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The ongoing fight against online infringement has taken a new twist as Cartier International, owners of the luxury Mont Blanc and Cartier brands, has won its case in the High Court to force ISPs to block access to websites allegedly infringing its trade mark. Until now only copyright infringers (such as music and film distributors) have been pursued in this manner. Elizabeth Knight, Open Rights Group’s (ORG) Legal Director, explains her initial concerns about this new development and the safeguards suggested by ORG that have now been accepted by the judge:

Elizabeth Knight, ORG Legal Director

Elizabeth Knight, ORG Legal Director

Blocking websites for trade mark ‘infringement’

The High Court has now decided on this case and instructed the largest UK ISPs to block the reported websites for alleged trade mark infringement. The case was brought by Cartier International and related companies who were seeking an order to force BSkyB, BT, EE, TalkTalk and VirginMedia to block a number of websites that it has claimed have been using the brands’ trade marks for counterfeiting activity.

The Open Rights Group (ORG) believed the case could set a worrying precedent that could threaten the rights and activities of innocent third parties and that is why ORG made submissions to the Court as a third party intervener, with the aim of ensuring that public interest was taken into account.

This case is novel, as it is the first time ISPs are being asked to block websites on the basis of alleged trade mark (rather than copyright) infringement. Whilst ORG took no position on the merits of the trade mark claims in the current case, the outcome has implications for future trade mark blocking applications. The injunctions were not against an alleged counterfeiter, or the owners and operators of the websites they use, but against the ISPs, so that websites alleged to be infringing the trade marks are blocked to ISP subscribers.

Existing concerns
ORG already has concerns about existing copyright blocking orders. In particular, we are concerned about the lack of a requirement of publicity for the court orders.

Without publicity of blocking orders, affected parties other than the ISP may not know to apply to the Court if they believe the order should be changed. The orders are also indefinite, whereas domains often change ownership and IP addresses are regularly reassigned. This means a continuing block may affect innocent individuals who may know nothing about it. We strongly believe there must be sufficient information available on the relevant landing page to allow people to apply to vary or discharge the order when necessary.

ORG is also campaigning for a new error code, Error 451, which would be shown when people visit a website that is blocked by reason of a court order. The aim is to establish a format that is transparent and which explains which law and organisation are responsible for the block and includes a link to the relevant court order.
In the Cartier trade mark case the Court was asked to extend the grounds on which website blocking orders may be granted. The Court considered two main issues: whether it has jurisdiction to grant an injunction in these new circumstances; and if so, the test for granting such injunctions.

Potential impact on free speech
ORG was neutral about the details of this particular case and did not oppose the application itself. Our concern was that if the claimants are successful (which they have been), the ruling could be used as a basis for future applications for blocking orders by less worthy claimants. Such orders may be contrary to the public interest.

For example, there is a possibility this could be used to block websites that use trade marks to legitimately criticise or parody well-known brands, potentially restricting free speech.

Trade mark blocking orders could also affect commercial third parties who have no involvement in any alleged infringement, for example law abiding businesses whose products appear on websites alongside those of companies involved in infringing activity. The use of blocking orders in these circumstances could infringe on the freedom of speech and legitimate business activities of third party Internet users.

ORG’s suggested and accepted safeguards
ORG suggested to the Court that a test should be adopted so that blocking orders are only granted in circumstances where they are “proportionate (including in respect of third parties), effective and contain safeguards against abuse”. Mr Justice Arnold agreed with ORG’s proposal for such safeguards and:

  • Accepted ORG’s submission that the orders should be required to have safeguards against abuse, and that this was a requirement which had been missed by the other parties (para. 191);
  • Adopted ORG’s concrete proposals about the information to be included on landing pages and “sunset clauses” as safeguards against abuse (paras. 262 to 265); and
  • Thanked ORG for its “brief, moderate and helpful” written submissions, which were “sensibly” not opposed by the other parties (para. 7).

Safeguards against abuse are particularly important and we are delighted these were sensibly considered and implemented by Mr Justice Arnold. Without these a dangerous precedent may have been set for future applications of a similar nature which may have restricted free speech and legitimate activities by innocent third parties.

Entanet’s Opinion
We’re delighted to hear ORG’s safeguard suggestions were appropriately considered and implemented and echo ORG’s original concerns over the precedents this could have set. It is however concerning to see blocking measures extended as the debate over their effectiveness continues and, once again, this brings into question the ISPs role in the ongoing infringement fight – should ISPs be policing the Internet? We don’t think so!

We also agree that a specific error page for website blocks by court order would be very useful – providing the user with a clear reason describing why they can’t access the page to help users and domain owners identify incorrect blockings more easily and have them rectified quickly. We will be interested to see if any further progress is made on that aspect of the campaign.

Have your say!
Do you think ISPs should be forced to block access to websites for trade mark infringement? Do you have similar concerns about this process? Have you been affected by existing web blocking practices? Share your experiences and let us know your opinions by leaving us a comment below.

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