When can a High Court grant an injunction to trade mark holders against ISPs to block access to “infringing” websites?
Today the High Court begins hearing an important case about injunctions and the internet.
The question before the Court is whether the owner of a trade mark can obtain an injunction - not against an alleged counterfeiter, or even against the owners and operators of the websites on which counterfeiters sell their items. The Court is instead being asked to grant an injunction against the internet service providers (ISPs), so that websites alleged to be infringing the trade marks are blocked to ISP subscribers.
What makes this a novelty is that such injunctions seem not to have been granted before. Whilst there is a specific statutory provision for copyright holders to obtain injunctions against third party ISPs, there is no similar provision to protect trade marks - or any other intellectual property rights (IPRs).
So, can the High Court grant such injunctions? And, if so, what protections will there be to prevent misuse of this novel jurisdiction.
The claimants in this case are Cartier and two related companies. They say the High Court does have this jurisdiction, under either the Senior Courts Act or the EC's Enforcement Directive (or both). The defendants in the case - BSkyB and the other main ISPs - deny that there is any such jurisdiction. The case starts today before Mr Justice Arnold, the experienced Chancery judge who has already decided a number of cases involving the enforcement of IPRs on the internet.
Nobody sensible wants to give comfort or support to counterfeiters. But it is not difficult to see the problems which such injunctions may cause to other people using the internet. For example, a whole website could be blocked just because of the activities of a few sellers. Or a rights holder may threaten to apply for an injunction on the pretext of an alleged infringement when all that is happening is unwelcome consumer criticism or parody. There is also a matter of principle: such injunctions should never be a first resort of a lazy rights holder but the limited last resort of a rights holder who has genuinely tried other available means. And then there is the simple issue of effectiveness: injunctions should not be granted in vain and, as the websites will still exist, the orders of the Court can be still be circumvented.
Mr Justice Arnold has kindly given permission for the Open Rights Group (ORG) to make written submissions on whether the Court has the jurisdiction to grant such injunctions and, if so, how the legitimate rights of third parties should be protected. The submissions - written by myself, with the assistance of ORG legal director Elizabeth Knight and barrister Greg Callus - contend that should the High Court hold that it can grant the requested injunctions then it should only do so when the injunctions would be effective and proportionate, and the Court should ensure always that the legitimate rights of third parties are protected. ORG has submitted that the appropriate test to be adopted by the Court should be:
This Court should not grant an injunction against ISPs in respect of alleged infringements of trade marks or any other intellectual property right unless:
- the Court is satisfied that the order is proportionate, and not only proportionate as between the parties but also in respect of third parties;
- the Court is satisfied that the order is effective (and dissuasive, to the extent that has a different meaning); and
- the Court is satisfied that the order contains safeguards against abuse.
ORG has also made submissions as to what should be the relevant considerations for each limb of this test.
In respect of proportionality, the ORG has submitted that in granting any proposed order the Court should have regard to the following: the duration of the order and that it will not endure longer than necessary; the scope of the order and that it does not cover more websites than necessary; the relevant third parties (other than the alleged counterfeiters) and how the proposed order will affect them; whether the rights holder undertakes to compensate any third party whose lawful activities are interfered with by the order; any defences that may be available to the alleged counterfeiters; and whether the proposed order creates any barriers to any legitimate activity (including trade).
In respect of effectiveness (and dissuasion), ORG has submitted that in granting any proposed order the Court should have regard to the following: whether the remedy would be completely or only partially effective; the current states of the relevant technology and of the technological knowledge of internet users, and any evidence that the order can be circumvented; and whether any dissuasive effect is balanced against the inconveniences caused to third parties engaged in lawful activity.
And, finally, in respect of safeguards against abuse, ORG has submitted that in granting any proposed order the Court should have regard to all the following: whether the rights holder has made any real attempt (and not just perfunctory attempt) to seek a more direct remedy against the alleged infringers and the hosts of the website and that the application before it is a genuine last resort; whether the alleged infringers are engaged in commercial or non-commercial activity, and here the Court should have special regard to forms of non-commercial speech such as parody and criticism; whether the rights holder will continue to make efforts to identify and enforce its rights directly against the domain holder and alleged counterfeiter; whether the terms of the order mean that the ISP will ensure that anyone going to the landing page(s) (including the domain holder) will have sufficient information on that page to apply to vary or discharge the order (and ideally a copy of the order); whether the terms of the order mean that the ISP will ensure that the proposed replacement landing site will serve no commercial purpose for the rights holder (and whether there will be a safeguard against the site being used by the rights holder for advertisements or redirections to commercial sites); and whether the correspondence or other conduct of the rights holder shows that the jurisdiction of the Court may be being abused.
As this is a test case, the written judgment will be influential. Whilst ORG (and indeed the ISPs) are neutral in respect of the underlying alleged infringements of the trade marks in this case, it is crucial that the coercive force of a Court injunction is not granted lightly, especially where the legitimate rights of third parties will be affected. It is hoped that, should the Court hold that it has the jurisdiction to grant the injunctions, it sets out a test to be followed which ensures that in future similar injunctions are only granted when it can be shown that the injunctions are proportionate, effective, and have safeguards for the legitimate rights of other users of the internet.
David Allen Green is a lawyer at Preiskel & Co LLP and a journalist. He is acting for ORG pro bono in this submission.