United Kingdom Copyright Decisions 2017
Yin Harn Lee 0 1
0 Y. H. Lee (&) School of Law, University of Sheffield , Sheffield , UK
1 Cases Banner Universal Motion Pictures Ltd v. Endemol Shine Group Ltd  EWHC 2600 (Ch); Cartier International AG v. British Sky Broadcasting Ltd  EWHC 3354 (Ch);  EWCA Civ 658; Fixtures Marketing Ltd v. Organismos Prognostikon Agonon Podosfairou C-444/12; Football Association Premier League Ltd v. British Communications plc  EWHC 480 (Ch); Football Association Premier League Ltd v. British Sky Broadcasting Ltd  EWHC 2058 (Ch); Football Dataco Ltd v. Brittens Pools Ltd  EWHC 841 (Ch); Football Dataco Ltd v. Sportradar GmbH  EWCA Civ 27; Green v. Broadcasting Corporation of New Zealand  RPC 700; GS Media BV v. Sanoma Media Netherlands BV C-160/15; Infopaq International A/S v. Danske Dagblades Forening C-5/08; ITV Broadcasting Ltd v. TV Catchup Ltd C-607/11; Martin v. Kogan  EWHC 2927 (IPEC); Nova Productions Ltd v. Mazooma Games Ltd  EWHC 24 (Ch); R v. Evans  EWCA Crim 139; SAS Institute Inc v. World Programming Ltd  EWHC 69 (Ch); Scarlet Extended SA v. Socie ́te ́ Belge des Auteurs, Compositeurs et E
This report highlights the main UK copyright decisions in 2017, which relate to the copyright protection of dramatic formats, the subsistence of copyright and sui generis database right in a database, joint authorship, blocking injunctions, and the sentencing in the context of copyright-related offences.
Authorship; Blocking orders; Communication to the public; Copyright; Database right; Dramatic works; Sentencing
Technomed Ltd v. Bluecrest Health Screening Ltd  EWHC 2142 (Ch); Ukulele
Orchestra of Great Britain v. Erwin Clausen & Yellow Promotion GmbH & Co Kg (t/a
the United Kingdom Ukulele Orchestra)  EWHC 1772 (IPEC); UPC Telekabel
Wien GmbH v. Constantin Film Verleih GmbH C-314/12.
1 Dramatic Formats
2017 was once again a year of fairly routine copyright jurisprudence from the UK
courts, though there were a number of decisions that shed further light on several
ongoing debates within copyright law. A case in point is Banner Universal Motion
Pictures Ltd v. Endemol Shine Group Ltd,1 where the High Court came closer than any
UK court had previously done to recognising the subsistence of copyright in the
dramatic format of a television programme. In Green v. Broadcasting Corporation of
New Zealand,2 the first case in which the issue was raised, the Privy Council had
denied copyright protection to the format of a talent show, on the ground that the
features said to make up the format lacked ‘‘sufficient unity’’ to be capable of
performance. The requirement of ‘‘sufficient unity’’ was subsequently held to denote a
certain degree of repeatability from performance to performance.3 The question of
copyright in a dramatic format was raised more recently in Ukulele Orchestra of Great
Britain v. Erwin Clausen & Yellow Promotion GmbH & Co Kg (t/a the United
Kingdom Ukulele Orchestra).4 In that case, while HH Judge Hacon did not dismiss the
possibility that copyright might subsist in a dramatic format, no such copyright was
found on the facts, as the wide range of possible alternative performances meant that
the claimed work lacked unity. In Banner Universal Motion Pictures, Snowden J laid
down two minimum requirements that must be met for copyright to subsist in a
dramatic format: (i) there must be a number of clearly identified features that, taken
together, distinguish the format in question from others of a similar type; and (ii) those
distinguishing features must be connected with each other in a coherent framework
which can be repeatedly applied so as to enable the format to be reproduced in
recognisable form. Again, on the facts of the case, no copyright was held to subsist in
the claimant’s format, which was found to be both unclear and lacking in specifics as
well as distinguishing features. However, the judgment of Snowden J does provide
future claimants with a much clearer idea of how the requirement of ‘‘sufficient unity’’
might be fulfilled than has hitherto been the case.
The case of Technomed Ltd v. Bluecrest Health Screening Ltd,5 meanwhile, raised
questions relating to the subsistence of copyright and the sui generis database right
1  EWHC 2600 (Ch).
2  RPC 700.
3 Nova Productions Ltd v. Mazooma Games Ltd  EWHC 24 (Ch).
4  EWHC 1772 (IPEC).
5  EWHC 2142 (Ch).
in the context of an electrocardiogram (‘‘ECG’’) analysis and reporting system
known as ECG Cloud. David Stone (sitting as a Deputy High Court Judge) began by
holding that the database underlying ECG Cloud was a database within the meaning
of the Database Directive and the Copyright, Designs and Patents Act 1988
(‘‘CDPA’’), as it constituted ‘‘a collection of independent works, data or other
materials arranged in a systematic or methodical way and individually accessible by
electronic or other means’’.6 In particular, he noted that individual data stored in the
database were accessible either by reading the database in the form of a PDF or
accessing it as an electronic spread sheet. He also agreed with counsel for the
claimants that the claimants had invested substantially in the obtaining, verification
and presentation of the contents of the database,7 and had particular regard to the
fact that the database featured a feedback tool that enabled cardiologists to review
and edit various aspects of the relevant data. In doing so, he rejected the submission
of counsel for the defendants that there had to be investment directed at preventing
the extraction or re-utilisation of the contents of the database, holding that there was
no basis for this requirement in the applicable legislation or case law. For these
reasons, sui generis database right was held to subsist in the claimants’ database,
and the defendants’ repeated and systematic extraction of the database contents for
the purpose of producing patient reports was held to be an infringement of the
On the issue of whether copyright also subsisted in the claimants’ database, the
judge referred to both the traditional ‘‘labour, skill and judgment’’ test of originality
under UK law and the test of ‘‘author’s own intellectual creation’’ set out in Infopaq
International A/S v. Danske Dagblades Forening.8 He described Infopaq as
imposing a ‘‘low hurdle’’, but ultimately concluded that there was no need for him
to resolve any debate as to whether the Infopaq test was different to or higher than
the test of ‘‘labour, skill and judgment’’, as the claimants’ database satisfied both
tests. In arriving at this conclusion, he applied the four-step test for database
copyright set out in Football Dataco Ltd v. Britten Pools Ltd,9 which requires the
judicial decision-maker to first isolate those aspects of the database which can
properly be regarded as the selection and arrangement of data and then to determine
whether the work of selection and arrangement constitutes the author’s own
intellectual creation. On the facts, it was found that considerable intellectual effort
and creativity had been expended in choosing and arranging the contents of the
database. This included the selection of the physical characteristics relevant to
ECGs, the linking of these characteristics together with options for indicating how
they manifested in ECG readings, and the arrangement of these elements in a
structured format that would attach to the relevant option a selected risk status
indicator and explanatory text aimed at providing further information to patients.
6 Database Directive, Art. 1(2); CDPA, Sec. 3A(1). The court also referred to the cases of Football
Dataco Ltd v. Sportradar GmbH  EWCA Civ 27 and Fixtures Marketing Ltd v. Organismos
Prognostikon Agonon Podosfairou C-444/02.
7 Database Directive, Art. 7.
9  EWHC 841.
Another interesting feature of this case is the judge’s finding that the format of the
data files generated by ECG Cloud was protected by copyright as a literary work.
This was something of a departure from the earlier High Court decision of SAS
Institute Inc v. World Programming Ltd,10 where Arnold J had expressed some
doubt as to whether the format of a data file could be regarded as a work. However,
as both counsel in Technomed had accepted that the data file format in question
could be protected as a literary work provided that it met the originality threshold of
‘‘author’s own intellectual creation’’ (which on the facts it was found to do), this
aspect of the case was not discussed in much detail.
The issue of authorship was raised in the case of Martin v. Kogan,11 which
concerned the screenplay on which the film Florence Foster Jenkins was based. The
claimant here was identified in the film’s credits as the sole author of the screenplay,
and he sought a declaration to that effect. The defendant, who had lived with the
claimant as his partner during the period in which early drafts of the screenplay
were being produced, filed a counterclaim for a declaration that she was the joint
author of the screenplay. The defendant contended that she had either written or
cowritten a number of scenes in the screenplay, and had provided much of the musical
jargon and vocally technical language featured in those scenes.
In his judgment, HH Judge Hacon provided a systematic exposition of the law relating
to authorship in the UK, which he summarised as follows: (i) a party will be a joint author
of a work only where he or she has collaborated in its creation. The process of
collaboration must be by way of a common design, i.e. involving co-operative acts by the
authors; (ii) the contribution of each author must not be distinct from those of the other
authors; (iii) contributions by a putative joint author which form no part of the creation of
the work are to be disregarded; (iv) no distinction is to be drawn between the different
types of contribution – such as whether the contribution is textual or non-textual in nature –
that do form part of the creation of the work; (v) the contribution must be sufficient, and the
question of sufficiency depends on whether the contribution constitutes a substantial part
of the work at issue; (vi) if the contribution were copied by an unauthorised third party and
such copying would result in an infringement of copyright, the contribution would
constitute a substantial part of the work; (vii) the test of substantiality involves a qualitative
as well as a quantitative assessment; (viii) suggestions from a putative joint author as to
how the main author is to exercise his or her skill will not lead to joint authorship where the
main author has the final decision as to the form and content of the work; (ix) it is relevant
but not decisive whether an author is the ultimate arbiter as to the content of the work; and
(x) if joint authorship is established, the court may apportion ownership of the copyright.
On the facts, it was found that the contributions made by the defendant did not rise above
the level of providing some useful technical jargon, helpful comments and some minor
plot suggestions. These contributions were found to be insufficient to qualify her as a joint
10  EWHC 69 (Ch).
11  EWHC 2927 (IPEC).
4 Bocking Injunctions
Football Association Premier League Ltd v. British Communications plc12 is the
latest case arising from the efforts made by the governing body of the Barclays
Premier League (‘‘FAPL’’) to prevent the unauthorised viewing of Premier League
broadcasts through the use of blocking injunctions.13 Here, FAPL sought an
injunction against the six main retail Internet service providers (‘‘ISPs’’) in the UK
to compel them to block – or at least impede – access by their customers to
streaming servers which delivered live streams of Premier League television
footage, pursuant to Sec. 97A of the CDPA. This was the first time such order had
been sought in relation to streaming servers rather than websites, and was a response
to viewers’ increasing use of set-top boxes and mobile device apps – which connect
directly to streaming servers, rather than to specific websites – to access infringing
live streams. Arnold J granted the injunction on the terms sought, which included
the following qualifications: (i) the injunction would have effect only at the times
when live Premier League match footage was being broadcast; (ii) it would have
effect only for a short period of time – i.e. until the end of the current Premier
League season – to enable an assessment of its effectiveness; (iii) the list of servers
to be blocked would be reset every week, allowing new servers to be identified for
blocking by the FAPL but also ensuring that old servers would not continue to be
blocked if they were no longer operating as sources of infringing footage; (iv)
weekly notices would be sent to hosting providers whose servers were subject to
blocking; and (v) hosting providers, operators of websites or streaming services and
customers of the defendant ISPs claiming to be affected by the injunction would
have permission to apply for it to be varied or set aside.
In arriving at this decision, Arnold J engaged in the systematic application of the
legal principles applicable to blocking injunctions. He began by noting that Sec.
97A of the CDPA empowers the High Court to grant an injunction against a service
provider only where that service provider has actual knowledge of another person
using their service to infringe copyright. He then found that both the users and the
operators of the streaming servers infringed FAPL’s copyrights in a number of
ways. In relation to users, it was likely that a user who accessed a streaming server
would cause a substantial part of a work to be copied in the memory of their
computer, mobile device or set-top box, either in a single frame (such as a protected
logo) or across a number of frames (such as an ‘‘appreciable segment’’ of a match).
The operators of these streaming services, meanwhile, were liable for
communicating FAPL’s protected works to the public, as they intervened deliberately and in
full knowledge of the consequences of their actions to give access to those works in
circumstances where the users would not be able to enjoy those works without that
intervention. In explaining this aspect of his decision, Arnold J referred to various
decisions of the CJEU on the scope of the right to communicate a work to the
12  EWHC 480 (Ch).
13 See also Football Association Premier League Ltd v. British Sky Broadcasting Ltd  EWHC
public, including ITV Broadcasting Ltd v. TV Catchup Ltd,14 Svensson v. Retriever
Sverige AB15 and GS Media BV v. Sanoma Media Netherlands BV.16
Arnold J then moved on to consider whether the injunction sought was
proportionate having regard to the competing fundamental rights of those affected
by it, in particular the FAPL’s copyrights on the one hand and the defendant ISPs’
freedom to carry on business and Internet users’ freedom to impart or receive
information on the other.17 He noted, inter alia, that the injunction would not impair
the substance of the defendants’ freedom to carry on business, as it would not
interfere with the defendants’ provision of services to their customers, nor would its
implementation require them to acquire new technology.18 There was also no
suggestion that the implementation of the injunction would be unduly complicated or
costly.19 Internet users’ freedom to impart and receive information would also not be
significantly affected, as the servers were dedicated almost exclusively to the
provision of infringing streams. To the extent that they might be used for the
streaming of lawful content, such content was likely to be very small, and in any
event, interference with any legitimate content would only be temporary due to the
very short duration of each instance of blocking. Arnold J also agreed with FAPL’s
contention that the injunction would be effective and dissuasive20 in reducing the
infringement of FAPL’s copyrights, for, inter alia, the following reasons: (i) there
was evidence to suggest that the blocking of websites would result in a material
reduction in the number of users accessing them; (ii) the blocking of access to
streaming servers was likely to be more effective than the blocking of websites which
embedded or linked to streams from such servers; (iii) monitoring and blocking
techniques had improved considerably since the earlier blocking injunction cases;
(iv) there was reason to hope that blocking access to the streaming servers would help
educate viewers that infringing streams were not a lawful or reliable way to access
Premier League match footage; and (v) despite the prospect that some users or
operators might circumvent any blocking put into place, there was no evidence to
suggest that the likelihood of this would be higher in the present case than in previous
cases. Arnold J also took the view that the availability of other substitute streaming
servers did not detract from the effectiveness of the injunction, citing the opinion of
Advocate General Szpunar in Stichting BREIN v. Ziggo BV21 and both the first
instance and appellate decisions in Cartier International AG v. British Sky
Broadcasting Ltd.22 On this basis, the injunction sought was held to be proportionate.
14 C-607/11; IIC 44(6):725 (2013).
15 C-466/12; IIC 45(4):466 (2014).
16 C-160/15; IIC 48(3):342 (2017), https://doi.org/10.1007/s40319-017-0575-0.
17 See Scarlet Extended SA v. Socie´te´ Belge des Auteurs, Compositeurs et E´ diteurs SCRL (‘‘SABAM’’)
C-70/10; UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH C-314/12.
18 This was reinforced by the fact that five out of the six defendant ISPs positively supported the granting
of the injunction.
19 See Enforcement Directive, Art 3(1).
20 See Enforcement Directive, Art. 3(2).
21 C-610/15; IIC 48(6):731 (2017); https://doi.org/10.1007/s40319-017-0628-4.
22  EWHC 3354 (Ch);  EWCA Civ 658.
Finally, the case of R v. Evans23 lays down a number of guidelines to be followed in
the sentencing of offenders in relation to copyright-related offences. The appellant
here was the administrator of several websites which facilitated access to infringing
material on the Internet by directing users to torrent websites. He pleaded guilty to,
inter alia, the offence of distributing an article infringing copyright pursuant to Sec.
107(1)(e) of the CDPA, and was sentenced to 12 months’ imprisonment. He
appealed against the sentence on the ground that it was excessive, contending that it
failed to give sufficient weight to the fact that he had not been motivated by
financial gain, that he had mental health issues, and that he was of previous good
character and unlikely to reoffend. The Court of Appeal upheld his conviction, and
in doing so laid down the following guidelines relating to sentencing in such cases:
(i) as unlawful downloading and distribution is very often difficult to detect and
investigate, deterrent sentencing is appropriate in such cases; (ii) the length of time
for which the unlawful activity is carried out is highly relevant; (iii) the profit
accruing to the defendant is always relevant; (iv) the loss accruing to copyright
owners and the wider impact upon the creative industries is also relevant, even
though it may be difficult to quantify in financial terms; (v) in some cases, it may be
helpful for the judge to have regard to the Definitive Guidelines issued by the
Sentencing Council on offences relating to fraud, bribery and money laundering;
(vi) personal mitigation, assistance to the authorities and pleas of guilt are to be
taken into account in the usual way; and (vii) unless the unlawful activity is very
amateur, minor or short-lived, an immediate custodial sentence is likely to be
appropriate in the absence of compelling mitigation or other exceptional
Open Access This article is distributed under the terms of the Creative Commons Attribution 4.0
International License (http://creativecommons.org/licenses/by/4.0/), which permits unrestricted use,
distribution, and reproduction in any medium, provided you give appropriate credit to the original
author(s) and the source, provide a link to the Creative Commons license, and indicate if changes were
23  EWCA Crim 139.