06 January 2015

Injunctions against ISPs Part VIII: Cartier International AG and Others v British Sky Broadcasting Ltd and Others

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In Cartier International AG and Others v British Sky Broadcasting Ltd and Others [2014] EWHC 3354 (Ch), [2014] WLR(D) 464 three of the subsidiaries of Compagnie Financière Richemont SA applied to Mr Justice Arnold for injunctions against the five largest internet service providers ("ISPs") in the UK in the following terms:
"1. In respect of its residential fixed line broadband customers to whose service the system known as … is applied, the … Defendant shall within 15 working days in relation to the initial notification (and thereafter, within 10 working days of receiving any subsequent notification) adopt the following technical means to block or attempt to block access to the Target Websites, their domains and sub-domains and any other IP address or URL notified to the …. Defendant whose sole or predominant purpose is to enable or facilitate access to a Target Website. The technology to be adopted is:
(i) IP blocking in respect of each and every IP address from which each of the Target Websites operate and which is:
(a) notified in writing to the … Defendant by the Applicants or their agents; and
(b) in respect of which the Claimants or their agents notify the … Defendant that the server with the notified IP address does not also host a site that is not part of a Target Website.
(ii) IP address re-routing in respect of all IP addresses that provide access to each and every URL available from each of the Target Websites and their domains and sub-domains and which URL is notified in writing to the … Defendant by the Claimants or their agents; and
(iii) URL blocking in respect of each and every URL available from each of the Target Websites and their domains and sub-domains and which is notified in writing to the … Defendant by the Claimants or their agents.
2. For the avoidance of any doubt paragraphs 1(i), 1(ii) and 1(iii) are complied with if the … Defendant uses the system known as … to implement the steps required by those paragraphs.
3. The Claimants or their agents will notify the … Defendant should any IP address and/or URL which has already been notified to the … Defendant under the terms of this Order cease to enable or facilitate access to a Target Website (in which case the … Defendant shall no longer be obliged to block that IP address and/or URL). For the avoidance of doubt, the …. Defendant is wholly reliant on the Claimants accurately identifying the IP addresses and/or URLs from which the Target Websites operate and which should be blocked under the terms of this Order.
4. The … Defendant shall not be in breach of paragraphs 1(i), 1(ii) and/or 1(iii) if it temporarily suspends … or the addition of IP addresses or URLs thereto with the consent of the Claimants or their agents.made
5. The proceedings shall be stayed, save for the purposes of any application to give effect to the terms of this order and save that the parties have permission to apply on notice in the event of any material change of circumstances including, for the avoidance of doubt but without limiting the generality of the foregoing, in respect of the costs, consequences for the parties and effectiveness of the aforesaid technical means from time to time.
6. The operators of the Target Websites (as defined in the Schedule to this Order) and the operators of any other website who claim to be affected by this Order, are to have permission to apply on notice to vary or discharge this Order insofar as it affects such an applicant, any such application to be on notice to all the parties and to be supported by materials setting out and justifying the grounds for the application. Any such application shall clearly indicate the status of the applicant and indicate clearly (supported by evidence) that it is the operator of any website which is the subject of such application.
7. There be no order for costs."
The "Target Websites" were websites that offered for sale counterfeit copies of the claimants' goods.

Mr Justice Arnold had made several such orders against ISPs since 2011 under s.97A of the Copyright, Designs and Patents Act 1988. That section provides:
"97A Injunctions against service providers
(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.
(2) In determining whether a service provider has actual knowledge for the purpose of this section, a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to--
(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and
(b) the extent to which any notice includes--
(i) the full name and address of the sender of the notice;
(ii) details of the infringement in question.
(3) In this section "service provider" has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002."
This section had been inserted to give effect to art 8 (3) of the Information Society Directive (Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22.6.2001 P10-19). There is no similar provision in the Trade Marks Act 1994 or any other intellectual property statute. The question for Mr. Justice Arnold was whether the Senior Courts of England and Wales already had jurisdiction to make such an order under their inherent jurisdiction or under art 11 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 157 30.3.2004).

Mr Justice Arnold said at paragraph [6] of his judgment that he had been informed by counsel that, so far as they and their professional and lay clients were aware, this was the first occasion on which an application for a website-blocking order against ISPs in order to combat trade mark infringement has been made anywhere in the EU, with the possible exception of the Danish case of Home A/S v Telenor A/S (Retten på Frederiksberg, 14 December 2012). "It is a test case", said the judge, "which, if successful, is likely to be followed by other applications by Richemont and other trade mark owners, both here and in other countries."

This being a test case the judge summarized the issues that he had to decide at paragraph [2]:
"First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?"
His Lordship decided that he did have jurisdiction and that it was right for him to make the orders sought in the circumstances of this case.

As to the first issue, the judge noted that s.37 (1) of the Senior Courts Act 1981 provides:
"The High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to the court to be just and convenient to do so."
After reviewing the authorities and in particular Lord Scott's speech in Fourie v Le Roux and Otherts [2007] 1 WLR 320, [2007] 1 All ER 1087, [2007] BusLR 925, [2007] WLR 320, [2007] UKHL 1, [2007] UKHL 01, [2007] Bus LR 925 and the Court of Appeal's judgment in  Samsung Electronics (UK) Ltd v Apple Inc  [2012] EWCA Civ 1339 the judge concluded at paragraph [111] that the English courts did have jurisdiction to make website blocking orders of the kind sought by the claimants. If he was wrong on that point the judge concluded at paragraph [132] that s.37 (1) had to be interpreted in accordance with art 11 of the Enforcement Directive which required EU member states to "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."

Having decided that he had jurisdiction  to make blocking orders in trade mark disputes the judge turned to the conditions for the making of such orders and concluded that they must be consistent with the other provisions of the Enforcement Directive and other provisions of EU law. He listed these at paragraph [141]:
"First, the ISPs must be intermediaries within the meaning of the third sentence of Article 11. Secondly, either the users and/or the operators of the website must be infringing the claimant's trade marks. Thirdly, the users and/or the operators of the website must use the ISPs' services to do that. Fourthly, the ISPs must have actual knowledge of this."
The first three conditions were clear from the wording of the art 11. As for the fourth condition His Lordship said:
"The fourth condition is not contained in Article 11, but in my view it follows from Article 15 of the E-Commerce Directive and by analogy with Articles 13 (1) (e) and 14 (1) (a) of the E-Commerce Directive. If ISPs could be required to block websites without having actual knowledge of infringing activity, that would be tantamount to a general obligation to monitor. It is also difficult to see that such a requirement would be consistent with the requirements of Article 3(1) of the Enforcement Directive. As to what constitutes "actual knowledge" in this context, I see no reason to interpret this requirement differently to the manner in which I interpreted it in the section 97A/Article 8(3) context: see 20C Fox v BT at [114]-[157]."
Mr Justice Arnold decided that each of those conditions had been satisfied and that it was right to make blocking orders in this case.

A few weeks later the claimants found evidence of other websites that offered counterfeit goods for sale and returned to court with applications for orders to block those sites. In Cartier International AG v British Sky Broadcasting Ltd and others [2014] EWHC 3915 (Ch) (26 Nov 2014) Mr Justice Arnold made the requested orders.

None of the orders made by Mr Justice Arnold or other judges in the earlier cases has ever been appealed successfully and it is unlikely that anyone will appeal or apply to vary this order. As His Lordship reasoned that his jurisdiction derived from s.37 (1) of the Senior Courts Act 1981 there is no reason why blocking should not be made in support of other intellectual property rights such as passing off and registered designs.

If anyone wants to discuss this case, he or she should not hesitate to call me on 020 7404 5252 during office hours or use my message form.

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