Supreme Court ruling on web-blocking costs shouldn’t affect music cases

[Len]

The UK’s Supreme Court has ruled that intellectual property owners should cover some of the costs of web-blocking when it is trademark infringement that the blockades seek to prevent. However, the judgement shouldn’t affect web-blocks secured by copyright owners like the record industry.

Web-blocking, of course, has become an anti-piracy tactic of choice for copyright owners in recent years. Record labels and movie studios go to court and get injunctions forcing internet service providers to block their customers from accessing websites that exist primarily to facilitate copyright infringement.

ISPs usually moan loudly about copyright-based web-blocks when they are first introduced, but then fall in line and start implementing the blockades whenever a court instructs them to do so. Plus, of course, as more ISPs move into providing video-on-demand services, they tend to become more sympathetic to the piracy gripes of copyright owners.

Trademark owners though? They can go fuck themselves. Or at least until ISPs set up websites flogging legit luxury goods. Which is why there was another round of loud ISP moaning when the High Court issued a web-block injunction in 2014 aiming to stop the infringement of trademarks owned by Compagnie Financière Richemont – which includes the Cartier mark – through the selling of counterfeit goods online.

The Court Of Appeal upheld that injunction two years later, though tel cos BT and EE fought on over the issue of who should pay to enforce those web-blocks.

The net firms weren’t objecting to covering all the costs associated with web-blocking. Some of the IT costs they’d have to cover anyway as part of their efforts to block other illegal content. However, they did object to costs directly associated with the Cartier web-blocks, both in terms of initial set up and the ongoing task of keeping offending sites blocked when they move to new domains.

That dispute went to Supreme Court, which ruled earlier this week. It concluded that the rights owner – ie Cartier – should shoulder any specific costs related to web-blockades that are protecting its rights.

Said the judge: “There is no legal basis for requiring a party to shoulder the burden of remedying an injustice if he has no legal responsibility for the infringement and is not a volunteer but is acting under the compulsion of an order of the court. It follows that in principle the rights-holders should indemnify the ISPs against their compliance costs”.

However, while the mechanics of web-blocking are the same whether you’re seeking to stop copyright or trademark infringement online, the specific laws that enable that web-blocking are different. Which means the precedent set in this case should only apply to trademark protecting web-blocks, and therefore not the flurry of web-blocking injunctions already secured by the UK record industry, of which more will surely follow in the future.

Commenting on this week’s ruling, Kiaron Whitehead, General Counsel at record industry trade body BPI, told CMU: “Whilst the UK Supreme Court’s ruling is disappointing, it is a narrow judgment based on the quirks of trademark infringement. The limited finding that Cartier must pay the ISPs’ implementation costs does not apply to music industry cases. BPI-led cases are based on copyright-infringement-driven website blocking, for which there are long-standing precedents in the UK and beyond that ISPs pay their own costs”.