Twentieth Century Fox Film Corporation & Ors v Newzbin Ltd [2010] EWHC 608 (Ch)
The High Court has upheld a claim by Fox and other film makers for copyright infringement against the Defendant, Newzbin Ltd, arising from its operation of a website called Newzbin.
The Defendant was found liable to the Claimants for infringement of their copyrights on three basis: (i) by authorising the copying of the Claimants' films; (ii) procuring and engaging with its premium members in a common design to copy the Claimants' films; and (iii) communicating the Claimants' films to the public.
Background
The Defendant owns and operates the website Newzbin, which catalogues and indexes files that have been posted on a file sharing and discussion system called Usenet.
The claim alleges that Newzbin is focused on piracy: it locates and categorises unlawful copies of films; provides a facility for its users to search for specific unlawful copies; and allows users to download them.
The Defendant claimed that Newzbin is simply a search engine like Google, and that it was "content agnostic" in that Newzbin is designed to index the entire content of Usenet, and provides (where possible) hyperlinks so that any supply of unlawful material occurs solely between the hyperlink user and the relevant Usenet server operators – Newzbin plays no part in it.
Decision
1. What constitutes 'authorisation'?
It was alleged that the Defendant was "authorising acts of infringement by Newzbin's members".
Authorisation means the grant or purported grant of the right to do the act complained of. The Court referred to the case of CBS Songs Ltd v Amstrad (where the manufacture and sale of equipment which enabled sound recordings to be copied onto tape was held to have facilitated copyright infringement but not authorised it).
The Court then provided further guidance on establishing authorisation by outlining the issues to consider, focusing on the control the Defendant exercised through Newzbin. This included:
(i) the nature and relationship between the alleged authoriser and primary infringer;
(ii) the degree of control that the supplier retains
(iii) any preventative steps taken to stop the infringement
(iv) did the supply lead to inevitable copyright infringement
(v) does the equipment supplied constitute a means to infringe.
The Court found that the downloading facility Newzbin provided is bound to result in that work being copied as it provides a means for infringement; was created by the Defendant; and is entirely within the Defendant's control.
The Court also commented on the majority of the movies on the site being commercial and therefore likely to be subject to copyright. The Defendant had not taken any preventative steps i.e. by installing a filtering system and had made no efforts to remove editors who have posted infringing materials on the website.
2. Procurement and participation in a common design
A person who procures an infringement of copyright is liable joint and severally with the infringer. The Court again referred to the Amstrad case for guidance stating " Mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own".
The Court concluded the Defendant was well aware that infringing copies of films were being made available to its premium members via Newzbin, by drawing on the following facts:
(i) the site was designed and is intended to make infringing copies of films readily available to its premium members
(ii) it promotes infringement by guiding the premium members to infringing copies of their choice and providing them the means to download those infringing copies with the NZB facility
(iii) it encourages editors to make reports of films protected by copyright
(iv) the Defendant profited from the infringement.
The Court also commented on the numerous postings the Defendant had made on various forums. This was fatal to the defence as it became apparent through cross-examination that the Defendant had been giving advice to Newzbin members on how to download infringing copies of films. It was then inconceivable that the Defendant was not aware its members were downloading the films and discredited the Defendant's evidence.
3. Infringement by Communication to the public
The claim alleged that the Defendants made films available to the public by electronic transmission in such a way that members of the public could access them from a place and at a time individually chosen by them.
The Defendant however claimed that the service Newzbin provides is a passive one and merely acting as an intermediary in providing a link to sites from which Claimant's films may be downloaded
The Court again considered the control Newzbin maintained and held that "this service is not remotely passive" and in particular that it does not "simply provide a link to a film of interest which is made available by a third party". Newzbin enables its members to identify films of their choice by its indexing and categorising system and provides a facility for the members to download them.
The Court referred to the Defendant as intervening in a "highly material way" which meant members considered Newzbin to be the one making the films available to them.
In particular, the Court held that Defendant has provided its services in full knowledge of the consequences of its actions and therefore communicated the Claimants' films to the public.
4. The extent of the injunction
Both parties accepted the Defendant to be a relevant service provider under the requisite legislation. The issue in question was whether the Defendant had actual knowledge that its members were infringing the Claimants' copyrights and copyrights of other rights holders.
The injunction sought was "to restrain Defendants from including in its indices or databases entries identifying any material posted to or distributed through any Usenet group in infringement of copyright".
The Court accepted that an injunction was necessary in the circumstances but held that it was not appropriate to grant an injunction of the breadth sought by the Claimants.
The Court commented that the scope of the injunction granted should be limited in respect of the Claimants' rights and not to the rights of third parties. Those rights remained "wholly undefined" and so could not be included in the injunction.
The Court then granted an injunction to restrain the Defendant from infringing the Claimants' copyrights in relation to their repertoire of films.
Comment
This case follows the recent flurry of cases concerning the liability of internet service providers. It is worth noting that each of the factors considered by the Court hinged on the issue of control. How much control did Newzbin exercise over the materials and information on its website and did it attempt to rectify any infringements it became aware of. This case makes an interesting comparison to L'Oreal v Ebay where the High Court found that Ebay was not jointly liable with its users, despite the fact that it knew of the risk of infringement on certain parts of its site. To see our Law-Now on this case, click here . This is also relevant to the ECJ's comments on the availability of the hosting defence in the Google AdWords case. To see our Law-Now on that case, click here .
If Newzbin had simply played a "passive" role in indexing the content of Usenet and had not provided the downloading facility to its members, the outcome may have been different.
This case also acts as a warning to website owners on posting advice on their websites...particularly if it relates to advice on downloading films!
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 07/04/2010.
