The Claimants, a group of Swiss fashion companies, instructed Adrian Speck QC as leading counsel. Charlotte May QC and Jaani Riordan comprised the legal team for the Defendants, who were the five leading British ISPs. This application was a test case to determine whether orders could be made against the ISPs requiring them to block access to six websites which advertise and sell counterfeit goods.
Arnold J held that the English and Wales High Court had jurisdiction to grant the orders from a domestic interpretation of section 37(1) of the Senior Courts Act 1981 or, alternatively, under the Marleasing principle in light of Article 11 of the Enforcement Directive.
The judge explained that the conditions for activating this power were:
(1) that the respondent is an “intermediary” within the meaning of Article 11;
(2) that the operators of the target websites infringed the Claimants’ trade marks;
(3) that the operators use the ISPs’ services to infringe; and
(4) that the ISPs had actual knowledge of the infringing use of their services.
On the facts, the judge held that these conditions were satisfied. Furthermore, the orders were proportionate, because there were no alternative measures available that showed a better balance of efficacy and burden to the parties. These measures would also have a dissuasive value. Further, the orders would not interfere in lawful content.
As such, Arnold J granted the orders, subject to two safeguards: 1. the orders should expressly permit third parties (such as subscribers and affected website operators) to apply to the court to discharge or vary the orders, and; 2. a sunset clause should be included to ensure that the order is not indefinite.
Adrian Speck QC was instructed by Wiggin LLP
Charlotte May QC and Jaani Riordan were instructed by Reed Smith LLP