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The technical limitations and cost implications of a blocking injunction mean that it is not a ‘silver bullet’ for tackling online infringement, but it can be a valuable tool, says Kostyantyn Lobov of Harbottle & Lewis.
A series of the English High Court’s decisions, starting with the ruling in Cartier International AG and others v British Sky Broadcasting and others in 2014, and culminating in the recent English Court of Appeal decision in the same dispute, has confirmed the availability of so-called website blocking injunctions in trademark infringement cases.
A blocking injunction is essentially a court order which can be obtained by a rights owner against one or, more typically, several internet service providers (ISPs) requiring them to implement technical measures to prevent access to websites found to be hosting or facilitating access to infringing material.
In this article we briefly consider the effectiveness of these injunctions as a means of enforcement, and suggest some other remedies which may come as useful alternatives or to complement a rights owner’s overall enforcement strategy.
While the decisions in Cartier will largely be welcomed by trademark owners, it is worth bearing in mind that blocking injunctions are not a new remedy.
In the context of copyright, a rights owner’s right to obtain this type of relief is enshrined in Article 8(3) of the EU Enforcement Directive which was expressly implemented in the UK in its Copyright, Designs and Patents Act 1988.
In the copyright world, we have seen this mechanism used extensively in the fight against torrent websites (which enable users to download infringing content via a peer-to-peer network).
A number of blocking injunctions have been granted, including one against the now-infamous The Pirate Bay website, two against a website called Newzbin, and several others including Fenopy and Popcorn Time (a video streaming website).
We therefore have a reasonable sample of injunctions with which to analyse their effectiveness. It is worth noting that the process of implementation by an ISP of a blocking injunction against a website that facilitates copyright infringement is essentially no different from that against one that sells counterfeit goods. The end goal is the same: to prevent access to the site.
Blocking injunctions have a few inherent limitations. First, they are territorial. This means that a rights owner whose content is being made available in multiple countries would have to bring separate actions against the ISPs on a country by country basis. While the law on this is largely harmonised in the EU, blocking injunctions may not be available in some other jurisdictions.
Second, while the Court of Appeal ruled in Cartier that the bulk of the costs of implementing the technical measures to give effect to a blocking injunction should be borne by the ISP, it also noted that in future applications rights owners should be prepared to contribute to the cost.
On top of this, a rights owner would still have to bear its own costs of bringing the action which, even if unopposed, could still be substantial.
“What we can glean from just under a decade’s worth of blocking injunctions is that their effectiveness is mixed.”
Third, measures put in place by ISPs to block access to websites can be circumvented. A website can change the geographical location of its servers and how web traffic is routed, or promulgate the use of proxies or ‘mirrors’ to teach their users how to circumvent the restriction.
Perhaps the clearest evidence of this is that, despite several years of both civil litigation and criminal prosecutions in several countries, The Pirate Bay still exists, and a simple web search quickly reveals ways of accessing it even if it has been supposedly ‘blocked’ in your country.
What we can glean from just under a decade’s worth of blocking injunctions is that their effectiveness is mixed.
One of the factors that may determine whether or not a blocking injunction is effective is the level of determination of the average user of particular site. As mentioned, a determined user will almost inevitably be able to access the blocked content. A more casual user, however, may be dissuaded by seeing a notice stating that a website is blocked and simply move on (perhaps even to a website where they can acquire the content/goods legitimately).
In an industry where the casual user represents a significant proportion of the overall user base, the practical effects of a blocking injunction would therefore be tangible.
This ‘dissuasive effect’ was noted by the judge in the first instance Cartier decision (and later confirmed by the Court of Appeal) as one of the criteria that must be met if a blocking injunction is to be granted by an English court (the other requirements were that it must be necessary, proportionate, uncomplicated and not costly for ISPs, create no barriers to legitimate trade and that appropriate safeguards against abuse are in place).
The technical limitations and cost implications of a blocking injunction mean that it is not a ‘silver bullet’ for tackling online infringement. However, we have seen that, in the right circumstances, it can be a valuable tool, and one which is clearly now available to tackle brand as well as copyright infringements.
Rather than seeing a flood of Cartier-style applications, the more likely outcome is that we will see some brand owners use blocking injunctions selectively complement more traditional methods of enforcement (such as, to name a few, the ‘notice and takedown’ process, disabling merchant services, domain name complaints, customs enforcement, the involvement of third party authorities including Trading Standards, and proceedings directly against the unauthorised traders involved). Copyright owners will no doubt continue using this mechanism as before—there is no reason to expect that the Cartier ruling will have any significant impact in this regard.
Although the High Court made it clear in Cartier that a rights owner does not necessarily need to exhaust all of the more traditional enforcement methods (such as those set out above) before resorting to a blocking injunction application, in most cases these will still be the first port of call as a cost-effective means of day-to-day enforcement and a brand owner would be well advised to have in place a comprehensive strategy for tackling the range of infringement issues it may face.
In the meantime, rights owners should maintain a database of the most problematic websites, examples of infringing content/items they offer, and a log of any complaints which have been received about them and any action taken.
If an opportunity arises to share the cost and administrative burden of obtaining a blocking injunction with a consortium of other rights owners (perhaps through an industry body) this would serve as useful evidence in the application.
Kostyantyn Lobov is a solicitor at London law firm Harbottle & Lewis. He can be contacted at: firstname.lastname@example.org
This was first published on World IP Review.
Kostyantyn Lobov, Harbottle & Lewis, Cartier International, Sky Broadcasting, website blocking, ISPs, Newzbin, trademark, trademark infringement,