Twentieth Century Fox Film Corporation & Anor v Newzbin Ltd

A service which systematically indexes infringing material and supplies the means to obtain complete copies may incur liability beyond that of a passive intermediary. “Authorise” means granting or purporting to grant the right to do the restricted act. Mere enablement, assistance or encouragement is insufficient, but the relevant circumstances may include the relationship between the parties, the means supplied, the supplier’s control and steps taken to prevent infringement.

Joint tortfeasor liability requires involvement sufficient to make the infringement the defendant’s own, including inducement, incitement, persuasion or a common design. Communication to the public includes making copyright works available to a new audience through an interactive service which materially intervenes to provide access. An injunction may be granted against a service provider with actual knowledge, but its scope must correspond to the rights and evidence established.

The claimants, major film producers and distributors, sued the operator of Newzbin, a Usenet indexing website. They alleged that Newzbin authorised, procured and participated in the copying of their films, communicated the films to the public, and was subject to an injunction under section 97A of the Copyright, Designs and Patents Act 1988.

Newzbin indexed binary Usenet content, categorised films, created reports and supplied NZB files which enabled premium members to download and reassemble complete films. The central issues were whether the defendant had authorised or jointly participated in infringement, whether it had communicated the films to the public, and the appropriate scope of injunctive relief.

1. Liability. The claimants established infringement by premium members and proved that the defendant was liable on three cumulative bases: authorisation, procurement and common design, and communication to the public.
2. Authorisation. Applying C.B.S. Songs Ltd v Amstrad Consumer Electronics Plc [1988] 1 A.C. 1013, “authorise” meant granting or purporting to grant the right to perform the restricted act. Mere enablement, assistance or encouragement was insufficient. The court had to consider all relevant circumstances, including the relationship between the parties, whether the material supplied constituted the means of infringement, whether infringement was inevitable, the degree of control retained and preventative steps taken. Newzbin’s paid relationship with members, sophisticated film indexing, editorial assistance, NZB facility, knowledge of infringement and failure to filter or remove infringing material showed that it purported to possess authority to permit copying.
3. Joint tortfeasance. Mere, even knowing, assistance or facilitation did not suffice. The defendant had to induce, incite or persuade the primary infringer, or join a common design or concerted action which made the infringement its own. The defendant’s deliberate design, encouragement of editors, assistance to members, profit and knowledge established procurement and common design.
4. Communication to the public. Section 20 of the Act, implementing Article 3 of Directive 2001/29/EC, was to be understood in light of SGAE v Rafael Hoteles SA Case C-306/05. Newzbin materially intervened to make the films available to a new audience, its premium members, from places and at times individually chosen by them. It was not merely a passive link provider.
5. Relief. The defendant’s conduct was deliberate and flagrantly infringing. The court directed that the enquiry as to damages should consider additional damages under section 97. An injunction by reference to the claimants’ film repertoire was appropriate and necessary. A wider injunction concerning all rights and materials on Usenet was refused because the rights, knowledge and evidential basis were insufficiently defined.