Takedown: no more case by case

Author: Eddie Powell

A couple of UK court cases have looked at how an intermediary – such as an internet service provider (ISP) or on-line marketplace (e.g. eBay) – can be forced to take sweeping action to stop infringement of intellectual property rights taking place through their services.

IP owners have been able to use “takedown” procedures against ISPs and similar processes for other on-line intermediaries for a number of years, but the courts have always confined themselves to ordering the ISP to terminate the entire activities of the infringers when that ISP is providing a service to the infringer within the court’s jurisdiction. So, for example, if you are a record company and you know that infringing copies of one of your recordings are being distributed through an illegal peer to peer file sharing site, then you can get a court order in the UK against a UK ISP which hosts the file sharing site.

What we are seeing now, though, is a move towards the courts requiring the ISPs and intermediaries to take much more wide-ranging steps to stop on-line infringements.

The first case was an action brought by L’Oreal against eBay arising out of the sale of counterfeit L’Oreal products. L’Oreal wanted eBay to do more than simply remove the offending listings; they wanted eBay to discontinue the eBay accounts of the sellers of the false product and provide details of them so that L’Oreal could take action. The UK court referred the matter to the European Courts of Justice (ECJ) in Luxembourg. The ECJ confirmed that an on-line marketplace such as eBay could be forced by a court, in an IP infringement case, to take measures not only to bring current infringements to an end, but also to prevent further infringement. The court said that those court orders must be “effective, proportionate and dissuasive and must not create barriers to legitimate trade”.

That case is now going back to the UK courts for interpretation as to exactly what kind of order will be made against eBay in relation to preventing further infringement of L’Oreal’s IP rights.

The UK court has also been asked to look at the obligations of an ISP, who has a very similar status in law. Readers may be familiar with the Newzbin saga where what was dressed up as a news site was actually used for nothing other than peer to peer sharing of pirated copies of films. Newzbin was shut down by court order last year but it popped up as Newzbin 2 using servers located outside the UK court’s jurisdiction. Twentieth Century Fox and other film companies took a case against British Telecom (BT) to compel BT to deny access to the Newzbin 2 site for all BT’s internet customers. It is worth noting that BT had no ability to shut down the Newzbin 2 site itself, but what it was being asked to do was to prevent its subscribers – the vast majority of whom had not even visited the Newzbin 2 site – from ever accessing that website. The UK court agreed to the film companies’ request on the basis that Newzbin 2 was clearly used for nothing other than infringing IP rights, and it was established that BT’s systems could easily be adapted to achieve the desired block.

Both of these cases concern fairly blatant infringing conduct – counterfeiting or piracy – but as ever with law, these cases are probably the pathfinders. What we can expect to see is an increase in the involvement of intermediaries or ISPs in order to pursue less clear-cut IP infringement claims.

For more information please contact Eddie Powell, Partner, Fladgate LLP on 020 3036 7362 or epowell@fladgate.com

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