Do linking sites infringe copyright?

January 18th, 2012 by Barry Sookman Leave a reply »

A UK judged ruled on Friday that the 23 year operator of the TVShack.net linking website could be extradited to the US to face a trial for alleged criminal copyright infringement. In rendering the decision the UK court made some important findings about the scope of UK copyright law. They included the ruling that organizing and providing hyperlinks to infringing content from a linking website can infringe the making available right.

The accused, Richard O’Dwyer, owned and operated the site that offered to the public free downloading and/or streaming of thousands of copyrighted movies and television programs, without authorization from the copyright holders. His site was hosted at an ISP in the Netherlands. The site, TVShack.net, contained links to third party websites that hosted thousands of movies and television programs from which copyrighted first run and other movies and television programs could be downloaded or streamed. Through his site he encouraged users to add links to infringing content including by giving users a step by step “how to” guide and FAQ.

O’Dwyer did not charge users for access to the site. However, the complaint suggested he earned substantial advertising revenues with over $230.000 in payments from advertising been identified. The site was very popular. According to Alexa.com, TVShack.net was the 1779th most popular website in the world and the 1419th in the United States.

O’Dwyer’s site was shut down when its domain was seized. Not to be deterred, he promptly registered a new domain name, TVShack.cc. This site was allegedly hosted on a server located at an ISP either in Germany or the Netherlands.

The request for O’Dwyer to stand trial in the US required the UK prosecution to prove that the alleged offense would be a crime in the US as well as a comparable offense carrying a minimum of 12 months imprisonment under UK law. The prosecution contended the comparable offence would be a violation of S.107 (2A) of the Copyright, Designs and Patents Act 1988 (the CDPA). This section makes the following a crime:

“A person who infringes copyright in a work by communicating the work in public  (a) in the course of business, or

(b) otherwise than in the course of business but to such an extent as to affect prejudicially the owner of the copyright commits an offence if he knows or has reason to believe that, by doing so  he is infringing copyright in that work”.

Section 20(2) of the CDPA provides that references to communication to the public are to communication to the public by electronic transmission, and in relation to a work include the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. So for the extradition condition to be met it had to be shown that the links accessible from TVShack  made available the files stored on the remote cyberlockers and that the acts of making available would be covered by the territorial scope of the CDPA.

O’Dwyer had argued that the links at his site did not make the content available to the public. Rather, he contended that operators of the cyberlockers made them available. He also argued, relying on an earlier UK case R v Rock & Overton (Crown Court in Gloucester (T20097013) Ticehurst J., on 6th February 2010) and a decision of Tamberlin, J of the Australian Federal Court in Universal Music Australia Pty Ltd v Cooper [2005] FCA 972 affirmed [2006] FCAFC 187 (18 December 2006) that TVShack was an innocent intermediary protected by the conduit exemption in the UK Electronic Commerce (E.C. Directive) Regulations 2002. These arguments were rejected by the Judge who held that O’Dwyer would be criminally liable under the CDPA for making available infringing content from the foreign cyberlocker sites from the TVShack linking site. In so ruling he said the following:

I am grateful to both learned counsel for their original and additional written submissions as well as oral argument. Without, I hope, discourtesy the lengthy submissions come to a comparatively narrow dispute. Mr Cooper argues nothing in the instant Request amounts to a basis for saying Richard O’Dwyer “made available” copyright material that came from remote websites not the two domain names operated by Richard O’Dwyer… Reliance is placed on HHJ Ticehurst’s adopting of Tamberlin, J’s approach in the Australian case of Cooper supra. At para 48 HHJ Ticehurst found “no recordings were actually stored on the defendant’s website” and that, adopting Tamberlin, J’s words “it is the remote websites which make available the sound recordings”, hence his Honour’s upholding of the “mere conduit” defence. Mr Jones… contends S.107 (2A) is properly reflective of Richard O’Dwyer’s conduct which can be distinguished from Rock & Overton. Firstly both TVShack websites were entirely in the hands of Richard O’Dwyer and his co conspirators requiring third parties to sign up to TVShack and be vetted before going further. Secondly he argues, unlike Rock & Overton, there was no attempt to protect copyright, he, Richard O’Dwyer, knew materials were subject to copyright and actively taunted already cited efforts in June 2010 to seize TVShack.net. Accordingly Mr Jones argues (@ para 15 of his written submissions of 31st October 2011) “O’Dwyer would not be able to avail himself of the “mere conduit” defence enumerated in Regulation 17 because he was intimately involved in deciding who was allowed to post links on the TVShack websites, which links would be posted…” (etc) & ( para 16 continues) “… a plain reading of the phrase “make available” in this context makes clear O’Dwyer “made available copyrighted material”. HHJ Ticehurst (@ para 71) in Rock & Overton held “make available should bear its ordinary and natural meaning”. He distinguished between providing money “directly to” another as opposed to a financial adviser who may “point” another to a bank meaning the bank alone “makes available the money”.

I have endeavoured to weigh these subtle distinctions. The diagrams of how as a matter of electronic mechanics (if I may term it) the TVShack websites actually operated favour HHJ Ticehurst’s restrictive construction. To my mind there is much in the distinction factually, always remembering these matters are allegations of conduct which a trial court alone can resolve – that Mr Jones contends between the instant matter and Rock & Overton. I also have in mind the mischief Parliament had in mind. Accordingly in my judgement I am satisfied the conduct alleged in the instant request meets the dual criminality test and would be an offence in this jurisdiction…

This has necessarily been a lengthy ruling given the arguments and material put  forward. A dispassionate appraisal of all matters is the essential function of any court. I acknowledge the endeavours of both learned counsel.  I repeat again all matters have been considered even if not expanded upon or cited directly here.  That said, for the reasons given, I reject all challenges advanced to this Request. No bars or other challenge being raised or found I send the case to the Secretary of State (for her consideration of the statutory criteria) pursuant to  Section 87(3) Ex Act 2003. Richard O’Dwyer has the right to pursue an appeal to the High Court so long as it is submitted in time and in proper form (s 103 Ex Act 2003) but cannot be heard until after the Secretary of State has confirmed an order for extradition.

The liability of linking sites for copyright infringement is being actively litigated in the US.  The U S Seventh Circuit Court of Appeals has an appeal before it in the Flava Works, Inc. v. Gunter. case that is examining whether inline linking can give right to a claim for direct infringement. A District Court judge ruled in the case that inline linking sites can be liable for direct infringement of copyright.

Richard O’Dwyer has the right to appeal the decision to the High Court. He has already announced his intention to do so. It is likely these issues will therefore be dealt with again in the UK by the High Court.

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