Jane Lambert
Chancery Division (Deputy Master Francis) Performing Right Society Ltd v Qatar Airways Group QCSC [2021] EWHC 869 (Ch) (13 April 2021)
The Performing Right Society is a British collecting society. It has brought proceedings against the Qatari national airline for copyright infringement in London. It alleges that the airline has made available works in its repertoire without its licence through its inflight entertainment service. The airline applied unsuccessfully to the English High Court to stay those proceedings on the grounds that Doha was a more appropriate forum for the resolution of this dispute than London (see Performing Right Society Ltd v Qatar Airways Group QCS [2020] EWHC 1872 (Ch) (17 July 2020)). I discussed that case in Copyright - Performing Right Society Ltd v Qatar Airways Group QCS in NIPC Law on 20 July 2020 and the forum non conveniens doctrine in PRS v Qatar Airways - Is London the appropriate forum for a claim against a Qatari state-owned corporation for the alleged infringement of many countries' copyright laws? on 21 July 2021.
Since that hearing, the parties have agreed that the following should be tried as preliminary issues:
"(1) Whether, on every occasion that one of the Repertoire Works (including any of the Sample Infringing Works) has been played to any of the Defendant's passengers via the Services at a time when the relevant aircraft was present in:
(i) the United Kingdom (whether on the ground or in the territorial airspace of the United Kingdom), the Defendant performed such work in public within the meaning of section 19 of the CDPA?
(ii) Qatar (whether on the ground or in the territorial airspace of Qatar), the Defendant performed such work in public within the meaning of Article 7 (6) of the Qatari Law No. 7 of 2002 on the Protection of Copyright and Neighbouring Rights?
(2) Whether, at any time when one of the Repertoire Works (including any of the Sample Infringing Works) has been made available to any of the Defendant's passengers via the Services at a time when the relevant aircraft was present in:
(i) the United Kingdom (whether on the ground or in the territorial airspace of the United Kingdom), the Defendant communicated such work to the public within the meaning of section 20 of the CDPA?
(ii) Qatar (whether on the ground or in the territorial airspace of Qatar), the Defendant communicated such work to the public within the meaning of Article 7 (7) of the Qatari Law No. 7 of 2002?
(3) Whether, for the purpose of issue (2) above, the Defendant only communicated such work to the public when the Repertoire Work was actually played by one of the Defendant's passengers?
(4) Whether, for the purposes of issues (1) and (2) above, sections 19 and 20 of the CDPA are inapplicable when the relevant aircraft was only in the territorial airspace of the United Kingdom in transit to some other territory?
(5) Whether, for the purposes of issues (1) and (2) above, Articles 7(6) and 7 (7) of the Qatari Law No. 7 of 2002 apply whenever the relevant aircraft was in the territorial airspace of a country other than Qatar in transit to Qatar or to some other territory?"
In common law jurisdictions (such as England and Wales and the Qatar International Court), the parties to a dispute must exchange lists of relevant documents and allow the opposite party to inspect them unless there is a lawful reason for not doing so. In England, the rules relating to disclosure and inspection are set out in Part 31 of the Civil Procedure Rules and the practice in the Part 31A, Part 31B and Part 31C Practice Directions. In addition, there is a 3-year pilot scheme for disclosure in some but not all of the Business and Property Courts of England and Wales which started on 1 Jan 2019. That pilot scheme is governed by Practice Direction 51U (for information on the Business and Property Courts see my article Launch of a Judicial Superhighway in IP Northwest on 12 July 2017).
Para 10.3 of that practice direction requires parties to disputes in such courts to complete, seek to agree and update a document known as a Disclosure Review Document. That is a document by which the parties must identify, discuss and seek to agree the scope of any Extended Disclosure sought of Model C, D or E, and provide that information in due course to the court. "Extended Disclosure" is defined by para 6.1 as "disclosure of documents in addition to, or as an alternative to, Initial Disclosure". Para 5.1 requires each party to
"provide to all other parties at the same time as its statement of case an Initial Disclosure List of Documents that lists and is accompanied by copies of
(1) the key documents on which it has relied (expressly or otherwise) in support of the claims or defences advanced in its statement of case (and including the documents referred to in that statement of case); and
(2) the key documents that are necessary to enable the other parties to understand the claim or defence they have to meet."
Para 5.2 refers to that form of disclosure as "Initial Disclosure". The "Extended Disclosure Models" which include Models C, D and E are set out in para 8,
The parties were unable to agree the following issues in completing their Disclosure Review Document:
"1. Is the Claimant the assignee from its members of (i) the right to perform in public the musical works created by them and (ii) the right to communicate those works to the public within the meaning of provisions corresponding to sections 19 and 20 of the CDPA in countries throughout the world?
PRS states that this issue requires Model B disclosure on its part alone.
3. To what extent is and/or was the Oryx One Play app available for use by the Defendant's passengers?
PRS states that this issue requires Model B disclosure on its part and request-led search-based Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Technical guides, manuals, instructions to and from software and other suppliers, purchase orders and invoices to and from software and other suppliers, internal inventories and documents, and stock lists recording or evidencing the technical specifications relating to the Oryx One Play app and the Oryx One on board screen system and, in particular, the aircraft on which the Oryx One Play app is, and was, made available to the Defendant's passengers.'
4. To what types of devices can and/or could the Oryx One Play app be downloaded by the Defendant's passengers?
PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
"Technical guides, manuals, internal documents, information for passengers and download store operators, promotional materials and download data recording or evidencing the types of devices to which the Oryx One Play app could be downloaded by the Defendant's passengers."
5. What content is and /or was available through (i) the Services and (ii) the Oryx One Play app?
PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Documents for or from within each of the Services and the Oryx One Play app, databases relating to each system, instructions to and from content suppliers, content lists provided by those suppliers, playlists, content menus, usage reports and app data, manuals and entertainment guides, promotional materials and information provided to passengers which record or evidence the range of content made available to the Defendant's passengers via each of the Services and the Oryx One Play app.'
6. What content can and /or could be streamed using the Oryx One app?
PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Documents from or from within the Oryx One app, databases relating to the Oryx One app, instructions to and from content suppliers, content lists provided by those suppliers, playlists, content menus, usage reports and app data, manuals and entertainment guides, promotional materials and information provided to passengers recording or evidencing the extent to which audio and audio-visual content can and could be streamed by passengers using the Oryx One app.'
7. How, and to what extent, does the Defendant optimize and promote content that it has made available through the Services?
PRS states that this issue requires Model B disclosure on its part and narrow search-based Model D disclosure on the part of Qatar Airways.
9. Does the Defendant provide the Services for profit and/or are the Services intended to enhance the experience of the Defendant's passengers such that they form part of the package of benefits and services for which the Defendant's passengers pay?
PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search.
'Internal documents (including strategy and planning documents), advertising materials and other promotional materials relating to the IFE System and the Services recording or evidencing the way in which the Services are marketed to the Defendant's passengers.'"
The claimant argued that Extended Disclosure was required by its proposed Models in relation to each of the items within its List of Issues for Disclosure to enable the matters of principle ordered to be tried as preliminary issues to be fairly determined. Those included information about the nature and operation of inflight entertainment services which was solely within the airline's knowledge. For instance, information about the means of access to the content, the quantity and type of content, the way in which content is presented – for instance, whether curated or promoted by the search facilities offered – and whether the content was provided at a profit.
The defendant replied that none of the items listed within the List of Issues for Disclosure were genuinely key matters in dispute which needed to be determined by reference to contemporaneous documents in order for there to be a fair resolution of proceedings. The issues of principle arising for determination on the trial of the preliminary issues were all matters which were primarily questions as to the application of the law to the admitted facts as set out in the parties' statements of case and could fairly be tried based on those admitted facts. In so far as there were some factual disputes between the parties the claimant was not asserting any positive case by way of reply to the details set out in the defence. The mere joinder of issues on such matters was not itself sufficient to trigger a requirement for Extended Disclosure, Para 6.4 required an order for Extended Disclosure to be reasonable and proportionate. The order sought by the claimant would involve a very extensive exercise in searching for documents and in managing the volume of documents was estimated at £158,340 for the defendant and £90,080, for the claimant. Thise octs were disproportionate and could not be justified.
The matter came on before Deputy Master Francis who heard the dispute on 23 March 2021. The learned deputy master delivered his judgment on 13 April 2021 (see Performing Right Society Ltd v Qatar Airways Group QCSC [2021] EWHC 869 (Ch) (13 April 2021). Readers from outside England and Wales who are unfamiliar with English civil litigation should know that a "master" is a procedural judge of the High Court of Justice which is the first instance or trial division of the Senior Courts of England and Wales.
In resolving this dispute, the deputy master referred to paras 2.4, 6.3, 6.4, 6,5 and 6.6 of the practice direction. He also referred to paras [46] and [47] of Sir Geoffrey Vos's judgment in McParland & Partners Ltd v Whitehead [2020] EWHC 298 (Ch), [2002] Bus LR 699:
"[46] It can be seen, therefore, that issues for disclosure are very different from issues for trial. Issues for disclosure are issues to which undisclosed documentation in the hands of one or more of the parties is likely to be relevant and important for the fair resolution of the claim. That is why paragraph 7.3 of PD51U provides that issues for disclosure are "only those key issues in dispute, which the parties consider will need to be determined by the court with some reference to contemporaneous documents in order for there to be a fair resolution of the proceedings" (emphasis added). Paragraph 7.3 goes on to explain, as I just have, that issues for disclosure do "not extend to every issue which is disputed in the statements of case by denial or non-admission.
[47] This explanation demonstrates that, in many cases, the issues for disclosure need not be numerous. They will almost never be legal issues, and they will not include factual issues that are already capable of being fairly resolved from the documents available on initial disclosure."
He also referred to Sir Geoffrey's conclusion in paras [55] and [56]@
"[55] The Disclosure Pilot is intended to operate proportionately for all kinds of case in the Business and Property Courts from the smallest to the largest. Compliance with it need not be costly or time-consuming
[56] The important point for parties to understand is that the identification of issues for disclosure is a quite different exercise from the creation of a list of issues for determination at trial. The issues for disclosure are those which require extended disclosure of documents (i e further disclosure beyond what has been provided on initial disclosure) to enable them to be fairly and proportionately tried. The parties need to start by considering what categories of documents likely to be in the parties' possession are relevant to the contested issues before the court."
The learned dsputy master directed himself at para [35] of his own judgment to consider in relation to each issue whether:
"a) it is a key issue in dispute which will need to be determined by the court with some reference to contemporaneous documents in order for there to be a fair resolution of the preliminary issues, the formulation set out in paragraph 7.3 of the Practice Direction;
b) the Model of Disclosure proposed is appropriate in order to fairly dispose of the preliminary issues, as set out in paragraph 6.3 of the Practice Direction;
c) the proposed order for Extended Disclosure is reasonable and proportionate having regard to the matters in paragraph 6.4 of the Practice Direction."
Deputy Master Francis made an order for Extended Disclosure:-
"a) in relation to items 3 and 4 under the Model C requests as they are set out in section 1A of PRS's DRD;
b) in relation to items 5 and 6 under the Model C requests as they are set out in section 1A of PRS's DRD, but excluding the requests for usage reports and app data;
c) in relation to item 9 under the Model C request as it is set out in section 1A of PRS's DRD, but excluding the requests for internal documents."
However, he dismissed the application for an order for Extended Disclosure under Model D in relation to item 7. He explained the reasons for his decision in paras [32] to [50] of his judgment.
I have published this article in NIPC Gulf for two reasons. The first is that it concerns intellectual property litigation involving the national airline of a GCC member state. The second is that similar disputes could arise in Abu Dhabi, Dubai and Qatar itself because all of those regions have English speaking common law states. The procedural rules of all of those courts provide for disclosure including specific disclosure. PD Part 51U may apply only to certain Business and Property Courtts in England but disputes over the disclosure of documents give rise to similar issues and are resolved in similar ways.
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