The Football Association Premier League Ltd v Luxton

An EU-law defence to intellectual-property enforcement requires more than proof of an anti-competitive agreement or restriction. The defendant must show a sufficient nexus between exercising the right and the restrictive practice: the right must be the subject, means or result of that practice. A copyright owner’s right to prevent unauthorised public communication is not dependent on whether the decoder card is foreign. Enforcement is not transformed into an unlawful market-partitioning measure where the right applies equally to domestic and foreign domestic cards. Nor is infringement the consequence of an alleged restriction merely because that restriction made a lawful commercial card difficult to obtain; it may only have provided the occasion for unauthorised use. Without an arguable nexus, neither a defence nor a modified compulsory-licence remedy arises.

The Football Association Premier League Limited brought copyright proceedings against Anthony Luxton, the operator of a public house, alleging that he communicated Premier League broadcasts incorporating FAPL’s copyright graphics to the public using a domestic decoder card supplied by a foreign broadcaster.

Mrs Justice Rose granted summary judgment, an injunction and an inquiry as to damages in [2014] EWHC 253 (Ch). Mr Luxton appealed, relying on Articles 56 and 101 TFEU. He argued that alleged restrictions on the supply of foreign commercial decoder cards created a sufficient connection between unlawful anti-competitive arrangements and the infringement, or justified a limited remedy. The central issue was whether either proposed nexus supplied an arguable EU-law defence.

Lord Justice Floyd gave the leading judgment. Lord Justice Tomlinson agreed.

1. Disposition. The appeal was dismissed.
2. Effect of QC Leisure. The joined decision in Football Association Premier League Ltd and others v QC Leisure and others; Murphy v Media Protection Services Ltd [2012] 1 CMLR 29 did not expressly determine defences of this kind. It therefore did not foreclose the arguments, and the Court of Appeal was required to analyse them.
3. Sufficient nexus. A Treaty breach does not by itself make an intellectual-property right unenforceable. Following the analysis in Oracle of America Inc v M-tech Data Ltd [2012] UK ASC 27, drawing on Sirena Srl v Eda Srl [1971] ECR 69 and Keurkoop BV v Nancy Kean Gifts BV [1982] ECR 2853, the relevant question was whether there was a sufficient nexus between exercising the right and the restrictive agreement or practice. The right had to be the subject, means or result of that practice.
4. Nexus 1. FAPL’s copyright right was the right to prevent unauthorised communication to the public. It did not depend on the territorial origin of the decoder card and applied equally to a domestic card issued by Sky. The fact that enforcement against a foreign domestic card was consistent with an alleged policy of market partitioning was insufficient to establish a nexus. The reasoning in Sportswear SpA v Stonestyle Ltd [2006] EWCA Civ 380 and related further-commercialisation authorities did not assist, because those authorities concerned a materially different prima facie right.
5. Nexus 2. Even assuming that alleged arrangements had starved the market of foreign commercial cards, that did not make Mr Luxton’s unauthorised use of a foreign domestic card their consequence. The arrangements provided, at most, the occasion for the infringement. The infringement and its enforcement were therefore not the result of the alleged unlawful arrangements.
6. Relief. In the absence of an arguable nexus, the proposed order requiring payment of the difference between commercial and domestic subscription rates did not arise. It would in substance create a compulsory licence. The possibility of more limited relief was better considered in a case where an arguable nexus existed.

• Court of Appeal (Civil Division) — dismissed Mr Luxton’s appeal.
• High Court of Justice, Chancery Division — Mrs Justice Rose granted FAPL summary judgment, an injunction and an inquiry as to damages in [2014] EWHC 253 (Ch), and refused permission to appeal.