Insights

The First Hall Civil Court presided by Mr Justice Ian Spiteri Bailey on June 27, 2022, in the case “Dr Jacqueline Mallia on behalf of Infront Sports & Media AG vs Epic Communications Limited, Melita Limited, and Go Plc” held among other things, that the transmission and streaming of the Italian football matches without due authorization violated applicant Infront’s rights.

This case concerned the unauthorized streaming over the internet in Malta of the First Division Italian football league matches for the seasons 2021/2022 and 2022/2023 by certain third parties, who were customers of Epic Communications Ltd, Melita Ltd and Go Plc. These three companies, the defendants in these proceedings were three separate internet service providers in Malta, which extended broadband internet access to their customers.

Infront claimed it had the rights of transmission of these Italian football matches, except in the US and the Caribbean, and that it enjoyed protection under our Copyright Act as well as under Chapter 488 of the laws of Malta, the Enforcement of Intellectual Property Rights (Regulation) Act.

Under article 10 of Chapter 488, an owner of intellectual property rights could obtain an injunction from the Courts against intermediaries in order to prevent certain third parties from gaining access.

On 11th April 2022, Infront proceeded by filing legal proceedings against the three defendant companies before the First Hall Civil Court in terms of article 10 (2) of Chapter 488.

This Article 10 provides:

1. ‘Where the Court finds that an infringement of an intellectual property right has occurred, it may on an application by the plaintiff issue an injunction against the infringer aimed at prohibiting the continuation of the infringement. Failure to abide by the injunction shall constitute contempt of court.
2. The application referred to in sub-article (1) may also be made in respect of intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to article 42 of the Copyright Act.’

Infront requested the Court:

1. to declare that the transmission and streaming of the first division Italian football matches without their authorization violated their rights of copyright.
2. To declare that the services offered by the defendant companies were being used by certain third parties in violation of their rights of copyright; and
3. To order the defendants to prohibit internet access to certain IP addresses or to block them from streaming without authorization the Italian first division football league matches and this subject to other conditions which the Court deemed to be appropriate. Technical experts should also be engaged to assist in identifying other IP addresses.

This legal action was without prejudice to Infront’s other remedies.

The First Hall Civil Court stated that applicant Infront had proven its case, which was not contradicted by the three defendant companies. It considered that Infront sought an effective remedy to protect its rights and to put an end to the abuse.

As the 2021 / 2022 season had already closed, this Court said that it could only provide a remedy in respect of the forthcoming season 2022/2023.

During the proceedings, the parties reached an amicable agreement on 1st June 2022, but still wished this Court to ratify it, to render it effective.

This Court agreed to adopt and incorporate this agreement in its decision, though this agreement was to be kept confidential by the Court Registrar. It could only be made public if a dispute arose between the parties in relation to this agreement and such dispute was to be referred to a court or a judicial tribunal.

On 27th June 2022, the First Hall Civil Court gave judgment, by declaring that the transmission and streaming of the Italian football matches without due authorization violated applicant Infront’s rights.

It ordered as follows that:

• Defendants block and deny internet access through their services certain IP addresses identified and listed in the PWC report to prevent them from streaming and transmitting the first division Italian football matches for the season 2022 / 2023.
• Defendants should receive from Infront the list of IP addresses to be blocked at least twenty-four hours prior to the matches, in the manner as stipulated in the agreement.
• Infront should present to the defendant companies not more than twice weekly their requests and a list of IP addresses which were to be blocked by them.
• Any agreement between the parties on processing fees had to be respected.
• PWC Malta should carry out their investigation as to which IP addresses should be blocked in order to prevent the unauthorized transmission and streaming of the first division Italian football matches for the season 2022/2023.
• In case any of the defendants were notified that a third party was prevented from accessing audio-visual content in respect of which applicant Infront had no ‘rights’, such defendant had to inform the other parties to their agreement. In addition, in case Infront notified the defendants or any one of them that certain IP addresses which were blocked, should now be released, this had to be done within twenty-four hours from when the defendants received such instructions.
• Any obligation to make a payment due under the agreement between the parties remained binding.

All costs were to be borne by applicant Infront.

This article was first published in The Malta Independent.