ISPs lose appeal against widening of website blocks

2014 ruling by High Court to block websites over counterfeit goods upheld

Some of the UK's biggest ISPs have lost an appeal against a 2014 ruling by the High Court in London requiring them to extend their blacklists to encompass websites accused of selling counterfeit goods.

Under Section 97A of the Copyright, Designs and Patents Act, ISPs are obliged to block websites found to be infringing copyright, on production of a court order by the copyright holder.

However, the Court of Appeal decided to uphold a 2014 ruling which effectively extend the act to cover websites selling counterfeit goods.

The ISPs involved in the appeal, which includes BT, EE, Sky, TalkTalk and Virgin Media, argued that the companies that had pursued the original case - luxury brands Cartier and Montblanc - had not produced any evidence that the ISPs' networks were being abused to infringe trademarks.

They added that the relevant case law was the UK Trade Marks Act, not the Copyright, Designs and Patents Act, and that the Trade Marks Act did not include provisions for website blocking.

Furthermore, websites overseas offering counterfeit goods are not widely used and, therefore, the losses the luxury brands claim are not significant.

The ISPs say that not only is blocking an ever-widening range of websites a technical challenge, but that it also adds to their costs in a business with razor-thin margins. EE, for example, claims that each update to its block list costs almost £1,000. Virgin Media estimates its annual costs at a "low five-figure sum", according to ISP Review.

In a statement, law firm Bristows said: "The Court of Appeal has confirmed a High Court's landmark 2014 decision against internet service providers, requiring them to block access to websites which sell counterfeit goods. The Court of Appeal also said that the costs of implementing such a blocking order should fall on the ISPs, rather than the rights holders who benefit from the order.

"The decision will be seen as positive news by brand owners concerned with the difficulties of dealing with websites selling counterfeit goods, which are often based out of the jurisdiction and prove difficult to deal with. ISPs, though, will now have to bear the costs of implementing such blocking orders for trademark owners, in the same way that they have borne the cost of implementing orders which block access to websites which host copyright infringing works."

Bristows has also released its analysis of the case, and suggested that the ISPs might appeal to the Supreme Court, given the dissent of one of the judges adjudicating the case.