For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 18 January 2012

Free flight to the US? It's dire for O'Dwyer

This Kat has been waiting for months in anticipation for the ruling in the extradition proceedings involving Richard O'Dwyer. As readers of this weblog may recall, Mr O'Dwyer hosted the website TVShack.net, which provided links to unauthorised copies of films and TV shows which visitors could then chose to download (see previous Kat post here). Mr O'Dwyer, arrested on 23 May 2011, was accused of conspiracy to commit copyright infringement and of criminal copyright infringement. He was later released on conditional bail.

The matter came before District Judge Purdy sitting in Westminster Magistrates Court in November 2011 and Judge Purdy made his ruling on Friday 13 January 2012. The decision is available here.


In its complaint, the US Government undertook a thorough analysis of Mr O'Dwyer's activities. At the outset, it alleged that Mr O'Dwyer 'owned and operated a linking website that offered to the public free downloading and/or streaming of thousands of copyrighted movies and television programs, without authorisation from the copyright holders. The original website was named TVShack.net.' As an example of the operation of TVShack.net, the complaint further provided:
'on June 15, 2010, at approximately 1.37 pm, TVShack.net’s homepage listed seven movies as the “Most Popular Movies Today”, all of which were available for downloading or streaming through TVShack.net. Each of them had been viewed thousands or tens of thousands of times by individuals throughout the world, including the United States. As of that date, all seven movies were playing in the theatres, all were copyrighted, and the copyright holders had not authorised the movies for third party distribution over the Internet by TVShack.net or any other website'.
The US Government also made reference to the following sections of TVShack.net:
* 'Site News and Announcements' postings dated 19 April 2010, 4 May 2010 and 7 May 2010, announced that TVShack.net supported links from popular websites which allegedly store illegal copies of movies and TV programs for later downloading or streaming, including DivxDen.com, NovaMov.com and VideoWeed.com.

* 'How to Add a Link to TVShack' under 'Site Help Rules' instructed users on how to add links to additional movies and TV programs. It specifically instructed that 'only full movies and full TV episodes are accepted'.

* 'Frequently Asked Questions' reminded its users about the amount of money that they were saving by viewing the movies and television programs via the TVShack.net website: 'you’re saving quite a lot of money (especially when putting several visits to the theatre or seasons together)'
To give a better understanding of the scale of Mr O'Dwyer's enterprise, the US Government alleged that he received over $230,000 (c £146,000) in payments from advertising and that, according to Alexa.com, 'on or about June 28, 2010, TVShack.net was the 1,779th most popular website in the world and the 1,419th in the United States'.

Mr O'Dwyer denied these allegations. In a witness statement he asserted: 'I am not guilty of these charges. I have not downloaded films, documentaries or programmes onto my server'. He maintained that TVShack 'worked exactly like the Google search engine… (it)…. directed users through the use of searches to websites… at no point was there any infringing material, such as movies or programmes on my server. It just directed users to other websites by providing the link'.

At the hearing before Judge Purdy, counsel for Mr O’Dwyer pursued three identified challenges to an order for extradition:

1. the complaints do not meet the dual criminality requirement of the conduct being, if committed in this jurisdiction, an offence(s) here as well as in the US;

2. it would be “unjust or oppressive” by virtue of the passage of time from the alleged offences to extradite for trial; and,

3. it would be disproportionate to order extradition and thus breach Mr O'Dwyer's Article 8 right in the European Convention on Human Rights (family life).
Dual Criminality: for this Kat, this was arguably the most intriguing aspect of the case. Counsel for the US Government argued that the substantive offence committed by Mr O'Dwyer was contained in s. 107(2A) of the Copyright Designs and Patents Act 1988::
'A person who infringes copyright in a work by communicating the work in public
(a) in the course of business, or
(b) otherwise than in the course of business but to such an extent as to affect prejudicially the owner of the copyright commits an offence if he knows or has reason to believe that, by doing so he is infringing copyright in that work'.
Counsel for Mr O'Dwyer sought to refute this by relying on 'mere conduit' exception as set out in Regulation 17 of the Electronic Commerce (EC Directive) Regulations 2002 and applied at first instance in the Gloucester Crown Court in R v Rock & Overton (2010) (the TV Links case, noted by TorrentFreak here). Counsel also submitted that Mr O'Dwyer did not 'make available' copyright material that came from remote websites.

Counsel for the US Government went very close to arguing that TV Links was wrongly decided. In any event, Counsel sought to distinguish Mr O'Dwyer's behaviour from the restrictive decision in TVLinks. First the TVShack websites were entirely in the hands of Richard O’Dwyer and his co-conspirators, requiring third parties to sign up to TVShack and be vetted before going further. Secondly, unlike TVLinks, there was no attempt to protect copyright, as Mr O'Dwyer knew materials were subject to copyright and actively taunted already-cited efforts in June 2010 to seize TVShack.net.

In a short conclusion, Judge Purdy found in favour of the US Government. He stated:
'To my mind there is much in the distinction factually, always remembering these matters are allegations of conduct which a trial court alone can resolve – that Mr Jones contends between the instant matter and Rock & Overton. I also have in mind the mischief Parliament had in mind. Accordingly in my judgement I am satisfied the conduct alleged in the instant request meets the dual criminality test and would be an offence in this jurisdiction'.
Passage of Time:  On this challenge, Counsel for Mr O'Dwyer claimed that that the proceedings were 'oppressive' due to 'the tactical delay' by the US prosecutors and the inevitable disruption to Mr O'Dwyer's university education if extradited.

Judge Purdy rejected this challenge, stating that he could 'find no tenable basis for holding a fair trial, with all appropriate trial safeguards, cannot take place in the instant case'. Although the prospect of a serious criminal trial abroad is 'obviously alarming' and 'daunting', Judge Purdy added that 'enforcement of cross-border criminal justice is intended, in part at least, to ensure (alleged) victims of crime and the wider public confidence in criminal justice is no thwarted by national borders'.

Article 8 (family life): Reliance was placed by Counsel for Mr O'Dwyer on observations on Article 8 in Bermingham & others v USA [2006] EWHC 200 (Admin) where Laws LJ stated (at [121]) that:
'I do not accept (the US) submission that the possibility of trial in the United Kingdom is legally irrelevant. There might be an instance in which such a possibility could tip the balance of judgement in favour of a conclusion that a Defendant’s extradition would amount to a disproportionate interference with his Article 8 rights.'
Such a finding would not lead to a UK trial but a discharge because Article 8 is breached. Judge Purdy respectfully endorsed the 'very powerful observations' of Lord Phillips, President of the Supreme Court, in Norris v USA [2010] UKSC 9, who disapproved of general considerations but accepted the exceptional circumstances in which Article 8 would lead to a discharge of an otherwise perfectly proper extradition request. His Lordship stated at (at [67]):
'His Lordship said “extradition proceedings should not become the occasion for a debate about the most convenient forum for criminal proceedings … Unless the judge reaches the conclusion that the scales are finely balanced he should not enter into any enquiry as to the possibility of prosecution in this country.'
Judge Purdy rejected Mr O'Dwyer's challenge on this ground: Mr O'Dywer's conduct 'does not demand a trial here if the competent UK authorities decline to act and does, in my judgement, permit one in the USA'.

Judge Purdy's conclusion: Accordingly, Judge Purdy rejected all challenges made on behalf of Mr O'Dwyer to prevent his extradition to the US. He then sent the matter to the Secretary of State (for her consideration of the statutory criteria). He noted that Mr O’Dwyer has the right to pursue an appeal to the High Court but cannot be heard until after the Secretary of State has confirmed an order for extradition.

Reactions: In response, Mr O'Dwyer's mother is quoted in the Telegraph as saying that she was 'very disappointed, in fact disgusted' with the verdict. She also expressed disappointment towards the government 'for signing us up to this treaty which has opened the flood gates to America to come and seize British citizens without even having set foot outside of this country.'

Speaking outside court, Mr O'Dwyer is also quoted in the Telegraph as having 'faith in the High Court in making the right decision' and (perhaps unhelpfully) adding that he did not regret starting the website because it had 'helped him no end' with his studies.

This Kat was looking forward to a more rigorous discussion of the meaning of 'communicating the work in public' in s 107(2A). She notes that the Copyright and Trade Mark Enforcement Notebook for Trading Standards Officers prepared by the Federation Against Copyright Theft (FACT, whose self-stated 'primary purpose is to protect the United Kingdom’s film and broadcasting industry'), available here on the UK Intellectual Property Office (IPO), website states (at 8) that:
The offence in s107(2A) is now available as a tool to trading standards officers to prosecute uploading file sharers of digital product, such as film and music, whether or not they do so in the course of a business.
As such, this understanding from an organisation which is in favour of IP owners is that s. 107(2A) would not cover the encouragement of others to download film and TV program files from third party websites.

The IPKat asks the $64,000 question: what is your understanding of 'communicating the work in public' in the context of s 107(2A)?

Merpel, despite receiving some flack last time for her quaint, old-fashioned preferences, is adamant that she would rather buy the DVD boxed sets of Melrose Place (and now The Good Wife) rather than mess about with all this linking, streaming and downloading malarky ...

11 comments:

Anonymous said...

Thank you for providing the tvshack.net weblink. I hope this does not mean the Kats will also be incarcerated.

Howard Knopf said...

Dear Cat the IPKat:

Thank you for this very helpful analysis.

Perhaps some Canadian developments in the Supreme Court of Canada (“SCC”) are of potential interest in the UK.

The SCC recently held in a defamation case that merely providing a link to a defamatory article is not publication or communication of the content of the site being linked to. See: Crookes v. Newton:

"...I would conclude that a hyperlink, by itself, should never be seen as “publication” of the content to which it refers." (para. 14)

"Hyperlinks thus share the same relationship with the content to which they refer as do references. Both communicate that something exists, but do not, by themselves, communicate its content. And they both require some act on the part of a third party before he or she gains access to the content. The fact that access to that content is far easier with hyperlinks than with footnotes does not change the reality that a hyperlink, by itself, is content neutral — it expresses no opinion, nor does it have any control over, the content to which it refers." (para. 30)

http://scc.lexum.org/en/2011/2011scc47/2011scc47.pdf

Here is my brief blog about this case when it came out on October 19, 2011:

http://excesscopyright.blogspot.com/2011/10/crookes-v-newton-hyperlinking-is-not.html

The very meaning of “communication” in copyright law is now being considered by the Supreme Court of Canada in ESA v. SOCAN. Here is a link to the factums (briefs), webcast, etc. of this case. The case was argued on December 6, 2011 and is now under reserve.

http://www.scc-csc.gc.ca/case-dossier/cms-sgd/sum-som-eng.aspx?cas=33921

Howard Knopf said...

I should also add that the meaning of "public" in the phrase "communicate the work to the public by telecommunication" is also being considered and is under reserve by the SCC in the companion case to the one I just mentioned that was argued on December 6, 2011 of Rogers v. SOCAN

http://www.scc-csc.gc.ca/case-dossier/cms-sgd/fac-mem-eng.aspx?cas=33922

Anonymous said...

So does this mean that this link to the Archive of TVshack.net is alos a breach ? The archive holds LOTS of pages http://web.archive.org/web/20090602170918/http://tvshack.net/

Anonymous said...

How does the territoriality of copyright fit with the dual criminality requirement? The Extradition Act says "if committed in the UK". Well Mr O'Dwyer was in the UK so there is no if about it. But section 107(2A) is only concerned with infringement of UK copyrights, whereas one assumes that the US complaint concerns infringement of US copyrights. or does US criminal law go so far as to make an offence for a UK citizen to infringe UK copyrights in the UK?

Anonymous said...

The link http://web.archive.org/web/20090602170918/http://tvshack.net/

Which I posted earlier, will work tomorrow as Archive.org are down today to protest the SOPA and PIPA Acts

Andy J said...

The problem with this case is with the process, rather than the facts (or lack of them). The Extradition Act 2003 does not require the judge in an extradition hearing to examine the prima facie evidence to establish the offences (which of course must be offences within the UK law as well as that of the country requesting the extradition) stated in the warrant. In other words if the (US) court which issues the warrant has failed to adequately establish a prima facie case (or probable cause in US parlance) but nevertheless issues a valid warrant, the UK extradition court has no business in looking into that matter. All the UK court can do is satisfy itself on other grounds (for example that of identity, the validity of the warrant, and that the offence which it is alleged has been committeed is an offence under UK law). Thus whether or not O'Dwyer's activities amounted to communicating to the public contrary to s 107 (2A) is not relevant; that is a matter for the US court to decide. Similarly no evidence was adduced to support the conspiracy charge. If O'Dwyer has not committed a criminal act per s 1707(2A) then there can be no conspiracy because conspiracy has revolve around a crimimal act, and not a civil one. The catch 22 is that because the first cannot be tested, the second charge of conspiracy must stand.
None of this would be at issue, I suggest, if s 19B of the Extradition Act, introduced by the Police and Justice Act 2006, was in force. This section says, in essence, extradition should be barred if "a significant part of the conduct alleged to constitute the extradition offence is conduct in the United Kingdom", which would appear to be manifestly the case here. Quite why the amendment has not been brought into force is something only the previous and current governments can answer. Parliament wished this amendment to be enacted, but the Executive has failed to do so for the past 5 years.

JH said...

@Andy J: Not quite so fast.

As you write, the extradition judge has to assess whether what is alleged is a criminal offence under UK law. In this case, particular facts have been alleged by the U.S. authorities; but it is a very real question as to whether those can constitute an offence under s. 107(2A). This is what appears to be rather dubious, and is a very real question to analyse.

It seems to me that, because the U.S. offence is not necessarily exactly congruent to the UK one, this is something the UK courts have to analyse, to establish whether there is dual criminality.

One reference that may be useful, that I posted previously in a comment on the 1709 blog, is the first Newzbin case [2010] EWHC 608 (Ch) before Mr Justice Kitchin, which analyses "communication to the public" at length at paragraphs 113 to 125. Kitchin J goes out of his way to establish that Newzbin did not "simply provide a link to a film of interest which is made available by a third party".

As Judge Purdy's decision was apparently based on his view of "the mischief Parliament had in mind", it might also be useful to turn to the Explanatory Note to the SI which defines "communication to the public" as "electronic transmission, including digital broadcasting and “on-demand” services".

The conspiracy allegation is a further question, which appears not to be discussed at all in the judgment. Here the question is not whether what O'Dwyer did himself was criminal under s.107(2A), but whether he should be considered to be acting in concert with others who committed a criminal act under s.107(2A).

However, a conspiracy usually requires an actual agreement between the conspiring partners, something of which (as far as we know, since this count was not discussed at all in the judgement) no allegation was made.

JH said...

more @ AndyJ:

There does seem to be a problem, having got hold of a defendant on the basis of allegations of something that would be an offence in the UK, if the prosecuting authorities in the United States were then to build a trial case on a basis that would not indicate a criminal offence in the UK.

I understand that some jurisdictions, if they do extradite citizens, require quite narrow undertakings as to what they can subsequently be prosecuted with. I am not sure whether the UK is one of them; in particular if the scope of the US offence is not quite the same as the scope of the UK offence.

As to the proposal to bar extradition "if a significant part of the conduct alleged to constitute the extradition offence is conduct in the United Kingdom", that would indeed seem to have quite a lot to be said for it. (Some countries -- and not just basket cases like Russia -- still require all trials of their own citizens to be held on their own soil).

Tim Jackson said...

To JH:

I agree that the Newzbin case is very relevant to the issue of whether Mr O'Dwyer communicated the works to the public. It's interesting that Mr O'Dwyer makes the same claim as the Newzbin defendants: that his service was providing links "just like Google".

The reason why Newzbin wasn't just like Google is because it was doing more than simply passively providing links. It was actively providing a technical and editorial indexing system. This enabled a user to just press a button in order to piece together all the components of a film, which had been split into hundreds or thousands of separate Usenet messages.

And Newzbin was also encouraging its members to act as editors, to create the 'NZB' files at the heart of that indexing system.

If I understand correctly, it seems to me that Mr O'Dwyer's actions lie somewhere between Newzbin and Google. Presumably his website wasn't actively providing a technical means to enable lots of film components to be pieced together. But neither was it entirely passive: he was actively encouraging members to upload links to sources from which films could be illegally downloaded.

It seems to me that whether this is enough to amount to "communication to the public" and thus infringes copyright is an undecided legal question. It really needs consideration by a patents judge, who would be competent both technically and in copyright law.

By the way, in Newzbin, Kitchin J referred to EU Directive 2001/29 and to an ECJ decision. From these he concluded that "communication to the public must be interpreted broadly". This is relevant to the "mischief Parliament had in mind" when it enacted the SI implementing that Directive.

Tim Jackson said...

To Anonymous at 6:34:00 PM (18 Jan):

I'm not sure the territoriality of copyright would help Mr O'Dwyer.

The issue under the Extradition Act is whether his conduct would constitute an offence if committed in the UK. Conduct such as communicating a work to the public could still constitute a UK offence, even if under a UK copyright instead of a US copyright. (Subject, of course, to the legal question of whether Mr O'Dwyer's conduct was indeed communicating works to the public.)

As a hypothetical analogy, suppose that Joe Soap, a UK resident, is accused of committing a murder while on a trip to New York. The US authorities seek his extradition. It's not clear to me that a murder outside the UK jurisdiction would be an offence under UK law (territoriality). But such conduct clearly would be an offence if committed here in the UK. So that's no bar to extradition.

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