in analysing whether the clip was substantive you had to look the amount of investment in the clip by the Claimant and whether in using it the Defendants have exploited that investment. The Judge applied the European case of Infopaq International A/S v Danske Dagblades Forening (2009), which held that an original work is infringed if there is unauthorised reproduction of the author’s ‘intellectual creation’. The Judge decided that the clips were the Claimant’s intellectual creation as they had committed time and resources in deciding how to choose and then present the clip to the viewer. Therefore the clips used by the Defendant, despite the short length, were substantive and use of them exploited the Claimants aforementioned investment.

2. Was use of the clip justified under the ‘fair dealing’ defence?

The Judge looked whether clips were being used for information purposes and for ‘reporting of current events’ within the meaning section 30 (2) of the CDPA. Further was the extent of the use of the clips justified by a valid purpose to report and provide information?

The Judge firstly stated that the meaning of ‘reporting’ included civilian journalism (including on social media) and that clearly a live cricket match was a current event. He went on to state that the nature of the clips was to initiate debate amongst users of the app as it was shared between them. As such its purpose was not to provide the user with information, but to use the content of the clip (ie. its value) for the purposes of its App, which was a commercial venture. As such the clips were not being used for purely informative purposes. By extension therefore the use of the clips by the Defendants reduced their value to the Claimant who had paid for the their exclusive use. Therefore the conclusion of the Judge was that the Defendant’s use of the clips conflicted with the Claimants copyright and the ‘fair dealing’ defence did not justify the level of this conflict.

Commentary

On first analysis this Judgement could be deemed a blow to Social Media platforms that share clips like Facebook, Youtube and Twitter. However the Judgement distinguishes between the use of copyright protected content to report and its use to gain commercial advantage. If platforms use clips of broadcasts to information and report current events as opposed to attempting to gain from the investment of the copyright holder, then they should feel protected. Rights holders will feel comforted by the fact their investment in producing a product, which is attractive to consumers, is protected from those who will attempt to exploit it. For lawyers this case is an example of the fine line for interpreting copyright abuse and the Judge’s comments will be helpful in advising clients on how to either protect their rights or avoiding being charged with exploitation.