Friday, 17 October 2014

Who needs section 97A? A comment on Cartier v BSkyB

It's that man again!  As reported by IPKat, the latest "section 97A" success is out in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] EWHC 3354 (Ch), but this time, it relates to trade marks. Although 1709 is strictly a copyright blog, this blogger thought that if trade marks can hop on copyright’s 97A bandwagon, then 1709 can hop on theirs!

Last year, we noted the increase in use of the section 97A legislation and its success in a move towards combatting piracy, and since then, in February 2014, three further sites were blocked after an application by major film studios. 

However this time, the powers under section 97A have gone further than we imagined, and has led to the granting of injunctions against ISPs in relation to trade marks, following an application by Cartier, Montblanc and Richemont. 

As Arnold J notes in his judgment, there is no section 97A equivalent for trade marks.  However, construing the Court's general jurisdiction to issue injunctions under section 37(1) of the Supreme Court Act 1981 in the context of Article 11 of the Enforcement Directive (Directive 2004/48/EC on the enforcement of intellectual property rights), and in particular drawing on the decision of the CJEU in L'Oreal v eBay, he concludes "even if the Court would not have power to grant a website blocking injunction in a trade mark case upon a purely domestic interpretation of section 37(1), section 37(1) can and should be interpreted in compliance with the third sentence of Article 11 by virtue of the Marleasing principle.  If it were otherwise, the UK would be in breach of its obligations under the Directive."  

He does point out in passing the absurdity of the Government's position on implementation of the Enforcement Directive - if they were right that no specific implementation of Article 11 was necessary (which he concludes they were), then why did they not repeal section 97A, on the basis that it is not needed!

Having determined that jurisdiction was available, he applied the same tests as to when that jurisdiction should be exercised as he had previously established in the section 97A cases - 1. Are the ISPs intermediaries, 2. Are the operators of the websites infringing trade marks? 3. Are they suing the ISPs service to infringe? 4. Do ISPs have actual knowledge?

What this does show is yet again the court’s (and especially Arnold’s!) willingness to help the fight against piracy, and their willingness to put responsibility on ISPs, and this time without an explicit statutory provision to assist. It seems that the Court's inherent powers may be even more helpful to the creative industries than initially thought.

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