Warner Music Group and Sony Music Entertainment sued TuneIn claiming that the company infringed their UK copyrights by allowing UK users of TuneIn Radio to stream radio stations from around the world via its website and record music via its Pro app. TuneIn denied infringement. The internet radio company argued that it was merely providing web links to music radio stations that are freely available online and its service is not a transmission or retransmission of content to engage the communication to the public right.
In his High Court judgment in 2019, Birss J (as he then was) analysed the relevant international treaties and EU law on the act of communication to the public and held that TuneIn’s services (website and apps) infringed the claimants’ UK copyright in sound recordings by providing streaming access to music radio stations not licensed in the UK. The judge granted a general injunction against TuneIn. TuneIn appealed.
The England and Wales Court of Appeal handed down its decision today dismissing TuneIn’s grounds of appeal, except for the finding of infringement by the provision of a recording function in its Pro app for UK licensed music radio stations. In his comprehensive judgment, Arnold LJ summarised several CJEU case law/principles on the act of communication to the public and explained why the appellate court should not depart from them in this case (paragraphs 67 - 122).
Sir Geoffrey Vos (the second most senior judge in England and Wales) and Lady Justice Rose agreed with Arnold LJ. In his judgment, Sir Vos explained: “… I regard this as a paradigm case in which it would be inappropriate for the Court of Appeal to exercise its new-found power to depart from retained EU law.”
Sir Vos continued: “[T]he CJEU's approach to the law of infringement of copyright by communication to the public is neither impeding nor restricting the proper development of the law, nor is it leading to results which are unjust or contrary to public policy. It would, therefore, be both unnecessary and undesirable for this court to depart from retained EU law in this case. To do so would create legal uncertainty for no good reason.”
Rose LJ said: “I agree that this is absolutely not a case in which this court should exercise its power to depart from the EU jurisprudence for the reasons given by Arnold LJ and the Master of the Rolls.”
Sir Vos and Rose LJ, however, criticised the inclusion of several CJEU case law and principles in the judgment. Rose LJ explained: “It would be better, in my judgment, to avoid restating the CJEU's principles in domestic judgments where they are not strictly on point since it creates a risk of confusing the status of such principles in our domestic law. So for example, in this rapidly evolving area of the law, it is entirely possible that a future judgment of the CJEU will revisit what was said in Bezpećnostní about graphic user interfaces."
She continued: "The present appeal does not engage that case law. If the CJEU were to deliver such a judgment, a court or tribunal hearing a future case about such interfaces should not be discouraged from "having regard" to that later CJEU judgment by the fact that this court has stated the law as described in  of Bezpećnostní in this tour d'horizon of the law as it currently stands.”
Sir Vos agreed: “[I]t would, I think, at least very nearly, have been sufficient for this court to have said just that: appeal dismissed on the grounds adumbrated by the judge.... I am not convinced that it is helpful to try to summarise wide-ranging areas of law in numbered principles.... The common law is at its best when cases are decided by the finding of the facts in the particular case and by the application of the law applicable at the relevant time to those facts.
He added: "I am conscious, of course, that what Arnold LJ has done is to summarise principles that he has extracted from 25 cases decided in this area by the CJEU, and that the CJEU is very far from a common law court. But that does not, in my view, affect the principles upon which the Court of Appeal and the High Court in England and Wales should operate. [The] global summaries of the kind attempted here and in Paramount are, in my view, generally better undertaken by academic commentators rather than by judges deciding live cases.”
As Birss J noted in his judgment, this is a “test case” that explored the complex legal and technical issues in online copyright infringement. The case anaylsed legal concepts such as online targeting (due to the territorial nature of IP rights), safe harbour for digital service providers, authorisation and joint tortfeasance.
This judgment made it very clear that the Court of Appeal is not comfortable with a "wholesale departure from EU law" (as Sir Vos noted) on hyperlinking and the act of communication to the public. It also provides helpful guidance on how the appellate court will deal with retained EU law. Time will tell whether a future appellate court or the UK government will depart from the EU case law on this.
Foreign internet radio stations and audio content aggregators such as TuneIn will be worried about the implications of this decision. They will now have to review whether they have appropriate licences and agreements to be available to UK users.
Reacting to the 2019 decision, TuneIn said: "[W]e believe that it is fundamentally bad for freedom of expression on the Internet and cultural diversity. Many have also expressed concern about the broader implications of this decision for search engines and other Internet operators, as well as the risk that it will lead to a territorially segmented Internet."
On the other hand, rights holders will be happy. IFPI, the recording industry body, said: "Today’s decision by the Court of Appeal of England and Wales confirms that TuneIn can only operate with appropriate licences from right holders and therefore cannot continue to blatantly disregard its obligation to ensure that its service is lawful."
In his judgment on injunctive relief, Birss J observed: "...The claimants are willing licensors. The simplest way of avoiding any difficulty for the defendant is to take a licence." We will see if TuneIn and the rights holders can reach an agreement on this.
Lastly, I conclude with some remarks on the slight criticism of the inclusion and review of several CJEU case law in Arnold LJ's judgment.
Sir Vos and Rose LJ were worried about the potential impact on a future court or tribunal, which is understandable. Also, apparently Sir Vos's predecessor was a proponent of short judgments. In her Court of Appeal judgment in 2017, Dame Anne Judith Rafferty wrote: “This is a short form judgment which, with the encouragement of Sir Terence Etherton MR, judges of the Court of Appeal may in future use for appellate decisions in appropriate cases.” A former Court of Appeal IP judge echoed this sentiment. “[A] judgment is not meant to be a thesis,” Sir Robin Jacob said in a recent article titled ‘How to write a legal judgment’.
During the proceedings, it was very clear that Arnold LJ was the only specialist judge on the bench and he knew the academic debates as well as the legal regime on this subject. IP practitioners in the UK and elsewhere are used to reading insightful judgments by English IP judges. Arnold LJ became the leading English IP judge in the past decade because of his detailed judgements on a variety of IP disputes and his activities in the IP community.
Where appropriate, Arnold LJ has demonstrated that he can also write short judgments (for example, see his recent trade mark judgment in UK Gymnastics v British Amateur Gymnastics Association). In this important case, we should commend him for explaining the law and principles on communication to the public. Arnold LJ’s long-established style of writing is unique and admired by many in the IP community. It would be disappointing for him to change it now.
Bird & Bird acted for TuneIn Inc (defendant/appellant), while Wiggin represented Warner Music Group and Sony Music Entertainment (claimants/respondents).
Managing IP recognised the 2019 decision and the firms involved at the EMEA Awards 2020 ceremony.
This was an SEP dispute between Vestel (appellant) and Access Advance and Philips (respondents). After his analysis of the Supreme Court’s judgment in Unwired Planet v Huawei and the jurisdictional regimes under EU and UK law, Lord Justice Birss dismissed Vestel’s appeal. Birss LJ noted:“[T]here is no such thing as a free standing FRAND claim…. [T]he attempt to invoke the court's declaratory jurisdiction has no reasonable prospect of success because it is not based on the existence or non-existence of a legal right.”
EIP represented Vestel Elektronik Sanayi Ve Ticaret and Vestel UK (appellants)
Access Advance and Philips (respondents) were represented by Powell Gilbert and Bristows respectively.
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Legal representatives in the Court of Appeal
Macfarlanes represented SAS Institute, while Keystone Law acted for World Programming
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BomhardIP represented Lego, while KNPZ Rechtsanwälte acted for Delta Sport Handelskontor