TuneIn with Europe still – Court of Appeal stays with the CJEU on the expression ‘communication to the public,’ and tells us why Brexit won’t lead to departure from EU case law.
Warner Music Ltd. & Sony Music Entertainment Ltd., and the groups they represent, own, or hold copyrights in sound recordings of music for more than half of the market for digital sales of recorded music in the United Kingdom, and about 43% globally. TuneIn is a US technology company which operates an online platform called TuneIn Radio that enables users in the UK to access radio stations from around the world. The claim was that TuneIn has infringed Warren & Sony’s UK copyrights, and TuneIn has committed the restricted act of ‘communication to the public,’ alternatively that TuneIn enabled that restricted act by the operators of foreign radio stations. The case was re-heard by Mr. Justice Birss and he gave judgment substantially in favour of Warner & Sony in November 2019 ( EWHC 2923 (Ch),  ECDR 8. Tuneln appealed and raised questions of whether the act of Brexit should alter the UK approach to questions such as ‘communication to the public,’ as the Court of Appeal is allowed to depart from EU law.
The Appeal & Decision
In March 2021 Lord Justice Arnold gave the lead judgment, and provided great clarity on the law. He made clear that Brexit does not affect EU-derived domestic legislation such as section 20 Copyright Design Patents Act (CDPA) 1988 which implemented the Information Society Directive. Section 20 CDPA restricts communication to the public of the work as an exclusive right of the copyright holder. This right being at the heart of the claim, as TuneIn was alleged to be making such a communication without the relevant permission.
This is the first time the Court of Appeal have been asked to consider the consequence of Brexit, and whether to diverge from it. Perhaps unsurprisingly, the Court confirmed the legislation remains in effect unless and until it is repealed or amended. In consequence, the case law and meaning of the expression ‘communication to the public’ considered by the CJEU in some 25 judgments over the past 14 years is still relevant, and retained, as part of our domestic law.
What did we learn?
First we need a basic understanding of the way issues and facts were framed. The parties had categories of the radio stations as follows:
(1) Music radio stations which are licensed in the UK;
(2) Music radio stations which are not licensed in the UK or elsewhere;
(3) Music radio stations which are licensed for a territory other than the UK; and
(4) Premium music radio stations.
In the first judgement under appeal concluded that:
i) TuneIn’s service (web based or via the apps), insofar as it includes or included the sample stations in Categories 2, 3, and 4, infringed the claimants’ copyright[s] under s20 CDPA 1988.
ii) TuneIn’s service (web based or via the apps), insofar as it includes the sample stations in Category 1, does not infringe the claimants’ copyright under s20 CDPA 1988.
iii) TuneIn’s service via the Pro app when the recording function was enabled infringed the claimants’ copyright[s] under s20 CDPA 1988 insofar as it included the sample stations in Categories 1, 2, 3, and 4.
iv) Individual users of the Pro app who made recordings of sound recordings in [the] claimants’ repertoire will themselves have committed an act of infringement under s17 CDPA 1988. Some but not all will have fallen within the defence in s70 CDPA which is the right for a recording to be made for private domestic use.
v) The providers of sample stations in Categories 2, 3, and 4 will (or did) infringe when their station was targeted at the UK by TuneIn.
vi) TuneIn is liable for infringement by authorisation and as a joint tortfeasor.
Development of the law on communication
From this background Lord Justice Arnold provided a thorough review of the law, starting with the Berne Convention 1886, via the Rome Convention of 1961 and the WIPO Treaty of 1996, before arriving at the Information Society Directive of 2001. The Information Society Directive was transposed into UK law by the Copyright and Related Rights Regulations 2003, SI 2003/2498. Article 3 was implemented by Regulations 6 and 7, which, amongst other things, amended section 20 CDPA 1988.
The Information Society Directive required the UK to grant the Article 3(1) right of communication to the public in respect of authors’ works and to grant the Article 3(2) right of making available in respect of phonograms (in the terminology of the Treaties and the Information Society Directive). This became ‘sound recordings’ in the words of the CDPA. This subtle altering of words led to a number of cases and debates as to whether the UK could alter the words and what that meant. The CLEU held in C-279/13 C More Entertainment AB v Sandberg [EU:C:2015:199] that this extension of the Article 3(1) right by Member States was permissible, and that settled matters in English law, that the wider terms implemented in the CDPA were not ultra vires. This was confirmed in the case of ITV v TVCatchup, Football Association Premier League Ltd v QC Leisure (No 3)  EWHC 108 (Ch).
The acts that infringe
In bringing the claim Warner & Sony had to establish (i) the commission by TuneIn and/or the foreign stations of that restricted act (ii) took place in the UK. Both the first instance judge and the court of Appeal looked at whether the act took place in the UK before considering if the act was a communication to the public. This led to a consideration of the internet and what is and is not occurring in the UK.
The internet is global and users in the UK can, in the absence of geo-restriction, access content from anywhere in the world. To date the CJEU has held that mere accessibility of a website is not sufficient and the relevant act must be targeted at people in the relevant jurisdiction.
When considering if the website is sufficiently targeted, the test is objective and so the Court is concerned with whether it is objectively targeted at the UK. However, evidence of intention is relevant and possibly determinative in an appropriate case, meaning one must look at both and assess the facts. The Court then applied the CJEU’s case law and referred to Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd  EWHC 3479 (Ch),  ECDR 7 before updating the summary in that decision as follows:
(1) Communication to the public must be interpreted broadly;
(2) Communication to the public covers any transmission or retransmission of the work to the public not present at the place where the communication originates by wire or wireless means, including broadcasting. It does not include any communication of a work which is carried out directly in a place open to the public by means of public performance or direct presentation of the work.
(3) There is no communication to the public where the viewers have no access to an essential element which characterises the work.
(4) Communication to the public involves two cumulative criteria: First, an ‘act of communication’ of a work, and secondly, the communication of that work to a ‘public.’
(5) Communication refers to any transmission of the work, irrespective of the technical means or process used.
(6) Every transmission or retransmission of the work by a specific technical means must, as a rule, be individually authorised by the right holder.
(7) A mere technical means to ensure or improve reception of the original transmission in its catchment area does not constitute a communication.
(8) A user makes an act of ‘communication’ when it intervenes, in full knowledge of the consequences of its action, to give its customers access to a protected work, particularly where, in the absence of that intervention, those customers would not be able to enjoy the work, or would be able to do so only with difficulty.
(9) It is sufficient for there to be ‘communication’ that the work is made available to the public in such a way that the persons forming that public may access it, whether or not those persons actually access the work.
(10) Mere provision of physical facilities does not as such amount to ‘communication.’ Nevertheless, the installation of physical facilities which distribute a signal and thus make public access to works technically possible constitutes ‘communication.’
(11) ‘The public’ refers to an indeterminate number of potential recipients and implies a fairly large number of persons. ‘Indeterminate’ means not restricted to specific individuals belonging to a private group; and ‘a fairly large number of people’ indicates that the concept of ‘public’ encompasses a certain de minimis threshold, which excludes from the concept groups of persons which are too small, or insignificant.
(12) For that purpose, the cumulative effect of making the works available to potential recipients should be taken into account, and it is particularly relevant to ascertain the number of persons who have access to the same work at the same time and successively.
(13) Where there is a communication of works by the same technical means as a previous communication, it is necessary to show that the communication is to a new public, that is to say, a public which was not considered by the right holder when it authorised the original communication. Where there is a communication using a different technical means to that of the original communication, however, it is not necessary to consider whether the communication is to a new public.
(14) In considering whether there is a communication to ‘the public,’ it is not irrelevant that the communication is of a profit-making nature. A profit-making nature is not necessarily an essential condition for a communication to the public.
(15) In order to establish whether the fact of posting, on a website, hyperlinks to protected works which are freely available on another website without the consent of the copyright holder, constitutes a ‘communication to the public,’ it is to be determined whether those links are provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website or whether, on the contrary, those links are provided for such a purpose, a situation in which that knowledge must be presumed.
Applying these principles, the CJEU held that the following constitute communication to the public:
(1) The transmission of television and radio broadcasts, and sound recordings included therein, to the customers of hotels, public houses, spas, café-restaurants and rehabilitation centres by means of television and radio sets.
(2) Where a satellite package provider expands the circle of persons having access to the relevant works.
(3) The retransmission of works included in a terrestrial television broadcast by an organisation other than the original broadcaster by means of an internet stream made available to the subscribers of that other organisation, even though those subscribers are within the area of reception of the terrestrial television broadcast and may lawfully receive the broadcast on a television: ITV.
(4) The provision by a website operator for profit of hyperlinks to files containing copyright photographs which had been posted on another website without the consent of the copyright owner and which the operator of the first website was aware had been posted without the consent of the copyright owner.
(5) The sale of a multimedia player on which there are pre-installed add-ons containing hyperlinks to websites that are freely accessible to the public on which copyright-protected works have been made available without the consent of the right holders.
(6) The making available and management on the internet of a sharing platform which, by means of indexation of metadata referring to protected works and the provision of a search engine, allows users of that platform to locate those works and to share them in the context of a peer-to-peer network.
(7) The provision of a cloud computing service for the remote video recording of copies of protected works.
(8) The posting on one website of a copy of a photograph previously posted, without any restriction preventing it from being downloaded and with the consent of the copyright holder, on another website.
(9) The supply to the public by downloading, for permanent use, of an e-book.
In contrast, the following have been held by the CJEU not to constitute a communication to the public:
(1) Television broadcasting of a graphic user interface of a computer program.
(2) The communication of musical works to the public in the context of live circus and cabaret performances.
(3) The broadcast of sound recordings by way of background music to patients of a private dental practice.
(4) The provision on one website of a hyperlink to works which are freely available on another website with the consent of the right holder. It makes no difference if clicking on the link results in ‘framing’ of the works on the first website. But it does make a difference if the link circumvents technical measures put in place on the second website to restrict access to the latter site’s subscribers or to prevent framing.
(5) The transmission by a broadcasting organisation of programme-carrying signals exclusively to signal distributors without those signals being accessible to the public, where those distributors then send those signals to their respective subscribers so that the latter may watch the programmes, unless the intervention of the distributors in question is just a technical means.
(6) The simultaneous, full and unaltered transmission within the national territory by the operator of a cable network of programmes broadcast by a national broadcaster.
(7) The supply of a radio receiver forming an integral part of a hired motor vehicle, which makes it possible to receive, without any additional intervention by the leasing company, the terrestrial radio broadcasts available in the area in which the vehicle is located.
(8) The transmission by electronic means of a protected work to a court as evidence in judicial proceedings between individuals.
When might we see divergence from EU law post Brexit?
TuneIn contended that the Court should exercise its power to depart from the CJEU judgments, and the UK Government has confirmed it is of the view the Court of Appeal is the right level of court to have that power. However, as the starting position is the CJEU case law is retained, any departure must follow the same approach as the Supreme Court power to depart from one of its own precedents or of one of the House of Lords in accordance with the Practice Statement (Judicial Precedent)  1 WLR 1234: section 6(5A) of the 2018 Act and the European Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) Regulations 2020 (SI 2020/1525). The Supreme Court have consistently stated that this is a power to be exercised with great caution, and that has now been endorsed by the Court of Appeal in regards to EU case law.
Helpfully, Lord Justice Arnold gave reasons why this case was not one for departure, and from his eight reasons we start to see how similar questions might be answered in future:
First, there has been no change in the domestic legislation. Now that the UK has left the EU, it will be open to Parliament to amend section 20 of the 1988 Act if it sees fit, subject to the UK’s international obligations. So until Parliament alters the CDPA, there is no reason to depart form EU case law.
Secondly, there has been no change in the international legislative framework, in terms of the Information Society Directive and WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty. As the issue is regulated by international treaties, courts of the Contracting States should be striving for consistency of interpretation, rather than unilaterally adopting their own interpretations. So this also counts against departure.
Thirdly, interpreting the concept of ‘communication to the public’ is a difficult task for two reasons. The first is the absence of guidance in the legislation (whether Article 8 of the WIPO Copyright Treaty, Article 3(1) of the Directive or section 20 of the 1988 Act). The second is the conflict between the broad nature of the right of communication to the public forming part of copyrights, which are territorial rights exploited on a territorial basis on the one hand, and the global and interconnected nature of the internet on the other hand. The CJEU has developed and refined its jurisprudence over time, and whilst not it does not follow that better solutions are readily to hand.
Fourthly, in regards to academic commentary, it was for and against the CJEU positions, and so it was not a sufficiently compelling reason to depart.
Fifthly, TuneIn submitted in its skeleton argument that the Court of Appeal could derive assistance from the case law of courts outside the EU, notably those in Australia, Canada and the USA, but did not pursue this suggestion in oral submissions. Lord Justice Arnold considered that those other jurisdictions were not more helpful because the statutory framework differs in those countries and the case law cannot be said to offer settled or consistent guidance on the questions which confront the Court.
Sixthly, if the Court departed from existing case law it would create considerable legal uncertainty.
Seventhly, on the specific question of whether the Court should depart from the case of GS Media, Lord Justice Arnold did not consider it sensible to depart as it was not a complete answer and other CJEU cases still countered against TuneIn’s arguments.
Eighthly, the principal reason submitted for departing from GS Media was the mental element imposed by the CJEU in that case. It was argued that this confused primary liability for copyright infringement with accessory liability, and accessory liability was not harmonised by the Information Society Directive or any other measure of EU law. This is another criticism of the CJEU’s jurisprudence which receives support from academic commentary. However, in the UK the intellectual property statutes are, generally silent with respect to accessory liability. The English courts have filled this gap by applying the common law doctrine of joint tortfeasance, and so it need not be addressed by the departure from GS Media.
To this the Master of Rolls gave perhaps a more practical set of views that applies more widely, as he observed the above 8 reasons could be confined to fewer reasons. The MR considered that it would be inappropriate for the Court of Appeal to exercise its new-found power to depart from retained EU law for two reasons:
First, this is an area of law that derives from international treaties. The courts of the states that accede should, wherever possible, be striving to achieve harmonious interpretation of them, not individualistic disharmony: “The question of infringement of copyright by communication to the public in the context of the internet and hyperlinks is a difficult area of law that often has impacts, as in this case, across national borders. It gives rise to frequent issues and potential anomalies. The large number of cases dealt with by the CJEU in relatively few years is a testament to that. It would be undesirable for one nation to depart from the CJEU’s approach without an exceptionally good reason.”
Secondly, the MR noted that TuneIn suggested the Court of Appeal should apply the Supreme Court approach of departing from its own decisions where the earlier ones “were generally thought to be impeding the proper development of the law or to have led to results which were unjust or contrary to public policy.” However, the MR considered that the CJEU’s approach to the law of infringement of copyright by communication to the public is neither impeding nor restricting the proper development of the law, nor is it leading to results which are unjust or contrary to public policy.
This case as with so many from the keyboard of Lord Justice Arnold is a tutorial on the origins of the legal issue and why it is problematic. The enumerated lists in this decision are a very helpful guide to determining what is and is not an infringing communication to the public, albeit, as the MR notes not certain to survive further case law evolution. What we can take away from this is the usefulness of the past decision on how to consider if there is online targeting of the public in a given jurisdiction and some useful examples of what falls either side of the line. Of greater importance is the clarity that we see here for the MR and senior IP jurist that the Court of Appeal is not itching to depart from EU law. We can see from this decision that if successful arguments are to be run for such departure they would: (i) Benefit from the UK Parliament having already raised the question of altering the law, (ii) that the law in question is not part of other international treaty obligations, and that (iii) there is a clear point to show that existing case law is impeding the proper development of the law or has led to results which were unjust or contrary to public policy.
The full judgement is available here.
 https://www.hindawi.com/journals/jnm/2014/989672/ k=p GS Media BV v Sanoma Media Netherlands BV [EU:C:2016:644]
 Lord Reid at page 966 in R v. National Insurance Commissioner: ex parte Hudson  AC 944.