As Eleonora informed us in this Katpost here – the UK Courts have weighed in on communication to the public, in what the court called “a test case” about infringement of copyright in sound recordings accessed via an online platform that connects users to radio stations around the world.

The case brings to light some of this Kats favourite copyright issues around applying copyright infringement to new technologies online. The stakes were high - the claimants argued that finding for the defendant would fatally undermine copyright and the defendant said that a finding for the claimants would break the internet. The UK Court took the opportunity to take a view on the application of communication to the public, providing some distinctions which could create clarity or further complexity in this already controversial area of copyright.

Parties

The claimants - Warner Music and Song Music - own or hold the exclusive licences to copyright in sound recordings of music, together accounting for more than half the market for digital sales of recorded music in the UK and about 43% globally.

The defendant – TuneIn - is a US technology company, that operates an online platform which enables their 75 million monthly active users to access over 100,000 radio stations around the world. TuneIn Radio is available via a website and app, its free for registered and unregistered users, and includes a paid for advert-free version. TuneIn has partnership deals that mean it is pre-installed on a number of devices such as Bose, Sonos and Sony PlayStation [yes, Sony] as well as connected TV and connected cars. [Also, anyone reading the judgement, don’t be thrown by the start of para 5 where it says “the claimant (TuneIn)” - they are the defendants – it's not just my IPKat posts that host typos!] 

Radio Ga Ga

Radio go ogoo Image: Jean-Sebastien Ouellet

A traditional radio station broadcasts using radio waves - such as frequency modulation (FM) – and requires a licence from the copyright holders to do so, usually organised through Phonographic Performance Limited (PPL). Nowadays, we also have internet radio – either a ‘simulcaster’ which is a traditional radio station that also simultaneously transmits via the internet, or a ‘webcasts’ which simply transmits its signal over the internet and does not broadcast by radio waves. Internet radio stations also require a copyright licence for playing the music recordings.

To facilitate searching, browsing and playback of audio content, TuneIn collects and stores metadata about content being transmitted by radio stations (e.g. the artist, track and album names) from data provided by the stations. TuneIn does not, however, collect, transmit or store any third-party audio content; it connects the users to – and therefore relies upon – third party radio stations' streams.

The claimants' case is that TuneIn requires a licence from them, but the TuneIn strongly dispute this on the basis that they do not transmit or store any music, and merely provide its users with hyperlinks to works which have already been made freely available on the internet without any geographic or other restriction.

The UK courts assessment of communication to the public

Mr Justice Birss considered the meaning of Svensson, where the CJEU identified that the concept of communication to the public includes two cumulative criteria; 1) an "act of communication" and 2) the communication of that work to a "public". In addressing the first criteria the CJEU stated that the "act of communication" is to be construed broadly and making a hyperlink available, even if the user does not click on it, is itself an act of communication.

In addressing the second criteria, the CJEU stated that term "public" means an indeterminate and fairly large number of potential recipients. But, since the communication in question concerned the same works which had already been the subject of another communication, the CJEU found that one of two alternative further criteria has to be satisfied for the act to amount to a communication to the public, and so we get 2a) there was a new technical means employed or 2b) the communication was to a new public. Considering 2a, the CJEU found in Svensson that since both communications were via the internet, no new technical means was employed and therefore treated "the internet" as a single technical means. Considering 2b, the CJEU found that there was no new public since the public targeted by the initial communication was all internet users, as it was freely available online without any restrictive measures.

Applying this reasoning to the present case, Mr Justice Birss pointed out that the CJEU reason that availability is an all or nothing idea, when in fact, he stated “the world is not really like that”.

Arranged by author, title and cat. Image: Steve Rainwater

However, using the analogy of a book in a large library that is available in one sense but might never be read if it is not correctly indexed, Birss makes the point that correctly indexing such a book is a way of making it available to anyone who did not have the time or inclination to walk down every shelf looking at every book in turn. That is why – he said - it can make sense to regard linking as an act of making something available. [In my book, I argue that offline metaphorical justifications for applying copyright to online activity are inaccurate and can lead to inappropriate decisions. And so, I would respectfully disagree that the example of finding a book in a library “makes sense” for finding that linking online is copyright infringement by making available, because finding a book in a library is not the same as finding material online via a link. Finding a book in a library would require a person to physically walk around but they would already be within the four walls of a building providing books. Finding anything on the internet – that contains infinite information of all varieties - would arguably be impossible without search through indexing.]

Birss goes on to say that from the Svensson judgement it appears that “once a copyright owner has given permission for a work to be put on a website which is not subject to technical access restrictions, they must be taken to have targeted, and therefore taken into account, the entire world as the relevant ‘public’.” These was the facts of the Svensson case that differed in GS Media, where the first posting was without the copyright holder’s consent.

GS Media then introduced new factors of consideration - whether the links were provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website. Birss commented on this being “odd” as it introduced the concept of the state of mind of the accessory to an act of primary liability, which might previously have been thought to be a tort of strict liability. [One might presume to interpret the tone of this declaration (at para 66) as jolly good British eyebrow raise!]

Assessment of the present case

Conclusion

In a heartfelt conclusion, Birss tells us that this case was the last trial heard by Henry Carr J before his untimely death: “It has been my sad task to produce this judgment in a case which I know Carr J found stimulating.” Holding that:

• TuneIn's services infringes the claimants' copyright under s20 of the 1988 Act, insofar as it includes music radio stations which are not licensed in the UK or elsewhere (Category 2) and music radio stations which are licensed for a territory other than the UK (Category 3).
• TuneIn's services do not infringe the claimants' copyright in relation to music radio stations which are licensed in the UK (Category 1) [As the public is not new].
• Unsuprisingly, TuneIn's Pro app service which provides a recording function infringes the claimants' copyright under s20 of the CDPA 1988 (in Categories 1, 2, 3, and 4). Further, the users of the Pro app are infringing under s17 of the 1988 Act, although some but not all will have fallen within the defence in s70.
• TuneIn is liable for infringement by authorisation and as a joint tortfeasor and cannot rely on the safe harbour defences under Arts 12, 13 and 14 of the E-Commerce Directive.

As set out in Part 1 of this post here, Mr Justice Birss found that (most of) the services of TuneIn Radio amount to an act of communication to the public of the relevant works of Warner Music and Sony Music. TuneIn infringes the copyright of Warner Music and Sony Music under section 20 of the CDPA 1988 by providing a platform that links its users to radio stations that are not licensed in the UK or elsewhere, or are licensed outside of the UK. They was also found liable for copyright infringement for providing a recording function within the Pro version of their app, and liable for infringement by authorisation and as a joint tortfeasor.

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

Mr Justice Birss agreed with the claimants that the conclusion reached in the main judgment justified relief in general terms, not limited to the individual samples. This was because the findings did not turn on any details about individual sound recordings or distinctions between stations in the four categories.

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

The defendant attempted to limit the scope of the injunction by using a notice and takedown regime that would put the onus on the rights holder to notify the defendant of unlicensed content. However, Birss distinguished TuneIn from an internet service provider and agreed only that the claimants provide notice of their repertoire. When the defendants complained that taking the proper steps to ensure there was a relevant licence in place (for the category 3 stations; freely available and aimed at the UK) would make its business unprofitable, Birss frankly put it: “I seriously doubt that…but if it did then so be it. The right of freedom of business is not a right of freedom to conduct an infringing business.” [at 23]. Moreover, he points out that the rights the defendant have infringed are available to be licensed in the UK, which would easily solve all the practical problems at a stroke. “The problems for the defendant arise because it does not wish to take a licence even though its business involves committing acts of primary copyright infringement.” [at 25].

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%.
As mentioned in Part 1, both parties sought and were granted permission to appeal the decision of the case and so we will stay tuned for further developments!