In Carter v BskyB & others the High Court in 2014 made its first ever website blocking orders on the basis of trade mark infringement against 5 internet service providers (ISPs).
The orders require that the ISPs (who between them cover 95% of the UK market), although not committing trade mark infringement themselves, block customers' access to websites where counterfeits are being offered.
The ISPs appealed contending that the court had no jurisdiction to make this type of order in respect of trade mark infringement: website blocking orders had previously been made against ISPs in cases of copyright infringement; however, the authority for the court to do so derives from sections inserted into the Copyright Designs & Patents Act 1988 to implement the Information Society Directive. There are no equivalent provisions in English law for trade mark infringement.
The High Court's view was that the English courts' power to grant injunctions under Section 37(1) of the Senior Courts Act 1981 is very wide. In addition, the practice of the court in relation to injunctions has not stood still: it will adapt to new situations. This approach was recently confirmed by the Court of Appeal, which endorsed the courts' ability to make website blocking orders where they considered that it was necessary and appropriate to do so. The appeal judges also noted that if they had not found the courts had the power under existing English law, it would exist under the provisions of the EU Directive on the Enforcement of Intellectual Property Rights.
Striking the right balance
Injunctions are discretionary remedies and in any situation the court needs to strike the right balance between competing rights. Website blocking orders are no different and in Cartier the judge had set out a number of threshold conditions and principles to be considered.
The most critical of these are that the orders are necessary and effective, not unnecessarily complicated or costly, and proportionate. The ISPs submitted evidence that the majority of the websites that would be blocked were not popular or regularly visited by customers, and that the blocking measures taken could be circumvented. Both the first instance and appeal courts acknowledged this, but found that the orders would discourage users from accessing the target websites. They were also unwilling to impose the burden on the rights holder of demonstrating that an order would be effective in reducing the overall level of infringement of its intellectual property rights.
Who pays?
Perhaps the key battleground between the ISPs and Cartier was who should pay for the initial and ongoing cost of website blocking. Both English and European law emphasises that measures should not be excessively costly. The ISPs drew comparisons between website blocking orders and the courts' approach to Norwich Pharmacal orders (under which documentation may be ordered to be provided by an innocent third party, caught up in wrong doing, to assist a potential claimant to bring proceedings). The ISPs are not "wrongdoers" in the Cartier situation, and if Norwich Pharmacal were to be followed, then the costs of the innocent party should be borne by the party applying for the order.
The court, while having regard to the arguments of the ISPs, concluded that the cost of blocking websites represents a cost of the ISPs doing business in this area. The ISPs have already made capital investments in systems for blocking websites in the context of child protection and parental filters. Until the ISPs receive a notification from Cartier that a particular website is offering infringing goods, they have no duty to monitor for infringing websites. However, once they are placed on notice under the terms of the order by Cartier they must take steps to block that site - limiting the relevant cost of blocking websites to a relatively modest sum per website.
The future
The Court of Appeal, while affirming the orders on behalf of Cartier, emphasised that trade mark owners should not assume that a website blocking order will be made in every case. It made clear that the costs and proportionality of these types of orders would be kept under review. The appeal court and the first instance judge were both troubled by whether the orders would have a material benefit (some sites were frequently visited, but others were not) and the cumulative costs for the ISPs.
The ISPs will be encouraged by the dissenting Judgment of Lord Justice Briggs, who considered that the ongoing costs of website blocking should be treated as the trade mark owner's costs of doing business, not the ISPs.
Website blocking orders may be made in the future in the right circumstances, but there may come a point where the balance tips in the favour of the ISPs.
