Website Blocking Orders: not just for copyright infringement

Copyright owners can, under section 97A of the Copyright, Designs and Patents Act 1988 (CDPA), apply to the courts to obtain injunctions against Internet Service Providers (ISPs) to block their users from accessing certain websites where the ISPs know that their services are being used to infringe copyright. Section 97A implemented Article 8(3) of the Information Society Directive. Such orders have, for example, been used in relation to blocking access to websites that hosted or provided links to infringing copies of films and TV shows and famous examples include The Pirate Bay and Newzbin.

There is no equivalent of s.97A CDPA specifically related to trade mark infringements (e.g. where websites offer for sale counterfeit goods). However, there is a more general lesser-known right for the court, under section 37(1) of the Senior Courts Act 1981 (SCA), to grant injunctions where “it appears to the court to be just and convenient to do so”.

The High Court has recently granted website blocking orders under s.37(1) SCA in relation to a number of websites that were selling fake/replica Cartier goods. The threshold conditions and principles laid down by the court are useful for assessing the likelihood of a trade mark (or other intellectual property) owner obtaining such an injunction.

 Threshold Conditions

1. The ISPs have to be “intermediaries”;
2. The users of the relevant website or the website operators must be infringing;
3. The users or website operators must be using the ISPs’ services to carry out infringement; and
4. The ISPs must have actual knowledge of point 3 above.

Proportionality principles

In deciding whether or not to grant a website blocking order the court should consider whether it would be proportionate to do so. It is important to consider the following matters:

1. The comparative importance of the rights of the parties and justifications for interference with those rights
2. The availability of alternative, perhaps less onerous, measures
3. Whether the measures proposed would be effective (including whether they would seriously discourage users from accessing the relevant website)
4. The costs related to the measures (including the costs of implementation)
5. How dissuasive the measures would be
6. The impact of the proposed measures on lawful users
7. How substitutable other websites are for the relevant website.

Safeguards

The decision in the Cartier case was to grant an order blocking the relevant websites but it was made subject to some safeguards as follows:

1. The order should allow affected users to apply to the court to vary or discharge the order;
2. The page presented to users attempting to access the blocked website should state that it has been blocked by court order, identify the parties who obtained the order and state that the user has the right to apply to court to vary or discharge the order; and
3. The order should be given an end date at which point it would cease to have effect unless the ISP consents to it being continued or the court orders it to continue. In the Cartier case the court thought that such period should be two years.

Conclusion

Over 100 websites have been blocked using either s.97A or s.37(1) and, including mirrors and proxies, this number could be well over 500. It is therefore a matter that the courts are taking seriously and is starting to have a real impact on infringers.

If you are concerned that your trade mark (or another intellectual property right notably copyright) is being infringed in a website, then you may be able to apply for an injunction against the ISPs to block their users from accessing the relevant website.

If you would like to discuss any of the issues raised in this article, please contact Simon Miles – Head of Intellectual Property, or Charlie White – Associate, or any member of the Intellectual Property team at Edwin Coe.

If you aren’t receiving our legal updates directly to your mailbox, please sign up now