In the ever-evolving digital era, the law has always been several steps behind illegal digital activity, writes Kagiso Magabe, candidate attorney, supervised by Natalie Slabbert, senior associate, Spoor & Fisher. Some territories, like the EU, Australia, the UK, and Denmark, have implemented legal tools to keep up with technological advances. One such tool is the website blocking injunction – a tool which places a legal obligation on internet service providers (ISPs) to find technical ways to stop illicit activity including by blocking access to certain websites. Such an injunction can be used to great effect by rights holders to, for example, block access to websites which allow users to download, or to stream or to access pirated content. Such an injunction completely bypasses the infringing party and orders a third-party intermediary to take action to prevent the dissemination of infringing content.
Such an injunction differs from traditional website takedown notices which are a private, extra-judicial procedure where a website can be taken down through a request to a host or ISP. Such takedowns are not court orders and are less effective. Often, a new website is simply created to replace the one which was taken down. Takedown notices would then need to be lodged piece meal, against each infringing website and its content.
A website blocking injunction, on the other hand is more effective in curbing the spread of infringing content as the order is directed at the third-party intermediary whose service acts as the conduit for the infringing content. What happens in practice when a website blocking injunction is granted, is that when access to one infringing website is blocked, if another website takes its place, the rights holder is empowered to notify the ISP who will then, in terms of the initial order, block all similar sites which display the same or similar content.
What are website blocking injunctions?
What exactly is a website blocking injunction? In short, it is a court order which compels ISPs to block users’ access to servers which host websites including material that infringes a third party’s intellectual property rights.[1]
The technology and ability to block access to certain content on the internet is not new. Users’ access to content online has been blocked by governments and law enforcement agencies for some time in order to prevent access to content which incites violence, hate or promotes extremist propaganda, and to other online content providing access to child pornography, weapons or narcotics.
Just like these “filtering schemes” mentioned above, innovative website blocking injunctions require ISPs to create measures which block the infringing primary domain and IP addresses of piracy websites.[2]
Dynamic website blocking injunctions go a step further by allowing flexibility to combat repeated infringements. This is done by compelling the ISP to implement further technical measures which block domain addresses as they switch to new IP addresses. [3]
The third blocking measure is a live blocking injunction which compels the ISP to block a website that broadcasts every time a live broadcast is in progress.[4]
Although these injunctions have been widely applied to copyright infringement on piracy websites, these types of injunctions can theoretically be applied to other areas of intellectual property law in the digital arena. [5]
Advantages of website blocking injunctions
The battle against online infringements has been raging using various methods. One of which is lodging domain name disputes to obtain domain transfers through various policies and procedures such as the Uniform Domain Name Dispute Resolution Policy under WIPO and various local versions such as the Alternative Dispute Resolution Regulations (ADR Regulations) in South Africa etc. The effect of a successful domain name dispute is that the infringing or abusive domain name is transferred to the rights holder. Such methods are invaluable in protecting trade marks from misappropriation and dilution. However, after a domain is transferred, it is a common occurrence for a new domain to be registered or a new website to pop up to replace the infringing website that was resolved to by the infringing domain. [6]
As mentioned above, another method was the traditional takedown notice when an ISP or host could remove website content. Again, the effectiveness of such a method was limited as new infringing websites would continue to pop up in place of the one which was taken down.
The website blocking injunction is a more efficient means of attacking online intellectual property infringement as such an injunction allows ISPs to block specific domains and block websites which have switched IP addresses. [7] As a result, the rights holder will no longer have to tackle individual websites.
Another benefit of website blocking injunctions is the involvement of judiciary from the outset, which encourages swift action from ISPs.[8] The involvement of ISPs means that practically, the infringing party is bypassed completely by making their website inaccessible on the networks controlled by the ISP subject to the blocking injunction. Although the website is still, technically, accessible to the public, the blocking order means that the website is inaccessible from the network of the ISPs subject to the blocking order.
Website blocking injunctions in practice
The European Union (EU) and the UK are leading the charge in favor of website blocking injunctions by including legislation which specifically allows the courts to make orders which compel ISPs to block access to infringing material. Legislation in the EU and the UK provide specific legislation on injunctions against third parties who services are used to commit copyright infringement. Legislation includes the Copyright, Designs and Patents Act 1988 in the UK; as well as EU directives such as Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“Directive 2001/29/EC”) as well as Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
There have been a rising number of cases where courts have had to decide whether a website blocking injunction can be considered to be a just mechanism to curb the rampant online infringement of intellectual property rights. In the three cases below, the courts delved into various reasons why issuing website blocking injunctions are appropriate responses to online intellectual property infringement.
Nintendo case “a fair balance”
Nintendo is a Japanese multinational video game company which develops and sells games which are used on its Nintendo Switch console. It also licenses others to produce games that are compatible with this console. Nintendo became aware of two websites – ‘NSW2U’ and ‘NSWROM’ – which were allowing users’ to access pirated downloads of Nintendo Switch games. On these websites, not only were downloadable pirated copies of Nintendo Switch games available, Nintendo’s trade marks and artwork were also used without authorisation.
As a result of the decision in Cartier International AG v British Telecommunications plc ([2018] UKSC 28)(“the Cartier case”), it was accepted practice that a website blocking injunction could be granted on the basis of trade mark infringement. What was novel in Nintendo Co Ltd v British Telecommunications Plc ([2021] EWHC 3488 (IPEC) (21 December 2021) (“the Nintendo case”), is that Nintendo also relied on its copyright in its artwork as well as in its source code.
In this instance, the court agreed with Nintendo and granted an order in terms of which the ISP was directed to block their users’ access to the infringing website. Moreover, the court commented that website blocking injunctions against an ISP which is enabling access to pirated games strikes a ‘fair balance’ between protecting Nintendo’s rights and those of the public and allowing internet service providers to continue trading fairly.
The use of the pre-emptive function of live blocking injections in anticipation of illegal streaming
In The Football Association Premier League Ltd V British Telecommunications Plc & Others [2017] EWCH 480, the Football Association Premier League (FAPL) approached the court to order several ISPs to pre-emptively block websites from live streaming Premier League matches illegally.
Section 97A of the Copyright, Designs and Patents Act 1988 provides that a “High Court shall have the power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.” In this instance the court had to establish if it had jurisdiction to make an order based on a future copyright infringement.
First, the court had to establish if users and/or the operators of the streaming websites infringe copyright. When users stream, in this instance a match, copies of the images of the match, including the copyright works belonging to FAPL, are made in the memory of the user’s device. It was thus held that a considerable part of the FAPL’s copyright is likely to be copied if users stream a substantial portion of the match.
The courts further held that ISPs played a vital role in enabling users to access infringing streams and thereby enabled the consumer to obtain copies of FAPL’s copyrighted works. In this instance, the court held that a live-blocking injunction was an effective tool to ensure that the ISP can assist in restricting the online infringement of FAPL’s rights.
The EU perspective
Through the Articles provided by Directive 2001/29/EC EU a growing number of EU member states are using their authority to issue injunctions against ISPs which allow access to copyrighted material using their services.
In terms of Article 8(3) of Directive 2001/29/EC, provision is made for rightsholders to bring an application against the “intermediary whose services are used by a third party to infringe a copyright or related right. In addition, Article 11 of Directive 2004/48/EC, member states have authority to issue injunctions (such as website blocking injunctions) against intermediaries whose serves are being used to infringe on the intellectual property right of the rightsholder. Therefore, national courts have the authority to issue an injunction against such “intermediaries” ordering them to block access to infringing copyright materials.
In Case C-314/12 UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, a website was permitting the unauthorized streaming and downloading of films without the consent of the film companies who owned rights in these films. The companies referred the matter to the courts in an attempt to obtain an injunction that would require the ISP, UPC Telekabel, to block their users’ access to these films.
In this instance, UPC Telekabel argued that they cannot be considered intermediaries as they are not directly involved in the infringement, and they should therefore not be responsible for blocking access to the infringing website.
The court held that the ISP could be considered an intermediary for the purposes of the Directive 2001/29/EC and ruled in favor of the film companies, ordering UPC Telekabel to block access to the infringing material.
It is clear that website blocking injunctions are a new adaptable tool used to tackle online intellectual property infringement. Although this mechanism is not without its challenges, it appears that more than ever, website blocking injunctions have allowed the law to “catch-up” to ever evolving digital advancements. In many countries including, the UK, Sweden, India, and Australia – to name a few, courts have handed down judgments ordering website blocking injunctions. The creation of website blocking injunctions has given rights holders the ability to take back some control over online intellectual property infringement by involving ISPs. As this mechanism is more widely used, we will have to watch closely to see how other countries implement this exciting new mechanism.
[1] Reconciling web-blocking injunctions and freedom of speech – mission impossible
[2] Adaptive Antipiracy Tools: An update on Dynamic and Live Blocking Injunctions
[3] Website Blocking Injunctions in Flux: Static, Dynamic and Live
[4] Website Blocking Injunctions in Flux: Static, Dynamic and Live
[5] Disputes 2018: Blocking Injunctions
[6] Reconciling web-blocking injunctions and freedom of speech – mission impossible
[7] Reconciling web-blocking injunctions and freedom of speech – mission impossible
[8] Reconciling web-blocking injunctions and freedom of speech – mission impossible