Protecting intellectual property on the internet has been, and continues to be, a hot topic from both legal and commercial points of view. Following the Court of Appeals ruling in the Cartier case we consider who now stands to pay for blocking injunctions - the ISP or the brand owner?
Copyright owners have for 15 years enjoyed a statutory right to obtain an injunction against an internet service provider (ISP) to block access to various websites if the ISP knows its service is being used to infringe copyright by such sites (section 97A of the Copyright Design and Patents Act 1988).
Blocking injunctions against the UK’s most popular ISPs have been granted on the application of copyright owners over 17 times since 2002 and this has led to a high degree of standardisation in the format of the application and scope of the order.
ISPs now know what that dance entails and copyright owners have an effective way of stopping the “dandelion clock” of infringing sharing even if they cannot effectively get to the “dandelion root” to weed out the most pernicious infringers.
Brand owners have not been so fortunate as there is no trade mark equivalent of the section 97A remedy granted to copyright owners. The internet has provided a route to market and a wider reach for the sellers of counterfeit goods than someone opening a suitcase of watches on a high street ever could.
This is where our judicial system has sensibly stepped up to the plate, using its inherent jurisdiction (under section 37 of the Senior Courts Act) to grant brand owners equivalent rights for their trade marks that copyright owners enjoy because of section 97A. In 2016 in Cartier International AG and Others v British Telecom Plc and Another the Court of Appeal took the view that there was an equitable duty on ISPs to help trade mark owners but that is however not the end of the story.
In the copyright blocking injunction cases it has been usual, since 2012, for the ISPs to bear the cost of implementing the blocking order. The rationale being that it was a consideration of commercial equity or fairness that blocking costs count as costs of carrying on business as an intermediary that makes a profit from the provision of internet services that are sometimes misused in order to infringe the rights holder’s intellectual property. The Cartier case took the issue of who should be responsible for the implementation costs of the blocking injunction to the Supreme Court. The court decided that actually the ISPs, as mere intermediaries and innocent parties, do not have a legal responsibility to the rights holders. On the contrary, the rights holders (who have the real commercial interest in protecting their trade marks or copyright) should indemnify the ISPs for the cost of complying with the blocking injunction.
Will this put £200 on the price of every one of Cartier’s watches and £20 on Mont Blanc pens as the rights holder of these brands pass on such costs? Who knows? However, for rights holders the copyright blocking injunction is generally an equally effective legal and commercial remedy to protect intellectual property exposed to attack in the cross border anonymity of the World Wide Web.