Twentieth Century Fox v Newzbin Ltd is the first English High Court copyright decision to consider liability for communication to the public, authorisation, inducement and participation in a common design in relation to internet links.
Twentieth Century Fox and other film studios brought an action for copyright infringement against Newzbin Ltd which operates a website, Newzbin. Newzbin provides to its members indexing and search facilities for the materials posted on public bulletin boards of Usenet.
The Newzbin service
When non-text content, such as a film, is uploaded to Usenet it is split into smaller files, which are then distributed across hundreds or thousands of individual messages. Due to the time it takes for these messages to upload to the server, it is usual for them to get mixed up with other messages posted to the newsgroup. In order for a user to be able to view the film, it would be necessary for them to locate and download each and every one of these messages which then need to be assembled together to form the whole copy. Such an endeavour might take days and would be a fruitless exercise if the user failed to identify just one of the files.
Newzbin processed the title information from messages (such as the e-mail address of the user who posted the message and the subject of the message), and stored it in three main indices. The highest level index, known as the “Newzbin” index, is categorised by the name of the film or work concerned, provided a single collated entry for all of the files making up the particular film. Together with the entry, a report was provided by a team of Newzbin editors which confirmed that all of the individual messages comprising the film had been identified and giving additional descriptive information such as the genre of the film and, typically, links to other websites with information on the film.
Newzbin also offered a premium service which enabled users in one click to create and download an NZB file from any entry on the Newzbin index. The NZB file contains all of the information required to locate and reassemble all the files making up a particular film. It then delivers it to the user’s computer in a form suitable for burning to a DVD.
Communication to the public
The claimants argued that Newzbin’s activities amounted to copyright infringement by communication to the public of infringing files linked to by Newzbin. Newzbin argued that it offered a passive service, merely acting as an intermediary by providing a link to sites from which films could be downloaded, and as such did not communicate the films to the public.
The judge did not accept Newzbin’s argument, stating that the service was “far from passive”. The members were given access to a sophisticated and technical editorial system which enabled the premium members to identify the film of their choice. The system did not simply make available a link to a film of interest which was made available by a third party, but removed the need for the user to expend time and effort gathering the separate messages together by providing the one click NZB facility. Applying the European Court of Justice decision in Rafael Hoteles  ECR I-11519, the judge found that the defendant had intervened in a highly material way to make the claimants’ films available to a new audience i.e. the premium members. The set up was such that the members would consider the films in the Newzbin index to be made available to them by Newzbin. Newzbin was fully aware of the consequences of its actions. Newzbin had therefore made the claimants’ films available to its premium members and had in that way communicated them to the public.
It is notable that the judge based his decision on the various activities of the defendant that went beyond mere linking to infringing files. The decision does not establish that linking alone would amount to communication to the public.
The judge determined that Newzbin Ltd was also liable for authorising acts of infringement by Newzbin’s members.
The judge explained that in English law authorisation means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case that involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances.
In coming to his decision, the judge said that there were a number of aspects of the case that were particularly important. Newzbin’s premium members had made weekly payments to access the Newzbin searching and indexing facility. Newzbin was a sophisticated facility enabling its members to search films not only by title but also by genre. Newzbin went beyond merely indexing and categorising messages, by collating the messages into a single entry and providing the NZB facility. The NZB facility when used in respect of a copyright work would inevitably create an infringing copy on the user’s computer. A very large proportion of the content in the Newzbin movies category was commercial and hence likely to be the subject of copyright protection. However Newzbin Ltd had made no attempt to filter the system to remove infringing copies (which on the evidence it could easily have done), but rather had actively encouraged its editors to make reports on such films and had taken no action against editors who reported on infringing materials.
The judge found that a reasonable member of Newzbin would infer that Newzbin Ltd purported to possess the authority to grant any permission for the member to copy any film contained in the Newzbin movies category. Newzbin had also sanctioned, approved and countenanced the copying of the claimants’ films.
Procurement and participation in a common design
Newzbin Ltd was also found to have procured infringements by its premium members, and to have engaged in a common design with them to infringe copyright.
The judge observed that mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. That would be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act.
In finding Newzbin liable for procurement and participation in a common design, the matters identified in respect of authorisation were relevant. In addition, the judge commented that Newzbin well knew that it was making available to its premium members infringing copies of films, including films of the claimants.
“In summary, the defendant operates a site which is designed and intended to make infringing copies of films readily available to its premium members; the site is structured in such a way as to promote such infringement by guiding the premium members to infringing copies of their choice and then providing them with the means to download those infringing copies by using the NZB facility; the activation of the NZB facility in relation to one of the claimants' copyright films will inevitably result in the production of an infringing copy; the defendant has encouraged and induced its editors to make reports of films protected by copyright, including those of the claimants; the defendant has further assisted its premium members to engage in infringement by giving advice through the sharing forums; the defendant has profited from the infringement; and finally, the claimants are not able to identify particular infringements by particular members only because the defendant keeps no records of the NZB files they have downloaded.”
The finding of liability for procurement is of interest, since the judge accepted that the claimants were unable to point to specific acts of infringement by particular infringers which Newzbin Ltd might be said to have procured. In L’Oreal v eBay  EWHC 1094, Arnold J rejected a claim for procurement in the following terms:
“I shall nevertheless deal with procurement shortly. As Lord Templeman said in CBS v Amstrad, procurement, whether by inducement, incitement or persuasion, "must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable". In my judgment the evidence does not establish procurement by eBay Europe of the particular acts of infringement by the Fourth to Tenth Defendants complained of.”
In Newzbin Kitchin J said:
“I recognise at the outset that the claimants are not able to point to specific acts of infringement by particular infringers which the defendant may be said to have procured. However, I do not understand Lord Templeman's speech in Amstrad to preclude a finding of liability in such a case. Clearly it is one of the matters to be taken into account and absent the identification of such specific acts a finding of procurement would not in general be appropriate. Nevertheless, the question to be answered remains the same, namely whether the defendant has engaged in a common design by so involving himself in the infringement as to make it his own; or whether the defendant has procured an infringement by inducement, incitement or persuasion.”
On the face of it these two approaches to the requirements for procurement are not easy to reconcile.
Case reference: Twentieth Century Fox Film Corporation & Ors v Newzbin Ltd  EWHC 608 (Ch)