The Court of Appeal has confirmed that the court’s general power to grant injunctions can be invoked by trade mark owners to get orders against ISPs to block internet access to website that have infringing content.
The interesting point (for Australians) is that, like Australia, UK law has a specific statutory power authorising injunctions against ISPs to block access only to websites that infringe copyright. There is no corresponding provision in the Trade Marks Act 1994 (UK). Instead, section 37(1) of the Senior Courts Act 1981 (previously the Supreme Court Act 1981) provides:
The High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so.
The IPKat has a preliminary summary here.
The main question the Court of Appeal’s decision raises for us is whether an Australian court might be persuaded to make similar orders against ISPs to block access to website which infringe trade marks (or other IP). Australian courts have powers to grant injunctions corresponding to s 37 of the Superior Courts Act.
On the other hand, Parliament has also only recently introduced the specific statutory provision in the context of copyright infringement and that provision is tightly focused for policy reasons against overseas websites which have infringement as their primary focus.
And, it appears that the Court of Appeal was heavily influenced by the obligations imposed on national law by art. 11 of the EU’s Enforcement Directive to require ISPs to take steps to stop infringing activity. That specific legislated obligation does not apply here. That there may be different philosophies at play may also be seen in what appears to be the different approach in the EU to the liability of market operators for infringing conduct by stall holders.
A second point emerging from a very quick skim of the 214 paragraphs is that Kitchin and Jackson LJJ held that the ISPs should be liable for the costs of implementing and maintaining the blocks. Briggs LJ dissented on this point insofar as it required the ISPs to bear the costs of complying (apart from designing and installing the software). As Jackson LJ pithily put it in agreeing with Kitchin LJ, that is “part of the price which the ISPs must pay for the immunities which they enjoy”. This may point up another difference in the legal environment: ISPs in the EU have assumed obligations to block access to websites such as those dealing in paedophilia. In addition, the safe harbours regime for ISPs applies generally, not just for copyright infringement as in Australia.
Finally, so far, there haven’t been any orders in the site blocking cases brought under s 115A yet.
If you have a comment or a question, please feel free to post it in the comments section. Or, if you would prefer, email me.
Cartier International AG v British Sky Broadcasting Limited  EWCA Civ 658
- For England and Wales, not New South Wales, Victoria, Queensland or …. ?
- Australian courts have corresponding powers: for example, s 23 of the Federal Court of Australia Act 1977 provides “The Court has power, in relation to matters in which it has jurisdiction, to make orders of such kinds, including interlocutory orders, and to issue, or direct the issue of, writs of such kinds, as the Court thinks appropriate.” There are, of course, counterpart provisions in the Federal Circuit Court Act and the State Supreme Court Acts: see Victoria and NSW. ?
- Compare this CJEU decision to Dowsett J’s decision at first instance. ?