Costs: The Football Association Premier League Ltd v Berry and Another

Jane Lambert

In The Football Association Premier League Ltd v Berry and Another [2014] EWHC 726 (Ch) (13 March 2014) the claimant sought summary judgment in its claim for copyright infringement against the proprietor of  a watering hole almost opposite the Queen Elizabeth II Law Courts in Liverpool that is well known and well loved by counsel on the Northern Circuit and their instructing solicitors (see "City centre bar fined showing Premier League football could be forced to close" 14 March 2014 Liverpool Echo). The application was largely conceded and counsel for the parties agreed a minute of order which provided for injunctions, an inquiry or account of profits and costs on the standard basis. The only issue that was not agreed was the amount of an interim order for costs and that issue fell to be decided by Richard Spearman QC sitting as a judge of the High Court.

The transcript of the hearing before Mr Spearman does not give very many details of the action but the press report to which I referred above provides the following background information:
"Premier League bosses said their investigators had visited First National earlier in the season and seen TVs in the bar showing the Al Jazeera channel, which was recently rebranded beIN Sports.
They argued the channel had only bought rights to show games to viewers in the Middle East and North Africa, and so by showing it in the UK the law was being broken."
In his judgment the deputy judge noted that the claim was not "not for the entirety of the broadcasts, which are broadcasts of football matches, but is limited to claims for infringement of the copyrights in logos and graphics which appear as part of the broadcasts." However, he also said at paragraph [14]:
"it seems to me absolutely obvious that these rights are valuable and important rights. From the brief sight I have had of the relevant screenshots it is quite obvious that they convey useful and interesting information to viewers."
The defendant had argued that the claimant could expect only a few hundred pounds by way of damages and that this action was an example of a sledgehammer being used to crack a nut. Her arguments were summarized by Mr Spearman as follows:
(a)   This was a claim against a single publican in respect of a very small number of broadcasts, 7 in all.
(b)   Only some of those broadcasts were the subject of the summary judgment application now conceded by the defendant.  
(c)   Licences would have been available from BSkyB for £1,230.18 plus VAT per month, which would have given him access to the entirety of BSkyB's premium sports content of which the logos and the graphic works the subject of the litigation were only a small part.
Mr Spearman was "very far from persuaded that the value of the claim will be in the measure of a few hundred pounds." A monthly licence fee from BSkyB would amount to £28,000 over the period during which the matches were shown.  Moreover, additional statutory damages had also been claimed.

At the hearing the defendant argued that the claim could and should have been brought in the Intellectual Property Enterprise Court ("IPEC") where recoverable costs are capped. His problem, however, was that he had raised that argument for the first time only a few days before the hearing. Moreover, his defence had been based on European and national competition law which was outside IPEC's jurisdiction, he had put the claimant to proof on subsistence, title and use and both sides had instructed leading and junior counsel in the litigation.  

Much more significant in the deputy judge's view than the amount of the recoverable damages was that this litigation was "part of a battle on a much wider front between publicans and the like in general and copyright owners such as the claimant in this case and BSkyB as to whether the claims of the copyright owners are untenable in light of European and competition law considerations."  Accordingly, it seemed to Mr Spearman that "the importance of the rights to the parties on both sides are very high and very clear, reflected not least by the fact that both sides in this litigation have used very well known and experienced leading and junior counsel."   That he considered "to be very relevant on the proportionality of this litigation and the costs incurred."

The claimant's costs of the applications were over £148.000 and it asked for an interim payment of £65,000. In United Airlines Inc. v United Airways Limited [2011] EWHC 2411 Mr Justice Vos had  said that he had to determine not the irreducible minimum that was likely to be awarded, but a reasonable estimate of what is likely to be awarded.  An interim payment of £65,000 had been ordered in the somewhat similar case of the Football Association Premier League v Luxton (see "Premier League live football: Pub landlord broke copyright law" 30 Jan 2014 BBC).  Although Mr Spearman did not place much reliance on what was said about other cases, the fact that Mr Justice Rose ordered an interim payment of £65,000 within 28 days gave him some comfort that an order of that sort was not wildly out of the appropriate league. Accordingly, Mr Spearman made an order for payment of the same interim amount in this case.

The awarding of costs generally and deciding the amount of interim payments are matters within a judge's discretion. Though I am a little puzzled at his finding that the damages likely to be awarded upon an inquiry will exceed £25,000 since the claimant would receive only a proportion - and I would have thought only a small proportion - of the licence fee paid to BSkyB for a whole month's sport I cannot see any obvious fault in the judge's exercise of his discretoion. Despite Woolf, Jackson and the launch of IPEC civil litigation in this country is still too damned expensive. It is imposing an intolerable burden on British business and something needs to be done about it.  Until something is done the lesson from this litigation seems to be that if you want to fight the football clubs make sure you get some proper funding to do so either from others in your trade or from an insurer (if insurance is available for a case like this) or some other third party.

It is important to note that intellectual property law exists not just for the benefit of intellectual asset owners - in this case the Premier League - but is intended to strike a balance between the interests of intellectual asset producers, competitors and consumers.  However that picture is complex because the public also has an interest in maintaining the viability of the clubs, investment in the sport and the convenience of watching football on television, According to the Echo Liverpool received £54,8 million from broadcasting and Everton £51.8 million last season. At least some of that money seems to find its way to schoolchildren.  For instance the Echo reported that Rainhill School received a grant of £300,000 to improve its football facilities.

After the World Cup Samuel Okoronkwo, Robert Griffiths QC and I together with one of our colleagues from Atlas Tax Chambers will hold a half day seminar in London on regulation of agents, competition, broadcasting, licensing and other issues relating to football. If you are interested in pre-registering call George on 0161 850 0080 or fill in my contact form.  You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing. We look forward to seeing you.

Further Reading
Jeremy Phillips "Costly copyright litigation? Blame the litigants" 18 March 2014 1709 Blog


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