Victory on Supreme Court web blocking judgement

Open Rights Group intervened in a legal challenge in which French jeweller Cartier sought court injunctions ordering ISPs to block websites which sell counterfeit Cartier products.

Case overview

After discovering counterfeit versions of their goods available online in the UK and conducting test purchases to verify such goods were indeed being sold, Cartier commenced proceedings in the High Court seeking that the court provide an injunction ordering ISPs in the UK to block the sites in question.

Until the this case, it was thought that ISPs could only be forced to block intellectual property infringing websites in the case of copyright infringement due to a special power found in Section 97A of the Copyright, Designs and Patents Act 1988 (CDPA). The High Court extended this power in 2014, by ruling in Cartierthat it was possible for trade mark holders to apply for the same kind of blocking injunctions.

The courts decided that general powers of injunction were sufficient for trade mark holders to request such blocks, despite the fact that copyright holders were granted this ability as a specific power in Section 97A CDPA.

ORG’s role

With the help of barrister Greg Callus and solicitor David Allen Green, ORG intervened in Cartier’s legal challenge in an attempt to encourage the courts to ensure that sufficient sensible safeguards against abuse were implemented if such injunctions were to be available. ORG were thanked for their submissions, which had a substantial impact on the case.

In particular, the court agreed with ORG that greater safeguards against abuse were needed and that blocking orders, if granted, should be set to expire after 2 years to ensure they are being regularly checked for validity.

Judgment (Supreme Court)

Some ISPs (BT and EE) appealed this decision to the UK’s highest court – the Supreme Court.

The Supreme Court insisted that it would respect the ruling of lower courts and that trade mark owners would be able to seek blocking injunctions. Permission was only granted to the ISPs to appeal against whether they could reasonably be expected to bear the cost of implementing and maintaining the blocks.

The question for the Supreme Court was whether a trade mark holder who obtained a blocking injunction against infringing sites would be required to indemnify ISPs against the costs of complying with those injunctions.

If trade mark holders are able to demand blocks which ISPs were required to pay for, this could open the door to large-scale blocking of many kinds of websites. ORG was concerned that the costs would be passed on by ISPs to their customers. Increasingly trivial blocks could be requested with little justification, even when it would not be economically justifiable.

In June 2018, the Supreme Court ruled unanimously that the rights-holders would be required to reimburse the ISPs for reasonable costs of complying with blocking orders.

The Court based their judgment on a few factors.

• Firstly, that there is a general principle in law that an innocent party is entitled to the remuneration of their reasonable costs when complying with orders of this kind.
• Secondly, the Court rejected the suggestion that it was fair to for ISPs to contribute to the costs of enforcement because they benefit financially from the content which is available on the internet, including content which infringes intellectual property rights.

Although ISPs have been complying with orders to block copyright-infringing sites for a number of years, the issue of who bears the cost of implementing such blocking was not particularly challenged until this case.

We expect that, in future, ISPs may wish to try and use this ruling to argue that they should be remunerated for the cost of complying with copyright injunctions as well as just trade mark injunctions.

This was a very welcome judgment for ORG. ISPs are now administering lists of around 2,500 domain blocking injunctions. ORG’s Blocked! tool is currently tracking over 1,000 sites which have been blocked using these orders. If rights-holders are now required to bear costs, then we should see better administration of the blocks by the ISPs themselves.

The full judgment and summary can be found on the Supreme Court website here.

For more details, please see this wiki page.