Cartier International AG and others (Respondents) v British Telecommunications Plc and another (Appellants) [2018] UKSC 28

Document type
Court Decision
Country

This is a Supreme Court decision concerning the allocation of compliance costs tied to website blocking injunctions, granted against trademark-infringing websites. In the course of the proceedings, five types of corresponding costs (thus far borne, in similar cases, by the appelant Internet Service Providers) were identified:

  • “i)  the  cost  of acquiring and upgrading the hardware and software required to block the target sites;
  • (ii)  the  cost  of  managing  the  blocking  system,  including  customer  service,  and network   and   systems   management; 
  • (iii)   the marginal  cost  of   the   initial  implementation  of  the  order,  which  involves  processing  the  application  and  configuring the ISP’s blocking systems;
  • (iv) the cost of updating the block over the lifetime  of  the  orders  in  response  to  notifications  from  the  rights holders,  which involves  reconfiguring  the  blocking  system  to  accommodate  the  migration  of websites from blocked internet locations; and
  • (v) the costs and liabilities that may be incurred if blocking malfunctions through no fault of the ISP, for example as a result  of  overblocking  because  of  errors  in  notifications  or  malicious  attacks provoked by the blocking” (at para [5])

The ISPs accepted the costs described in (i) and (ii) - however, they claimed that the rightholders should indemnify them with regards to the costs laid out in (iii), (iv) and (v). The Supreme Court agreed with the ISPs, considering the principles emerging from the English legal tradition (eg. the Norwich Pharmacal decision) and the EU framework. It was found that there is no basis for suggesting that the discussed compliance costs are "excessive, disproportionate or such as to impair the respondents’ practical ability to enforce their trade marks" (at para [36]). The argument (earlier accepted by the Court of Appeal) that such costs should be borne by the ISPs as general operational costs, tied to benefitting from online traffic, was dismissed by Lord Sumpton, who found that this stance would assume "a degree of responsibility on the part of the intermediary which does not correspond to  any  legal  standard" in English law (at para [34]).

Country
Topic, claim, or defense
Other IP
E-Commerce
Document type
Court Decision
Issuing entity
Highest Domestic/National (including State) Court
Type of service provider
Internet Access Provider (Including Mobile)
Issues addressed
Other
OSP obligation considered
Block or Remove
Type of liability
Injunctive
Type of law
Civil
General effect on immunity
Mixed/Neutral/Unclear
General intermediary liability model
Takedown/Act Upon Court Order