Unauthorised reproduction and making available of 8-second clips of sports events? A copyright infringement, rules Arnold J

Bertie's favourite summer sport

Can the unauthorised reproduction and making available of clips of cricket matches lasting up to 8 seconds amount to an infringement of copyright in works lasting several days hours minutes about this exciting and fast-paced sport?

Unsurprisingly, the answer is yes.

Last Friday Arnold J issued his 174-paragraph judgment in England And Wales Cricket Board Ltd & Anor v Tixdaq Ltd & Anor [2016] EWHC 575 (Ch).

Background

The claimants in this case own the copyrights in TV broadcasts (and films incorporated therein) of most cricket matches played by the England men's and women's cricket teams. 

The defendants operate a website, www.fanatix.com and various apps, in particular the fanatix app for iPhone/iPad [of all the things, this Vine-inspired app was at the centre of the dispute, and was advertised as follows on the AppStore: "Capture, Caption. Share! Create 8 second sports news snippets. Caption with Attitude. Share sports video with millions of fans."]. 

By using screen capture technology the defendants, their contractors and members of the public uploaded [obviously without authorization from the copyright owners] clips of the claimants' broadcasts lasting up to 8 seconds. These clips were also available on their social media accounts (Facebook and Twitter).

The features of the app have changed over time. Among other things - from version 8.3 onwards - users have been obliged to attribute clips to a specific source broadcaster or confirm that the clip contains no third party broadcast footage and - from version 8.3.2 onwards - they have been also obliged to add a 70-character commentary [all this possibly to comply with some lawyer's advice ...].

Nonetheless the claimants sued for copyright infringement, with the defendants denying infringement on grounds that their activities were protected - primarily - as fair dealing for the purpose of reporting current events within s30(2) of the Copyright, Designs and Patents Act (CDPA) and - secondarily and in relation to users' uploads - by the safe harbours for mere conduit and hosting providers pursuant to the UK implementation [Article  17 and 19 of the ECommerce Regulations] of Articles 12 and 14 of the ECommerce Directive.

News reporting: s30(2) CDPA

The defence in s30(2) CDPA provides that: "Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that (subject to subsection (3) ["No acknowledgement is required in connection with the reporting of current events by means of a sound recording, film or broadcast where this would be impossible for reasons of practicality or otherwise."]) it is accompanied by a sufficient acknowledgement."

Mr Justice Arnold

A defence of fair dealing for the purposes of criticism or review within s30(1) CDPA was dropped in closing submissions, and - as Arnold J noted - "no defence of fair dealing for the purposes of quotation [within s30(1ZA) CDPA] was ever advanced [why???]." 

The works at issue: signal copyrights

The learned judge began his analysis by noting that the copyright works relied upon by the claimants were broadcasts and films, ie signal copyrights for which s1 CDPA does not expressly mandates an originality requirement. As such, the jurisprudence of the Court of Justice of the European Union (CJEU) with respect to the reproduction of parts of literary and artistic works - notably Infopaq I - was considered inapplicable [but keep reading]. 

Substantiality: where the investment is found

This said, Arnold J turned to consideration of what could amount to a substantial part of the works in question. This assessment was necessary because - first - prima facie infringement within s16 CDPA is to subsist "in relation to the work as a whole or any substantial part of it", and - secondly - it would feed into the assessment of fair dealing.

The judge said that from Infopaq I it is apparent that the interpretation of the notion of 'substantial' in the case of literary and artistic works implies that the reproduction at hand is of a part that contains elements that reflect their rationale for protection, ie the intellectual creation of the author.

According to Arnold J a similar approach is to be adopted also in relation to parts of broadcasts and first fixations of films. Protection is granted to the parts that contain elements which reflect the rationale for protecting broadcasts and first fixations, ie the investment made by the broadcaster or producer. 

As such [para 66], it is not "that reproduction of any part of a broadcast or first fixation amounts to an infringement. The broadcaster or producer's investment does not justify making reproduction of an insubstantial part an infringement. Nor does it follow that the test is a purely quantitative one." This said, "[a]t least in the case of broadcasts and first fixations of films of sporting events, broadcasters and producers invest in the production of broadcasts and first fixations knowing, first, that some parts of the footage of an event (e.g. wickets in the case of cricket matches and goals in the case of football matches) will be more interesting to viewers than other parts and, secondly, that there is a market for highlights programmes and the like in addition to the market for continuous live coverage." 

UK law in light of EU law and CJEU interpretation

The judge noted at the outset [para 68] that s30(2) CDPA must be construed in accordance with Article 5(3)(c) of the InfoSoc Directive. 

Among other things [para 70], the expression "for the purpose of reporting currents" in s30(2) is very close to the expression "in connection with the reporting of current events" in Article 5(3)(c), but Article 5(3)(c) permits use "to the extent justified by the informatory purpose" whereas s30(2) permits use which is "fair dealing" [is 'fair dealing' the same as the three-step test in Article 5(5) of the InfoSoc Directive though?]. As such ,"[i]t follows ... that an important consideration in the assessment of fair dealing is whether the extent of the use is justified by the informatory purpose."

After recalling the CJEU approach to the interpretation of exceptions and the need to balance different fundamental rights (notably freedom of expression and IPR protection), Arnold J turned to considering the various elements of the defence in s30(2) CDPA and noted that domestic authorities [para 74] "must be treated with a degree of caution, since they were mostly decided prior to the implementation of the [InfoSoc] Directive and all of them were decided well before the recent jurisprudence of the CJEU concerning the interpretation of that Directive."

Elements of the news reporting defence

(1) "For the purpose of" 

According to Arnold J the question whether the use was "for the purpose of" reporting current events is to be judged objectively.

(2) "Reporting current events"

The judge noted that although Recital 34 of the InfoSoc Directive refers to "news reporting", there is no warrant for interpreting "reporting current events" as being restricted to "news reporting". 

This said, [para 81] "there has been very little consideration in any of the case law of what amounts to "reporting" a current event", although in BBC v BSB [para 82] Scott J held also news of a sporting character could fall within the scope of the defence.

(3) Fair dealing

In Ashdown [one of the key cases on defences under UK law] Lord Phillips noted the impossibility of laying down "any hard-and-fast definition of what is fair dealing, for it is a matter of fact, degree and impression. However, by far the most important factor is whether the alleged fair dealing is in fact commercially competing with the proprietor's exploitation of the copyright work, a substitute for the probable purchase of authorised copies, and the like ... The second most important factor is whether the work has already been published or otherwise exposed to the public ... The third most important factor is the amount and importance of the work that has been taken. For, although it is permissible to take a substantial part of the work (if not, there could be no question of infringement in the first place), in some circumstances the taking of an excessive amount, or the taking of even a small amount if on a regular basis, would negative fair dealing."

Considering the third factor, the key question in the present context was whether the extent of the use could be justified by the informatory purpose.

(4) Sufficient acknowledgement

There is no requirement as to the form taken by the acknowledgement. 

Three steps

(5) Three-step test?

At paras 88 ff Arnold J discusses how, while there has been a great deal of academic commentary on the three-step test, there has been very little judicial consideration of it [yet, the test seems addressed at national legislatures and courts alike, as Arnold J and this Kat argued in this recent article].

The learned judge deemed it inappropriate to engage in detailed consideration of the requirements of the three-step test. He rather followed counsel's example of treating it as requiring consideration of essentially the same factors as fair dealing [but does it? Arnold J did not seem too convinced]. 

Assessment

• A substantial part

Arnold J considered whether 8 seconds could be considered a substantial part of the claimants' works. He concluded [para 99] that "[q]uantitatively, 8 seconds is not a large proportion of a broadcast or film lasting two hours or more. Qualitatively, however, it is clear that most of the clips uploaded constituted highlights of the matches: wickets taken, appeals refused, centuries scored and the like. Thus most of clips showed something of interest, and hence value. The majority of the clips also involved action replays of the kind discussed above. Thus each clip substantially exploited the Claimants' investment in producing the relevant broadcast and/or film. Accordingly ... each such clip constituted a substantial part of the relevant copyright work(s)."

• Fair dealing

The judge then turned to considering whether s30(2) CDPA could be applicable in this case.

He held [para 106] that a contemporaneous sporting event [though the app would not only allow the upload of those] is a current event for the sake of the defence [the story is however different for pundits giving analysis or interviewers conducting interviews]. 

The core of the question was however whether the reproduction and communication to the public of the clips by the defendants could be considered for the purpose of reporting those events. 

Arnold J included consideration of the commentary accompanying the clips, "frequently of a fairly jejune nature" [para 110]. He said [paras 112-113] that "the starting point is that the verb "reporting" is capable of bearing a broad or narrow meaning depending on context. It follows that it is necessary to construe it purposively. The purpose of section 30(2) [CDPA], Article 5(3)(c) of the [InfoSoc] Directive ... is to provide an exception to, or limit upon, copyright protection in the public interest, namely freedom of expression ...[T]his favours a broad interpretation. Furthermore, the exception is not an unqualified one ... Again, this favours a broad interpretation. In addition, the exception must be given a "living" interpretation, at least in the sense that it must be interpreted in manner that takes into account recent developments in technology and the media. In these circumstances ... these provisions should now be interpreted more broadly than they may have been in the past. Thus I consider that it is clear that they are not restricted to the kind of situation which was under consideration when what is now Article 10bis of Berne was first introduced, such as a radio or newsreel report of a public ceremonial occasion which incorporated part of a musical work performed by a military band".

This said, the judge reviewed relevant evidence and held [para 128] that the clips were reproduced and communicated for the purposes of (i) sharing the clips with other users and (ii) facilitating debate amongst users about the sporting events depicted. 

However, (i) was the primary or predominant purpose: users added comments to the clips they uploaded, they did not create a report to which they added clips. Equally, the clips were presented to viewers accompanied by the comments, rather than reports being presented to viewers illustrated by clips.

As such, use of the claimants' works was not for the purpose of reporting current events: "The clips were not used in order to inform the audience about a current event, but presented for consumption because of their intrinsic interest and value." [para 129]

This said, the judge decided to address nonetheless whether - assuming that the purpose was to report current events - the dealing at hand could be considered fair. He concluded in the negative, also holding that the defendants' activities were commercially damaging to the claimants and conflicted with a normal exploitation of their works and that the amount and importance of the works taken could not be justified by any informatory purpose.

The judge also considered that, as an intermediary, the defendants would not be protected by safe harbours for the clips in relation to which they undertook an editorial review.

Kat in an actual nutshell

In a nutshell

Besides being clear good news for copyright owners (notably broadcasters), this mammoth decision is extremely interesting for a number of reasons and it is anticipated that its impact on UK copyright will be significant.

First, it is apparent that national provisions cannot be read without considering the impact of CJEU case law. This questions the validity of older UK authorities, but also the assessment of those judges [they DO exist] - whether in the UK or abroad - who still think that CJEU jurisprudence is something far and distant that does not really matter.

Secondly, there should be further investigation on fair dealing and its elusive nature: is it synonymous with the three-step test or not? This is not an academic question, as the kind of assessment that fair dealing and the three-step test require may be similar but is not identical, also because the factors that courts have taken into account when determining whether a certain use could be considered fair are not a precise and exhaustive list, as it instead appears to be the case for the three-step test.

Finally, when it comes to signal copyrights, while it might be true that a different assessment form the one for more 'classic' copyright works is to be undertaken, the implications in practice are not that different, and actually the threshold to protection is not high. This means that - yes - copyright can be infringed easily ... also by reproducing 8-second clips.