Copyright: terms of injunction and scope of damages inquiry

By Audrey Horton

02-2020

The High Court has considered the terms of injunctive relief and the scope of the damages inquiry in the TuneIn radio aggregator copyright infringement case.

Background

An injunction is an equitable remedy and so a matter of discretion. When infringement of an intellectual property right has been established, an injunction in general terms usually follows, but there is no invariable rule and the court must consider the facts and circumstances of a particular case.

Facts

W held exclusive licences to the copyright in sound recordings of music. T operated an online platform that enabled users to access over 100,000 internet radio stations broadcasting in multiple countries around the world.

The High Court held that T had partially infringed W’s copyright in sound recordings of music when that music was played through T's website and apps from internet radio stations (see “Copyright: infringement of musical copyright”, Bulletin, IP & IT, this issue).

W applied to the court for orders relating to the terms of injunctive relief and the scope of the inquiry as to damages.

Given the scale of T's activities, the case had been managed so that the liability trial was conducted by reference to samples. There were sample sound recordings and sample radio stations, divided into four categories. The total number of sample radio stations considered at trial was less than 40, however T's service involved about 70,000 to 100,000 internet radio stations.

T argued that any relief, injunction or inquiry as to damages, should be limited to the individual sample stations, unless and until there had been a finding about other stations. W argued that the relief should be in general terms.

Decision

The court held that the relief should be in general terms rather than limited to sample radio stations.

Its earlier decision in the main proceedings justified relief in general terms, not limited to the individual samples, because the court had not accepted T's attempt to try to shift responsibility for rights clearance on to others apart from itself.

The court rejected T’s proposal to include a term which provided that the injunction was complied with if T implemented a geo-restriction system which blocked access to the sample stations for a given user based on T's geolocation provider supplying data that the user was located in the UK. T had been found to infringe on a large scale and its approach to rights clearance had been inadequate.

T had tried to draw an analogy between its business and the business of an internet service provider (ISP), but it was not in that position. T’s proposal to set up a notice and takedown regime putting the onus on the rights holder to notify T of unlicensed content would only be appropriate if T had been an ISP, but it was not.

W had applied for a general injunction widely drafted to restrain T from infringing W's copyright. The difficulty with that was that W’s repertoire was not defined. There was a close analogy between this case and the cases brought by collecting societies against defendants such as retailers and public house owners who do not have a licence to play the works in public. 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 of sound recordings. W should also give an undertaking to maintain a searchable database of its repertoire on the internet and to keep it reasonably up to date, and to answer reasonable questions about particular sound recordings. This struck a fair and proportionate balance between the rights of the copyright owners and the position of the infringer.

The court also granted a stay of the final injunction pending appeal because any injunction would be disruptive to T, while W were in the position of licensing their rights.

There was also no justification for limiting the damages inquiry to sample stations.

Comment

The court’s approach in granting injunctive relief in general terms flows from its finding of large scale primary copyright infringement by T. Interestingly, in a manner reminiscent of the approach adopted in FRAND licensing cases, the court offered to assist the parties in coming to an agreement to license the aspects of T's service which the court had found to require one, and required the parties to consider this and report back as to whether they wished to avail themselves of it.

Case: Warner Music UK Ltd and another v TuneIn Inc [2019] EWHC 3374 (Ch).

First published in the January/February issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200