TuneIn to the sound of communication to the public (Part 2)
Part 2 of this post covers the second judgement that deals with the terms of the injunctive relief and costs.
1 Scope and effect of the main judgement and its impact on the relief
At trial, the case was managed using samples of sound recordings and radio stations, e.g. under 40 radio stations, discussed in four categories. In reality, TuneIn provides its users with access to about 70,000 to 100,000 internet radio stations. The defendants argued that the relief should be limited to the sample stations unless and until there was a finding about other stations, but the claimants submitted that the relief should be in general terms.Generally Kat Specifically Super Kat Image: nadja robot |
In terms of damages, it is a commonplace in intellectual property disputes that liability is decided by reference to particular instances of the activity alleged to infringe (i.e. samples) but that the scope of the damages inquiry is general. Although issues of liability not decided at the liability trial can be decided in the inquiry, should such issues arise, in the present case the judge saw no justification at all for limiting the inquiry to the sample stations.
2 The terms of the injunction
An injunction is an equitable remedy and therefore a matter of discretion. The Info Soc Directive (2001/29/EC) and IP Enforcement Directive (2004/48/EC) provide that Member States must provide sanctions and remedies that are effective, proportionate and dissuasive as well as fair and equitable. Further, as Arnold J set out in EMI Records v British Sky Broadcasting [2013] EWHC 379 (Ch) proportionality and fair balance with fundamental rights must also be taken into account.The claimants sought an injunction to restrain the defendant from infringing their copyright, but without defining their repertoire.
Birss aligned this case with those cases brought by collecting societies such as PPL and PRS against defendants such as retailers and public house owners who do not have a licence to play the works in public. In such circumstances, once infringement has been established based on samples, a general injunction to restrain infringement of the collecting societies' rights is granted but it is limited to a defined repertoire. Crucially, the collecting society also gives an undertaking to maintain an up to date searchable database of its repertoire online and to answer reasonable questions about particular sound recordings. Birss stated that this strikes a fair and proportionate balance between the rights of the copyright owners and the position of the infringer.
Tuning in Image: Ewen Roberts |
3 Costs
The applicable rule is CPR rule 44.2, that the unsuccessful party will be ordered to pay the costs of the successful party, but the court may make a different order, considering all the circumstances, including the conduct of the parties, whether a party has succeeded on part of its case, even if that party has not been wholly successful, and any admissible offers to settle.Birss stated that his conclusion was, broadly, that Warner and Sony succeeded on the large majority of issues. However, there was one important issue on which the claimants did not succeed, relating to the category 1 stations infringe already freely available and aimed at a UK audience (as the public was not new in this circumstance).
As such, the claimants argued for a modest deduction in costs of 5% based on various analyses of counting pages and paragraphs of various documents in the case. On the other hand, the defendant submitted that, taking into account that an average of approximately 67% of the listening hours in the UK via TuneIn were of category 1 stations, the claimants should be deprived of 75% of their costs.
Birss took the view the claimants should be deprived of more than 5%, but 75% would be grossly unfair and bear no relation to the reality of the way this case has gone, taking account of all these matters and including the importance of category 1. He decided that a fair, proportionate and reasonable deduction would be 25%.