TuneIn to the sound of communication to the public (Part 2)

As set out in Part 1 of this post here, Mr Justice Birss found that (most of) the services of TuneIn Radio amount to an act of communication to the public of the relevant works of Warner Music and Sony Music. TuneIn infringes the copyright of Warner Music and Sony Music under section 20 of the CDPA 1988 by providing a platform that links its users to radio stations that are not licensed in the UK or elsewhere, or are licensed outside of the UK. They was also found liable for copyright infringement for providing a recording function within the Pro version of their app, and liable for infringement by authorisation and as a joint tortfeasor.

Part 2 of this post covers the second judgement that deals with the terms of the injunctive relief and costs.

1 Scope and effect of the main judgement and its impact on the relief

At trial, the case was managed using samples of sound recordings and radio stations, e.g. under 40 radio stations, discussed in four categories. In reality, TuneIn provides its users with access to about 70,000 to 100,000 internet radio stations. The defendants argued that the relief should be limited to the sample stations unless and until there was a finding about other stations, but the claimants submitted that the relief should be in general terms.

Generally Kat
Specifically Super Kat
Image: nadja robot

Mr Justice Birss agreed with the claimants that the conclusion reached in the main judgment justified relief in general terms, not limited to the individual samples. This was because the findings did not turn on any details about individual sound recordings or distinctions between stations in the four categories.

In terms of damages, it is a commonplace in intellectual property disputes that liability is decided by reference to particular instances of the activity alleged to infringe (i.e. samples) but that the scope of the damages inquiry is general. Although issues of liability not decided at the liability trial can be decided in the inquiry, should such issues arise, in the present case the judge saw no justification at all for limiting the inquiry to the sample stations.

2 The terms of the injunction

An injunction is an equitable remedy and therefore a matter of discretion. The Info Soc Directive (2001/29/EC) and IP Enforcement Directive (2004/48/EC) provide that Member States must provide sanctions and remedies that are effective, proportionate and dissuasive as well as fair and equitable. Further, as Arnold J set out in EMI Records v British Sky Broadcasting [2013] EWHC 379 (Ch) proportionality and fair balance with fundamental rights must also be taken into account.
The claimants sought an injunction to restrain the defendant from infringing their copyright, but without defining their repertoire.

Birss aligned this case with those cases brought by collecting societies such as PPL and PRS against defendants such as retailers and public house owners who do not have a licence to play the works in public. In such circumstances, once infringement has been established based on samples, a general injunction to restrain infringement of the collecting societies' rights is granted but it is limited to a defined repertoire. Crucially, the collecting society also gives an undertaking to maintain an up to date searchable database of its repertoire online and to answer reasonable questions about particular sound recordings. Birss stated that this strikes a fair and proportionate balance between the rights of the copyright owners and the position of the infringer.

Tuning in
Image: Ewen Roberts

The defendant attempted to limit the scope of the injunction by using a notice and takedown regime that would put the onus on the rights holder to notify the defendant of unlicensed content. However, Birss distinguished TuneIn from an internet service provider and agreed only that the claimants provide notice of their repertoire. When the defendants complained that taking the proper steps to ensure there was a relevant licence in place (for the category 3 stations; freely available and aimed at the UK) would make its business unprofitable, Birss frankly put it: “I seriously doubt that…but if it did then so be it. The right of freedom of business is not a right of freedom to conduct an infringing business.” [at 23]. Moreover, he points out that the rights the defendant have infringed are available to be licensed in the UK, which would easily solve all the practical problems at a stroke. “The problems for the defendant arise because it does not wish to take a licence even though its business involves committing acts of primary copyright infringement.” [at 25].

3 Costs

The applicable rule is CPR rule 44.2, that the unsuccessful party will be ordered to pay the costs of the successful party, but the court may make a different order, considering all the circumstances, including the conduct of the parties, whether a party has succeeded on part of its case, even if that party has not been wholly successful, and any admissible offers to settle.

Birss stated that his conclusion was, broadly, that Warner and Sony succeeded on the large majority of issues. However, there was one important issue on which the claimants did not succeed, relating to the category 1 stations infringe already freely available and aimed at a UK audience (as the public was not new in this circumstance).

As such, the claimants argued for a modest deduction in costs of 5% based on various analyses of counting pages and paragraphs of various documents in the case. On the other hand, the defendant submitted that, taking into account that an average of approximately 67% of the listening hours in the UK via TuneIn were of category 1 stations, the claimants should be deprived of 75% of their costs.
Birss took the view the claimants should be deprived of more than 5%, but 75% would be grossly unfair and bear no relation to the reality of the way this case has gone, taking account of all these matters and including the importance of category 1. He decided that a fair, proportionate and reasonable deduction would be 25%.

As mentioned in Part 1, both parties sought and were granted permission to appeal the decision of the case and so we will stay tuned for further developments!