High Court orders Internet Service Providers to block access to trademarks

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CARTIER International AG v. British Sky Broad High Court orders Internet Service Providers to block access to trademark infringing websites
  1. Challenging Internet Service Providers
In October 2014, the High Court ordered an internet service provider (ISP) to block access to websites marketing and selling trademark infringing counterfeit goods, even though there is no direct provision authorizing the court power to make this order.[1] Ultimately, this shows an increase in willingness to grant injunctions against ISPs that provide services which infringe on trademark, and other intellectual property rights (IPRs).
  1. Blocking Injunctions – Cartier v. Sky
In Cartier International v. British Sky, claimants owned a significant number or British registered trademarks, including Cartier.[2] Claimants sought court orders requiring the ISPs to block access to six websites that infringed on its trademarks by advertising and selling counterfeit goods through ‘target websites’. This decision was highly anticipated as prior to its holding there was no specific provision under United Kingdom (UK) law which affords trademark holders the right to seek and obtain an injunction against an ISP that had actual knowledge of another person using their Services to infringe their rights. Therefore, at issue is whether the Claimant can successfully order ISPs to block access to websites, which allegedly infringe on claimants trademark rights.
  1. Court’s Analysis
  1. “Does the Court have jurisdiction to make an order of the kind sought?”
Before hearing the merits of the case, Mr. Justice Arnold of the High Court easily identified a jurisdictional base to do so. The court based its reasoning on two other analogous cases, both afforded the Court the jurisdiction to issue website blocking injunction of the kind the Claimant sought.[3] Regardless of the consistent case law precedent, the Court found that jurisdiction is met via s31(1) of the Senior Courts Act 1981. This allowed the court to grant blocking injunctions as the court finds convenient to do so.[4] Thus, the jurisdictional element was met.
  1. “Since the Court has jurisdiction, what are the threshold conditions that must be met to issue an order?”
Having found a jurisdictional basis to hear the case, the Courts analysis turned to whether the conditions are met to issue a blocking order in this dispute. Mr. Justice Arnold continued the legal analysis by establishing the four criteria to grant an injunction: (i) ISPs must be intermediaries,[5] (ii) either the users and/or the operators of the website must be infringing the claimant’s trademark, (iii) the user and/or operators of the website must use the ISP services to infringe the claimant’s trademark, and (iv) the ISPs must have actual knowledge of this.[6] The last element is where the court struggled most. Ultimately, Mr. Justice Arnold found that “if ISPs cold be required to block websites without having actual knowledge of infringing that would be tantamount to a general obligation to monitor.”[7] Most basically, here, the court is saying that if ISPs were required to block content without having actual knowledge of infringement, this would require more of a watch dog function than is necessary, which is inconsistent with Article 15 of the E-Commerce Directive.[8] Furthermore, Mr. Justice Arnold found this requirement to be inconsistent with the Enforcement Directive because it does not provide measures, procedures and remedies necessary to enforce the Trademark IPR. Hence, ISPs are not required to constantly monitor the content of their services for alleged infringement, therefore, what constitutes actual knowledge of infringing content on behalf of the ISPs? In looking to what constitutes ‘actual knowledge’ in this case, Mr. Justice Arnold interpreted this element in the same manner in which it was interpreted in a previous case, 20C Fox v. BT.[9] In this case the Court found that this requirement does not mean the ISP had actual knowledge of each individual infringement before an injunction can be sought. The ISP’s knowledge that persons were using its services to infringe a trade mark is sufficient while proof of actual knowledge of a specific infringement is not. Meaning, the definition of actual knowledge here is broad encompassing not knowledge of specific instances of infringement but rather only requiring general knowledge of infringement to satisfy this determinative element.
  1. “Are those condition satisfied in the present and what principles are applied in deciding whether to issue the order?”
Ultimately, Mr. Justice Arnold concluded that all four criteria to grant an injunction were met. Therefore, with those conditions satisfied, Mr. Justice Arnold assessed whether granting the order would be propitiate and just. In deciding this, Mr. Justice Arnold, in particular, looked at certain generally accepted principles, including: that the trademark rights holder had a legitimate interest in preventing infringement, if there is no less intrusive measure available, the trademark owner was not required to show that blocking measures would lead to a reduction in the overall level of infringement of the trademarks, the cost of implementing the order was roughly similar to other intellectual property (IP) disciplines,[10] and the blocking should be targeted so that lawful internet users are not adversely affected. These principles are determinative as to whether a blocking injunction is appropriate in this case.
  1. “Should such order be made in the present case?”
In applying those principles, Mr. Justice Arnold found that such an order should be made in the present case. The Court granted the order for a blocking injunction, finding the likely costs burden on the ISPs to implement the blocking injunction was justified and propionate. Lastly, to safeguard against abuse, the court found that these orders must be limited in duration and freely modifiable by the court.
  1. Nokia and Philip’s application to other IPRs
Looking forward blocking injunctions could serve a wider range of IP rights. Namely, as Mr. Justice Arnold articulated, the Courts jurisdiction derived from s.31 (a) of the Senior Courts Act 1981; therefore, there is no reason why blocking injunctions should not be extended to other IPRs, such as registered designs and passing off. Because the Senior Courts Act encompasses the procedural ability to issue injunctions and is not concerned with which substantive IP laws fall under this equitable remedy ISP blocking injunctions will likely encompass more IP rights in the future. In fact, several weeks after the blocking injunctions were issued here, Claimants found evidence that other websites offered counterfeit goods for sale. Claimants then returned to the court with applications for orders to block those sites, and Mr. Justice Arnold issued those orders.
  1. Looking Forward
Mr. Justice Arnold found that issuing the blocking orders sought in this case were propitiated and fairly balanced between the applicable principles analysed here. After the conclusion of this case, ISPs in the UK should anticipate being required, at their own cost, to block user access to infringing content. It is unlikely, that the costs and difficulties associated with obtaining enforcement orders for blocking infringing websites will cause a wide spread decrease in counterfeiting. However, this will nonetheless add an invaluable tool to the rights holder arsenal for combating trademark infringement online. Bibliography Table of Cases
  1. 20c Fox and others v. British Telecommunications plc [2011] EWHC 1981 (ch), pp. 114-157.
  2. Apple Inc. v. Samsung Electronics Co. Ltd. Et al. C 11-1846 [2012], and Fourie v. Le Roux & Ors Rev 1 [2007] UKHL 1 (24 January 2007).
  3. Cartier International AG & ORs v. British Sky Broadcasting LTX & Ors [2014] EWHC 3354 (CH) (17 October 2014).
Table of Legislation
  1. Copyright, Designs and Patents Act of 1988, s97, 1988 c. 48.
  2. Directive 2000/31/EC [2000] OJ L 178/17, Art 15(1).
  3. Directive 2004/48/EC [2013] OJ L195/16, Art. 11 .
  4. Senior Courts Act of 1981, s31(1),.
Secondary Sources
  1. Grace Pead, Mounting blocks: Internet service providers ordered to block 21 infringing copyright infringing music sharing websites. (JIPLP , Feb, 2015), available at: http://jiplp.oxfordjournals.org/content/early/2015/02/23/jiplp.jpv022.full.pdf+html

[1] See Grace Pead, Mounting blocks: Internet service providers ordered to block 21 infringing copyright infringing music sharing websites. (JIPLP , Feb, 2015), available at: http://jiplp.oxfordjournals.org/content/early/2015/02/23/jiplp.jpv022.full.pdf+html [2] Cartier International AG & ORs v. British Sky Broadcasting LTX & Ors [2014] EWHC 3354 (CH) (17 October 2014). [3] See Apple Inc. v. Samsung Electronics Co. Ltd. Et al. C 11-1846 [2012], and Fourie v. Le Roux & Ors Rev 1 [2007] UKHL 1 (24 January 2007). [4] Senior Courts Act of 1981, s31(1), (stating that “the High Court may be ordered to grant an injunction…in all cases in which appears to the court to be just so convenient to do so”). [5] See Directive 2004/48/EC [2013] OJ L195/16, Art. 11 (To determine if the ISP is an intermediary, the court looked at the third sentence of Article 11 of the Enforcement Directive: “Member States shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an IP right, without prejudice to Article 8(3) of the [InfoSoc] Directive”). [6] Id. at n. 2 [7] See Cartier (Judge stating that "the fourth condition is not contained in Article 11, but in my view it follows from Article 15 of the E-Commerce Directive and by analogy with Articles 13 (1) (e) and 14 (1) (a) of the E-Commerce Directive. If ISPs could be required to block websites without having actual knowledge of infringing activity that would be tantamount to a general obligation to monitor”). [8] Directive 2000/31/EC [2000] OJ L 178/17, Art 15(1), (Directive on Electronic Commerce (“Member States shall not impose a general obligation on providers, when providing the services…to monitor the information which they transmit or store, not a general obligation actively to seek facts or circumstances indicating illegal activity.”) [9] See 20c Fox and others v. British Telecommunications plc [2011] EWHC 1981 (ch), pp. 114-157. [10] Copyright, Designs and Patents Act of 1988, s97, 1988 c. 48.
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