Locations
This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
The Newsbin2 decision in July 2011 represented a further step forward in the Motion Picture Association (MPA)'s long-running battle to shut down arch-nemesis Newsbin. For the first time, the English Courts agreed to compel an ISP to block access to an infringing site under section 97A(1) of the Copyright Designs and Patents Act 1998 ("CDPA"). In Newsbin3, the latest case in the saga, the Courts looked at the precise terms that will be ordered under s97A(1). The case has important implications for both rights owners and ISPs when considering making or responding to future requests to block access to infringing websites.
The Story So Far…
The Newsbin website offered its members the ability to download entire films by clicking onto a link of the composite file. In 2010 the MPA succeeded in a claim against Newzbin for copyright infringement. Newzbin subsequently went into liquidation, and just a few days later a new website appeared, hosted in the Seychelles. Faced with an apparent inability to enforce the injunction they had just obtained, the MPA sought an order that BT (being one of the largest ISPs in the UK) must take action to prevent its users from accessing the Newzbin site. Such an order was made possible by section 97A(1) of the Copyright Designs and Patents Act 1998 ("CDPA"), which states: “The High Court…shall have the power to grant an injunction against a service provider that…has actual knowledge of another person using that service to infringe copyright”. 97A(1) was added to the CDPA in 2003 as part of the implementation of the Information Society Directive, and the Newsbin2 case was the first time that an order of this ilk had been sought in the UK. BT resisted, even relying on Article 10 of the European Convention on Human Rights (the right to freedom of expression). Ultimately, however, MPA prevailed and the parties decamped to try to agree the wording of the order. Agreement proved to be impossible, landing the parties back before the judge in Newsbin, round 3.
The Newsbin3 Decision
In terms of the wording of the injunction, proportionality was key. The judge ruled that BT was obliged to use its blocking technology CleanFeed - which was already being used to prevent access to websites featuring child sexual abuse - to block Newzbin. BT were concerned that, while CleanFeed was incorporated into its retail customers' service as a matter of course, it was not included in some services provided to large business and public bodies. However the judge simply found that the proportionate answer was that the injunction should apply to all BT's services which already incorporated Cleanfeed, but need not be imposed on others. There was also some dispute about whether BT should be required to block “any other website whose sole or predominant purpose is to provide access to the Newsbin2 website”. Arnold J felt that the words “or predominant”, about which BT objected, were appropriate as they stuck the appropriate balance. Without them, it would be too easy for Newsbin to circumvent the Order.
BT also tried to argue that it should be entitled to a cross-undertaking to compensate it for loss caused to it by complying with the injunction, or an indemnity in relation to possible claims by third parties. The judge disagreed – there was no justification for a cross-undertaking and in relation to an indemnity he could see no possibility of a BT subscriber being able to bring an action against BT as a result of the injunction.
Further BT asked for permission to apply to set aside or vary the Order in the event that the MPA failed, within a reasonable time after the date of the Order, to apply for and obtain an equivalent injunction against other UK ISPs. However, the judge made it clear that there was no obligation on rights holders to seek injunctions against all relevant intermediaries. As with any other legal remedy, the MPA was entitled to decide against whom to seek the remedy.
The Court then turned to the question of costs, in relation to which there were two distinct areas of dispute:
- The Costs of Implementing the Order
Each side argued that the other should pay the costs of implementation. However the judge held that they should be borne by BT. This was because the MPA was enforcing its statutory right to relief and BT is a commercial enterprise which profits from the provision of the services which Newzbin used to infringe copyright. On that basis, the costs of implementing the Order could be regarded as a cost of BT carrying on its business. However, the judge did not rule out the possibility that in another case the applicant may be ordered to pay some or all of the costs of implementation.
- The Costs of the Application
Once again, each side argued that the other should pay the costs of both the Newsbin2 and Newsbin3 hearings. The judge held that even though the MPA was enforcing its legal right to an injunction, the unusual nature of the remedy meant that it was reasonable for BT to require the matter to be scrutinised by the Court. BT was entitled to an Order for its own protection, and it was reasonable for BT to require the studios to adduce sufficient evidence. Therefore the initial costs of the Newsbin2 application should be borne by the studios.
Thereafter, however, BT did not consent to the Order or even adopt a neutral stance. Instead, BT’s stance was one of all-out opposition on 8 grounds each of which failed. The subsequent costs of the Newsbin 2 application should therefore be borne by BT.
However, on the current application (Newsbin3), the judge found that this involved some points of detail which it would have been reasonable for BT to raise even if it had adopted a neutral stance on the principle of an Order being made, and each side had some measure of success. Therefore each side was to bear its own costs of Newsbin3.
What does this mean for the future?
The Newsbin3 decision can be seen as a test case of sorts in relation to the relief that will be awarded under s. 97A(1) of the CDPA. Rights owners and ISPs should be aware of the scope of the Order awarded and use this as a basis for assessing the reasonableness of future requests made under this section. Both sides should also be aware of the costs implications – ISPs may be entitled to obtain an Order for their own protection (to be paid for by the rights owner). But when the ISP crosses the line into opposition, it may be required to pay up if it is unsuccessful in the arguments it raises.
Newsbin4???
After the Newsbin2 decision, the operators of the errant website apparently made available software designed to allow users to circumvent any block imposed by BT pursuant to the Order. The story may continue…
Lucy Nunn, Senior Associate, IP Protection and IP Enforcement and Litgation at Field Fisher Waterhouse LLP.