What are the circumstances in which internet service providers (“ISPs”) can be made to block access to websites selling counterfeit goods? Arnold J has provided some answers in his judgment in Cartier and Others v BskyB and Others  EWHC 3354 (Ch).
The Richemont Group (“Richemont”), comprising well-known luxury brands such as Cartier and Montblanc, applied for orders requiring various ISPs - which in total combined to represent around 95% of the UK market share - to block or at least impede access by their respective subscribers to six websites which advertised and sold counterfeit goods that infringed Richemont’s trade marks (the “Target Websites”).
Arnold J stated that there were five questions to be answered if he was to make such an order.
- Does the Court have jurisdiction to make such an order?
- What are the threshold conditions which must be satisfied?
- Are the threshold conditions satisfied?
- What are the principles to be applied in deciding whether to make such an order?
- Are the principles satisfied?
Does the Court have jurisdiction to make such an order?
The Court has specific jurisdiction under s. 97A of the Copyright Designs and Patents Act 1988 (“CDPA”) to grant a blocking injunction where copyright has been breached.
Article 11 of the Enforcement Directive specifically required EU Member States to provide for all rightholders (i.e. not just copyright owners) to be able to apply for an injunction against intermediaries. Arnold J cited the Government’s consultation on Article 11, which stated that no action was required to implement Article 11, as s.37 of the Supreme Court Act 1981 already gave the Court general jurisdiction to make such an order. On that basis, Arnold J held that the Government’s intention in their implementation of the Enforcement Directive was not to restrict the Court’s jurisdiction to copyright infringement and so the Court had jurisdiction to make the order sought.
What are the threshold conditions which must be satisfied? And are they satisfied?
Arnold J identified the threshold conditions to be the same as those which are imposed for s.97A of the CDPA. Thus, the conditions to be met and that had been met in this case, were that:
- the ISPs must be intermediaries;
- the operators of the Target Websites must be infringing the trade marks;
- the operators must use the ISP’s services to infringe; and
- the ISPs must have actual knowledge of this
What are the principles to be applied in deciding whether to make such an order? And are they satisfied?
If the above conditions are satisfied, Arnold J suggested that the relief must also be deemed to be:
- not unnecessarily complicated or costly;
- avoid barriers to legitimate trade;
- fair and equitable and strike a “fair balance” between the applicable fundamental rights;
- proportionate; and
- safeguard against abuse.
Arnold J concluded that the above principles had been satisfied and that there was a substantial public interest in protecting trade marks against counterfeit goods. Therefore, the orders for blocking injunctions were made with only two amendments: that the injunctions should be limited to two years (rather than open-ended); and that the blocked pages should identify the party who applied for it to be blocked.
What does this means for brand owners?
This case is good news for brand owners. It offers trade mark holders a strong weapon against counterfeiters. The ability to apply for blocking injunctions against an ISP, if infringing goods appear for sale on a website, constitutes a far simpler, and more effective, remedy, than going after the party behind the problem site.
There is no general obligation on ISPs to monitor for websites selling counterfeit goods. However, the second piece of good news for brand owners from the case is that it does seem that Courts in future will be able to follow Arnold J’s ruling and declare it to be “economically more effective to require intermediaries to take action to prevent infringement occurring via their services than it is to require rightholders to take action directly against infringers”.
The judgment also offers an interesting analysis of the alternatives to blocking injunctions which right holders may consider, such as “notice and takedown”, along with their advantages and disadvantages to brand owners, concluding that none are as effective, but a number are less burdensome, than blocking injunctions.