Football Association Premier League Ltd & Ors v QC Leisure & Ors

This judgment follows the resumption of the hearing of the trial of these actions. In my judgment of 24 June 2008 ([2008] EWHC 1411 (Ch)), I decided some issues but referred a series of questions to the Court of Justice. The Court replied by judgment of 4 October 2011 (Case C-403/08). In its judgment, the Court also replied to questions referred in parallel proceedings in the Queen’s Bench Division (Administrative Court) between Karen Murphy and Media Protection Services Ltd (Case C-429/08).

A series of issues now fall for determination:

I will address these issues in turn.

At the original hearing the claimants contended that publicans (and in particular the Madden defendants) have communicated FAPL’s copyright works to the public contrary to s.20 CDPA by transmitting the claimants’ broadcasts, via their television screens and speakers, to the customers present in their public houses.

The defendants argued that this case was completely misconceived. Although they accepted there is a communication to the public involved in a satellite broadcast, they said that act is deemed by the terms of Directive 93/83/EEC (the Satellites and Copyright Directive) to take place solely in the Member State of transmission. That Member State was Greece in the case of the NOVA broadcasts and Italy in the case of the ART broadcasts and hence no infringement of UK copyright law could occur by reason of the act of reception taking place here.

I addressed these rival submissions at [245]-[262] of my judgment. As I explained, s.20 purports to implement Article 3 of Directive 2001/29/EC (referred to by the Court of Justice as the Copyright Directive) which, in broad terms, and so far as relevant, requires Member States to provide authors with the exclusive right to authorise or prohibit communication to the public of their works by wire or wireless means. Then, after considering the provisions of the Copyright Directive and the decision of the Court of Justice in Case C-306/05 SGAE v Rafael Hoteles [2006] ECR I-11519, I expressed a provisional view preferring the submissions of the defendants:

“262.

I come then to consider how these principles should be applied in the context of the present case. Have the publicans communicated the copyright works to members of the public not present at the origin of those communications? They have plainly displayed them and played them to members of the public (subject to the discussion in the next section). The audience is far wider than the publicans and their families. But it is my provisional view they have not communicated them to the public within the meaning of Article 3. There has been no retransmission by the publicans whether by wire or otherwise. They have simply received the signal, decoded it and displayed it on a television. The only acts of communication to the public have been those of the FAPL, NOVA and ART. In short, there has been no act of communication to the public within the Directive separate from the satellite broadcast itself.”

Nevertheless, recognising the issue was not clear, I referred a question to the Court of Justice asking, in essence, whether the phrase “communication to the public” in Article 3(1) of the Copyright Directive must be interpreted as covering transmission of the broadcast works, via a television screen and speakers, to the customers present in a public house.

In answering that question, the Court of Justice observed that Article 3(1) does not define the concept of “communication to the public” and accordingly its meaning and scope has to be determined in the light of the objectives pursued by the Copyright Directive and the context in which the provision is set. In that regard, the Court noted first, that the principal objective of the Copyright Directive is to establish a high level of protection for authors and that “communication to the public” must therefore be interpreted broadly; second, given the requirements of unity of the European Union legal order and its coherence, concepts used in the various directives in the area of intellectual property should generally be interpreted as having the same meaning; and third, Article 3(1) must, so far as possible, be interpreted in a manner consistent with international law, in particular taking account of the Berne Convention and the WIPO Copyright Treaty.

The Court then explained the concept of communication in these terms:

“191.

As regards, first, the concept of communication, it is apparent from Article 8(3) of the Related Rights Directive and Articles 2(g) and 15 of the Performance and Phonograms Treaty that such a concept includes “making the sounds or representations of sounds fixed in a phonogram audible to the public” and that it encompasses broadcasting or “any communication to the public”.

192.

More specifically, as Article 11bis(1)(iii) of the Berne Convention expressly indicates, that concept encompasses communication by loudspeaker or any other instrument transmitting, by signs, sounds or images, covering—in accordance with the explanatory memorandum accompanying the proposal for a copyright directive (COM(97) 628 final)—a means of communication such as display of the works on a screen.

193.

That being so, and since the European Union legislature has not expressed a different intention as regards the interpretation of that concept in the Copyright Directive , in particular in Article 3 thereof (see paragraph [188] of the present judgment), the concept of communication must be construed broadly, as referring to any transmission of the protected works, irrespective of the technical means or process used.”

Applying these principles to the present case, the Court held that the proprietor of a public house does effect a communication when he intentionally transmits broadcast works, via a television screen and speakers, to the customers present in that establishment:

“195.

In Case C-403/08, the proprietor of a public house intentionally gives the customers present in that establishment access to a broadcast containing protected works via a television screen and speakers. Without his intervention the customers cannot enjoy the works broadcast, even though they are physically within the broadcast’s catchment area. Thus, the circumstances of such an act prove comparable to those in SGAE.

196.

Accordingly, it must be held that the proprietor of a public house effects a communication when he intentionally transmits broadcast works, via a television screen and speakers, to the customers present in that establishment.”

The Court then identified a second requirement, namely that it is also necessary for the work broadcast to be transmitted to a new public, that is to say, to a public which was not taken into account by the author of the protected work when he authorised its use by the communication to the original public (at [197]).

In the present case, the Court continued, when the authors authorise a broadcast of their works, they consider, in principle, only the owners of television sets who, either personally or within their own private or family circles, receive the signal and follow the broadcasts. Where a broadcast work is transmitted, in a place accessible to the public, for an additional public which is permitted by the owner of the television set to hear or see the work, an intentional intervention has occurred which must be regarded as an act by which the work in question is communicated to a new public (at [198]).

It followed that the publicans were transmitting the broadcast works to a new public:

“199.

That is so when the works broadcast are transmitted by the proprietor of a public house to the customers present in that establishment, because those customers constitute an additional public which was not considered by the authors when they authorised the broadcasting of their works.”

The Court then identified a third requirement founded on recital 23 in the preamble to the Copyright Directive, namely that the work must be transmitted to a public not present at the place where the communication originates. This requirement, the Court considered, is intended to exclude direct public representation and performance from the scope of the concept of communication to the public (at [200] to [202]).

That third requirement is also satisfied here, as the Court explained:

“203.

Such an element of direct physical contact is specifically absent in the case of transmission, in a place such as a public house, of a broadcast work via a television screen and speakers to the public which is present at the place of that transmission, but which is not present at the place where the communication originates within the meaning of recital 23 in the preamble to the Copyright Directive, that is to say, at the place of the representation or performance which is broadcast (see, to this effect SGAE paragraph[40]).”

Finally, the Court observed that “it is not irrelevant that a ‘communication’ within the meaning of Article 3(1) of the Copyright Directive is of a profit-making nature”. This consideration is also material in this case, as the Court elaborated:

“205.

In a situation such as that in the main proceedings, it is indisputable that the proprietor transmits the broadcast works in his public house in order to benefit therefrom and that that transmission is liable to attract customers to whom the works transmitted are of interest. Consequently, the transmission in question has an effect upon the number of people going to that establishment and, ultimately, on its financial results.

206.

It follows that the communication to the public in question is of a profit-making nature.”

The Court therefore answered the referred question in these terms:

“207.

In light of all the foregoing, the answer to the question referred is that “communication to the public” within the meaning of Article 3(1) of the Copyright Directive must be interpreted as covering transmission of the broadcast works, via a television screen and speakers, to the customers present in a public house.”

Mr Mellor QC, who appeared on behalf of the claimants at the resumed hearing, submitted that it is plain that s.20 of the CDPA was amended by the Copyright and Related Rights Regulations 2003 (SI 2003/2498) (“the 2003 Regulations”) in order to give effect to the Copyright Directive and nowhere is there the faintest indication that the legislature ever had any intention to do anything except fulfil its duty to implement the Copyright Directive correctly. He said it has done so and that it follows that the defendants have infringed FAPL’s copyrights by communicating its works to the public.

Mr Howe QC, who appeared on behalf of the defendants at the resumed hearing, submitted I should reject this argument for the following reasons:

Ms Lee and Mr Malynicz have, since the resumed hearing, filed written submissions on these issues on behalf of the Secretary of Sate, for which I am very grateful. I have also had the benefit of further written submissions on behalf of the claimants and the defendants, the last of which are dated 6 January 2012.

Mr Howe’s first four propositions are uncontroversial. Article 288 TFEU provides, in terms unaltered from the original Treaty of Rome, that a directive shall be binding, as to the result to be achieved, upon each Member State to which it is addressed, which shall leave to the national authorities the choice of form and methods.

This court must therefore apply the national legislation implementing a directive and not the directive itself. Where a directive has not been transposed into national law within the prescribed time limits or has been improperly transposed, traders cannot derive from the directive any rights as against other traders: see, Case C-91/92 Faccini Dori [1994] ECR I-3325 at [20]-[25].

Nevertheless, the duty under Article 4(3) TEU (formerly Article 5 of the original Treaty of Rome) to ensure the fulfilment of the obligation imposed upon Member States arising from a directive to achieve the result envisaged by the directive is binding on all the authorities of a Member State, including, for matters within their jurisdiction, the courts. The Court of Justice has therefore declared that, in applying national law, whether the provisions in question were adopted before or after the directive, the national court called upon to interpret them is required to do so, so far as possible, in the light of the wording and the purpose of the directive in order to achieve the result pursued by it: Case C-106/89 Marleasing SA [1990] ECR 4135, at [8]; Cases C-397/01 to C-403/01 Pfeiffer v Deutsches Rotes Kreuz [2004] ECR I-8835, at [111]-[119].

In HMRC v IDT Card Services Ireland Ltd [2006] EWCA Civ 29, [2006] STC 1252 Arden LJ considered these cases and Ghaidan v Godin-Mendoza [2004] UKHL 30, [2004] 2 AC 557 in which the House of Lords held that the effect of s.3 of the Human Rights Act 1998 was that the court might be required to depart from the unambiguous meaning of a statute. Arden LJ explained:

“82.

Normally when construing domestic legislation, the English courts must find the meaning of the words which Parliament has used. In the context, however, of legislation which requires to be construed in a way which is compatible with European Union law or with the rights conferred by the European Convention on Human Rights, the English courts can adopt a construction which is not the natural one. The process, however, remains one of interpretation: the obligation imposed by the Court of Justice is only to interpret national law in conformity with a directive "so far as possible". That raises the question when a process ceases to be that of legitimate interpretation and trespasses into the field of lawmaking that is the task of Parliament and not the courts.”

Then, a little later, having referred to the decision in Ghaidan, Arden LJ continued:

“89.

The critical point made by the House of Lords in the Ghaidan case can be found in the passage from the speech of Lord Nicholls which I have set out above. Lord Nicholls accepts that the effect of interpretation in accordance with section 3 of the 1998 Act may be to change the meaning of the legislation but, as he explains, the meaning adopted by the court must not conflict with a fundamental feature of the legislation. He adopts the words of Lord Rodger that the interpretation chosen by the court must "go with the grain of the legislation". Lord Nicholls, Lord Steyn and Lord Rodger all accepted that there would be occasions when the courts could not adopt an interpretation that would make the legislation compatible with Convention rights because that would involve making policy choices which the court was not equipped to make (see [33] to [35] per Lord Nicholls, [49] per Lord Steyn and [115] per Lord Rodger). It is also clear from the Ghaidan case that the interpretation of legislation under section 3 or the Marleasing principle may involve a substantial departure from the language used though it will not involve a departure from the fundamental or cardinal features of the legislation. It is possible to read the legislation up (expansively) or down (restrictively) or to read words into the legislation. The question of whether section 3 can be applied does not depend on whether it is possible to solve the problem by a simple linguistic device.”

In Vodafone 2 v Revenue and Customs Commissioners [2009] EWCA Civ 446, [2010] Ch 77, Sir Andrew Morritt C, with whom Longmore and Goldring LJJ agreed, summarised the relevant principles, in terms which were agreed between the parties:

“37.

We were referred in the parties' respective written arguments and orally to a number of reported cases on the principles to be observed in looking for a conforming interpretation in either the European Community or Human Rights contexts. In chronological order they are Pickstone v Freemans [1989] AC 66; Marleasing SA v La Comercial Internacional de Alimentacion SA [1990] ECR I-4135 ; Litster v Forth Dry Dock [1990] AC 546 ; ICI v Colmer [1999] 1 WLR 2035 ; Ghaidan v Godin-Mendoza [2004] 2 AC 557 ; HMRC v IDT Card Services Ireland Ltd [2006] STC 1252 ; HMRC v EB Central Services Ltd [2008] EWCA Civ 486 and Fleming/Conde Nast v HMRC [2008] 1 WLR 195. The principles which those cases established or illustrated were helpfully summarised by counsel for HMRC in terms from which counsel for V2 did not dissent. Such principles are that:

“In summary, the obligation on the English courts to construe domestic legislation consistently with Community law obligations is both broad and far-reaching. In particular:

(a)

It is not constrained by conventional rules of construction (Per Lord Oliver in Pickstone at 126B);

(b)

It does not require ambiguity in the legislative language (Per Lord Oliver in Pickstone at 126B; Lord Nicholls in Ghaidan at 32);

(c)

It is not an exercise in semantics or linguistics (See Ghaidan per Lord Nicholls at 31 and 35; Lord Steyn at 48-49; Lord Rodger at 110-115);

(d)

It permits departure from the strict and literal application of the words which the legislature has elected to use (Per Lord Oliver in Litster at 577A; Lord Nicholls in Ghaidan at 31);

(e)

It permits the implication of words necessary to comply with Community law obligations (Per Lord Templeman in Pickstone at 120H-121A; Lord Oliver in Litster at 577A); and

(f)

The precise form of the words to be implied does not matter (Per Lord Keith in Pickstone at 112D; Lord Rodger in Ghaidan at para 122; Arden LJ in IDT CardServices at 114).”

38.

Counsel for HMRC went on to point out, again without dissent from counsel for V2, that:

“The only constraints on the broad and far-reaching nature of the interpretative obligation are that:

(a)

The meaning should “go with the grain of the legislation” and be “compatible with the underlying thrust of the legislation being construed.” (Per Lord Nicholls in Ghaidan at 33; Dyson LJ in EB Central Services at 81) An interpretation should not be adopted which is inconsistent with a fundamental or cardinal feature of the legislation since this would cross the boundary between interpretation and amendment; (See Ghaidan per Lord Nicholls at 33; Lord Rodger at 110-113; Arden LJ in IDT CardServices at 82 and 113) and

(b)

The exercise of the interpretative obligation cannot require the courts to make decisions for which they are not equipped or give rise to important practical repercussions which the court is not equipped to evaluate. (See Ghaidan per Lord Nicholls at 33; Lord Rodger at 115; Arden L in IDT Card Services at 113.)”

Later, at [55]-[59], Sir Andrew Morritt C rejected objections of retrospectivity and lack of legal certainty to a conforming interpretation:

“55.

The third objection summarised in paragraph 41 above is to the effect that the suggested conforming interpretation would be retrospective in operation, would involve legal or economic policy decisions and would fail to satisfy the test of legal certainty. Counsel for V2 points out that a conforming interpretation necessarily applies retrospectively and in the tax field has to be applied by Inspectors of Taxes and taxpayers up and down the country. As such it must be sufficiently certain both from a practical and legal point of view. Counsel for V2 contends that the conforming interpretation advanced by counsel for HMRC is not only insufficiently certain but has involved a decision on legal, economic and policy grounds which should be left to Parliament.

56.

There are a number of points wrapped up in that submission. I will take them in turn. First, it is inevitable that a conforming interpretation will be retrospective in its operation. Unless and until it is averred that the legislation is inconsistent with some enforceable Community right there is no occasion to consider a conforming interpretation. The fact that the effect of such an interpretation is felt retrospectively is no more an objection in the field of conforming interpretation than it is in the case of domestic statutory construction.

57.

Second, it is not a requirement of a conforming interpretation that it should be capable of precise formulation. That is precisely the point summarised in sub-paragraph (f) in paragraph 37 above. The dicta there referred to were made in such widely diverse situations as equal pay, right to succession of a protected tenancy and the imposition of a liability to VAT. It is inevitable that the conforming interpretation will lack the crispness to be expected of properly considered legislation; but, that cannot be a sufficient objection.

58.

Third, the conforming interpretation advanced by counsel for HMRC reflects and excepts from the operation of the CFC Legislation precisely that element of it which the ECJ held to constitute the hindrance to freedom of establishment. That is, by definition, sufficiently certain for a conforming interpretation whether or not the exclusion from the exception of wholly artificial transactions is included. There can be no objection to such an exclusion for the like reason. It follows precisely the formulation of the justification for the hindrance which the ECJ found to be acceptable.

59.

It is the case that there are likely to be other ways of achieving conformity, for example s.751A inserted into the CFC Legislation by the Finance Act 2007, and the choice of one rather than another may well involve policy decisions. But if that consideration alone could render a conforming interpretation illegitimate it would considerably restrict the occasions in which a conforming interpretation could be adopted and lead to an increase in disapplications. The choice of a conforming interpretation which faithfully follows a conclusion of the ECJ, as in this case, does not in my view trespass on the forbidden ground of legislation.”

I turn then to consider the application of these principles in the context of this case and Mr Howe’s fifth and sixth propositions. At the outset it is helpful to have the relevant provisions in mind.

I begin with s.19 CDPA which reads:

“19 Infringement by performance, showing or playing of work in public

(1)

The performance of the work in public is an act restricted by the copyright in a literary, dramatic or musical work.

(2)

In this Part "performance", in relation to a work –

(a)

includes delivery in the case of lectures, addresses, speeches and sermons, and

(b)

in general, includes any mode of visual or acoustic presentation, including presentation by means of a sound recording, film or broadcast of the work.

(3)

The playing or showing of the work in public is an act restricted by the copyright in a sound recording, film or broadcast.

(4)

Where copyright in a work is infringed by its being performed, played or shown in public by means of apparatus for receiving visual images or sounds conveyed by electronic means, the person by whom the visual images or sounds are sent, and in the case of a performance the performers, shall not be regarded as responsible for the infringement.”

This section therefore provides a “public performance” right for literary, dramatic and musical works; and a “playing or showing in public” right for sound recordings, films and broadcasts. A similar right was conferred by the Copyright Act 1956 and it was accompanied by a defence similar to that conferred by s.72 CDPA relating to the free showing or playing of a broadcast.

In due course the principle of protection for broadcasters against the showing of their broadcasts to audiences which have been charged for admission was incorporated into Article 13(1)(d) of the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations of 26 October 1961 and thence, via Directive 92/100/EEC, into Directive 2006/115/EC (“the Related Rights Directive”).

Recital (16) of the Related Rights Directive says:

“Member States should be able to provide for more far-reaching protection for owners of rights related to copyright than that required by the provisions laid down in this Directive in respect of broadcasting and communication to the public”

Article 8 reads, so far as relevant:

“Article 8

Broadcasting and communication to the public

…

3.

Member States shall provide for broadcasting organisations the exclusive right to authorise or prohibit the rebroadcasting of their broadcasts by wireless means, as well as the communication to the public of their broadcasts if such communication is made in places accessible to the public against payment of an entrance fee.”

I should also refer to Article 12:

“Article 12

Relation between copyright and related rights

Protection of copyright-related rights under this Directive shall leave intact and shall in no way affect the protection of copyright”

This brings me to s.72 CDPA which, as I have said, stems from national law but also, with s.19, gives effect to Article 8(3) of the Related Rights Directive. As amended by regulation 21(1) of the 2003 Regulations, it reads, so far as relevant:

“72 Free public showing or playing of broadcast

(1)

The showing or playing in public of a broadcast to an audience who have not paid for admission to the place where the broadcast is to be seen or heard does not infringe any copyright in -

(a)

the broadcast;

(b)

any sound recording (except so far as it is an excepted sound recording) included in it; or

(c)

any film included in it.”

In my judgment of 24 June 2008, I held (at [269]-[279]) that this defence does not apply to underlying literary, dramatic or musical works. However I think there can be little doubt it does apply to films included in a broadcast. Indeed such is confirmed by a consideration of the “Intellectual Property and Innovation” White Paper (Cmnd. 9712, 1986) which preceded the CDPA. At paragraph 10.15 it addressed public performance exceptions and stated that the Government proposed to extend the exception from the BBC and IBA (who, until that time, had enjoyed a duopoly) to cover all broadcasters:

“10.15

The public performance exceptions under sections 40(1) and 40(2) of the 1956 Act allow sound recordings and cinematographic films included in BBC and IBA sound and television broadcasts to be seen or heard in public, for example in a pub or hospital, without the consent of the owners of the copyright in those recordings or films. It would be anomalous if makers of sound recordings and films acquired a right to prevent unlicensed public display of a television set showing an FSS programme containing their material, while under the above provisions (which the Government intends to retain) they have no right to prevent display of a television set showing a BBC or IBA broadcast of their material. Accordingly, the Government proposes to extend the above exemptions to cover transmissions by broadcasters other than the BBC or IBA.”

In the course of debates, Lord Jenkin of Rodin moved an amendment to the effect that the exception should not extend to any film or sound recording produced with the express intention that it should be sold, rented, played or shown in public (Hansard HL Debate 23.2.1988, Vol 493 Cols 1190 to 1192).

Lord Beaverbrook responded on behalf of the Government that, if the amendment were to be agreed to, anyone playing a radio or a television in a shop or a public house would require licences from Phonographic Performance Ltd and from any film copyright owners involved. He continued, addressing the compatibility of the exception with the Berne Convention (Hansard HL Debate 23.2.1988, Vol 493 Cols cols 1191-1192):

“The Berne Convention requires us to give composers a right in respect of the public performance of broadcasts of recordings containing their work but convention requirements do not oblige us to extend this to makers of sound recordings provided they receive “equitable remuneration” in respect of the broadcast itself. Nor, in our view, does the convention require a right to be given to film-makers in respect of public showings of broadcasts containing their works. That can be justified as a minor reservation recognised by the parties to the Berne Convention as a legitimate departure from its literal wording.

We have always taken the view, unwelcome though it may be to the record industry, that it is not reasonable to impose a requirement for multiple copyright licences on shops, pubs, restaurants, cafes and the like, where a radio or TV set is played or shown. The public exposure of films and sound recordings in that way is a relatively minor form of exploitation.

The owners of the rights concerned are not going unremunerated since they have a right to control whether or not their works are broadcast in the first place. The burden on the retail sector, both administrative and financial, of having to obtain additional copyright licences would be considerable, linked as it would be to something that was only secondary to their main activity.”

Mr Howe submitted, and I agree, that it is thus clear that s.72 was enacted with the intention that it should extend to films within the scope of the Berne Convention and that Parliament accepted the stated view of the Government that this exception was compatible with the UK’s international obligations.

I now come to the Copyright Directive which provides, so far as material:

“Article 3

Right of communication to the public of works and right of making available to the public other subject-matter

1.

Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.”

It is to be noted that Article 3(1) requires the “communication to the public” right to be given only to “works” which, in the context of the Copyright Directive, means only Berne Convention copyright works and so does not extend to other subject matter such as sound recordings or broadcasts.

Article 5 provides certain exceptions and limitations and reads, so far as relevant:

“Article 5

Exceptions and limitations

….

3.

Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases:

….

(o)

use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article.

….

5.

The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in special cases which do not conflict with a normal exploitation of the work or other subject matter and do not unreasonably prejudice the legitimate interests of the rightholder.”

Section 20 CDPA was substituted by regulation 6(1) of the 2003 Regulations, which contain the following explanatory note:

“These Regulations implement Directive 2001/29/EC of the European Parliament and of the Council of 22^nd May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (O.J. No L167, 22.6.2001, p.10) (“the Directive”) which provides for a general and flexible legal framework at Community level in order to foster the development of the information society in the European Community. In particular, the Directive harmonises the basic rights relevant to use of copyright material in the information society and e-commerce, namely the rights of reproduction (copying) and communication to the public (electronic transmission, including digital broadcasting and “on-demand” services.)”

This note says in terms that the legislature intended to implement the Copyright Directive. But Mr Howe submitted it goes further and makes clear that the legislature intended to limit the scope of s.20 to communication to the public by electronic transmission. This is a matter to which I return below.

Section 20, as amended, reads:

“20 Infringement by communication to the public

(1)

The communication to the public of the work is an act restricted by the copyright in -

(a)

a literary, dramatic, musical or artistic work,

(b)

a sound recording or film, or

(c)

a broadcast.

(2)

References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include –

(a)

the broadcasting of the work;

(b)

the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.”

The changes introduced into s.20 by the 2003 Regulations were discussed by Floyd J in ITV v TV Catchup Ltd [2011] EWHC 1874 (Pat). In short, the definition of “broadcast” was extended to include both wireless and wired transmissions. Further, and importantly, the restricted acts of broadcasting or including a work in a cable programme were replaced with the right to authorise or prohibit any communication of the work to the public.

I should also mention that in TV Catchup,Floyd J addressed the argument that the amendment to s.20 to introduce s.20(1)(c) went further than required by the Copyright Directive in creating a general communication to the public right for broadcast copyright owners and that, to this extent, it required primary legislation and was not within the powers given to the Secretary of State under s.2(2) of the European Communities Act 2002. There can be no doubt that s.20 did indeed go further than the Copyright Directive required but the judge rejected the argument that this required primary legislation for the reasons he gave at [49]-[79] of his judgment.

I can now return to the submissions which Mr Howe developed on behalf of the defendants. He pointed out that the Commission’s view was that the claimants’ suggested interpretation of Article 3(1) was clearly wrong. It considered Article 3(1) does not cover acts of communication to a public present at the place where the communication originates; and that acts of “public performance” of works, such as live concerts, recitations, communications by loudspeakers and the like, remain outside its scope.

Mr Howe also relied upon the fact that Advocate General Kokott expressed essentially the same view in her Opinion delivered on 3 February 2011. At [127]-[147] she reasoned that Article 3(1) of the Copyright Directive was intended to implement only Article 11bis(1)(i) and (ii) of the Berne Convention and Article 8 of the WIPO Copyright Treaty, the wording of which is largely identical to that of Article 3.

In light of these matters, Mr Howe contended that it is hardly surprising that the legislature did not understand the Copyright Directive to cover the showing of a broadcast via a television screen and the playing of the soundtrack to a broadcast over loudspeakers and, more importantly, that the 2003 Regulations were drafted in a way which is incompatible with such an interpretation. He submitted that the use of the phrase “communication to the public by electronic transmission” is unambiguous and cannot be extended or interpreted to include the defendants’ activities because they are not electronically transmitting anything. He also submitted, as regards artistic works, not only is it impossible to accommodate the act of showing such a work on screen within the “electronic transmission” criterion of s.20, but also a finding that s.20 covered the public showing of an artistic work would be inconsistent with the structure of the CDPA and would not go with its grain. It was plainly the intention of the legislature to exclude artistic works from the possibility of infringement by their public display, and such is apparent from the absence of artistic works from s.19.

Mr Howe supported his submissions by reference to s.72. He argued that this makes clear that the showing or playing in public of a broadcast occurs when the defendants or their customers show Premier League matches in their public houses and it provides that such an act does not infringe any copyright in any film included in it. This is a shield not just to infringement under s.19, but against infringement of any kind which is involved in the act of showing or playing the broadcast in public. He further submitted that not only would a limitation of s.72(1) to infringement under s.19 be contrary to the express words of the subsection, it would also reduce the subsection to a nonsense because s.72(1)(c) could never have any effect. It follows, he submitted, that if the interpretation given by the Court of Justice to Article 3(1) had been foreseen, it would not have been possible to retain s.72 in its present form as amended by the 2003 Regulations.

Finally, Mr Howe relied upon s.34(2) CDPA which provides that the playing or showing of a sound recording, film or broadcast before an audience of teachers and pupils at an educational establishment for the purposes of instruction is not a playing or showing of the work in public for the purposes of infringement of copyright. The wording of this defence is tied closely to that of s.19, yet, submitted Mr Howe, it would be rendered nugatory if s.20 were to be interpreted as covering the playing of broadcast programmes from a TV set.

Mr Mellor responded that there is no overlap between ss.19 and 72(1)(c) on the one hand, and s.20 on the other. Alternatively, upon application of the Marleasing doctrine, this court can (and indeed must) interpret s.72 as limited to analogue uses, a permitted exception under Article 5(3)(o) of the Copyright Directive.

Ms Lee, on behalf of the Secretary of State, took a different line. She submitted that the reference to films in s.72 is a reference not to authors’ cinematograph works covered by the Berne Convention but rather to the producer’s rights in the fixations of films, a non-Berne, related right. Accordingly, she continued, there is no conflict between s.72 and s.20.

Any resolution of these issues must, I think begin with Article 3(1) of the Copyright Directive. This, as I have said, is concerned with Berne works and, as the Court of Justice explained at [147]-[152] of its judgment, is therefore relevant to the Anthem and the artistic and film works contained in the claimants’ broadcasts.

Next, it must be acknowledged that the Court of Justice has given an unequivocal answer to the question I referred. As its reasoning makes clear, publicans are communicating these works to the public within the meaning of Article 3 of the Copyright Directive when they screen live Premier League matches broadcast on NOVA or ART channels in their public houses.

That brings me to s.20 CDPA and the question whether or not it is an effective transposition of Article 3(1) of the Directive into national law. In my judgment it is. In words which reflect the explanatory note to the 2003 Regulations, it defines communication to the public as communication to the public by “electronic transmission”. Further, when considered in light of the reasoning and answer provided by the Court of Justice, I believe this expression is entirely apt to encompass the activities of the publicans. They are “transmitting” FAPL’s relevant copyright works, including its artistic works, to a “new public”. Are they doing so by electronic means? In my view they are. They are using televisions and speakers which are electronic instruments. If and in so far as there may be any doubt about this, I see no difficulty in a conforming interpretation of s.20 and in meeting the obligation upon this court to interpret s.20, so far as possible, in light of the wording and purpose of the Copyright Directive and in order to achieve the result pursued by it.

In reaching this conclusion I have given careful consideration to Mr Howe’s argument founded upon s.34(2) CDPA. However, this subsection is effectively tied to s.19 because it provides that particular activities in relation to any of the defined works do not constitute a playing or showing of the work in public for the purposes of infringement of copyright. In so far as s.20 also confers rights in respect of some of the activities falling within s.19 (which I believe it does, as I shall explain) s.34(2) cannot provide a defence. But in my judgment that is not a valid objection to a conforming interpretation of s.20, a different provision intended to implement the Copyright Directive.

For like reasons I am not persuaded by Mr Howe’s submission based upon the absence of artistic works from s.19. True it is that the legislature did not intend to confer the rights specified in s.19 upon artistic works. However the legislature plainly did intend to confer upon such works the communication to the public right identified in Article 3(1) of the Directive.

Next I come to ss.19 and 72 CDPA. Here it is important to have in mind at the outset that these provisions have their origin in national law but also give effect to Article 8(3) of the Related Rights Directive in so far as they relate to rights in broadcasts. Broadcasts, it must be noted, are not Berne works but related rights and Article 8(3) lays down a right of communication of such works to the public if the communication is made in places accessible to the public against payment of an entrance fee. There is thus no inconsistency between the Related Rights Directive and the Copyright Directive.

Further, as the Court of Justice explained at [200]-[202], the Copyright Directive is not concerned with ‘direct representation or performance’, a concept referring to that of ‘public performance’ within the meaning of Article 11(1) of the Berne Convention and which encompasses the interpretation of a work before the public that is in direct physical contact with the actor or performer.

The problem, so far as these proceedings are concerned, comes from s.72(1)(c) which says that the free playing in public of a broadcast does not infringe any copyright in the broadcast or any film included in it. It follows, submitted Mr Howe, the publicans have a defence not just to the claim under s.19 but also to the claim under s.20.

It is convenient to begin by considering whether there is any overlap between s.19 and s.20. In my judgment there is indeed an overlap. Transmission by publicans of the claimants’ broadcasts to members of the public in their public houses does constitute a playing or showing in public of FAPL’s films included in those broadcasts. It follows that these activities, at least, fall within both s.19 and s.20.

Turning to s.72(1)(c), I held in my judgment of 24 June 2008 (at [263]-[267]) that, since members of the public had not paid for admission, the publicans had a complete answer to the allegation of infringement of FAPL’s copyrights under s.19.

Does s.72 therefore provide a complete defence to the allegation of infringement of the FAPL’s film copyrights under s.20 in addition to s.19, referring as it does to any copyright?

Ms Lee submitted that it does not because s.72, properly understood, does not relate to Berne works and, so far as films are concerned, only to the producer’s rights in the fixations of films. I would note at the outset that this argument was not deployed by FAPL at trial and so it is not addressed in my judgment of 24 June 2008.

I accept that, at the international level, different kinds of rights relating to films are recognised. Under Article 2 of the Berne Convention the expression “literary and artistic works” includes “cinematographic works to which are assimilated works expressed by a process analogous to photography”. Rights arise by virtue of authorship and the Berne Convention requires a minimum term of protection of the author’s life and 50 years thereafter.

Some countries also recognise distinct rights relating to “first fixations” of films. These rights are reflected in Articles 2(d) and 3(2)(c) of the Copyright Directive. Further, and perhaps most clearly, Directive 2006/116/EC of the European Parliament and of the Council, harmonising the term of copyright and related rights, provides, in Article 2, that the term of protection of cinematograph films shall expire 70 years after the death of the last of the following persons to survive, namely the principal director, the author of the screenplay, the author of the dialogue and the composer of the music. By contrast, Article 3(3) says that the rights of the producer of the first fixation of a film shall expire 50 years after the fixation is made.

The CDPA does not, however, provide for two sets of rights in two different works. Instead they are all combined into one. Hence, as amended, s.5B(1) CDPA defines a “film” as a recording on any medium from which a moving image may by any means be produced. Further, there is no requirement that a film be original. Instead, s.5B(4) says that copyright does not subsist in a film which is, or to the extent that it is, a copy taken from a previous film. A first fixation will therefore be covered. Moreover, under s.9(2)(ab), the author of a film is taken to be the producer and the principal director and, by s.10(1A), a film is to be treated as a work of joint authorship. This means that the director and the producer have an interest in a single copyright. As for term, s.13B(2) provides that copyright shall subsist for the extended period of 70 years from the death of the last to die of the principal director, the author of the screenplay, the author of the dialogue or the composer of the music.

I therefore accept Mr Howe’s submission that the consistent policy of the CDPA makes it impossible to construe a particular provision of the Act such as s.72 as being limited to some but not all “films” as defined. It follows that Ms Lee’s submission must be rejected.

I turn then to Mr Mellor’s submissions. As I have mentioned, he contended that there is no overlap between ss.19 and 72 on the one hand, and s.20 on the other. I have already found that there is an overlap between ss. 19 and 20. In these circumstances, I do not believe s.72(1)(c) can be construed as applying only to s.19. I say this for two reasons. First, and in contrast to s.34, it is not tied to s.19. Instead, it says in terms that it applies to any copyright in any film included in a broadcast. Second, Mr Mellor had no answer to Mr Howe’s point, that, if so limited, it would have no content at all because every act falling within it is prohibited by s.20.

Mr Mellor’s alternative submission was that, applying the Marleasing doctrine, s.72(1)(c) should be construed as limited to the analogue use permitted by Article 5(3)(o) of the Copyright Directive.

I recognise that Article 3 of the Copyright Directive does not permit a defence in the terms of s.72(1)(c) and, as I have said, I am satisfied that the legislature intended to implement this provision in s.20. I am also conscious that the obligation on this court to construe domestic legislation consistently with Community law obligations is both broad and far reaching. It may require the court to depart from the unambiguous meaning of a statute and to read it down by implying words into it. It may also require the court to adopt an interpretation which is not the natural one. Further, a conforming interpretation necessarily applies retrospectively.

Nevertheless, there are limits to the doctrine and I believe that the exercise upon which Mr Mellor invites me to embark would exceed them. I say that for the following reasons.

First, the words of s.72(1)(c) are clear and unambiguous. If there were any doubt about it, reference to the White Paper and Hansard would confirm that Parliament intended to allow films included in broadcasts to be seen and heard in public houses without the consent of the owners of the copyright in those films.

Second, the 2003 Regulations amended s.72 to remove “excepted sound recordings” from its scope. Mr Howe submitted, and I agree, that the failure of the 2003 Regulations to amend s.72(1)(c) must be regarded as a conclusive indication of a legislative intention to maintain the full breadth of protection against film copyright.

It follows that the interpretation for which Mr Mellor contends does not involve reading into the provision words which go further than those used by the draftsman. To the contrary, it involves re-casting the provision in a way which largely removes the protection it appears to provide. It changes the substance of the provision completely and does so in a way which goes against the grain of the legislation and contradicts the plain intention of the legislature.

In my judgment s.72(1)(c) means what it says. The showing or playing of a broadcast in a public house to members of the public who have not paid for admission does not infringe any copyright in any film included in the broadcast.

I addressed authorisation in my judgment of 24 June 2008 in these terms:

“379.

In my judgment decoder cards are quite different to the twin-tape recorders the subject of the Amstrad decision. Those recorders might or might not be used to perform the allegedly infringing activities and there was nothing inherent in the sale which suggested that Amstrad had the authority to allow those activities to be carried out. By contrast, a decoder card is the key which allows the viewer to watch encrypted programming. It has one purpose only, which is to permit him access to what he would otherwise be denied. In this sense it is an authorisation in physical form. Absent a statement or some other indication to the contrary, the supply of decoder cards to customers therefore constitutes authorisation to use the decoder cards for the purpose for which they were supplied. In the case of publicans, they were supplied to allow customers to watch the television programming in the pubs. I therefore conclude that QC and AV have authorised any infringing acts of the Madden defendants and other members of the public to whom they have supplied the NOVA and ART cards.”

Nevertheless, Mr Howe invited me to revisit the issue and, I assume, to correct my judgment by exercising the jurisdiction explained by the Court of Appeal in Stewart v Engel [2000] 1 WLR 2268 and Robinson v Bird [2003] EWCA Civ 1820, [2004] WTLR 257. Mr Howe submitted first, I should have regard to my own decision in Twentieth Century Fox v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21 in which, at [90], I drew a distinction between the authorisation of acts of infringement and the mere enablement of those acts. Second, the acts of infringement now attributable to any of the users of decoder cards supplied by QC or AV are greatly reduced and there was no specific authorisation of such acts. Third, the judgment focuses on authorisation implicit in the decoder cards and the assumption underpinning my judgment is that the cards do not have any legitimate use, which assumption is no longer correct. Finally, the provision of the cards merely enabled any act of infringement; nothing inherent in the supply of the cards constituted authorisation or approval of any infringing use.

In my judgment none of these matters justifies my revisiting my decision. I have found that the supply of the decoder cards to customers constituted an authorisation to use the decoder cards for the purpose for which they were supplied. In the case of publicans, they were supplied to allow customers to watch television programming in their public houses. It follows, as I held, that QC and AV have authorised any infringing acts of the Madden defendants and other publicans to whom they have supplied the NOVA and ART cards.

I addressed the specific activities of the Madden defendants at [210]-[214] of my judgment. I found that:

As for the Anthem, while I accepted that this was broadcast in connection with the studio matches, I concluded that the claimants had failed to make out their case that it was played out loud by any of the Madden defendants in any of the six ART matches pleaded against them.

Mr Mellor submitted that there is a plain error in my judgment in that I failed to take into account admissions made by the Madden defendants in their defences and that in the interests of justice I should take the exceptional course of correcting my judgment by exercising the Stewart v Engel jurisdiction. Mr Mellor continued that all of the Madden defendants have admitted screening ART non-studio matches and all of them have effectively admitted doing so with the sound turned on and have therefore played the Anthem out loud.

I am not persuaded that my judgment contains the error for which Mr Mellor contended. First, the allegation of infringement by the Madden defendants advanced in the re-amended Particulars of Claim was based upon the six matches, defined as Infringing Matches, referred to in my judgment at [212]. The Madden defendants responded to this allegation, admitting that they had screened live transmissions of Premier League matches using ART decoder cards but making it clear they were unable to say whether or not the particular matches relied upon by the claimants were screened. Nor did they admit that they had the sound turned up at any particular time.

Second, as I recorded at [211] of my judgment, liability of the Madden defendants was sought to be established on the basis of a series of visits by investigators revealing that particular ART matches were shown in their public houses on particular dates. Further, the parties were agreed that I must determine the liability of these defendants by reference to the particular matches they were alleged to have shown.

In all these circumstances I see no basis for expanding my findings of infringement against Mr Madden or Mr Owen on the basis that they showed non-studio matches. Further, I do not accept that Mr Mellor has established that it would be proper for me to revisit the findings of fact that I made in my judgment at [214] as to whether or not any of the Madden defendants played the Anthem out loud in any of the six ART matches pleaded against them.

Mr Mellor contended that, once the scope of copyright infringement has been determined, a declaration is appropriate. Mr Howe did not resist this but said that declaratory relief should be limited to the particular categories of work and activities in respect of which infringement has been established. Mr Mellor responded that the difficulty with this proposal is that it will result in a complex and unintelligible declaration and I should therefore adopt a simpler form which simply recites that the defendants and each of them have infringed FAPL’s copyrights in some or all of the various works upon which the claim is based.

The power to grant a declaration is to be found in CPR Part 40.20 which provides that the court may make binding declarations whether or not any other remedy is claimed. In Financial Services Authority v John Edward Rourke [2002] C.P. Rep 14 Neuberger J (as he then was) explained that so far as the CPR are concerned, the power to make declarations appears to be unfettered. Accordingly, the court can grant a declaration as to the parties’ rights, or as to the existence of facts, or as to a principle of law, where those rights, facts, or principles have been established to the court’s satisfaction. The court should not, however, grant a declaration merely because the rights, facts or principles have been established and one party asks for a declaration. The court has to consider whether, in all the circumstances, it is appropriate to make such an order and, in doing so, should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration.

A large number of claims and defences have been deployed by the parties in these actions and they have raised issues of wide interest and general importance. I therefore think it highly desirable that I should declare the scope of copyright infringement which I have found and, moreover, should do so with precision. I therefore accept Mr Howe’s submission on behalf of the defendants that a declaration should be limited to acts of infringement of specific works established against each defendant.

The claimants seek an injunction to restrain further infringement of their copyright works, namely various film works, artistic works and the Anthem. They say that an injunction is important to prevent further infringements from occurring. They also point to the recent decision of the Court of Justice in Case C-145/10 Painer v Standard Verlags GmbH, 1 December 2011 which suggests that there are no “inferior” classes of copyright work.

The defendants resist the grant of an injunction on the basis that the claimants advanced wide, all encompassing and complex claims but have succeeded only to a limited extent; the law has now been clarified in a way which allows the defendants to comply with it; the copyrights are being used by the claimants as ransom strips; and the defendants fear that the claimants will attempt to use any injunction granted by this court to convince the public that they have succeeded and can use their copyright to prevent the trade in and use of decoder cards from other Member States. They have also expressed a concern that many of the works relied upon have never properly been identified.

The court’s power to grant an injunction is founded on s.37(1) of the Senior Courts Act 1981 and may be exercised whenever it is just and convenient to do so. In deciding whether to exercise its discretion, the court will take into account all relevant circumstances and I do not believe there is anything in Article 11 of the Enforcement Directive (2004/48/EC) which fetters that discretion.

First, I understand that there is no dispute that AV and Mr Chamberlain are no longer in business and there is no fear that they may resume the activities complained of. I have already held that Mr Raval was not responsible for any acts complained of, and the case against Mr Greenslade was not pursued.

Second, when the issue of infringement by playing the Anthem was raised during the course of the trial, a formal undertaking was offered on behalf of all the Madden defendants still in business, and on behalf of QC. Specifically, the Madden defendants offered to undertake not to play the Anthem out loud and QC offered to undertake to take appropriate steps to tell its customers not to allow the Anthem to be played out loud. Subject to any dispute about the precise form of wording, I would be disposed to accept an undertaking to the court in lieu of an injunction.

Third, any injunction must be formulated with precision and identify the works in respect of which infringement has been found. In this regard I accept that, as a matter of general principle, the defendants who are continuing to trade must be entitled to carry on their businesses in a way which avoids infringement of FAPL’s copyrights if they are able to do so.

Mr Howe submitted this court ought to reflect the ruling of the Court of Justice on Article 81 EC (now Article 101 TFEU) by way of a formal declaration. The defendants (or at least those of them still in business) are concerned that contractual terms agreed in violation of this Article were alleged to have made their activities wrongful in a serious, indeed quasi-criminal, way giving rise to a liability for penalties as well as civil liabilities and that the claimants or others may seek to put pressure on their licensees not to supply cards in response to orders which they place. They do not seek to ask this court to adjudicate in advance on any such disputes, but are anxious that the findings of this court in the light of the judgment of the Court of Justice should be recorded formally.

Ms Helen Davies QC, who made submissions on this particular point on behalf of the claimants, invited me to bear three points in mind in considering whether or not to grant the relief sought. The first is that at no point in their pleadings in any of the three actions did the defendants ever seek a declaration that any clause of a contract between FAPL and its licensees or any of the sub-licensees was void or contrary to Article 81. Second, not all parties to the contracts in issue are involved in these proceedings. Third, none of the defendants is or was a party to any of the contracts in issue and the court should be very wary about granting any relief that goes beyond their legitimate concern.

These are powerful points but, once again, I have been persuaded by Mr Howe that the defendants do have a legitimate interest in securing, in the form of a formal declaration, a clear statement of the findings of this court in the light of the judgment of the Court of Justice. I recognise that such a declaration should not prejudice parties to the contracts in issue who have not been involved in these proceedings. With this in mind, I believe justice would be achieved by the grant of a declaration that the relevant obligations in the agreements in issue constituted a restriction on competition prohibited by Article 81 EC and were void under Article 81(2) EC to the extent that such obligations prohibited Netmed from supplying for use in the UK satellite decoder cards which were capable of permitting any person to view the relevant transmissions in an intelligible form. I also see merit in the inclusion of a further statement in the declaration that, for the avoidance of doubt, the declaration is without prejudice to any rights of FAPL in respect of copyright infringement.

I can deal with this very shortly. The claimants do not object in principle to an order setting out the causes of action which failed, so long as there is also an order setting out the causes of action which succeeded. This is accepted by the defendants. Plainly these should correspond to the declarations.

FAPL seeks an order for an inquiry as to damages or, at its election, an account of profits. The defendants resist such an order on the basis that only nominal or trivial damages have been suffered. Alternatively, they say any inquiry or account should be sent to the Patents County Court.

I am satisfied that it is appropriate to make an order for an inquiry or account but that in the light of the scale of the infringements it is appropriate that the cases should be transferred to the Patents County Court. At a relatively late stage the claimants have introduced into the draft order directions for disclosure of the extent of the defendants’ dealings in and use of decoder cards. I have reached the conclusion it is not appropriate to make such an order at this stage. This is not a matter in relation to which the defendants have had an opportunity properly to consider their position and it appears they may already have given substantial disclosure in the course of the main proceedings. The judge hearing this matter in the Patents County Court will be in a much better position to assess what, if any, further orders for disclosure are necessary and proportionate to enable any outstanding issues to be disposed of.