TVCatchup heads back to Luxembourg for a second preliminary ruling

A familiar sight for lawyers
involved in TVCatchup suits

ITV Broadcasting Limited, ITV 2 Limited, ITV Digital Channels Limited, Channel Four Television Corporation, 4 Ventures Limited, Channel 5 Broadcasting Limited and ITV Studios Limited v TVCatchup Limited (in administration), TVCatchup (UK) Limited and Media Resources Limited (a Mauritian company) [2015] EWCA Civ 204 is the latest development in the long-running copyright litigation saga which is usually known by its shorter name of ITV v TVCatchup. It's also a development that pretty well ensures that it'll be running for some considerable time to come. 

This litigation first hit the headlines in July 2011 when Mr Justice Floyd gave a ruling at [2011] EWHC 1874 (Pat) on ITV's allegatgion that TVCatchup ('TVC') had infringed the copyright in its broadcasts by communicating them to the public through a process of electronic transmission. This process consisted of TVC running a website which allowed ordinary viewers to watch live UK television -- including broadcasts by ITV -- on their own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made a choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast. 

In case you were wondering ...

ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which communicated its broadcasts to the public by means of an electronic transmission were a "communication of the broadcasts to the public by electronic transmission" under section 20 of the same Act. TVC disagreed, arguing that, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). 

Floyd J referred the case to the Court of Justice of the European Union for a preliminary ruling on whether streaming constituted a "communication to the public". The CJEU's answer, in short, was "yes" in its 7 March 2013 ruling [noted by the IPKat here]. The case then came back to Floyd J who ruled, in October 2013, that TVC had basically infringed and its defences failed -- except that, to the extent that TVC had streamed ITV, Channel 4 or Channel 5 to members of the public by cable (which included transmission via the internet but did not include transmission to mobile devices via any mobile telephone network) and to users situated in the region to which the original broadcasts were made, it had not infringed the broadcasters' copyright by reason of the defence contained in section 73 of the CDPA [the relevant bits of which are reproduced below]. The judge also declared that it was not possible to interpret section 73 so as to be compatible with Article 5(3)(o) of the InfoSoc Directive (2001/29) which, the broadcasters said, was the only provision of that directive which could provide a proper basis for such a defence. Article 5(3)(o) permits

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.

The parties then appealed against the judge's findings and his order so far as it concerned the scope of the section 73 defence and its application to the facts.  In January 2014 the Secretary of State for Business, Innovation and Skills was permitted to intervene, his interest in these issues being apparent from the declaration of incompatibility made by the judge. 

Today the Court of Appeal (Lady Justice Arden and Lords Justice Kitchin and Underhill) surprised us all by deciding, after dismissing TVC's appeal, that it was necessary to send the case back to Luxembourg for a further preliminary ruling of the CJEU, this time on the section 73 issue. Said Kitchin LJ:

1. Under Article 267 of the Treaty on the Functioning of the European Union this court may submit a request to the Court of Justice for a preliminary ruling on a question of European Union law if it considers it is necessary to do so in order to resolve the dispute brought before it.

1. The present case raises a difficult question as to the scope of Article 9 of Directive 2001/29 ["This Directive shall be without prejudice to provisions concerning in particular patent rights, trade marks, design rights, utility models, topographies of semi-conductor products, type faces, conditional access, access to cable of broadcasting services, protection of national treasures, legal deposit requirements, laws on restrictive practices and unfair competition, trade secrets, security, confidentiality, data protection and privacy, access to public documents, the law of contract"] and whether it permits the retention by a Member State of a provision such as s.73 of the CDPA which, in the particular circumstances set out in that section, affords a defence both to an allegation of infringement of copyright in a broadcast and of the copyright in any work included in the broadcast arising from the streaming of public service broadcasts to members of the public where that streaming takes place by wire (a) via the internet (but not including transmission by mobile devices via any mobile telephone network) and/or (b) to users situated in the original broadcast area. ...  I am satisfied that a ruling on this question is necessary for this court to give judgment.

1. It only remains to consider whether this court should exercise its discretion to request a preliminary ruling from the Court of Justice. I am conscious that none of the parties before us has invited us to take this course. However, as is well established, the court may do so of its own initiative. I have come to the conclusion that it is appropriate to do so. The relevant facts are clear. The issues raised by the question I would refer are critical to our final decision and I do not believe that this court can resolve them with complete confidence without guidance from the Court of Justice. Moreover, they are important issues in relation to which a uniform approach across the European Union is essential. It is regrettable that there needs to be a second reference to the Court of Justice in this case but that is a consequence of the fact that the issues on which this appeal turns were never fully developed before the judge.

1. I should add that after the hearing and this court having formed the provisional view that it was appropriate to make a further reference, we invited the parties to file further written submissions on this issue. The parties duly did so, but the submissions we received did not alter the provisional view to which we had come. We have also been informed that the European Commission has sent a letter of formal notice to the United Kingdom pursuant to Article 258 of the Treaty on the Functioning of the European Union in relation to s.73, but we have not been provided with a copy of this notice and no party has suggested that it should affect our decision [not even Merpel has seen this letter, but she says it would be good to know what her European servants are writing to her English ones, since she her taxes pay their salaries and this is hardly something worth keeping secret -- is it?]. In all these circumstances and for all of the reasons I have given, I would make a reference and invite the parties to make submissions as to the precise wording of the questions I have identified.

The exact formulation of the questions remains to be fine-tuned by the parties. The Kats will of course keep you informed once they have them. Meanwhile, don't be surprised if one or more of this Kat's more copyright-minded colleagues returns to this case and posts some more scholarly comments on it.

APPENDIX: the most relevant bits of the CDPA, section 73:

Reception and re-transmission of wireless broadcast by cable.

(1) This section applies where a wireless broadcast made from a place in the United Kingdom is received and immediately re-transmitted by cable.

(2) The copyright in the broadcast is not infringed—

(a) if the re-transmission by cable is in pursuance of a relevant requirement, or

(b) if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service.

(3) The copyright in any work included in the broadcast is not infringed if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable; but where the making of the broadcast was an infringement of the copyright in the work, the fact that the broadcast was re-transmitted by cable shall be taken into account in assessing the damages for that infringement.