Tamiz v Google - the Court of Appeal verdict

The Court of Appeal has delivered its Tamiz v Google judgment on Google’s potential defamation liability for comments posted to a blog hosted on its Blogger platform. 

Although the court ultimately decided that the claim against Google was an abuse of process, the judgment is of most interest for what it said about Google’s position as a publisher at common law and its possible defences as a secondary publisher under the Defamation Act 1996. 

When analysing the decision it is as well to remember that this was a jurisdiction challenge by Google Inc, the US provider of the Blogger platform.  For Google to succeed on the issues under appeal the court would have had to be satisfied that there was no good arguable case against Google – on the face of it a high hurdle. 

At first instance Eady J decided that Google could not be characterised as a publisher at common law, even after being notified of the defamatory statement - so no case could be made against it.  To reverse that decision the Court of Appeal did not have to decide that Google was a publisher, only that there was an arguable case that it was; and then that there was an arguable case that Google was not covered by any available defences.

Eady J’s judgment laid down a bright line precluding defamation liability for at least some types of intermediary.  The position after the Court of Appeal’s decision is fuzzier.   While confirming that pre-notification Google was not a publisher, the Court of Appeal decided that at some point after notification it was arguably a publisher. 

Also arguably, on the facts, Google was not able to avail itself of defences under the 1996 Defamation Act.  The court found it unnecessary to address the possibility of a hosting defence under the ECommerce Directive.

The finding of abuse of process was founded on the short amount of time for which the comments were available in the period after Google could be considered liable as a publisher and before they were removed.  Jurisdiction was declined on that basis. 

So what can we take from the Court of Appeal’s decision?   The three key points are that Google was:

-           Not a publisher pre-notification.

-           Arguably a publisher at some point post-notification

-           Arguably not protected by S1 1996 Act at some point after notification.

Not a publisher pre-notification

Strictly this aspect of the Court of Appeal’s judgment was obiter, since Tamiz’s claim only covered the period after Google was notified of his complaint.  Nevertheless, like Eady J at first instance, the Court of Appeal considered the position pre-notification.

At common law there are two categories of publishers: primary publishers, who are strictly liable for statements they publish; and secondary publishers who, while they still are regarded as having participated in the publication, have at common law an ‘innocent dissemination’ defence available to them.  Someone who merely facilitates publication is not a publisher at all.

The Court of Appeal found that Google’s provision of the Blogger service plainly facilitated publication of the blog and comments.  However its involvement was not such as to make it a primary publisher.  It was not in a position comparable to that of an author, an editor or the corporate proprietor of a newspaper.  Bloggers were plainly independent of Google and did not act in any sense on its behalf or in its name.

The court was less certain that Google’s role was not that of a secondary publisher, expressing itself only ‘very doubtful’ that it was so.   The court’s reasoning on this point on the face of it conflates what one would think should be three separate issues.

●             the degree of involvement necessary to be regarded as a publisher (facilitation versus participation),

●             the distinction between primary and secondary publisher, and

●             the conditions under which a secondary publisher can escape strict liability.

However the same confusion has bedevilled the innocent dissemination cases since at least Vizetelly v Mudie’s Select Library, a century-old case in which Romer LJ and Vaughan Williams LJ got in a tangle about whether innocent dissemination precluded publication or absolved the disseminator from liability for publication.

In any event the Court of Appeal in Tamiz held that the argument that Google was a secondary publisher could get nowhere for the pre-notification period since it could not be said that Google either knew or ought reasonably to have known of the defamatory comments.

Although the Court of Appeal did not address the point directly, there remains a fundamental difficulty in reconciling a finding that Google was not a publisher (whether primary or secondary) with the broad ground on which Morland J considered in 1999 in Godfrey v Demon Internet that Demon Internet was a publisher of Usenet newsgroups hosted by it: that whenever there was a transmission of a defamatory posting from the storage of the defendant's news server, the defendant was a publisher of that posting. 

As I suggested in my commentary on the first instance decision in Tamiz v Google, this looks like the death throes of that aspect of Godfrey v Demon Internet.

A publisher post-notification

At first instance Eady J held that Google was not a publisher even after notification of the existence of a defamatory comment to a blog that it hosted.  He likened Google to the owner of a wall on which people chose to inscribe graffiti, for which the owner was not responsible. 

The Court of Appeal preferred to think of Google as more like the provider of a notice board: one for which, moreover, Google provided a blogger with design tools for his part of the notice board and facilities for displaying advertisements alongside notices; and, according to the Court of Appeal most importantly, Google provided the notice board on terms of its choice and could readily remove or block access to any notice which did not comply with those terms.

As such Google’s blog platform fell within the scope of the reasoning of Byrne v Deane.  In that case from the 1930s an anonymous defamatory notice was affixed to a wall in a golf club and remained there after it was drawn to the attention of the golf club’s secretary.  The golf club proprietor and the secretary were held to have published the notice after notification, on the basis that by failing to remove it they had made themselves responsible for its continuing presence.

The Court of Appeal held that:

“if Google Inc allows defamatory material to remain on a Blogger blog after it has been notified of the presence of that material, it might be inferred to have associated itself with, or to have made itself responsible for, the continued presence of that material on the blog and thereby to have become a publisher of the material.” 

Google argued that the vast difference in scale between the Blogger set-up and the small club-room in Byrne v Deane made such an inference unrealistic and that nobody would view a comment on a blog as something with which Google had associated itself or for which it had made itself responsible by taking no action to remove it after notification of a complaint.

While the court acknowledged that those were matters for argument, they were not decisive in Google’s favour where the court was concerned only with whether there was an arguable case of publication.

One issue that is left uncertain when applying Byrne v Deane is whether it is relevant to consider if the defendant platform has knowledge of the words complained of and their illegality or potential illegality.  Eady J at first instance in Tamiz thought these might be relevant.  The Court of Appeal said that no inference of publication should be drawn until Google had had a reasonable time in which to act to remove the defamatory comments; and that it was arguable that five weeks was sufficiently long for an adverse inference to be drawn against Google. 

However a reasonable time in which to act to remove the defamatory comments is not the same thing as a reasonable time in which to determine actual or potential illegality.  The judgments in Byrne v Deane itself strongly suggest that the trigger is responsibility not for the defamation, but for the continued publication.  There was no suggestion in Byrne v Deane of any need to show that the defendant knew the statement was defamatory or unlawful, or of any grace period in which to determine unlawfulness. 

At any rate a single poem written on a piece of paper stuck a to a golf club wall in August 1935 does seem a shallow foundation on which to construct an entire edifice of answers for a 21^st century internet platform that hosts blogs and associated comments amounting to, according to Eady J. at first instance, half a trillion words and 250,000 new words every minute.

Defence under Section 1 Defamation Act 1996

In the event that it was held to have published the statement Google invoked the statutory ‘secondary publisher’ defence under Section 1 Defamation Act 1996.  This defence has three elements: that the defendant:

(a)  Was not the author, editor or publisher of the statement complained of.  Each of these has specifically defined meanings.  In particular a ‘publisher’ is someone whose business is issuing material to the public.  This is completely different from a publisher at common law as discussed above.

(b)  Took reasonable care in relation to its publication.  This provision creates the notorious ‘Catch 22’: how can one take reasonable care without becoming an editor under S 1(a)?

(c)  Did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.

Eady J had held that Google was not a publisher under these provisions.  The Court of Appeal agreed.  It could not sensibly be said to have “issued” the defamatory comments.  Its involvement was of a kind analogous to the example given in S1(3)(e) of someone who should not be regarded as an author, editor or publisher:

“only involved … as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.” 

Eady J considered that by ‘effective control’ it was likely that the draftsman had in mind effective day-to-day control rather than the possibility of intervention in reliance on a contractual term about the permitted content of a web page. 

These comments may be compared with the rulings of Gray J in MORI v BBC (unreported, 17 June 1999 - not cited by either Eady J or the Court of Appeal) concerning the meaning of ‘effective control’ in the live broadcast exception under S1(3)(d).  Although Eady J’s approach was generally similar, they appear to diverge on the possible relevance of a contractual relationship. 

The Court of Appeal agreed with Eady J.  The existence of a contractual term about the content of blogs was not sufficient to give Google effective control over the person who posted the defamatory comments.

Both Eady J and the Court of Appeal concentrated on S1(3)(e) as the closest analogous example to the Blogger host.  However s1(3)(e) is on the face of it aimed more at transmission-type operations.  Section 1(3)(c), which does not contain a “no effective control” limitation, appears to be more obviously aimed at operations in the nature of hosting.   It applies to any person “only involved … in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form.” 

While the distinction between S1(3)(c) and S1(3)(e) is by no means clear and they may possibly overlap, the focus on S1(3)(e) for a blogging platform is mystifying.

1996 Act defence pre-notification

For the period prior to notification the Court of Appeal agreed with Eady J that Google would if necessary have a defence under S1.  There was no basis for concluding that Google had not taken reasonable care in relation to the publication (S1(1)(b)), or that it knew or had reason to believe that what he did caused or contributed to the publication of a defamatory statement (S1(1)(c)).  

It is noteworthy that in McGrath v Dawkins, a case not discussed by the Court of Appeal, H.H.J. Moloney Q.C. speculated that it might be reasonable for a wholly automated large website such as Amazon to take no pre-publication steps at all in relation to user-submitted book reviews.  That also seems to be the import of the Court of Appeal’s conclusion in Tamiz as regards the pre-notification period.

1996 Act defence post-notification

For the period after notification the Court of Appeal agreed with Eady J that Google had taken reasonable care in relation to the continued publication of the comments.  Unlike in Godfrey v Demon Internet, where Demon Internet had taken no steps at all after notification, Google had passed on the complaint about the comment to the blogger. 

However the Court of Appeal disagreed with Eady J about S1(1)(c).  For the same reasons as applied to its publication analysis under Byrne v Deane the court held that is was arguable that at some point following notification it knew or had reason to believe that its continued hosting of the material in question caused or contributed to the publication of a defamatory statement.  For this reason the court was not satisfied that Google had an unassailable defence under S1 of the 1996 Act. 

This was the approach of H.H.J. Parkes Q.C. in Davison v Habeeb, which the Court of Appeal preferred to that of Eady J at first instance.  

However Davison v Habeeb concerned statements made in posts by the actual blogger, not in comments to the blogger’s posts.  In Tamiz the blogger was itself, as regards comments, an intermediary who had the ability to remove comments.  It is questionable whether, when the blog platform has notified the complaint to a more proximate intermediary, S1(1)(c) should be applied to the underlying blog platform as strictly as when the complaint is made about postings by the blogger himself. 

In any event the Court of Appeal found only that the point on S1(1)(c) was arguable against Google – not that Google would be unable to rely on the defence.

Conclusion

As regards common law publication and Section 1 of the 1996 Act, the upshot of the Court of Appeal’s decision is that for a blog platform to pass a defamation complaint back to the blogger is not necessarily sufficient to avoid liability.  It may still be at risk of becoming a publisher at common law and of being unable to rely on the 1996 Act. 

This leaves the Electronic Commerce Directive, for damages, as potentially a stronger line of defence for a hosting platform.  It has always been thought to be so, because to preclude reliance on the defence requires actual or constructive knowledge not just of the defamatory nature of the statement, but of illegality.  That requires some information about the claim and possible defences (see Bunt v Tilley). 

However the Directive does not provide a complete defence to proceedings, since it does not prevent a claim for an injunction.  A platform that is keen to remove itself completely from initiated proceedings will still, therefore, have an incentive to remove allegedly defamatory material even if it is not fixed with knowledge of illegality.

In search of copyright’s Goldilocks Zone

Banning things rarely produces the results hoped for by the putative suppressors.  Alice Cooper famously sent Mary Whitehouse a bunch of flowers when her complaint about School’s Out being performed on Top of the Pops launched his career into the stratosphere.

Today’s news that the US Republican Study Committee has disowned and pulled a discussion paper on copyright less than 24 hours after issuing it sent this reader, and no doubt many others, rushing to find out what was so terrible that it had to be removed from public gaze. 

Well, it’s a paper somewhat in the Hargreaves mould, though more radical.  Far removed from the ‘copyright is my castle’ school of thought, it emphasises balance and the economic effects of copyright.  Being American it starts from the US Constitution’s recitation that copyright exists not for its own sake, or for the sole benefit of creators, but in order “To promote the Progress of Science and useful Arts”.  It is good to know that a 200 year old revolutionary document can in 2012 still seem dangerously subversive.

The paper’s perspective is unashamedly classical liberal, with its analysis of current copyright legislation from the perspective of whether it is consistent with laissez-faire capitalism (answer an emphatic ‘No’).  In social welfarist UK and Europe that is likely to be a minority concern, illuminating though the discussion is.  It is as if Lord Macaulay had risen from the grave and taken forward his analysis of copyright as a necessary evil to which we must submit for the sake of the good. 

Memorably, the paper invokes the Goldilocks principle.  Just as you can have too little copyright, you can have too much copyright.  The objective is to get it just right – to find the Goldilocks Zone for copyright.  A radical idea indeed.

How tech law principles are starting to mould copyright

This has been a hectic couple of weeks for copyright.  Ten days ago the EU Court of Justice published the UsedSoft decision, which will have us thinking in a completely new way about exhaustion of rights online.  On Thursday this week the Canadian Supreme Court delivered five separate copyright judgments on subjects ranging from fair dealing to communication to the public, each in its separate way reinforcing a more user-centric, less author-centric, approach to copyright. 

The Canadian decisions could have come straight out of the pages of the Hargreaves Review.  They stressed the need in copyright for:

“a balance between promoting the public interest in the encouragement and dissemination of works of the arts and the intellect and obtaining a just reward for the creator”, which requires recognising the “limited nature” of creators’ rights (SOCAN v Bell Canada [2012] SCC 36 at [8], quoting the 2002 SCC case of Théberge.)  

This reflected:

“a move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace … Théberge focused attention instead on the importance copyright plays in promoting the public interest, and emphasized that the dissemination of artistic works is central to developing a robustly cultured and intellectual public domain.”

The Canadian decisions also evince, in common with the ECJ’s UsedSoft decision, a desire to mould copyright in the digital and online area so that it applies in the way that it did (and still does) to physical copies.  “The traditional balance between authors and users should be preserved in the digital environment.” ESA v SOCAN  2012 SCC 34 at [8].

It is by now a commonplace observation that, thanks originally to the accident of technology that both accessing a digital copyright work and any dealings with it require the making of at least transient copies, copyright enjoys greater reach over digital copies than over hard copies. 

This extended ambit gives us the bizarre (to anyone other than techie copyright lawyers) spectacle of courtroom debates over exactly how many fragmentary milliseconds of what kind of copyright works are held in a memory buffer at any given moment (see e.g. FAPL v QC Leisure [2008] EWHC 1411 (Ch) and ITV v TV Catchup [2011] EWHC 1874 (Pat)).

It also gives copyright owners more far-reaching control over online consumer behaviour compared with offline and provides new opportunities to extract royalties.  It was an attempt to double-dip royalties for downloaded online games that provoked the disfavour of the Canadian Supreme Court in ESA v SOCAN.   

Both the ECJ and the SCC kicked back hard against what they perceived as imbalance between hard copy and digital copyright outcomes.  The ECJ strove to achieve ‘functional equivalence’ between a fully paid permanent download and a sale on physical media.  It said that what would otherwise be a communication to the public would be converted into a distribution to the public if a ‘transfer of ownership’ (defined in economic rather than legal terms) had taken place.  The ability to rely on the first sale doctrine in order to acquire second-hand software applied in equivalent situations, regardless of whether the transactions took place on physical media or by download. 

The SCC invoked a similar concept of ‘technological neutrality’ in several of its judgments, two of which together held that the right of communication to the public applied to streaming but not to downloads.  The principle of technological neutrality:

“requires that the Copyright Act apply equally between traditional and more technologically advanced forms of the same media. … In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet.  The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user.” (ESA v SOCAN)

It is, probably, no coincidence that these user-centric decisions were made in cases concerning tariff-setting and an attempt to control further dealings in legitimately purchased items.  In these cases the rightsholders’ positions could easily be portrayed as unmeritorious attempts to reap an advantage from an over-technical application of copyright.  In piracy cases, on the other hand, rightsholders can reckon on a more sympathetic audience for pleas that expansive rights and remedies are required in order to restrain unbridled infringement. 

Tech lawyers have for many years advocated that laws affecting technology should, all other things being equal, be technology neutral and should seek to achieve functional equivalence online and offline.  

As long ago as 1999 the US UETA model law for electronic transactions was based on the notion of achieving functional equivalence between electronic transactions and their paper counterparts. 

Technological neutrality is also a desirable goal, mostly as a guiding principle for drafting legislation.  The drafter should seek a level of generality that will ensure that the legislation does not become out of date or skewed in its effect as technology develops.  While it can be dangerous to elevate technological neutrality to a principle that overrides all other considerations, the Canadian Supreme Court's invocation of the principle was appropriate in order to correct a perceived legislative skew resulting from an unforeseen accident of technology.

Courts have previously shown themselves to be willing to reach outside the four corners of copyright statutes in order to beat copyright into better shape.  We can think of implied licence, non-volitional copying, the fundamental right of freedom of expression, public interest, public benefit, derogation from grant and principles extracted from the Electronic Commerce Directive. 

Now we can add to the list two technology law doctrines, the deployment of which at the highest judicial levels perhaps, along with Hargreaves, heralds a sea change in attitudes to the appropriate scope and function of copyright.

UsedSoft - not just about software?

Tuesday's decision of the EU Court of Justice in UsedSoft has set the software industry aflutter by largely giving the green light to resale of permanent software licences, regardless of whether the original provision of the software was on a physical medium such as CD or DVD or was downloaded, so long as the original purchaser renders its copy unusable. 

The principle applied in UsedSoft is that the original transaction 'exhausts' the rightsowner's ability to control further dealings with the copy.  The Court has held that this even extends to permitting a resale of the bare licence, where the purchaser owner downloads a new copy of the software from the rightsowner's website.  For fuller details of the decision see here.

But buried in the middle of the judgment is what at first sight appears potentially to be an even more radical statement, suggesting that the same principle may apply not just to computer programs but to all copyright works.  At paragraph 52 the Court states: 

"the existence of a transfer of ownership changes an ‘act of communication to the public’ provided for in Article 3 of [the Copyright in the Information Society directive] into an act of distribution referred to in Article 4 of the [Infosoc] directive which, if the conditions in Article 4(2) of the [Infosoc] directive are satisfied, can, like a ‘first sale … of a copy of a program’ referred to in Article 4(2) of [the Software] Directive 2009/24, give rise to exhaustion of the distribution right."

The key statement is that an act of communication to the public 'changes' into an act of distribution if there is a transfer of ownership.  The court said that transfer of ownership includes a download from the internet where the rightsholder has also "conferred, in return for payment of a fee intended to enable him to obtain a remuneration corresponding to the economic value of the copy of the work of which he is the proprietor, a right to use that copy for an unlimited period".

The Infosoc Directive specifically states that an act of communication to the public does not give rise to exhaustion.  But if there is no act of communication to the public because it has changed into an act of distribution, then it would seem that the 'no exhaustion' exception can be sidestepped.

In principle the broad economic test of transfer of ownership applied in UsedSoft could then also be applied to works within the Infosoc Directive, such as music and video.

This could suggest that fully paid-for permanently licensed authorised downloads under the Infosoc Directive, such as of music and video, are capable of being exhausted thus allowing purchasers to transfer them like secondhand CDs or DVDs. The bright line for exhaustion would then seem to be not between physical copies and downloads, but between downloads (when they satisfy the economic value test described above) and streaming or other service-type online offerings.  

However there are some obstacles in the way of applying exhaustion to online downloads of non-computer program works.  First, Recitals (28) and (29) of the Infosoc Directive lean very strongly in favour of a distinction between tangible and non-tangible copies:

“(28) Copyright protection under this Directive includes the exclusive right to control distribution of the work incorporated in a tangible article. The first sale in the Community of the original of a work or copies thereof by the rightholder or with his consent exhausts the right to control resale of that object in the Community. This right should not be exhausted in respect of the original or of copies thereof sold by the rightholder or with his consent outside the Community. …

(29) The question of exhaustion does not arise in the case of services and on-line services in particular. This also applies with regard to a material copy of a work or other subject-matter made by a user of such a service with the consent of the rightholder. Therefore, the same applies to rental and lending of the original and copies of works or other subject-matter which are services by nature. Unlike CD-ROM or CD-I, where the intellectual property is incorporated in a material medium, namely an item of goods, every on-line service is in fact an act which should be subject to authorisation where the copyright or related right so provides.”

This apparent distinction between tangible and non-tangible is reflected in the reference in Article 4(2) of the Infosoc Directive to the distribution right being exhausted on first sale or other transfer of ownership within the EU of an 'object'. 

The Advocate General in his Opinion discussed these provisions of the InfoSoc Directive and concluded that they did not prevent a download being regarded as a distribution capable of being exhausted. If that is right, then UsedSoft could admit of a possibility not mentioned in recitals (28) and (29), that of an online download that is not in the nature of a service.

However applying exhaustion to online non-software would also do violence to the Agreed Statement interpreting Articles 6 and 7 of the WIPO Copyright Treaty, which the Infosoc Directive implements:

"As used in these Articles, the expressions "copies" and "original and copies," being subject to the right of distribution and the right of rental under the said Articles, refer exclusively to fixed copies that can be put into circulation as tangible objects."

Ultimately the Court in UsedSoft based its decision on the narrower ground of the Software Directive being a lex specialis that takes precedence over the lex generalis of the Infosoc Directive.  In doing so it left open, albeit in somewhat sceptical terms, the possibility that the exhaustion of the distribution right under the Infosoc Directive concerns only tangible objects: "even supposing" that to be right "that would not be capable of affecting the interpretation of Article 4(2) of the Software Directive, having regard to the different intention expressed by the European Union legislature in the specific context of that directive".

At a more general level the distinction between tangible and non-tangible is the very distinction that the Court in UsedSoft has rejected in favour of an economic value test.

The Court in UsedSoft did make a distinction between computer programs and works under the Infosoc Directive.  It said:  "The use of a computer program, unlike the use of other works protected by copyright, generally requires its reproduction." 

It is unclear whether the Court meant this to favour or oppose the possible application of exhaustion to non-program downloads.  If anything the implicit lack of need to take account of the reproduction right would suggest that it would be conceptually easier to apply exhaustion. 

However in fact the enjoyment of other works on a computer does, as with computer programs, involve transient reproduction.  So it would seem that in the way that the Court invoked the Article 5(1) 'lawful acquirer' provisions of the Software Directive in Usesoft to bypass the reproduction right, in order to achieve the same result it would have to find a way of doing the same with the Article 5(1) 'lawful use' provisions of the Infosoc Directive.

We can speculate that UsedSoft may open up the path to genuine file-shifting of all sorts of copyright works - not the type of illegitimate file-sharing that multiplies and proliferates infringing copies by uploading to public sites, but person to person transfers where the original purchased copy is deleted: the functional equivalent of passing on second hand CDs or DVDs.  Whether this is the direction that is in fact signposted by UsedSoft will have to await further debate and court rulings.

[Updated 29 June 2013 to include reference to WIPO Copyright Treaty Agreed Statement.]

Socks, shoes and feet – dissecting a copyright analogy

Many, many people have tweeted this video snippet of Canadian Member of Parliament Dean del Mastro on the subject of format shifting.  This is what he said:

“When you purchase something, you purchase it for a specific purpose.   … He’s making the argument that you should be allowed to format shift that piece of copyrighted material, even though you didn’t pay for that right.  That’s what he’s saying Madam Speaker.  …

It’s like going to a clothing store and buying a pair of socks and going back and saying ‘By the way I’ve decided it wasn’t socks that I needed, what I really wanted was shoes.  So I’m just going to take these, I’m going to format shift from socks to shoes and I’m not going to pay anything because it was all for my feet’, Madam Speaker.”

Let’s examine why this is such a poor analogy.

First, there is the hidden premise that a retailer or manufacturer can, as a matter of property rights, restrict the purposes for which a purchaser can use a tangible product. 

You may indeed purchase a product with a specific purpose in mind, or the product may be advertised for a particular purpose.  That will affect the manufacture or retailer’s liability if you suffer injury as a result of using it for a different purpose.  But that does not give either the manufacturer or the retailer the right to prevent you doing so.  The property has passed to the purchaser, who can do what he likes with it.  A right to prohibit use for a particular purpose would have to be created by an express contractual obligation, which might or might not be enforceable.    

Second, even if the initial premise were sound the conclusion does not follow.  His example is patently not about using a purchased product for a different purpose, but instead is about taking a different product that might suit the changed purpose better.  Commenters on the video lost no time in pointing this out:  the socks/shoes/feet analogy was more like having to pay again for:

-         Using the socks as gloves (MrNatums)

-         Buying blue socks and dying them red (ChadEnglishPhD)

-         Buying a hammer and using it as a doorstop (ChadEnglishPhD)

-         Buying a screwdriver to fix some pipes, then using it to fix a PC (Ooabloka)

Third, he has inverted the product and the format.  Changing socks for shoes is like swapping a Lily Allen track for a Beethoven sonata.  That is not format shifting from socks to shoes, it is changing one product for another.  Format shifting is, if we must adopt the analogy, taking one product (either socks or shoes) and swapping it from one foot to another.

None of which gets us much nearer an answer to the question of whether it is appropriate for copyright to include the right to prevent format-shifting, and if not what types of format shifting should be excluded from copyright.  The argument that ‘you are doing something without paying for it’ presupposes that the copyright owner should have the right to prevent it, which is precisely the issue that is up for debate.  The argument assumes the conclusion.  Flaw number four.

What the Defamation Act 2013 means for the internet

[Note: This post has been updated following Royal Assent to the Defamation Bill on 25 April 2013.  The Bill is now the Defamation Act 2013.  Most of the Act is not yet in force.  None of the provisions discussed below will apply to Scotland.  The Act does not apply to Northern Ireland.]

The Defamation Bill Act 2013 published last week after the Queen’s Speech contains four clauses five sections of especial significance for the internet:

-           Clause Section 5: a new defence for website operators in respect of third party posts.  In essence this significantly enhances website operators' protection for posts by identifiable posters; and is also designed to encourage website operators voluntarily to disclose to defamation complainants identity and contact details of the author of an anonymous defamatory post.

-          Clause Section 8: a single publication rule for purpose of time-barring defamation actions.  This will protect internet republications and archives.  Some legislative action in this area was inevitable following the 2009 decision of the European Court of Human Rights in the Times v UK case.

-          Clause Section 9: a forum bar on defamation actions against defendants domiciled outside the EU or EEA, unless of all places in which the statement has been published, England and Wales is clearly the most appropriate place in which to bring an action.  While this is framed as a general restriction on forum-shopping, it will have especial impact on actions founded on the mere accessibility of a foreign internet publication in England and Wales.

-          Clause Section 10: a bar on defamation actions against secondary publishers unless it is not reasonably practicable to proceed against the author, editor (if any) or commercial publisher (if any).  Although mainly presented as a defence for booksellers, this clause will also benefit online intermediaries.

-         [Update] Section 13: the court is empowered, where it gives judgment for the claimant in a defamation action, to order the operator of a website on which the defamatory statement is posted to remove the statement; and to order certain secondary publishers to stop distributing, selling or exhibiting material containing the statement.  This section was introduced during passage of the Bill through Parliament.  The terms of any proposed order against a website would have to be considered in the light of the prohibition in Article 15 of the Electronic Commerce Directive on placing general monitoring obligations on hosting intermediaries.

The most controversial and difficult of these provisions is Clause section 5, which according to the government’s consultation response on the draft Bill was to deliver a greater degree of protection against liability for intermediaries. 

To achieve this aim, the Clause section 5 defence would have to be significantly more attractive to online intermediaries than the defences already provided by S1 of the Defamation Act 1996 and (other than for injunctions) by the conduit, caching and hosting safe harbours under the Electronic Commerce Directive. 

For identifiable posts Clause section 5 does provide significantly greater protection than existing defences, since the defence is not defeated by any degree of knowledge so long as the operator can show that it did not post the statement [Update] and the claimant cannot show that the operator acted with malice in relation to the posting. However this may raise a question (which would also apply to non-identifiable posts) as to when moderation (which under section 5(12) does not of itself defeat the defence) strays from knowledge into participation in posting.

For anonymous or pseudonymous posts, on the face of it Clause Section 5 mostly offers no more than the existing defences, and in some important respects is less attractive.  A proper assessment of the effect of Clause section 5 on anonymous and pseudonymous posts is hindered by the unsatisfactory device of leaving significant elements to be prescribed by secondary legislation.  The clause section reads as if the drafters gave up half way through and punted off the most difficult aspects to a statutory instrument. 

[Update] Despite calls for the government to publish draft regulations during the passage of the Bill, this did not occur.  Indications of the government's thinking can be gleaned from the informal consultation among interested parties conducted by the Ministry of Justice at the start of 2013.

Identifiable posts apart, the most significant increase in protection for online intermediaries is in fact delivered by Clause Section 10, which should make it much more difficult to proceed against online intermediaries rather than the primary perpetrators of the libel.

Apart from its impact on website operators, Clause section 5 is controversial in singling out anonymous and pseudonymous speech for special treatment.  The justification for this is said to be that people who defame others should not be able to hide behind a cloak of anonymity. 

However, taken in isolation this is mere sloganeering.  Any serious policy-making has to take into account the benefits of anonymous and pseudonymous speech, including speech which someone aggrieved (and let’s not forget that libel claimants can be notoriously thin-skinned) may consider to be defamatory, even with the new threshold of ‘serious harm to reputation’.  Anyone who heard Rowan Davies of Mumsnet speak at the Westminster Legal Policy Forum on 15 March 2012 could hardly doubt the value of anonymous speech.

At a detailed level there are more reasons to be concerned about Clause section 5.  Here are some that are immediately apparent.

Effect on common law publication

Clause Section 5 applies where an action for defamation is brought against a website operator in respect of a statement posted on the website.  It provides for a defence where the website operator can show that it did not post the statement on the website.

[Update] Section 5(11), introduced during the passage of the Bill, provides that the defence is defeated if the claimant shows that the website operator has acted with malice in relation to the posting of the statement concerned.  The Explanatory Notes to the Act give the example of where the website operator had incited the poster to make the posting or had otherwise colluded with the poster.

Since the provision is cast as a defence, it presupposes that a website operator would otherwise be at risk of liability for publishing a third party post.  However this is contrary to the trend of the most recent defamation caselaw on liability for publication, namely Tamiz v Google.    

That case (which is understood to be under appeal) held found on appeal that (at least prior to notification of the existence of the defamatory statement) Google was not a publisher of comments to a blog hosted on its Blogger platform.  Not only is someone who is not a publisher in no need of a defence, but a defence reverses the burden of proof.  It is for the claimant to prove that the defendant published the statement, whereas an affirmative defence places the burden on the defendant.

Clause Section 5 shares this vice with S1 of the Defamation Act 1996, which is structured in similar terms and provides a defence for various secondary publishers, some of whom (such as conduits) would almost certainly not have been regarded as publishers at common law.  It is true that no-one to date has argued that the terms of the 1996 Act broadened or should influence the class of those taken to be publishers at common law, but then until Tamiz v Google in the Court of Appeal the recent law in this area had been built almost entirely on claims by litigants in person. 

It would be most unfortunate if the effect of Clause section 5 were to render website operators or other intermediaries potentially liable for publication of statements for which they may currently be able to argue that they are not publishers at common law.  At least it should be have been explicitly stated that Clause Section 5 does not affect any question of whether the defendant has published the statement at common law; and it would do have done no harm to take the opportunity to insert a similar provision in the 1996 Act.  It is doubtful whether Clause 14 Section 15, stating that publish and publication have the meaning they have for the purposes of defamation law generally, is sufficient.

What is a website operator?

Clause Section 5 is silent as to what is meant by a website, or the operator of a website.  This is understandable to an extent, since attempts to define such terms are liable to be overly technology-specific and to create uncertainty through excessive precision (see Professor Chris Reed’s new book Making Laws for Cyberspace for an excellent discussion of these pitfalls).  However the terms ‘website’ and ‘operator’ are themselves hardly models of precision or certainty.

We can think of a core set of examples that will fall within the provision.  A business website with a discussion forum would be one.  A site such as Mumsnet would also be a good candidate.  But what about, say, the Blogger platform considered in Tamiz v Google and Davison v Habeeb?  Is the Blogger platform a website?  Is an individual blog hosted on the platform a website?  If so who is the operator: Google, the blogger, both?  Is Facebook a website?  Is Twitter a website?  Is World of Warcraft a website?  We could go on.  The clause section gives no hint of what the thinking behind the drafting may have been.

[Update]  During the passage of the Bill an amendment was tabled in the House of Lords to replace 'website' with 'electronic platform'. Responding for the government, Lord Ahmad of Wimbledon said on 15 Jan 2013: “The purpose of Clause 5 is to provide a defence to website operators that host third party content over which they exercise no editorial control. ... If in further discussion in Committee or at Report a form of technology is brought to our attention that is akin to a website and serves the same purpose in hosting third-party content, and a suitable form of words can be found adequately to describe that in legislation, the Government are open to considering that point further.” No change was made.

Defeating the defence – inability to identify the poster

The section 5 defence is defeated if the claimant can show three things:

1.       That it was not possible for the claimant to identify the person who posted the statement

2.      The claimant gave the website operator a notice of complaint (containing various specified information); and

3.      The website operator failed to respond to the notice of complaint in accordance with regulations to be made under secondary legislation

So if the claimant is able to identify the person who posted the statement, then the defence cannot be defeated regardless of whether the operator had knowledge of the defamatory or actionable nature of the posting. This is a significant enhancement over existing defences since it avoids website operators being put in the invidious position of acting as judge and jury over third party statements alleged to be defamatory.

[Update]  The introduction of the malice exception in Section 5(11) may render this less of a 'bright line' defence, since there may be room for debate about where the lines are between participation in a post, moderation of posts and malice in relation to a post.

Presumably the inability of the claimant to identify the person posting the statement is to be assessed by reference to the information available on the site, rather than taking into account e.g. the possibility of making a Norwich Pharmacal application against the website operator to ascertain this.  However nothing is said about what constitutes ‘identity’.  Does a pseudonym or an alias qualify?  Or does the clause only bite on anonymous speech?  But what if the identity behind a pseudonym is apparent, to some degree of certainty, from material available elsewhere on the internet?

[Update] Section 5(4), introduced during the passage of the Bill, provides that it is possible for a claimant to 'identify' a person only if the claimant has sufficient information to bring proceedings against the person.

Defeating the defence – notice of complaint

A notice of complaint in respect of a post by a non-identifiable poster has to specify the complainant’s name, specify where on the website the statement was posted and contain such other information as may be specified in regulations (why leave this to secondary legislation?). 

Most importantly, the notice must set out the statement concerned and explain why it is defamatory of the complainant. 

Under Clause section 5 the complainant has only to explain why the statement is defamatory, not why it is actionable.  Actionability brings into play possible defences such as (as reframed under the Bill Act) truth, honest opinion, responsible publication on matters of public interest and so on.  

Since this is a notice to which a website operator has to consider how to respond, why should the notice not be required to address the whole context?  It is unclear why a website operator should potentially be encouraged to reveal identity details or take down a post, even an anonymous post, on the basis of only half the story.

In this respect the provision repeats a feature of the 1996 Act secondary publisher defence, but which is absent in the Electronic Commerce Directive hosting exception which refers to knowledge of illegality. 

On the other hand it appears that prior knowledge of the defamatory or illegal nature of the post would not defeat the Clause section 5 defence, so long as the website did not post the statement (see comments above regarding moderation [and malice]) and upon receipt of a notice complying with the Clause section 5 requirements [or possibly in some cases a non-compliant notice] follows the procedure laid down in Clause section 5 and the regulations.  

[Update] See update comments above regarding the introduction of section 5(11) concerning malice.  The regulation-making powers were expanded during passage of the Bill to allow the regulations to address circumstances in which the website operator receives a notice that does not comply with the specific requirements of a notice of complaint.  This is thought to be so that regulations can 'require' (i.e. as a condition of being able to rely on the defence) a website operator to revert to the giver of the notice and explain what is required for a valid notice.  

Defeating the defence – the website operator’s response

The government consultation response proposed that on receipt of a notice of complaint in respect of a non-identifiable poster, the intermediary would have to contact the author of the material or, if this did not prove possible, take the posting down.  If the matter remained in dispute after an exchange of correspondence, the intermediary would be required to provide details of the author to the complainant, who would then have to sue the author to secure removal of the material and could not pursue an action against the intermediary.

One attraction of this proposal to intermediaries would have been that, having initially acted as a liaison and then having provided identity and contact details to the complainant, the intermediary was out of the picture even if the disputed posting stayed on the website.  The existing defences under the 1996 Act and the Electronic Commerce Directive hosting exemption provide no route to safety other than taking down the allegedly offending material.

However, rather than clearly implement this escape route the Bill Act leaves it to secondary legislation, giving the government an unsettlingly wide range of future options.  The Bill Act merely provides that Regulations may make provision including “as to the action required to be taken by an operator of a website in response to a notice of complaint (which may in particular include action relating to the identity or contact details of the person who posted the statement and action relating to its removal)”.  There is no suggestion here that taking down the posting would occur only if the intermediary could not contact the poster of the material.

Why is a new route to disclosure of identity needed at all?

A troubling aspect of the provisions regarding non-identifiable posts is why, when there is already a widely used judicial route (the Norwich Pharmacal order) to obtaining the identity of anonymous posters of defamatory material, any of this is necessary at all.  The court is uniquely able to balance competing considerations of reputational harm, privacy and freedom of speech.  So, for instance, in Sheffield Wednesday Football Club Ltd and Others v Hargreaves the court refused to order disclosure of identities for posts that it regarded as bordering on the trivial, saloon-bar moanings, or mild abuse, even if arguably defamatory. 

The procedure under Clause Section 5 would, on the face of it, throw this balancing exercise back on website operators, or encourage them to reveal identity and contact details without regard to broader considerations, simply in order to preserve their own liability position.  It is difficult to see how this can serve a wider interest.  It may also not comply with EU law as interpreted in the Promusicae and Bonnier Audio ECJ decisions, even allowing for the generous latitude to Member States granted by those decisions. 

The government consultation response stated that there would “be a need to ensure that appropriate safeguards were in place relating to the releasing of details of the author of the material to the complainant, taking into account concerns such as those expressed by the Committee in relation to whistleblowers.”  None of this is contained in Clause Section 5.  If it is intended to be addressed in secondary legislation, is that the right place to deal with issues of such importance?

What does ‘required’ mean?

As set out above, Clause Section 5 provides that Regulations may make provision as to action ‘required’ to be taken by a website operator in response to a notice of complaint in respect of a non-identifiable poster.   Since this is all in the context of defeating the defence provided by Clause Section 5, it is to be hoped that ‘required’ means no more than ‘required in order for the operator to rely on the defence’.  However [Although] this is not explicitly stated, it does appear from the MoJ informal consultation on the possible content of regulations that .  If the intention is that the only consequence is that the operator be unable to rely on the Clause Section 5 defence, then ‘required’ is ambiguous and should be revisited. 

If the intention is that a website operator should be subject to other sanctions if it does not do what is required, then that should be made explicit so that it can be fully debated and, it is to be hoped, rejected. 

The notion that a website operator could be compelled to disclose third party identity and contact details, or face sanctions for not doing so, merely through receipt of a notice alleging defamation, with no opportunity for a court to review the full circumstances and exercise its discretion, would [have been] be highly controversial and quite likely contrary to Promusicae and Bonnier. 

It is questionable whether a website should even be encouraged voluntarily to disclose such details through the threat of losing the benefit of this new defence.  At any rate the operator’s ability to rely on other existing defences, and to argue that it has not published at common law, would need to be fully preserved.

How does Clause 5 interact with Clause 10?

Clause 10 provides that a court does not have jurisdiction to hear and determine an action for defamation against a person who is not the author, editor or publisher (i.e. commercial publisher - all as defined in the 1996 Act) of the statement unless the court is satisfied that it is not reasonably practicable for an action to be brought against the author, editor or commercial publisher. 

It is interesting to speculate on whether a website operator’s decision not to respond to a notice under Clause 5 would be held against it in the court’s evaluation of reasonable practicability, even though it is open to the claimant to pursue a Norwich Pharmacal application against the website operator to disclose the identity of the author.  Given all the problems with Clause 5, it is to be hoped not.

[Updated 11.30pm 13 May 2012 to add material re identifiable posters and prior knowledge; further polishing at various times on 14 and 15 May 2012; updated following Royal Assent on 4 May 2013.]