Companies win dispute over blocking counterfeiting websites

A number of large companies including Cartier International have won a legal battle to oblige internet service providers (ISPs) to block websites that were infringing their intellectual property rights.

The case involved several websites that were advertising and selling counterfeit goods.

The ISPs did not dispute that copyrights had been breached but contended it was not their responsibility to intervene or to police the internet.

The judge held that he had jurisdiction to order the ISPs to block the offending websites and the Court of Appeal has now upheld that decision.

It accepted that the ISPs were not guilty of any wrongdoing. They had not infringed the trademarks, nor had they engaged with the website operators offering counterfeit goods for sale.

They did not owe the claimant companies a duty of care to ensure that their services were not used by the website operators. The question was whether there was a principled basis for making injunctions against the ISPs, who were aware that their services were being used by third parties to infringe registered trademarks and other intellectual property rights.

The operators of the target websites needed the ISPs’ services to sell their counterfeit goods to UK consumers. The ISPs were therefore essential actors in the infringing activities and so the court had jurisdiction to make an order obliging them to block the offending websites.

The court was also entitled to require the ISPs to bear the implementation costs of the orders.

Please contact Jon Alvarez if you would like more information about the issues raised in this article or any aspect of protecting your company’s intellectual property rights.