Blocking order relief for intellectual property rights holders

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 BT^[1] 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 BT^[3] ("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 meaning of "communication to the public" has contributed to the development of the case law in the High Court. In the case of Stichting Brein v Ziggo^[4], the ISPs argued that the operator of the website in question ('The Pirate Bay') was not carrying out an infringement and therefore could not be subject to a blocking order, as it was the actual users that were finding and downloading the illegal content via torrent. Was The Pirate Bay thereby communicating the copyrighted works to the public for the purposes of Article 3(1) of the InfoSoc Directive? The CJEU held that it was: The Pirate Bay went far beyond simply facilitating the sharing of the protected works, but actively sanctioned and approved it, and this did constitute a communication of the copyrighted works to the public. The ISPs therefore could be subject to a blocking injunction for the site.

An evolutionary order

In Newzbin II, the claimants were film producers and distributors who had struggled to prevent an unlicensed/unauthorised offshore website from making their films available to stream for subscription members. As well as laying down the basic principles for the award of a WBO noted above, the High Court made clear that the claimant was not required to prove that the ISP had knowledge of a specific infringement of copyrighted works by a specific ISP user. Knowledge of the larger scale issue was sufficient.

In 2013, Arnold J's judgment in The Football Association Premier League v British Sky Broadcasting^[5] awarded a 'live' WBO, to prevent six ISPs from streaming real-time copyright-infringing Premier League match footage. The order only took effect for the duration of the broadcast, illustrating the Court's flexibility and adaptability when addressing ephemeral infringements.

After Newsbin II, ISPs tended not to oppose the making of orders, instead seeking merely to negotiate the form of the order, which would subsequently be granted by the court after consideration of an application on the papers. In 2015 though, Mr Justice Birss, faced with such an application, took the opportunity to have a critical look at the practice and issued a judgment (Twentieth Century Fox Film Corporation v Sky UK Limited ("Popcorn Time")^[6]) which made clear the need for applicants seeking blocking orders to draw the court's attention to new factors, such as detailed features of the websites complained of and how they operated, so that the court could consider how the considerations arising under s.97A should be applied to them. As a result, a series of subsequent judgments (noted below) illustrates the evolution in technological means employed to infringe IP rights, and how the justification for, and shape of, WBOs has adapted accordingly.

In parallel with the evolution of WBOs addressing copyright infringement, the case of Cartier International v BT^[7] proceeded through the High Court, the Court of Appeal and the Supreme Court, confirming that the court has jurisdiction also to award WBOs in respect of goods infringing trademarks.

Additionally, the Supreme Court ruled that the party awarded the blocking injunction (i.e. the IP right owner) must indemnify the ISPs for the costs of implementing the order, but not for the costs of the necessary underlying systems.

Scope of blocking orders

Drawing the case law together, WBOs have now been awarded in respect of the following types of platform:

• Stream ripping sites for film (e.g. Newzbin II);
• Stream ripping sites for music (e.g.Young Turks v BT (discussed below));
• Websites advertising and selling counterfeit goods - (e.g. Cartier);
• Live stream broadcasts of sporting events (e.g. The Football Association Premier League Ltd v British Sky Broadcasting Ltd, Matchroom Boxing v BT^[8]);
• Sites supplying devices enabling the circumvention of TPMs (e.g. Nintendo Co., Ltd v Sky UK Limited & Ors^[9] , in which the infringing sites sold firmware which permitted the piracy of Nintendo Switch console games via the console itself);
• File storage sites allowing users to upload and download unlicensed commercial content, including music – (e.g. Capitol Records & Ors v British Telecommunications Plc & Ors);^[10] and
• Sites hosting user submitted torrent file links – (e.g. Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd).^[11]

A development for music streaming providers

The High Court's recent judgment in Young Turks v BT was the first instance of a website blocking order being granted to prevent access to music stream ripping sites.

The claimants comprised a number of record companies, who were also suing on behalf of the British Phonographic Industry. Together, they were responsible for approximately 99% of all sound recordings legally consumed in the UK. The defendants were the six largest ISPs in the UK, sharing approximately 91% of the fixed line broadband market.

The claimants submitted that numerous sites, including Flvto.biz, 2Convert.net and H2Converter.com, enabled the infringement of copyright protected material, by converting streamed content into permanent audio downloads that could be stored and shared for future use. One site even offered a 'Downloader App', enabling users to select and rip music videos straight from the streaming services.

As the technology concerned had not previously been the subject of a blocking order from the English Courts, Birss J considered whether the relevant legislative requirements had been met, namely whether:

1. the users of the sites were copying protected works; and
2. the operators of the sites were authorising the infringement as joint tortfeasors, and were communicating those works to the public.

Birss J concluded that the users of the websites had infringed copyright by using the sites and Downloader App to rip the works embodied in the recordings, without permission. The stream ripping site operators had infringed the works by inducing, inciting and procuring users to commit infringement and by communicating the works to users without authorisation. Further, the operators of the sites and the users were acting pursuant to a common design to infringe and were therefore liable as joint tortfeasors.

The terms of the proposed WBOs were also considered proportionate. They were necessary to prevent, or at least reduce, stream ripping particularly given its popularity and extensive use within the UK, to discourage users from accessing the sites and to dissuade other site operators from pursuing stream ripping. No alternative relief would have been sufficient to address the ongoing issue.

New hope for rights holders

For many creators, placing works online and sharing them with the public is key to gaining recognition and reward. However, for many years, there have been systemic problems with people accessing and copying intellectual property protected material without permission from or payment to the owner of the right, and the operators of websites facilitating infringement concealing their identities and locating their operations outside the jurisdiction. The increasing tendency for the operators of websites facilitating infringements to hide behind intermediaries, such as ISPs, and conceal their identities has exacerbated the problem.

WBOs, however, represent an innovative, accessible and effective legal mechanism for addressing online intellectual property infringement. The decisions noted above showcase their expansive application and their value to owners of copyright and trademark protected works.

WBOs are also just one example of the adaptability and flexibility shown by the High Court in recent years in tailoring relief to provide rights owners with effective enforcement tools in the ever-evolving world that we inhabit. It is remarkable to think that the 'common' law consolidation in England and Wales that occurred in the year 1166 has proved adaptable enough to evolve into the modern legal system of England and Wales today. However, it is that same adaptability that has enabled the creation of WBOs and the diversity in their shape seen in the last decade. It will also enable the courts to continue innovating to protect and respect legal rights, as our world continues to evolve.

Footnotes:

[1] Young Turks Recording Limited & Ors v British Telecommunications plc [2021] EWHC 410.
[2] Section 97A of the Copyright, Designs and Patents Act 1988.
[3] Twentieth Century Fox Film Corporation and others v British Telecommunications plc [2011] EWHC 1981 (Ch).
[4] Stichting Brein v Ziggo and XS4ALL Internet [2017] Case C‑610/15.
[5] The Football Association Premier League Ltd v British Sky Broadcasting Ltd & Ors [2013] EWHC 2058 (Ch).
[6] Twentieth Century Fox Film Corporation v Sky UK Limited & Ors [2015] EWHC 1082 (Ch)
[7] Cartier International AG & Ors v British Telecommunications Plc & Anr [2014] EWHC 3354 (Ch); [2016] EWCA Civ 658; [2018] UKSC 28.
[8] Matchroom Boxing Limited & Anr v British Telecommunications PLC & Ors [2020] EWHC 2868 (Ch).
[9] Nintendo Co., Ltd v Sky UK Ltd & Ors [2019] EWHC 2376 (Ch).
[10] Capitol Records & Ors v British Telecommunications Plc & Ors [2021] EWHC 409 (Ch).
[11] Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors [2012] EWHC 1152