UK: It's Not Just Cricket!: Where Are The Boundaries Of The Fair Dealing Defence?

Last Updated: 22 July 2016
Article by Jonathan Cornthwaite

Cricket and copyright rarely coincide, buy they did in the High Court earlier this Spring, when Mr Justice Arnold handed down a typically mammoth and meticulous judgement in England and Wales Cricket Board v Tixdaq. Even if one's interest in cricket is sub-zero (like the author's), the decision is of major interest for the new light that it casts on the fair dealing defence, and the way that it updates the interpretation of that defence into 21st century digital Britain.

The background

Tixdaq Limited and its confederate Fanatix Limited, both digital sports media companies, dreamed up a business model whose websites, apps and social media feeds exploited screen-capture and video-sharing technologies in order to enable cricket fans to upload and share short clips of broadcasts of cricket matches, and add their own commentaries thereto, thus turning them into "instant cricket pundits". The copyright in the relevant broadcasts was owned by the claimants, namely the England and Wales Cricket Board and its broadcaster, Sky UK, whose consent the defendants had failed to obtain (a rather important omission); but on the basis of legal advice that they had sought, the defendants implemented the business model in the (mistaken) belief that they benefitted from defences to liability.

The decision

The claimants duly sued in the English High Court for copyright infringement, and it fell to Arnold J to decide whether they had a case for infringement and, if so, whether either of the defences advanced by the defendants actually stood up in court. We shall deal in turn below with each of these issues:-

Did the claimants have a case?

The claimants did not have to bother with proving "originality" for copyright purposes, since the Copyright, Designs and Patents Act 1988 (the Act) does not require "signal rights" (which included the works in suit, namely broadcasts and films) to be original in order for copyright to subsist in them.

However, the claimants did have to establish "substantiality", in view of the well-known rule in the Act that "an act restricted by the copyright in a work" constitutes infringement only if it is done either to the work in its entirety, or to any substantial part of it .This prima facie represented a major problem for the claimants, given that the court considered each relevant work to be a broadcast of two hours in duration, and each extract from it for which the defendants were responsible was no more than eight seconds in duration (which, according to the author's arithmetic, represents only 0.111% of each work).

Within the last decade there has been ground-breaking EU jurisprudence on "how much can you take?", i.e. how chunky an extract from a literary or artistic work needs to be for infringement to be engaged. The court considered that this jurisprudence was strictly speaking inapplicable, since it related to "authorial works", whereas the works in suit in this case were "signal rights" that related not to intellectual creativity but rather to "entrepreneurial investment". However, at the end of the day the court applied a test that was not dissimilar to the one used in the said jurisprudence, namely that account should be taken not only of the quantitative degree of reproduction, but also the qualitative degree, having regard to the extent to which that reproduction exploited the said investment. The application of this test yielded the conclusion that most of the clips showed highlights of the broadcast, and thus satisfied the criterion of substantiality despite their very short duration.

Did the defendants have a defence?

The principal defence advanced by the defendants relied on section 30(2) of the Act, which provides as follows:-

"Fair dealing with a work...for the purpose of reporting current events does not infringe any copyright in the work provided that...it is accompanied by a sufficient acknowledgment."

There was no dispute between the parties that the matches from whose broadcasts the defendants' extracts had been taken were "current events"; and as for the word "reporting", the learned judge acknowledged that it should be given a "liberal", "living" interpretation, which meant that it was not restricted to traditional media or "news reporting" – on the contrary, what he described as "citizen journalism", by the use of (for example) mobile phones or social media, could qualify as reporting current events. However, he concluded that the "purpose" of the defendants' exercise was not to "report" but rather to share the clips with other users and thus to facilitate debate amongst them about the events depicted. This was for "consumption" rather than for "reporting", and the court therefore ruled that the defendants' objective was purely commercial rather than genuinely informatory.

That conclusion automatically meant that the defence was unavailable to the defendants, but the court ploughed on regardless, observing that some of the clips failed to satisfy the requirement for a "sufficient acknowledgement". And, more generally, the court pointed to a third reason why the defence was inapplicable, namely that the defendants' use did not constitute "fair dealing". Their use was disproportionate, in that each user could upload an unlimited number of clips from each match; and, in any event, the said use conflicted with the normal exploitation of the works, in that it was commercially damaging to the claimants.

For three separate reasons, therefore, the fair dealing defence advanced by the defendants was of no avail; and the court then gave very short shrift indeed to the second defence advanced by the defendants, namely the "ISP defences" derived from the E-Commerce Directive . Of these, the best known is the so called "mere conduit defence" (Article 12) which can be engaged "where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient"; but that did not benefit the defendants, since their activities involved not merely the transmission of information but also storage. With reference to the latter, a subsequent Article of the Directive (Article 14) provided a defence that did relate to the storage of information, but the court took the provisional view that this defence would not benefit the defendants in respect of those of the user-posted clips that it had editorially reviewed.

The only consolation for the defendants was that they succeeded in resisting the claimants' accusation of flagrancy which, if upheld, would have doomed them to the obligation to pay additional damages. Their resistance was supported by the court on the grounds that, although the defendants were knowingly "pushing legal boundaries", they were nevertheless seeking to act lawfully.

Comments

Prima facie this case looks like an unqualified victory for copyright owners over internet infringers. But there is more to it than first meets the eye, for the judge's liberal, expensive interpretation of the "reporting current events" defence could mean that many "citizen journalists" will seek to avail themselves of it. And this could obviously be bad news not only for sports bodies and broadcasters, but also for other categories of copyright owners. Whatever side of the debate one favours, however, the fact that the fair dealing defence has been expertly analysed in a modern, digital context must be welcomed.

The case also adds fuel to the fire of the ongoing "how much can you take?" controversy. Jurisprudence already tells us that an 11-word extract from an article can be enough to trigger infringement and that a newspaper headline can qualify as an independent copyright work . Now, thanks to the instant case, we learn that even an 8-second extract from a 2-hour broadcast can meet the criterion of substantiality.

The case also reminds us that "fair dealing" is not just one defence, but rather a portfolio of defences of which "reporting current events" is just one: There are eight other flavours to choose from! But, whichever defence one selects, the case also underlines the importance of complying not just with the letter of the law but also with its spirit, for manoeuvring to comply with the detail of the defence is likely to be fruitless if the dealing is "unfair".

Finally, the case reminds us that taking legal advice in advance of launching new business models is rather a good idea. If the advice proves to be correct, well and good; and, even if it is incorrect, the fact that one took it may, in a worst case scenario, save one from having to pay additional damages!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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