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

1
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
 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

2
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
 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

4
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-indemnify-
isps-for-costs-of-implementing-a-site-blocking-order/
 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

5
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-indemnify-
isps-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-indemnify-
isps-for-costs-of-implementing-a-site-blocking-order/
 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

7
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-respondents-
v-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
 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

9
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
 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

11
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__
 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,

 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)

 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, 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.

 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

 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

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

16
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
 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.

17
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 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

18
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__
 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

20
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 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

21
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
 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
25
“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
 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 co-

infringers 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

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 Griger and Izyumenko, “The Role Of Human Rights In Copyright Enforcement Online:
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 Coombs George, “BREAKING NEWS: Supreme Court rules that trademark owners must
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 Warren Rachel, “CARTIER INTERNATIONAL AG AND OTHERS (RESPONDENTS)
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 Intellectual Property Law
 Marsoof Althaf, “The Blocking Injunction – A Critical Review of Its Implementation in
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_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,
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