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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.