Last week, in the case of Richemont International v. British Sky Broadcasting, a UK trial court issued a unique decision that ordered British ISPs to block access to websites that advertise and sell counterfeit luxury goods. The case was brought by the owners of such luxury brands as CARTIER and MONTBLANC. The trademark owners sought to have the court order five UK internet service providers block their user’s access to certain identified websites that were accused of selling knockoff merchandise, which merchandise was falsely labelled with the luxury owners’ brands, and the ISP predictably resisted.
As noted in the opening paragraphs of the court’s decision, such orders have become somewhat common in the copyright field as a result of the EU’s “Information Society Directive,” which required all member states to provide certain protections to copyright holders against online infringement. That directive is akin to the Digital Millennium Copyright Act (“DMCA”) in the United States (and both arose out of the 1996 WIPO copyright-related treaties). Under the DMCA and the Information Society Directive, ISPs are granted immunity from being liable for the copyright infringement of their users in exchange for enacting certain protocols that make it easier for copyright holders to give notice of infringement to the ISP for the purposes of having the accused infringing material removed or access to it blocked. As a result, copyright owners have often been successful in getting ISPs to block access to sites that do nothing but provide access to material that infringes the owner’s copyright (although the European Court of Justice did reject the copyright owner’s attempts to force ISPs to implement mandatory filtering and monitoring for potential copyright infringements, see Scarlet v. SABAM.)
But neither US law nor UK law have any equivalent protection for owners of trademarks. Nonetheless, relying heavily on the precedents from copyright decisions, the UK trial court found that the trademark owners had made out a case for a blocking injunction against the ISPs. Interestingly, the court included in its order a requirement that the page displayed to users who attempt to access the blocked websites had to include the identity of the parties who sought the order, and state that affected users have the right to apply to the court to challenge or vary the order. The court may soon find itself flooded with pro se motions from disappointed consumers. This is the first time a UK court has issued such a blocking order to protect trademarks, as opposed to copyrights.
Lawsuits against the owners of websites that sell counterfeit goods can be time-consuming and expensive. With this order, brand owners in the UK now have a potentially less expensive means of targeting and ultimately shutting down numerous websites at once by suing the ISP. Undoubtedly, this trial court decision will be appealed. It remains to be seen whether US courts will follow suit.