Commander Head's reply regarding our concerns about the City of London Police's Intellectual Property Crime Unit (PIPCU) was thorough, but there were still some unanswered questions. Here is our reply which attempts to refocus on the general overarching issues.
This letter is following Commander Head's reply, dated 24 March 2015.
27 July 2015
Dear Commander Head,
Re: Correspondence re IP Crime Unit
We refer to our letter of 15 September 2014 and your reply of 24 March 2015. We now address issues arising from your answers.
Our concern is that big business is using the police force and police powers in matters that are in fact civil to obtain relief that they would not be granted by civil courts and in circumstances where property is taken without any prior or subsequent hearing and where Freedom of Expression and other rights are in issue and should be given particular regard by virtue of §12(4) of the Human Rights Act 1989 and art. 10 of the European Convention on Human Rights.
These very same concerns have been before the courts in R (Virgin Media Ltd) v Zinga  EWCA Crim 52,  All ER (D) 211 (Jan) (affirming the rule in Hounsham that confidence in the police ought to be maintained by avoiding arrangements that give the impression of preference being afforded to a paying victim of crime). We understand that APCO guidance is shortly to be forthcoming on what arrangements may fall within acceptable boundaries in light of the decision in that case.
We are concerned that vague standards, lack of judicial oversight and over-broad relief and the chilling impact on Freedom of Expression and the rights of others in the domain name suspensions, blacklisting and blocking. At the heart of our concerns is the seizure or taking of property being domain names and websites (the signposts, advertising billboards and shops/shop windows of the internet) without warrants or hearings and often related to content and speech at the sites –squarely implicating Freedom of Expression.
We are concerned that the matters are properly civil and not criminal. Court orders are required before any civil seizures and proper judicial scrutiny of the strength and validity of the claim and the existence of defences. Aside from this, we are concerned that different standards are being applied to intangibles than tangible property.
If properly criminal, it is our opinion that you should comply with procedural and substantive safeguards in the law and get warrants. We refer to the Code of Practice for Searches of Premises by Police Officers and the Seizure of Property found by Police Officers on Persons or Premises.
We are concerned that only experienced trade mark law experts may understand when use of trade marks is legitimate (second hand sales) or descriptive or nominative (such as criticism or parody) and when the origin function of marks is not impacted and so use is not infringing. These principles can very much apply to UGC. Defensible acts now include sales of second hand genuine software. Further, trade mark law considers an activity to be non-commercial when individuals sell/offer unless acting as a business or a seller in the course of trade. Intermediaries such as operators of online marketplaces (not playing an active role) fall within the scope of the hosting exemption in Directive 2000/31 art.14(1).
Recent authorities from the Court of Justice for the European Union (CJEU) have confirmed that embedding and linking to lawful copyright protected materials available online elsewhere is not infringing provided there is no paywall (so no new public) and no new technology involved. See Case C-348/13 BestWater (the embedding online of a work online elsewhere – a video uploaded to YouTube – does not infringe copyright) and Case 466/12 Svensson (same). Even linking to live games is unlikely to infringe (despite a paywall) see Case C-279/13, C More Entertainment AB v Linus Sandberg, (linking and paywall circumvention for live hockey games was not infringing as the live games were not protected by copyright as there was insufficient originality in the work of the camera operator etc. Further, as the games were live they were not on demand within the definition of ‘making available’ in art. 3(2) of the Copyright Directive 2001/29/EC). See also Cases C-403/08 and C-429/08: Football Association Premier League Ltd & others vs QC Leisure & Others / Karen Murphy vs Media Protection Services Ltd (there is no copyright in a football match per se, although other copyright works will be protectable, such as a rights-holders' logo and music).
We wish to therefore draw your attention to the fact that the law has significantly changed since Dramatico Entertainment Limited v British Sky Broadcasting Limited  EWHC 1152 (Ch) and  EWHC 268 (Ch). New statutory exceptions also provide far reaching new rights for the public to quote with attribution, to make copies for personal use and to parody.
In part then our concerns are that this area of law is so complex and fast moving even in a civil context that brute force application of it in a simplistic manner at the behest of large rightsholders is a highly questionable way forward and fraught with risk. In this climate when access to justice has never been so difficult, we are concerned about the ability of individuals and small businesses to protect themselves and their legitimate rights in a timely and meaningful way. The damage to businesses and reputations can be severe and redress difficult and uncertain.
The complaining rightsholders’ rights under 17(2) (Intellectual Property) of the Charter of Fundamental Rights and art.1 of the First Protocol to the European Convention on Human Rights (property) must be balanced against the same 17(2) and art.1 rights of those whose domain names or websites and businesses are impacted or effectively seized/impounded and their art.10 rights and those of customers and subscribers and the public must be considered. That balancing act is difficult even for the courts. While that balance is primarily struck by the provisions of the CDPA 1988, it must be applied in a manner which accommodates Freedom of Expression. When before the courts, where the court is aware from the evidence that the Convention rights of persons other than the parties are engaged, then it is not merely entitled, but obliged, to take them into account. We are concerned that by avoiding the courts, such rights go unaddressed or unconsidered or are disproportionately interfered with. Also in terms of proportionality, we refer by way of example to Twentieth Century Fox Film Corp v British Telecommunications plc (No 2)  EWHC 2714 (Ch), where the following was said of domain name blocking: "..the Studios now accept that the order should refer to IP address re-routing and not IP address blocking. It appears that IP address blocking could lead to "overblocking" of sites or pages that ought not to be blocked." The involvement of the police allows rightsholders to avoid precise and tailored relief in circumstances where the civil courts would not restrain activities in relation to materials in respect of which they own no rights—as noted in Fox v Newzbin  EWHC Civ 608.
We refer you also to the very high threshold for civil joint tortfeasor liability expressed in that case:
“The underlying concept for joint tortfeasance must be that the joint tortfeasor has been so involved in the commission of the tort as to make himself liable for the tort. Unless he has made the infringing act his own, he has not himself committed the tort. That notion seems to us what underlies all the decisions to which we were referred. If there is a common design or concerted action or otherwise a combination to secure the doing of the infringing acts, then each of the combiners has made the act his own and will be liable." from Sabaf SpA v MFI Furniture Centres Ltd  EWCA Civ 976,  RPC 264, the court held at . This and other cases were referred to in L'Oréal v eBay  EWHC 1094,  RPC 21, also cited where Arnold J rejected that claim on the facts, essentially because eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable. It was held that mere (even knowing) assistance or facilitation of the primary infringement is not enough. For the joint tortfeasor to have become so involved in the tort as to make it his own-- he will have induced, incited or persuaded the primary infringer to engage in the infringing act or there will be a common design or concerted action or agreement on a common action to secure the doing of the infringing act.” This is a high standard indeed and real evidence is required. We refer this to you as it may inform you when you consider the appropriate standard for conspiracy in a criminal context.
You will be aware that government tend to be business friendly and wishes to assist creative and intellectual property owning businesses however, the danger is that it helps only some businesses- big ones – incumbents – at the cost of a level playing field for small, new and disruptive businesses.
This is in an era when existing business models are under threat everywhere. The EU courts have countered the sustained campaign of powerful rightsholders to litigate the law into a shape that suits them—with competition law concerns at the very forefront of their reasoning. See C‑236/08 Google France, Google Inc. v Louis Vuitton Malletier (Google does not use any marks in keywords. Consumers understand that they are offered alternatives by keywords and are not confused provided the advertisement enables them to distinguish the advertiser from the mark owner).
We are concerned that by avoiding the civil courts and civil law, competition law is also avoided.
ICANN is an organization famously dominated by business concerns. Fortunately it has no mandate to deal with internet content regulation and does not have the power to legislate speech internationally – including commercial speech. Its policies are also notoriously a race to the bottom and in this country we don’t have the same approach as Saudi Arabia or China to Freedom of Expression. Most registrars cannot – without taking (expensive and specialist) legal advice – determine whether activity is infringing or not and if in doubt may remove legal content. This is chilling and should not be held up as any model.
We also wish to point out that an attempt to revive conversion damages failed in Twentieth Century Fox Film Corporation and others v David Harris and others  EWHC 159(Ch), the court rejected: a proprietary claim to assets, a theft analogy and any resulting trust saying:
“were a constructive trust applied to the entire proceeds from the copyright infringers’ activities, the court considered that this would have a "chilling effect on innovation and creativity." Entrepreneurs would be deterred by even the smallest risk that they might inadvertently breach a third party’s copyright and have to account to the same for all revenue generated from exploitation of the intellectual property. The court considered that trespass, rather than theft, was a more useful analogy in the context of copyright infringement.”
While we have no doubt that the unit is also motivated to act in cases appropriate for conviction, we all know that this process can be fraught when the facts or law are complex.
We hope we can work with you as you refine your approach to this challenging area.
Executive Director, Open Rights Group