By Giancarlo Frosio on November 7, 2014 at 7:28 pm
As reported, UK courts issued over the last few year a series of orders requiring access providers to block access to websites infringing copyright pursuant to Section 97A of the UK Copyright Act. Recently, a UK court issued a similar blocking order in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening)  EWHC 3354 (Ch), a case involving an attempt to combat trademark infringement rather than copyright infringement. This was the first occasion in the European Union that a court ordered access providers to block access to a website for trademark infringement.
In this case, the owners of a large number of registered trademarks in the UK, such as Cartier, Montblanc, IWC and others, brought an action against the five main retail internet service providers in the UK. The claimants sought an order requiring the ISPs to block access to six websites which advertised and sold counterfeit goods and thereby infringed their trademarks.
Justice Arnold from the High Court of Justice of London granted the website-blocking order in an impressive 266 paragraphs decision. The decision largely draws from the principles applied by Justice Arnold himself in a series of previous judgments issuing blocking orders against website infringing copyright. Those orders were issued according to Section 97A of the Copyright Act, which implements Article 8(3) of the Information Society Directive in the UK.
The Court noted that there is no statutory counterpart in the field of trademarks to sections 97A of the UK Copyright Act. However, the Court granted the injunction construing the Court's general jurisdiction to issue injunctions in the context of Article 11 of the Enforcement Directive. Article 11 of the Enforcement Directive has a broader scope than Article 8(3) of the Information Society Directive and applies to intellectual property infringement at large, rather than only to copyright infringement:
Member States shall also ensure that rightholders 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, without prejudice to Article 8(3) of Directive 2001/29/EC.
On the point of the application of Article 11 of the Enforcement Directive, Justice Arnold had to resolve first the question of the lack of specific implementation of that provision in the UK. At the time of the implementation the Enforcement Directive, the UK Government deemed not to be necessary a specific implementation of Article 11. In particular drawing on the decision of the European Court of Justice in L'Oreal v eBay, Justice Arnold concluded:
even if the Court would not have power to grant a website blocking injunction in a trade mark case upon a purely domestic interpretation of section 37(1) [of the Supreme Court Act 1981], section 37(1) can and should be interpreted in compliance with the third sentence of Article 11 by virtue of the Marleasing principle. If it were otherwise, the UK would be in breach of its obligations under the Directive. (Par. 132)
The order finally approved by the Court included also a number of safeguards against abuse. A first set of safeguards concerned the possibility of discharging or varying the order by different interested parties. First, access providers may apply to the Court to discharge or vary the orders in the event of any material change of circumstances, including in respect of the costs, consequences for the parties and effectiveness of the blocking measures from time to time. Second, the operators of the target websites may apply to the Court to discharge or vary the orders. Third, the order should expressly permit affected subscribers to apply to the Court to discharge or vary the orders. In this regard, the page displayed to users who attempt to access blocked websites should also identify the party or parties which obtained the order and state that affected users have the right to apply to the Court to discharge or vary the order.
Finally, Justice Arnold noted that website blocking orders should not endure longer than necessary. Concerned about the number of websites that trade mark owners may seek to target, the Court incorporated a “sunset clause” into the orders. According to this clause, the orders will cease to have effect at the end of a defined period unless either (1) the ISPs consent to the orders being continued or (2) the Court orders that they should be continued. The provisional view of the Court was that the sunset period should be two years. This is a considerable departure from previous blocking orders made by UK Courts, which have all been open-ended, although they may have been discharged or varied in the event of a change of circumstances.
The full judgment is available here.
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