The Football Assocation Premier League Ltd v Wells & Ors

In proceedings for infringement of an intellectual property right, the court may require the infringer to disclose information identifying persons involved in supplying goods or services used in the infringement where the order is justified and proportionate. Although Article 8 of Directive 2004/48/EC has no direct effect in English law, the court should interpret its statutory jurisdiction under Senior Courts Act 1981, section 37, so far as possible to give effect to the Directive. The jurisdiction may extend the Norwich Pharmacal principle to orders against a wrongdoer, rather than being confined to non-wrongdoers. The order should be directed to dealings connected with identified past infringements, not potential future breaches.

The claimant, which held copyright in graphics associated with Premier League football matches, applied for judgment in default against the owners of a public house. Two matches had been screened there without the claimant’s permission. In addition to declarations, an injunction and consequential relief, the claimant sought an order requiring the defendants to identify third parties who had supplied the equipment or services used to screen the matches.

The defendants did not acknowledge service or appear. The central issue was whether the court had jurisdiction to make the information order against defendants alleged themselves to have infringed copyright, and how the order should be framed.

1. Default judgment. The claim form and application were properly served, no acknowledgement of service was filed, and the claimant was entitled to judgment in default.
2. Scope of the information order. The proposed order was reformulated. It was inappropriate to require information concerning dealings that might enable potential future breaches of the injunction. The order instead required disclosure of dealings known to the defendants with third parties who had supplied the set-top box, decoded card, IPTV box or other goods or services used to screen the two identified matches.
3. Jurisdiction. Norwich Pharmacal relief is conventionally granted as a remedy of last resort against a non-wrongdoer mixed up in wrongdoing, to identify a potential defendant. The present case differed because the defendants were alleged wrongdoers. However, Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC) supported jurisdiction to make a comparable order against a wrongdoer by extending the Norwich Pharmacal jurisdiction in light of Article 8 of Directive 2004/48/EC.
4. Interpretation of domestic law. Article 8 was directed at the type of relief sought. It had no direct effect in English law and had not been implemented there. Following the explanation in Cartier International v British Sky Broadcasting Ltd [2014] EWHC 3354 (Ch), section 37 of the Senior Courts Act 1981 had to be interpreted so far as possible to give effect to the Directive. On that basis, the court accepted that it had jurisdiction and made the revised information order.

This was a first-instance decision. No appellate history was stated in the judgment.