The Football Assocation Premier League Ltd v Wells & Ors

I have before me an application for a judgment in default of acknowledgment of service by the Football Association Premier League Limited (“FAPL”) against Richard Alan Wells and Mandi Wells who are the owners of a pub called The Spiders Web located at 180 Carr Lane, Grimsby.

The evidence before me discloses that on 15th September 2014 and 2nd November 2014 two Premier League football games were screened at The Spiders Web to members of the public. The two defendants did not have the permission of FAPL, which is the holder of the copyright in the graphics associated with Premier League games, to transmit those matches to the general public. By the claim form that has been issued, FAPL seeks various orders, including a declaration that there has been an infringement of copyright, an injunction to restrain Mr and Mrs Wells from repeating the acts of infringement of FAPL’s copyright and various consequential orders.

I am satisfied on the evidence that the claim form was properly served, as was the application for judgment in default of acknowledgement of service; that no acknowledgement of service has been filed; and that FAPL is entitled to judgment in default.

One matter has occupied me during the course of the hearing, which is a request by FAPL for an additional paragraph in the order which is sought. That additional paragraph reads as follows:

“That the first and second defendants shall within 14 days of the date of service of this Order each deliver to the claimant’s solicitors a witness statement signed by or on behalf of the relevant defendant setting out full details of all dealings of which he/she is aware with any third party to procure any goods and/or services the use of which would breach the foregoing injunctions or any of them, including the identities of such parties. For the avoidance of doubt this includes, but is not limited to, the identity of the supplier to the first or second defendant of any set top box, the coded card web address and/or IPTV box used to screen the matches referred to at paragraph 25 of the particulars of claim.”

My concern in relation to that paragraph is twofold. First, it appears (by the use of the words “the use of which would breach the foregoing injunctions…”) to be forward- looking and relate to the provision of information concerning potential future breaches of the injunction which is to be granted in the preceding paragraph of the order. I am far from convinced that an order referable to potential future breaches of an injunction is appropriate, and it seems to me as a matter of clarity and simplicity that the order should simply require the defendants,

“… to provide details to the claimant of all dealings of which he or she is aware with any third party who procured the supply to them of any set top box, decoded card, IPTV box and/or other goods and/or services which were used to screen the matches referred to at paragraph 25 of the particulars of claim and the identities of such third parties.”

Secondly, and more fundamentally, although I was told that such an order was made by Norris J in a similar piece of litigation, I was concerned to understand the jurisdiction which entitled me to make such an order.

The first suggestion by Ms Chantrielle for FAPL was that I could make such an order by way of Norwich Pharmacal relief. That is relief which is conventionally granted, as a matter of last resort, against a non-wrongdoer who has become mixed up in wrongdoing requiring them to disclose to a claimant the identity of a person against whom the claimant believes that they may have a cause of action, so as to assist the claimant to decide whether to bring proceedings. This is not entirely on all fours with that type of case because, as I have indicated, the allegations in this case are that the defendants themselves were wrongdoers who had infringed FAPL’s copyright.

I have, however, been shown a number of authorities which indicate that this is an order which I do have jurisdiction to make. In particular I was shown a decision of His Honour Judge Hacon in Wilko Retail Limited v. Buyology Limited [2014] EWHC 2221 (IPEC) a decision in the Intellectual Property Enterprise Court. Although declining to grant relief on the facts, Judge Hacon nonetheless appeared to decide that he did have jurisdiction to grant relief of the type now sought against a wrongdoer under an extension of the Norwich Pharmacal jurisdiction, having regard to the provisions of Article 8 of the European Directive on the Enforcement of Intellectual Property Rights (Directive 2004/48/EC) (“the Directive”).

Article 8 provides in material part that:

“1.

Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:

(a)

was found in possession of the infringing goods on a commercial scale;

(b)

was found to be using the infringing services on a commercial scale;

(c)

was found to be providing on a commercial scale services used in infringing activities; or

(d)

was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.”

It seems that part of Article 8 is directly targeted at the type of relief that is sought in this case. Of course, Article 8 of the Directive does not have direct effect under English law and I am told that it has not been enacted in English law, in contrast to the position in Scotland where Article 8 has been implemented by the Intellectual Property Enforcement etc. Regulations 2006. The explanation for that difference was given by Arnold J in Cartier International v. British Sky Broadcasting Limited [2014] EWHC 3354 (Ch). Nonetheless, Arnold J made the point that the English courts have a duty to interpret section 37 of the Senior Courts Act 1981 so as to give effect to the Directive so far as possible. I think that this is probably the reason which underpinned His Honour Judge Hacon’s decision in Wilko Retail that he did in fact have the jurisdiction to make the type of order that is sought, and I am content on that basis to reach a similar conclusion.

Accordingly, I will make an order in the revised form that I have indicated, requiring Mr and Mrs Wells to provide within 14 days the information set out in the order identifying the persons who provided them with the goods or services which enabled them to screen the infringing Premier League football games in 2014.