Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc

Section 97A of the Copyright, Designs and Patents Act 1988 permits an injunction against an internet service provider where it has actual knowledge of one or more persons using its service to infringe copyright. It is unnecessary to identify a particular infringement, work or infringer, although greater detail strengthens the case for knowledge.

The jurisdiction extends to effective measures preventing further infringements, including blocking or impeding access to an infringing website. A case-specific order requiring an ISP to implement an existing, technically feasible blocking system is not a prohibited general monitoring obligation. The order must remain proportionate, targeted and subject to safeguards for changed circumstances.

The film studios sought an injunction under section 97A of the Copyright, Designs and Patents Act 1988 requiring BT to block or impede access by its subscribers to the Newzbin2 website. The application followed the studios’ successful copyright claim against Newzbin Ltd in Twentieth Century Fox Film Corp v Newzbin Ltd, [2010] EWHC 608 (Ch). Newzbin2 operated in substantially the same manner, but its operators were unidentified and outside the effective reach of the court.

BT accepted that it was a service provider and a mere conduit, but disputed jurisdiction on the grounds that its service was not used to infringe copyright, that it lacked actual knowledge, and that the proposed order would conflict with the E-Commerce Directive, Article 10 of the Convention and principles of proportionality. The central issues were the meaning of actual knowledge and the permissible scope of an injunction against an intermediary.

1. Jurisdiction. The application was granted substantially in the form sought. BT’s subscribers used both Newzbin2 and BT’s service to infringe copyright. The users assembled infringing digital copies from packets received through BT’s network. Following LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten GmbH v Tele2 Telecommunication GmbH, [2009] ECR I-1227, an access provider is an intermediary even where it merely supplies internet access and exercises no control over the accessed service.
2. The Newzbin2 operators also used BT’s service to infringe. Their accessory liability followed from the users’ infringement, and their making available of works enabled users to access them over BT’s network.
3. Actual knowledge. Section 97A requires actual knowledge that one or more persons are using the service to infringe copyright. It does not require knowledge of a specific infringement of a specific work by a specific individual. Knowledge of relevant classes of works, restricted acts and groups of infringers may suffice. BT knew of the facts established in the earlier Newzbin proceedings, the operation and scale of Newzbin2, the involvement of BT subscribers and the receipt of infringing copies through its service.
4. A service provider may acquire actual knowledge through a sufficiently detailed notice and a reasonable opportunity to investigate. The court’s approach was supported by the purpose of Article 8(3) of the Information Society Directive and the role of intermediaries in bringing infringement to an end.
5. Scope and European law. Section 97A permits an injunction directed to preventing further infringements, not merely repetition of the precise infringements known to the provider. The reasoning of the Court of Justice in L’Oréal SA v eBay International AG, [2009] EWHC 1094 (Ch), supported effective and proportionate preventive measures. The order did not contravene Articles 12(1) or 15(1) of the E-Commerce Directive. It required specific, automated blocking of one website, not active monitoring of all customer data.
6. Convention rights and discretion. The order was prescribed by law and proportionate under Article 10 of the Convention. The studios’ property rights outweighed the affected users’ expression rights. The order was narrow, technically feasible, modest in cost and included liberty to apply if circumstances changed. The possibility of circumvention did not make it ineffective; preventing access for only some users would be sufficient.
7. The court declined to require daily identification of individual URLs, which would have been disproportionate and impracticable given the overwhelmingly infringing nature of the website. No reference to the Court of Justice was necessary.