February 22, 2019

This article was first published by Intellectual Property Magazine. 

The procedures for obtaining website blocking orders in the UK are well-established.  Following the seminal Newzbin2[1] case in 2011, the applicable threshold conditions have been reviewed and comprehensively stated in a series of judgments, the forms of order have been refined, and the court process streamlined.  Arguably, the UK now has one of the most developed and advanced regimes in Europe.  That said, more could be done to develop the current mechanisms having regard to the scale of the online infringement problem.  In particular, further expedited procedures that allow rightholders to obtain cost-effective relief more quickly would make a significant difference.

The UK Government has indicated that it is considering how site blocking procedures could be enhanced in the context of its more general commitment to reduce online infringement.  In particular:

• In its IP Enforcement Strategy 2020, it “pledged to protect intellectual property by continuing to require internet service providers to block sites that carry large amounts of illegal content” and noted that this “must be preserved, and even enhanced to cope with the sheer numbers of infringing websites that spring up every month, and the new business models they employ.”
• In March 2018, it published the Creative Industries Sector Deal, with the aim of unlocking “growth for creative businesses“, which (amongst other things) included commitments to develop codes of practice for cooperative measures aimed at significantly reducing online infringement in the UK. The Deal stated that, as part of the ongoing review of the legislative framework for enforcement (due to be completed in 2019), the Government would consider the evidence for and potential impact of administrative site blocking, as well as mechanisms through which administrative site blocking could be introduced.
• In May 2018, in its response to the Internet Safety Strategy green paper, it confirmed its intent to improve safety and reduce harm online and “to ensure that the UK is both the safest place to be online, and the best place to start a digital business.“
• More recently, the UK Government Response to the Call for Views regarding Illicit IPTV Streaming Devices (October 2018), confirmed the Government’s plan to “consider the evidence for and potential impact of administrative site blocking (as opposed to requiring a High Court injunction in every case), as well as identifying the mechanisms through which administrative site blocking could be introduced.”
• The UK Intellectual Property Office’s Corporate Plan for 2018-2019 states an intention to “understand the pros and cons of administrative site blocking by March 2019.” The IPO Strategy 2018 similarly states an intention to “review frameworks to explore ways of improving access to enforcement for rights holders”.

This article considers the current site blocking regime in the UK, and in other EU Member States, and considers the potential for future enhancements.

The legislative framework and implementation

In European law, the jurisdictional basis for the grant of website blocking injunctions is contained in the following provisions:

• Article 8(3) of the Information Society Directive[2], which states that “Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right”; and
• Article 11 of the Enforcement Directive[3], which mirrors Article 8(3) but applies to all intellectual property rights, including copyright.

The manner in which these provisions have been implemented and are applied in practice varies considerably across the EU Member States, as does the evidence required to justify the imposition of a blocking order.  What is required may depend, in part, on the maturity of the site blocking remedy in the territory in question. Whilst the UK has one of the most developed regimes, the first IP blocking orders were granted only relatively recently in, for instance, the Netherlands and Germany.  In all cases, the need to show that the target website is substantially focused on infringement and that impeding access to it is proportionate, will be an important factor.

The technical means by which Internet service providers (“ISPs“) impede access to websites when required to do so also differs.  This is in part due to CJEU case law, which confirms that orders for intermediary injunctions do not need to specify the measures that access providers must take provided that the measures taken do not unnecessarily deprive internet users of the possibility of lawfully accessing the material available and provided the measures have the effect of preventing unauthorised access to the protected content, or at least make access more difficult.

The possibility for website blocking orders that address the infringement of IP rights to be granted by both judicial and administrative bodies is anticipated in European legislation.  Recital 45 of the E-Commerce Directive makes clear that intermediary injunctions “can in particular consist of orders by courts or administrative authorities requiring the termination or prevention of any infringement, including the removal of illegal information or the disabling of access to it.”  Whilst in many jurisdictions such orders are granted only by the national courts, there are exceptions.  By way of example:

• In Italy, administrative actions are brought before the Italian Authority for Communications (AGCOM)[4]. The AGCOM process is relatively quick, with decisions rendered within 35 working days of receipt of the complaint (or within 12 working days where the infringement is of a particularly large scale).  The new AGCOM Regulation (490/18/CONS), which came into force in November 2018, provides for a fast-track procedure for obtaining orders in respect of new domains from which a site that is already the subject of an AGCOM order is accessible.  Court proceedings may also be brought, which allow rightholders to notify future domain names of the target websites for blocking without a further order.

• In Portugal, administrative procedures for obtaining site blocking orders are co-regulated by relevant stakeholders and the Portuguese supervisory authority responsible for enforcing copyright protection (IGAC).  Decisions are usually given between 4 to 6 weeks after filing.  However, administrative orders are time-limited for 12 months and as a result, rightholders may choose to issue court proceedings thereafter to obtain a final decision.

UK site blocking procedures

Applications for website blocking orders in the UK are currently issued in the High Court pursuant to either s.97A of the Copyright, Designs and Patents Act 1988[5] (where the target website is engaged in copyright infringement) or s.37(1) of the Senior Courts Act/Article 11 of the Enforcement Directive (where the target website is engaged in trade mark infringement[6]).  Over 160 websites are currently blocked in the UK pursuant to orders granted in favour of the film, TV, sports and publishing industries.  The remedy has also been developed to enable the blocking of streaming servers which deliver infringing live streams of sports content (so-called “live blocking” orders)[7].

Typically, these applications are not opposed by the ISPs and are dealt with “on the papers” by the court without a hearing.  There is no requirement for the exchange of pleadings (i.e., Particulars of Claim and Defences).  Instead, the application is supported by evidence sufficient to enable the court to determine whether the threshold conditions are satisfied, and whether the grant of a blocking order is appropriate and proportionate in all the circumstances.  Once filed, applications are typically determined within 1 to 3 months (subject to court vacations).  This is in line, or significantly quicker, than in other EU Member States that use a court procedure.

An important feature of the orders granted by the High Court is that they are “dynamic”.  That is, they include provision for the rightholders to notify additional IP addresses or URLs to the ISPs in respect of the websites which have been ordered to be blocked.  This allows the rightholders to respond to efforts made by the website operators to circumvent the orders by changing their IP addresses or URLs without having to return to court.  In addition, the orders have been refined over time to provide additional safeguards, such as the inclusion of provisions enabling third parties who claim to be affected by the order to apply to court.

Future enhancements?

As the various UK judgments rendered since Newbin2 illustrate, the site blocking remedy is efficacious and flexible, and enables rightholders to obtain meaningful relief relatively quickly.  That is not to say that further improvements could not be made.  Tackling online piracy is an ongoing challenge.  It is no a “static” problem – new infringing websites spring up all the time.  Rightholders therefore need mechanisms at their disposal to tackle new infringing operations quickly and cost effectively.

In principle, there is no reason why website blocking orders cannot be granted by an administrative authority or government agency.  Whilst some critics of intermediary injunctions have suggested that the grant of orders needs to be subject to “judicial determination”, such arguments are unsupported.  Not only is it contemplated by the relevant EU legislation, and a reality in a number of territories, it has also been recognised in a range of other contexts.  By way of example, a Report to the Special Rapporteur, Frank La Rue to the United Nations General Assembly (May 2011) identified that the determination of what content should be blocked “must be undertaken by a competent judicial authority or a body which is independent of any political, commercial, or other unwarranted influences“.  The Electronic Frontier Foundation (an organisation whose stated aims are to defend digital privacy, free speech and innovation) has also acknowledged that website blocking determinations can be made by non-judicial bodies^[8].

The administrative route is not the only one to consider, however.  The IP courts in the UK are becoming increasingly familiar with applications for site blocking injunctions.  The orders are well-developed and amongst the most robust and efficacious granted in any jurisdiction.  Further streamlining and adaptation of current procedures, standardisation of evidence and mechanisms for the applications to be dealt with on an expedited basis, potentially by both High Court Judges and/or Masters, may provide a more practical answer.

[1] Twentieth Century Fox Film Corpn & ors v BT [2011] EWHC 1981 (Ch)

[2] 2001/29/EC

[3] 2004/48/EC

[4] Orders are granted pursuant to the Regulation on “copyright protection on electronic communications networks  and implementing procedures according to Legislative Decree April 9th 2003 number 70”

[5] Implementing Article 8(3) of the Information Society Directive

[6] Following the Supreme Court judgment in Cartier ([2018] UKSC 28), blocking orders could, in principle and based on “ordinary principles of equity”, be granted in any case in which an intermediary is “mixed up” in a wrongdoing.

[7] See e.g, FAPL v BT [2017] EWHC 480 (Ch)

[8] Submissions by Article 19 and the Electronic Frontier Foundation in the European Court of Human Rights App. No. 10795/14.