EMI Records (Irl) Ltd and Others v UPC Communications Irl Ltd and Others

JurisdictionIreland
CourtHigh Court
JudgeMr. Justice Brian J. McGovern
Judgment Date12 June 2013
Neutral Citation[2013] IEHC 274
Date12 June 2013

[2013] IEHC 274

THE HIGH COURT

[12381 P/2012]
[No. 225 COM/2012]
EMI Records (Irl) Ltd & Ors v UPC Communications Irl Ltd & Ors
COMMERCIAL

BETWEEN

EMI RECORDS (IRELAND) LIMITED
SONY MUSIC AND ENTERTAINMENT (IRELAND) LIMITED
UNIVERSAL MUSIC IRELAND LIMITED

AND

WARNER MUSIC IRELAND LIMITED
PLAINTIFFS

AND

UPC COMMUNICATIONS IRELAND LIMITED
VODAFONE IRELAND LIMITED
IMAGINE TELECOMMUNICATIONS LIMITED
DIGIWEB LIMITED
HUTCHINSON 3G IRELAND LIMITED
AND BY ORDER OF THE COURT TELEFONICA IRELAND LIMITED
DEFENDANTS

COPYRIGHT & RELATED RIGHTS ACT 2000 S40(5A)

EMI RECORD (IRELAND) LTD & ORS v UPC COMMUNICATIONS IRELAND LTD UNREP MCGOVERN UNREP CHARLETON 11.10.2010 2010/18/4444 2010 IEHC 377

EUROPEAN UNION (COPYRIGHT & RELATED RIGHTS) REGS 2012 SI 59/2012

COPYRIGHT & RELATED RIGHTS ACT 2000 S205(9)

TWENTIETH CENTURY FOX FILM CORP v BRITISH TELECOMS PLC 2012 BUS LR 1461 1528

EMI RECORD (IRELAND) LTD & ORS v BRITISH SKY BROADCASTING LTD 2013 EWHC 379(CH)

EMI RECORD (IRELAND) LTD & ORS v EIRCOM PLC UNREP CHARLETON 24.7.2009 2009/20/4787 4787 2009 IEHC 411

EMI RECORD (IRELAND) LTD & ORS v EIRCOM LTD 2010 4 IR 349

EMI RECORD (IRELAND) LTD & ORS v UPC COMMUNICATIONS IRELAND LTD UNREP 3.5.2013 2013 IEHC 204

NORWICH PHARMACAL CO v CUSTOMS & EXCISE COMMISSIONERS 1974 AC 133

EUROPEAN UNION (COPYRIGHT & RELATED RIGHTS) REGS 2012 SI 59/2012 ART 8.3

UPC TELEKABEL WIEN GMBH v CONSTANTINE FILM VERLEIH GMBH (MUNICH) C-314/12) UNREP OJ 29.6.2012

Intellectual property - Copyright - Neutrality - Injunction - Blocking order - Draft order - Costs - Copyright and Related Rights Act 2000 - European Union (Copyright and Related Rights) Regulations 2012

Facts: These proceedings concerned an application brought by the plaintiffs who were seeking injunctions pursuant to s. 40(5A) of the Copyright and Related Rights Act 2000 (as amended) that required the defendants, who were internet service providers, to block or otherwise disable access by subscribers to the website ‘thepiratebay.org’ (‘the Pirate Bay’) , a file sharing website that gave popular access to a large library of copyright material without the permission of the right holders, as well as any related domain names, IP addresses and URLs. The plaintiffs pointed out that they had brought the same case against the defendants previously in EMI Record (Ireland) Limited and Others v. UPC Communications Ireland Limited [2010] IEHC 377, but the application had been refused by Charleton J due to a lack of a legal foundation. His lordship had however concluded that he would have acceded to such an application if the proper legislation had been in place, something that had materialised with the passing of S.I. No. 59 of 2012, the European Union (Copyright and Related Rights) Regulations 2012 which had inserted s. 40(5A) into the Copyright and Related Rights Act 2000.

The defendants adopted a neutral position in relation to the application, stating that they would abide by any order the court seen fit to make. The plaintiffs and defendants eventually came together and made a draft order, which was submitted to the court for approval.

Held by McGovern J that on consideration of whether it would be appropriate to make injunctions blocking access to the Pirate Bay and its related websites, the jurisprudence and recent case law of Ireland, the United Kingdom and the European Court indicated that such a course of action would indeed be regarded as such. The draft order submitted to the court outlined a protocol to be adopted if the Pirate Bay was to change its location on the internet and which would avoid the need to seek fresh injunctions from the court. This was considered reasonable and proportionate. The court also approved of the parties acceptance to bear the costs of implementation of the blocking of the websites in question in accordance with any order made. As a result of all these reasons, as well as the concluding remarks of Charleton J in EMI Record (Ireland) Limited and Others v. UPC Communications Ireland Limited [2010] IEHC 377, it was held that the making of blocking injunctions in accordance with the draft order was appropriate.

The final issue to be considered was the costs of the proceedings. The plaintiffs had argued that the parties should bear their own costs as the application was necessary and had to be pursued against the defendants due to the statutory regime even though they were not directly responsible for illegal downloading of copyright material. The defendants argued that their costs should be paid by the plaintiffs as they had adopted a largely neutral position to the proceedings and only raised areas of concern when it was legitimate and necessary to do so. In the end, it was held that though the defendants could not be described as wrongdoers, they were conduits for illegal downloading which had caused great financial damage to the plaintiffs. As all parties had achieved some measure of success, it was decided that the appropriate outcome was an order for the parties to bear their own costs. The only distinction to be drawn was the case of the second named defendant. At an early stage of proceedings, the plaintiffs” solicitors had written to that party offering to pay their reasonable costs if they did not actively participate in the proceedings. As the second defendant had adopted a largely neutral position, which had effectively been concluded with the finalisation of the draft order on the 4th February 2013, an order awarding its costs against the plaintiff up to and including the 4th February 2013 was made, with any costs thereafter being borne by the second named defendant.

1

JUDGMENT of Mr. Justice Brian J. McGovern delivered on the 12th day of June, 2013

2

1. This application comes before the court pursuant to s. 40(5A) of the Copyright and Related Rights Act 2000 (as amended), for an injunction requiring the defendants to block or otherwise disable access by their subscribers to the website known as 'The Pirate Bay', and related domain names, IP addresses and URLs listed in the Schedule to the plenary summons, together with such other domain names, IP addresses and URLs as may be reasonably notified as related to main names by the plaintiffs to the defendants from time to time.

3

2. The plaintiffs may loosely be described as recording companies who record and release music and video for sale. In these proceedings, they seek injunctions against the defendants who are internet service providers (ISPs) to prevent a breach of their copyright by third parties illegally downloading material over the internet. The issues arising in this application were considered extensively by Charleton J. in a judgment delivered on 11 th October, 2010, in EMI Record (Ireland) Limited and Others v. UPC Communications Ireland Limited [2010] IEHC 377. The facts in issue in that case were identical to the matter before me. Having considered the matter in great detail, Charleton J. concluded that the legislative basis which would enable him to grant a blocking injunction did not exist in Irish law as it exists in many European jurisdictions. Notwithstanding his having concluded that a blocking injunction in the manner sought was not available in Irish Law, he went on to state at para. 1.34:-

4

"Were it available, I would grant it."

5

3. The lacuna referred in that judgment has been filled by S.I. No. 59 of 2012, the European Union ( Copyright and Related Rights) Regulations 2012 which inserted s. 40(5A) into the Copyright and Related Rights Act 2000 ("the Act"). Section 40(5A) reads as follows:-

6

2 "(5A)(a) The owner of the copyright in work may, in respect of that work, apply to the High Court for an injunction against an intermediary to whom paragraph 3 of Article 8 of the Directive 2001/4/EC of the European Parliament and of the Council of 22 nd May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society applies.

7

(b) In considering an application for an injunction under this subsection, the Court shall have due regard to the rights of any person likely to be affected by virtue of the grant of any such injunction and the Court shall give such direction (including, where appropriate a direction requiring a person to be notified of the application) as the Court considers appropriate in all of the circumstances".

8

4. Section 205 of the Act was amended, by inserting after subsection 9, the following subsection:-

9

2 "(9A)(a) The rightsowner of any right conferred by Parts III and IV may, in respect of that right, apply to the High Court for an injunction against an intermediary to whom paragraph 3 of Article 8 of Directive 2001/29/EC of the European Parliament and of the Council of 22 nd May 2001, on the harmonisation of such aspects of copyright and related rights in the information society applies.

10

(b) In considering an application for an injunction under this subsection, the Court shall have due regard to the rights of any person likely to be affected by virtue of the grant of any such injunction and the Court shall give such directions (including where appropriate, a direction requiring a person to be notified of the application) as the Court considers appropriate in all of the circumstances".

11

5. A draft order and attachments has been provided to the court. This is the fruit of discussions which took place between the plaintiffs and the defendants over...

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4 cases
  • Okolie v The Minister for Justice and Equality
    • Ireland
    • High Court
    • 3 September 2018
    ...the issue of costs in proceeding that have become moot is that applied by MacDermott J in Mansouri v Minister for Justice and Law Reform [2013] IEHC 274, (Unreported, High Court, 29th January, 2013), following Herbert J in S.G. and N.G. v Minister for Justice, Equality and Law Reform & Ors......
  • Lufeyo v The Minister for Justice and Equality
    • Ireland
    • High Court
    • 3 September 2018
    ...the issue of costs in proceeding that have become moot is that applied by MacDermott J in Mansouri v Minister for Justice and Law Reform [2013] IEHC 274, (Unreported, High Court, 29th January, 2013), following Herbert J in S.G. and N.G. v Minister for Justice, Equality and Law Reform & Ors......
  • Union Des Associations Europeennes De Football v Eircom Ltd T/A Eir
    • Ireland
    • High Court
    • 29 September 2020
    ...orders have been made, in particular, EMI v. Eircom [2009] IEHC 411, EMI v. UPC [2010] IEHC 377, EMI v. UPC [2013] IEHC 204, EMI v UPC [2013] IEHC 274 Sony v. UPC, 2 December 2013, unreported, High Court, ex tempore judgment (Kelly J., in respect of the Kickass Torrent (KAT) website), Twent......
  • Sony Music Entertainment (Irl) Ltd and Others v UPC Communications Irl Ltd (No 1)
    • Ireland
    • High Court
    • 27 March 2015
    ...the copyright owned by the recording company." As subsequently found by the High Court in the judgment of McGovern J in EMI v UPC [2013] IEHC 274 such infringements were held to be taking place on the networks of at least 6 ISPs in the State. A similar finding was made by Kelly J in respect......

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