Safeguards needed for innocent third parties in website blocking cases

The High Court has recognised the intervention of a non-profit campaign group in a case concerning internet trade mark infringement.

In a unique move, Cartier International, Montblanc and Richemont recently launched an action in the Chancery Division of the High Court, demanding an injunction against Internet Service Providers (ISPs), BSkyB, BT, EE, TalkTalk and VirginMedia, to block websites that were illegally using their trademarked logo for selling counterfeit products.

In his judgment, Mr Justice Arnold ruled that ISPs should block a number of websites which have been using the trade marks of Cartier and other related companies for counterfeiting activity.

The judge made orders substantially in the form sought by the claimant, Richemont, noting: "The operators of the target websites are infringing the trade marks by placing on the internet advertisements and offers for sale which are targeted at UK consumers. The ISPs have an essential role in these infringements, since it is via the ISPs' services that the advertisements and offers for sale are communicated to 95 per cent of broadband users in the UK. It is immaterial that there is no contractual link between the ISPs and the operators of the target websites."

However, Arnold J gave permission for the Open Rights Group's (ORG) to make written submissions on whether the court had the jurisdiction to grant such injunctions and, if so, how the legitimate rights of third parties should be protected.

The submissions contended that should the court hold it could grant the requested injunctions, and it should then only do so when it would be effective and proportionate. Furthermore, the court should ensure that the legitimate rights of third parties are protected.

The court decided to adopt the key submission from ORG that any such orders against ISPs should always contain safeguards against abuse. The judge also adopted ORG's proposal for such safeguards.

In particular, Arnold J 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. He adopted ORG's concrete proposals about the information to be included on landing pages and 'sunset clauses' as safeguards against abuse.

The High Court also thanked ORG for its "brief, moderate and helpful" written submissions, which were "sensibly" as opposed to those presented by the other parties.
 

ORG's legal director Elizabeth Knight said: "While we are disappointed that the court decided it had jurisdiction to grant these blocking orders, we are very pleased that the judge took account of ORG's intervention and recognised our concerns by ensuring that safeguards against abuse were included in the judgment, including landing page information and sunset clauses."

David Allen Green, head of media at Preiskel & Co, who acted pro bono for ORG commented: "ORG is not on the side of counterfeiters. But innocent internet users can end up being affected by these orders. The court should be mindful of how these orders can impact on third parties. Had it not been for ORG's submission, various points may well not have been included in today's judgment."

Green continued: "We are grateful to the High Court for allowing our intervention and in particular, recognising that the test to be applied by the court includes the requirement of there being safeguards against abuse. We hope that this intervention will go some way to help ensure that future claimants cannot use blocking orders to restrict legitimate activity or free speech."