snIPpets – January 2013
- Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases
- Warning for owners of trade marks with a "figurative figleaf of distinctiveness"
- Advocate General advises that registering a CTM should not be a defence to infringement
- 3-D Scrabble Tile: not a sign capable of graphic representation
- Use of a different form of trade mark can still be genuine use
- Yoghurt is Yoghurt
- China trade Mark Practice Note – Retail Services
- Extra-Time at the High Court
- English Court flexes its muscles on declarations of non-infringement
- Proposal to make clinical trials less risky and online drug sales safer
- Court of Appeal confirms invalidity of patent for EXELON because it was obvious to resolve racemate using standard techniques
Patents / Competition
At the very end of 2012, the Court of Appeal dismissed an appeal in the FA Premier League v QC Leisure case. In doing so, it confirmed that the defence of "free public showing or playing of broadcast[s]" (s72 CDPA 1988) applied to the highlights and match replays contained within Premier League broadcasts. Accordingly, there was no infringing communication to the public of these copyright works. However, the defence does not apply to musical works (eg the Premier League anthem) or artistic works contained in the broadcasts (eg the logos).
We have previously reported on 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.
The relevant provisions of copyright law are set out in the Copyright Designs & Patents Act 1988 ("CDPA"). The CDPA was amended in 2003 by the Copyright and Related Rights Regulations (the "2003 Regulations") by which the UK intended to give effect to EU Directive 2001/29/EC (the "Copyright Directive"). The arguments in this appeal turned on the effect of those amendments - see Annex for full details of the legislation and relevant amendments.
This was an appeal from part of the Order of Kitchin LJ (sitting in the High Court) made in February 2012. He had held that the publicans had communicated the FAPL's copyright works within the meaning of s20 CDPA. In addition, the publicans' transmission constituted the playing or showing in public of FAPL's films included in those broadcasts (the films and match replays) within s19(3) CDPA. However, there was a defence under s72(1)(c) CDPA because there was a free public showing of the broadcast. This provided a defence to both the communication to the public under s20 CDPA and the playing or showing in public under s19(3) CDPA for the films contained in the broadcast.
The Appeal Grounds
FAPL argued that the defence in s72(1)(c) should only cover the restricted act of "playing or showing of the work in public" under s19(3) CDPA. The following reasons were given why the defence should not apply to the restricted act of "communicating to the public" under s20 CDPA:
- prior to the amendments introduced by the 2003 Regulations, s72(1) did not apply to s20 but only provided a defence to the restricted act in s19(3). Section 20 concerned "broadcasting" which was generally accepted to be different to "showing or playing in public" within ss19(3) and 72(1);
- the overriding intention of the UK Government in making the 2003 Regulations was to implement and comply fully with the Copyright Directive. It made wholesale amendments to s20 in order to give effect to the exclusive right of "communication to the public" set out in Article 3 of the Copyright Directive. It didn't amend s19 because that section was dealing with something quite different;
- the Government did not appreciate that "communication to the public" in the amended s20 would include the act of "showing or playing [a broadcast] in public" within s72(1);
- the Government did not intend to extend the s72(1) defence to the restricted act in amended s20. It intended to preserve existing defences but only insofar as they were consistent with the Copyright Directive. Article 5 of the Copyright Directive did not allow a defence to s20 in such broad terms as set out in s72(1)(c);
- The Courts should consider the Marsleasing principle whereby Member States must, so far as possible, interpret national legislation in light of the wording and purpose of a European Directive in order to achieve the result pursued by it. This required s72(1)(c) to be interpreted consistently with the Copyright Directive by limiting the defence to the restricted acts specified in section 19(3).
Alternatively, the defence in s72(1)(c) should be restricted to analogue transmissions because the Government intended to maintain the widest range of legitimate exceptions allowed under the Copyright Directive.
The Court of Appeal thought FAPL's submissions were attractive but nevertheless rejected the appeal. It concurred with the first 4 arguments set out above. However, that did not mean that the s72(1)(c) defence should be limited to restricted acts within s19(3) – that went beyond the principles of legitimate statutory interpretation.
The amended wording of s72(1)(c) is clear and unambiguous in embracing any "showing or playing in public of a broadcast" to an audience who have not paid for admission. The Government clearly intended to maintain to the fullest extent possible the UK's existing exceptions to copyright infringement and the introductory wording of s72 makes it clear that the Government did not intend to introduce a new limitation to the ambit of s72.
In view of the overlap between "playing or showing of the work in public" in s19(3) and "communication to the public of the work" in s20, an implied restriction of s72(1)(c) would mean there could be no defence for pre-recorded films broadcast to the public where the public has not paid for admission. This would be a major change because broadcast output is regularly pre-recorded but s72(1) would only apply in practice to live broadcasts.
The Court also rejected the submission that the defence should be restricted to analogue transmissions. This would not comply with the Copyright Directive so would also have been the subject of Government consultations.
Comment and Key Points
The Court of Appeal has confirmed that the defendants have a defence in this case but only because the Government has made a mistake in implementing the Copyright Directive. The wide exception to the right to communicate to the public (Article 3 Copyright Directive), as currently set out in s72(1)(c) CDPA, is not permitted under Article 5 of the Copyright Directive so should be amended.
It should also be noted that the s72(1)(c) defence only applies to broadcasts and films and sound recordings contained within broadcasts and not to other works. Kitchin J (as he was then) specifically held on 24 June 2008 (at paras [269-279]) that the defence did not apply to musical works (e.g. embodied in the Premier League anthem) or literary or dramatic works. There are also artistic works contained in the broadcasts such as logos, the opening sequence and in-game graphics to which the defence does not apply.
The appeal confirms that FAPL cannot prevent pubs showing highlights or replays provided the pubs' customers do not pay any admission fee. Nevertheless, pub landlords continue to risk infringement in relation to the other copyright works contained within the broadcasts. Kitchin LJ acknowledged that pubs could try to mute the sound at any time the Premier League anthem was being played and block out any logos. However, it may be difficult for publicans to isolate the copyright protected works and FAPL may try to include more copyright protected elements to make it harder for publicans to avoid infringement.
Legislation and Amendments (as relevant) (emphasis added)
Section 19(3) CDPA provides that:
"the playing or showing of the work in public is an act restricted by the copyright in a sound recording, film or broadcast….".
Section 20 CDPA, as originally enacted, provided as follows:
"The broadcasting of the work or its inclusion in a cable programme service is an act restricted by the copyright in:
(a) a literary, dramatic, musical or artistic work;
(b) a sound recording or film; or
(c) a broadcast or cable programme".
The 2003 Regulations substituted an entirely new Section 20 CDPA as follows:
(1) "The communication to the public of the work is an act restricted by the copyright in:
(a) a literary, dramatic, musical or artistic work;
(b) a sound recording or film; or
(c) a broadcast.
(2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include:
(a) the broadcasting of the work;
(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them".
Section 72(1) CDPA, as originally enacted, provided as follows:
(1) "The showing or playing in public of a broadcast or cable programme to an audience who have not paid for admission to the place where the broadcast or programme is to be seen or heard does not infringe any copyright in:
(a) the broadcast or cable programme; or
(b) any sound recording or film included in it".
Section 72(1) CDPA was amended by the 2003 Regulations to provide as follows:
(1) "The showing or playing in public of a broadcast to an audience who have not paid for admission to the place where the broadcast is to be seen or heard does not infringe any copyright in:
(a) the broadcast;
(b) any sound recording (except so far as it is an excepted sound recording) included in it; or
(c) any film included in it.