BT in UK Court Battle Over Website Blocking for Trade Mark Abuse

[Len]

Two broadband providers, BT and sibling EE, have today gone to the Supreme Court in London to appeal two key aspects of an earlier ruling, which forced major UK ISPs to start blocking websites that were found to sell counterfeit goods (i.e. abuse of Trade Mark).

Previously major ISPs like BT, Virgin Media, Sky Broadband and TalkTalk could only be forced, via a court order, to block websites if they were found to facilitate internet copyright infringement (piracy) under Section 97A of the Copyright, Designs and Patents Act. But in 2014 the High Court extended this to include sites that sell counterfeit goods (here) and thus abuse company trademarks (logos).

The providers initially appealed this decision, not least by stating that Cartier and Montblanc (they raised the original case) had provided “no evidence” that their networks were being abused to infringe Trade Marks and that the UK Trade Mark Act did not include a provision for website blocking. Not to mention the unlikely risk that such a law could be applied in an overzealous way (imagine eBay being blocked due to a dodgy seller).

On top of that the providers’ also noted that such sites weren’t heavily used, unlike the major piracy havens that have already been restricted, and thus they felt as if it would not be proportionate for them to suffer the costs involved. As we’ve previously reported, website blocking is anything but cheap and that often goes for both the ISPs and Rights Holders (here).

In April 2016 this case went to the Court of Appeal (London) and the ISPs lost (here) but it now looks as if some of them didn’t completely give up. Today the Supreme Court began hearing a new appeal from BT and EE (Case ID: UKSC 2016/0159), which challenges two aspects of the related blocking order. Once again Cartier International AG, Monblac-Simplo and Richemont Int Ag are opposing.

Case summary

Issue(s)

* The threshold conditions for the imposition of an order requiring internet service providers (“ISPs”) to block or attempt to block access to websites infringing registered trademarks;

* Whether ISPs, as innocent parties, should be required to bear the costs of such blocking orders.

Facts

The appellant ISPs were ordered to block or attempt to block access to certain websites advertising and selling counterfeit copies of goods to which the respondents owned the trademarks. The orders, the first of their kind, were made under s. 37(1) of the Senior Courts Act 1981, Article 11 of Directive 2004/48/EC on the enforcement of intellectual property rights (which obliges Member States to ensure rightholders are able to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right) not having been implemented in domestic law.

The judge held that although the ISPs were not guilty of any wrongdoing, they were inevitable and essential actors in the infringing activities of the websites in question. The ISPs were also required to bear the costs of implementing the orders. The Court of Appeal dismissed the appeals of the ISPs in their entirety.

The case appears to be a new approach to fighting an old argument, although given previous rulings we rather suspect that the ISPs may face an uphill struggle. Mind you they do have a very valid point about being “innocent parties” and related costs could easily get out of control, particularly if providers are forced to block lots of relatively minor websites.