The Football Association Premier League Ltd v British Sky Broadcasting Ltd & Ors

The Claimant (“FAPL”) is the governing body of the football competition known as the Barclays Premier League (“the Premier League”). As explained in more detail below, FAPL owns the copyright in recordings of television footage of all Premier League matches, and in artistic works which appear within that footage. The Defendants are the six main retail internet service providers (“ISPs”) in the United Kingdom. Between them they have a fixed line market share of some 94% of UK internet users. By this claim FAPL seeks an injunction against the Defendants pursuant to section 97A of the Copyright, Designs and Patents Act 1988 (“the 1988 Act”), which implements Article 8(3) of European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“the Information Society Directive”), requiring the Defendants to take measures to block or at least impede access by their customers to a website known as FirstRow Sports (“FirstRow”).

Although FAPL is formally the only applicant, the application is supported by the following other rightholders, a representative of each of which has made a witness statement in support of the application confirming that FirstRow is not licensed by that rightholder to exploit its content:

The Football Association Ltd;

The Scottish Premier League Ltd;

The Football League Ltd;

Union des Associations Européennes de Football (“UEFA”);

PGA European Tour;

The Professional Darts Corporation Ltd;

World Snooker Ltd; and

Rugby Football Union.

In Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch), [2012] Bus LR 1471 (“20C Fox v BT”) I held that the Court had jurisdiction, and that it was appropriate to exercise my discretion, to make a blocking order against the Second Defendant (“BT”) with respect to a website called Newzbin2. In Twentieth Century Fox Film Corp v British Telecommunications plc (No 2) [2011] EWHC 2714 (Ch), [2012] Bus LR 1525 (“20C Fox v BT (No 2)”) I determined the terms of that order. Subsequently Vos J and I made similar orders against the other Defendants.

In Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] EWHC 268 (Ch), [2012] 3 CMLR 14 (“Dramatico v Sky”) I held that both users and the operators of website called The Pirate Bay (“TPB”) infringed the copyrights of the claimants (and those they represented) in the UK. Following that judgment, five of the Defendants indicated to the claimants that they did not oppose the making of orders under section 97A of the 1988 Act in terms which had been agreed between the parties. I acceded to the claimants’ application that I should make those orders for the reasons I gave in Dramatico Entertainment Ltd v British Sky Broadcasting Ltd (No 2) [2012] EWHC 1152 (Ch), [2012] 3 CMLR 15 (“Dramatico v Sky (No 2)”). Subsequently I also made an order against the remaining Defendant in respect of TPB, again in terms agreed between the parties.

In EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch), [2013] ECDR 8 (“EMI v Sky”) I held that both users and the operators of three websites called KAT, H33T and Fenopy infringed the copyrights of the claimants and that it was appropriate to grant blocking orders against the Defendants in respect of those websites in terms agreed between the parties.

The present application differs from the applications considered in the judgments referred to above in a number of respects. First, the applicant and its supporters constitute a different class of rightholder. Secondly, unlike the websites the subject of the previous applications, FirstRow is not a peer-to-peer (“P2P”) file-sharing website. Rather, it is a website which facilitates access to streams of television broadcasts of sporting events. Thirdly, as a result, the issues on infringement are somewhat different.

As in the Dramatico v Sky and EMI v Sky cases, FAPL seeks orders in terms which have been agreed with the Defendants and the Defendants do not oppose the making of those orders. That does not absolve the Court of the responsibility of determining whether the orders sought are justified. I have considered the matter on paper.

FAPL is authorised by its member clubs to license broadcasters throughout the world to provide coverage of Premier League matches. A high proportion of the revenue generated by FAPL derives from the sale of such rights. The rights are offered to broadcasters by open competitive tender for a specified territory or groups of territories and term. The rights for the United Kingdom and the Republic of Ireland are sold separately from the rest of the world. The broadcast rights for the UK alone were last auctioned for some £3.018 billion, which is by a very considerable margin the largest amount paid for sporting broadcast rights in the UK.

The broadcasting of Premier League matches for viewing in the UK during the “Closed Period” is restricted by Article 48 of the Statutes of UEFA. This empowers each national football association to designate a period of two and half hours in each week during which the broadcasting of football matches in that territory is prohibited. The purpose of this is to encourage attendance at football matches, and in that way to support the sport of football. The Football Association has designated 2.45 pm to 5.15 pm on Saturdays as the Closed Period in England.

Each Premier League match is filmed by one of three broadcasters (referred to as the “Host Broadcasters”), using between 8 and 25 cameras with built-in microphones. The live pictures and ambient sound from the stadium are referred as the “Clean Live Feed”. The Clean Live Feed also includes action replays added by the Host Broadcaster’s production team. These consist of recordings of pictures of incidents of particular interest (“the Action Replay Films”). The Clean Live Feed is transmitted directly to some broadcasters who have been licensed by FAPL, notably those in the UK, Republic of Ireland, United States of America and India.

The Clean Live Feed is also transmitted to IMG Media Ltd, which incorporates certain onscreen graphics and logos into it to produce the “World Feed”. Prior to the 2012/2013 season, the World Feed was transmitted live to broadcasters who had been licensed by FAPL other than those who receive the Clean Live Feed. Since the beginning of the 2012/2013 season, the World Feed has been recorded (“the Recorded World Feed”) before it is transmitted to the broadcasters.

For the purposes of the present application, FAPL claims copyright in the following works:

the films comprising the Action Replay Films included in the Clean Live Feed (and hence the Recorded World Feed);

the films comprising the Recorded World Feed;

the artistic works comprising the Premier League and Barclays logos which are incorporated in the Recorded World Feed; and

the artistic works comprising two sets of on-screen graphics (referred to as the “AEL Onscreen Graphics” and the “IMG Onscreen Graphics”) which are incorporated in the Recorded World Feed.

I am satisfied by the evidence filed by FAPL that copyright subsists in these works and that FAPL owns those copyrights.

FirstRow is a website which has been operating for some time as an indexing and aggregation portal to streamed broadcasts of sporting events. The site is currently located at www.firstrow1.eu, although a number of other domain names have been used, some of which have been seized by the US Department of Homeland Security. A visitor to the FirstRow website is presented with lists of links, organised by sport and time of the day, to streams containing live coverage of a wide range of sporting events, including in particular Premier League matches and events organised by the other supporting rightholders. Upon clicking on one of those links, the user is taken to a new page which features a “frame” or window in which that live coverage then appears, accompanied by advertising. As an alternative, the user can download a free app from the website to their computer which will enable them to access links.

The streams that are indexed on FirstRow are provided by third party streamers using one of a number of User Generated Content (“UGC”) websites. There are around six or seven such UGC sites which are commonly used for this purpose, one of the most popular of which is called 04stream.com. There are a number of stages to the process. First, the third party streamer digitally captures a broadcast of a live sports event on his or her computer. The captured broadcast may be one that the streamer is watching on his television or computer legally (e.g. via a legitimate subscription) or it may be an illegal stream. Secondly, the streamer sends the captured images in real time to the server of a UGC site. Thirdly, the streamer uses the UGC site to create an “embed code” which enables the stream player to be embedded into a website like FirstRow. Fourthly, the streamer submits the embed code to FirstRow. If it is accepted, it will be listed as a link on FirstRow. It appears that FirstRow has moderators who vet and index these submissions. It is common for multiple links to be listed for each event. These may comprise multiple versions of the same broadcast and/or different broadcasts. Fifthly, the user clicks on the link, thereby enabling the user to watch the stream.

Three points should be noted about this process. First, whilst FirstRow gives the impression - by way of a “Submit your video” link - that it is open to the submission of streams by any member of the public, this does not in fact appear to be the case. FAPL’s evidence is that it is likely that it works with a number of existing, trusted streamers (and, perhaps, new streamers introduced by existing streamers). Secondly, FAPL’s evidence is that none of the streams links to which are provided by FirstRow comes directly from an official source (such as a broadcaster licensed by FAPL). Thirdly, FirstRow itself does not itself transmit any of the streams. Rather, the streams emanate from the UGC sites.

The scale of FirstRow’s activities is very large. There are a large number of links listed on the site at any one time. FirstRow was ranked by Alexa as the 268^th most popular website in the UK in January 2013 and the 239^th most popular in April 2013. To put that in perspective, FirstRow was on that basis more popular, in January 2013, than both www.lastminute.com and www.ft.com. In April 2013 alone, FirstRow received 9.98 million unique user hits worldwide.

The generation of traffic at these levels enables FirstRow to make considerable sums in advertising and affiliation revenues. Using his expertise acquired from over twelve years of researching and analysing digital piracy, and on the basis of a detailed analysis of the website and the adverts which appear there, FAPL’s expert witness Dr David Price estimates that FirstRow is likely to be generating between £5,360,680 and £9,505,564 in annual revenue. Many of the UGC streamers are also motivated by financial reward, since they are able to add their own adverts to the streams.

FirstRow does not have permission from FAPL to engage in this activity. Nor, as the witnesses make clear, does FirstRow have permission from the other supporting rightholders, all of whose content has also been streamed via FirstRow.

FirstRow is not merely used to watch coverage of sporting events in users’ homes. On the contrary, FAPL’s agents have discovered that FirstRow is being used by some public houses in the UK so as to show their customers broadcasts of Premier League matches, including during the Closed Period on a Saturday afternoon.

FAPL has been unable to establish who the operators of FirstRow are and where they can be contacted. FirstRow has been registered under many different domain names, using a mixture of what appear to be false name and address details and registrations via proxy registration firms. The current host of the site is Portlane in Sweden, which FAPL’s witness Tim Cooper, Chief Technology Officer of NetResult Solutions Ltd (“NetResult”), a company specialising in internet investigation, monitoring and enforcement, describes as “a well-known haven for pirate sites”.

NetResult has sent a number of cease and desist letters on behalf of FAPL to FirstRow, but these have not been responded to. Furthermore, although FirstRow states that it will accept takedown notices, the address given turns out to be fictitious.

I set this out in Dramatico v Sky at [30]-[38].

Section 97A of the 1988 Act empowers the High Court “to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright”. In order for this Court to have jurisdiction to make the orders sought by FAPL, four matters must be established. First, that the Defendants are service providers. Secondly, that users and/or the operators of FirstRow infringe FAPL’s copyrights. Thirdly, that users and/or the operators of FirstRow use the Defendants’ services to do that. Fourthly, that the Defendants have actual knowledge of this.

As I stated in Dramatico v Sky (No 2) at [5], I am in no doubt that the Defendants are service providers within the meaning of regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002, SI 2002/2013, and hence within the meaning of section 97A of the 1988 Act. None of the Defendants has suggested otherwise.

FAPL contends that the operators of FirstRow infringe their copyrights in two ways. First, by communicating the copyright works to the public within section 20 of the 1988 Act, alternatively by acting as joint tortfeasors with the operators of the UGC websites. Secondly, by authorising infringements by users. FAPL contends that some UK users of FirstRow, namely the publicans who use FirstRow to show Premier League matches in their public houses, infringe their copyrights by communicating the copyright works to the public.

In view of the Supreme Court’s decision and reference to the Court of Justice of the European Union in Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd [2013] UKSC 18, [2013] ECDR 10, FAPL does not advance any claim based on copying, whilst reserving its right to do so in later proceedings.

Section 20 of the 1988 Act provides:

Section 20 implements Article 3 of the Information Society Directive, which provides as follows:

I reviewed the law with regard to communication to the public under Article 3 of the Information Society Directive and section 20 of the 1988 Act in Dramatico v Sky at [45]-[70], where I considered the decisions of the CJEU in Case C-306/05 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I-11519, Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v Divani Akropolis Anonimi Xenodocheiaki kai Touristiki Etaireia [2010] ECR I-37, Case C-393/09 Bezpečnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury [2010] ECR I-13971, Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd v QC Leisure [2011] ECR I-0000, [2012] Bus LR 1321 and Joined Cases C-431/09 and C-432/09 Airfield NV v Belgische Vereniging van Auteurs, Compositien en Uitgevers CVBA (SABAM) [2011] ECR I-0000, [2012] ECDR 3. I reviewed the law again in EMI v Sky at [28]-[38], where I considered the decisions of the CJEU in Case C-135/10 Societá Consortile Fonografici v Del Corso [2012] ECR-0000, [2012] Bus LR 1870 and Case C-173/11 Football Dataco Ltd v Sportradar Gmbh [2012] ECR I-0000, [2013] FSR 4.

I concluded in EMI v Sky that whether there is a communication to the public depends on the answers to three questions:

Is there a communication of copyright works by way of electronic transmission?

Is there a communication to a new public, that is to say, to a public which was not taken into account by the authors of the protected works when they authorised their communication to the original public?

Does the act of communication to the public take place in the UK? If the communication originates from outside the UK, that depends on whether it is targeted at the public in the UK.

The CJEU has since given judgment in Case C-607/11 ITV Broadcasting Ltd v TVCatchup Ltd [2013] ECR-0000, [2013] ECDR 9. That case concerned a website which re-transmitted live television broadcasts, via the internet, to persons who already held a licence to watch such broadcasts on a television. As to whether there was a “communication” under Article 3, the Court of Justice held:

Thus the Court has confirmed that any retransmission of a terrestrial television broadcast via the internet will constitute a communication because it involves “…a specific technical means different from that of the original communication” and an “…intervention … which is different from that of the broadcasting organisation concerned”. This reasoning is equally applicable to re-transmission of satellite and cable television broadcasts via the internet.

The Court then went on to consider the issue of whether there was communication to the “public”:

Finally, the Court considered whether there was a “new public” in that particular case, because of the pre-existence of a television licence:

The Court thus held that, where a television broadcast is re-transmitted via the internet, there is no need to show that the “public” to which the re-transmission is communicated is any different from the public to which the original transmission was addressed. The fact that it is a separate communication to the public by a different technical means suffices.

Although some of the copyright works relied on by FAPL are “films” within the meaning of the 1988 Act and some are artistic works, it is not necessary to differentiate between them for the purposes of considering FAPL’s claims of infringement by communication to the public for the reasons explained in Dramatico v Sky at [61]-[65].

Is there a communication by FirstRow? FAPL contends that FirstRow communicates FAPL’s copyright works by electronic transmission. In my judgment it is clear from the CJEU’s reasoning in ITV v TVCatchup at [26] and [30] that there is a communication of the works. More specifically, the works are made available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b).

The more difficult question is whether FirstRow is responsible for the communication. FAPL accepts that, in technical terms, the streams emanate from the UGC sites and not from FirstRow itself. FAPL nevertheless contends that both the UGC sites and FirstRow communicate the works.

In support of this contention, FAPL relies upon the reasoning of Kitchin J (as he then was) in Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21 at [125]:

FAPL also relies on what I said in EMI v Sky at [46]:

In the present case the operators of FirstRow have intervened in a manner which, although technically different, is analogous to that of the websites under consideration in those cases. FirstRow aggregates together a large number of streams from a variety of streamers, indexes them for the convenience of the user and provides a simple link for the user to click on in order to access a specific stream. It is true that the technical effect of clicking on the link is to direct the stream from the UCG site to the user’s computer, but even so the stream is presented in a frame provided by FirstRow. In all the circumstances, I consider that FirstRow is responsible for the communication.

Even if I am wrong about that, I consider that FirstRow is jointly liable for the communication by the UGC sites: compare EMI v Sky at [71]-[74].

Is the communication to the public? FAPL contends that the communication is to the public, relying on the reasoning of the CJEU in ITV v TVCatchup at [35]-[36]. I agree that this reasoning is equally applicable to the present case. Furthermore, FAPL contends that it is not necessary for it to show that the communication is to a new public, relying on ITV v TVCatchup at [39]. I accept this. In any event, even if FAPL had to show that the communication was to a new public, I consider that it is clear that that requirement is satisfied, since the effect of FirstRow’s activities is to make the broadcasts available to persons who are not legitimately entitled to view them either because those persons have not subscribed to the broadcaster’s service or because the broadcaster has only been licensed by FAPL for a different territory.

Is the communication in the UK? FAPL accepts that it must show an intention on the part of the operators of FirstRow to target the public in the UK. FAPL relies upon the following matters as evidencing such an intention:

The website is an English language website.

The advertising on FirstRow includes adverts for companies located in the UK and products consumed in the UK.

FirstRow provides access to a large number of competitions which are extremely popular with UK audiences. In particular, the amount of Premier League content on the website is up to 11% whilst a Premier League match is being played.

As noted above, FirstRow is a very popular site in the UK.

Between 12 and 13.7% of the worldwide traffic to the site comes from the UK.

FirstRow is discussed on internet blogs and forums, where a significant proportion of the internet traffic to those blogs and forums comes from the UK.

I accept that these matters evidence an intention to target the public in the UK. Accordingly, there is communication to the public in the UK.

Conclusion. I am satisfied that FirstRow communicates FAPL’s copyright works to the public in the UK and thereby infringes FAPL’s copyrights in those works.

FAPL contends that publicans who use FirstRow to screen Premier League matches in their public houses are thereby communicating FAPL’s copyright works to the public. In support of this, FAPL relies upon the decision of the CJEU in FAPL v QC, where the Court held at [207] that:

Clearly, the same reasoning must apply where the technical means used is a computer rather than a television. Accordingly, I conclude that the publicans communicate FAPL’s copyright works to the public.

FAPL contends that the operators of FirstRow authorise the infringements by the users and thus also infringe in that way. I have to say that I have doubts as to whether it can be said that the operators of FirstRow authorise the screening of Premier League matches using FirstRow in public houses. It is not necessary for me to reach a conclusion on this point, however, given that I have already concluded that the operators of FirstRow infringe FAPL’s copyrights by communication to the public.

I held in 20CFox v BT at [99]-[113], Dramatico v Sky (No 2) at [6] and EMI v Sky at [76]-[88] that both users and the operators of the websites in issue used the Defendants’ services to infringe the claimants’ copyrights. In my judgment that reasoning is equally applicable to the present case.

On 7 June 2013 FAPL’s solicitors sent detailed letters before action to the Defendants which attached the evidence relied upon by FAPL in the present application. I am satisfied that, as a result, the Defendants do have actual knowledge that users and the operators of the Websites use the Defendants’ services to infringe copyright. Indeed, I note that none of the Defendants denies this.

FAPL contends that I should exercise my discretion to make the orders sought. Unlike in 20C Fox v BT, the Defendants do not advance any reasons as to why I should exercise my discretion to refuse to make the orders sought. Even so, as FAPL rightly accepts, the onus remains on FAPL to satisfy the Court that it is appropriate to make such orders, and in particular that the orders are proportionate.

I reviewed the correct approach to the assessment of proportionality in EMI v Sky at [91]-[106]. I shall adopt the same approach here.

FAPL contends that the orders are proportionate for the following reasons:

As between FAPL and the Defendants, the Defendants do not oppose the making of the orders and the terms of the orders have been agreed between FAPL and the Defendants. The costs to the Defendants of implementation are modest and proportionate.

The orders are necessary to protect the copyrights of FAPL and the supporting rightholders, which are being infringed on a large scale. Given the difficulty of identifying, let alone bringing proceedings against, the operators of FirstRow, no other effective remedy is open to FAPL in this jurisdiction.

The orders are also necessary, or at least desirable, in order to protect the sporting objectives which lie behind the Closed Period, and in that sense are in the public interest. This is a legitimate factor to take into account: see Rugby Football Union v Viagogo Ltd [2012] UKSC 55, [2012] 1 WLR 3333 at [45].

While FirstRow features international content some of which may not be protected by copyright or may be licensed, the vast bulk of the content which is likely to be of interest to UK users infringes the rights of FAPL and the supporting rightholders.

The orders are narrow and targeted ones, and they contain safeguards in the event of any change of circumstances. While they are unlikely to be completely efficacious, since some users will be able to circumvent the technical measures which the orders require the Defendants to adopt, it is likely that they will be reasonably effective.

So far as sub-paragraph (v) is concerned, two points should be noted. First, the orders require IP address blocking of the IP address for FirstRow’s domain name firstrow1.eu. FAPL’s evidence is that this will not result in over-blocking since that IP address is not shared. The orders also require IP address re-routing and URL blocking for URLs at any shared IP addresses.

Secondly, on 25 June 2013 Mann J granted orders under section 97A concerning a website known as EZTV. He required the orders to contain an additional liberty to apply in the following terms:

I agree that this is a beneficial provision to include in orders of this nature. In the present case, the parties have agreed to the inclusion of a similar provision.

Having considered the proportionality of the orders sought by the present applications as between FAPL (and the supporting rightholders) and the Defendants and as between FAPL and the operators and users of FirstRow, I am satisfied that the orders sought are proportionate for the reasons advanced by FAPL. The interests of FAPL and the supporting rightholders in enforcing their copyrights clearly outweigh the Article 11 EU Charter rights of the users of the Websites, who can obtain the copyright works from lawful sources. They even more clearly outweigh the Article 11 rights of the operators of the Websites, who are profiting from infringement on a large scale. They also outweigh the Defendants’ Article 11 rights to the extent that they are engaged.

I will make the orders requested by FAPL.