Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors

On 17 October 2014 I handed down my main judgment in this matter, [2014] EWHC 3354 (Ch), in which I decided that, for the reasons given in that judgment, I would make orders substantially in the form sought by Richemont subject to two modifications mentioned in the judgment. On 11 November 2014 I heard further argument as to the precise form of the order and consequential matters. The parties had sensibly agreed large parts of the order, but a number of points remained in dispute. I determined all of the points in dispute. With one exception, I gave my reasons for my decisions in a series of extempore rulings during the course of the day. In one case, I said that I would give my reasons in writing. These are those reasons.

As discussed in my main judgment at [254]-[257], five out of the six active Target Websites share an IP address with other websites. For the reasons given there, I accepted Richemont's contention that, where such Target Websites shared an IP address with other websites which were engaged in unlawful activity, then an order which required IP address blocking would not adversely affect lawful users of the internet. I left open the question of whether the websites in question were in fact engaged in unlawful activity. After 17 October 2014, Richemont adduced further evidence on this issue. In the light of that evidence, I concluded during the hearing on 11 November 2014 that, in the case of the four Target Websites in respect of which Richemont pursued an order for IP address blocking, the other websites which shared the IP addresses were engaged in unlawful activity – mainly selling counterfeits of third party brands. Richemont did not pursue an order for IP address blocking in respect of the fifth Target Website.

That ruling dealt with what the order would require when first implemented. It did not deal with what the order would provide in respect of future notifications by Richemont to the ISPs, for example, where a Target Website changed its IP address. During the hearing, Richemont proposed wording to deal with this question as follows:

"where a server hosting a notified IP address hosts a site or sites that are not part of a Target Website then a Respondent who adopts IP address blocking measures shall only be required to block the IP address where:

(A)

the Applicants or their agents certify (accompanied by a Statement of Truth) that:

(1)

the site or sites that are not part of a Target Website are all engaged in unlawful activity; and

(2)

where the site has disclosed a means of contact, the Applicants have sent a notice to the contact address given by the site notifying the site that:

(a)

an order of the Court has been made directing that the Respondents are required to block or impede access to one or more of the Target Websites;

(b)

the Applicants understand that the site shares a server with one or more of the Target Websites;

(c)

if the server is blocked then the site will also be blocked to customers of the Respondents;

(d)

the Applicants or their agents believe that the site is operating unlawfully such that it is appropriate for the server to be blocked;

(e)

the site is invited to move to an alternative server that does not also host one or more of the Target Websites or to explain (within 7 days of the date of the notice) why the site is not operating unlawfully;

and the site has not moved to an alternative server and has not made any representation to the Applicants or their agents to the effect that it is operating lawfully;

and

(B)

the Respondents have not stated that they consider there is any doubt over the identification of the site or sites other than the Target Website as unlawful."

The ISPs objected to this proposal. Counsel for the ISPs submitted that the proposal was objectionable for a number of reasons, which I shall consider in turn.

First, she submitted that the Court had no jurisdiction to grant such an order. I do not accept this. I have concluded that, for the reasons given in the main judgment, the Court has jurisdiction to make an order requiring the ISPs to block access to the Target Websites and should exercise that jurisdiction. The purpose of Richemont's proposal is to ensure that the order is properly targeted, and in particular to ensure that it is as effective as possible while avoiding what counsel for Richemont described as "collateral damage" to other lawful website operators which share the same IP address. If the websites are not engaged in lawful activity, then the Court need not be concerned about any collateral damage which their operators may suffer. It is immaterial whether the Court would have jurisdiction, or, if it had jurisdiction, would exercise it, to make an order requiring the ISPs to block access to the other websites.

I would add that, for the reasons given in my main judgment, I consider that the Court has jurisdiction to make website blocking orders where operators and/or users of the affected website are using the ISPs' services to infringe any intellectual property right. The jurisdiction is not restricted, as counsel for the ISPs submitted, to websites which infringe copyrights and registered trade marks, nor to an applicant's own right(s).

Secondly, counsel for the ISPs submitted that the term "unlawful activity" was too vague and too broad. She submitted that, even if (contrary to her submission), the court had jurisdiction to make the order, it ought to be confined to activity which infringed an intellectual property right. As counsel for Richemont pointed out, however, there is evidence of one website sharing an IP address with a Target Website being linked with child pornography. Such activity is plainly unlawful in this jurisdiction, but it does not infringe any intellectual property right. I do not consider that the Court should scruple to prevent such websites being blocked. Nor do I consider that the term "unlawful activity" is unclear.

Thirdly, counsel for the ISPs submitted that it was wrong in principle for Richemont to be permitted to decide which websites which are engaged in "unlawful activity". She submitted that this was not a matter for either Richemont or the ISPs to decide, but solely a matter for the Court to decide. I have considerable sympathy with this submission. Nevertheless, I do not accept it, for two reasons. The first is that, as counsel for Richemont submitted, the evidence shows that, in at least some cases, it is perfectly obvious that a particular website which shares an IP address with a Target Website is engaged in unlawful activity. Where there is no real doubt about the matter, the Court should not be required to rule. Secondly, and perhaps more importantly, Richemont's proposal gives the operators of the affected websites the chance either to move to an alternative server or to object before the IP address is blocked. If they do object, the IP address will not be blocked without a determination by the Court.

Fourthly, counsel for the ISPs submitted that it was inconsistent for the Court to require Richemont to prove their case in respect of the Target Websites to the satisfaction of the Court, but not to require Richemont to do this in respect of the other websites. I disagree for the reasons given above. Richemont have to prove their case in respect of the Target Websites in order to establish that the Court has jurisdiction to make an order, and that it is appropriate to do so. As I have said, the purpose of Richemont's proposal is to make the order as effective as possible while avoiding collateral damage to lawful website operators. I consider that Richemont's proposal strikes a fair balance between the two objectives, in particular by safeguarding the position of lawful website operators in the way that I have just described.

It was for these reasons that I acceded to Richemont's proposal. I should add that counsel for Richemont explained that paragraph (B) of the proposal was an option which Richemont were offering to the ISPs. Subsequently, the ISPs have decided that they do not wish to take up that option. Accordingly, paragraph (B) will be omitted.