Kitchin lays down the score at full time
On Friday 3 February 2012, Kitchin LJ handed down his High Court judgment in the Premier League's ongoing battle against the suppliers of non-UK decoder cards and various publicans in the UK using those decoder cards to broadcast live Football Association Premier League (FAPL) football matches through non-UK channels.
In light of the CJEU ruling of 4 October 2011, Kitchin LJ agreed that broadcasting live FAPL matches in pubs to customers via foreign channels was a 'communication to the public' under UK copyright law for which the FAPL's authorisation was required. There was, however, a defence available for the publican defendants in respect of some elements of the broadcasts, provided they did not charge customers to watch the matches. The judge agreed to make a carefully formulated declaration setting out the precise nature of the copyright protection and said he would consider an appropriate and well-defined injunction restraining further infringement.
Kitchin LJ also confirmed that a declaration would be issued reflecting the CJEU's ruling that the territorial restrictions in FAPL's licence agreements prohibiting the supply of satellite decoder cards in the UK were contrary to EU law.
In June 2008, the High Court sought references from the Court of Justice of the European Union (CJEU) on two separate but related cases. The first case was a copyright infringement action brought by the FAPL against QC Leisure and AV Station plc, importers and suppliers into the UK of foreign decoder cards which allowed access to FAPL matches broadcast in Greece, North Africa and the Middle East. The second was against Mrs Murphy, a pub landlady from Portsmouth, who was prosecuted for screening live FAPL football matches using a Greek decoder card, rather than using a subscription from the authorised UK broadcaster, BSkyB. (The criminal case against Mrs Murphy will be heard later this month).
A series of questions were referred to the CJEU on the interpretation of various EU directives relating to copyright and satellite broadcasts and on the rules and regulations relating to free movement in the EU and competition.
Summary of CJEU ruling in October 2011
In October 2011, the CJEU ruled that licences which grant broadcasters territorial exclusivity and prohibit viewers from watching broadcasts with a decoder card in other Member States is contrary to EU law. FAPL's licence agreements constituted a restriction on competition which was prohibited by Article 101 of the Treaty on the Functioning of the European Union (TFEU) (formerly Article 81 EC).
In relation to copyright, the CJEU ruled that while there was no copyright protection in the live football matches themselves, copyright did subsist in the FAPL anthem, pre-recorded films showing highlights of previous matches and various in-game graphics and logos. Transmission of any copyright works constituted a "communication to the public" under Article 3(1) of the Copyright Directive (2001/29/EC), which required authorisation from the author of the copyright works.
High Court ruling
At the original hearing, the claimants had alleged that the publicans had communicated FAPL's copyright works to the public by screening the matches, via televisions screens and speakers, to the pub customers, which required FAPL's authorisation under s. 20 of the Copyright Designs and Patents Act 1988 (CDPA). FAPL claimed copyright in about 25 works falling into 3 categories - film works (opening sequence, highlights, match replays), sound recording and musical works (Premier League anthem) and artistic works (logos - Barclays eagle and ball and various graphics - opening sequence and in-game graphics). While the defendants accepted that a satellite broadcast is a communication to the public, they argued that in this case, there was no infringement of UK copyright because the communication took place in the Member State of transmission. After much analysis on the interaction between UK and European law, Kitchin LJ agreed with the CJEU that when the publicans screened live FAPL matches broadcast on non-UK channels in their pubs, this was a communication of FAPL's copyright works to the public, for which FAPL's authorisation was required. Further, Kitchin LJ found that the suppliers of the decoders (QC Leisure and AV Station) authorised the infringing acts of their customers.
Publicans' defence under s.72 CDPA
Section 72 of the CDPA provides that free public showing or playing of a broadcast does not infringe any copyright in the broadcast or any film included in it. Kitchin LJ held that s.72 was clear and unambiguous and 'means what is says'. The publicans in this case were showing or playing the broadcasts in their pubs to members of the public who had not paid for admission and as such, there was no copyright infringement in any film (highlights, match replays) included in the broadcasts. It has been rumoured that FAPL will appeal this aspect of the judgment. Kitchin LJ went on to confirm, however, that the defence did not apply to the musical works embodied in the anthem but acknowledged that steps had been taken by the defendants to keep the sound muted at any time the anthem was being played.
Copyright declaration and injunction
Kitchin LJ agreed that it would be appropriate to grant a declaration on the scope of copyright infringement which should be done 'with precision' and limited to infringing acts of specific works established against each defendant.
In terms of granting FAPL's request for an injunction to restrain further infringement of FAPL's copyright works (various film works, artistic works and the Premier League anthem), Kitchin LJ noted that some of the defendants were no longer in business or were no longer being pursued and those publican defendants who were potentially liable for infringement by playing the Premier League anthem in their pubs had offered undertakings to mute the sound. QC Leisure had also undertaken to take the appropriate steps to tell its customers to mute the sound. Kitchin LJ indicated that it might be enough to accept the undertakings in lieu of an injunction but went on to say that any injunction granted would have to be formulated with precision and clearly identify which copyright works had been infringed. Kitchin LJ made a statement which is no doubt still resounding through the pubs that those defendants still in business "must be entitled to carry on their businesses in a way in which avoids infringement of FAPL's copyrights if they are able to do so".
Article 101 declaration
Kitchin LJ agreed to formalise the High Court's findings, reflecting the CJEU's ruling, that the territorial restrictions in FAPL's licence agreements prohibiting the supply of satellite decoder cards in the UK are contrary to EU law. The High Court was sympathetic to a degree to FAPL's resistance to such a declaration and agreed to include a statement that the declaration was without prejudice to any rights of FAPL in respect of copyright infringement and that it would not prejudice any parties to the licence agreements who had not been involved in the proceedings.
Order for an inquiry or account
Even though the defendants argued that no order for an inquiry as to damages or an account of profits was necessary because the claimants had only suffered nominal or trivial damages, Kitchin LJ considered it appropriate to make an order but referred the hearing to the Patents County Court which indicates that any damages awarded will be low.
While many headlines have hailed FAPL as the victor, on deeper analysis, this is not necessarily the case. It is true that FAPL is entitled to enforce its rights against pubs if they screen football matches from foreign broadcasters featuring copyright protected works. Indeed, FAPL has issued a press release indicating it will now pursue any infringing publicans. The scope of copyright protection, however, is likely to be limited (the scope will be defined in the injunction and declaration currently being agreed between the parties) and publicans may well find a way to avoid including copyright protected works in any broadcasts by, for example, muting the sound of the anthem at the relevant times and trying to block out logos. As far as pubs showing any highlights or replays are concerned, these cannot be prevented by FAPL provided the pubs' customers do not pay any admission fee.
On the other hand, it may be difficult for publicans to isolate the copyright protected works in any one foreign broadcast in order to avoid infringement and FAPL may try to include more copyright protected elements to make it harder for publicans to avoid infringement. Only time will tell and it will only really become clear what publicans can and cannot do once the form of the declarations and injunctions have been agreed.
As far as the general licensing of sports rights is concerned, the judgment is likely to herald a significant change to the established practices of licensing rights on an exclusive territory basis. Even if content owners are able to maintain some degree of exclusivity with licensees, they will not be able to prevent third parties from accessing foreign decoder cards which could devalue exclusivity and content owners may need to consider renegotiating their licences to best exploit their rights.
Rebecca Pakenham-Walsh, Senior Associate (PSL), IP Protection and IP Enforcement and Litigation at Fieldfisher.