Mark_work.docx

Intellectual Property Law ‘STANDING EXISTING WEBSITE BLOCKING JURISPRUDENCE, DOES THE CARTIER RULING CHANGE THE RULES ON COST ALLOCATION FOR COPYRIGHT WEBSITE BLOCKING ORDERS?’ ABSTRACT Platform used rigorously around the world today not only by legal users but even by individuals or group of cybercriminals is internet. With the increase in supply of counterfeit goods and infringement of other copyrights the need for taking rigorous procedural safety has become an essential requirement to safeguard this platform. The current dissertation analyses the decision of Supreme Court in Cartier International AG & Ors V British Telecommunication Plc & Anor on protecting trademarks by ordering the trademark holders to indemnify the Internet Service Providers with the website-blocking injunction such that the Internet Service Providers (ISPs) are not obliged to pay the cost for blocking access to websites for selling counterfeit goods. The current dissertation is divided into five sections. Section I of the dissertation introduces the topic and analysis to the reader through background, literary review, methodology and explains in details infringement and injunction along with the advantage of applying for an injunction. Section II of the dissertation discusses in detail blocking injunctions from European Union (EU) and UK perspective and various laws devised by them for the same. Section III obligation of intermediaries and how much they are accountable to bear the liability of infringement and injunction. Section IV aims at discussing who should be the cost bearer when an injunction has been obtained against an innocent intermediary for preventing the use of its facilities by the wrongdoers for purposes that are unlawful. Finally, Section V concludes whether the outcome of the decision in the above case is applicable to injunctions in the copyright field based on the analysis made.

ABBREVIATION

Intellectual Property Law EU: European Union ISP: Internet Service Providers OSP: Online Service Providers N&T: Notice and Takedown IP: Intellectual Property UK: United Kingdom

INTRODUCTION

Intellectual Property Law Internet is indisputably a favorable platform for individuals or organizations that wish to make profit through their activities or product base. However, these activities cannot be restricted or termed to be only legal activities; they may also include illegal activities. The cheap and easy access nature along with the advantage to hide ones’ identity has made internet an easy target for cybercriminals to sell their counterfeit goods online. Many recent surveys published by OCED and EUIPO clearly state that counterfeit and pirated products in the international trade amount to $461 billion (data from 2013) which accounts up to 2.5% of world trade. Further, the report states that EU contribution to the above mentioned value includes $116 billion which is 5% of EU imports.1 There are many ways for tackling sale of counterfeit goods and products online. However, preventing access to websites and avoiding infringement of copyrights and trademarks requires rigorous procedural safety measures as the process of curbing infringement activity has proved to be expensive and ineffective. The necessity for safeguarding this primary public tool is more pressing necessity. Enforcement of copyright online has become a renewed effort of the online service providers (OSPs) in the European Union. Traditionally, the service providers benefitted from safe-harbor immunity only to the extent of their role involved in assisting the online enforcement. However, this traditional position is coming under pressure due to increased spread of ‘blocking injunction’ in the EU and recent proposals made for reforming the position of the service provider. Ordering the ISPs to block infringing websites has been evolving rapidly in Europe that required effective enforcement of intellectual property rights. The practice for the same has been increasing as it is proven to be heavy handed, ineffective and disproportionate to go directly after the

Granstrand Fule, and Colak Monika, “Is website blocking an effective tool against IP infringement,” 2017; http://www.managingip.com/Article/3711451/Recent-rulings-on-website-blocking.html 1

Intellectual Property Law infringers. Further, targeting the website operators is also not an easy task because they often provide services from other jurisdictions or conceal identity. As a result, the most efficient option left to the right-holders is filing injunction against ISPs. However, the process of enforcing injunction rights is not easy and thus encourages search of new tools.2 The most common tool used fight against the sale of the counterfeit goods and products online as mentioned above is website blocking. Website blocking order can be considered as new frontier in fight against online counterfeiting. The order for website blocking through issuance of injunction order on ISPs for protecting the right and interest of the copyright and trademark holders has become recurring fashion which has resulted in many delicate questions considering the proportionality between ISP’s freedom of establishment in one hand and interest of IP holders on other hand. Additionally, questions related to rights of internet users in relation to communication, liability of ISPs for infringement and efficiency in blocking websites to fight counterfeiting. However, the most recurring question is related to the associated costs and who should be bearing the cost of complying with the injunction order when this order is being obtained against an innocent intermediary to prevent wrongdoers from using his facilities for illegal purposes. Considering the above principle related to website blocking injunction and the EU laws that deal with protection of and enforcement of intellectual property rights, the Supreme Court gave its decision in Cartier International AG & Ors V British Telecommunication Plc & Anor3 relating to rights of trademark or copyright holders and innocent intermediaries (the ISPs). The decision clearly stated who is the actual cost bearer of website blocking injunction, however it is still not

Griger and Izyumenko, “The Role Of Human Rights In Copyright Enforcement Online: Elaborating A Legal Framework For Website Blocking,” American University International Law Review, Article 7, Volume 32 Issue 1, Issue1, 2016; https://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?referer=https://www.google.com/&httpsredir=1&article=1939&context=auilr 3 [2016] EWCA Civ 658 2

Intellectual Property Law clear whether this decision is applicable to every form of trademark or copyright injunction. 4 The below sub-section would provide the readers a brief understanding of the background of the case that has bought in revolutionary change in website blocking injunction liability. BACKGROUND – CARTIER CASE The famous decision in the Cartier Case may be considered as one of the landmark of decisions on who should be held liable for unlawful online actions of the third party users. Before discussing the judgment and universal applicability of the same it is essential for the reader to understand the facts of the case briefly. The case is concerning website blocking, where three companies Cartier, Montblanc and IWC request an injunction order to block customers of ISPs access to certain target websites that are advertising counterfeit goods and products of goods designed by the above mentioned companies. The ISPs (Sky, BT, EE, TalkTalk and Virgin) were appealing against this order that was given in 2014. As those ISPs dominated the UK broadband market, their intervention was for sure to have a likely impact on the commercial viability in the UK of the target websites. The Supreme Court considered two issues in this case: firstly, considering the threshold conditions that required ISPs to block or attempt to block those websites that are infringing

Coombs George, “BREAKING NEWS: Supreme Court rules that trademark owners must indemnify ISPs for costs of implementing a site blocking order,” MediaWriters, 2018; https://www.mediawrites.law/breaking-news-supreme-court-rules-that-trademark-owners-must-indemnifyisps-for-costs-of-implementing-a-site-blocking-order/ 4

Intellectual Property Law registered trademarks and secondly, on whether ISPs as being the innocent intermediaries should bear the cost for blocking such orders.5 Based on the facts of the case the Supreme Court held that with respect to the question on who should bear the cost complying with injunction is a matter of nation law, but neither the directives of EU nor the EU Court of Justice judgments have provided any specific rules with regards to the cost of compliance. Thus, to provide understanding on who should bear the costs the Supreme Court immediately allowed the appeal and by applying ordinary principle under the English Law held that an innocent intermediary unless proved to be guilty of infringement should be entitled to cost of compliance. Additionally, the Court noted that the ISPs serve merely as conduit and should not be held liable for infringement of trademarks even when the liability protection provided by Ecommerce Directive is absent.6 Denying the arguments of the trademark owners that the ISPs are indirectly benefitting by these counterfeiting trades, the Court viewed that the injunction order for website blocking are sought by right-holders for their own commercial interest and it is the cost of business to the owner of rights and not for the benefit of the innocent parties. It can be presumed from the above that the ISPs if proved as innocent third parties should not be held liable for bearing the cost of injunction; however, it is not clear whether the conclusion of this case is applicable to cases dealing with copyright infringement. Thus, the dissertation aims at finding the answer

Coombs George, “BREAKING NEWS: Supreme Court rules that trademark owners must indemnify ISPs for costs of implementing a site blocking order,” MediaWrites, 2018; https://www.mediawrites.law/breaking-news-supreme-court-rules-that-trademark-owners-must-indemnifyisps-for-costs-of-implementing-a-site-blocking-order/ 6 Coombs George, “BREAKING NEWS: Supreme Court rules that trademark owners must indemnify ISPs for costs of implementing a site blocking order,” MediaWrites, 2018; https://www.mediawrites.law/breaking-news-supreme-court-rules-that-trademark-owners-must-indemnifyisps-for-costs-of-implementing-a-site-blocking-order/ 5

Intellectual Property Law for the same. In this process it is essential to provide the readers brief understanding of the concepts associated with infringement and injunction. LITERARY REVIEW The current section of the dissertation aims at discussing analysis made by different law experts with regards to the Supreme Court ruling in the Cartier case and how effective tool is website blocking in controlling infringement of IP rights. Additionally, this section also discusses contributions of different authors on varied concepts that help in the analysis of the case such as injunction, infringement of IP rights, and website blocking order etc., The reason for considering the contribution of these authors and law experts is to provide the readers understanding of different concepts and whether the judgment in the Cartier case is applicable universally to all the IP rights or is limited to only trademark infringement. Firstly, we begin our dissertation with the insights of Warren Rachel 7, who aims in providing the detailed analysis of the Cartier case and discusses whether ISPs may be held liable for the cost of compliance. In her insights she notes that the cost of infringing the rights of the individuals might become prohibitively expensive and by taking the example of Banks and associated fixed administrative charges at modest levels, she states that even right holders and ISPs should develop this approach such that both parties would gain certainty. Secondly, we would be analyzing the work of Marsoof Althaf8, who evaluates the ways blocking injunctions have been implemented in the UK. Considering it as a court supervised

Warren Rachel, “CARTIER INTERNATIONAL AG AND OTHERS (RESPONDENTS) V BRITISH TELECOMMUNICATIONS PLC AND ANOTHER (APPELLANTS),” 2018; https://www.footanstey.com/updates-a-publications/3820-cartier-international-ag-and-others-respondentsv-british-telecommunications-plc-and-another-appellants 8 Marsoof Althaf, “The Blocking Injunction – A Critical Review of Its Implementation in the United Kingdom Within the Legal Framework of the European Union,” ResearchGate, 2015; https://www.researchgate.net/publication/283872471_The_Blocking_Injunction__A_Critical_Review_of_Its_Implementation_in_the_United_Kingdom_Within_the_Legal_Framework_of_the_European_Union 7

Intellectual Property Law mechanism, unlike the extrajudicial practice of the N&T, the author also discusses problems associated with the same such as greater transparency, cost of implementing these orders, balance and accountability in contrast with the N&T approach. The main reason for considering this work is the objective of the article that aims at analyzing critically the blocking injunction and the way it is being implemented in the UK. Further, through analysis the author concludes that a proportionate blocking order would not hinder legitimate trade, if it does impact then the order is not proportionate. Thirdly, by analyzing the works of Fule and Colak9we discuss whether website blocking order is an effective tool to curb IP infringement. The reason for considering the work of these experts is because their analysis is not pertaining to the Cartier case but also reviews many other case laws that are associated with IP infringement. The authors also discuss liability of ISPs and operators with the help of various case studies. They clearly portray in their analysis that combating infringement or piracy in a meaning way is a difficult task and not just blocking access to infringing websites but by completely removing them from the original source infringement can be curbed. Fourth, the dissertation would be discussing the work of Lindsay David10, on intermediaries’ liability for illegal online actions of the third parties. The author discusses in detail cost of blocking injunctions and also the analysis of allocation of costs. Further, the article argues the need for the jurisdictions to ensure that the injunction of website blocking does not interfere unreasonably with the intermediaries, users and website operators right. The author argues that

Fule Granstarand Linda and Colak Minika, “Is website blocking an effective tool against IP infringement,” Managing Intellectual Property, the Global IP Resource, 2017; http://www.managingip.com/Article/3711451/Recent-rulings-on-website-blocking.html 10 Lindsay David, “WEBSITE BLOCKING INJUNCTIONS TO PREVENT 0COPYRIGHT INFRINGEMENTS: PROPORTIONALITY AND EFFECTIVENESS,” Thematic:Website Blocking Injunctions to Prevent Copyright Infringements, (2017); http://www.unswlawjournal.unsw.edu.au/wp-content/uploads/2017/11/404_10.pdf 9

Intellectual Property Law being targets of attempts to control the end-users unlawful activities the intermediaries may not be completely held accountable for infringement of IP rights. In addition, to above literary reviews the dissertation would also discuss the analysis made on the Cartier case and on the topic whether innocent intermediary should be held liable for unlawful act of third parties in different publications, and news articles such as O’Sullivan T. Kevin11 whose work focuses on the position of the intermediaries under Article 16 of the European Charter of Fundamental Rights that have the strength to curb the obligation of accountability imposed on the intermediaries; Izyumenko Elena and Geiger Christophe12 analysis on the effectiveness of implementing the website blocking order and pros and cons associated with website-blocking injunction by analyzing different EU laws, and Moscona Ron’s13 analysis on how effective is the website-blocking order in reducing infringement of IP rights as completely curbing this act from root level is not an easy task and with the help of certain EU and the UK legislations the author even provides insights on different alternative measures available for fighting counterfeiting and whether they could be applicable in Cartier case.. The reason for considering the literary works of the above experts is because these works help in analyzing the impact of legislations and rules related to website blocking injunctions on different case studies and compare the ruling with different case studies to understand if this

O’Sullivan Kevin, “COPYRIGHT AND INTERNET SERVICE PROVIDER 'LIABILITY': THE EMERGING REALPOLITIK OF INTERMEDIARY OBLIGATIONS,” ResearchGate, 2018; https://www.researchgate.net/publication/329327305_COPYRIGHT_AND_INTERNET_SERVICE_PROVIDER_'LIABILITY'_THE_EMERGI NG_REALPOLITIK_OF_INTERMEDIARY_OBLIGATIONS_Forthcoming_in_the_Intl_Review_of_Intellectual_Property_and_Competition_L aw 12 Izyumenko Elena and Geiger Christophe, “The Role of Human Rights in Copyrights Enforcement Outline: Elaborating a Legal Framework for Website-Blocking,” American University International Law Review, Volume 32, Issue I, Issue1, Article 7, 2016; https://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?referer=https://www.google.com/&httpsredir=1&article=1939&context=auilr 13 Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 11

Intellectual Property Law ruling is applicable universally or is pertinent to only trademark infringement cases. Additionally, these literature works will provide the readers a proper understanding of the dissertation and what to expect from it. METHODOLOGY An effective methodology is much essential for gathering information that is required for the proper flow of the dissertation. The methodologies implemented discusses the different laws and directives that have been implemented by the EU and the UK to curb infringement of IP from root level. However, we cannot restrict our research methodology to analysis related only to the Cartier case but also use methodology that is required for analyzing whether the ruling of Cartier case has any form of limitations or if it is universally applicable. Research methodology begins by discussing the different EU and the UK laws and directives implemented to curb infringements of rights and injustice associated with the same. In addition to the below directives, we would also be reviewing different case laws and compare their ruling with the ruling given in the Cartier case such that it will help the reader in understanding situations where the ruling is applicable and where the ruling does not provide proper justification in comparison to other case laws. The field work of our analysis begins with analyzing the different laws and directives that have been implemented to avoid infringement of IP rights in every form. Knowledge of different laws implemented will help us in understanding the measures taken by every nation to overcome the issues related to infringement of copy rights and other form of IP rights on internet. Our analysis revolves around the thought that how much can the intermediary made liable for the act of an end user or a third party. Are only intermediaries liable for the action of

Intellectual Property Law third party and whether the ruling in Cartier case is a universally accepted issue. However, limiting our analysis only to the Cartier case judgement is not advisable, thus we would be comparing this case study with different case laws and concluding pros and cons of implementing the ruling in Cartier case as a universally accepted fact. The different legislations and directives used in our dissertation include: 

Position of these intermediaries under Art.16 of the European Charter of Fundamental Rights,

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Directive 2001/29/EC of the European Parliament and of the Council of May 22, 2001

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Directive 2004/48/EC of the European Parliament and of the Council of Apr. 29, 2004

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Cartier International AG & Ors v British Telecommunications Plc & Anor (2018)

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Arts. 13 and 14 of the E-Commerce Directive

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Article 47 of the Charter in relation to injunctive relief

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Sec 97 of the Copyright, Designs, and Patents Act 1998 of the UK, which give the court the authority to issue injunction against a service provider including ISPs if it is proved that they did have the knowledge of infringement of the IP rights by the third party.

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Form of order requiring the ISPs to block, or attempt to block access to their customer for offending websites was developed by the UK along with the help and consent of the copyright holders, and ISPs themselves and

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Directives of interest such as the E-Commerce Directive (2000/31/EG), the Infosoc Directive (2001/29 EG) and the Enforcement Directive (2004/48 EG) that ensure ISPs are not held liable of infringement of that are originated from hosting, conduit, and caching

Intellectual Property Law activities as long as the ISPs are passive or proved ignorant of the illicit activity, however, these rights make ISPs liable within certain limits, among others. INFRINGEMENT AND INJUNCTION INFRINGEMENT: An act that means breaking law is known as Infringement. Exploiting a product, invention, idea of an individual, or organization that are protected under the IP Law, without proper authority, allowance or permission of the person who owns the authority to those rights. This form of exploiting ranges from utilizing technology without permission, or selling counterfeit goods such as medicines or software to copying a film and making it available without the permission of the owner is termed as infringement. The act of infringement is an offence it can be either civil or criminal offence. Every business has its own form of measures to deal with this act.14 INJUNCTION: Legally injunction is a court order, through which an individual is prevented from performing certain acts or is required to perform certain acts. The types of injunctions include final and interim injunction, mandatory and prohibitory injunction, with arbitration proceedings injunction and springboard and quia timet injunction. This legal order can be applied by many different forms of organization and individuals. Initially an injunction obtained is interim or temporary in nature obtained from the courts that lasts till further court orders. Proper evidence is very essential for applying for an injunction.15 BLOCKING INJUNCTION – EU Order –Introduction in UK

“Intellectual Property Crime and Infringement,” Guidance, gov.uk; (https://www.gov.uk/guidance/intellectual-property-crime-andinfringement#dealing-with-infringement 15 Spooner Andrew, “UK: Guide to Injunctions,” mondaq, 2017; http://www.mondaq.com/uk/x/651836/Contract+Law/Guide+To+Injunctions 14

Intellectual Property Law The current chapter analyzing the works of different experts as discussed in the literary review section provides the readers knowledge on blocking injunction by discussing the concept and its effectiveness in curbing infringement of IP rights. A court supervised mechanism that avoids the key criticism leveled against Notice and Takedown (N&T) is blocking injunction. Blocking injunction is that process where the aggrieved IP owners has the authority to obtain injunction from the court compelling the ISPs to block access to infringe or target websites. Blocking injunction becomes a pragmatic solution when intermediaries from foreign base host infringement content making it difficult to control their conduct through the domestic court process. It is an effective tool for protecting and enforcing IP rights.16

Tackling illegal content on the internet required implementation of strict measures and for many years IP rights owners followed the N&T approach for removing infringing content from the online that aggrieved and infringed the interest of the IP rights holders. However, this approach faced major criticism in relation to the determinations made by the intermediaries regarding the legality of the website, which may be influenced by their own potential liability that is capable of being imposed under the legal framework that is being operated by them. Thus, it can be observed that intermediaries in the process of removing the content that they presume to be illicit feel that it is the most assured way to avoid liability, but what if in the process of removing illicit content even the legitimate content is removed. It is this over cautious attitude of the intermediaries towards the N&T and lack of effective system in determining legality of the content through unbiased, balanced and independent mechanism Marsoof Althaf, “The Blocking Injunction – A Critical Review of Its Implementation in the United Kingdom Within the Legal Framework of the European Union,” ResearchGate, 2015; https://www.researchgate.net/publication/283872471_The_Blocking_Injunction__A_Critical_Review_of_Its_Implementation_in_the_United_Kingdom_Within_the_Legal_Framework_of_the_European_Union 16

Intellectual Property Law under the N&T the need for a new methodology increased. The new approach included the aggrieved IP owners to approach the courts to seek injunctions compelling the ISPs to block access to targeted websites. This new approach commonly known as the blocking injunction targets all the ISPs enabling the right-holders to seek effective remedy to curb infringement of their rights.17 Website blocking injunction can be termed as a familiar weapon used to protect the interest and rights of the intellectual property holders. It can be considered as one of the familiar weapon to control infringement of goods in illicit manner and a familiar weapon in the continuing battle between the IP rights holders and the infringers. The EU implemented the Enforcement Directive (Council Directive 2004/48/EC) to ensure a protection level to the rights of IPR holders and also implement those remedies that are dissuasive, proportionate and effective. The Directive specifically states that the IPright holders must be in a position to apply for both interlocutory or permanent injunction against the infringers especially those whose services are used by the third parties to infringe the rights and interests of the right holders. Section 97A of the Copyrights, Design, and Patents Act 1988, was introduced by the UK in response to the EU directive which provides express statutory powers to issue blocking orders especially in those circumstances where the ISPs even after having the knowledge that the third party is utilizing its internet services for infringing the rights. Over the years the UK has been implementing these injunctions against those websites that are engaged in illicit peer-to-peer file downloading, sharing and streaming of materials that have been copyrighted.

Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 17

Intellectual Property Law The form order developed by the UK courts in coordination with the ISPs and copyright holders that is granted with consent. Through this form the ISPs are required to block the or assessing their customer access to offending websites to their customers through various technologies. In the UK such order are tend to be granted to those five ISPs that cover 95% of the UK market. Thus, blocking such website would be highly effective where the IP right holders update ISPs to move their websites to new IP address or URL and update their blocking measures accordingly.18 Even though the UK legislature saw the need to introduce legislature or statutory provisions in its copyright legislation with respect to implementing injunctions against the intermediary service providers, the UK government did not see much requirement for updating their laws to comply with the Enforcement Directives. The reason for the particular view was due to the general power of the courts to issue injunctions in a manner that are consistent with the requirements of the Directives. However, until the decision of Richemont case it was not clear that the court has the power to issue injunction and other equitable remedies, thus, the need for introduction of a legislation was felt to confirm that the courts did have the right to issue injunctions against the ISPs. The High Court however resolved the matter stating the UK legislation that gives the courts the general power to issue injunctions should be interpreted in line with the EU directives including the Enforcement Directive.19 The most interesting aspect of the Richemont decision is perhaps the court’s consideration of the Enforcement Directive for issuing an appropriate order against the ISPs. However, the Court did consider other alternate methods some main legal tools available to the right holders against the

Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 19 Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 18

Intellectual Property Law website reselling goods such as: taking proceedings directly against the website operators, issuing take-down notices against offending websites host, seizing the counterfeit goods from the customer and issuing orders against the search engine services to de-index those websites that are offending, among other alternatives. The reason for considering these legal tools is because blocking order injunction is not applicable to every form of IP rights infringement and blocking access to one site may increase the illegal trade on other site. However, even if blocking order did not decrease the trade of online counterfeit goods it did certainly reduce certain offending websites access. Further, it should be emphasized that using the injunction of blocking order to block the access to offending websites is suitable to those sites that are clearly operating in illegal counterfeit goods sale where the above mentioned tools are not suitable in such cases. Additionally, the Court stated that even though the above legal tools are effective in protecting the rights of the ISPs, they are still insufficient to deal with issues such as the Cartiner case, because operators in such cases are not easy to track and it becomes difficult to bring them to the court. Thus, direct legal action is not feasible. Thus, in such cases blocking order may be sought as a primary remedy.20 Thus, it can be noted that there are many legal ways to tackle with infringement of IP rights but the most effective has been the blocking order injunction. Most of the online counterfeit tackling tools have proven to be both expensive and ineffective. Website blocking injunction has proved to be most commonly used tool to fight against the counterfeit goods and service sale and infringement of copyright online. On the other hand issuance of these injunctive orders on the ISPs for safeguarding copyright and trade mark enforcement has been much controversial and topical Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 20

Intellectual Property Law Europe’s legal question in the recent years. Delicate questions concerning the proportionality between the freedom of establishment of ISPs on one hand and the interest of the IP owners on the other hand; liability of the ISPs for infringement and the extent to which they can prevent infringement or can be ordered to remove infringement; and efficiency in blocking the website for fighting the counterfeit of goods.21 Blocking order is not a magic cure to curb infringements of IP rights, it requires both the right holders and ISPs to play vital role in restricting the traders from selling counterfeit goods because traders will try every available way to evade and circumvent the internet to sell their products. Equally, determined consumers will find ways to access these websites. Thus, the right holders should be monitoring the internet and the ISPs should incur the on-going costs associated with implementation of the blocking measures and update them from time to time. The power of website blocking order injunction given to the ISPs is that they deal with the issue of infringement at the point of access to the consumers rather than the later stage. However, blocking orders irrespective of its drawbacks has the potential to impede seriously into the counterfeits mainstream trade and reduce its volume, thus, it would be welcomed well by the brand owners who would make much use of these orders.22 Blocking injunction has become a familiar weapon for both right holders and the ISPs to curb injunction. As discussed above there are express statutory powers to make such powers. The first case that granted to protect the rights of trade mark owners is the Twentieth Century Fox Film Corpn v British Telecommunications plc23 and Twentieth Century Fox Film Corpn v British

Granstrand Fule, and Colak Monika, “Is website blocking an effective tool against IP infringement,” 2017; http://www.managingip.com/Article/3711451/Recent-rulings-on-website-blocking.html 22 Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet Goods,” Dorsey publications, 2014; https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders--a-new-tool-in-the-fight__ 23 [2012] 1 All ER 806 21

Intellectual Property Law Telecommunications plc (No 2)24. Since the judgement in this case similar injunctions have been passed in 17 occasions against the appellant ISPs based on the applications received from the copyright-owners and a high standardization has been achieved and the use of decision in the above case has seemed to increase.25 The UK laws do not have any specific website-blocking injunction provisions in relation to trade mark, thus, the Court faced the issue of jurisdiction in making such injunction under the general power that has been conferred to them under § 37(1) of the Senior Courts Act. The Courts had to face issues related to certain criteria for granting them. Thus, by upholding the decision in the above discussed case and issues associated with the jurisdictions no longer prevail. Thus, we understand the effective nature of the blocking injunction. However, our dissertation does not just evolve around the website-blocking order but the major discussion is related to costs. Right holders argued that the ISPs should be held liable for the infringement but ISPs being the innocent intermediaries cannot be held liable to the implementation costs if proved not guilty or co-fringers in the illicit act. Implementation cost and analysis associated with the same would be discussed in detail in coming sections.26 INTERMEDIARY OBLIGATION – LIABILITY to ACCOUNTABILITY The current section would be discussing who should be held liable for bearing the injunction costs either the rights holders or the ISPs. The historical judgement in Cartier case has been favourable for ISP stating that they should not be held liable for bearing costs associated with complying of

24

[2012] 1 All ER 869 “Cartier International AG & Ors v British Telecommunications Plc & Anor,” Casemine, United Kingdom Supreme Court, 2018; https://www.casemine.com/judgement/uk/5b2897e32c94e06b9e19cfc8 26 “Cartier International AG & Ors v British Telecommunications Plc & Anor,” Casemine, United Kingdom Supreme Court, 2018; https://www.casemine.com/judgement/uk/5b2897e32c94e06b9e19cfc8 25

Intellectual Property Law blocking orders. It is based on this judgement the current section would be providing a detailed analysis to the reader as to what are the obligations of an intermediary, the shift from liability to accountability act and to what extent the ISPs should be made completely liable for the illicit act. COST ASSOCIATED WITH BLOCKING INJUNCTION – CARTIER CASE ANALYSIS CONCLUSION Blocking websites is an enforcement tool that is invasive that requires adopting rigorous procedural safeguards, especially when they have been used in context of private enforcement. In the current era the vastness of Internet platform provides perfect channel for internet wares to expand their channel of selling goods and services. In the global economy the sources for trade of counterfeit goods is seemingly endless due to the vastness of Internet platform. As the phrase goes it is always good to tackle a problem from its roots but in the current issue uprooting the problem from source is not only difficult but impossible. It can be concluded from the above discussion that when a person or organization is willing to sell their counterfeit goods or services online they have vast opportunities and it is to curb these opportunities that the injunction of website blocking was implemented but how much effective this move has been is still an ongoing question because this injunction cannot be the only solution for every form of infringement made on website. Further, it can be noted that the blocking technique used might be less problematic from the fundamental rights perspective but would pose problem of high probability to another blocking technique, thus, even though blocking technique is the most effective way to curb infringement it should not be implemented without proper analysis of its impact. In addition to understanding the

Intellectual Property Law concept of blocking injunction, our dissertation discussed on the fact of who should be liable to bear cost associated with blocking injunction order. Right holders have argued that the ISPs have to be held liable for the infringement act and vice versa but the question that we have been discussing is whether the ISPs if innocent of the act of infringement be liable to pay cost, the judgement in the Cartier case has proved that the ISPs if innocent of infringement of trademarks cannot be held liable to bear the costs associated with website blocking. Additionally, it can be presumed that the judgement in this case is not limited only to trademark infringement but can be applied to every form of IP rights infringement unless the ISPs are found guilty for the act of infringement and liable for the same because copyrights infringement involves the ISPs to be coinfringers in the illicit act. Thus, to make the judgement a universal basis for curbing infringement it is very essential to prove the innocence of the ISPs or service providers. Trademarks, copy rights or any form of IP rights infringement requires proper questioning and analysis by the Court before forming any form of conclusion. It can be noted that the important feature in the Supreme Courts’ observation before giving its ruling in the Cartier case is the fact that ISPs were legally innocent of the infringement act. However, if the ISPs were found to be guilty of infringement either by participating in the act through caching or hosting illegal website then they are liable to bear the website blocking injunction cost. BIBILIOGRAPHY PRIMARY SOURCE: 

Art.16 of the European Charter of Fundamental Rights,



Directive 2001/29/EC of the European Parliament and of the Council of May 22, 2001



Directive 2004/48/EC of the European Parliament and of the Council of Apr. 29, 2004



Cartier International AG & Ors v British Telecommunications Plc & Anor (2018)

Intellectual Property Law 

Arts. 13 and 14 of the E-Commerce Directive



Article 47 of the Charter in relation to injunctive relief



Sec 97 of the Copyright, Designs, and Patents Act 1998 of the UK,



Directives of interest such as the E-Commerce Directive (2000/31/EG), the Infosoc Directive (2001/29 EG) and the Enforcement Directive (2004/48 EG)



Twentieth Century Fox Film Corpn v British Telecommunications plc [2012] 1 All ER 806



Twentieth Century Fox FilmCorpn v British Telecommunications plc (No 2) [2012] 1 All ER 869



Cartier International AG & Ors v British Telecommunications Plc & Anor [2018] UKSC 28

SECONDARY SOURCE 

Granstrand Fule, and Colak Monika, “Is website blocking an effective tool against IP infringement,” 2017; http://www.managingip.com/Article/3711451/Recent-rulings-onwebsite-blocking.html



Griger and Izyumenko, “The Role Of Human Rights In Copyright Enforcement Online: Elaborating A Legal Framework For Website Blocking,” American University International Law Review, Article 7, Volume 32



Issue

1,

Issue1,

2016;

https://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?referer=https://www.googl e.com/&httpsredir=1&article=1939&context=auilr 

[2016] EWCA Civ 658



Coombs George, “BREAKING NEWS: Supreme Court rules that trademark owners must indemnify ISPs for costs of implementing a site blocking order,” MediaWriters, 2018; https://www.mediawrites.law/breaking-news-supreme-court-rules-that-trademarkowners-must-indemnify-isps-for-costs-of-implementing-a-site-blocking-order/



Warren Rachel, “CARTIER INTERNATIONAL AG AND OTHERS (RESPONDENTS) V BRITISH TELECOMMUNICATIONS PLC AND ANOTHER (APPELLANTS),” 2018; https://www.footanstey.com/updates-a-publications/3820-cartier-international-agand-others-respondents-v-british-telecommunications-plc-and-another-appellants

Intellectual Property Law 

Marsoof Althaf, “The Blocking Injunction – A Critical Review of Its Implementation in the United Kingdom Within the Legal Framework of the European Union,” ResearchGate, 2015; https://www.researchgate.net/publication/283872471_The_Blocking_Injunction__A_Critical_Review_of_Its_Implementation_in_the_United_Kingdom_Within_the_Lega l_Framework_of_the_European_Union



Lindsay David, “WEBSITE BLOCKING INJUNCTIONS TO PREVENT 0COPYRIGHT INFRINGEMENTS:

PROPORTIONALITY

AND

EFFECTIVENESS,”

Thematic:Website Blocking Injunctions to Prevent Copyright Infringements, (2017); http://www.unswlawjournal.unsw.edu.au/wp-content/uploads/2017/11/404_10.pdf 

O’Sullivan

Kevin,

'LIABILITY':

“COPYRIGHT

THE

AND

EMERGING

INTERNET

REALPOLITIK

OBLIGATIONS,”

SERVICE OF

PROVIDER

INTERMEDIARY

ResearchGate,

2018;

https://www.researchgate.net/publication/329327305_COPYRIGHT_AND_INTERNET_ SERVICE_PROVIDER_'LIABILITY'_THE_EMERGING_REALPOLITIK_OF_INTER MEDIARY_OBLIGATIONS_Forthcoming_in_the_Intl_Review_of_Intellectual_Propert y_and_Competition_Law 

Izyumenko Elena and Geiger Christophe, “The Role of Human Rights in Copyrights Enforcement Outline: Elaborating a Legal Framework for Website-Blocking,” American University International Law Review, Volume 32, Issue I, Issue1, Article 7, 2016; https://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?referer=https://www.googl e.com/&httpsredir=1&article=1939&context=auilr



Moscona Ron, “Website-blocking orders – a New Tool to Fight Against Online Trade in Counterfiet

Goods,”

Dorsey

publications,

2014;

https://www.dorsey.com/newsresources/publications/2014/10/website-blocking-orders-a-new-tool-in-the-fight__ 

“Intellectual

Property

Crime

and

Infringement,”

Guidance,

gov.uk;

(https://www.gov.uk/guidance/intellectual-property-crime-and-infringement#dealingwith-infringement 

Spooner

Andrew,

“UK:

Guide

to

Injunctions,”

mondaq,

http://www.mondaq.com/uk/x/651836/Contract+Law/Guide+To+Injunctions

2017;

Intellectual Property Law 

Marsoof Althaf, “The Blocking Injunction – A Critical Review of Its Implementation in the United Kingdom Within the Legal Framework of the European Union,” ResearchGate, 2015; https://www.researchgate.net/publication/283872471_The_Blocking_Injunction__A_Critical_Review_of_Its_Implementation_in_the_United_Kingdom_Within_the_Lega l_Framework_of_the_European_Union



“Cartier International AG & Ors v British Telecommunications Plc & Anor,” Casemine, United

Kingdom

Supreme

Court,

https://www.casemine.com/judgement/uk/5b2897e32c94e06b9e19cfc8

2018;