ISPs handbagged: BLOCK knock-off sites, rules beak

Historic trademark victory, but sunset clause applies to future blocks


The UK's biggest ISPs must block websites that flog knock-off goods, after a successful High Court case brought by luxury goods firm Richemonte, the first time trademark pirates have been blocked in the EU.

Richemonte, Swiss-based holding company for brands including Cartier (watches), Alfred Dunhill, and Montblanc wanted six websites blocked under section 97A of the 1988 Copyright Designs and Patent Act — the section used to block access to foreign websites that offer links to and/or torrent files of copyrighted music and films – such as The Pirate Bay.

The sites include Cartierlove2u and Montblancpensonline — which from a distance, and to the untrained eye, look like bona fide outlets. Until you check the prices, and spelling.

At issue was whether trademark blocking orders could be brought using the same principles that permitted blocking under 97A, which doesn't actually mention trademarks. The ISPs (Sky, Virgin, BT, EE, TalkTalk) wanted clarification on wording, and a two-day hearing took place last month.

Judge Arnold concluded after some hesitation that the 1994 Trademark Act gave sufficient grounds for trademark owners to pursue an injunction, and would be fair.

Judge Arnold did agree with David Allen Green (aka the blogger "Jack of Kent") for the Open Rights Group that the block should contain information about who asked for the block, and "that affected users should have the right to apply to the Court to discharge or vary the order".

He also agreed the blocks should have a "sunset clause", which he thinks should be two years.

A knock-off Montblanc site

VPN blocking

Arnold had to balance the EU InfoSec Directive, limiting liability for service providers, with the EU E-commerce Directive which protects trade. The latter applied to both sides in this case: giving traders the right to pursue injunctions, and service providers protection against being unfairly harassed out of business by them.

"Where two rights, or sets of rights, are in conflict, then the conflict must be resolved by applying the principle of proportionality to each and striking a balance between them," noted Arnold.

"Each of the techniques described above can readily be circumvented by users who have a little technical knowledge and the desire to do so," Arnold added.

Blocks are ineffective against VPN users. However, there's no burden under Article 3(2) of the Enforcement Directive on rightsholders to establish that they'll reduce overall infringement — merely that they can be effective against a rogue trader. Arnold agreed with ISPs that effectiveness was as an important factor in deciding on proportionality.

And they're cheap — one ISPs put the cost at £3,600 per website per year, while Sky and BT's cost estimates are in the same region. ISPs who blocked sites were briefly attacked (via DDOS or malicious DNS poisoning) but the reprisals weren't repeated. This swung Justice Arnold's thinking. ISPs had argued that Richemonte should use notice-and-takedown, and not pursue web blocking.

"The key question, to my mind, is whether the benefits of website blocking, which accrue to the rightholders, justify the costs, and in particular the implementation costs which are imposed on the ISPs. This question is central to the assessment of proportionality," said Arnold.

The ISPs argued that Richemonte could and should use other countermeasures against rogue websites, such as notice and takedown, going after payment processors, blocking DNS, and de-indexing them from search engines. (Yes, ISPs argued for all these things.) But Arnold noted that these weren't always effective.

For example, the knock-off pen website ukmontblancoutlet.co.uk was suspended as a result of action by PIPCU (Police Intellectual Property Crime Unit), but the very next day the website re-appeared under the name montblancoutletonline.co.uk, he noted. PIPCU could only enforce against UK-registered domains. As for delisting, Arnold observed: "It is not clear at present that any EU court would have power to order de-indexing on the basis of intellectual property infringement."

Next page: Dirty and clean

Similar topics

Broader topics

Narrower topics


Other stories you might like

  • Lonestar plans to put datacenters in the Moon's lava tubes
    How? Founder tells The Register 'Robots… lots of robots'

    Imagine a future where racks of computer servers hum quietly in darkness below the surface of the Moon.

    Here is where some of the most important data is stored, to be left untouched for as long as can be. The idea sounds like something from science-fiction, but one startup that recently emerged from stealth is trying to turn it into a reality. Lonestar Data Holdings has a unique mission unlike any other cloud provider: to build datacenters on the Moon backing up the world's data.

    "It's inconceivable to me that we are keeping our most precious assets, our knowledge and our data, on Earth, where we're setting off bombs and burning things," Christopher Stott, founder and CEO of Lonestar, told The Register. "We need to put our assets in place off our planet, where we can keep it safe."

    Continue reading
  • Conti: Russian-backed rulers of Costa Rican hacktocracy?
    Also, Chinese IT admin jailed for deleting database, and the NSA promises no more backdoors

    In brief The notorious Russian-aligned Conti ransomware gang has upped the ante in its attack against Costa Rica, threatening to overthrow the government if it doesn't pay a $20 million ransom. 

    Costa Rican president Rodrigo Chaves said that the country is effectively at war with the gang, who in April infiltrated the government's computer systems, gaining a foothold in 27 agencies at various government levels. The US State Department has offered a $15 million reward leading to the capture of Conti's leaders, who it said have made more than $150 million from 1,000+ victims.

    Conti claimed this week that it has insiders in the Costa Rican government, the AP reported, warning that "We are determined to overthrow the government by means of a cyber attack, we have already shown you all the strength and power, you have introduced an emergency." 

    Continue reading
  • China-linked Twisted Panda caught spying on Russian defense R&D
    Because Beijing isn't above covert ops to accomplish its five-year goals

    Chinese cyberspies targeted two Russian defense institutes and possibly another research facility in Belarus, according to Check Point Research.

    The new campaign, dubbed Twisted Panda, is part of a larger, state-sponsored espionage operation that has been ongoing for several months, if not nearly a year, according to the security shop.

    In a technical analysis, the researchers detail the various malicious stages and payloads of the campaign that used sanctions-related phishing emails to attack Russian entities, which are part of the state-owned defense conglomerate Rostec Corporation.

    Continue reading

Biting the hand that feeds IT © 1998–2022