SITE BLOCKING ORDERS: THE NEW WEAPON IN THE WAR ON PIRACY

Matt Sumpter

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1 Every year pirates flog more than $1 trillion worth of fake goods around the world.1

In 2016, the online environment offers perfect habitat for IP piracy: there’s

complete anonymity with billions of customers just a click or two away. Pirates have

never had it so good.

2 For better or for worse, ISPs are on the frontline because they can restrict access to

pirate sites. ISPs emphasise, of course, that they are mere innocent bystanders

who have no wish or mandate to police the internet. But the truth is that ISPs are

the only outfits able to choke the spiralling number of sites hawking stolen films and

counterfeit handbags all over the show.

3 New Zealand’s ISPs will soon feel the heat. When that happens, they should brace

themselves for the same experience their British counterparts have just had. In this

paper I explain recent events in Britain which we can expect to unfold downunder

before long.

The UK experience

4 The UK courts have had jurisdiction to make ISPs block sites to stop copyright piracy

since 2003.2 Back then the UK inserted s97A into the Copyright, Designs and

Patents Act 1988.3 That section reads:

The High Court shall have power to grant an injunction against a service provider,

where that provider has actual knowledge of another person using their service to

infringe copyright.

1 Frontier Economics, “Estimating the Global Economic and Social Impacts of Counterfeiting and Piracy”,

February 2011, available at http://www.iccwbo.org/Advocacy-Codes-and-Rules/BASCAP/BASCAP-Research/Economic-impact/Global-Impacts-Study/.

2 Copyright and Related Rights Regulations 2003, SI 2003/2498. But that provision apparently went untested until its 2011 debut in Twentieth Century Fox Film Corporation v British Telecommunications plc [2011] EWHC 1981 (Ch).

3 It did so to ensure the UK met Article 8(3) of the Information Society Directive, 2001/29/EC. The UK government initially decided that existing UK law met its Article 8(3) obligations, but then changed its mind to ensure there was no uncertainty: “Consultation on UK Implementation of Directive 2001/29/EC on Copyright and Related Rights in the information Society: Analysis of Responses and Government Conclusions” (Patent Office, 2003).

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5 But what about trade mark infringement? The UK Trade Marks Act 1994 contains no

equivalent provision. And brand owners suffer as much as anyone at the hands of

online piracy.

6 Well, in September 2014, Cartier decided enough was enough. The luxury brands

business filed papers to test the matter in the High Court.4 In July 2016, the UK

Court of Appeal endorsed the new site-blocking law Arnold J made in that ground-

breaking case.5 New Zealand and other British Commonwealth nations won’t be far

behind.6

Psst! Wanna buy a watch?

7 Cartier sought orders requiring the UK’s ISPs to block access to sites like

www.cartierloveonline.com and www.hotcartierwatch.com. These sites offered, inter

alia, “hot sales”. One might, for instance, pick up a “Cartier Love Bracelet men’s

White Gold with 4 Diamonds” for “£231.35 Now £59.48”. What a bargain. But the

catch was that Cartier hadn’t made it. Interestingly, the fraudsters made no bones

about that. On www.cartierlove2U.com, for instance, the pirates responsibly

recorded that:

All watches are in cheapest price but with the best service, and all of them as accurate as

those genuine one. If you have any problems when shopping on our site, just be free to

contact our customer service staff at any time, we will be online for 24 hours in turn [sic].

8 To be sure, that is more customer support than you get buying a fake Rolex on Khao

San Road. But it’s still trade mark infringement. And Cartier understandably

wanted these sites off-limits to British consumers.

4 Cartier International AG v British Sky Broadcasting Ltd [2015] RPC 7 (“Cartier HC”). 5 British Sky Broadcasting Ltd v Cartier International AG [2016] EWCA Civ 658 (“Cartier CA”) 6 Indeed, Canada looks like it’s there already: Equustek Solutions Inc v Google Inc. 2015 BCCA 265 at

[75]-[80], a decision of the British Columbia Court of Appeal dated 11 June 2015.

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9 So Cartier filed sought a “no fault” injunction against five ISPs – Sky, BT, EE,

TalkTalk and Virgin – which between them service 95% of UK broadband users. The

orders sought were in essentially the same form as site blocking orders issued under

s97A of the UK’s copyright legislation in a line of cases beginning in 2011.7 The ISPs

all opposed. They said that:

9.1 they had no duty to ensure pirates didn’t use their services to flog fake goods

online; and

9.2 they were innocent by-standers, and Cartier had no substantive cause of

action against them, so there were no grounds for injunctive relief requiring

them to block access to nominated sites (even though they could).

10 The ISPs reckoned that the Court only had jurisdiction to grant injunctive relief in

two situations:

10.1 first, to prevent the invasion or threatened invasion of a legal or equitable

right by someone amenable to the Court’s jurisdiction; and

10.2 secondly, to stop existing or threatened unconscionable behaviour (like, for

instance, dissipating misappropriated trust funds).

11 Cartier contended, however, that the Court had jurisdiction to make the orders

sought under s37(1) of the UK’s Senior Courts Act 1981 on either:

11.1 a purely domestic interpretation of that legislative provision; and/or

11.2 an interpretation consistent with the EC Enforcement Directive under the

Marleasing principle.8

12 Section 37(1) of the Superior Courts Act 1981 says simply that:

The High Court may by order (whether interlocutory or final) grant an injunction ... in all

cases in which it appears to be just and convenient to do so.

7 Twentieth Century Fox v BT & Ors [2012] 1 All ER 806 built on in Dramatico Entertainment Ltd and

others v British Sky Broadcasting Ltd and others [2012] e C.M.L.R. 14; Dramatico Entertainment Ltd and others v British Sky Broadcasting ltd and others (No.2) [2012] 3 C.M.L.R. 15; The Football Association Premier League Limited v British Sky Broadcasting Limited [2013] EWHC 2058 (Ch); EMI Records Ltd and others v British Sky.

8 European Parliament and Council Directive 2004/48/EC (the “Enforcement Directive”); Marleasing SA v La Comercial Internacional de Alimentacion SA [1992] 1 CMLR 305 (ECJ), a case of waning significance post BREXIT vote. The Marleasing principle is, however, that EU Member States’ Courts should, where possible, interpret domestic legislation consistently with EC legislation.

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13 On that wording, the Cartier claimants submitted that there was no limit on the

Court’s jurisdiction to grant injunctive relief. They emphasised that although, as a

matter of practice, the Court exercised its discretion in stride with fairly well-settled

principles, those principles were not immutable and had evolved over time as the

Court and communities faced new circumstances. Think Mareva, Anton Piller, and

American Cyanamid. Arnold J agreed.

14 Both sides led a lot of factual and expert affidavit evidence in support of their

competing positions:

14.1 Cartier’s evidence covered general details about the piracy problem and, of

course, a specific explanation about the sites in question, trap purchases from

those sites and evidence that the acquired goods were indeed fake.

14.2 Both sides advanced evidence about existing and available website blocking

technology.

14.3 And the ISPs also led evidence aimed at convincing the Court that complying

with any site blocking order would be difficult and the orders potentially

ineffective (the idea here being that that burden of the proposed injunction

and its lack of efficacy should tip the scales against it).

15 Arnold J rejected the ISPs’ submission that injunctive relief is only available where

the applicant has a prospective or accrued cause of action against a respondent.9 In

response, His Honour held that:10

Once an ISP becomes aware that its services are being used by third parties to infringe an

intellectual property right, then it becomes subject to a duty to take proportionate measures

to prevent or reduce such infringements even though it is not itself liable for infringement.

16 In other words, injunctive relief simply moves with the times. And on that front

Arnold J pointed to Samsung Electronics v Apple,11 where the UK Court of Appeal

had recently affirmed the High Court’s jurisdiction to issue a publicity order. That

order involved a mandatory injunction requiring Apple to publicise a court decision

that Samsung’s products did not infringe Apple’s IPRs. It was what justice required;

so the Court delivered.

9 Cartier HC at [104]. 10 Cartier HC at [106]. 11 [2013] FCR 9.

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17 In the result, Arnold J held that, on a purely domestic interpretation of s37(1), the

Court could grant site blocking orders. His Honour reinforced that decision by saying

that his interpretation of s37(1) was bolstered by reading that section consistently

with applicable EU directives.12

Threshold requirements for Cartier relief

18 With jurisdiction secure, Arnold J laid down the threshold conditions for site blocking

relief:13

18.1 Are the respondent ISPs “intermediaries” in terms of the EU’s Enforcement

Directive? (In other words, are the ISPs actually ISPs – a question which

won’t detain the Court long, as it didn’t in Cartier).

18.2 Are those operating the target website(s) infringing the applicant’s IPRs?

18.3 Do the target website operators use the ISPs’ services to infringe?

18.4 And do the ISPs know that the target website operators are using their

services to infringe?

19 The first issue will always take care of itself, as it did in Cartier.

20 The second issue should never be contentious either. The only tricky point is that

the evidence must show that the pirates are targeting consumers inside the

jurisdiction. Cartier readily ticked that off on the face of the online material in

evidence.

21 The ISPs contended that the third issue was so thorny that the judge should refer it

to the CJEU for clarification. Arnold J disagreed. He believed the law was clear:14

The ISPs have an essential role in the infringements, since it is via the ISPs’ services

that the advertisements and offers for sale are communicated to 95% of broadband

users in the UK. It is immaterial that there is no contractual link between the ISPs and

the operators of the target websites. It is also immaterial that UK consumers who view

the Target Websites may not purchase any goods… It is also immaterial that, if a UK

customer does purchase an item, the item will be transported by courier or post, since

the contract of sale will be concluded via the website”.

12 Cartier HC at [128]-[132]. 13 Cartier HC at [139]-[141]. His Honour gleaned these conditions from Articles 3 and 11 of the

Enforcement Directive and Articles 12-15 of the E-Commerce Directive (2000/31/EC). These threshold requirements channel the s97A enquiry.

14 Cartier HC at [155].

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22 The fourth issue, knowledge, should also be readily satisfied – as it was in Cartier –

through correspondence from the rights holder containing:

22.1 information about the IPRs at issue; and

22.2 information about the test purchases from each of the target sites.15

Cartier relief: relevant considerations

23 Threshold conditions are one thing. But once an applicant clears that first hurdle, it

must still convince the Court that site-blocking orders are appropriate in the

circumstances. In Cartier, the ISPs suggested that the relief sought must be:

23.1 necessary;16

23.2 effective;17

23.3 dissuasive;18

23.4 not unnecessarily complicated or costly;

23.5 fair and equitable; and

23.6 proportionate.

24 Arnold J considered each suggestion. In future cases, some will assume more

importance than others, as they did in Cartier. And the principles will elide with one

another. Necessity, for instance, will be the flip side of effectiveness in most piracy

cases where right holders have few, if any, other options to stop the infringement at

issue. By the same token, there seems little daylight between effectiveness and

dissuasiveness. The difference, if any, lies in the distinction between specific and

general deterrence: effective orders shut down individual pirates and serve as a

lesson to others.

15 Cartier HC at [157]. 16 A site-blocking order doesn’t need to be the measure of last resort. But applicants need evidence that

alternative, less onerous options targeting the pirate himself won’t help matters. 17 Site blocking applicants don’t need to demonstrate that the proposed orders will reduce overall

infringement. But they will have to show that the site blocking orders will discourage users from accessing the target site. Applicants will also need to show that the orders will work – a Court is unlikely to block site x alone, when there are a good number of alternative and equally appealing websites pedalling the same fake stuff.

18 The Court will need some comfort that the proposed orders will discourage pirates from investing in on-line piracy. We can expect the courts to assume dissuasiveness from effectiveness.

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25 Arnold J sifted through these principles and identified the following considerations as

particularly important:19

The comparative importance of the rights that were engaged and the justifications for

interfering with those rights.

The availability of alternative measures which were less onerous.

The efficacy of the measures which the order required the ISPs to adopt, and in

particular whether they would seriously discourage the ISPs’ subscribers from

accessing the target websites.

The costs associated with those measures and in particular the costs of implementing

the measures.

The dissuasiveness of those measures.

The impact of those measures on lawful users of the internet.

The substitutability of other websites for the target websites.

26 In the end, though, the ultimate balancing act in Cartier pitched:

26.1 the cost burden to the ISPs,

26.2 against the likely efficacy of the orders and the subsequent benefit they’ll give

the rights holder.

27 Inspired by EU jurisprudence, English courts now tend to call this balance of

convenience style-assessment, “proportionality”.20 Having weighed cost with

benefit, Arnold J concluded that:21

I consider that the orders [sought] are proportionate and strike a fair balance between

the respective rights that are engaged, including the rights of individuals who may be

affected by the orders but who are not before the Court.

The site blocking orders

28 I include typical UK site blocking orders in the schedule to this paper for anyone

keen to see the detail.

19 Summarised by Kitchin LJ in Cartier (CA) at [127]. 20 Compare with American Cyanamid Co v Ethicon Ltd [1975] AC 396 (HL). 21 Cartier HC at [261].

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29 At a general level, though, the orders require the:

29.1 ISPs to block or attempt to block access to nominated sites identified by IP

address and/or URL; and

29.2 rights holders to monitor and tell the ISPs if a blocked IP address/URL no

longer enables access to a target site.

30 The orders include leave reserved to:

30.1 each ISP to apply to discharge or vary the orders on any material change in

circumstances, including an increase in implementation costs and/or the

effectiveness of the deployed blocking measures from time to time;

30.2 the pirates to apply to discharge or vary the orders (a rather unlikely

development in any matter); and

30.3 subscribers to apply to discharge or vary the orders themselves (with a page

displayed to users who attempt to access blocked sites advising them that can

apply for such orders – as unappetising as that would be to anyone wanting to

buy a fake watch online).

31 The proceeding is then stayed sine die. In Cartier, however, Arnold J insisted on a

“sunset” clause recording that the orders will cease to have effect at the end of a

defined period unless either:

31.1 the ISPs consent to the orders being continued; or

31.2 the Court orders that they be continued.

32 Arnold J expressed the provisional view that that sunset period should be two years

away.

Cartier – the appeal

33 At first instance, Cartier was a thumping victory for rights holders. The ISPs

appealed contending that Arnold J was wrong about everything.

34 On appeal the ISPs focused understandably on jurisdiction: they stuck with their

contention that the High Court simply couldn’t grant an injunction without the

applicants having a substantive cause of action against them.

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35 The ISPs attacked jurisdiction by reference to The Siskina v Distos Compania

Naviera S.A.22 In that famous case, Lord Diplock, with whom the other Lords agreed,

said at page 256:

A right to obtain an interlocutory injunction is not a cause of action. It cannot stand on its

own. It is dependent upon there being a pre-existing cause of action against the defendant

arising out of an invasion, actual or threatened by him, of a legal or equitable right of the

plaintiff for the enforcement of which the defendant is amenable to the jurisdiction of the

court. The right to obtain an interlocutory injunction is merely ancillary and incidental to the

pre-existing cause of action.

36 The ISPs also relied on South Carolina Insurance Co v Assuranti Maatschappij

“de Zeven Probincien” NV.23 In that case Lord Brandon noted Lord Diplock’s Siskina

advice and suggested that there were only two exceptions to the “pre-existing cause

of action” requirement:

36.1 anti-suit injunctions to restrain a party from pursuing foreign proceedings in

court that is not the forum conveniens for the trial of the dispute; and

36.2 Mareva injunctions.

37 The House of Lords agreed with Lord Brandon, subject to Lord Goff’s reservation

that His Lordship was:

... reluctant to accept the proposition that the power of the Court to grant injunctions is

restricted to certain exclusive categories. That power is unfettered by statute; and it is

impossible for us now to foresee every circumstance in which it may be thought right to

make the remedy available. (page 44)

38 But The Siskina and South Carolina Insurance only took the ISPs so far. Against the

conservatism in those cases there is, for instance, Lord Nichol’s dissenting speech in

Mercedes Benz AG v Leiduck [1996] AC 284 at [308] where His Lordship observed

that:

The Court habitually grants injunctions in respect of certain types of conduct. But that does

not mean that the situations in which injunctions may be granted are now set in stone for all

time. The grant of Mareva injunctions itself gives lie to this. As circumstances in the world

change, so must the situations in which the courts may properly exercise their jurisdiction to

grant injunctions. The exercise of the jurisdiction must be principled, but the criterion is

injustice. Injustice is to be viewed and decided in light of today’s conditions and standards,

not those of yesteryear.

22 [1979] AC 210 (HL). 23 [1987] AC 24 (HL).

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39 And then there’s Fourie v Le Roux [2007] 1 WLR 320 (HL) where Lord Scott

explained that the:

[30] Authorities show, in my opinion, that, provided the Court has in personam jurisdiction

over the person against whom an injunction, whether interlocutory or final, is sought, the

Court has jurisdiction, in the strict sense, to grant it. The practice regarding the grant of

injunctions, as established by judicial precedent and rules of court, has not stood still since

The Siskina was decided and is unrecognisable from the practice to which Cotton LJ was

proffering in North London Railway Co v Great Northern Railway Co (1883) 11 QBD 30,

[39]-[40] and to which Lord Diplock referred in The Siskina.

40 Indeed, 130 years after Great Northern Railway one can point to:

40.1 American Cyanamid and the interim injunction;24

40.2 Anton Piller orders;25

40.3 Mareva injunctions;26

40.4 Norwich Pharmacal27 and Bankers Trust orders;28

40.5 anti-suit injunctions;29 and

40.6 publicity orders.30

41 And in Cartier, the Court of Appeal confirmed site blocking orders’ place in this

Parthenon of injunctive relief available from the English courts.

42 The Court did so because the ISPs were “inevitable and essential actors in [the]

infringing activities”. That view then drove the Court of Appeal’s conclusion that:

[65] … this Court must now recognise pursuant to general equitable principles that this is

one of those new categories of case in which the Court may grant an injunction when it is

satisfied that it is just and convenient to do so.

24 American Cyanamid Co v Ethicon Ltd [1975] AC 396 (HL). 25 Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55, [1977] 1 All ER 779 (CA). 26 Mareva Compania Naviera SA v International Bulk Carriers SA [1980] 1 All ER 213 (CA), [1975] 2

Lloyd’s Rep 509. 27 Norwich Pharmacal Co v Customs & Excise Commissioners [1974] AC 133 (HL) (“Norwich Pharmacal”). 28 Bankers Trust Co v Shapira [1980] 1 WLR 1274 (HL). 29 Airbus Industrie GIE v Patel [1999] AC 119 (HL). 30 Samsung Electronics v Apple [2013] FCR 9.

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43 Like the High Court, the Court of Appeal was clear that:

[52] ... once an ISP became aware that its services were being used by third parties to

infringe an intellectual property right it became subject to a duty to take proportionate

measures to prevent or reduce such infringements even though it was not liable for them.

Site blocking orders: who pays? (the ISPs do)

44 In the High Court the ISPs contended that the IP owners should pay the

implementation costs associated with any site blocking order. Arnold J disagreed.

His Honour held that:31

The ISPs should generally bear the costs of implementation as part of the costs of carrying

on business in this sector.

45 Implementation costs is perhaps the stickiest issue in site blocking matters.

46 In Cartier the ISPs reckoned they weren’t too worried about the cost of blocking one

or a few sites. Their concern lay in the cumulative cost of implementing all website

blocking orders over time. To that point, Cartier’s own evidence in support of the

injunction apparently identified 239,000 potentially infringing sites, of which around

46,000 were confirmed as infringing and awaiting enforcement action. Arnold J

dealt with those figures by observing that:

46.1 implementation costs were small by reference to the ISPs’ operating costs.

His Honour noted that Sky spent more than £6 billion a year running its

business; BT spent twice that (so what’s a bit more to block a few dastardly

pirate sites?);

46.2 the cost of preparing site blocking applications and monitoring the

effectiveness of the orders would constrain right holders from seeking relief in

all but egregious cases; and

46.3 European legislators had decided that ISPs are the “lowest cost avoiders” of

infringement, so implementation costs right sit with them.32

31 Cartier HC at [240]. 32 Recital (59) of the Information Society Directive. That decision being premised on notion that it is more

economically efficient to require ISPs to stop infringement occurring via the use of their services, than it is to require right holders to take action directly against infringement.

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47 Arnold J was not persuaded that the burden of implementation costs should weigh

against the injunction or, indeed, should be borne by the ISPs. His Honour noted

that:33

It is obvious that ISPs faced with the costs of implementing website orders have a choice.

They may either absorb these costs themselves, resulting in slightly lower profit margins, or

they may pass these costs on to their subscribers in the form of higher subscription charges.

Clearly it is important that none of the ISPs should gain a competitive advantage over the

others, but this is ensured by the fact that they are all required to take approximately equal

measures. Given the level playing field, the ISPs may choose to pass these costs on to their

subscribers ... It follows that the ISPs would not necessarily be the ones who would

ultimately bear these costs.

48 And to cap off a bad day for the ISPs, Arnold J also awarded legal costs in the action

against them. The ISPs had suggested that costs lie should where they fall because:

48.1 the case was a test case;

48.2 they, the ISPs, were not wrongdoers;

48.3 they had been neutral in the proceeding; and

48.4 they were not involved in an inter partes dispute with Cartier – so by analogy

with Norwich Pharmacal Cartier should meet their compliance costs.

49 Those points all have intuitive appeal. But Arnold J gave the first three submissions

short shrift holding that they weren’t enough to displace the usual rule that costs

follow the result. On neutrality, His Honour also was influenced by the fact that the

ISPs had spent well over £600,000 opposing the application: so they were hardly

neutral. And, as His Honour found, they were under a duty to assist the right holders

protecting their brand equity.

50 However, both Arnold J and the Court of Appeal took more time over the Norwich

Pharmacal analogy. That analogy went to both:

50.1 implementation costs; and

50.2 costs in the case.

33 Cartier HC at [252].

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51 In Norwich Pharmacal, the House of Lords established that innocent people who get

mixed up in someone else’s wrongdoing have a duty to assist the victim of the

tort.34 That duty typically extends to:

51.1 divulging details that allow the victim to pursue an infringer and/or trace

infringing goods (an equitable disclosure order); and/or

51.2 retain infringing goods in his or her possession (an equitable protective

order).

52 Anyone wanting a Norwich Pharmacal order must pay the innocent party’s costs.35 In

Cartier, Arnold J justified the High Court’s ability to grant site blocking orders “by

analogy” with Norwich Pharmacal which, His Honour said, exemplifies the injunction

jurisdiction’s flexibility to address injustice.36

53 In response, the ISPs duly noted that they were in the same spot as an innocent

Norwich Pharmacal respondent, so they should get costs too. Arnold J disagreed.

So too did Kitchin LJ and Jackson LJ in the Court of Appeal; but not Briggs LJ who

dissented on this one point.

54 The High Court and Court of Appeal majority distinguished Norwich Pharmacal. The

Court of Appeal noted that “its foundations… are rather different from those of

website blocking orders”.37 And they observed the site blocking action was not in

any sense preparatory to proceedings against an at-fault defendant. So unlike a

Norwich Pharmacal matter, a site-blocking applicant has no prospect of recovering

costs from the pirates in question. Ultimately, Arnold J and the Court of Appeal

majority felt that implementation costs were simply costs which the ISPs ought to

bear as an ordinary business expense.

55 Briggs LJ couldn’t agree. His Lordship was clear, however, that ISPs must bear the

capital costs of designing and installing software which they might need to “comply

with an internet blocking order when sought and obtained”. That cost, said Briggs

LJ, “should be regarded as an incidental cost of carrying on business as an ISP”.38

But Briggs LJ thought that rights holders should wear what you might call the

marginal costs of implementing any valid orders. His Lordship saw those costs as “a

34 Norwich Pharmacal [1974] AC 133 (HL). 35 Norwich Pharmacal at page 176 per Lord Reid and page 199 per Lord Cross. 36 Cartier HC at [106]. 37 Cartier CA at [148]. 38 Cartier CA at [207].

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natural incident of a business which consists of, or includes, the exploitation of

[intellectual property] rights”.39 Briggs LJ observed that his views “would give rise

to a need to reconsider [the costs position in] the [s97A] copyright cases”.40

56 In the end, Briggs LJ simply made a different policy call on where costs should lie.

With great respect, his view will not affect implementation costs awards on Cartier

orders for the foreseeable future. The ISPs will continue to be liable for those costs.

The practical dimension

57 Nowadays, if you’re a UK broadband customer wanting to buy a fake Cartier watch

on-line, chances are you’ll be met with a note like this from your ISP:

58 Click through as a “home broadband customer” and you find this sort of general

explanation:

39 Cartier CA at [206]. 40 Cartier CA at [210].

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Cartier orders in New Zealand

59 The English courts now claim general jurisdiction to grant a site blocking orders

based on s37(1) of the UK’s Senior Courts Act 1981. The section is worth repeating:

“The High Court may by order (whether interlocutory or final) grant an injunction… in

all cases in which it appears to be just and convenient to do so”.

60 New Zealand has no expressly equivalent statutory provision. But then it doesn’t

need one because the New Zealand High Court claims inherent jurisdiction to grant

injunctive relief.41

61 All s37(1) did was make it clear that the English High Court – being an

amalgamation of the Chancery bench and various other superior common law courts

– had the ability to grant injunctive relief in all sorts of cases. That relief was

previously just the domain of the Chancery judges. And those judges, like the New

Zealand High Court, claim inherent jurisdiction.

62 In short, there is no obstacle to the New Zealand High Court recognising and

exercising Cartier-jurisdiction.

63 Anyone seeking Cartier orders in New Zealand could proceed by either:

63.1 filing a statement of claim; or

63.2 asking for leave to proceed via originating application.42

64 Cartier orders should be well suited to the originating application jurisdiction given

that:

64.1 there is no real counter-party – proceedings won’t be adversarial as the IP

owner(s) won’t be seeking any finding of fault against the respondent ISPs;

and

64.2 Cartier applications will never be destined for trial, which dispenses with the

protections inherent in fully particularised pleadings, discovery and in-person

41 TV3 Network Ltd v Eveready New Zealand Ltd [1993] 3 NZLR 435 (CA), per Cooke J, with that

jurisdiction confirmed in the Judicature Act 1908, s16. 42 High Court Rules, Part 19. McGechan on Procedure notes that at [HRPt19.01] that “Part 19 is designed

to provide a speedy and inexpensive mechanism for a miscellany of applications which need to be made to Court under specific statutory provisions… Part 19 also permits the Court, in the interests of justice, to allow any proceeding not specifically mentioned to be commenced by way of originating application… Part 19 was initially designed as an expedient for cases where there was in reality no opposing party. That narrow approach is no longer applied, but Part 19 remains a procedure generally used for cases where it is not necessary to have full pleadings and interlocutory steps”.

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evidence which are features of proceedings begun by way of statement of

claim.

SITE BLOCKING RELIEF UNDER NEW ZEALAND’S COPYRIGHT ACT 1994

65 No one has yet sought a site blocking order in New Zealand. But copyright owners

could do so pursuant to either:

65.1 the Court’s inherent jurisdiction as amplified in Cartier; and/or

65.2 s92B of the Copyright Act 1994.

66 Section 92B differs a little from its UK cousin, s97A of the Copyright Designs and

Patents Act 1988. To be obviously consistent with s97A, s92B(3) should have read:

However, nothing in this section limits the right of the copyright owner to injunctive relief

against an Internet service provider in relation to A’s infringement or and/or any

infringement by the Internet service provider.

67 However, on a purposive interpretation, s92B should enable copyright holders to win

the same site blocking relief granted in the line of cases beginning with Twentieth

Century Fox v BT.43

Section 92B in context

68 Parliament inserted s92B into the Copyright Act 1994 via the 2008 “New

Technologies” amendment legislation. The section’s general intention was to

provide a “safe harbour” for ISPs where the ISP is acting as a mere conduit for end-

user infringement.

69 The Ministry of Economic Development (“MED”)44 produced three papers leading to

the Copyright (New Technologies) Amendment Act 2008. These papers were the

genesis of both the 2008 amendments and the 2011 changes ushered in to combat

file-sharing.45

70 MED’s initial discussion paper46 identified that under then current legislation, ISPs

could be liable for primary and secondary copyright infringement.47 The report also

43 [2012] 1 All ER 806 (HC). 44 MED is now part of the Ministry of Business, Innovation and Employment (“MBIE”). 45 Copyright (Infringing File Sharing) Amendment Act 2011. 46 Digital Technology and the Copyright Act 1994: a discussion paper (July 2001) 47 Ibid at [140].

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acknowledged the difficulty copyright owners face enforcing their rights against

“website proprietors who may have placed unauthorised copies of copyright material

on their sites, or provided unauthorised links to other websites”.48

71 MED’s next report,49 an internal working paper, explained ISP liability in Australia,

Canada, the United States, the European Union and England. The report didn’t

recommend any specific approach for New Zealand, and made no comment on site

blocking per se. But the report did say:50

… it is important that both domestic and international copyright owners have confidence

in the protection afforded them by our copyright regime. They must have some avenues

to enforce their rights. To this end, ISPs are often easier to identify than the

individual who poses or sends infringing material and they provide a

convenient point at which to block that material.

(Emphasis added)

72 MED’s final report, a position paper, noted:51

In making recommendations for excluding ISPs from some liability, the Ministry is

mindful of copyright owners’ need to prevent infringement where they are unable to

identify the actual infringer. As such, the Ministry considers that the UK approach is

helpful, limiting only liability for damages or any other pecuniary remedies or criminal

sanction. The Ministry does not recommend preventing copyright owners from seeking

injunctive relief in respect of information stored by ISPs.

73 After all that, s92B reads:

92B Internet service provider liability if user infringes copyright

(1) This section applies if a person (“A) infringes the copyright in a work by using 1 or more of the Internet services of an Internet service provider to do a restricted act without the consent of the copyright owner.

(2) Merely because A uses the Internet services of the Internet service provider in infringing the copyright, the Internet service provider, without more,—

(a) does not infringe the copyright in the work:

(b) must not be taken to have authorised A’s infringement of the copyright in the work:

48 Ibid at [135]. 49 Digital Technology and the Copyright Act 1994: internal working paper (July 2002). 50 Ibid at [158]. 51 Digital Technology and the Copyright Act 1994: position paper (December 2002) at [80].

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(c) subject to subsection (3), must not be subject to any civil remedy or criminal sanction.

(2A) An Internet service provider does not infringe the copyright in the work, or authorise A’s infringement of the copyright in the work, merely because the Internet service provider knows of the infringement from information received as a result of anything done under sections 122A to 122U, provided that, in relation to the alleged infringement, the Internet service provider complies with all its obligations under those sections and under any regulations made under section 234(eb) to (eh).]]

(3) However, nothing in this section limits the right of the copyright owner to injunctive relief in relation to A’s infringement or any infringement by the Internet service provider.

(4) In subsections (1) and (2), Internet services means the services referred to in the definition of Internet service provider in section 2(1).

74 Section 92B(3) is drafted in broad, open language. To be sure, unlike the UK’s s97A,

s92B does not spell out that ISP’s can be enjoined to prevent “[User] A’s

infringement” enabled through the Internet service in question. But MED was clearly

focused on allowing right holders to seek injunctive relief against ISPs. That much is

clear from:

74.1 history; and

74.2 the section’s heading, “Internet service provider liability if user infringes

copyright” – that heading plainly contemplates ISPs being subject to a civil

remedy where another party infringes copyright.52

75 Anyone one contemplating a s92B site blocking order will need to establish that:

75.1 someone (identified as “A” in s92B) has infringed copyright in a work;

75.2 Person A used a named ISPs’ services to commit that infringement; and

75.3 the ISPs have actual knowledge of the infringement.

76 The infringer – Person A – could be either a:

76.1 New Zealand-domiciled end user downloading infringing work and therefore

reproducing that work in the memory and/or on the screen of his or her

device;53

52 The Interpretation Act 1999, s5(3) provides that one can ascertain meaning from, inter alia, section

headings.

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76.2 New Zealand-domiciled end user uploading infringing work to the swarm and

therefore communicating that work to the public; or

76.3 pirate guilty of communicating work to the public from an infringing website

or a pirate doing so in joint tortfeasorship with users of the site’s services in

New Zealand.

77 As a matter of process, copyright holders will probably find it easiest to have an

investigator establish accounts with each ISP and use their services to download

infringement material. The rights holders’ solicitors then write to the ISP with the

details. That letter then fixes the ISPs with actual knowledge that their services are

being used to infringe copyright. And then the whole experience goes into the main

fact affidavit bolstered by further evidence deposing to:

77.1 how much piracy harms the copyright holder and other rights holders; and

77.2 the site blocking technology available to ISPs to block access to the

nominated pirate site(s) in question.

IS TIME TICKING ON THE FAKE WATCH GAME?

78 Probably not; we’ll never stop piracy altogether. But Cartier-relief and statutory site

blocking orders will stem the tide and help dissuade consumers from buying and

dealing in infringing goods.

79 These orders will soon be a fact of commercial life in New Zealand. And just like

their British counterparts, New Zealand ISPs will have to brace themselves for the

cost and minor inconvenience of blocking traffic to certain nefarious websites lurking

in the undergrowth of the internet jungle.

53 See Munwha Broadcasting v Young International HC Auckland CIV-2010-404-203, 17 December 2010 at

[67]-[68].

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SCHEDULE: TYPICAL UK SITE BLOCKING ORDERS

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