Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

Where the defendant had set up a website that was essentially a copy of an earlier website used to allow users to obtain unlawful copies of copyright work, held that the defendant was liable for infringement of copyright via the second website, and that the plaintiffs were entitled to the same relief against him in respect of the earlier website.

— Twentieth Century Fox Film Corporation & Ors v David Harris & Ors [2014] EWHC 1568 (Ch) (England, High Court, 16 May 2014)

 
Facts

 
The plaintiffs, who are members of the Motion Picture Association of America Inc. (“MPA”), are the owners or exclusive licensees of copyright in many motion pictures and television programmes. The defendants consist of K, the Foundation, MFM, HKB, and 4All (the “corporate defendants”) and Mr. Harris (collectively, the “Defendants”). MPA brought claims against the Defendants for infringement of copyright and unlawful means conspiracy, particularly in relation to Mr. Harris’ allegedly siphoning off funds from Newzbin Ltd (“N”), another company owned by him, thereby thwarting MPA’s ability to recover costs and compensation for the infringement by N of their copyright.

 
The current proceedings stem from two earlier decisions, the “N1” action and the “N2” action.

 
The N1 Action

 
The N1 action was based on N’s operation of a website “Newzbin” that allowed users to obtain unlawful copies of copyright work. The court had found then that N knew that it was making available to its users infringing copies of films and the website was built in such a way as to promote such infringement. It also found that N had encouraged and induced its editors to make reports of films with copyright and assisted premium members to infringe by giving advice through forums.

 
Further, the defendant had profited from the infringement and MPA had been unable to identify particular infringements as the defendant did not keep records of files that had been downloaded. The court had held in that decision that N had engaged in a deliberate course of action while knowing that the materials in the Movies category consisted of work protected by copyright and had infringed copyright by doing the following:

• authorised users to make copies;
• procured users’ acts of infringement (copying) and participated in a common design with users; and
• communicated the copyright works to the public.

 
The court awarded MPA an injunction and damages.

The N2 Action

 
Despite the award of damages in the N1 action, no monies were paid to MPA following the N1 action.

 
On 28 May 2010, a new website (the “N2 website”) which was very similar to the Newzbin website was set up. The N2 website operated at the same domain name as the Newzbin website from servers outside the jurisdiction.

 
MPA alleged that the N2 website operated in the same way as the Newzbin website and thus its operators and users were infringing MPA’s copyright in the same way. MPA brought the N2 action, which was based on section 97A of the 1988 Act, against British Telecommunications (“BT”).

 
Section 97A provides a means of preventing access to a particular website by subscribers of an ISP. MPA sought an order requiring that BT use a blocking technology called “Cleanfeed” to prevent its services from being used by users and operators of the N2 website to infringe MPA’s copyright.

 
The court hearing the N2 action had held that MPA were entitled to the relief sought on grounds that the operators of the N2 website were using BT’s services to infringe MPA’s copyright. The court found that the design and manner of operation of the N2 website was substantially the same as that of the Newzbin website. Content on the N2 website could only be obtained by members who had purchased premium credit and the N2 website had the same categories and sub-categories of content available. The N2 website also had a substantial UK user base, membership fees were payable in pounds sterling, English was the only language, and there were references to UK legislation, much like the Newzbin website. The majority of the content available on the N2 website was commercially available and thus highly likely to be protected by copyright.

 
The Current Proceedings

 
MPA alleged that despite the decision made during the N2 action, the N2 website continued to operate as before, and that Mr. Harris was involved in its operation. Furthermore, K, a company of which Mr. Harris was the sole director, had been receiving payments from subscribers to the N2 website.

 
The present proceedings were served on the Defendants on 26 November 2012.

 
Decision

 
The Court found Mr. Harris liable for infringement of copyright via the N2 website, and that MPA was entitled to the same relief against him in respect of the N1 website.

 
In arguing against the infringing activity of the N2 website, Mr. Harris had pointed to the absence of any “DCMA” or “take-down” notices sent to the N2 website operators by MPA requesting that infringing materials be removed from the website. However, in view of the mass copyright infringements which were taking place on the N2 website, MPA had preferred instead to rely on their remedies under section 97A of the 1988 Act.

 
The Court held that there was overwhelming evidence to show that Mr. Harris was the driving force behind the N2 website and rejected his argument that there was theft of N’s software and of Swedish nationals running the N2 website or that there was an arrangement to lease out the domain name. It found that K had been set up for Harris to receive monies from infringing activity performed via the N2 website. It also found that the N2 website was materially the same as the Newzbin website and had been designed to continue the infringing activities of the N1 website, its predecessor. From the evidence, Mr. Harris was laying the ground such that after the N1 action and winding up of N, the infringing activities would still continue by means of servers based outside the jurisdiction with Mr. Harris running the operation.

 
Our Comments / Analysis

 
Currently, in Singapore, the copyright owner has the option of issuing a notice to network service providers (“NSPs”) requesting they remove the copyrighted material from the network or disable access to users. This is an action that the NSP has to take before it can fall within the safe harbour provision under Singapore’s Copyright Act as a defence against infringement. If the NSP refuses to respond to the take down notice, the copyright owner’s next recourse is to sue the NSP for an injunction to remove the infringing material.

 
The Copyright (Amendment) Act 2014 was recently passed to include provisions similar to section 97A of the UK’s 1988 Copyright Digital Protection Act. The provisions allow both the copyright owner and their exclusive licensee to apply to court for an order requiring the NSP to take reasonable steps to disable access to a flagrantly infringing online location. It is not yet in effect. Once in force, the amendment should assist in providing copyright owners with an avenue through which they can protect their rights through judicial measures.

For further information, please contact:

Chung Nian Lam, Partner, WongPartnership
[email protected]

Jeffrey Lim, Partner, WongPartnership
[email protected]

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