While recent case law has focused upon copyright owners seeking
to hold ISP providers liable for the infringing acts of its
customers, copyright owners can seek relief not from the ISP
itself, but from its customers who are infringing their copyright.
While cases such as this have been successfully run in the US, such
applications have been rare in English and Australian courts. How
does the copyright owner find out who the customers are?
In a recent English case, Golden Eye (International) Limited v
Telefonica UK Limited  EWHC 723 (Ch), the High Court recently
made a Norwich Pharmacal order against the sixth largest ISP in the
UK, in favour of a number of owners of copyright in pornographic
A Norwich Pharmacal order requires the disclosure of documents
or information to a requesting party when it can be shown that the
documents in question would be useful to a party seeking relief in
cases of infringement of intellectual property rights.
Golden Eye (International) Ltd and 13 other claimants sought a
Norwich Pharmacal order against Telefonica UK Ltd trading as O2 to
obtain disclosure of the names and addresses of O2 customers who
were alleged to have infringed the claimants' copyrights
through peer-to-peer filesharing using the BitTorrent protocol.
O2 did not contest the claim. The court did however ask Consumer
Focus (a statutory body representing consumer interests) to make
representations on behalf of the persons who would be identified if
the order was granted (the "Intended Defendants"). It was
not in dispute that O2 was "mixed up" in the
In considering whether to make the order, Justice Arnold was
required, among other things, to consider the manner in which a
Norwich Pharmacal order might be applied to file sharing cases and
the appropriate proportionality test to be applied.
He concluded that to the extent that the copyrights had been
infringed, it was plainly necessary for the information sought to
be disclosed to Golden Eye to enable it to be able to protect its
rights by seeking redress for any infringements of its copyright.
The mere fact that the copyright works were pornographic films was
no reason to refuse the grant of relief. Rather, Golden Eye had a
good arguable case that many of the intended defendants had
infringed Golden Eye's copyrights and he was satisfied that
Golden Eye did intend to seek redress for those infringements.
Accordingly, disclosure of the details of the intended defendants
was necessary for them to do so.
Justice Arnold looked at the proportionality of the proposed
order, which required a balancing of the interests of the claimants
against the interests of the intended defendants. In the
circumstances, Golden Eye's interests in enforcing their
copyrights outweighed the intended defendants' interest in
protecting their privacy and data protection rights, and thus it
was proportionate to order disclosure in accordance with a Norwich
However, the order was made on the condition that the order and
the proposed letter of claim to be distributed to the intended
defendants were properly framed so as to safeguard their legitimate
interests, in particular the interests of those who might have been
erroneously identified as infringers. These rights included their
data and protection rights.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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