© Allen & Overy 2015 *

Neville Cordell Partner Intellectual Property Litigation, London

Online enforcement of copyright – blocking injunctions

© Allen & Overy 2015

Agenda

–  Legislative framework

–  UK case law on intermediary injunctions

–  Proportionality and efficacy

–  ISP perspective

–  Position in Europe

–  Alternatives/what next?

© Allen & Overy 2015 *

Legislative Framework

s97A Copyright Designs and Patents Act 1988 •  The High Court shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright. •  In determining whether a service provider has actual knowledge for the purpose of this section, a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to—

•  whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and

•  the extent to which any notice includes— •  the full name and address of the sender of the notice; •  details of the infringement in question.

Enforcement Directive Recital 59 – In many cases such intermediaries are best placed to bring such infringing activities to an end. The conditions and modalities relating to such injunctions should be left to the national law of the Member States.

Article 11 – Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of [the InfoSoc] Directive

Infosoc Directive, Article 8 •  Member States shall provide appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive and shall take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for shall be effective, proportionate and dissuasive. •  …. •  Member States shall ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right

“

“ “ “

“ “

© Allen & Overy 2015

Case Law and the Four Threshold Conditions

20C Fox v BT (No. 2) [2011]

Dramatico v Sky [2012]

Dramatico v Sky (No. 2) [2012]

Paramount v Sky (No.2) [2014]

UPC Telekabel Wien v Constantin [2014]

EMI v Sky [2013]

Paramount v Sky [2013]

20C Fox v BT [2011]

FAPL v Sky [2013]

“ •  the ISPs must be intermediaries;

•  the users and/or operators of the website must be infringing the claimant's copyright;

•  the users and/or operators must use the ISPs' services to do that; and

•  the ISPs must have actual knowledge of this.

”

L’Oreal v eBay [2011]

© Allen & Overy 2015

Proportionality

““I remain of the view that a blocking order may be justified even if it only prevents access by a minority of users.”

EMI v Sky ”Availability of alternative measures

Comparative importance of rights engaged and justifications for interfering

• Costs to ISPs associated with implementing the orders

• Dissuasion of users from infringement

Impact of those measures on lawful users of the internet

• Efficacy of the orders

3 4

© Allen & Overy 2015

ISPs

ISP perspective

Do these injunctions have the desired effect? Are they the most efficacious way of getting there?

Aligning the approach between rights holders and ISPs – more effort to be collaborative

Can ISPs elide the effect of intermediary injunctions for copyright and trade mark infringement, or must the effects of injunctions for the two IP rights be kept distinct?

Do ISPs benefit from the liberty to apply to vary or discharge the orders if the costs and operations become too burdensome?

Burden on ISPs Time? Cost? Weight on systems?

Are ISPs able to rely on the cumulative effect of intermediary injunctions to their business or must each application be treated separately?

© Allen & Overy 2015

Position in Europe

Austria The Commercial Court of Vienna held that an injunction should be granted requiring ISPs to block access to foreign copyright-infringing websites, enforcing copyright law against unidentified foreign infringers for the first time.

France The Paris Court of First Instance ordered four ISPs to block access to The Pirate Bay website, mirror sites and proxies to prevent online copyright infringement. However, the measures last just 12 months and the blockade applies to French territory users and French ISPs only.

\

Belgium The Belgian Court confirmed the lawfulness of a far-reaching injunction order against all national ISPs in relation to the Pirate Bay. The order requires blocking by all technical means of access, including any IP address or domain name used by the site.

Denmark Denmark, coordinated by its rights alliance, has a long history of site blocking, and even has a Telecommunications Industry Association code of conduct on blocking injunctions.

Finland Finland has frequently granted interim website blocking injunctions. However, rights holders have traditionally had to bring legal action against the primary infringer within 30 days. A new bill has been proposed allowing courts to order intermediary injunctions provided certain provisions are met.

Ireland After previous reticence, since 2012 regular granting of injunctions requiring ISPs to block access to infringing websites. The ISPs have not opposed recent applications and indicated their willingness to submit to any appropriate order.

Germany Parallel to UK Government position that domestic law is sufficient. German doctrine of Storerhaftung covers this sufficiently. So no domestic implementation of the relevant EU laws, albeit cases are under appeal to the BGH so watch this space on blocking injunctions in Germany.

Netherlands Injunctive relief has been refused in the Netherlands. Such measures were held to be ineffective and prevented a free flow of information. Blocking the site was ruled to inhibit the ISPs freedom to conduct business and the judge found that a less restrictive solution was possible i.e. individual civil procedures against infringing subscribers.

Italy In April 2014, the Italian Communication Authority issued its first blocking injunction against a foreign website. In September this was referred to the Constitutional Court to clarify whether website blocking injunctions are in line with constitutional principles.

Greece Injunctive relief has been refused in Greece. The courts have highlighted the need to safeguard users’ right to participate in the information society and deemed the measure to be against the principles of proportionality and net neutrality.

*Content derived from third party sources

© Allen & Overy 2015 *

These are presentation slides only. The information within these slides does not constitute definitive advice and should not be used as the basis for giving definitive advice without checking the primary sources.

Allen & Overy means Allen & Overy LLP and/or its affiliated undertakings. The term partner is used to refer to a member of Allen & Overy LLP or an employee or consultant with equivalent standing and qualifications or an individual with equivalent status in one of Allen & Overy LLP’s affiliated undertakings.

What next?

Trade marks Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] Patents Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat)