In what may be a test case for trademark owners battling counterfeiters, the UK High Court has ordered five internet service providers (ISPs) to block websites that were advertising and selling bogus goods. The ruling could have implications beyond Britain, the court said. ISPs, meanwhile, said the best way to handle infringing websites is to remove them at source rather than blocking.
Separately, the Rights Data Integration (RDI) project seeking to enable users to find rights information in online content said it is close to coming up with commercial implementations of its technology.
ISP Blocking
The High Court case, Cartier International AG and Others v BskyB and Others, was decided on 17 October, but judgment wasn’t handed down in the form of an order until 17 November. It arose from a request by Cartier for orders requiring ISPs Sky, British Telecom, EE, TalkTalk and Virgin to block, or at least impede, access by their subscribers to six websites that advertise and sell counterfeit items that violated claimants’ trademarks, Hon. Mr. Justice Arnold wrote.
This may be the “first occasion on which an application for a website-blocking order against internet service providers in order to combat trade mark infringement has been made anywhere in the European Union,” the court said. “It is a test case, which, if successful, is likely to be followed by other applications” by the plaintiffs and other trademark owners in the UK and elsewhere, it said.
Copyright holders have recently relied successfully on section 97A of the UK Copyright, Designs and Patents Act 1988 to obtain blocking injunctions against ISPs who made infringing content available for streaming and downloading, said Hogan Lovells (London) attorney Penelope Thornton.
That section adopted into UK law Article 8(3) of the EU Information Society Directive (Directive 2001/29/EC), which requires EU member states to ensure that rights holders are able to seek an injunction against intermediaries whose services are used by a third party to breach copyright, she said in a law firm blog posting.
The EU Intellectual Property Rights Enforcement Directive (Directive 2004/48/EC) went further, requiring governments to ensure that rights holders could apply for injunctions against intermediaries whose services are used by third parties to breach IP rights (not just copyright), but the UK didn’t adopt that measure into national law, she said.
ISPs argued that that meant that the High Court had no jurisdiction to grant claimants’ request, while Cartier argued that the court had jurisdiction under a provision of UK law that allows the top court to grant injunctions “in all cases in which it appears just and convenient to do so.” The court found that that law should be interpreted to allow it to issue injunctions against intermediaries.
In trademark cases, as in copyright cases, however, the court said that rights owners must show that three threshold conditions have been met: Are the ISPs involved intermediaries? Are the operators of the targeted websites infringing? Do the operators use the ISPs’ services to infringe?
Claimants met all three, the judgment said. In addition, they showed that the relief requested was necessary, effective, dissuasive, not expensive or complex, struck a “fair balance” between fundamental rights and was proportionate.
The High Court also found, among other things, that trademark owners need only show that blocking measures would dissuade internet users from accessing the infringing websites, not that they would completely stop the infringements, which might remain available on other sites.
“I accept that website blocking has advantages over notice-and-takedown,” the judge wrote. “Accordingly, I am not persuaded that, overall, notice-and-takedown is an equally effective, but less onerous, measure.”
Removal at Source Better, ISPs Say
“The ruling is of considerable importance for rights holders, adding an important and effective weapon in the UK, and potentially EU, to their armoury in the battle against counterfeiters,” wrote Thornton. “ISPs will be concerned however, that there will now be a flood of applications for website blocking orders which will bring increased costs and an administrative burden” on them, she said.
ISPs “respect a judicial process where a judge, not an ISP or trademark holder, decides what is an infringement and gives clarity to ISPs,” Internet Services Providers’ Association (UK) Secretary General Nicholas Lansman said after the 17 October ruling
But ISPA believes the most effective way to fight trademark-infringing websites is “to seek their removal at source rather than relying on costly and ineffective solutions such as blocking,” he said. Blocking is easy to circumvent by users with a little technical knowledge and the will to do so, he added.
Automated Rights Protection Gathers Steam
Meanwhile, the partly EU-funded RDI project said on 20 November that it is “exceeding its expectation” and is moving toward making commercial automated rights technology available.
So far, the initiative has shown that a particular rights reference model can be used as a universal translator that lets rights information be expressed in a common language no matter how it was originally expressed.
The next stage will be to show that the rights reference model can accommodate different types of queries about rights, RDI said.
The approach is “very simple,” said Project Director Andrew Farrow. “We just want to show that it is possible to automate some or all of the rights supply chain.”
Image Credits: Trimark Marketing Group
This ruling about responsibilities of ISPs cannot be transferred to countries without internet censorship, as it includes an interesting legal aspect: The ISPs were not able to claim that the measures are disproportionally costly because internet censorship is already established in the UK and can thus easily be applied to block any site.
“I described the Internet Watch Foundation (IWF) and its blocking regime in 20C Fox v BT at [65]-[69]. In summary, the IWF aims to minimise the availability of images of child sexual abuse on the internet. […]
As described below, each of the ISPs has invested in blocking technology to enable it to implement the IWF blocking regime. A point which is emphasised in the ISPs’ evidence is that, because the IWF regime is automated, it requires very little human intervention by the ISPs and thus the operating costs are relatively low. […]
The ISPs did not seriously dispute that the cost of implementing a single website blocking order was modest. As I have explained above, the ISPs already have the requisite technology at their disposal. Furthermore, much of the capital investment in that technology has been made for other reasons, in particular to enable the ISPs to implement the IWF blocking regime and/or parental controls. Still further, some of the ISPs’ running costs would also be incurred in any event for the same reasons. It can be seen from the figures I have set out in paragraphs 61-65 above that the marginal cost to each ISP of implementing a single further order is relatively small, even once one includes the ongoing cost of keeping it updated. […]
My conclusion on the question of costs is that, assuming the same costs regime is applied as in the case of section 97A, the likely cost to the ISPs of implementing website blocking orders is an important factor in assessing the proportionality of the orders sought. I am not persuaded, however, that the implementation costs on their own lead to the conclusion that the orders should be refused.”
http://www.bailii.org/ew/cases/EWHC/Ch/2003/3354.html#para38