Chapter 12 Answer guidance to end of chapter questions

1. Joanna is 12 and lives in London. One day she receives an email from her mobile phone company telling her that her details have been passed on to Urbane Music (a large music publisher) following the production of a court order. Joanna doesn’t understand this, so she ignores it. Three months later a letter arrives addressed to her mother, Lewina. The letter alleges that Lewina, who is the account holder for Joanna’s mobile phone account, illegally downloaded ten copyrighted music files from a file-sharing service. It goes on to say that the copyright holders will take action against Lewina and will seek damages for each song. The letter states that to avoid formal action the plaintiff record companies offer to settle for £2,500 (plus costs). Joanna admits downloaded the songs, but she didn’t know she was doing anything illegal. She found the files on a site that was free to access, but there were no warning signs that the bands didn’t authorize the site. She’s a huge fan of these bands—she owns all of their CDs and just wanted to hear the new songs.

Lewina doesn’t believe that she should be sued. She can’t afford to pay the settlement fee, and she can’t afford to hire a lawyer to fight the case in court. (The lawyer she spoke with asked for a £5,000 fee retainer just to get started.) The plaintiff record companies claim that this is theft from their hardworking artists and that making Lewina pay the settlement fee will deter others from illegally downloading copyright protected music from the internet.

Jay-T, whose music Joanna copied, says that he should be paid for his creative works; fans should buy his CDs or download from reputable sites. Making music is his job, and musicians need to be compensated; they’re losing money when fans illegally download their music. Coolplay, whose music Joanna also downloaded, has a different perspective and supports music file-sharing technology, even encouraging fans to download its latest album of MP3s for free or for whatever they want to pay. Coolplay believe file-sharing helps promote its music and encourages an even wider spectrum of music to be heard. Coolplay also allows its fans to remix its songs as long as the use is noncommercial.

Advise Lewina.

This is a quite straightforward question on infringement. To answer it I would expect the following to be addressed:

1. We have been asked to advise Lewina. It might be noted that the primary infringement was committed by Joanna and that as Lewina did not know she is unlikely to be found to be secondarily liable for Joanna’s primary infringement. The mere fact that Lewina is the account holder does not make her responsible for the actions of users of her account. In theory Lewina could inform Urbane Music that the infringer was Joanna (providing them with evidence) and then Urbane would have to choose whether to enforce against Joanna. In practice Lewina is unlikely to want to take that approach with her daughter.
2. Much of the rest of the question is a Red Herring. The actions of Jay-T and Coolplay in public do not affect the legal settlement and copyright infringement has occurred.
3. The question is about speculative invoicing. Students should identify this, explain the process of speculative invoicing and its origins.
4. There are three key cases to discuss: Media Cat Ltd v Adams where HH Judge Birss found “the claims far exceeded any damages likely to have accrued”, Golden Eye (International) Ltd v Telefónica UK Ltd where the Court of Appeal found that speculative invoicing was possible when “not jeopardise or undermine the proper administration of justice” but vitally Patten LJ said “If the arrangements are not therefore unlawful and are not simply a money-making exercise designed to take advantage of the vulnerability of the subscribers rather than a genuine attempt to protect the rights of the [] Claimants” and Mircom International & Ors. v Virgin Media Limited where Campbell QC found the relevant question was “whether the Applicants still have a genuine intention to try to obtain redress for the infringement rather than merely setting up a money-making scheme designed to embarrass and coerce as many people as possible (regardless of whether they were actual infringers) into making the payments demanded.”
5. Applying the case law I would advise Lewina that a claim of £2500 plus costs is not reflective of the harm suffered for the downloading of ten tracks and is likely to be found to be “simply a money-making exercise” or “a money-making scheme designed to embarrass and coerce as many people as possible”. On this basis I would advise her not to pay and to defend if the case ever goes to court (which is very unlikely).

2. In Cartier v BSkyB [2016] EWCA Civ 658, when presented with the two competing arguments for the establishment of blocking injunctions (EU law or domestic law) Kitchin LJ took the domestic route and therefore changed the direction of legal thinking. This is especially important post the Brexit vote, as it is now clear that this remedy does not derive from any European law but from the powers of the High Court. Further it explains the position of the court that the intermediary should bear the costs of implementation of such an order, a position which appears to conflict Art. 12(1) of Directive 2000/31/EC.

Discuss critically these aspects of the decision of Kitchin LJ in Cartier v BSkyB.

To answer this question I would expect the student to discuss in order:

1. The background to the Cartier case. This is particularly that this is an application for an injunction in regard to trade mark infringement rather than copyright infringement meaning s.97A of CDPA does not apply.
2. The question therefore was what specific authority did an English Court have to award such an injunction? Arnold J in the High Court had noted that there was no specific authority in English law for him to award a blocking injunction outside s. 97A. He also noted though that the UK government’s failure to implement the third sentence of Article 11 of the EU Enforcement Directive meant that he had to look closely at extant English law for an equivalent position. He noted this might be section 37(1) of the Supreme Court Act 1981.
3. Discussion should focus on Arnold J’s application of the Marleasing principle in the High Court. This is that that that the courts of European Union member states have a duty to interpret national legislation in light of unimplemented European Union directives. This suggests the right to block (outside s.97A) is founded in EU not domestic law.
4. In the Court of Appeal a different approach from Kitchin LJ. He finds that the court has the power to grant the injunction under equitable principles, not the Marleasing principle. This means these would survive Brexit.
5. A discussion of the Merits of the Kitchin approach is necessary. Is he right? Why or Why not? This is particularly live now following the support for the Kitchin LJ approach in the Supreme Court and the effect of Brexit. Students should note that this allowed Nintendo via Nintendo Co Ltd v Sky UK Ltd and Nintendo Co Ltd v British Telecommunications Plc to expand the Cartier principle into TPMs without the need to refer to an EU law root.

3. Are s.97A blocking injunctions the best way to deal with online copyright infringement?

To answer this question I would expect the student to discuss in order:

1. The root of the s.97A order in Art.14(2) of the WIPO Copyright Treaty of 1996 as implemented by Art.8(3) of the InfoSoc Directive and ultimately s.97A CDPA.
2. The interpretation of s.97A in Newzbin then Newzbin II and how the pre-existing cleanfeed technology allowed the English courts to distinguish Scarlet Extended SA v SABAM.
3. The development of fixed and dynamic s.97A orders in Dramatico Entertainment Ltd. & Ors. v British Sky Broadcasting Ltd and FA Premier League v BT & Ors.
4. A balancing analysis of the interests of copyright holders and the interests of end-users and internet intermediary service providers who cannot make use of their normal safe harbour provisions under Arts.12-15 ECD. A question of costs may be considered discussing Cartier (not a s.97A case).