UKSC judgment in Cartier – who pays for website blocking orders?

In a blow for rights-holders, the UK Supreme Court (UKSC) has today decided that ISPs should not bear the implementation costs for website blocking orders in Cartier International AG and others v British Telecommunications Plc and another [2018] UKSC 28.   Whilst the UKSC has endorsed the availability of blocking orders for rights-holders, it has reversed the costs position, finding that rights-holders should indemnify the ISPs for the reasonable costs of implementing the orders.

This is a very important case in relation to the ability of brand owners and others to obtain blocking injunctions against intermediaries, such as ISPs to prevent third party website operators offering infringing or counterfeit branded products. The UKSC decided the pivotal question of who should bear the cost of implementing blocking orders, in terms of deploying monitoring, filtering and web blocking technology – the ISP or the brand owner?

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Targeting Online Risk

In our latest publication in our Future of Consumer series on issues facing the Consumer sector, we look at some of the online risks threatening businesses today.

We examine the options available to tackle IP infringements online, such as the sale of counterfeit goods, with a focus on the most powerful weapon for rights holders – blocking junctions from the courts. We also provide some practical tips to help tackle and combat online infringements.
Authors

Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Sarah Burke
Sarah Burke
Senior Associate, London
+44 20 7466 2476

Innovation Disruption and Technology – the legal and commercial issues for your business

Drawing on our practitioners’ experience and understanding of the intellectual property and technology issues facing our clients in the fast changing world in which we all now do business, we made innovation and disruptive technology the key themes at our 2018 IP Update Conference.

Described by one attendee as “The perfect mixture of commercial and legal content”, the event was held in our London offices in February 2018. We were joined by over 140 clients from the Technology, Banking, Consumer, Energy, Manufacturing, Media, Pharmaceutical & Healthcare, and Telecommunications sectors.

Click here for a briefing summarising the legal and commercial issues raised by the Herbert Smith Freehills presenters and our keynote speaker Kevin Mathers, Country Director at Google UK.

Our keynote speaker, Kevin Mathers, set the scene by discussing the current technological landscape for innovation and how Google looks at the future. Taking examples of how artificial intelligence, augmented reality and virtual reality are already being used by Google and looking at the major trends which will dictate our digital future. Kevin’s presentation was a great success, with attendees describing it as “really insightful and inspirational”; “engaging and interesting” and “stimulating and thought-provoking”.

The conference continued with sessions on

  • tackling the impact of AI on your business,
  • on-line risk,
  • open innovation,
  • interoperability and product standards, and
  • targeted advertising and the GDPR.

There was also a panel session at the end of the conference to discuss the issues facing businesses in relation to disruptive technology with contributions from partners and of counsel across the IP and IT practice areas and from several of our European offices.

Clients were impressed by the range of issues presented by the speakers and the practical approaches offered.

 

Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

 

Unlawful streaming is as infringing as unlawful downloads – Further guidance from the CJEU on “communication to the public”

The CJEU has issued its ruling in Filmspeler that the sale of a multimedia player specifically configured to link to websites on which protected works are made available to internet users, without the consent of the copyright holders, is a ‘communication to the public’ within the meaning of the InfoSoc Directive, and hence an actionable infringement.

This decision follows a number of CJEU decisions in which the meaning of 'communication to the public' has been discussed and broadens the potential group of defendants who might now be regarded a primarily liable for unauthorised acts of 'communication to the public' to those who sell piracy-enabled set-top boxes, such as those supplied with software like the neutral Kodi streaming platform, to which add-ons have been installed, designed to receive protected works (such as films, TV shows or live sports) that are made available to internet users without the consent of the copyright holders, with minimal input from the end user.

1. Business Impact

2. The Decision

3. Brexit

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High Court orders ISPs to block their customers from receiving unauthorised streaming of Premier League football matches

Following on from a number of decisions in which internet service providers (ISPs) were ordered to block their customers from accessing websites whose content infringed the rights of intellectual property owners, the High Court has granted an order sought by the Premier League that requires 6 major ISPs to block access by their customers to servers that stream live unauthorised footage of Premier League matches (The Football Association Premier League Limited V British Telecommunications and Ors.  [2017] EWHC 480 (Ch)).

Business Impact

  • The decision is the latest in a series of cases which demonstrate that the Court recognises that advances in technology mean that there are now additional methods in which intellectual property rights may be infringed and it is willing to be creative and to grant orders to protect those rights.
  • The decision will be welcomed by owners and licensees of broadcasting rights in live sporting and other events and is likely to set a precedent for forms of order against providers of unauthorised streaming services in the future.

The decision is of interest for the following reasons:

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Practice note for Practical Law IP&IT on Protecting Brands via Intermediaries

Our Practice Note commissioned by Practical Law IP&IT is a guide to the options available to brand owners when seeking to enforce their rights against intermediaries, such as ISPs, including website-blocking injunctions, take-down notices and domain-name seizures.

Read the note here: https://uk.practicallaw.thomsonreuters.com/Document/Ie409c9e3059d11e798dc8b09b4f043e0/View/FullText.html?transitionType=SearchItem&contextData=(sc.Search)

 

Authors

Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Rosie Patterson
Rosie Patterson
Senior Associate
+44 20 7466 2448

 

Free Wi-Fi providers: more than mere conduits?

The effect of the European Court of Justice’s ruling in McFadden v Sony appears to be that providers of free wifi will need to password protect their services and require users to identify themselves if they wish to avoid liability (C-484/14).  See our IP PSC Rachel Montagnon's commentary on this decision in PLC Magazine's October 2016 issue here.

Brands force ISPs to block sites selling infringing goods and counterfeits

The Court of Appeal has confirmed that the English courts have jurisdiction to make blocking orders against internet service providers ("ISPs") in the trade mark context, as well as in respect of copyright works. In Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin [2016], the Court of Appeal on 6 July 2016 upheld Arnold J's orders that the ISPs block access to certain target website offering counterfeit products (see our e-bulletin covering Arnold J's first instance decision here).

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