Blocking Order Relief For Intellectual Property Rights Holders

• Published date: 19 August 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Mobile & Cable Communications, Copyright, Patent, Trademark, Broadcasting: Film, TV & Radio, Music and the Arts
• Law Firm: Gowling WLG
• Author: Khemi Salhan and Jasmine Lalli

For over a decade, the courts in the UK have, through their case law, been developing and adapting website blocking orders (WBOs) - a form of injunctive relief - as a means of combatting infringements of intellectual property rights. WBOs require internet service providers (ISPs) to block access to websites hosting infringing material. The principles have been developed in cases addressing infringements of copyright and trademark rights, but potentially have broader application. WBOs are an effective and useful tool for rights holders seeking to enforce intellectual property rights in the context of the online world.

WBOs have been ordered against a broad range of infringing platforms, from websites displaying counterfeit goods, to live sport streams. Recently, in Young Turks v BT¹ a WBO was awarded for the first time in respect of a 'stream ripping' site - a site enabling third parties to circumvent technological protection measures (TPMs) employed by legitimate music streaming services.

In this article, we capture the basis for the award of WBOs, the key judgments evolving their use in respect of different types of platform, note the development for WBO relief represented in the recent Young Turks case, and ponder on future evolution in enforcement options for rights owners.

Blocking injunctions

The Copyright, Designs and Patents Act 1988, provides that right holders can seek an injunction against 'intermediaries' whose services are used by third parties to infringe copyright or related rights.² In Twentieth Century Fox Film Corporation v BT³ ("Newzbin II"), the High Court of England and Wales confirmed that pursuant to this provision, the court did have jurisdiction to grant a blocking order against BT as an intermediary. The seminal judgment in the area, by Mr Justice Arnold, made clear that to obtain a WBO, the copyright owner must show that:

1. the defendant is an ISP;
2. the users and/or operators of the infringing websites infringe the claimant's copyright;
3. the users and/or operators are using the ISP services to carry out the copyright infringement; and
4. the defendant has actual knowledge that its services are being used for copyright infringement.

As a form of injunctive relief, the award of a WBO is a matter within the discretion of the court. While the E-Commerce Directive (2000/31), article 15(1), prohibited the imposing of a general obligation on providers to monitor the information they transmitted, this did not prohibit the imposition of monitoring obligations in a specific case, which could be included in the terms of a WBO.

On the requirement (for the obtaining of a WBO) that the users and/or operators of the infringing websites infringe the claimant's copyright, in more recent years the case law of the CJEU on the...