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The Liability of Internet Intermediaries The Liability of Internet Intermediaries

Contents

The Liability of Internet Intermediaries The Liability of Internet Intermediaries
1

General limitations upon injunctions 13.02

1.1

Wrongdoing 13.03

1.2

Discretion 13.10

1.3

Necessity 13.15

1.4

Proportionality 13.24

1.5

Territoriality 13.29

1.6

International law 13.38

1.7

General monitoring duties 13.43

1.8

Futility 13.55

1.9

Impossibility or impracticality 13.61

1.10

Clarity 13.65

1.11

Freedom of expression 13.70

1.12

Prescribed by law 13.75

2

Specific requirements in intellectual property cases 13.96

2.1

Effectiveness 13.105

2.2

Proportionality 13.114

2.3

Dissuasiveness 13.153

2.4

Fairness 13.158

2.5

Barriers to legitimate trade 13.187

2.6

Cost and complexity 13.195

2.7

Safeguards to prevent abuse 13.210

13.01 This chapter considers several limitations upon the availability, nature, and scope of injunctive remedies available against internet intermediaries. These limitations derive from four main sources: general principles of injunctive relief, European Union law, human rights law, and specific doctrinal rules. Some are of universal application; others apply in more limited fields, such as the grant of interim injunctions, the enforcement of intellectual property rights, or to particular classes of defendants. With some exceptions, they are not specific to the internet, or even to intermediaries, and so apply in other domains and to other parties as well. This chapter divides these rules into general limitations and those specific to intellectual property. Safe harbours are addressed separately in chapter 12.

13.02  No absolute ‘right’ to an injunction. Once a claimant succeeds in establishing all the elements of a cause of action in circumstances where the defendant has not raised any complete defence, there are relatively few limits on the powers of a court to grant injunctive relief to restrain that wrongdoing. The practice of the courts is usually to grant a final junction, especially where the claimant has successfully invoked a right characterised as proprietary. For this reason, the law reports are replete with references to a claimant’s ‘legal right’1 to redress and the claimant being ‘prima facie entitled to an injunction’.2 However, a large body of practices and principles influence and, in some circumstances, place limits upon the exercise of the courts’ powers to award a remedy in individual cases. These limits may be relied upon by defendants at the stage of opposing relief which the court otherwise has jurisdiction to grant. This section provides a general introduction to these limitations in the context of civil claims against internet intermediaries.

13.03  Prima facie right to relief. Proof of actual or threatened wrongdoing by some person is a vital precondition of a final injunction against an internet intermediary. In order to establish an entitlement to equitable relief, the traditional view is that the claimant must prove

his legal right and an actual or threatened infringement by the defendant, but also by overcoming all equitable defences such as laches, acquiescence or estoppel. If he succeeds in doing this, he is prima facie entitled to an injunction. The court may nevertheless in its discretion withhold injunctive relief and award damages instead.3

13.04  Future wrongdoing. A claim to an injunction may be founded upon a threat of acts that, if carried out, would be wrongful but are as yet inchoate. However, the degree of wrongdoing and the probability of the threatened acts occurring are relevant factors to be considered. Each must be sufficiently material to make injunctive relief proportionate in the circumstances. As Jessel MR explained in Frearson v Loe, a patent case:

Now, I am not aware of any suit or action in the Court of Chancery which has been successful on the part of a patentee without infringement having been proved; but in my opinion, on principle, there is no reason why a patentee should not succeed in obtaining an injunction without proving actual infringement. I think so for this reason. Where the Defendant alleges an intention to infringe, and claims the right to infringe, the mischief done by the threatened infringement of the patent is very great, and I see no reason why a patentee should not be entitled to the same protection as every other person is entitled to claim from the Court from threatened injury where that threatened injury will be very serious...Of course it must be plain that what is threatened to be done is an infringement.4

However, where the injunction relates only to potential future wrongdoing, some cases suggest that a mandatory injunction will not be granted unless the claimant can show ‘a very strong probability on the facts that grave damage will accrue to him in the future’ if the order is not made.5

13.05  Type of wrongdoing. A claim for final injunctive relief against an internet intermediary could be founded in potentially any form of civil or criminal wrongdoing.6 This is consistent with the scope of the courts’ jurisdiction to entertain claims generally, and illustrated by the breadth of Norwich Pharmacal relief. It is also suggested that the wrongdoing relied upon must be a real and substantial tort in the jurisdiction, though that question has not yet been determined.7

13.06  Injunctions against non-wrongdoers. Recent decisions suggest that the Court will have jurisdiction to grant a final injunction even where the respondent has not directly committed any tort. In Cartier International AG v British Sky Broadcasting Ltd,8 the High Court granted a blocking injunction against five internet service providers who had not engaged in, and were not accused of, any wrongful act. The justification was said to be the equitable protective duty owed by the defendants not to facilitate third parties’ infringements of the claimants’ trade mark rights. This decision is discussed further in chapter 14 in the context of website blocking injunctions.9

13.07  Injunctions to prevent arguable wrongdoing. In Warner-Lambert Company LLC v Actavis Group PTC EHF, the High Court granted a mandatory injunction against the National Health Service Commissioning Board, a non-wrongdoer, requiring it to disseminate guidance to English hospitals concerning the prescription of a patented pharmaceutical, with a view to preventing possible infringements of the claimant’s second medical use patent.10 It was common ground that the Court had jurisdiction to grant a final injunction in these circumstances, notwithstanding that the judge had previously refused an application for an interim injunction against the defendant, the alleged primary wrongdoer.

13.08 The order against the intermediary respondent was, in both Cartier and Warner-Lambert, founded upon an analogy with the equitable protective jurisdiction and the duty owed by the respondent to assist in preventing arguable infringements of the applicant’s rights. Arnold J reasoned:

it is well established that Norwich Pharmacal relief is available where there is an arguable case of wrongdoing based on the evidence available at the time of the application. For present purposes I am prepared to assume that the equitable protective duty and duties analogous thereto can be enforced by injunction in parallel circumstances. Counsel for Warner-Lambert relied on the fact that...I declined to strike out Warner-Lambert’s claim...[and] the fact that the Court of Appeal has now given permission to appeal against my order [refusing an injunction], and submitted that there is an analogy between the present situation and the situation where an injunction is sought pending appeal even though the patent has been held invalid at first instance...11

However, without demonstrating a sufficient likelihood of wrongdoing by someone, it is suggested that the court has no jurisdiction to enjoin a non-party.

13.09  Interim injunctions. Applications for interim relief against internet intermediaries may raise different and additional considerations. In particular, where relief would affect freedom of expression, the factors discussed in section 1.11 will need to be considered.12

13.10  Injunctions as equitable remedies. Where a recognised right has been infringed and the defendant has no countervailing interest or defence, the claimant is, according to traditional principles, ‘prima facie entitled to an injunction’.13 Because an injunction is an equitable remedy, the Court will retain a discretion to refuse injunctive relief and award damages instead, having regard to all the circumstances.14 In light of recent criticism of the traditional Shelfer approach as ‘out of date’, it is possible that courts will be more inclined towards the refusal of injunctions and awards of damages where injunctive relief would disproportionately interfere with the rights of third parties.15

13.11  Breadth of discretion. The discretion to award damages in lieu of an injunction is, as a matter of principle, wholly unfettered.16 However, according to the established approach, the prima facie position is that an injunction will be granted once the claimant succeeds on his or her case. In a normal case,17 the legal burden is accordingly on the defendant to show why the remedy of an injunction should not be granted.

13.12  Reasons for refusing injunctive relief. Relief is traditionally refused in three situations: first, if a substitutive remedy such as damages (or, in the case of an equitable wrong,18 equitable compensation) would prove adequate, or if an injunction would cause disproportionate harm or oppression to the defendant,19 though this principle has now been qualified; second, if the claimant is guilty of delay, acquiescence, or other misconduct which disentitles him from equitable relief, or otherwise makes relief inappropriate;20 or third, if to grant an injunction would be futile.21 These general limitations would apply to claims for non-monetary remedies against internet intermediaries, subject always to the Court’s ultimate discretion. A party may also agree to exclude the availability of an injunction by contract, subject to the statutory controls on contractual terms and other relevant considerations of public policy and non-excludable statutory remedies.22

13.13  Adequacy of damages. The principle that an injunction may not be granted if damages would be an adequate remedy is not absolute and should not be mechanistically or ‘slavishly’ applied.23 In B v D, the Court of Appeal granted an interim injunction to restrain a breach of contract where this gave effect to the parties’ intentions and was designed to avoid a claim to damages arising. The parties had agreed to restrict the damages recoverable for breach of a licence agreement, but this was not treated as an agreement to excuse performance of the primary obligations under the contract.24 Ryder LJ agreed and preferred to frame the question as being: ‘Is it just in all the circumstances that a [claimant] be confined to his remedy in damages?’25 The effect was that an injunction could issue even where wrongdoing would not sound in damages, or where damages would be an adequate remedy. The overriding consideration was that the remedy should be one ‘which reflects the substantial justice of the situation’.26

13.14  Mandatory injunctions against intermediaries. It should be borne in mind that, although many orders against internet intermediaries may be framed negatively, their substance is mandatory.27 For example, a prohibitory injunction requiring an ISP not to facilitate access to a specified internet location (although on its face a negative obligation) is in substance an obligation to withdraw the support which such intermediaries give by default, eg by taking positive steps to block or disable access. Although some older authorities suggest that mandatory injunctions may be approached with greater caution,28 more recent cases suggest that broadly the same principles apply to both classes of injunction, and ‘arguments over whether the injunction should be classified as prohibitive or mandatory are barren’.29

13.15  Injunctions to disclose information. For certain kinds of claims, the claimant is required to demonstrate that an injunction is ‘necessary’ to protect his or her legitimate interests or to justify intruding upon a countervailing interest (such as the protection of journalists’ sources).30 For example, in applications for Norwich Pharmacal disclosure, the applicant must demonstrate that it is ‘necessary’ that the jurisdiction should be exercised.31 In this context, the necessity requirement is construed broadly. Thus, relief may be necessary even where the applicant does not intend to pursue any litigation against the wrongdoer.32 However, the remedy must be necessary for some legitimate purpose of the applicant; for example, to prevent future wrongdoing or to redress the wrong in some other lawful manner.

13.16  Injunctions restricting fundamental rights. A requirement of necessity theoretically applies to any remedy which engages Charter rights. This is because article 52(1) of the Charter requires any restriction on fundamental rights to be ‘necessary’. An identical requirement applies specifically to intellectual property remedies in the form of article 3(1) of the Enforcement Directive, which requires the relief sought to be ‘necessary’ to ensure the enforcement of intellectual property rights covered by the Directive. Similarly, article 10(2) of the Convention limits restrictions upon freedom of expression to those which are ‘necessary in a democratic society’ for various purposes.33

13.17  Meaning of ‘necessity’. The meaning of necessity is often unclear and is almost certainly context-dependent. As Lord Griffiths explained in the context of an appeal concerning disclosure of journalists’ sources:

‘Necessary’ is a word in common usage in everyday speech with which everyone is familiar. Like all words, it will take colour from its context; for example, most people would regard it as ‘necessary’ to do everything possible to prevent a catastrophe but would not regard it as ‘necessary’ to do everything possible to prevent some minor inconvenience. Furthermore, whether a particular measure is necessary...involves the exercise of a judgment upon the established facts. In the exercise of that judgment different people may come to different conclusions on the same facts...But this cannot be avoided and the task of the judge will not be lightened by substituting for the familiar word ‘necessary’ some other set of words with a similar meaning.

I doubt if it is possible to go further than to say that ‘necessary’ has a meaning that lies somewhere between ‘indispensable’ on the one hand, and ‘useful’ or ‘expedient’ on the other, and to leave it to the judge to decide towards which end of the scale of meaning he will place it on the facts of any particular case. The nearest paraphrase I can suggest is ‘really needed.’34

13.18  Relevance of alternative remedies. In John v Express Newspapers Ltd, another case involving disclosure of a journalist’s source, the Court of Appeal attached great significance to the availability of alternatives to the relief being sought.35 Lord Woolf MR approved the following statement of principle by Lindsay J in Saunders v Punch Ltd:

To an extent, whether disclosure of a source is ‘necessary’ in the interests of justice can depend on whether the person seeking disclosure has made any attempt other than by applying to the court to find the source for himself and whether any such attempts, were they to be made, would have had any real prospects of making the compulsion of a court order unnecessary. I do not say that the making of such attempts is a necessary precondition of the court’s assistance, but its absence can be a powerful, even a decisive, factor against the intervention of the court...36

13.19 In Express Newspapers, Lord Woolf MR added that before granting an injunction in those circumstances, ‘the minimum requirement is that other avenues should be explored’.37 It might have been argued that an analogous requirement could apply to claims for injunctive relief against internet intermediaries who are not wrongdoers.

13.20 However, in light of the decision in Cartier, it is presently unclear whether the necessity criterion adds anything to the requirement of proportionality. In that case, Arnold J held that the requirement of necessity under the Enforcement Directive and the Charter does not require an injunction to be ‘necessary to ensure the enforcement of the [claimant’s rights] in the sense that they are indispensable for that purpose’. Instead:

the rights protected by the Charter can only be restricted where this is necessary to protect other rights protected by the Charter. 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....Accordingly, I shall carry out that exercise in the context of assessing the proportionality of the orders.38

13.21  Evaluating the alternatives. On any view, to be ‘necessary’, a measure plainly does not need to be the measure of last resort. It will suffice that the measure is necessary in the sense of being the most appropriate or least onerous choice among several alternatives in order to obtain effective protection for the claimant’s legitimate interests. Where the alternatives are equally appropriate or costly, it seems arguable that any of them may be considered necessary, by analogy with the approach taken to Norwich Pharmacal disclosure where information is available from multiple sources.39

13.22 Conversely, just because a injunction is the only available measure does not create a presumption in favour of granting a remedy.40 It is submitted that what the Court must be satisfied of is that the remedy being sought against the respondent is necessary in the sense that it is the least onerous measure that can achieve an equivalent level of protection for the applicant’s underlying interest.

13.23  Necessity and subsidiarity. The principle of subsidiarity also suggests that orders against non-wrongdoers should not, as a matter of discretion, be made until other more direct means of securing prevention of the wrongful conduct (eg removal of the material complained of at its source) have been exhausted. Such a policy is reflected in section 10 of the Defamation Act 2013;41 however, absent an express statutory choice of that kind, this principle is left to the courts’ discretion. It is suggested that a failure to take more direct or proportionate action to protect the claimant’s interests is a relevant factor that ought to be weighed when considering whether to grant an injunction against an internet intermediary.

13.24  Status of the principle. Proportionality is a basic principle of the European Union legal order that is embedded, or at least reflected in English remedial principles. The principle of proportionality operates to limit the availability and extent of remedies against internet intermediaries under EU law,42 in domestic enactments giving effect to EU law,43 and in the exercise of the courts’ discretion to grant injunctions and other discretionary remedies. Moreover, it is a said to be a vital component of the rule of law.44

13.25  Role in English law. In Vestergaard Frandsen S/A (MVF3 APS) v Bestnet Europe Ltd, Jacob LJ commented in passing that ‘proportionality’ may be a concept embodied within the English law of injunctions and merely made express by the Enforcement Directive:

I should add a word about the Judge’s references to proportionality and the passage of time. Whether or not conventional English law principles as to the grant of an injunction embody that concept (I rather think they do, though the now fashionable word ‘proportionate’ is not to be found in the older case law), in the case of enforcement of an intellectual property right, the requirement is explicit.45

13.26 Expressed in this way, the key components of the principle of proportionality may be found embedded within the structure of English remedies, including injunctions, and in particular their concern with the balance of convenience and the factors that go to the exercise of remedial discretion. For example, the principle—most clearly expressed in Redland Bricks46—that an injunction will not issue to require a party to undertake remedial works whose cost is out of all proportion to the probability and degree of harm is essentially about proportionality. Similarly, proportionality is embedded within limitations upon substantive liability, such as the Jameel principle, which can be understood in part as a doctrine designed to exclude disproportionate claims (and, by extension, injunctions in respect of insubstantial wrongdoing).47

13.27 However, outside particular contexts such as intellectual property, proportionality is not considered under a free-standing heading, but instead arises in the context of the wider (and unfettered) discretion whether or not to grant injunctive relief. It is suggested that proportionality may offer a useful conceptual framework within which to balance the competing interests of the parties and, in particular, the rights of non-parties, when considering claims (particularly novel claims) to injunctive relief.

13.28 The meaning of proportionality and the conceptual inquiry that it entails are matters considered in section 2.2 of this chapter, in the context of injunctions against internet intermediaries for infringement of intellectual property rights.

13.29  Injunctions in personam. It is now well established that an English court of competent jurisdiction may grant an injunction contra mundum, or against a foreign respondent properly before the Court in respect of overseas activities or assets.48 Such orders operate in personam upon the respondent but may have effects that extend well beyond the default subject matter jurisdiction of a court in England and Wales. Nowhere is this power more important than in an intrinsically cross-border medium, in which service providers, tortfeasors, and their equipment may be located in myriad different territories around the world.

13.30  The principle of territoriality. The availability and scope of an injunction are constrained by the principle of territoriality, which applies in two ways.

13.31Territorial nexus. First, there is the basic jurisdictional requirement that a real connecting link exist between the subject matter of the measures sought and the territorial jurisdiction of the court in which the measures are sought. However, once a court is properly seised with jurisdiction over the substance of a dispute, this principle will not limit the power of the court to grant an injunction. Thus, a global Mareva injunction need not be sought territory by territory, but may be granted by an English court ‘as a matter of unlimited jurisdiction in personam...over persons who have properly been made parties, under English procedure, to proceedings pending before the English court’.49

13.32Territorial rights. Second, and more importantly, the rights that an injunction seeks to protect may themselves have a defined territorial scope. Despite moves toward harmonisation of primary wrongdoing in many of the areas considered by this work, there remain significant differences between the scope of protection afforded to claimants by national legal systems. These differences are particularly acute in the case of defamation, which expresses highly localised choices about the proper balance between national policy objectives and citizens’ freedom of expression. In the United States, for example, the First Amendment protects a much wider variety of speech from state regulation than those freedoms that are recognised by English law. Even in a closely harmonised field like copyright, material differences remain.50

13.33  Undesirability of extraterritorial remedies. Because of these differences, and the intrinsically international character of internet communications, it is desirable that, wherever possible, internet remedies which uphold territorial rights (such as copyrights, trade marks, and possibly reputation) be framed so as not to have extraterritorial effects. As the Advocate General observed in Scarlet,51 divergences between national law create the potential for material to be lawful if accessed, stored, or published in one jurisdiction but not another. Accordingly, an injunction requiring information to be removed or rendered globally inaccessible may prevent lawful access in many countries simply because the same information is unlawful in one other jurisdiction.

13.34  Local remedies. Conversely, where websites or hosts are ordered to block access to nationals from a particular country,52 content policies are not being enforced extraterritorially—unless the website responds (perhaps for reasons of administrative convenience) by voluntarily denying access to all users. In practice, this has not occurred. For example, Twitter has adopted a policy of blocking access to content on a per-country basis rather than removing it globally,53 in an attempt to ensure that material is regulated according to local norms and not by the lowest common denominator of global content standards.

13.35 Search engines tend to apply country-specific query filtering measures. For example, when Google complies with a data subject deletion request pursuant to the Data Protection Directive,54 its current policy is to remove the material from its index at google.co.uk, but not google.com. This is intended to prevent users who access its services outside the European Union from being affected by de-indexing in areas outside the territorial scope of the Directive. However, it results in less effective remedies, since any knowledgeable English user may conduct their searches through google.com once informed that material has been removed from local search results.55

13.36  Unintended extraterritorial effects. Some types of injunctions—such as blocking orders—are implicitly territorial since they relate to access infrastructure located in a particular territory and are granted in aid of specific territorial rights in material. However, potential remains for extraterritorial over-blocking on routers used in international telecommunications exchanges if national measures are not carefully limited to retail, domestic ISPs, or infrastructure.56 For example, traffic peering arrangements, or the use of critical interconnection points, can mean that international communications traffic is routed through a particular territory despite the content of the communications having no connection with that territory.

13.37  Injunctions in aid of foreign rights. Whether a blocking order could be sought in respect of a foreign right remains an untested question, but it seems likely that the Court would have prima facie subject matter jurisdiction over the claim.57

13.38  Minimum and maximum enforcement standards. Where a remedy is provided for by an EU instrument, a general principle of EU law requires that it should be interpreted, as far as possible, compatibly with any international conventions and treaties which apply in the same ‘field’.58 However, although these instruments often provide for minimum standards, they rarely specify maximum standards of protection or constraints on remedies from the perspective of defendants. Nevertheless, it is worth considering, in any given case, whether a principle of international law militates for or against relief.

13.39  Interpretative role in EU law. Similarly, EU law requires national courts to interpret domestic and European legislation in accordance with international agreements to which the EU is a party, insofar as possible.59 This most commonly arises in the provisions of the TRIPS Agreement. Formally, however, those provisions do not have direct effect in English law and cannot create rights capable of direct enforcement by claimants or defendants.60 Further, where the EU legislature has legislated to harmonise a particular field (eg intellectual property), it is deemed to have exercised the competence previously devolved upon member states to implement international treaties in that field.61 As a result, EU law must take precedence to the extent of any conflict. In an extreme case, where domestic law prohibits a remedy mandated by EU law (or the converse), this may lead to disapplication.

13.40  Interpretative role in English law. Under domestic law, English law intended to give effect to the terms of a treaty or other source of international law binding upon the United Kingdom will normally be construed so as to give effect to that external instrument, wherever possible. This finds expression in the principle that, if there is any difference between the language of a domestic statutory provision and the corresponding provision of the treaty it transposes, the former should be construed in the same sense as the latter if the words are reasonably capable of bearing that meaning.62

13.41 Similarly, there is a ‘strong presumption’ that an English statute or principle of common law should be interpreted in a way which does not place the United Kingdom in breach of its international obligations.63 In Attorney–General v Guardian Newspapers Ltd [No 2], Lord Goff considered it to be his Lordship’s ‘duty, when...free to do so, to interpret the law in accordance with the obligations of the Crown under [the Convention]’.64

13.42 Accordingly, insofar as a domestic statute provides for a remedy derived from international law, and that remedy is invoked against an internet intermediary, then the scope of the remedy may need to be interpreted consistently. However, outside the situations described in the preceding paragraphs, it is ‘firmly established’ that international treaties do not form part of English law and domestic courts have no jurisdiction to interpret or apply them.65

13.43  Source of the prohibition. Article 15(1) of the E-Commerce Directive prevents any general monitoring duties from being imposed upon an information society service provider. It provides as follows:

Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.

13.44  Function of article 15(1). The prohibition found in Article 15(1) prevents member states from imposing general obligations upon service providers to monitor (surveiller) information or to investigate tortious activity when they transmit, cache, or store information. Because article 15(1) functions as an upper boundary on liability, it does not require specific transposition into the law of member states. Accordingly, the Electronic Commerce (EC Directive) Regulations 2002 do not directly mention this principle, though it necessarily applies to limit liability arising from breaches of monitoring duties.

13.45  Inspection or examination. Monitoring refers to the examination of information electronically stored or transmitted by a service provider. In BT, Parker J gave the word its ordinary and natural meaning: ‘to inspect or examine some phenomenon’.66 This usually involves ascertaining whether transmitted or stored data are lawful or meet some other condition or standard.

13.46  Permitted monitoring. Article 15(2) qualifies the limitation by permitting member states to establish obligations to notify public authorities of two classes of information: first, ‘alleged illegal activities undertaken or information provided by recipients of their service’, and second, identity information relating to recipients of their service with whom they have storage agreements. This qualification is intended to allow national regimes for data interception and monitoring to operate, whether general or specific in scope.

13.47  Passive notification. In proceedings for judicial review of the Digital Economy Act 2010, Parker J dismissed the suggestion that graduated response entailed a monitoring duty. Under the scheme, ISPs were ‘essentially passive’, reacting to notices and requests sent by qualifying copyright owners.67 It is copyright owners who were required to monitor infringements and submit reports. ISPs were not obliged to inspect any information to determine whether an infringement has occurred—merely to forward and record the allegations. Accordingly, there was no breach of article 15. Barron criticises this analysis as ‘artificial’ because it ignores the reality that ISPs are acting as agents of claimants, who separately engage in general monitoring.68 However, even if this analysis were correct, the result would be that ISPs’ actions are attributed to claimants, and not the reverse, so Parker J’s conclusion seems justified.

13.48 Conversely, requiring ISPs to disconnect or interfere with subscribers’ connections might amount to a general monitoring duty if it required ISPs to satisfy themselves that the specified number of infringements had occurred. However, if technical measures were imposed by court order, it would be difficult to classify such duties as ‘general’ monitoring, since they would exist only in specific cases. Whether the new responsibilities of domain name registries amount to a general monitoring duty has not been determined, and would depend on the precise nature of policing required.

13.49  Meaning of ‘general’. It is difficult to delineate precisely the boundary between monitoring which is specific and that which is general. Monitoring has been said to be ‘general’ when it involves a systematic arrangement requiring random or universal action (eg pre-emptive inspection of data), rather than action relating to individual notified instances. If this view is correct, then an order requiring an intermediary to identify or terminate access to a specified wrongdoer would not involve general monitoring or investigation of information because it related to a particular instance.

13.50 In L’Oréal SA v eBay International AG, the Court of Justice held that to require a platform operator (in that case, eBay) to conduct ‘an active monitoring of all the data of each of its customers in order to prevent any future infringement’ on its website would amount to general monitoring.69 Accordingly, such a measure would be contrary to article 15(1) of the E-Commerce Directive.

13.51  Specific monitoring. Conversely, in L’Oréal, an injunction which required the website operator to prohibit future infringements of the same trade mark by the same username70 was held not to amount to general monitoring.71 This requirement of ‘double identity’—the same user, the same protected right—ensured that the obligation was not one of general monitoring, but rather ‘an acceptable obligation of specific monitoring’.72 The Advocate General added that such an obligation might also legitimately require the service provider to adopt reasonable measures to reveal the true identity of a user who was hiding behind several different usernames. This would still be considered specific monitoring. Further examples of specific monitoring may be judicial or administrative orders requiring reasonable steps to be taken to monitor ‘a specific site during a given period of time’ to prevent ‘specific’ tortious activity.73

13.52  Liability for a failure to monitor. Since the decision of the Grand Chamber in Delfi AS v Estonia, it appears arguable that the Convention permits general monitoring duties to be imposed which amount to interferences with article 10 rights.74 That Court effectively upheld the imposition of liability arising from a failure to monitor third parties’ postings. The Supreme Court held that Delfi ‘should have prevented the publication of the comments with clearly unlawful contents’, and having failed to do so, it thereafter ‘failed to remove the comments — the unlawful content of which it should have been aware of — from the portal at its own initiative’.75 This presupposes the existence of a duty to remove comments of which Delfi was not actually aware.

13.53 This conclusion was upheld by the Grand Chamber as a necessary and proportionate restriction upon Delfi’s freedom of expression. Although the Court did not go so far as to impose liability for the mere failure to prevent publication, the practical effect is virtually the same as a duty to monitor, since Delfi had removed the postings on the same day as being notified of their existence, yet its failure was said to be not removing the comments ‘without delay after publication’.76 The first concurring opinion pointed out that

finding a news portal liable for not having ‘prevented’ the publication of user-generated comments would in practice imply that the portal would have to pre-monitor each and every user-generated comment in order to avoid liability for any unlawful comments. This could in practice lead to a disproportionate interference with the news portal’s freedom of expression as guaranteed by Article 10.77

13.54 However, even though liability in Delfi arose from a failure to remove unlawful comments, rather than to prevent their publication, the concurring opinion assumes that news portals (and perhaps other internet intermediaries) can come under a duty to remove unlawful material if they ‘ought to have known, that such comments would be or had been published on the portal’.78 Such a duty appears to be a general monitoring duty which, even if compatible with the Convention, could well be contrary to the broader limitations in the E-Commerce Directive.

13.55  The maxim restated. An equitable remedy such as an injunction will not be granted if to do so would be futile.79 In Brunner v Greenslade, Megarry J repeated the familiar maxim, which reflects a pragmatic regard for the consequences of equitable relief and a desire to avoid a remedy which does not ‘work’:

equity, in developing one of its doctrines, refuses to allow itself to be fettered by the concept upon which the doctrine is based if to do so would make the doctrine unfair or unworkable. After all, it is of the essence of a doctrine of equity that it should be equitable, and, I may add, that it should work: equity, like nature, does nothing in vain.80

13.56  Metaphor and pragmatism. In Spycatcher, the Court of Appeal expressed the doctrine using more colourful metaphor. Bingham LJ said that equity ‘will not seek to emulate the 15th century pope who issued a papal bull against Halley’s comet’.81 This pragmatism, it was said, was a basic feature of the principles upon which final injunctions are granted and refused. If an injunction would be ‘futile’, because it would not achieve its object, that would be a reason not to grant it.

13.57 The same principle was expressed by Browne-Wilkinson VC in the earlier Spycatcher appeal:

It is an old maxim that equity does not act in vain. To my mind that is good law and the court should not make orders which would be ineffective to achieve what they set out to do.82

His Lordship likened the Court’s position to ‘the little Dutch boy being asked to put a finger in the hole in the dyke when in fact the whole embankment has broken down two hundred yards upstream’. Counsel for the first respondent in that case invoked the metaphor of King Canute who forbade the incoming tide.83 Lord Oliver also referred to ‘homely metaphors about empty stables or escaping cats’.84

13.58 In Spycatcher, the fact that previously confidential information was already in the public domain and no longer confidential later meant that an interim injunction against the Observer, The Sunday Times, and The Guardian to restrain publication of the same material should be discharged, since to maintain the restraint would be futile. Moreover, to grant a futile injunction against ‘small leakages’ when much larger disclosure had already occurred would ‘give rise to a degree of lack of respect for the court in seeking to achieve the unachievable’.85

13.59  Effect on the public. In Comic Enterprises Ltd v Twentieth Century Fox Film Corp, the Court held that an injunction requiring the defendant to rename its popular Glee television series would not be futile, even if the programme’s fan base still continued to think of the series as Glee. The injunction would be effective to make consumers aware of the claimant’s trade mark rights and the need to change the name.86

13.60  Disclosed secrets. Conversely, in Northern Rock plc v The Financial Times Ltd, extracts from a confidential briefing memorandum had already received such widespread public distribution in press articles by the date of the application for an injunction that to grant relief would be futile.87 However, the more detailed financial information contained in the memorandum (and, by implication, the memorandum itself) did not stand in the same position as they had received more limited publication, and an interim injunction was granted in respect of those.

13.61  The principle. In the context of mandatory injunctions, it is well established that an injunction will not be granted which requires the affected person to perform an act which would be impossible or unlawful.88 An equivalent principle seems likely to apply to prohibitory injunctions, though the circumstances in which failing to act may be unlawful or impossible are presumably rare. Accordingly, if an injunction being sought against a service provider is not one with which the service provider can possibly comply, this would be grounds for refusing to make the order, or for refusing to make the order in that form.

13.62  Injunctions requiring extensive compliance. In Pride of Derby and Derbyshire Angling Association Ltd v British Celanese Ltd, the Court of Appeal upheld the grant of a prohibitory injunction requiring the defendants to cease discharging effluent into the River Derwent in interference with the claimants’ fishing rights. To comply with this required the defendants to undertake extensive improvements to their sewage processing systems, which would require applications for planning permission. In light of this:

the court will not impose on a local authority, or on anyone else, an obligation to do something which is impossible, or which cannot be enforced, or which is unlawful. So the practice is adopted in the case of local authorities of granting injunctions, and then suspending their operation for a time, long or short....It appears to me that the corporation, having been proved to be wrongdoers (and not disputing that they are wrongdoers), the onus should be upon them, if they want a further suspension, to satisfy the court that justice requires that a further suspension should be granted.89

The solution in that case was not to refuse the injunction, but to make and stay the order for a reasonable period with liberty to the defendants to apply for a further suspension if it could be justified.90 The Court was clearly influenced by the defendants being wrongdoers.91 Where the parties affected by an impossible injunction are not guilty of any wrongdoing, it is suggested that a more liberal approach to the onus of proof may be taken.

13.63  Injunctions requiring disproportionate expenditure. Even if the acts required by an injunction are not impossible, they may be sufficiently costly, impractical, or unreasonable that the Court will not in exercising its discretion order them to be undertaken. This is reflected in the following statement of Lord Upjohn in Redland Bricks, who having considered the principles relevant to the exercise of the Court’s discretion to grant a mandatory injunction, said:

So the amount to be expended under a mandatory order by the defendant must be balanced with these considerations in mind against the anticipated possible damage to the plaintiff and if, on such balance, it seems unreasonable to inflict such expenditure upon one who for this purpose is no more than a potential wrongdoer then the court must exercise its jurisdiction accordingly. Of course, the court does not have to order such works as upon the evidence before it will remedy the wrong but may think it proper to impose upon the defendant the obligation of doing certain works which may upon expert opinion merely lessen the likelihood of any further injury to the plaintiff’s land.92

13.64 In that case, the injunction sought was to require the defendant to restore structural support by way of excavated earth and clay to an area adjoining the defendant’s land, in an attempt to avoid further damage from land slippage. To do so would have cost £30,000, but the defendants’ land was only worth around £1,500 per acre. In the circumstances, the cost was unreasonable when compared to the amount of damage the claimant stood to sustain, and the likelihood of such damage. However, the judge would have been justified in imposing ‘an obligation to do some reasonable and not too expensive works’—in other words, a lesser injunction which sought to prevent loss only to a proportionate extent.93

13.65  The principle. If an injunction is to be granted, it is an elementary principle that its terms must be clear94 and specify exactly what the addressee must or must not do.95 The Court will frame the terms of an injunction so as ‘to secure a just and equitable result’,96 but if an injunction is incapable of being formulated with precision, it will not be granted.

13.66  Clarity and certainty to the respondent. For example, in Attorney–General v Punch Ltd, the House of Lords explained that any injunction (whether interim or final) must avoid uncertainty about the affected person’s obligations:

An interlocutory injunction, like any other injunction, must be expressed in terms which are clear and certain. The injunction must define precisely what acts are prohibited. The court must ensure that the language of its order makes plain what is permitted and what is prohibited. This is a well established, soundly-based principle. A person should not be put at risk of being in contempt of court by an ambiguous prohibition, or a prohibition the scope of which is obviously open to dispute.97

13.67 This statement was affirmed by the Supreme Court in Rhodes v OPO (by his litigation friend BHM). In that case, an injunction purporting to prohibit the publication of ‘graphic’ accounts of sexual abuse and self-harm was overturned for reasons including that the form of the injunction ‘lacks the clarity and certainty which an injunction properly requires’.98 Even the supplementary description of ‘graphic’ as something which was ‘seriously liable to being understood by a child as vividly descriptive so as to be disturbing’ was insufficiently specific as to what the affected person could and could not do. Lord Neuberger said that such an injunction was ‘flawed both conceptually and procedurally’ because it wrongly sought to detach the manner or style in which events were expressed by the defendant author from the content of those events.99

13.68  Clear identification of affected material. A further useful illustration is provided by J19 v Facebook Ireland Ltd, where Gillen J was faced with an application to vary and discharge two interim injunctions: the first requiring Facebook to remove certain pages identified by name, as well as references to and pictures of the claimants (with which Facebook had complied); the second prohibiting Facebook from ‘placing or allowing to be placed on its website the Plaintiff’s name or similar material identifying the Plaintiff and which associates him with the activities alluded to in the material which was the subject of the interim injunction’. Gillen J had little hesitation in concluding that the second order was too imprecise:

such orders require precision. Defendants must not be left in a state of tormented ignorance of precisely what is required to be done. Would the defendant in the instant case be required to take down lawful comments of a general nature similar to that set out in the order? Would the defendant have to make a value judgment on whether the comments were lawful or not? In short such orders are all too imprecise and would require perhaps the court to give an indefinite series of rulings to ensure the execution of the court order. Injunctions cannot be based on glimpses and suggestions. Whilst a search for lambent precision may be too exacting a task in some instances the fact of the matter is that if the court order cannot be precisely drawn there is a possibility of wasteful litigation over compliance. The defendant would suffer oppression caused by it having to make such judgment calls under threat of proceedings for contempt. To borrow the jewelled phrase of Lord Hoffmann in the Co-op Insurance v Argyll case ‘The less precise the order, the fewer the signposts to the forensic minefield which has to be traversed.’ I am satisfied that the order sought in this case is too imprecise...100

13.69 The J19 decision illustrates that clarity in the terms of an injunction is vital when an internet intermediary (in that case a social network) is being ordered to interfere with the freedom of expression of third parties. Injunctions which require them to assess the lawfulness of particular content, to make value judgments about whether or not material exceeds a threshold, is related to other material, or which invite debate about compliance, are unlikely to be sufficiently clear or precise.

13.70  Scope of relief. A further limitation exists in the form of section 12 of the Human Rights Act 1998. That section applies if a court is considering whether to grant any ‘relief’ which might affect the exercise of the Convention right to freedom of expression. ‘Relief’ is defined to include any civil remedy or order. In practice, this would be likely to encompass almost all injunctions directed against internet intermediaries insofar as they relate to primary wrongdoing involving information.

13.71  Notice requirement. Section 12(2) provides that the relief must not be granted unless (1) ‘the person against whom the application for relief is made’ has been notified, (2) all practicable steps have been taken to notify him, or (3) there are compelling reasons why notification should not be required. One example of a ‘compelling reason’ may be where tipping off the respondent would be likely to defeat the purpose of the injunction; for example, by allowing the respondent to propagate harmful material or expunge traces of tortious activity.

13.72  Interim injunctions. Additionally, section 12(3) requires that an interim injunction will not be granted to restrain a ‘publication’ unless the Court is satisfied that the applicant is more likely than not to succeed at trial. This requires the applicant's prospects of success to be sufficiently meritorious to justify the order being made in all the circumstances. An injunction may exceptionally be granted where the prospects of success fall short of this standard, provided that there is at least a ‘likelihood’ of success and very serious harm would be suffered without interim relief.101 However, the ordinary test is whether the claimant will probably succeed at trial.

13.73 The consequence of section 12(3) is that the court must be satisfied as to the merits of the claim of primary wrongdoing. It is clear that the burden of proof rests on the applicant to satisfy section 12(3).102

13.74  Mandatory considerations. Finally, section 12(4) requires the Court to have particular regard to several factors when considering whether to grant interim relief. The relevant factors are: the importance of freedom of expression protected by article 10 of the Convention; and, where the publication relates to material claimed to be journalistic, literary, or artistic material, the extent to which that material has, or is about, to become public; the public interest in publishing the material; and any relevant privacy code.103

13.75  Source of the requirement. An injunction that imposes a restriction or limitation upon the exercise of fundamental rights and freedoms must be ‘provided for by law’. This requirement stems from article 52(1) of the Charter in respect of interferences with Charter rights. A similar requirement may be found in article 10(2) of the Convention in relation to restrictions on the right to freedom of expression, where the formulation ‘prescribed by law’ is used.104 Because almost all remedies against internet intermediaries will have the effect of restricting that freedom (and other fundamental rights) this requirement may be relevant when such a remedy is being imposed in new circumstances or in the absence of specific implementing legislation.

13.76  Required features. To be ‘prescribed by law’ a remedy must have a clear legal basis and embody the ‘quality of the law’. In other words, the law must be clear and foreseeable and must define in advance, and with clarity, what preconditions apply to the grant of a remedy. These requirements were explained by the Advocate General in Scarlet, where he concluded that even a Belgian statutory provision directly transposing the Information Society Directive and Enforcement Directive word for word did not have ‘the quality of the law’ and could not support a very intrusive injunction against an ISP.105 This was presumably because the transposing measure was insufficiently detailed as to the procedures and requirements to be applied. However, this probably represents a more dogmatic view of the criterion than an English court would be prepared to entertain.

13.77  Non-statutory remedies. A remedy does not need to be statutory in order to be ‘prescribed by law’. For example, in Tolstoy-Miloslavsky v United Kingdom, the European Court of Human Rights concluded that the absence of specific guidelines on defamation jury damages was an ‘inherent feature’ of English law and therefore ‘prescribed by law’.106

13.78  The ‘foreseeability of legal effects’ test. In Delfi AS v Estonia, the Fifth Section of the European Court of Human Rights explained that, to be ‘prescribed by law’, a national measure such as an injunctive remedy must be

formulated with sufficient precision to enable the citizen to regulate his conduct; he must be able—if need be with appropriate advice—to foresee, to a degree that is reasonable in the circumstances, the consequences which a given action may entail. Those consequences need not be foreseeable with absolute certainty....A law may still satisfy the requirement of foreseeability even if the person concerned has to take appropriate legal advice to assess...the consequences which a given action may entail. This is particularly true in relation to persons carrying on a professional activity, who are used to having to proceed with a high degree of caution when pursuing their occupation.107

13.79 In Delfi, Estonian legislation imposed liability upon media publishers for defamatory statements contained in their publications. The defendant was a large commercial news portal that published articles and allowed users to leave comments (including anonymously). The portal had been associated with controversial postings in the past. The postings complained of were defamatory and abusive comments about the owner of an Estonian ferry company, which were ‘on their face manifestly unlawful’.108 Upon being notified of the postings, Delfi removed them on the same day.109

13.80 At trial, the Estonian County Court held that Delfi had a defence under the Estonian statute transposing the E-Commerce Directive, but this was overturned on appeal. The national court held that Delfi could not rely upon the storage safe harbour because it possessed control over comments and actively moderated users’ postings. Upon remission, the County Court awarded €320 in damages for distress, which was upheld by the Estonian Supreme Court.

13.81 The Fifth Section of the European Court of Human Rights held that the interference with the website operator’s freedom of expression was ‘prescribed by law’ because the application of the existing law of defamation to internet publications could be foreseen, while a professional publisher such as the defendant must have been familiar with the legislation in question and could be expected to seek legal advice.110 Moreover, the interference was justified and (in light of the small monetary remedy awarded) proportionate.

13.82 On appeal to the Grand Chamber, the Court commented that to be ‘prescribed by law’ requires the impugned measure, first, to have a legal basis in domestic law and, second, to be accessible and foreseeable to those affected by it.111 To be foreseeable, a ‘law’ must be formulated with sufficient precision to enable citizens to regulate their conduct and foresee the consequences of their actions. The court accepted that some laws must necessarily be vague to enable them ‘to keep pace with changing circumstances’ and may depend for their scope on ‘questions of practice’.112 As the court explained:

The level of precision required of domestic legislation—which cannot provide for every eventuality—depends to a considerable degree on the content of the law in question, the field it is designed to cover and the number and status of those to whom it is addressed....The Court has found that persons carrying on a professional activity, who are used to having to proceed with a high degree of caution when pursuing their occupation, can on this account be expected to take special care in assessing the risks that such activity entails.113

13.83 This suggests that the degree of precision required to regulate a professional ‘publisher’ may be lower than that needed to regulate an intermediary, and lower still than that that required to regulate an individual or a private or domestic activity (eg blogging in a personal capacity). However, the difficulty with this distinction is that to require the classification of an internet service as an ‘intermediary’ or a ‘publisher’ simply replaces one vague test with another.114 Those categories are not always mutually exclusive, and it does not necessarily follow that a platform which publishes some material is not an intermediary in respect of other material.

13.84 To this extent, it was not open to the Grand Chamber to usurp the role of the Estonian Supreme Court in determining whether or not the factual and legal issues were correctly determined by the national courts. It was enough that, pursuant to national legislative provisions, Delfi was held to be a publisher and liable for the unlawful comments. Taken in combination with domestic case law which supported the imposition of liability upon a commercial internet news portal, that was sufficient for Delfi to foresee the consequences of its activities. The interference was therefore ‘prescribed by law’.115

13.85  Standards of prescription. In upholding the previous decisions in Delfi, the Grand Chamber took care to delineate the scope of its decision as being concerned with ‘clearly unlawful speech, which...amounts to hate speech and incitement to violence’ and is published by ‘a large professionally managed Internet news portal run on a commercial basis’ and which invites anonymous comments.116 The case did not concern user-generated content that is disseminated in other contexts, such as discussion fora, private blogs, or social media platforms.117

13.86  Compatibility with the rule of law. In Yildirim v Turkey, the European Court of Human Rights held that to be ‘prescribed by law’ a measure ‘should have some basis in domestic law’, should be ‘accessible’ and foreseeable to the defendant, and should be ‘compatible with the rule of law’.118 In that case, the law the subject of challenge was a Turkish statutory provision which allowed judges to grant a website blocking injunction ‘where there are sufficient grounds to suspect that [an internet publication] is such as to amount to...offences’.119 The legislation also permitted an administrative authority to extend the scope of a blocking order without judicial proceedings.

13.87 The majority explained that the question was ‘whether, at the time the blocking order was issued, a clear and precise rule existed enabling the applicant to regulate his conduct in the matter’.120 In this regard, such a measure requires ‘a framework establishing precise and specific rules’ on blocking orders.121 On the facts, the majority concluded that an order blocking access to every website hosted by ‘Google Sites’ (including the website of the applicant) was not sufficiently foreseeable to be prescribed by law. Domestic law provided for insufficient safeguards to ensure that blocking orders would not be abused, and did not set out the matters that should be taken into consideration, such as the rights of internet users and the extent of collateral effect upon lawful material.122 As such, the measure violated article 10 of the Convention.

13.88 In a separate concurring judgment, Judge Pinto reasoned that a framework of blocking injunctions must be established by ‘specific’ legal provisions and not ‘general provisions’ on civil responsibility or European directives. Judge Pinto set out 11 criteria which must be observed by domestic blocking measures in order to be compatible with the Convention:

(1)

a definition of the categories of persons and institutions liable to have their publications blocked, such as national or foreign owners of illegal content, websites or platforms, users of these sites or platforms and persons providing hyperlinks to illegal sites or platforms which have endorsed them;

(2)

a definition of the categories of blocking orders, such as blocking of entire websites, Internet Protocol (IP) addresses, ports, network protocols or types of use, like social networking;

(3)

a provision on the territorial ambit of the blocking order, which may have region-wide, nationwide, or even worldwide effect;

(4)

a limit on the duration of the blocking order;

(5)

an indication of the ‘interests’, in the sense of one or more of those included in Article 10 §2 of the Convention, that may justify the blocking order;

(6)

observance of the criterion of proportionality, which provides for a fair balancing of freedom of expression and the competing ‘interests’ pursued, while ensuring that the essence (or minimum core) of freedom of expression is respected;

(7)

compliance with the principle of necessity, which enables an assessment to be made as to whether the interference with freedom of expression adequately advances the ‘interests’ pursued and goes no further than is necessary to meet the said ‘social need’;

(8)

definition of the authorities competent to issue a reasoned blocking order;

(9)

a procedure to be followed for the issuance of that order, which includes the examination by the competent authority of the case file supporting the request for a blocking order and the hearing of evidence from the affected person or institution, unless this is impossible or incompatible with the ‘interests’ pursued;

(10)

notification of the blocking order and the grounds for it to the person or institution affected; and

(11)

a judicial appeal procedure against the blocking order.123

13.89 It should be noted that Judge Pinto’s list of criteria was not directly endorsed by the plurality opinion in Yildirim, which does not address the requirements in as much detail. However, it is submitted that these 11 criteria are useful guides when assessing the compatibility of an injunction directed against an internet intermediary with article 10(2) of the Convention.

13.90  The need for properly defined procedures. It is clear that injunctive relief must be granted pursuant to procedures which are clear, administered by identifiable bodies, and proceed upon an assessment of the evidence. In most cases where a remedy is granted by a court or statutory tribunal, these matters will not be in doubt. However, criteria (8) and (9) suggest that particular care may be required where an order permits extensions to the scope of injunctive relief to be notified to the respondent, and made binding, without further judicial intervention. In such a case, there may be no direct examination by a competent authority of whether an injunction of extended scope is necessary or proportionate, and it may be harder to say that the full scope of the remedy is foreseeable.

13.91  Common law discretions. The Supreme Court considered the requirement ‘prescribed by law’ in Kennedy v Charity Commission.124 The Court held by majority that a non-statutory discretion held by a public authority (which had to be exercised in favour of disclosing documents that fell outside a statutory freedom of information scheme) was prescribed by law. Lord Wilson JSC dissented on this point, reasoning that the non-statutory discretion was ‘so vague and generalised’ that any determination of a request for disclosure was ‘impossible to predict’ and therefore not prescribed by law.125

13.92 The majority held that various ‘common law discretions’ had developed that were designed to meet Convention requirements. These were legitimate and prescribed by law. However, there ‘are, of course, situations in which, for reasons of consistency or accountability, the manner in which a discretion will be exercised needs to be spelled out in some form.’126

13.93  Website blocking under statute. In Newzbin2, the High Court rejected the submission that a website blocking order under section 97A of the Copyright, Designs and Patents Act 1988 would not be ‘prescribed by law’. This was because such an order fell well within the range of orders which were foreseeable by ISPs on the basis of section 97A and article 8(3) of the Information Society Directive.127 Such parties would be familiar with the legislation and be expected to take professional advice, so their blocking obligations were reasonably foreseeable.

13.94  Website blocking at common law. In Cartier, the Court went further, holding that even a blocking injunction issued pursuant to the courts’ general power to grant injunctions and without a direct statutory footing was ‘prescribed by law’. This was said to be because such an injunction was reasonably foreseeable ‘on the basis of section 37(1) [of the Senior Courts Act 1981], at least if it is interpreted and applied in accordance with the third sentence of article 11 and the other requirements of EU law’. Section 37(1), in turn, satisfied the requirements of accessibility and compatibility with the rule of law.

13.95 If correct, the effect of the decision in Cartier would be that almost any injunction issued by a court under section 37(1) could be one ‘prescribed by law’. That is true in the positivist sense that such an injunction would be prescribed by a court of competent jurisdiction. However, given that section 37(1) is not a ‘specific’ legal provision (in the sense identified by Judge Pinto in Yildirim) and the Enforcement Directive does not represent ‘a framework establishing precise and specific rules’, there appears to be some tension between this approach and the requirements of the Convention. This is particularly so in circumstances where Parliament evidently considered that a statutory basis was necessary to provide certainty about the availability of blocking injunctions for copyright, but no similar provision was enacted for trade marks or other rights.128

13.96  Overview. This section considers several further limits upon injunctive remedies that apply to claims for infringement of intellectual property rights. These limits derive from EU law, in particular the acquis comprising the Enforcement Directive and Information Society Directive. These directives lay down various criteria which must be satisfied by injunctions and other remedies granted by national courts, namely: effectiveness, proportionality, dissuasiveness, the need to strike a ‘fair balance’ between the competing fundamental rights in issue, the need to avoid barriers to legitimate trade, the avoidance of remedies which are excessively costly or complicated, and the need to provide for safeguards against abuse. These criteria are apply to all measures, procedures, and remedies falling within the scope of the directives.129

13.97  Effect of EU law. The criteria laid down by the directives guide but do not supplant the discretion of the domestic court when considering whether and in what terms to grant injunctive relief within the material scope of each Directive. In all cases, it is clear that whether or not to grant an injunction is a question of discretion, and relief may be refused for other reasons notwithstanding that an injunction may be effective, proportionate, dissuasive, and so on. However, the checklist of factors laid down in article 3 of the Enforcement Directive also embodies both upper and lower limits on the nature and scope of injunctions able to be issued, and may to this extent constrain the otherwise unfettered discretion of the national court. Accordingly, where a claim falls within the material scope of either directive, it is necessary to consider whether an injunction sought against an internet intermediary would offend any of these mandatory EU limitations.

13.98  Applicable national measures. The limitations laid down in the Enforcement Directive and the Information Society Directive apply to injunctions and other national measures only insofar as they fall within the material scope of those directives.

13.99Information Society Directive. In the case of the Information Society Directive, article 1 makes clear that it applies only to the legal protection of copyright and related rights. Article 8(1) sets out the general requirements for ‘sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive’, and accordingly applies to copyright and related rights insofar as the infringement relates to a right which is harmonised by the Directive.

13.100Enforcement Directive. The Enforcement Directive applies to all forms of intellectual property. As article 1 explains, that Directive ‘concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights’. The term ‘intellectual property rights’ is not given an exhaustive definition, but is stated in article 1 to include ‘industrial property rights’. According to a statement by the Commission, this covers at least copyright and related rights, sui generis database rights, semiconductor topographies, trade marks, design right, patents and supplementary protection certificates, geographical indications, utility models, plant varieties, and trade names insofar as ‘protected as exclusive property rights’.130

13.101 Additionally, recital (13) of the Enforcement Directive makes it clear that article 1 is to be construed ‘as widely as possible in order to encompass all the intellectual property rights covered by Community provisions in this field and/or by the national law of the Member State concerned’. From this recital, it is apparent that the definition of intellectual property is in part prescribed by national law; for example, the Directive’s application to remedies for unfair competition is an optional matter for member states to determine.

13.102  Definition of ‘intellectual property’. Further guidance may therefore be taken from section 72 of the Senior Courts Act 1981, a provision which abrogates the privilege against self-incrimination in proceedings for infringements of ‘rights pertaining to any intellectual property or for passing off’, and certain related proceedings. Section 72(5) defines ‘intellectual property’ recursively to mean ‘any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property’.

13.103Breach of confidence. In Phillips v Mulcaire [No 1], the Supreme Court held that this definition encompassed claims raising allegations of breach of confidence and misuse of private information, but only to the extent that the relevant confidential information was ‘technical or commercial’ and protected by an action for breach of confidence or another duty.131 This appears to suggest that such information, even if a trade secret protected by an obligation of confidence, would not be intellectual property in the traditional sense apart from the express words of section 72(5). However, it is submitted that, even outside the specific statutory context of section 72, there are good arguments that confidential information in the nature of a trade secret could and should fall within the scope of the Enforcement Directive.

13.104Other claims. It is ‘obviously correct’ that an action for breach of trust will not be one ‘concerned with the infringement of any rights pertaining to intellectual property’.132

13.105 Article 3(2) of the Enforcement Directive requires that remedies must ‘be effective’ to ensure the enforcement of intellectual property rights. Recital (3) adds that effectiveness is concerned with the ‘means’ of enforcement and is about ensuring that substantive intellectual property law is ‘applied effectively’.

13.106  Origins of the principle. The principle of effectiveness may be traced to article 19(1) of the Treaty on the Functioning of the European Union, which requires member states to provide remedies ‘sufficient to ensure effective legal protection in the fields covered by Union law’ so as to achieve the objectives pursued by a directive.

13.107  International law. Additionally, both the European Union and (subject to its legislative competence within a coordinated field)133 the United Kingdom have obligations under the article 41(1) of the TRIPS Agreement, which requires members to provide for enforcement procedures ‘so as to permit effective action against any act of infringement’.134

13.108  Recommendations for internet remedies. In its Final Report on the Enforcement Directive, the European Commission concluded that ‘the currently available legislative and non-legislative instruments are not powerful enough to combat online infringements of intellectual property rights effectively’.135 The Commission made two recommendations in support of more powerful forms of injunctive relief. First, although the details of how and when an injunction is available are left to member states, national laws should clarify that injunctive relief against an intermediary service provider does not depend on substantive liability for an infringement. Second, it said that internet intermediaries should be more closely involved in preventing and terminating online infringements.

13.109  Standard of efficacy. Effectiveness appears to impose both a minimum standard, or effet utile, and a maximum one. The Court of Justice explained this requirement in UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH in the following terms:

the measures which are taken by the addressee of an injunction [under article 8(3) of the Information Society Directive], when implementing that injunction must be sufficiently effective to ensure genuine protection of the fundamental right at issue, that is to say that they must have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter made available to them in breach of that fundamental right.136

13.110  The test of effectiveness. In that case, the Court of Justice considered two factors to be relevant to the question of effectiveness, namely (1) the effects of the measure upon legitimate trade (considered in section 2.5), and (2) whether the injunction would:

have the effect of preventing unauthorised access to protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter that has been made available to them in breach of the intellectual property right, that being a matter for the national authorities and courts to establish.137

13.111 Effectiveness is a question for the national courts. The comments in UPC Telekabel indicate that it will be a fact-dependent question that involves examining two related issues: (1) how difficult a remedy actually makes it for internet users to access ‘protected subject-matter’ (in other words, the object of the intellectual property right); and (2) whether the remedy would ‘seriously discourage’ users from doing so. These are questions of fact. They appear to be conjunctive requirements.

13.112  Imperfect remedies. Obviously, no injunctive remedy can be completely effective to prevent infringements of an intellectual property right online—an inevitability that the Court of Justice expressly accepted in UPC Telekabel.138 Despite an injunction, infringers will inevitably find ways to circumvent the operation of a remedy. Sometimes this may be by re-uploading material on another host; or perhaps by disseminating references to other sources of the material; or perhaps by assisting consumers to circumvent the Court’s order. Instead, what appears to be required is a material reduction in infringements of the kind targeted by the remedy, and a substantial deterrent effect.

13.113  Effect on overall volume of infringement. In Cartier, the High Court held that article 3(2) does not require the claimant to establish that an injunction would reduce ‘the overall level of infringement of their rights’.139 Otherwise, the judge explained, online and offline infringers (and intermediaries) could avoid relief by showing that their infringements would be substituted by those of third parties. Instead, the Court’s focus is on ‘the likely efficacy of the injunction in terms of preventing or impeding access’ to the targeted infringing internet material.140 This is a significantly narrower question than the global enquiry preferred by courts in some other member states, which looks to the overall volume of infringements of the claimant’s rights over time.141

13.114  The principle of proportionality. Article 3(2) of the Enforcement Directive requires national courts to consider whether an injunction to restrain an infringement of an intellectual property right is ‘proportionate’ in all the circumstances of the case.142 This requirement undoubtedly finds inspiration from article 5(4) of the Treaty on European Union, and functions as a singularly important limit on the nature of relief which may be ordered in cases involving internet intermediaries. The case law of the Court of Justice makes clear that this is a mandatory upper limit on the scope of injunctive relief that is available to a successful claimant. In Productores de Música de España (Promusicae) v Telefónica de España SAU, the Court explained that, when giving effect to remedies required by the Enforcement Directive (and related directives in the EU acquis):

the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with [fundamental rights protected by the EU legal order] or with the other general principles of [EU] law, such as the principle of proportionality...143

13.115 Proportionality represents one important restriction on the availability and scope of injunctions against internet intermediaries. On its face, article 3(2) both permits and requires national courts to refuse injunctive relief if, in the circumstances, it would be disproportionate—even if, for example, the measure would otherwise be effective, dissuasive, and avoid barriers to legitimate trade.144

13.116  Overall assessment. Proportionality is a general principle of EU law which evaluates the suitability, necessity, alternatives, and overall costs and benefits of a measure. The principle is expressed in various ways and, for a doctrine so heavily relied upon in appellate and first-instance legal reasoning, it has a regrettable tendency to elude precise and comprehensive definition. Different approaches with slightly different emphases have been applied depending on whether a remedy involves the assessment of primary legislation, review of an administrative decision, or a conflict between opposing fundamental rights of individuals. These differences reflect the flexible nature of the principle, and the different factors which are relevant to the assessment in particular contexts. However, they have led the Supreme Court unanimously to warn:

The court’s case law applying the principle [of proportionality] in one context cannot necessarily be treated as a reliable guide to how the principle will be applied in another context: it is necessary to examine how in practice the court has applied the principle in the particular context in question.145

13.117  Application in litigation between individuals. In the latter context, the most comprehensive summary of the established approach was given by Arnold J in Golden Eye (International) Ltd v Telefónica UK Ltd, which is worth quoting in full:

In my judgment the correct approach to considering proportionality can be summarised in the following propositions. First, the claimants’ copyrights are property rights protected by article 1 of the First Protocol to the European Convention for the Protection of Human Rights and intellectual property rights within article 17(2) of the Charter. Secondly, the right to privacy under article 8(1) of the Convention/article 7 of the Charter and the right to the protection of personal data under article 8 of the Charter are engaged by the present claim. Thirdly, the claimants’ copyrights are ‘rights of others’ within article 8(2) of the Convention/article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both article 8 and article 10 Convention rights are involved in In re S is also applicable where a balance falls to be struck between article 1 of the First Protocol/article 17(2) of the Charter on the one hand and article 8 of the Convention/article 7 of the Charter and article 8 of the Charter on the other hand. That approach is as follows: (i) neither article as such has precedence over the other; (ii) where the values under the two articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test—or ‘ultimate balancing test’—must be applied to each.146

The correctness of this statement was confirmed by the Supreme Court in Viagogo.147 The circumstances of Golden Eye—a claim for disclosure of information about alleged copyright infringers—are considered further in chapter 4.148

13.118  Application to national measures. The Golden Eye formulation is most clearly suited to cases where an injunction involves restricting one party’s rights in order to uphold the rights of the other. However, even where there is no direct countervailing interest (such that no horizontal balancing exercise can be conducted),149 regard must still be had for the wider dimensions of the principle of proportionality insofar as it restricts transposing legislative or judicial measures. In this regard, the most recent restatement of that principle by the Advocate General in UPC Telekabel articulated a three-stage inquiry:

(a)

Member states must not exceed the limits of what is appropriate and necessary in order to attain the legitimate objectives sought to be achieved.

(b)

Where there is a choice between several appropriate measures, recourse must be had to the least onerous measure.

(c)

The disadvantages caused by the measure must not be disproportionate to the legitimate aims pursued.150

13.119 Consistently with this summary, in Azienda Agro-Zootecnica Franchini Sarl v Regione Puglia, the Court of Justice explained, in the context of legislative measures adopted by member states to transpose EU law, that proportionality

requires that measures adopted by member states in this field do not exceed the limits of what is appropriate and necessary in order to attain the objectives legitimately pursued by the legislation in question; where there is a choice between several appropriate measures recourse must be had to the least onerous and the disadvantages caused must not be disproportionate to the aims pursued.151

13.120  The ‘manifestly inappropriate’ test. A broader discretion is conventionally allowed to the national legislature in an area involving political, economic, and social choices, or complex policy assessments. The focus in this context is ordinarily on the balance struck between private and public interests by the national measure.152 To be disproportionate, a measure would need to be ‘manifestly inappropriate’ having regard to the objective which the legislator was seeking to achieve.153 The ‘manifestly inappropriate’ test was approved in this context by the Supreme Court in Lumsdon, adding that ‘where a complex assessment is required, the court will in general be slow to interfere with that evaluation’.154 A ‘generous ambit’ is afforded, and in the absence of ‘a clear and material error, in law, or in reasoning, or in the assessment of the facts, which goes to the heart of the measure’ the measure will stand.155

13.121  Margin of assessment. The ‘manifestly inappropriate’ formulation clearly involves a wide margin of assessment. In Hollister Inc v Medik Ostomy Supplies Ltd, the Court of Appeal evidently reasoned that measures adopted by judicial authorities of member states should satisfy the same requirement. However, a measure (in that case, a judicial order for an account of profits) ‘will only breach the proportionality principle if it is clearly inappropriate or out of proportion having regard to the relevant objectives’. This reflects ‘a wide margin of assessment’.156

13.122  Analysis of costs and benefits. In the context of judicial injunctions, the courts will often engage in what is essentially a cost–benefit analysis, comparing the extent to which a remedy achieves its aims against its disadvantages, and against the relative costs and benefits of equivalent measures. In Cartier, Arnold J accepted that the central question in the assessment of proportionality was ‘whether the benefits of [the injunction], which accrue to the rightholders, justify the costs, and in particular the implementation costs which are imposed on the [respondents]’.157 Much more than this cannot usefully be said, bearing in mind that proportionality is an extremely flexible device and ‘bound to be a context-sensitive question’.158

13.123  The claimant’s aim. The first stage of the inquiry is to ascertain the objective at which the injunction is directed. In other words: why is an injunction being sought? In most cases, the answer will be obvious: to protect the rights of the claimant from conduct of the defendant which has been found to be wrongful, if continued (or carried out). However, cases involving internet intermediaries can lie at the margins, where the aim of the measure might be more indirect or nuanced. Before injunctive relief will be proportionate against an internet intermediary, there must generally be a pressing social need which the measure has as its legitimate aim.159

13.124  Protection of the claimant’s rights. The most frequently invoked fundamental rights of claimants are the protection of property (including the right to intellectual property), the right to a fair trial and effective judicial protection, the right to private and family life, and the right to protection of personal data. These are discussed further in section 2.4, in the context of the need to strike a ‘fair balance’ between the competing fundamental rights.160

13.125  Interference with rights of others. Almost all injunctions directed at internet intermediaries will involve at least some degree of interference with freedom of expression. According to the case law of the Court of Justice and the European Court of Human Rights, such measures must be justified by a pressing social need.161 Chiefly, this depends on the gravity of the primary wrong, and the benefits of granting an injunction. For example, where tortious material is unlikely to cause serious harm or has already been removed, there may not be sufficient justification for further injunctive relief.

13.126  The underlying question. The essence of proportionality is an assessment of means and ends.162 Any measure—be it a judicial remedy, a legislative policy, or an administrative decision—which desires to achieve some aim ought to be capable of achieving it (adequacy), be necessary in a democratic society (or, in some cases, strictly necessary) to achieve it, and not cause disproportionate harms relative to what it does actually achieve.163 It follows that proportionality is intrinsically linked to how effective a policy is at achieving the desired end.164 It is, in other words, an ‘equitable ratio’165—a rationabilitias.166 Assessing this ratio is the second stage of the proportionality analysis.

13.127  Standard of review. Where injunctive relief has a direct statutory basis, courts (particularly those in countries with an established constitutional tradition of parliamentary sovereignty) are slow to interfere in Parliament’s assessment of the proportionality of a particular class of remedy. Further, as noted in paragraph 13.120, a wide margin of discretion is normally afforded to a measure which balances a range of complex interests.

13.128 In BT, Parker J described a two-stage inquiry in the context of a claim for judicial review of a measure requiring ISPs to notify their subscribers of allegations of copyright infringement: first, to identify the legitimate aim of the legislative provisions; and second, to determine whether ‘the legislator unlawfully failed to balance the relevant interests at stake’.167 In his Lordship’s view, the Court should be particularly reluctant to interfere in legislation which reflects Parliament’s considered answer to ‘a major problem of social and economic policy’.168

13.129  Costs and benefits. The general approach of English courts is to assess whether the benefits that will be achieved by a measure are proportionate to its costs and other harms169—in particular, any interference with other fundamental rights of internet users and service providers. The overall degree of a contested interference must be proportionate to its justification. As the CJEU explained in Promusicae,170 this means that ‘the measure must be in reasonable proportion to the legitimate aim pursued.’171 It follows that in any claim for an injunctive remedy against an internet intermediary, the tribunal faces the difficult task of balancing the proportionality of interfering with innocent parties’ rights to supply internet services against the proportionality of restricting the rights of innocent claimants to their property, reputation, or private life.172 The authorities suggest that the following factors may be relevant.

13.130 The Court’s first task is to identify the rights that granting an injunction would protect, and to consider to what extent the remedy would secure those benefits for the claimant or applicant. For example, in Newzbin2, Arnold J explained that a blocking order was proportionate, given the need to protect the applicants’ intellectual property rights, which ‘clearly outweigh’ the expressive interests of Newzbin2’s users and operators, as well as BT.173

13.131 Underlying this assessment of the relative importance of the parties’ rights is the (reasonable) assumption that any freedom to express tortious information is relatively weak, since such material by its nature infringes the rights of others and accordingly falls within the limitations permitted by article 10(2) of the Convention. The principal question is how effective the injunction would be in the circumstances.

13.132 The Court must also assess to what extent an injunction would interfere with fundamental rights of the respondent. The list of relevant factors is not closed. However, the following considerations will often be relevant to this assessment in the context of a remedy addressed to an intermediary:

(a)

the costs associated with implementing and maintaining the remedy over time;

(b)

the duration of the obligations imposed by the remedy; and

(c)

the substitutability of the tortious material at which the remedy is directed.174

13.133Impact on the respondent. The Court will consider the impact of an injunction on the respondent service provider; in particular, the feasibility and cost of implementing and maintaining an order.175 The availability of an established technical system for carrying the Court’s order into effect may be a factor which favours relief.176

13.134Scope of relief. The granularity of the order is also relevant: an order of shorter duration, narrower territory, or more limited subject matter is more likely to be proportionate than one which imposes indefinite or unlimited obligations.

13.135Implementation costs and false positives. In Scarlet Extended SA v Société Belge des Auteurs, Compositeurs et Éditeurs SCRL (SABAM), the Court of Justice held that an injunction requiring an ISP to install a complicated, costly, and permanent filtering system at its own expense was disproportionate.177 This was because the injunction would be very costly to implement, would require the respondent to monitor all data transmitted across its network by customers, and would inevitably lead to lawful material being wrongly blocked. Additionally, the obligation was open-ended and imposed a perpetual duty to carry out blocking.

13.136 However, in UPC Telekabel, the Court of Justice added the important qualification that an injunction against an internet intermediary will not necessarily be disproportionate simply because it requires the respondent ‘to take measures which may represent a significant cost for him, have a considerable impact on the organisation of his activities or require difficult and complex technical solutions’.178

13.137  Impossible, uncertain, or impractical obligations. In L’Oréal, the Court of Justice explained that the requirement of proportionality would preclude an injunction requiring an online marketplace to prevent any future infringements of the same trade mark by anyone. To be proportionate, the injunction would have to be restricted to the repetition of the same or a similar infringement by the same user.179 The terms of the injunction would also need to be such that they allowed the service provider in question to know with certainty what it was required to do, and to avoid imposing duties that were impossible to discharge, required illegal activity, or amounted to general monitoring obligations (which would be intrinsically disproportionate). These limits closely resemble the limits previously recognised by the English law of injunctions.

13.138 The Court must also weigh the impact of injunctive relief upon the rights of third parties to the extent they are engaged. In this context, relevant considerations include:

(a)

whether the remedy would entail systematic analysis of internet users’ internet browsing, communications, or other activity;

(b)

to what extent the remedy would otherwise involve collecting or storing personal data relating to internet users;

(c)

to what extent internet users’ freedom to receive and impart lawful information is restricted by the remedy;

(d)

whether third parties’ freedom to conduct business would be restricted by the remedy (insofar as the business is lawful); and

(e)

whether the remedy would undermine other rights and freedoms recognised under the Charter, such as the right to engage in work, the freedom of the arts and scientific research, academic freedom, the right to education, access to the internet (as a service of general economic interest), and consumer protection.180

13.139Spillover effects. The effect on third parties’ rights under article 10 of the Convention and article 11 of the Charter is often a decisive factor in determining whether a remedy is proportionate.181 This concern is essentially coterminous with the risk of interfering with lawful material: publishers can have only a weak interest in distributing tortious or illegal expressions, assuming that the rules of primary wrongdoing are themselves compatible with Convention and Charter rights.

13.140Extent of lawful and unlawful material. In Newzbin2, Arnold J held that a domain-wide blocking injunction was appropriate because the website consisted almost exclusively of infringing material, which would make it impracticable for the claimants to produce lists of URLs. However, Arnold J left open the question of whether this would be proportionate where a website included ‘a substantial proportion of non-infringing content’.182

13.141 For example, one assumes that an injunction to block access to the entirety of YouTube, Facebook or another popular platform with substantial lawful content would not be proportionate. However, the risk of over-blocking and other spillover harms must be evaluated in individual cases. The more specific the scope of an order, the more likely it is to be proportionate.

13.142  Measures available to the claimant. The third stage of the proportionality inquiry requires the court to compare the injunction being sought against any alternative measures that are available to the claimant or applicant. In Cartier, the High Court reasoned that this involves comparing the efficacy and burden of the injunction and the alternatives to it.183 However, in that case the judge concluded that all of the alternatives to a blocking injunction were either unrealistic in principle, or more burdensome to the claimant, less effective in the longer term, or both.

13.143  Failure to explore alternatives. Despite the conclusion in Cartier, it is suggested that the availability of realistic alternative measures should be an important and, in some cases, decisive consideration when evaluating the proportionality of an injunction against an internet intermediary. The availability of such alternatives is relevant to the proportionality assessment, and a claimant’s failure to attempt or pursue those alternatives will, without proper explanation, militate against the exercise of discretion to grant injunctive relief against a non-wrongdoer.184 This also reflects the EU principle of subsidiarity. In Cartier, the judge considered that the claimant was ‘open to criticism for not even having attempted’ alternatives to website blocking, but did not regard the availability of unexplored alternatives as a complete answer to the claim for injunctive relief.185

13.144  Pursuing the primary wrongdoer. In many cases, one obvious alternative will be to identify and pursue the primary wrongdoer, using the mechanisms discussed in chapter 4. However, in many cases involving anonymous internet wrongdoing, this will be infeasible because the wrongdoers are hidden or, even if identifiable, are impecunious, too numerous, or not readily amenable to jurisdiction.186

13.145  Notice-and-takedown. Another alternative is that the claimant may be expected to take reasonable steps to have tortious internet material taken down at its source. Such removal is cheap, rapid, and involves minimal burden for claimant or service provider. Only once that has failed can a secondary measure against a facilitating intermediary (such as an ISP or search engine) be considered the least intrusive way to protect the claimant’s rights.187 That being said, many hosts will fail to respond to notices; even for those that do, some website operators may simply move elsewhere. The exception may be where strictly territorial interests (such as national reputations or trade marks) are being protected, in which case domestic blocking may be a more proportionate remedy than global removal.

13.146  Search engine de-indexing and de-prioritisation. Search engine de-indexing (removal) or de-prioritisation (down-ranking)188 are alternatives discussed in chapter 16. De-prioritisation involves penalising websites which are frequently alleged to contain tortious material so as to remove them from the all-important first page of search results. Because fewer than 5 per cent of users click through to the second page,189 de-prioritisation would, it is said, substantially reduce the visibility of tortious material without resort to wholesale removal.

13.147 Google has implemented a form of voluntary de-prioritisation for websites that receive a high number of valid copyright infringement notices within a 12-month period.190 However, this technique may be less effective when users are actively seeking out specific (perhaps salacious) material, where click-through rates to lower-ranked material are likely to be much higher. Where de-prioritisation is sought, it may be difficult to articulate when and to what extent de-prioritisation should occur. Evidence should be directed to the relevance penalty and frequency of tortious activity required to trigger de-prioritisation.

13.148  Payment freezing. Another alternative discussed in chapter 16 is the disabling or suspension of payment services, or other sources of revenue enjoyed by a primary infringer. This alternative is obviously only applicable where the infringement involves a commercial element or profit motive, and where it is possible to identify a suitable payment intermediary. For example, where an infringing website displays advertising, a claimant might seek to disable the Google AdSense (or other advertising provider’s) account; alternatively, a claimant could freeze the PayPal or bank account used by the primary wrongdoer.191

13.149  The overall balancing assessment. In the context of claims between individuals, the fourth stage of the proportionality analysis is to apply the ‘ultimate balancing test’. This test is articulated in Campbell v MGN Ltd and is discussed further in chapter 9 in the context of misuse of private information.192 In summary, it requires the Court to carry out a close assessment of the benefits that will be achieved from the injunction relative to its costs and other harms, having regard to the assessment carried out and the alternatives identified at the previous stages. The focus is on the ‘underlying value’ protected by the rights in question.193

13.150 The overall question is whether what is achieved by the remedy sufficiently exceeds the harms that it causes to justify granting it. Intrinsic in both the Campbell test and the assessment of remedies under the Enforcement Directive is that the Court must take into account the nature of the rights being protected, the scale of the alleged wrongdoing, and the degree to which the injunction would be effective to reduce that wrongdoing.194

13.151  Relevance of wider context. When applying the ultimate balancing test, the Court must consider the wider context in which the injunction is sought. In Viagogo, the Supreme Court emphasised that

the facts of each case must be considered. But this does not mean that they should be placed in a hermetically sealed compartment so that their possible impact on issues going well beyond their significance to the [person affected by the injunction] is ignored. There is no logical or sensible reason to disregard the wider context in which the [claimant] wants to [obtain the injunction sought].195

13.152 Ultimately, an injunction is a discretionary remedy. Because equitable principles remain relevant to the grant of injunctions (whether or not in aid of statutory rights), the Court always retains an inherent power to refuse injunctive relief in a particular case. Similarly, the Court retains the ability to refuse to enforce property rights in cases where to do so ‘would offend against the policy of the law’.196

13.153  The principle. A further limitation which is embodied in article 3(2) of the Enforcement Directive is the requirement that remedies for intellectual property infringement be ‘dissuasive’. This is a distinct and free-standing limitation to the requirements of effectiveness, proportionality, fair balance, and barriers to legitimate trade.

13.154  Underlying policy. Dissuasiveness is essentially concerned with the deterrent value of remedies.197 This is a different and broader consideration to the effectiveness of a remedy or its effect upon legitimate trade, which are concerned with the specific impact of an injunction upon the infringer and non-infringing third parties, respectively. As such, it is relevant for the Court to consider whether an injunction will have the required dissuasive effect upon third parties who might otherwise have infringed the protected subject matter.198

13.155 Partly for this reason, the permitted injunction in L’Oréal was directed ‘not only to bringing to an end infringements...but also to preventing further infringements of that kind’.199

13.156  Standard of deterrence. The extent of deterrence that an injunction must have to be worthwhile is unclear. Doubtless, aspects of deterrence are also relevant to the analysis of effectiveness and to the wider proportionality inquiry. In Cartier, it was enough that internet users who attempted to access the infringing websites at which the remedy was directed would be told the reason for their inaccessibility:

In my judgment the orders sought by Richemont would have some dissuasive value, since they would not only result in consumers who attempted to access the target websites being blocked from doing so (unless they and/or the operators undertook circumvention measures), but also they would be informed of the reason for this.200

This suggests that the required level of deterrence is low. It is also difficult to reconcile this conclusion with the judge’s other finding that ‘consumers are very likely to turn to other websites if the target websites are blocked’, which suggests that consumers would not be deterred by the injunction granted by the Court in that case.201

13.157  Minimum standard of dissuasion. In Hollister Inc v Medik Ostomy Supplies Ltd, the trial judge proceeded on the basis that dissuasiveness also imposed a lower limit on remedies. In that case, the trial judge would have awarded half the defendant’s profits, this being ‘an effective deterrent to dissuade those engaged in repackaging and relabelling from not giving notice which accords with being proportionate to the reality of this case as a breach of a procedural requirement and nothing more’.202 This order was overturned on appeal, Kitchin LJ finding that the infringement was not merely ‘procedural’ and warranted a full account of profits assessed on ordinary English principles.203 Only a full account would be ‘a sufficient deterrent to ensure that the Directive (and, I would add, the [Community Trade Mark] Regulation) is fully effective’.204

13.158  Equitable origins. Concepts of ‘fairness’ enter into intellectual property injunctions in a number of ways. First, as an equitable remedy, the exercise of the discretion to grant injunctive relief is intrinsically concerned with fairness as a matter of English law.205 This focus is indelibly ingrained in section 37(1) of the Senior Courts Act 1981 itself, which expresses the width of the courts’ powers using terms—‘just and convenient’—that reflect the exigencies of justice and fairness (though of course this is not a power capable of being exercised arbitrarily, but rather in accordance with established doctrinal and remedial principles).

13.159  EU requirements. Second, any measure that transposes an obligation arising under EU law, and any remedies that are granted by national courts pursuant to such a measure, are constrained by general principles applicable to the EU legal order, including the need to ensure a fair balance between any fundamental rights that are engaged. As the Court of Justice explained in Promusicae:

the Member States must, when transposing the directives [of the EU acquis], take care to rely on an interpretation of the directives which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order.206

13.160  The need for a ‘fair balance’. This obligation has two limbs: first, the adoption of national provisions must be compatible with the directives and with fundamental rights. Second, when courts interpret and apply national provisions, they must also do so compatibly with the Directive, fundamental rights, and general principles.207 This requires injunctions to strike a ‘fair balance’ between the rights of claimants intermediaries, and their users, as the Court of Justice explained in L’Oréal SA v eBay International AG:

any other measure which may be imposed in the form of an injunction under the third sentence of art 11 of [the Enforcement Directive], must strike a fair balance between the various rights and interests mentioned above...208

13.161 This requires the Court to identify, first, the various ‘rights and interests’ that are engaged and, second, to carry out a balancing assessment as between those rights and interests so as to strike a ‘fair balance’. Where an injunction is sought against an internet intermediary, the most relevant rights are those of the claimant, the respondent service provider, and third parties such as the service provider’s users and any other person who would or may be affected by the order. These are considered in the following paragraphs.

13.162  Essence of rights and freedoms. Third, article 52(1) of the Charter requires any limitations upon the exercise of fundamental rights and freedoms recognised by the Charter to ‘respect the essence of those rights and freedoms’, as well as being necessary and proportionate and genuinely meeting a recognised objective. The Court of Justice has also described this as a further source of ‘the requirement that a fair balance be found...between all applicable fundamental rights’ engaged by the grant of an injunction.209 This is of course a matter for the national court to assess.

13.163  Commonplace examples. Claimants could, in theory, invoke any number of rights in support of a claim against an internet intermediary. In practice, a relatively small number of rights are implicated in the overwhelming majority of claims. The most frequently engaged primary rights are the right to property, which includes intangible property such as copyright, trade marks, database right, patents, design right, and potentially other choses in action,210 and the right to protection of reputation and private life.211 Additionally, the Charter right to a high level of consumer protection may also be engaged, especially in trade mark cases.212 In some cases, the rights to an effective remedy and to a fair trial may also be engaged.213

13.164  Intellectual property rights not absolute. In Scarlet the Court of Justice made clear, however, that there is nothing in the wording of article 17(2) or the case law interpreting it to suggest that the right to property is inviolable or must be absolutely protected.214 Intellectual property rights do not ‘trump’ other Charter or Convention rights. The same is arguably true of the other rights just mentioned.

13.165  Freedom to conduct a business. Three rights of internet intermediaries are commonly engaged. First is the freedom to conduct a business.215 The authorities of the Court of Justice have identified four distinct limbs to this freedom:

(a)

the freedom to exercise an economic or commercial activity;

(b)

the freedom of contract and free competition;

(c)

the freedom to choose with whom to do business;216 and

(d)

the right for any business to be able freely and lawfully to use the economic, technical, and financial resources available to it.217

13.166 Early case law of the Court of Justice treated the ‘freedom to pursue a trade or profession’ as an adjunct to the right to property. These rights could be legitimately restricted but not to such an extent that the restrictions ‘constitute a disproportionate and intolerable interference which infringes upon the very substance of the rights guaranteed’.218 In another case, the European Court held that a special elimination charge levied upon sugar producers did engage the freedom to pursue an economic activity, but this was not disproportionate because the alternative—reducing sugar quotas—would have been a much more serious interference.219

13.167 In Alemo-Herron v Parkwood Leisure Ltd, the Advocate General explained the relationship between the freedom to conduct a business and the right to property:

although the freedom to conduct a business is closely linked to the fundamental right to property, under EU law, as well as under the laws of several of the Member States, it protects different legal situations. If the right to property operates in the sphere of tangible and intangible assets, the freedom to conduct a business protects economic initiative and the ability to participate in a market, rather than the actual profit, seen in financial terms, that is earned in that market.220

13.168 In that case, the Court of Justice adopted this summary and explained that the right also covers ‘freedom of contract’. It held that a provision of EU law which prevented the private sector transferee of a business from participating in collective bargaining between a local authority and its workers was a restriction upon its ability to negotiate changes in the working conditions of transferred employees ‘with a view to its future economic activity’. The transferee’s contractual freedom was ‘seriously reduced to the point that such a limitation is liable to adversely affect the very essence of its freedom to conduct a business’.221

13.169 As the preceding cases make clear, the right to freedom of business is not absolute. It may be restricted for various private and public purposes, provided that the restriction does not remove the very substance of the right. More recent cases speak of an impermissible restriction as one which affects ‘the core content’ of the freedom.222 However, the dividing line between a core and a peripheral restriction remains highly nebulous and cannot be more precisely stated than: it is a matter of degree. In addition to being restricted in favour of private rights such as intellectual property, it is also clear that freedom of business may be restricted by public authorities to ‘limit the exercise of economic activity in the public interest’.223

13.170  Freedom of business in internet cases. The freedom to conduct a business has been invoked by internet intermediaries in a number of cases in an attempt to resist claims to injunctive relief, with mixed success. In Scarlet, the CJEU held that a national injunction which required an ISP to monitor all electronic communications in perpetuity would seriously infringe this freedom: compliance would be costly, complicated, and intrude upon legitimate transmissions.224 This suggests a general limitation based on the degree of adverse economic impact upon intermediaries’ business operations.

13.171 In Scarlet, the obligation to install and maintain the filtering system was said to be a serious infringement of the ISP’s freedom to conduct its business. The more specific the scope of the injunction, the lesser the degree of interference, but almost all injunctions against internet intermediaries will engage their right to freedom of business by imposing material costs and restricting their autonomy to deploy their economic and technical resources.

13.172 In UPC Telekabel, the Court of Justice held that the freedom to conduct a business was engaged and to some extent restricted by a blocking injunction against an ISP. However, the Court construed article 16 of the Charter so as to provide a relatively low level of protection to internet intermediaries. Provided that the restrictions on the use of resources imposed by an injunction lie within certain margins, the ‘very substance of the freedom’ will not be infringed:

[49] The freedom to conduct a business includes, inter alia, the right for any business to be able to freely use, within the limits of its liability for its own acts, the economic, technical and financial resources available to it.

[50] An injunction such as that at issue in the main proceedings constrains its addressee in a manner which restricts the free use of the resources at his disposal because it obliges him to take measures which may represent a significant cost for him, have a considerable impact on the organisation of his activities or require difficult and complex technical solutions.

[51] However, such an injunction does not seem to infringe the very substance of the freedom of an internet service provider such as that at issue in the main proceedings to conduct a business.225

13.173 Two features of the national injunction at issue in UPC Telekabel contributed to its compatibility with the freedom to conduct a business. First, the format of the injunction left the respondent to determine the specific measures it would adopt to comply; in other words, the ISP could choose how to use its available systems and resources to decide how best to block access to the target website. Second, the substance of the obligation imposed by the injunction was that the ISP must prove it ‘has taken all reasonable measures’. This meant that the respondent would not need to make ‘unbearable sacrifices’ (which would not be justified against a non-infringer).226

13.174  Freedom to supply cross-border services. Another relevant freedom enjoyed by internet intermediaries is the freedom to supply cross-border services.227 This is reinforced in intellectual property actions by the requirements of articles 3(2) and 11 of the Enforcement Directive that injunctions must not create ‘barriers to legitimate trade’. For example, remedies could not prevent resale of genuine, EEA-authorised goods in an online marketplace.228

13.175  Freedom of expression. Finally, internet intermediaries have the right to freedom of expression, which includes commercial expressions.229 Recital (2) of the Enforcement Directive confirms that enforcement measures ‘should not hamper freedom of expression...including on the internet’. A similar concern is expressed in recital (9) of the E-Commerce Directive, which refers to the ‘general principle’ of freedom of expression and the need to ensure that directives covering the supply of information society services permit that activity to ‘be engaged in freely in the light of [article 10(1) of the Convention]’.

13.176 In Comic Enterprise, the Court considered that an injunction requiring the defendant television production company to undertake a rebranding exercise was fair and equitable. Although some cost would be involved in publicising the new name of the television programme and re-educating the public, it would not be prohibitive when compared to the commercial value of the programme. Conversely, it would not be fair to grant an injunction in terms which prohibited any reference to the former name of the series.230

13.177 Remedies against service providers must not unjustifiably and unfairly infringe the rights of their customers or third parties. A number of such rights are commonly engaged in claims against internet intermediaries.

13.178  Private life and personal data. First, all internet users have the rights to respect for private and family life—and, in particular, respect for their communications—and to protection of their personal data.231 However, this is subject to protection of the rights of others. For example, article 15 of the PEC Directive232 permits derogations for that purpose among others (eg, national security).

13.179 In Promusicae, the Court of Justice construed article 15 broadly, and suggested that it may include claims by authors to enforce their right to property in civil proceedings.233 Conversely, systematic DPI analysis of customers’ traffic and IP addresses may infringe this right, presumably on the basis that the level of intrusion is disproportionate.234 In Scarlet, a further reason why the Court rejected the national injunction was that it required ‘systematic analysis’ of users’ IP addresses, which are personal data that uniquely identify individuals.235 Although that analysis was limited to arguable tortfeasors (alleged uploaders of infringing material) it was still disproportionate and failed to strike a fair balance.

13.180  Access to the internet. Second, article 36 of the Charter recognises access to ‘services of general economic interest’; however, this falls short of a substantive right236 and its application to the internet and universal service obligations has not yet been clarified.237

13.181  Freedom of expression. Third, users have the right to freedom of expression, which includes the freedoms to receive and impart information and ideas.238 As the Court held in Scarlet, this right could be infringed by a system of blocking which could not distinguish between tortious and non-tortious material,239 since such a system would inevitably prevent subscribers of the implementing ISP from accessing (and possibly imparting) lawful expressions.

13.182  Rights of third party publishers. Where access to lawful material is impaired by an injunction, the rights of the authors of such material are likely to be engaged.

13.183Freedom of expression. First, those authors’ freedom to ‘impart information and ideas...regardless of frontiers’ under article 11 of the Charter would be restricted.

13.184Freedom of business. Second, where the material is of a commercial nature, the injunction may have the effect of impairing those authors’ freedom of business, in the sense that they would be unable to reach potential customers whose access was unjustifiably impaired.

13.185Other economic and social rights. Third, depending on the nature and purpose of the content to which access is restricted, other Charter or Convention rights may be implicated.240

13.186Limitations. Of course, like property and privacy, third parties’ right to freedom of expression is not absolute; it is constrained by the ‘rights of others’.241 For example, a ‘narrow and targeted’ order blocking access to defamatory or infringing materials may be necessary and proportionate.242 Conversely, restrictions on access might constitute disproportionate interferences if they impaired ‘the very substance of the rights guaranteed’.243

13.187  The requirement. Article 3(2) of the Enforcement Directive requires that any measures, procedures, or remedies for the enforcement of intellectual property rights must ‘be applied in such a manner as to avoid the creation of barriers to legitimate trade’. This principle derives from article 41(1) of the TRIPS Agreement, which acknowledges a similar limitation. The requirement essentially involves minimising the degree of risk that the injunction poses to lawful content or activity. The onus is normally on the claimant to demonstrate that there is no such risk, or that any risk is acceptably low.

13.188  Underlying policy. The importance of this limitation is reflected in the recitals to the Enforcement Directive, which refer to the need for intellectual property protection ‘not [to] hamper freedom of expression, the free movement of information, or the protection of personal data, including on the Internet’, and to the importance of not unlawfully restricting competition.244

13.189 In L’Oréal, the Court of Justice held that article 3(2) would prevent a general prohibition on the sale of goods bearing the claimant’s trade marks on eBay. This is because such a prohibition would restrict legitimate resale of genuine goods, or sale of goods following the exhaustion of trade mark rights, as well as infringing sales of counterfeits.245

13.190 Similarly, in cases involving website blocking measures, the Court must consider whether the measure would be likely to impede access to websites which sell genuine goods or services, or otherwise carry on legitimate trade. In UPC Telekabel, the Court emphasised that

the [blocking] measures adopted by the Internet service provider must be strictly targeted, in the sense that they must serve to bring an end to a third party’s infringement of copyright or of a related right but without thereby affecting Internet users who are using the provider’s services in order to lawfully access information. Failing that, the provider’s interference in the freedom of information of those users would be unjustified in the light of the objective pursued.246

13.191  Spillover effects and legitimate trade. Critics of website blocking and de-indexing raise the spectre of overblocking—false positives which deny access to non-tortious content—to argue that its negative effects outweigh any benefits, and that it inevitably creates barriers to lawful commercial activity on the internet. As Advocate General Villalón put it in Scarlet, systems of content filtering

inevitably affect lawful exchanges of content [and] therefore have repercussions for [freedom of expression], if only because the unlawful or lawful nature of a given communication, which depends on the scope of the relevant copyright, varies from country to country and is therefore impossible to grasp through technical means.247

13.192 The risk of overblocking is difficult to assess in the abstract because the extent of false positives depends on numerous technical and procedural choices made by a service provider when designing and maintaining a system for blocking, de-indexing or removing internet content. In their least granular, most opaque forms, they can seriously undermine access to lawful content. However, in a properly designed, regularly maintained, transparent, territorial, and responsive system, it is apparent from the decision in UPC Telekabel that the mere fact that some risk of interference with lawful content or commercial activity may be inherent in a remedy will not be fatal to the grant of an injunction, provided the measure is ‘strictly targeted’ to the tortious activity.

13.193  Automated content analysis. Despite marked advances in natural language processing, no algorithm presently exists which can reliably separate tortious from non-tortious content, or copycat websites from unrelated ones. Automated systems of content classification remain imperfect.248 While it may be possible to identify certain sub-classes of video and audio content which infringe copyright based on a checksum library, the multitude of file formats, sampling rates, encoding techniques, and splitting points makes it unlikely to be comprehensive. In other contexts, the dividing line between fair comment and malicious statement, truth and falsehood, or private and public, is difficult enough for judges to discern—let alone an algorithm.

13.194 Any injunction which relies on automated identification of content is unlikely to be entirely accurate. It will either include false positives, leading to overblocking, or it will omit instances of tortious material (or more likely both). For this reason, courts must take care to examine each URL in respect of which relief is sought by a claimant, and not to require an addressee to use, or to rely upon the results of, automatic identification of mirror sites or tortious content (at least until identification algorithms have substantially evolved).

13.195  The requirement. Article 3(1) of the Enforcement Directive requires that all intellectual property measures, procedures, and remedies ordered by a national court must not be ‘unnecessarily complicated or costly’. The Court of Justice has provided very limited guidance about when relief will be ‘unnecessarily’ so. However, it appears that the limitation applies both from the perspective of claimants (in that remedies should not be too complicated or costly for them to obtain) and defendants (in that remedies should not require them to act in excessively complicated or costly ways).249

13.196  Substantive costs rules. The actual costs of orders against internet intermediaries, and the costs of related litigation, are discussed in detail in chapter 18. However, because of article 3(1), the amount of those costs and the identity of the party who is going to bear them are also relevant matters to the question of whether an injunction should issue at all. Those matters are the present focus of this section.

13.197  ‘Excessively costly’ remedies. In Scarlet, the Court of Justice held that remedies must ‘not be excessively costly’ from the perspective of the implementing service provider.250 There the blocking injunction sought by the claimant collecting society would have required an ISP to install at its own expense a ‘complicated, costly, permanent filtering system’ to comply with the injunction on an ongoing basis.

13.198 Few details are publicly available of the ISP’s costs which were at issue in Scarlet. According to one report, the Audible Magic fingerprinting system required by the national injunction would have cost €6 per user per year to install and operate.251 That system would have been applied to all of the ISP’s users’ requests, which would be examined against a database of 6 million checksums to estimate the probability that their transmissions related to infringing copyright works. The Court held that this was contrary to article 3(1) and a serious infringement of the ISP’s freedom to conduct its business.

13.199 In an almost identical case involving a website host, the Court of Justice confirmed that an injunction against a web host requiring installation of a ‘complicated, costly, permanent computer system at its own expense’ would likewise contravene article 3(1).252

13.200  Costs of monitoring infringements. In L’Oréal, a general monitoring obligation was said to be incompatible with article 3(1), in addition to article 15(1) of the E-Commerce Directive, because it would be excessively costly for eBay to implement and maintain. For this reason, an injunction under article 11 of the Enforcement Directive could not require an internet intermediary to engage in ‘active monitoring of all the data of each of its customers’.253

13.201  Costs and proportionality. In UPC Telekabel, the Court did not separately consider the issue of cost and complexity under article 3(1), but cost was factored into the proportionality analysis. Under the terms of the national injunction, the ISP was permitted to choose what measures to put in place consistently with its available ‘economic, technical and financial resources’ and was subject to a reasonableness limitation. The Court indicated that this was important, because an ISP could ‘not be required to make unbearable sacrifices’.254

13.202  Website blocking injunctions. In Cartier, Arnold J referred to the Court of Justice authorities (in particular UPC Telekabel) and considered that ‘what the CJEU is saying is that the difficulty and cost of complying with the injunction are factors to be taken into account in assessing the proportionality of such an injunction’.255 In that case, the judge held that blocking injunctions requiring five English ISPs to take reasonable steps to block access by specified means to seven websites selling counterfeit goods were proportionate and were not unnecessarily complicated or costly.

13.203  Volume of claims. Among the considerations relevant to Court’s assessment of cost and complexity was the number of similar such orders that have been or are likely to be granted.256 This reflects the approach of the Advocate General in UPC Telekabel:

it must be borne in mind that the blocking measure in question will very probably not be a one-off blocking measure against the defendant. Rather, the court weighing these factors must assume that it may be a test case and in future numerous similar cases against every ISP may be dealt with before the national courts, so that numerous similar blocking injunctions may arise in future.257

13.204 In Cartier, Arnold J referred to his previous comments in Newzbin2 that the court did ‘not anticipate a flood of such applications’, and considered that his Lordship’s earlier prediction had been borne out by subsequent events. By this time, blocking orders covering some 200 websites had been or were in the process of being granted. However, these applications related to the most serious cases of infringement.

13.205  Aggregate costs. In attempting to predict the future cost of a new class of injunction to the ISPs, Arnold J commented that ‘this is an exercise in futurology’. Naturally, it will depend on the evidence before the Court and the present state of technology at the disposal of the addressee of an injunction. In Cartier, the evidence was that the claimants had identified approximately 239,000 potentially infringing websites, of which 46,000 were awaiting enforcement action, and that the websites targeted by the claimants were not popular and appeared to have been selected arbitrarily from the pool of infringers.258

13.206 Although these points clearly raised some concerns, his Lordship concluded that the future costs of blocking injunctions were unlikely to be sufficiently substantial to be disproportionate. This was because the costs were small in the context of the overall revenues of the ISPs, who could pass on the marginal costs to their customers if they chose. The judge compared the costs to ‘the funding of police forces through general taxation’.259 Implicit in this metaphor is a presumption that ISPs and other internet intermediaries should act as ‘police’ to enforce intellectual property rights.

13.207 From these cases, it appears that what a court must do is assess the cost and complexity of a measure and whether that cost or complexity is ‘excessive’, in the sense of disproportionate. This is necessarily a fact-specific exercise. It is suggested that the following considerations may be relevant to the assessment:

(a)

the actual financial cost of the remedy to the implementing party, including any wider organisational impact;260

(b)

the difficulty or complexity of the technical solutions which the injunction requires the implementing party to adopt or use;261

(c)

any ongoing or recurring costs borne by the implementing party;

(d)

the cumulative costs of the instant measure and other similar measures likely to be imposed upon the implementing party in the future;262

(e)

whether the overall cost of the remedy is greater than the likely financial benefit to the claimant;

(f)

whether the cost or complexity goes beyond what is necessary to ensure protection of the claimant’s rights, having regard to the alternatives;

(g)

whether the cost and complexity go beyond the economic, technical, and financial resources available to the implementing party; and

(h)

whether the claimant has offered to assume any or all of the costs burden.

13.208  Whether claimant undertakes to bear costs. The final factor may be important because a remedy that is excessively costly might be proportionate if the cost were borne partially or wholly by the claimant. The Advocate General noted this possibility in UPC Telekabel when he distinguished between remedies the costs of which are borne by the service provider and those paid for by the claimant:

Should a specific measure prove to be disproportionate in that regard in view of its complexity, costs and duration, it must be considered whether proportionality can be established by a partial or full assumption of the cost burden by the rightholder.263

13.209 However, the issue did not arise in Cartier because the claimants did not offer to assume any of the costs burden. The issue of the costs of blocking, and the potential for such costs to be assumed by or imposed upon the applicant, is discussed further in chapter 18.264

13.210  The requirement. Article 3(2) of the Enforcement Directive further requires that any measures, procedures, and remedies for the enforcement of intellectual property rights must ‘provide for safeguards against their abuse’. Like the proscription on barriers to legitimate trade, this requirement may be traced to article 41(1) of the TRIPS Agreement. However, like other conditions laid down by the Directive, the precise details of these safeguards, and the procedures needed to invoke and verify compliance with them, are matters left to national law.

13.211  The test for ‘appropriate measures’. The Court of Justice has held that where EU law does not lay down any specific sanctions on or safeguards against abuse, member states must adopt ‘appropriate measures’ to prevent abuse.265 To be appropriate, a measure must satisfy four requirements.

13.212Proportionality. First, it must, like any other transposing measure, be proportionate. This will raise identical considerations to those already considered in section 2.2.

13.213Effective deterrence. Second, it must act as a sufficient deterrent against abuse so that the remedy is fully effective (the principle of effectiveness).

13.214Equivalence. Third, it must not reflect equal treatment, in the sense of being no less favourable than a measure governing a comparable domestic situation (the principle of equivalence).

13.215Effective exercise of rights. Fourth, it must not render ‘impossible in practice’ or ‘excessively difficult’ the exercise of the rights conferred by EU law.266

13.216  Rationale for safeguards. Because of the power internet intermediaries have to affect the lives and expressions of millions of their users, the grant of injunctive remedies must be carefully scrutinised by the courts. The exercise of self-regulatory powers by intermediaries is often intrinsically invisible in that the absence or unavailability of content can be very difficult to discern. Recognising this, the Council of Europe has recommended that remedies against internet intermediaries should be subject to safeguards and fair processes:

In many countries, search engine providers de-index or filter specific websites at the request of public authorities or private parties in order to comply with legal obligations or at their own initiative...Any such de-indexing or filtering should be transparent, narrowly tailored and reviewed regularly subject to compliance with due process requirements...[A]ccess to independent and accountable redress mechanisms should also be respected in this context.267

13.217  The role of the court. Accordingly, where no particular safeguards (other than general procedural rules) are laid down by national measures implementing the Enforcement Directive, it is appropriate for the Court to consider whether safeguards are needed to reduce the risk of abuse in any particular case. Like the limitations on disclosure considered in chapter 4, they are designed to limit arbitrary or over-inclusive conduct by claimants and implementing service providers, and to ensure that courts exercise their discretion correctly—principally by encouraging transparency, accuracy, and periodic review.

13.218  Allocating the risk of error. These limitations are in some ways analogous to the long-standing requirement in the context of interim remedies that claimants insure both the other parties and (where appropriate) non-parties against the risk that they are wrong about whether or not the conduct affected by an interim injunction is tortious.268 Additionally, an order that is made subject to safeguards is less likely to entail a disproportionate interference with the rights of internet users.

13.219  Notice to affected parties. Injunctive remedies should be granted transparently wherever possible. Transparency involves giving as much notice to affected third parties as is feasible and appropriate in the circumstances. For example, this may involve displaying a message to internet users when they attempt to access or search for restricted material explaining why they cannot do so.

13.220 There is, of course, inherent tension between seeking to suppress access to tortious information and ensuring that the fact or extent of suppression is properly disclosed. If users are told too precisely what has been made the subject of an injunction, they may be able to find the material by other means, while tortfeasors may circumvent the restrictions by shifting hosts or URLs. Set against such considerations of effectiveness is the principle of open justice, which requires that judicial decisions and the outcomes of court proceedings should ordinarily be publicly accessible. Similarly, it is a key feature of procedural fairness that decisions are able to be opposed (or, if made without notice, appealed) by those affected by them. Clearly, the balance will have to be struck in individual cases between these competing objectives.

13.221 If an injunction is granted without notice to the affected third parties, this removes three important sources of accountability. First, website operators may be unaware of the remedy ever having been granted, and unable to protest an unwarranted order until it is too late to avert harm such as lost traffic. Second, internet users may not realise that problems in accessing lawful material are unwanted effects of an over-broad injunctive remedy, because similar difficulties may be encountered for any number of technical reasons. Third, deprived of information about enforcement practices, consumers may be unable to make a rational choice between competing service providers based on their policies and attitude towards claimants’ claims and judicial procedures. Transparency allows these mechanisms to function, increasing accountability and reducing the risk of error or abusive practices.

13.222  Warning messages to users. In 2012, it emerged that Orange UK had inadvertently blocked access to a prominent civil liberties website for its pre-paid subscribers. When subscribers attempted to access the website from their mobile phones, they received the message: ‘Orange Safeguard has classified this page as only suitable for people over the age of 18.’ (The website did not contain any adult material.) One user reported this message to the website, which publicised the issue. Within days, the website was unblocked.269 Warning messages of this kind can therefore be particularly useful in identifying and correcting errors. Similarly, Google’s European search engines publish notices alongside search results if entries have been removed as a result of a takedown request or court order.

13.223 In Cartier, the High Court required the ISPs implementing blocking injunctions to take reasonable steps to notify their customers when access is impeded to a website covered by the order. The details that were required to be displayed were: the fact that access to the website has been blocked by court order; the identity of the parties who obtained the order; and a statement that affected users have the right to apply to the court to discharge or vary the order.270 In practice, for technical and administrative convenience, most ISPs comply with these requirements by displaying a general ‘access blocked’ message and directing users to a page on which details of all active court orders are listed.

13.224  Publication of statistics. Many internet intermediaries now also publish general statistics concerning the number of removal requests received, acted upon, and refused, broken down by region, type of applicant, reason for removal, and time period.271

13.225  Notice of the complaining party. Where an injunction instead requires the removal of content from a website, platform, or server, it may be appropriate to require the implementing service provider to notify the claimant’s identity to affected third parties. This may be particularly important where the author or publisher of the material has not appeared or made submissions to the court, or where the relief is being sought on an ex parte basis. The affected third parties could then decide whether to appear before the Court, offer an undertaking and self-identification in exchange for access being reinstated to the material, or (in cases involving registered rights) bring proceedings for unjustified threats of infringement.

13.226  Exceptions. Effective notice cannot be an absolute requirement because, understandably, it will prove impossible to contact many service providers and their customers; some may deliberately evade such attempts. Equally, there might well be good reasons why a probable or actual tortfeasor should not be told in advance that tortious material is about to be removed, or an injunction granted against them or their enabling service provider.

13.227  Changes in circumstances. It is commonplace for injunctions against internet intermediaries to contain certain safeguards to guard against changes in circumstances experienced by the implementing service provider; for example, escalation in the costs faced by them, a reduction in the effectiveness of the remedy, an increased risk of interference with lawful material, or the failure of a key technical system needed to comply with the order. This safeguard normally takes effect as a liberty to apply to the court to vary or discharge an injunction should any of these eventualities occur. A similar liberty is, as a matter of practice, made available to the operators of websites affected by such an injunction.272

13.228  Temporary suspension. Additionally, blocking injunctions commonly permit the implementing party to suspend temporarily the ordered measures for various purposes; for example, to correct or investigate effects upon lawful material, to upgrade or maintain any technical systems that are needed to comply with the order on an ongoing basis, to prevent harm to other systems, to ensure continuity of service, or avert an imminent security threat. These safeguards are sensible since they accommodate the likelihood that a service provider will at some point be prevented from fully complying with an injunction which requires ongoing activity due to technical or other problems beyond their reasonable control.

13.229  Sunset period. Most injunctions against internet intermediaries do not need to be of perpetual duration. For example, they would be unlikely to be proportionate if required for a longer period than that for which the tortious material or activity continues to exist. As such, an injunction ‘should not endure longer than necessary’.273 The most obvious way in which an injunction may cease to be necessary is if the original material or target website is removed by its author or operator. Alternatively, the claimant’s rights may expire, the wrongdoing may become de minimis, or the material may cease to be tortious for other reasons. Whatever the case, it is desirable that the implementation of such an injunction should be reviewed periodically by the Court, subject to the rule that the Court will not grant injunctions which require continuous supervision.274

13.230 Although permanent injunctions could occasionally be appropriate, the exceptional nature of a remedy against a non-wrongdoer will ordinarily warrant sunset clauses being included—or pre-agreed lapse conditions—to reconsider whether the measures remain accurate, effective, necessary, and proportionate. This is particularly true in interim applications, where if the claimant takes insufficient steps to advance his primary claim the injunction should ordinarily be discontinued. Otherwise, the procedure may be abused as a cheap mechanism to secure the removal of unwanted internet postings without subjecting the claims to more than cursory judicial scrutiny.

13.231  Applications by affected internet users. Another important safeguard is to permit third parties who are affected by the terms of an injunction granted against an internet intermediary to apply to the Court to set aside or vary the order. This requirement stems from the comment of the Court of Justice in UPC Telekabel that:

the national procedural rules must provide a possibility for Internet users to assert their rights before the court once the implementing measures taken by the Internet service provider are known...275

13.232  Purpose of the procedure. The purpose of such a rule is to ensure that affected third parties have the opportunity to challenge an order that is made against a service provider. It is suggested that the mere possibility of intervening in a claim before an order is made is unlikely to afford a sufficient guarantee, since affected parties may be located overseas and unaware of English proceedings, may not be identifiable in advance of the order being implemented, or may be unaware that they stand to be affected by the order.

13.233 In Cartier, Arnold J included an express permission to apply on the face of the blocking order that was made in that case. As a matter of practice, future blocking orders (and related injunctions against service providers) should include such a provision ‘to make sure that the rights of users are protected’.276 It is suggested that liberty to apply should normally be made express on the face of the order, since overseas parties may be unfamiliar with the niceties of English civil procedure.

13.234  Persons entitled to apply. Standing to review injunctions against service providers is often defined broadly; depending on the wording of the order, any ‘[internet] users affected by an order’ may have a sufficient interest to apply.277 There does not seem to be any compelling reason to confine standing to customers of the service provider, since an action taken to implement an injunction could foreseeably affect others.

13.235  Best practice. This approach is consistent with the Council of Europe’s recommendation to provide ‘effective and readily accessible means of recourse’ in cases of overblocking of website material.278 If a challenge to an over-broad injunction is successful, it would seem appropriate for the third party to have his or her costs paid by the original applicant for the order, though this point has not yet arisen for decision. It may be prudent for internet intermediaries who regularly remove content (whether pursuant to court orders or otherwise) to offer a voluntary review mechanism by which owners of incorrectly blocked or de-indexed material can appeal their exclusion.279 Like community moderation systems, harnessing the ‘wisdom of crowds’ may prove to be a valuable tool with which overblocking can be rapidly identified and corrected, and potential reputational damage minimised.

Notes
1

Jaggard v Sawyer [1995] 1 WLR 269, 287 (Millett LJ) (‘Jaggard’); Cowper v Laidler [1903] 2 Ch 337, 341 (Buckley J).

2

Shelfer v City of London Electric Lighting Co [No 1] [1895] 1 Ch 287, 322 (Smith LJ) (‘Shelfer’).

3

Jaggard, 287 (Millett LJ).

4

(1878) 9 Ch D 48, 65 (Jessel MR).

5

[1970] AC 652, 665 (Lord Upjohn) (Lord Reid, Lord Morris, Lord Hodson, and Lord Diplock agreeing) (‘Redland Bricks’).

6

See by analogy Ashworth Hospital Authority v MGN Ltd [2002] 1 WLR 2033, 2035 (Lord Slynn) (‘Ashworth’). See chapter 4, section 1.5 for discussion of the scope of wrongdoing capable of supporting Norwich Pharmacal relief.

7

By analogy with the threshold requirements for defamation and disclosure, the wrongdoing must be substantial enough that the applicant’s claim would not amount to an abuse of process—sufficient to make the claim ‘worth the candle’—and thus not trivial or minor. See chapter 8, section 3.5.

8

[2015] Bus LR 298 (‘Cartier’).

9

See chapter 14, section 4.1.

10

[2015] EWHC 485 (Pat) (‘Warner-Lambert’).

11

Warner-Lambert, [16] (Arnold J).

12

See paras 13.70 to 13.74.

13

Shelfer v City of London Electric Lighting Co [No 1] [1895] 1 Ch 287, 322 (Smith LJ).

14

See Senior Courts Act 1981 s 50; cf Chancery Amendment Act 1858 (21 & 22 Vict c 27).

15

See Coventry v Lawrence [2014] AC 822, 864 (Lord Sumption JSC) (‘Coventry v Lawrence’).