On 17 October 2014, in Cartier International AG and Others v BskyB and Others, Arnold J ordered the five major UK ISPs to block a number of websites that were advertising and selling counterfeit goods and on Monday he handed down his judgment on the form of the Order. The case is interesting because, according to Arnold J, with one possible exception, it is the first occasion on which an application for a website-blocking order has been made in Europe in order to combat trade mark infringement. He calls it a test-case which is likely to be followed by other applications both in the UK and in other countries. In his judgment on the form of the Order Arnold J confirmed that he considers that the UK High Court has jurisdiction to order an ISP to block access to websites using the ISPs services to infringe any intellectual property right (not only copyright and trade marks) and any unlawful activity, such as child pornography.
Copyright holders have recently had considerable success in relying on section 97A of the Copyright, Designs and Patents Act 1988 (“CDPA”) to obtain website-blocking injunctions against the major UK ISPs in order to block access in the UK to websites making available infringing content for streaming and downloading. Section 97A transposed Article 8(3) of the Information Society Directive (Directive 2001/29/EC), which provides that Member States shall ensure that rights holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe copyright.
Article 11 of the Enforcement Directive (Directive 2004/48/EC) went further than the Information Society Directive and provided that Member States must ensure that rights holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right (not only copyright). The UK Government did not however pass any legislation to implement Article 11 of the Enforcement Directive. The ISPs argued that this meant the UK High Court did not have jurisdiction to make an order of the kind requested by the claimants. The claimants on the other hand contended that the High Court has jurisdiction under section 37 (1) of the Senior Courts Act 1981, which provides that the High Court ‘may order an injunction…in all cases in which it appears just and convenient to do so’. Arnold J took guidance from the CJEU ruling in L’Oréal v eBay and found that section 37 (1) should be interpreted as empowering the Court to grant an injunction against an intermediary. He found the wording of section 37 (1) to be extremely broad.
Similar threshold conditions were held to apply to trade mark cases as to section 97A copyright cases:
- ISPs must be established as intermediaries;
- users and/or operators must be infringing the claimant’s trade marks using the intermediaries’ services; and
- the intermediaries must have the requisite knowledge of that infringement.
All these conditions were met by the claimants in this case. The claimants also had to show that the relief was necessary, effective, dissuasive, not costly or complicated, struck a “fair balance” between fundamental rights and was proportionate. Arnold J found that the relief met all these conditions.
On the issue of effectiveness he found that it was only necessary to show that the measures would dissuade users of that service from accessing the target website. It did not matter that the content would remain available on another website. Notice and take down procedures were not considered a realistic alternative as, based on the experience in the copyright context, Arnold J found that many offenders would operate the website outside the jurisdiction to make enforcement difficult. A request that the host take down the website would simply result in the operators moving to a different host. On the issue of proportionality Arnold J concludes that the likely costs burden on the ISPs is justified by the likely efficacy of the blocking measures. He was persuaded of the effectiveness of blocking orders by the data on recent section 97A injunctions that showed a marked and sustained drop in traffic to targeted websites after a blocking order was implemented.
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. 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 the ISPs.