©-LAW

Overturning the decisions  at first instance   [IPKat report  here  and  here ]  and on  appeal   [IPKat report  here ] ,  this morning the UK Supreme Court has  ruled  that the ISPs (internet access providers) do NOT have to bear the costs of implementation of the injunction (in this case, a blocking injunction) issued against them pursuant to  section 37(1) of the Senior Courts Act 1981 (SCA) , requiring them to block access to a number of websites making available for sale goods infringing trade mark rights. As  explained in this post , the appeal to the UK Supreme Court focused indeed on the issue of cost allocation.  The previous episodes Although Kitchin LJ (writing for the Court of Appeal) acknowledged that " the ISPs are not guilty of any wrongdoing”, nor do they owe a common law duty of care to take reasonable care to ensure that their services are not used by the operators o...

The possibility to seek an injunction against an intermediary whose services are used by third parties to infringe an IP right has proved an important tool in the hands of rightholders, including in the online context.  The reason why the role of intermediaries is central is because, as Recital 59 in the preamble to the  InfoSoc Directive   [but the same is true also for the  Enforcement Directive ]  explains,  “[i]n the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are  best placed  to bring such infringing activities to an end.” However, how should responsibility for the costs of injunctions be allocated?  [ here  are some slides I prepared, and  here 's a more detailed discussion] The UK approach to costs In the UK, since the first copyright blocking injunction granted in  ...

Readers with a fancy for online IP enforcement will remember that last July the Court of Appeal of England and Wales issued its  decision  in  Cartier and Others v BSkyB and Others  [ here ] , in which it upheld the 2014  decision  of Arnold J in the High Court  [ here  and  here ]  that blocking injunctions are also available in trade mark cases under the general power recognised by  s37(1)  of the Senior Courts Act 1981 (SCA) .  This provision states that “ [t]he High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so .” The missed implementation of Article 11 of the Enforcement Directive UK Government, in fact, implemented Article 8(3) of the  InfoSoc Directive  into UK law by inserting  s97A  into the CDPA, and UK courts have ever since developed a consistent and thoughtful jurisprudence on the app...

Yesterday the stunning London offices of Simmons & Simmons hosted a  panel discussion  on  the implications of the recent   Court of Appeal judgment   in  Cartier  [ here ] .  The debate also included the question of who should bear the costs of a blocking injunction: should it be intermediaries or rightholders? The  Cartier  decision and the dissent on costs In its ruling the Court of Appeal upheld the  decision  of Arnold J at first instance  [noted  here  and  here ]  and confirmed that blocking injunctions can be also sought in online trade mark cases, even lacking an express implementation into UK law of the third sentence of Article 11 of the  Enforcement Directive  (" Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property rig...