Twentieth Century Fox Film Corporation & Ors v British Telecommunications Plc

An injunction under Article 8(3) of the Information Society Directive and section 97A of the Copyright, Designs and Patents Act 1988 is a final injunction. It is not analogous to an interim injunction or a Norwich Pharmacal disclosure order in every respect.

The intermediary may be required to bear the reasonable costs of implementing an effective and proportionate blocking order. No cross-undertaking in damages or indemnity is ordinarily required. Compliance with the order will generally provide a defence to claims arising from that compliance. The order may cover IP addresses or URLs whose sole or predominant purpose is to facilitate access to the infringing website.

The Studios sought a final injunction requiring BT to block access to the Newzbin2 website under Article 8(3) of the Information Society Directive and section 97A of the Copyright, Designs and Patents Act 1988. The main judgment, [2011] EWHC 1981 (Ch), concluded that an order should be made, leaving the precise form and ancillary terms for further argument.

The second judgment determined the wording and scope of the injunction, including the services to which it applied, future notification of IP addresses and URLs, temporary suspension, implementation costs, cross-undertakings, indemnities and costs of the application.

1. Scope and wording. The injunction was confined to BT services incorporating Cleanfeed, whether Cleanfeed was imposed or optional. It did not extend to BT’s access services or upstream divisions. The appropriate technical description was IP address re-routing, together with DPI-based URL blocking.
2. An order limited to IP addresses or URLs whose “sole purpose” was to provide access to Newzbin2 would be too easily circumvented. The Studios’ formulation, covering an address or URL whose sole or predominant purpose was to enable or facilitate access, struck the appropriate balance. The Studios remained responsible for accurately identifying the addresses and URLs, with disputes capable of being brought before the court.
3. There was no justification for requiring the Studios to seek equivalent injunctions against all relevant ISPs. Article 8(3), recital (59) and section 97A imposed no such obligation. A provision based on an uncertain “reasonable time” and “equivalent injunction” was inappropriate.
4. The costs of implementing the order were to be borne by BT. Although BT was not itself an infringer, it was a commercial intermediary profiting from services used to infringe copyright, and implementation costs could be treated as a cost of carrying on that business. Cost was also relevant to proportionality.
5. The order was a final injunction, not an interim injunction. Accordingly, there was no basis for a cross-undertaking in damages. Nor was an indemnity appropriate. Compliance with a court order would generally prevent contractual claims arising from that compliance, and the evidence did not establish a sufficient basis for indemnifying BT against consequential losses or third-party claims.
6. BT was entitled to temporary suspension of Cleanfeed, or of added IP addresses or URLs, with the Studios’ written consent. In the absence of consent, BT had permission to apply to the court, including on short notice in cases of urgency.
7. The Studios were ordered to pay BT’s costs up to 16 December 2010. BT was ordered to pay the Studios’ costs from 17 December 2010 to 28 July 2011. Each party was to bear its own costs thereafter, with set-off and standard-basis assessment if required.

The judgment followed the main judgment of the High Court (Chancery Division), [2011] EWHC 1981 (Ch) , which concluded that a substantially similar injunction should be made. This judgment settled the precise form of the order and related issues.