News Datacom Ltd v Lyons

• Jurisdiction: Ireland
• Judge: Mr. Justice Fergus M. Flood
• Judgment Date: 20 January 1994
• Neutral Citation: [1994] IEHC 1
• Court: High Court
• Docket Number: 1993 No. 8284P
• Date: 20 January 1994

[1994] IEHC 1

THE HIGH COURT

1993 No. 8284P

NEWS DATACOM LTD v. LYONS

BETWEEN

NEWS DATACOM LIMITED, BRITISH SKY BROADCASTING LIMITED, AND SKY TELEVISION PLC

PLAINTIFFS

AND

DAVID LYONS TRADING AS SATELLITE DECODING SYSTEMS, ALTERNATIVELY TRADING AS SATELLITE DECODING SYSTEMS AND COMPANY ALTERNATIVELY TRADING AS SATELLITE SYSTEMS LIMITED ALTERNATIVELY TRADING AS SATELLITE DECODING SYSTEM (1986) AND MARIE MOLLOY

DEFENDANTS

Citations:

COPYRIGHT ACTS 1963–1987

EUROPEAN COMMUNITIES (LEGAL PROTECTION OF COMPUTER PROGRAMMES) REGS 1993 SI 26/93

CAMPUS OIL LTD V MIN FOR INDUSTRY & ENERGY & ORS (NO 2) 1983 IR 88

AMERICAN CINANAMID V ETHICON LTD 1975 AC 396

THRUST CODE LTD & ANOR V WW COMPUTING LTD 1983 FSR 502

Synopsis:

COPYRIGHT

Infringement

Proof - Failure - Computer - Software - Television - Transmission signals scrambled - Decoder operated by insertion of plaintiff's smart card - Defendant selling smart cards which produced same result - (1993/8284 P. - Flood J. - 20/1/94)

|News Datacom Ltd. v. Lyons|

INJUNCTION

Interlocutory

Fair question - Convenience - Balance - Television - Signal - Reception - Plaintiff's signal scrambled - Decoders required to be inserted in television sets - Plaintiff's smart card activated decoder in television set - Card contained complex computer programme based on plaintiff's algorithm - Defendant's alleged infringement of plaintiff's copyright in software used in smart card - European Communities (Legal Protection of Computer Programmes) Regulations, 1993 (S.I. No. 26), arts. 2, 3, 5 - (1993/8284 P. - Flood J. - 20/1/94)

|News Datacom Ltd. v. Lyons|

1 Judgment of Mr. Justice Fergus M. Flood delivered this 20th day of January 1994.

2 This matter comes before the Court by way of Notice of Motion for an Interlocutory Injunction restraining the Defendants and each of them, by themselves their servants or agents or otherwise howsoever from doing the following acts or any of them, namely:-

3 (a) Infringing the Plaintiffs' copyright in its software used in VideoCrypt decoders or Smart Cards ("the Software")

4 (b) Reproducing or making an adaptation of the Software or any substantial part thereof in any material form and in particular by means of decoding cards for the reception of the satellite television channels transmitted by the second and third named Plaintiffs in particular Sky Sports, The Movie Channel, Sky Movies Plus, Sky One, Sky News and Sky Movies Gold.

5 In addition to the foregoing the Plaintiffs' claim, by way of Injunction, further ancillary relief.

6 The first named Plaintiffs claim to be the owner of the copyright in the software.

7 In brief the facts and circumstances which underlie this application are these. British Sky Broadcasting Limited and Sky Television, transmit their television signal in a "scrambled form", so that it cannot be received on a standard television set, but only on a set which has been adapted by being fitted with a decoder which is activated by a "Smart Card". They provide a "Smart Card" to persons who pay an appropriate subscription to them, and who are thus enabled to unscramble the said television signal and to see and hear it.

8 The Smart Card is in fact a computer programme comprising (inter alia) an algorithm, a source code, and an object code. It acts, when placed in the decoder, as a command vehicle, which authorises and activates the decoder to unscramble the encoded television signal which has been transmitted to a satellite, and reflected back by the satellite to the subscriber's television dish. The decoder is a piece of "computer hardware".

9 The Plaintiffs have a facility for altering the computer programme, in particular the algorithm contained in the Smart Card, and do so from time to time. When they do so they have to provide each subscriber with a new and altered Smart Card. The algorithm in such circumstances is totally new.

10 In the Autumn of 1993 the first named Defendant began to market and sell in the Republic a "Smart Card" which was neither produced by, nor, authorised by the Plaintiffs or any of them. It is likewise common case that the Defendants' "Smart Card" when used in a decoder, will unscramble the Plaintiffs' said scrambled television signal and permit the user to see and listen to it.

11 In essence, the Plaintiffs' claim is that the Defendants' Smart Card must contain a copy or at least a part copy of the algorithm and other components of the Plaintiffs' Smart Card. They base this claim on the premises, that the algorithm used is so complex, that it is not within the bounds of probability, that the Defendants' Smart Card could have been produced from any other source, other than direct access to and copying of the Plaintiffs' algorithm and or other elements of the computer programme contained in the Plaintiffs' software.

12 The Plaintiffs' said claim to the complexity of the algorithm giving rise to the said improbability is vehemently, and, unequivocally contested by the Defendants.

13 The statutory basis for the Plaintiffs' claim is to be found in the extension of the Copyright Acts 1963 and 1987 arising from the European Communities (Legal Protection of Computer Programmes) Regulations 1993 S.I. No. 26 of 1993 and in particular the provisions of Clauses 2, 3 and 5 thereof. Clause 3 (1) of the said Regulations provides,

"Subject to paragraph 2 of this Regulation, copyright shall subsist in a computer programme and the Copyrights Act 1963 and 1987, shall apply to every original computer programme as if it were a literary work and the legal protection so afforded shall apply to the expression in any form of a computer programme".

14 It is fundamental to any claim based upon the foregoing that the Plaintiffs must establish that the infringement complained of involves a substantive degree of copying. Clearly, to succeed in the action the Plaintiff must establish as a matter of probability that the "pirate work" contains a substantive degree of copying of the original.

15 In this instance we are dealing with an Interlocutory application and the principles endorsed by the Supreme Court in Campus Oil Limited -v- Minister for Industry and Energy and Others (No. 2) 1983 I.R. at 88 must be applied. The then Chief Justice Mr. Justice O'Higgins said at page...