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Website Blocking Injunctions: an effective tool in tackling online infringement

Posted on 15 February 2022

On 10 February Anna Ward, a lawyer specialising in intellectual property infringement was joined by cyber intelligence specialist Mark Tibbs and Benet Brandreth QC to discuss the main steps required to obtain a blocking injunction and the key issues the courts will consider.

Online infringers cause huge problems for intellectual property rights holders. They can be difficult to identify and are often based overseas, leading to enforcement issues. Targeting single infringers may also be ineffective – they can easily establish new websites using different domain names. Website blocking orders can solve this problem by requiring internet service providers (ISPs) to block certain websites as well as any mirror sites that may pop up in their place. This is an attractive route for rights holders since ISPs operate within the jurisdiction, are limited in number and will follow court orders.

The courts have powers to grant website blocking orders to tackle infringement of copyright, trade marks and associated rights.

The Mishcon Academy Digital Sessions. 
Anna

Thank you for attending this webinar on Website Blocking Injunctions.  I’m an Intellectual Property Disputes Lawyer at Mishcon and I’m joined by Bennett Brandreth QC, a barrister who is involved in the first trademark blocking injunction case and Mark Tibbs, a Cyber Intelligence Specialist at Mishcon.

So the trigger for preparing this session was Mishcon’s work on the Nintendo Blocking Injunction in December 2021.  But there have been a number of other interesting cases on the subject in recent months and years. So what is the problem that website blocking injunctions seek to address?  Well online infringes cause huge problems for intellectual property rights holders. They can be difficult to identify and are often based overseas, leading to enforcement issues.  Of course, in some cases, it is appropriate to target single infringers but in cases involving pirated content such as music, films and video games, it can be ineffective because they can easily establish new websites using different domain names.  So why are blocking injunctions an effective remedy?  Well they’re aimed at internet service providers or ISP’s rather than website operators who are required to block certain websites as well as generally speaking any mirror sites that may pop up in their place.  It doesn’t matter that the ISPs are not themselves infringing.  ISPs operate within the jurisdiction, are limited in number and you can be sure that they will comply with Court orders.  Another reason they’re effective is that they can target multiple websites as well as any mirror sites created in future and these are referred to as dynamic blocks because they’re not fixed to one or more websites.  And blocking orders send a message to the market that wide scale infringement will not be tolerated.  There are now a string of cases dating back to 2011 in which copyright owners have secured blocking orders against IPSs based on copyright infringement by the website operator and/or by users.  So the first was 20th Century Fox against BT in 2011 in which BT was ordered to block access to a website which indexed films and TV content and allowed users to search for that content.  Another example was in 2012 in Dramatico Entertainment against SKY and others.  In that case, various record companies successfully sought blocking injunction against six ISPs which required them to block access to a peer-to-peer file sharing website called the Pirate Bay.  The Pirate Bay allowed users to download music albums in which the Claimants owned copyright.  Such that those users were infringing the Claimants copyright.   That case established that it’s not necessary to issue separate proceedings against the infringers in order to apply for an injunction against ISPs.  1hand you over to Bennett to talk about another case in 2017 involving the Premier League.

Bennett Brandreth QC

Thank you Anna.  This in fact is the second of the cases that involved the Premier League and in each of those two cases what they were concerned with was live streaming of premiership matches at the same time that they were being played and the main interest in what I’m talking about now, the 2017 case as a development of the existing case law on internet blocking injunctions is a technical one.  Because, previous cases had involved the sort of peer-to-peer file sharing or indexing websites that one encountered with the Pirate Bay and music.  But the target on this occasion was a streaming server which facilitated access to the live streams of sporting events rather than as had been the case, a website that simply provided links that ultimately resolved at one of those servers. Now, this had the enormous advantage of cutting off the legal streaming at source.  It didn’t matter what website the user was accessing it from, it was cut off before they could reach it and it was thus agnostic as to the method by which the end user accessed the stream, whether that was by website or as was becoming more common, by a streaming device, such as a media player.  But it also contained further innovations, because one of the great advantages of these orders is that they can track the offending.  Every time the website tries to shift to a new host, the order can follow them.  But here, that was taken to the next stage, because the order operated on a live basis, that is to say it was only effective during the actual time when the premier matches were playing, and, they sought to track only those IP addresses that could be identified as streaming the copyright material.  Second, there was a mechanism for updating the target servers every week with the latest information as to their identity.  In other words, these technical innovations allowed the order to be very precisely targeted.  And the great advantage that that provided is that it had a legal ramification, it helped the Court be convinced that the orders were proportionate and necessary, effective and dissuasive and so that was a great advantage.

Anna
                        
But we’ll move on and talk about trademarks and again, I’ll ask Bennett to talk about the first website blocking case involving trademark infringement.

Bennett Brandreth QC

The blocking injunctions were first established in the context of copy right and that’s because in that case, the Government had decided to take a provisions from the EU directives, that related to blocking injunctions and create a specific provision in UK copyright law.  There was an amendment to the Copyright Designs of Patents Act.  But when it came to the more general provisions in the enforcement directive, they hadn’t done so, Instead, they had relied on the inherent jurisdiction of the Court to provide the necessary power, but, as a result when it came time to seek one of these orders, not in respect of copyright but now in respect of another intellectual property right, trademarks, the ISPs decided to test the issue and the Court held that in this case the orders were available, more broadly and even without specific statutory provision.  Now, as the case rose through the Courts from first instance, to Court of Appeal and on to the Supreme Court, the emphasis shifted.  At first instance, it was seen as a way, primarily of giving effect to the enforcement directive, but by the time of the Court of Appeal and certainly by the time it was in the Supreme Court, the emphasis was less on EU directives and more on these orders as a further development of the power of the Courts to step in and prevent wrong doing even where doing so meant making an order against an innocent party.

The analogy that was adopted was with the Norwich Pharmacal orders where the Court would require an innocent party to reveal information that allowed the identification of the ultimate wrong doer.  So here, the ISPs were facilitating a wrong doing by a third party and though innocent themselves, could still be ordered by the Court to assist in bringing that wrong doing to an end.

Anna

So, turning to Ancillary IP rights, In September 2019, the Court handed down an important decision in Nintendo against BT and others which expanded the basis on which these types of orders can be obtained.  So this case concerned Nintendo’s efforts to prevent the advertising and sale of devices that circumvent technological protection measures, or TPMs implemented within Nintendo’s switch. The action focussed on various websites advertising and selling these devices which allow people to play pirated games.  So here, the target websites did make an authorised us of Nintendo’s trademarks and in that sense, the application was straight forward and simply followed on from Cartier.  However, Nintendo also sought the injunction on the basis of sections 296 and 296ZD of the CDPA which provides statutory protection against the circumvention of copyright protection measures.   The rights given by these sections of CDPA are not themselves IP rights but are ancillary rights, and their purpose if to support the protection of underlying copyright.  The Judge held that the Court did have jurisdiction to grant a website blocking order in order to prevent the rights granted by sections 296 and 296ZD of the CDPA being infringed.  In assessing the merits of the claim, the Judge followed the same approach as adopted in the Cartier case and the court ordered five ISPs to block access to the websites in question.  So in granting this order, it was established that blocking injunctive relief is not limited to cases involving infringement of strict intellectual property rights.  Mark, I will ask you to go through, if you can, briefly how the ISPs implement blocking injunctions?

Mark Tibbs

Thanks Anna,  So, blocking can occur at many different levels, there’s a national level, that can be imposed by Governments like the Chinese fire wall or at the ISP level which is what we’re talking about today and then also you know local networks and businesses and even on individual computers, blocking can be… software can be installed to block a user’s end device.  And there are several techniques for a content blocking which can be used by ISPs and each technique has both technical limitations and also work-arounds that can be employed by both the users, you know the people visiting the websites and also the website operators that reduces their effectiveness.  So typically, blocking techniques also have an impact on the customer experience as they introduce an additional step in the chain between the user and the website. So the four main ways that ISPs have got to do blocking are; DNS blocking - so this essentially stops a domain resolving to an IP address, therefore stopping a user being able to visit the domain, the site.  And then there’s URL Blocking and IP Blocking which is essentially lists of URL’s or IP’s that an ISP can configure to stop serving content from. And then there’s what’s called Deep Packet Inspection or DPI that looks for content in the traffic data like key words or file names and then blocks based on this.  Yeah, and so that’s the sort of summary of the four different types of blocking IPSs generally can use in their sort of tool kit.

Anna

I mean there are a couple of issues that you mentioned there but my understanding is that overall, they are very effective these blocks, is that, you know, how effective do you think these methods are overall?

 

Mark Tibbs

So despite, you know, the workarounds and things like that, so, I would say, well, in fact, I would say that they, they capture most of the casual users, probably don’t capture very committed users who are wanting to get this content and you know, know how to.  It’s been tested in Court, several times in the EU, so yeah in the Netherlands, when this was tested with the Pirate Bay, so they… the Pirate Bay went down the Alexa list, when you know, significantly when a blocking order was in place, and then when it was lifted, it went back up the Alexa list and the Alexa list is like tells you about, you know the popularity of users visiting a website. So it’s, been tested, there’s evidence to suggest that it is effective in lots of different jurisdictions but also it’s not just effective it’s also discouragement isn’t it, so if you’re presented as a user with a blocked page that says this has been blocked and then you know it has an impact on you to think well, perhaps I shouldn’t be doing this or you know, that this is maybe not something I should be doing, yeah.

Anna

Did you have anything to add on that Bennett?

Bennett Brandreth QC

Well, although you mentioned the UK case which is a reference to Cartier, in fact, there’s uncertain circularity because the Cartier case referred to the evidence that was relied upon in the Pirate Bay case.  But nonetheless, the Courts conclusion was clear, it was effective, primarily because casual users were not employing the cunning technical reasons why you could evade it and were indeed discouraged from doing so.  The question that arises is whether as things like VPNs become more common and indeed built in these days to many forms of browser, that ratio begins to change.  It has to be said at the same time, one of the advantages of the blocking injunctions is that one can adopt whichever of the four methods you suggested is most appropriate to the issue in the case and sometimes one route round it is dealt with by another method of blocking and you can multi-layer it.  So ultimately, I think these will continue to be highly effective in reducing the problems that the rights holders are experiencing.

Mark Tibbs

The other question that you were asking Anna was around, sort of, improvements and Implementation…

Anna

Yes.

Mark Tibbs

…and if they, if it can be improved, so I think, you know, as they are dynamic blocking orders tend to be against the five or the handful of ISPs in the UK and that’s good in the UK because actually they capture most of the users and I suppose to capture more, they could be, you know, the, the, the net could be cast a bit wider, that’s a way of capturing more of the users you know, I suppose, blue sky thinking, going outside of the UK as well to catch International ISPs or something like that, and then, like Bennett was saying, there’s other means to skin the cat, its… alongside blocking injunctions, you can do things like request de-listing or de-indexing through search engines which is also very effective alongside it, you can pursue public or private prosecutions you know, to catch the wrong doers, if that’s something that’s you know, possible if they’re in the UK or England and Wales for example for a private prosecution and there’s also other sort of, litigation methods, you know to go after the wrong doers as well, like disclosure orders and that, those kind of legal methods.

Bennett Brandreth QC

Yeah.

Anna

Bennett, did you have any other, sort of comments on things that could be done, or potential for improvements?

Bennett Brandreth QC

I think the key is to keep an eye on the technical developments, one of the things that we saw in the firefall case.  The live real time monitoring, that was a consequence of improved technical facilities that allowed the identification of the streams to have more or less in real time and I think, that because, the great advantage of these blocking injunctions is that they can track the infringer, even as they try to do things like jump hosts, jump IP address, jump URL.  Well the better and the faster that the applicant can be at notifying the ISP that there’s been a relevant change and the ISP implementing that.  Because of course, don’t forget ISPs already do that in an automated way when it comes to blocking child pornography sites.  There’s no particular reason why they couldn’t be encouraged to do the same in respect to these orders an then you could have almost, real-time tracking of the necessary targets for these blocking injunctions.  And that would make them even more effective than they have been to date.

Anna

Ok, well I think that answer’s everybody’s questions and yeah, thanks for listening, hopefully, it’s been useful and thanks very much Bennett and Mark.

Bennett Brandreth QC

A pleasure.

Anna

Yes.

Mark Tibbs

Thanks very much.

Anna

Alright, thank you everybody.

Mark Tibbs

Cheers, bye bye.

 

The Mishcon Academy Digital Sessions.  To access advice for businesses that is regularly updated, please visit mishcon.com.

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