Thursday, July 26, 2012

A Study in Counterfeiting: ISP Blocking Orders in the U.K.

This is part two in a series. For other posts in this series, click here
In the past few months, there have been several public debates over whether ISPs could be – or should be – ordered to block access by any user in the United States to a website that is accused of copyright infringement (in this context, it's generally referred to as "piracy," although that term is not defined in the Copyright Act) or trademark counterfeiting (as that term is defined by 15 U.S.C. § 1116). This topic was considered by the Senate Judiciary Committee during its February 16, 2011 hearing on "Targeting Websites Dedicated to Stealing American IP," including in testimony delivered by Thomas M. Dailey of Verizon. Mr. Dailey recommended that the ability to obtain a court order directing ISPs to prevent an IP address from resolving should be limited to actions undertaken by the Attorney General's office, so that private litigants would not "drain" ISP resources. Testimony at 2.

Recall that the proposed Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 ("PROTECT IP Act" or "PIPA") (S. 968) and Stop Online Piracy Act ("SOPA") (H.R. 3261) foundered upon a fairly widespread opposition launched in mid-January 2012 to certain terms believed to be in the bills, including provisions for DNS blocking. Interestingly, only the Attorney General had the right – in both of these bills – to seek a court order mandating an ISP to block certain websites (as well as against three other types of intermediaries: financial payment processors, search engines and Internet advertisers). Under both bills, private rights holders were restricted to seeking court orders requiring actions to be undertaken by payment processors and Internet advertisers alone.

As a result of dramatic public pressure, proponents of the bill removed the so-called "DNS blocking provisions" before final markup sessions had occurred. See e.g., Press Release, "Smith to Remove DNS Blocking from SOPA, Retains Strong Provisions to Protect American Technology and Consumers," Jan. 13, 2012 ("After consultation with industry groups across the country, I feel we should remove Domain Name System blocking from the Stop Online Piracy Act so that the Committee can further examine the issues surrounding this provision. We will continue to look for ways to ensure that foreign websites cannot sell and distribute illegal content to U.S. consumers."); see also Center for Democracy and Technology ("CDT"), "Copyright Bill Advances, But Draws Plenty of Criticism," May 26, 2011; CDT, "The Open Internet Fights Back," Jan. 16, 2012.

As a result, proposals to require ISPs to block content in U.S. civil actions – even with a court order in hand – have essentially become dormant.

Nonetheless, it's an interesting exercise to explore what other jurisdictions have done in this regard.

Orders Requiring ISPs to Block Access to Sites Providing Infringing Content (UK)

For instance, at least three opinions issued in U.K. cases relatively recently required ISPs to block access to websites that facilitated file sharing or other infringement of copyrighted materials. They are:
* The Studios originally sought an order that said, "The Defendant shall prevent its services being used by users and operators of the website known as NEWZBIN and NEWZBIN2 to infringe copyright." [¶ 11].
*The day before the hearing, the requested order was amended as follows:
"1. The Respondent shall adopt the following technology directed to the website known as Newzbin or Newzbin2 currently accessible at and its domains and sub domains. The technology to be adopted is:
(i) IP address blocking in respect of each and every IP address from which the said website operates or is available and which is notified in writing to the Respondent by the Applicants or their agents.
(ii) DPI based blocking utilising at least summary analysis in respect of each and every URL available at the said website and its domains and sub domains and which is notified in writing to the Respondent by the Applicants or their agents.
2. For the avoidance of doubt paragraph 1(i) and (ii) is complied with if the Respondent uses the system known as Cleanfeed and does not require the Respondent to adopt DPI based blocking utilising detailed analysis.
3. Liberty to the parties to apply on notice in the event of any material change of circumstances (including, for the avoidance of doubt, in respect of the costs, consequences for the parties, and effectiveness of the implementation of the above measures as time progresses)." [¶ 12]
* Ultimately, the Court agreed that a blocking order was warranted, but found, "As I think counsel for the Studios accepted, the drafting of paragraph 1 still leaves a certain amount to be desired; but, as counsel for BT accepted, it is now reasonably clear what it is that the Studios are asking the court to order BT to do." [¶ 13]
* In its case before the England and Wales High Court, L'Oreal sought: "a ruling, first, that eBay and the individual defendants are liable for sales of 17 items made by those individuals through the website, L'Oréal claiming that those sales infringed the rights conferred on it by, inter alia, the figurative Community trade mark including the words 'Amor Amor' and the national word mark 'Lancôme'." [Case No. C-324/09 ¶34.]

* "Second, L'Oréal submits that eBay is liable for the use of L'Oréal trade marks where those marks are displayed on eBay's website and where sponsored links triggered by the use of keywords corresponding to the trade marks are displayed on the websites of search engine operators, such as Google." [Id. ¶ 38]
* With respect to ISPs, the Court reached the following conclusions:
139. First, it follows from Article 15(1) of Directive 2000/31, in conjunction with Article 2(3) of Directive 2004/48, that the measures required of the online service provider concerned cannot consist in an active monitoring of all the data of each of its customers in order to prevent any future infringement of intellectual property rights via that provider's website. Furthermore, a general monitoring obligation would be incompatible with Article 3 of Directive 2004/48, which states that the measures referred to by the directive must be fair and proportionate and must not be excessively costly. 

140. Second, as is also clear from Article 3 of Directive 2004/48, the court issuing the injunction must ensure that the measures laid down do not create barriers to legitimate trade. That implies that, in a case such as that before the referring court, which concerns possible infringements of trade marks in the context of a service provided by the operator of an online marketplace, the injunction obtained against that operator cannot have as its object or effect a general and permanent prohibition on the selling, on that marketplace, of goods bearing those trade marks.
141. Despite the limitations described in the preceding paragraphs, injunctions which are both effective and proportionate may be issued against providers such as operators of online marketplaces. As the Advocate General stated at point 182 of his Opinion, if the operator of the online marketplace does not decide, on its own initiative, to suspend the perpetrator of the infringement of intellectual property rights in order to prevent further infringements of that kind by the same seller in respect of the same trade marks, it may be ordered, by means of an injunction, to do so. 

142. Furthermore, in order to ensure that there is a right to an effective remedy against persons who have used an online service to infringe intellectual property rights, the operator of an online marketplace may be ordered to take measures to make it easier to identify its customer-sellers. In that regard, as L'Oréal has rightly submitted in its written observations and as follows from Article 6 of Directive 2000/31, although it is certainly necessary to respect the protection of personal data, the fact remains that when the infringer is operating in the course of trade and not in a private matter, that person must be clearly identifiable.
* Finally, "The third sentence of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as requiring the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, and dissuasive and must not create barriers to legitimate trade." [¶ 145(7) emphasis added]. 
  • Dramatico Enter. Ltd v. British Sky Broad., [2012] EWHC 268 (Ch) (Eng. & Wales High Court (CH) Feb. 20, 2012) – concluding that both the users and operators of the Pirate Bay infringed the copyright owner's rights [¶ 84]; also provides a summary of an expert opinion describing how BitTorrent works [¶¶ 19-20]; summarizes several orders requiring the URL blocking or "blackholing" of the infringing site [¶¶ 3-4]. 
Other Resources
U.S. Customs & Border Protection and U.S. Immigrations and Customs Enforcement, Report on 2011 Counterfeit Seizures, Jan. 12, 2012 (Press Release, Jan. 12, 2012):

"The growth of websites selling counterfeit goods directly to consumers is one reason why CBP and ICE have seen a significant increase in the number of seizures at mail and express courier facilities," said Acting CBP Commissioner David V. Aguilar. "Although these websites may have low prices, what they do not tell consumers is that the true costs to our nation and consumers include lost jobs, stolen business profits, threats to our national security, and a serious risk of injury to consumers."

European Commission, Report on EU Customs Enforcement of Intellectual Property Rights, Results at the EU Border, 2011 (released July 24, 2012) (press release) (facts and figures): This report provides summaries of relevant data about seizures by EU customs, broken down by member country or by types of goods, but also reaches conclusions about the impact and nature of the infringement. For instance, it explains, "Counterfeiters do not concern themselves with product development costs, garantees [sic] or advertising. Profit is maximised by the theft and copying of an original idea, often with cheaper materials. Nevertheless, IPR infringing goods are increasingly sold at a price similar to that of the original goods and effectively substitute them on the market." [at pages 13-14.]

* The report also concludes that of the goods seized at the border, 97% of them (by quantity) infringed trademarks and 93.36% of them (by value) infringed trademarks. [at 18]

European Commission, The EU Single Market, Enforcement of Intellectual Property Rights – focusing on online piracy and counterfeiting.

EU Information Society Directive (2001/29/EC)

The European Observatory on Online Piracy and Counterfeiting, established in 2008.

Specific Disclaimer
Note that the author is not licensed to practice in the European Union or its member countries, and therefore does not purport to render a legal opinion about the application of these cases to specific facts. This analysis is provided merely as an example of restrictions on ISPs that courts have ordered with a stated purpose of combating online piracy or counterfeiting based on existing law.

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