You’re Blocked: Fighting online counterfeiters with Blocking Injunctions in the UK

What is a blocking injunction?

Unlike a traditional injunction which is directed at a particular counterfeiter, blocking injunctions are issued against online intermediaries, such as internet service providers (“ISPs”) and require the ISPs to block all access on their networks to particular websites or categories of content.

What problem does a blocking injunction address?

It is often difficult (and sometimes impossible) to identify the individual behind an online infringement, particularly when it comes to counterfeits: data privacy regulation in the UK prevents disclosure of the owner of a domain name; and sophisticated counterfeiters are able to obscure their identities very effectively.

Even if the perpetrator can be identified, they are often based overseas in jurisdictions where enforcement of court orders is difficult. Furthermore, they are adept at circumventing traditional take-down orders, for example by re-hosting or re-uploading content or moving it to a server abroad.

How do blocking injunctions solve the problem?

A blocking order does not require the rights owner to identify, issue proceedings or enforce against the counterfeiter. Instead the action is directed at ISPs. In the UK there are five main ISPs, which together have approximately a 95% market share of UK internet users. This means that acting together, and pursuant to a court order, they can effectively block access to infringing content across almost the entirety of the UK network. The ISPs have experience of blocking orders, and so generally consent to such orders (provided that they are what they consider to be the “normal” order), which means that protracted proceedings are not required to obtain the order.

A blocking injunction against an ISP is usually dynamic, which means that the rights-holder is permitted to vary the list of IP addresses, URLs or characteristics of the data set out in the order without the need to issue fresh proceedings anytime the counterfeit items appear in a location not specified in the order.

In addition, an effective blocking injunction sends a strong message to the market that the brand owner takes a zero tolerance approach to infringement of its brands, particularly when a page is displayed notifying the user that the content is blocked by court order.

What are the different types of blocking injunctions?

Blocking injunctions fall broadly into the following four categories:

• Domain Name System (DNS) blocking

This technique requires ISPs prevent access to specified domain names by removing or modifying the Internet Protocols associated with those domain names, such that when a user tries to access the site, it is either unable to access it or is directed to a page which notes that it has been blocked pursuant to a court order.

• Internet Protocol (IP) blocking

This technique requires the ISP to modify its network so that it discards any communication destined for the infringing IP addresses, thereby preventing access to certain websites.

• Uniform Resource Locators (URLs) blocking

This technique blocks access to particular URLs that are known to contain infringing content. If an ISP is ordered to carry out URL blocking, it will reroute traffic to a proxy server that holds a list of blocked URLs. The ISP will compare a requested URL to those on the list, and where a blocked URL is identified, the connection is either refused or redirected.

• Deep Packet Inspection (DPI)

DPI requires the ISP to inspect the content of each packet of information transmitted over its network and to prevent user access to information which contains certain characteristics/data.

More often than not, an order will require ISPs to implement a combination of the above-mentioned techniques, often as part of a two-stage approach to increase the effectiveness of the injunction.

How effective are they?

Whilst it is possible for infringers or users to find workarounds, generally website blocking injunctions are an effective method of protecting intellectual property rights online. This is exemplified by an illegal streaming service, Pirate Bay, experiencing a 40% drop in traffic to its service following the implementation of a blocking order against the Dutch ISPs.

What does a brand owner need to do to obtain one?

Before making an application to court, a brand owner must be confident that certain threshold conditions are satisfied, namely: (i) the defendants must be intermediaries; (ii) the users or operators (or both) of a website must be infringing the claimant’s IP rights; (iii) the users or operators must be using the defendants' services to infringe; and (iv) the defendants must have actual knowledge of this (i.e. the rights-holder should notify the ISP of the issue prior to applying for the order); and v) the brand owner must cover the ISPs’ costs of implementation of the order.

Next steps

For further information, please contact Emily Sharkey and Sahira Khwaja at [email protected] and [email protected] respectively.

Authored by Emily Sharkey and Sahira Khwaja.