Irish ISP was lucky

POSTED BY Rick Shera
12 October 2010

posted in l@w.geek.nz | Intellectual Property | Copyright | Caselaw

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I've just read Justice Charleton's decision in EMI Records (Ireland) Limited & ors v UPC Communications Ireland Limited (2009 No. 5472 P, unrep, 11 October 2010).  TJ McIntyre, who blogs at IT Law in Ireland, has posted a copy of the decision.

As is to be expected, ISPs and those on the minimalist side of the copyright debate are trumpeting it as a victory because the injunction sought by EMI and its fellow recording companies was refused.  And so it is, but I don't think it is the great crack that some are making it out to be. Here's why:

  • As I've noted before, clearly Justice Charleton is very sympathetic to the recording companies and that does not bode well for future cases where His Honour is not as constrained as he was here. For example:

- Here's what he says at para 11 in answer to claims by the recording companies that they are suffering huge losses as a result of infringing file sharing:

I am satisfied these studies are accurate and apply to Ireland.

We know of course that such studies have been critcised repeatedly, including by the US Government Accountability Office in its April 2010 report to US Congress (PDF).

- Worse still, His Honour repeatedly refers to copyright infringement as "stealing" or "theft".

Copyright infringement is not theft in a legal sense.  Now, I'm not as pedantic as some when it comes to colloquial use of those terms by the legally uninformed, but, with respect, it is incorrect for a Judge to run roughshod over the fundamental distinction between civil and criminal wrongdoing in a formal decision.  Interesting to compare this to Justice Cowdroy in the iiNet case, who makes a particular point of decrying the use of the word theft when referring to copyright infringement.

  • EMI and the other recording companies applied for what is called a mandatory injunction requiring UPC to adopt a three strikes graduated response process.  Courts are reluctant to grant mandatory injunctions because it is very difficult to predict what impact they will have on future activities.  Unless they are extraordinarily explicit and narrowly crafted, the Court's fear is that it will forever be faced with applications by the defendant complaining that unforeseen circumstances mean the injunction needs to be varied or by the plaintiff that the injunction has not been properly complied with.  However, it is clear that those problems would not have stopped Justice Charleton.  He was quite prepared to establish such a regime.  The only thing that stopped him - and you can sense his palpable frustration - is the difficulty that the Irish law on which EMI's application was based, didn't allow it.
  • Bascially, section 40(4) of the Copyright and Related Rights Act, 2000 makes an ISP liable if it does not remove infringing material once it knows about it.  But, unlike the DMCA notice and takedown provisions (and their spawn, such as New Zealand's section 92C), the Irish law does not refer to preventing access.  UPC as a mere conduit was not storing so it could not "remove" the material and, since the law was silent on preventing access, therefore no injunction could be granted.  To put it another way, if section 40(4) had also referred to preventing access, Justice Charleton would have imposed a three strikes regime on UPC by mandatory injunction.
  • His Honour goes to great lengths to point out how inadequate this is in comparison to the UK, France and other jurisdictions (no mention of the extensive debate around, and difficulties with, those regimes or the fact that the ACTA debate has effectively seen three strikes debunked on the international stage).  Further, he notes that because of the deficiency, section 40(4) does not comply with applicable European law.  In other words, a clear steer to the Irish legislature that section 40(4) needs to be fixed up.  Legislators don't particularly like being told by Judges their laws are inadequate. Expect to see some action there.
  • So, UPC was lucky that section 40(4) hadn't followed the DMCA notice and takedown template closely enough.
  • It was also lucky that it didn't bow to pressure like Eircom did when faced with similar litigation and agree to a settlement involving voluntarily running a three strikes regime.  Particularly so, because Justice Charleton concluded (at paras 56 and 57) that it would not be any hardship for UPC to implement three strikes:

UPC have presented evidence that their cooperation with a three strikes and then cut off solution, or a diversion solution, or an interruption solution, would be costly and disproportionately difficult. I can accept none of that evidence.... None of the contradicting evidence from UPC establishes in any way that I can accept that any such solution would be disproportionately expensive or burdensome. On the contrary, the basic systems of customer interaction are already in place. The excuses given are empty.

  • But, in my view, these were not not UPC's luckiest breaks.  When I first heard of this case a while back, it sounded almost exactly like the Australian iiNet case, on which I've written before.  Reading UPC, the similarities are even more remarkable. So, I expected to see the same arguments being run by the recording companies - that UPC had authorised infringement by its customers and was therefore liable itself for that infringement.  Had that been the case, Justice Charleton would have had his foundation for the grant of an injunction.  He gave enough hints after all.  Here he is at para 50:

I am not satisfied that the attitude of UPC toward the illegal sharing of copyright material over the internet is either reasonable or fair....It is a dubious encouragement to purchase internet access.

  • Not having seen the pleadings, I can't tell whether the issues was argued but it is certainly not mentioned in the judgement (see para 5).  This confounds me since section 37(2) of the Irish Act contains the same sort of authorisation prohibition as Australia (or New Zealand for that matter).  The Irish Act reads:

(2) The copyright in a work is infringed by a person who without the licence of the copyright owner undertakes, or authorises another to undertake, any of the acts restricted by copyright.

  • Case law on this type of provision has agonised over what is meant by authorisation but all have agreed that encouragement = authorisation.  And here we have Justice Charleton finding, as a matter of fact, UPC provided its customers with "dubious encouragement". Why did the recording companies therefore not argue that UPC was liable because it had authorised the infringements?  If I'm missing something, I'd be grateful if one of my Irish colleagues could steer me in the right direction.
  • If I'm right though, while UPC has been lucky to date, an appeal on this issue in front of a Judge with the same sympathies as Justice Charleton could be a much more difficult proposition.

Oh, and could someone please make sure that their Honours deliberating over the iiNet appeal don't get to see this decision either - don't want them to be getting any wrong ideas.

POSTED BY Rick Shera
12 October 2010

posted in l@w.geek.nzIntellectual PropertyCopyrightCaselaw

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