ITV v TV Catchup

Post by Prof. Lorna Woods

The judgment in ITV Broadcasting Ltd and Ors v TV Catchup Ltd  [2011] EWHC 1874 (Pat) was handed down on 18 July 2011. 
TV Catchup Ltd (TVC) operates an internet based live streaming service of broadcast television programmes, including films, in which the claimants own the copyright. The service provided does not now (although it did in the past) allow users to view programs, other than at substantially the same time as the original broadcast. TVC is funded by advertising and thus is effectively in competition with the terrestrial broadcasters on whose content it relies to provide its service. The terrestrial broadcasters allege that the copyright in each of two categories of work (films and broadcasts) has been infringed by:
(a) communication of the works to the public; and,
(b) by making, or authorising the making of, transient copies of the works in TVC’s servers and on the screens of users.

There is no allegation of infringement by “broadcasting” as opposed to “communication to the public”. TVC argues in defence that:
(1) they challenge the amendment to the Copyright, Designs and Patents Act (CDPA 1988) which forms the basis of the terrestrial broadcasters’ claim regarding communication to the public of the broadcasts (s. 20(1)(c)) on the basis it is ultra vires (this was unsuccessful);
(2) the copies are not substantial parts of the works;
(3) that s 28A of the CDPA 1988 (temporary copies having no independent significance) applies;
(4) in relation to films, that their service is not a communication to the public of the film; and a ‘reception area’ defence based on s 73.
This case (once again) results in a number of questions being referred – including the classic question of what does ‘communication to the public’ mean?

The terrestrial broadcasters argued that whenever there is an intervention by a broadcasting organisation other than the original one, there is a communication to the public (see (SGAE) v Rafael Hoteles and Article 11bis(1)(ii) Berne Convention). TVC argued the mere provision of technical means to assist in reception is not communication to the public, referring the the opinions of Advocates-General in Rafael Hoteles and Egeda v Hoasa and, by analogy, to Principle AW26 of the Rome Convention Intergovernmental Committee. The question is, where does the boundary lie? Looking at ‘communication to the public’, it should be understood broadly. Against this background, the court determined that a key factor in any exclusions from ‘communication to the public’ lay in the fact that the purpose of the act was ‘purely supportive of the original broadcaster’s intention to have its signal received in its catchment area’. In Rafael Hoteles, the AG and the Court recognised the financial motive, even if it was not decisive. Here, the Court said that the question was whether the actions of TVC could be brought within the limitations on ‘communication to the public’ and determined that they could not. In so doing, it ‘respectfully differ[ed]’ from the approach of the Court of Appeal of Singapore (applying national legislation based on Article 8 of WIPO Copyright Treaty) a service by which members of the public could request RecordTV to record broadcast programmes on their behalf, on Record TV’s servers. 

The Court determined to make a reference to the ECJ on the question as TVC raised two further points: (1) the absence of control by TVC over the equipment on which the signal is received by the viewer was a ground on which Rafael Hoteles could be distinguished; and 
(2) the extent to which Hansard recording debates on the Bill which led to the CDPA 1988 should affect the interpretation.

It is common ground that copies are created transiently in the buffers in TVC’s servers and on the screen of users. TVC’s case is that these transient copies do not amount to the whole or a substantial part of any broadcast or film. The Court started with Infopaq, but then considered Kitchen J.’s assessment in QC Leisure, that a fragment consisting of up to four video frames lasting up to 160 milliseconds did not amount to such a reproduction – though the question has been referred to the ECJ and AG Kokott took the opposite view in Murphy. Here, however, we have to distinguish between the films and the broadcast. While, the court took the view that TVC did not authorise the reproduction of the whole or any part of the broadcast either in the buffers or on the screens of users and that what exists in the buffers or on the screen at any given time cannot be regarded as a part of the broadcast. It accepted that the issues raised here might go beyound the issues raised in Murphy and therefore made a reference on this point here. As regards films, given the decision in QC Leisure and in Newzbin, it seems unlikely the TVC could win an argument on whether TVC authorised the reproduction of the films and broadcasts on the screens of users.

Although the court thought there was no reproduction of the broadcast, it went on to consider s 28A. Parliament implemented art 5(1) through s 28A, and in doing so included a list of the rights to which the defence applies, from which broadcast copyright is ‘a notable absentee’. The Court accepted the possibility, if necessary, of construing the provision to include broadcast copyright in the light of Marleasing. As regards the cumulative test to be satisfied, the dispute centred on ‘independent economic significance’. The court decided to defer judgment until the outcome of Murphy the question of whether the reproduction on the screens of the users had independent economic significance; following AG Kokott in that case, it seemed clear that reproductions in the buffers did not.

Finally, the court considered the scope of the defences in s 73 relating to copyright in the broadcast: one relates to must-carry obligations, the other – relevant here – concerned the retransmission of ‘qualifying services’ – effectively the terrestrial broadcasters’ services – within their reception area. Despite arguments that this was not pure retransmission (given the addition of competing advertising material) and that the reference to ‘cable’ in that section should not include the Internet, the court held that that TVC can rely on s 73, in respect of the qualifying services, save to the extent (a) that they re-transmit for reception by mobile phone and (b) for reception outside the regional area of the service in question.

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