Last week saw yet another ground-breaking IP judgment delivered in the UK. In the case of Twentieth Century Fox Film Corporation and Others v British Telecommunications, the High Court held that an internet service provider can be ordered to block access to a website where it has actual knowledge that the site is infringing a third party’s IP. BT invoked the E-Commerce Directive safe harbour provisions and the European Convention on Human Rights in its defence, but to no avail.
Newzbin Limited (“Newzbin”) operated a website that indexed and collated individual binary files relating to films (“Newzbin1”) and enabled members of the site to download entire films by simply clicking onto a link of the composite file.
In 2010 a number of film companies including Twentieth Century Fox brought an action against Newzbin for copyright infringement. The judge in that case found that Newzbin had infringed the film companies’ copyright on a large scale. In particular, the entire Newzbin website had been designed with the intention of making infringing copies of films available to its members, and Newzbin had thereby engaged with its members “in a common design” to infringe the claimants’ copyrights. More specifically, Newzbin had authorised copyright infringement, which is prohibited by section 16 of the Copyright, Designs and Patents Act 1988 (“CDPA”), by providing members with access to the films as well as details of how to download them. Further, Newzbin had breached section 20 of the CDPA by communicating the copyright works to the public in such a way as to allow its members to access the films at a time and place chosen by them. As a result, the site was not simply a “content agnostic” indexing service as pleaded by Newzbin.
Shortly after the judgment was released, Newzbin went into voluntary liquidation and Newzbin1 ceased to operate. Eleven days later, unidentified individuals began to operate another, almost identical, website called Newzbin2. Twentieth Century Fox and other members of the Motion Picture Association applied to the High Court for an order under section 97A of the CDPA to force BT, the UK’s largest broadband services provider, to implement technology to prevent its subscribers accessing Newzbin2.
The order was granted by Mr Justice Arnold on 28 July 2011. In his decision the Judge did not accept that Article 15 of the E-Commerce Directive provided BT with a defence. This provision prohibits EU states from requiring intermediaries to monitor transmitted information. By contrast, the order only obliges BT to “block…access to Newzbin2”, a task involving no active monitoring. Article 12, which protects intermediaries from liability if they act only as “mere conduits”, was also deemed inapplicable. The Judge said it did not limit the type of injunction which might be granted to make a service provider prevent an infringement.
BT also submitted that the order would inhibit freedom of expression in a manner contrary to the European Convention on Human Rights. However, the Judge dismissed this argument as the order was both prescribed by law (section 97A of the CDPA) and proportionate. In this regard it was significant BT had admitted the solution was technically feasible and not particularly expensive.
The Newzbin2 judgment should be welcomed by the media industry and copyright owners generally. Ascertaining the identities of infringers is a perennial problem when trying to enforce one’s IP rights in the internet age. Newzbin2 provides a fairly typical example - the website is registered in the Seychelles and its operatives use pseudonyms. In such circumstances, the ruling demonstrates it may be possible to take action against an internet service provider where its knowledge of the infringing activities can be established.
The decision is very much in line with the Court of Justice for the European Union’s recent judgment in L’Oreal v Ebay where the E-Commerce Directive’s ISP defences were also interpreted narrowly. Consequently, Newzbin2 is a further reminder that intermediaries need to be vigilant in order to avoid being found to have been aware of infringing activities. Unfortunately for BT, the Judge said it knew its users used its services to access infringing material.