Naughty naughty global .XXX infringing website is targeted at the UK

What evidence does the Intellectual Property Enterprise Court (IPEC) take into account when determining whether acts of communication to the public are targeted at the public in the UK?

In Omnibill (Pty) Ltd v Egpsxxx Ltd (in liquidation) and another [2014] EWHC 3762 (IPEC), [2014] All ER (D) 170 (Nov) the claimant company contended that the defendants had infringed its copyright by reproducing its images on the first defendant’s website. The IPEC, in finding for the claimant, held that, on the evidence, the first defendant had been communicating reproductions of the claimant’s artistic works to the public in the UK.

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What was the background to this claim?

The claimant provides escort services in South Africa. The services are advertised via a website which contains a large number of copyright protected, generally pornographic, photographs. Copies of the photographs appeared on a website providing similar and competing services, the Escortgps website, which is a website hosted by the defendants.It was not disputed that copyright in the photographs belonged to the claimant or that copies of the photographs were taken from the claimant’s website and placed onto the Escortgps website. But, it was the defendant’s case that no allegedly infringing acts had taken place in the UK.

What was the main legal issue?

The main issue for the court to determine was whether the Escortgps website or the relevant parts of it had been targeted at the UK and so were communicating reproductions of the claimant’s artistic works to the public in the UK. If this was the case then the first defendant would be found to have infringed the claimant’s copyright under the Copyright Designs and Patents Act 1988, s 20 (CDPA 1988).

What did the court consider when deciding whether the website or the relevant parts of it were targeted at the UK?

The court worked on the basis that the servers which hosted the website were not UK based.

In considering the targeting question, the court considered, by analogy, criteria which the Court of Justice of the European Union (CJEU) has treated as relevant to targeting in the joined cases C-585/08 and C-144/09 Pammer and another v Reederei Karl Schluter GmbH & Co KG and another [2010] All ER (D) 84 (Dec), as follows:

‘The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.’

The court stated that the question of whether a website is targeted at a particular country is a multi-factorial one which depends on all the circumstances. Those circumstances include things which can be inferred from looking at the content on the website itself and elements arising from the nature of the services offered by the website (such as those listed by the CJEU in Pammer). However, the question of targeting is not necessarily decided by looking only at the website, other factors may be taken into account too, such as the number of visitors accessing the website from the UK.

The court also covered the position where only part of a website targets the UK. Many websites are targeted at only one country but where some parts of a website are targeted differently from others, this would be dealt with as a question of fact. The court here referred to its arguments in Thomas Pink v Victoria’s Secret [2014] EWHC 2631 (Ch), [2014] All ER (D) 66 (Aug) which dealt with where pages on Facebook were targeted.

What finding did the IPEC make?

The court found that the first defendant’s Escortgps website and one of its South African sub-domains (the sub domains provided advertisements by individual escorts based in different countries such as South Africa) were communicating reproductions of the claimant’s artistic works to the public in the UK and as a result the first defendant had infringed the claimant’s copyright.

What should lawyers advise their clients.

This type of case is largely decided on its facts. However, the judgment summarises some important factors that lawyers should consider on the question of whether in relation to a globally focussed website, targeting has taken place in the UK:

  1. as well as examining the website’s content (for example the Terms and Conditions) in accordance with the criteria identified in Pammer, lawyers should take into account factors such as the number of visitors accessing the website from the UK—but note mere accessibility on the internet is not enough to prove infringement
  2. where a global website such as the Escortgps site has national sub domains, the Escortgps site and the sub domains should be taken as a whole for the purposes of examining factors such as UK visitor traffic data, and not as a series of separate national sites—this means that UK visitors to the South African sub-domain count as well as UK visitors to the UK sub-domain
  3. copyright infringement may occur where an infringing website is only in part targeted at the UK
  4. just because a website is targeted at one country it does not mean that it is not targeted at another—a website may be targeted at more than one country

All in all the courts appear to be adopting an increasingly sophisticated and multi-layered approach to targeting that offers increased protection to rights holders.

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