Infringing torrent websites: another battle won

Practical Law UK Articles 7-525-3748 (Approx. 4 pages)

Infringing torrent websites: another battle won

by Jonathan Hurd, Osborne Clarke

Injunction request

In December 2012, ten of the UK's largest record companies issued proceedings under Part 8 of the Civil Procedure Rules against the six major retail ISPs in the UK. The claim was brought by the record companies in their own right and as representatives of the other members of the BPI (British Recorded Music Industry Ltd) and PPL (Phonographic Performance Ltd). The record companies sought an injunction ordering the ISPs to block internet users from accessing three Bittorrent indexing websites known as Kickass Torrents, H33T and Fenopy (the websites). Bittorrent is a peer-to-peer file-sharing protocol that is used to distribute large amounts of data.

The websites provided a similar service to that provided in Newzbin and Newzbin2; namely, a directory of browseable music listings from which internet users could download torrent files for music tracks (a torrent file stores metadata used for Bittorrent). The court heard that the websites contained extensive listings of tracks and were visited by millions of users each month.

The jurisdictional requirements for the grant of a website-blocking order are set out in section 97A of the Copyright, Designs and Patents Act 1988 (CDPA) (section 97A). In particular, section 97A(1) empowers the High Court to grant an injunction against a service provider where that service provider has actual knowledge of another person using their service to infringe copyright.

As in Newzbin, the terms of the order sought by the record companies had been agreed with the ISPs who did not oppose the grant of the order.

The decision

The court made it clear that, even though the ISPs did not oppose the making of the orders, the onus remained squarely on the record companies to satisfy the court that it was appropriate and proportionate to make such an order on the facts of the specific case.

The court made the following comments in reaching its decision:

The ISPs were clearly "service providers" for the purposes of section 97A(1).
Individuals who download torrent files to their personal computer infringe the record companies' copyright under section 17 of the CDPA by copying the sound recordings without consent.
Individuals who upload the music tracks to the websites infringe the record companies' copyright under section 20 of the CDPA by communicating the sound recordings to the public without consent.
The operators of the websites infringe the record companies' copyright by:
- communicating the sound recordings to the public without consent (section 20, CDPA);
- authorising the users' infringing acts of copying and communicating to the public; and
- acting in a common design to infringe the copyright in the record companies' copyright (applying, among others, Football Dataco Ltd and others v Stan James plc and others; and Football Dataco and others v Sportradar GmbH and another [2013] EWCA Civ 27; http://uk.practicallaw.com/3-524-3742).

The ISPs were being used by the users and operators of the websites to infringe the record companies' copyright. The court rejected the proposition that the sound recordings stored on the websites were "transient or incidental" for the purpose of the permitted use provisions of Article 5(1) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013) and section 28A of the CDPA.
The ISPs had "actual knowledge" for the purposes of section 97A through the record companies' weekly notifications to the ISPs and service of the evidence in support of the present proceedings.
The proportionality of a blocking order is bound to be a context-sensitive question which will be carefully considered in light of the specific facts of each case. In determining whether it is proportionate to grant a website-blocking order, the court will consider:
- the freedom of expression of the ISPs, the operators and users of the websites on the one hand, and the need to protect the rights of intellectual property owners on the other;
- the costs of complying with a blocking order. On the specific facts, the court held that blocking access to the websites would only require the ISPs to take technical measures that they already have available, and therefore the cost of compliance was modest;
- the ease of circumvention. The court affirmed the comments in Newzbin that a blocking order may be justified even if it only prevents access by a minority of users; and
- the form of the draft order. The orders in this case were considered appropriate as they were narrow and targeted, less easy to circumvent and contained safeguards in the event of any change of circumstances.

On the facts, Arnold J held that the draft order was proportionate and necessary to protect the intellectual property rights of the record companies and other copyright owners. In his view, those rights clearly outweighed the rights of the users of the websites (who can obtain the copyright works from lawful sources) and the operators of the websites (who are profiting from copyright infringement on an industrial scale).

Jonathan Hurd is a solicitor in the intellectual property group at Osborne Clarke.

Implications for ISPs and rights owners

In EMI Records Ltd & Ors v British Sky Broadcasting Ltd & Ors, the High Court emphasised that it would not simply rubber stamp a draft website blocking order agreed between rights owners and internet service providers (ISPs) ([2013] EWHC 379 (Ch)).

Therefore, the decision should not be seen as an automatic right for brand owners and ISPs to block access to a site where they know or suspect that it is being used to infringe copyright. ISPs must be made aware that if they block customers' access to a site without the approval of the court, they may face a claim from website operators who can establish that their website offering is legitimate.

Even so, this decision is undoubtedly favourable to rights owners who are threatened by copyright infringement on an industrial scale through the internet. In particular, the decision affirms the UK court's willingness to exercise its discretion to grant online blocking orders and apply Twentieth Century Fox Film Corporation and others v Newzbin Ltd to other websites where it is appropriate to do so ([2010] EWHC 608 (Ch); www.practicallaw.com/7-502-1169). Clearly, obtaining the backing of the ISPs should be the first step in taking action using this procedure.

Whether blocking orders can be effective in halting the unlawful copying and communication of copyright content remains to be seen and will be closely scrutinised, particularly in view of developments in cloud computing. Twentieth Century Fox Film Corporation and others v British Telecommunications plc appears to have been a success; it has been reported that the Newzbin site has closed as a result of struggling to cover costs, at least in part because of the blocking order ([2011] EWHC 1981 (Ch); www.practicallaw.com/0-507-8791).

However, other sites which have been subject to blocking orders remain in operation, such as The Pirate Bay, which has reportedly moved to new cloud-based servers to reduce costs and avoid shutdown.

Infringing torrent websites: another battle won | Practical Law