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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors  EWHC 3354 (Ch) (17 October 2014)
Cite as:  EWHC 3354 (Ch),  ETMR 1,  WLR(D) 464,  Bus LR 298,  RPC 175,  1 All ER 949,  1 All ER (Comm) 641,  BUS LR 298,  RPC 7,  EMLR 10
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Fetter Lane, London, EC4A 1NL
B e f o r e :
| (1) CARTIER INTERNATIONAL AG
(2) MONTBLANC-SIMPLO GMBH
(3) RICHEMONT INTERNATIONAL SA
|- and -
|(1) BRITISH SKY BROADCASTING LIMITED
(2) BRITISH TELECOMMUNICATIONS PLC
(3) EE LIMITED
(4) TALKTALK TELECOM LIMITED
(5) VIRGIN MEDIA LIMITED
|- and -
|OPEN RIGHTS GROUP
Charlotte May QC and Jaani Riordan (instructed by Reed Smith LLP) for the Defendants
David Allen Green of Preiskel & Co LLP made written submissions on behalf of the Intervener
Hearing dates: 25-26 September 2014
Crown Copyright ©
MR JUSTICE ARNOLD :
|The problems of counterfeit goods and online trade mark Infringement||12-14|
|Richemont and the Trade Marks||15-16|
|The Target Websites||17-24|
|Blocking techniques in general||25|
|The Internet Watch Foundation's blocking regime||28-29|
|Sections 17 and 18 of the Digital Economy Act 2010||30-32|
|Parental control services||33-37|
|The ISPs' blocking systems||38-51|
|Section 97A orders obtained to date||52-57|
|Implementation of the section 97A orders by the rightholders||58-60|
|Implementation of the section 97A orders by the ISPs||61-65|
|Problems encountered as a result of section 97A orders||66-68|
|Applications for further section 97A orders||69-71|
|The orders sought||72|
|The legal context||73-86|
|Senior Courts Act 1981||74|
|Trade Marks Directive and CTM Regulation||75|
|Domestic implementation of the Trade Marks Directive||76|
|Domestic implementation of the E-Commerce Directive||79|
|Information Society Directive||80|
|Domestic implementation of the Information Society Directive||81|
|The Enforcement Directive||82-83|
|Domestic implementation of the Enforcement Directive||84|
|The Charter of Fundamental Rights of the European Union||85-86|
|Relevant principles of interpretation||87-91|
|EU directives do not have horizontal effect||88|
|Interpretation of domestic legislation in the context of EU directives||89|
|Interpretation of EU directives||90-91|
|Domestic interpretation of section 37(1)||94-111|
|Implementation of Article 8(3) of the Information Society Directive and Article 11 of the Enforcement Directive||112-120|
|Interpretation of section 37(1) in accordance with the third sentence of Article 11||121-132|
|Provided for by law?||133-138|
|Threshold conditions for the exercise of the jurisdiction||139-141|
|Are the threshold conditions satisfied in the present case?||142-157|
|Are the ISPs intermediaries?||142|
|Are the operators of the Target Websites infringing the Trade Marks?||143-146|
|Do the operators of the Target Websites use the ISPs' services to infringe?||147-156|
|Do the ISPs have actual knowledge of this?||157|
|Principles to be applied||158-191|
|Not unnecessarily complicated or costly||180-181|
|Avoidance of barriers to legitimate trade||182|
|Fair and equitable and fair balance||183|
|Safeguards against abuse||191|
|Application to the present case||192-261|
|The comparative importance of the rights engaged and the justifications for interfering with those rights||193-196|
|Availability of alternative measures||197-216|
|Action against the operators||198|
|Notice and takedown by hosts||199-204|
|Domain name seizure||208-209|
|The section 97A orders||220-236|
|The present case||237|
|Impact on lawful users||254-257|
|Overall assessment of proportionality||260-261|
|Safeguards against abuse||262-265|
The problems of counterfeit goods and online trade mark infringement
Richemont and the Trade Marks
i) UK Trade Mark No. 642,791 for the word CARTIER registered as of 10 December 1945 in respect of "jewellery, articles not included in other classes, made of precious metal or coated therewith precious stones clock, and watches [sic]" in Class 14.
ii) UK Trade Mark No. 1,095,932 for Cartier in cursive script as shown below registered as of 22 May 1978 in respect of a wide range of goods including "precious metals and their alloys, jewellery, articles included in Class 14 made of precious metal or coated therewith, precious and semi-precious stones, clocks and watches" in Class 14.
iii) UK Trade Mark No. 1,271,649 for the word MONTBLANC registered as of 18 July 1986 in respect of "writing and drawing instruments, stationery; inks and erasers, all included in Class 16; parts and fittings included in Class 16 for all the aforesaid good" in Class 16.
iv) UK Trade Mark No. 1,271,649 for the device shown below registered as of 29 June 1988 in respect of "Writing instruments, pouches for writing instruments, gift cases for writing instruments, inks and refills, stationery, desk sets; all included in Class 16" in Class 16.
v) International Trade Mark No. 729,301 for the letters IWC in a particular font protected in the UK with effect from 15 September 2000 in respect of "watches and parts thereof" in Class 14.
The Target Websites
Online Shop cartierlove2u.com is one professional replica cartier shop store. From the Cartier category on the left of site you can find each series of Cartier replica . you can find the different bracelet for men or ladies and Ordinary cartier or Cartier 1:1 Grade We do it carefully that you can shop here convenient and easily. And we have the abundant resources and multiple trade channels for each kind of replica Cartier love bracelet online. All Watches in cartierlove2u.com are in cheapest price but with the best service, and all of them are 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. You can consider the best sold watches in our site, which is most popular online. All the watches provides the detailed package, usually in two weeks, you can receive your ordered cartier by EMS freely."
Blocking techniques in general
i) DNS name blocking. The Domain Name System (DNS) is the system that associates a domain name (such as www.cartierloveonline.com) with the Internet Protocol (IP) address (such as 18.104.22.168) that the ISPs use to route traffic to the web server that is hosting the website in question. The ISPs operate DNS servers that their customers' computers automatically call upon to look up IP addresses corresponding to DNS names. The customers' computers request these lookups so that they can address their communications to the website in question using its IP address, which is the necessary form of address for their communications to be delivered. DNS name blocking involves an ISP removing or modifying its records of the IP address(es) for a particular DNS name, so that when the ISP's DNS server is asked by a customer's computer for the IP address corresponding to the DNS name, the ISP's system either returns no IP address or points the customer to an IP address defined by the ISP that in actuality does not correspond to the DNS name.
ii) IP address blocking using routers. This is implemented in network devices which the ISPs operate known as border gateway (edge) routers that send customer communications to their destinations based on the destination IP addresses of the communications. An ISP can configure its routers to discard communications destined for the IP address of the website in question or route them to an IP address defined by the ISP that is different from the actual IP address of the website. This method thus blocks a customer's communications to a website even if the customer's computer uses the correct IP address for the website.
iii) DPI-based URL blocking. This method involves monitoring traffic by means of Deep Packet Inspection (DPI) and blocking requests for specific Uniform Resource Locators (URLs). A URL is a web address, which usually consists of the access protocol (e.g. http), the domain name (e.g. www.example.com) and the specific resource (i.e. the page e.g. main-page), separated by a colon and slashes. This method does not involve detailed, invasive analysis of the contents of the packets in the traffic (and for that reason it is sometimes referred to Shallow Packet Inspection rather than Deep Packet Inspection). It is typically implemented using proxy servers. It can also be used to implement IP address blocking as an alternative to the router method described above.
iv) Two-stage systems. Some ISPs operate two-stage systems. Typically this involves a first stage of IP-address re-routing and a second stage of DPI-based URL blocking. The first stage detects whether a customer's web request relates to an IP address on which some blocked content is hosted. If there is a match, the request is re-directed to the second stage; otherwise it is passed on normally. In the second stage traffic that relates to a blocked URL (or IP address) is stopped. The second stage is typically implemented using proxy servers.
The Internet Watch Foundation's blocking regime
Sections 17 and 18 of the Digital Economy Act 2010
"All [blocking techniques] can be circumvented to some degree by users and site owners who are willing to make the additional effort.
For all blocking methods circumvention by site operators and internet users is technically possible and would be relatively straightforward by determined users. Techniques are available for tackling circumvention, but these are of limited value against sophisticated tools, such as encrypted virtual private networks (VPN).
Nevertheless, sites blocking could contribute to an overall reduction in online copyright infringement – especially if it forms part of a broader package of measures to tackle infringement.
Just because it is technically possible for site operators and end users to circumvent blocking, it does not mean that in practice they will universally do so. The extent to which consumers and site operators will seek to circumvent blocking depends on a wide range of factors. These include the convenience and prevalence of circumvention techniques, the relative attractiveness of legal alternatives (and the opportunity costs of the illegal service foregone) and the ease and efficacy with which site operators can interact with the legal process should they dispute a block.
Although imperfect and technically challenging, site blocking could nevertheless raise the costs and undermine the viability of at least some infringing sites, while also introducing barriers for users wishing to infringe. Site blocking is likely to deter casual and unintentional infringers and by requiring some degree of active intervention raise the threshold even for determined infringers.
The location of infringing sites can be changed relatively easily in response to site blocking measures, therefore site blocking can only make a contribution if the process is predictable, low cost and fast to implement.
We do not consider that sections 17 and 18 would be effective for generating lists of sites to be blocked."
Parental control services
"Making it easier for parents to block adult and age-restricted material from the internet: To provide a consistent level of protection across all media, as a matter of urgency, the internet industry should ensure that customers must make an active choice over what sort of content they want to allow their children to access. To facilitate this, the internet industry must act decisively to develop and introduce effective parental controls, with Government regulation if voluntary action is not forthcoming within a reasonable timescale. … "
"These four ISPs, together with [EE], have gone further still, committing to provide whole-home filtering solutions to protect all devices in the home and will make setting up internet controls an unavoidable step for parents."
5.9 There is a broad consensus that all filtering solutions face risks of circumvention, by a dedicated and technically competent user, supported by a range of advice available online. All four ISPs provide their subscribers with advice about the complementary actions they should take, as parents, to help secure their children's online safety.
5.10 Although the possibility of filter circumvention remains, each ISP has taken some steps to limit the extent of circumvention. For example, ISPs include lists of "proxy sites" whose primary purpose is to bypass filters or increase user anonymity as part of their standard blocking lists. In some cases, specific adaptations have been introduced to the filtering system to maintain blocks on sites which use encryption (such as Facebook and Twitter) but to which parents wish to restrict access. However, the use of wholly encrypted connections, as is the case when a VPN service is active, would bypass all selective filtering services.
Impact on internet access
5.11 Each ISP states that the filtering service has no impact on the general quality of the internet access service opted-in subscribers receive and that they undertake continuous monitoring to ensure this is the case. The primary concern about quality noted by the ISPs was over the possibility of incorrect categorisation of sites and services; and each ISP has processes in place, described in paragraphs 2.26 to 2.37 above, address reports of incorrect filter operation"
The ISPs' blocking systems
Section 97A orders obtained to date
i) an order dated 26 October 2011 in respect of Newzbin2 (see 20C Fox v BT and 20C Fox v BT (No 2));
ii) an order dated 24 April 2013 in respect of Movie2K and DL4all (plus an order dated 17 July 2013 when Movie2K became Movie 4K);
iii) an order dated 1 July 2013 in respect of EZTV;
iv) three orders dated 25 October 2013 in respect of YIFY-Torrents and four other websites;
v) an order dated 13 November 2013 in respect of SolarMovie and Tube+ (see Paramount v Sky); and
vi) an order dated 18 February 2014 in respect of Viooz and three other websites (see Paramount v Sky 2).
i) an order dated 13 June 2012 in respect of The Pirate Bay ("TPB") (see Dramatico v Sky and Dramatico v Sky (No 2));
ii) an order dated 28 February 2013 in respect of Fenopy, H33T and Kat (see EMI v Sky); and
iii) an Order dated 8 October 2013 in respect of 1337X and 20 other websites.
Implementation of the section 97A orders by the rightholders
Implementation of the section 97A orders by the ISPs
Problems encountered as a result of section 97A orders
Applications for further section 97A orders
i) An application by Paramount Home Entertainment Ltd and other film studios by application notice dated 29 July 2014 for orders in respect of seven websites which are said to be substantially focussed on infringement of copyright in films and television programmes.
ii) An application by 1967 Ltd and other record companies by application notice dated 31 July 2014 for orders in respect of 21 websites which are said to be involved in peer-to-peer file sharing using BitTorrent.
iii) An application by Twentieth Century Fox Film Corp and other film studios by application notice dated 29 August 2014 for orders in respect of eight websites which are said to be substantially focussed on infringement of copyright in films and television programmes.
The orders sought
"1. In respect of its residential fixed line broadband customers to whose service the system known as … is applied, the … Defendant shall within 15 working days in relation to the initial notification (and thereafter, within 10 working days of receiving any subsequent notification) adopt the following technical means to block or attempt to block access to the Target Websites, their domains and sub-domains and any other IP address or URL notified to the …. Defendant whose sole or predominant purpose is to enable or facilitate access to a Target Website. The technology to be adopted is:
(i) IP blocking in respect of each and every IP address from which each of the Target Websites operate and which is:
(a) notified in writing to the … Defendant by the Applicants or their agents; and
(b) in respect of which the Claimants or their agents notify the … Defendant that the server with the notified IP address does not also host a site that is not part of a Target Website.
(ii) IP address re-routing in respect of all IP addresses that provide access to each and every URL available from each of the Target Websites and their domains and sub-domains and which URL is notified in writing to the … Defendant by the Claimants or their agents; and
(iii) URL blocking in respect of each and every URL available from each of the Target Websites and their domains and sub-domains and which is notified in writing to the … Defendant by the Claimants or their agents.
2. For the avoidance of any doubt paragraphs 1(i), 1(ii) and 1(iii) are complied with if the … Defendant uses the system known as … to implement the steps required by those paragraphs.
3. The Claimants or their agents will notify the … Defendant should any IP address and/or URL which has already been notified to the … Defendant under the terms of this Order cease to enable or facilitate access to a Target Website (in which case the … Defendant shall no longer be obliged to block that IP address and/or URL). For the avoidance of doubt, the …. Defendant is wholly reliant on the Claimants accurately identifying the IP addresses and/or URLs from which the Target Websites operate and which should be blocked under the terms of this Order.
4. The … Defendant shall not be in breach of paragraphs 1(i), 1(ii) and/or 1(iii) if it temporarily suspends … or the addition of IP addresses or URLs thereto with the consent of the Claimants or their agents.
5. The proceedings shall be stayed, save for the purposes of any application to give effect to the terms of this order and save that the parties have permission to apply on notice in the event of any material change of circumstances including, for the avoidance of doubt but without limiting the generality of the foregoing, in respect of the costs, consequences for the parties and effectiveness of the aforesaid technical means from time to time.
6. The operators of the Target Websites (as defined in the Schedule to this Order) and the operators of any other website who claim to be affected by this Order, are to have permission to apply on notice to vary or discharge this Order insofar as it affects such an applicant, any such application to be on notice to all the parties and to be supported by materials setting out and justifying the grounds for the application. Any such application shall clearly indicate the status of the applicant and indicate clearly (supported by evidence) that it is the operator of any website which is the subject of such application.
7. There be no order for costs."
The legal context
Senior Courts Act 1981
"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."
Trade Marks Directive and CTM Regulation
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
3. The following, inter alia, may be prohibited under paragraphs 1 and 2:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign on business papers and in advertising.
Domestic implementation of the Trade Marks Directive
"Registered trade marks
2.(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.
Rights conferred by registered trade mark
9.(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.
Action for infringement
14.(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark.
(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.
Order for delivery up of infringing goods, material or articles
16.(1) The proprietor of a registered trade mark may apply to the court for an order for the delivery up to him, or such other person as the court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business.
(4) Nothing in this section affects any other power of the court."
"(45) The limitations of the liability of intermediary service providers established in this Directive do not affect the possibility of injunctions of different kinds; such injunctions can in particular consist of orders by courts or administrative authorities requiring the termination or prevention of any infringement, including the removal of illegal information or the disabling of access to it.
(46) In order to benefit from a limitation of liability, the provider of an information society service, consisting of the storage of information, upon obtaining actual knowledge or awareness of illegal activities has to act expeditiously to remove or to disable access to the information concerned; the removal or disabling of access has to be undertaken in the observance of the principle of freedom of expression and of procedures established for this purpose at national level; this Directive does not affect Member States' possibility of establishing specific requirements which must be fulfilled expeditiously prior to the removal or disabling of information.
(47) Member States are prevented from imposing a monitoring obligation on service providers only with respect to obligations of a general nature; this does not concern monitoring obligations in a specific case and, in particular, does not affect orders by national authorities in accordance with national legislation.
(48) This Directive does not affect the possibility for Member States of requiring service providers, who host information provided by recipients of their service, to apply duties of care, which can reasonably be expected from them and which are specified by national law, in order to detect and prevent certain types of illegal activities."
1. Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, or the provision of access to a communication network, Member States shall ensure that the service provider is not liable for the information transmitted, on condition that the provider:
(a) does not initiate the transmission;
(b) does not select the receiver of the transmission; and
(c) does not select or modify the information contained in the transmission.
3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement.
1. Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request, on condition that:
(a) the provider does not modify the information;
(b) the provider complies with conditions on access to the information;
(c) the provider complies with rules regarding the updating of the information, specified in a manner widely recognised and used by industry;
(d) the provider does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information; and
(e) the provider acts expeditiously to remove or disable access to the information it has stored upon obtaining actual knowledge of the fact that the information at the initial source of the transmission has been removed from the network, or access to it has been disabled, or that a court or an administrative authority has ordered such removal or disablement.
2. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement.
1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:
(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or
(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.
3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information
No general obligation to monitor
1. 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.
2. Member States may establish obligations for information society service providers promptly to inform the competent public authorities of alleged illegal activities undertaken or information provided by recipients of their service or obligations to communicate to the competent authorities, at their request, information enabling the identification of recipients of their service with whom they have storage agreements."
Domestic implementation of the E-Commerce Directive
"Notice for the purposes of actual knowledge
In determining whether a service provider has actual knowledge for the purposes of regulations 18(b)(v) and 19(a)(i), a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, among other things, shall have regard to—
(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c), and
(b) the extent to which any notice includes—
(i) the full name and address of the sender of the notice;
(ii) details of the location of the information in question; and
(iii) details of the unlawful nature of the activity or information in question."
Information Society Directive
"(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party's infringement of a protected work or other subject-matter in a network. This possibility should be available even where the acts carried out by the intermediary are exempted under Article 5. The conditions and modalities relating to such injunctions should be left to the national law of the Member States."
"8.(3) Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right."
Domestic implementation of the Information Society Directive
"97A Injunctions against service providers
(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.
(2) In determining whether a service provider has actual knowledge for the purpose of this section, a Court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to –
(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and
(b) the extent to which any notice includes –
(i) the full name and address of the sender of the notice;
(ii) details of the infringement in question.
(3) In this section 'service provider' has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002."
The Enforcement Directive
"(17) The measures, procedures and remedies provided for in this Directive should be determined in each case in such a manner as to take due account of the specific characteristics of that case, including the specific features of each intellectual property right and, where appropriate, the intentional or unintentional character of the infringement.
(23) Without prejudice to any other measures, procedures and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary whose services are being used by a third party to infringe the rightholder's industrial property right. The conditions and procedures relating to such injunctions should be left to the national law of the Member States. As far as infringements of copyright and related rights are concerned, a comprehensive level of harmonisation is already provided for in Directive 2001/29/EC. Article 8(3) of Directive 2001/29/EC should therefore not be affected by this Directive.
(32) This Directive respect the fundamental rights and observed the principles recognised in particular by the Charter of Fundamental Rights of the European Union. In particular, this Directive seeks to ensure full respect for intellectual property rights, in accordance with Article 17(2) of that Charter."
1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
Provisional and precautionary measures
1. Member States shall ensure that the judicial authorities may, at the request of the applicant:
(a) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder; an interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right; injunctions against intermediaries whose services are used by a third party to infringe a copyright or a related right are covered by Directive 2001/29/EC;
Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC."
Domestic implementation of the Enforcement Directive
The Charter of Fundamental Rights of the European Union
Freedom of expression and information
1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.
Freedom to conduct a business
The freedom to conduct a business in accordance with Union law and national laws and practices is recognised Article 17
Right to property
2. Intellectual property shall be protected.
Field of application
1. The provisions of this Charter are addressed to the institutions, bodies, offices and agencies of the Union with due regard for the principle of subsidiarity and to the Member States only when they are implementing Union law. They shall therefore respect the rights, observe the principles and promote the application thereof in accordance with their respective powers and respecting the limits of the powers of the Union as conferred on it in the Treaties.
2. The Charter does not extend the field of application of Union law beyond the powers of the Union or establish any new power or task for the Union, or modify powers and tasks as defined in the Treaties.
Scope and interpretation of rights and principles
1. Any limitation on the exercise of the rights and freedoms recognised by this Charter must be provided for by law and respect the essence of those rights and freedoms. Subject to the principle of proportionality, limitations may be made only if they are necessary and genuinely meet objectives of general interest recognised by the Union or the need to protect the rights and freedoms of others.
2. Rights recognised by this Charter for which provision is made in the Treaties shall be exercised under the conditions and within the limits defined by those Treaties.
3. In so far as this Charter contains rights which correspond to rights guaranteed by the Convention for the Protection of Human Rights and Fundamental Freedoms, the meaning and scope of those rights shall be the same as those laid down by the said Convention. This provision shall not prevent Union law providing more extensive protection.
4. In so far as this Charter recognises fundamental rights as they result from the constitutional traditions common to the Member States, those rights shall be interpreted in harmony with those traditions.
5. The provisions of this Charter which contain principles may be implemented by legislative and executive acts taken by institutions, bodies, offices and agencies of the Union, and by acts of Member States when they are implementing Union law, in the exercise of their respective powers. They shall be judicially cognisable only in the interpretation of such acts and in the ruling on their legality.
6. Full account shall be taken of national laws and practices as specified in this Charter.
7. The explanations drawn up as a way of providing guidance in the interpretation of this Charter shall be given due regard by the courts of the Union and of the Member States."
Relevant principles of interpretation
EU directives do not have horizontal effect
Interpretation of domestic legislation in the context of EU directives
Interpretation of EU directives
"According to settled case-law, in interpreting a provision of Community law it is necessary to consider not only its wording, but also the context in which it occurs and the objectives pursued by the rules of which it is part (see, in particular, Case C-156/98 Germany v Commission  ECR I-6857, paragraph 50, and Case C-53/05 Commission v Portugal  ECR I-6215, paragraph 20)".
Domestic interpretation of section 37(1)
"The power of a judge sitting in the High Court to grant an injunction against a party to proceedings properly served is confirmed by, but does not derive from, section 37 of the Supreme Court Act 1981 and its statutory predecessors. It derives from the pre-Supreme Court of Judicature Act 1873 (36 & 37 Vict c 66) powers of the Chancery courts, and other courts, to grant injunctions: see section 16 of the 1873 Act and section 19(2)(b) of the 1981 Act."
"My Lords, these 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  AC 210 was decided and is unrecognisable from the practice to which Cotton LJ was referring in North London Railway Co v Great Northern Railway Co (1883) 11 QBD 30, 39–40 …"
"The powers of courts with equitable jurisdiction to grant injunctions are, subject to any relevant statutory restrictions, unlimited. Injunctions are granted only when to do so accords with equitable principles, but this restriction involves, not a defect of powers, but an adoption of doctrines and practices that change in their application from time to time. Unfortunately, there have sometimes been made observations by judges that tend to confuse questions of jurisdiction or of powers with questions of discretions or of practice. The preferable analysis involves a recognition of the great width of equitable powers, an historical appraisal of the categories of injunctions that have been established and an acceptance that pursuant to general equitable principles injunctions may issue in new categories when this course appears appropriate."
"Where, in England and in other jurisdictions, the superior courts now exercise the powers of the former Court of Chancery, whether or not they are also able to grant legal injunctions or are affected by special Judicature Act provisions, their powers of granting injunctions are unlimited, provided that they have jurisdiction over the defendant in the circumstances in question. These powers are however exercised in accordance with the principles set out here under.
First, an injunction may issue in the protection of any legal right whatever, save for an applicable statutory provision provides to the contrary. For these purposes the relevant legal right must ordinarily be a present right of the plaintiff, as opposed to a right that he merely expects or hopes to acquire in the future.
Secondly, an injunction may issue in the enforcement of any equitable right. Here on a strict analysis the right to the injunction itself represents pro tanto the equitable right in question. Hence in ascertaining whether an injunction may be obtained on this basis it is necessary to determine whether injunctions of the relevant kind were formally granted in the exclusive or concurrent jurisdiction of courts of equity, and if not, whether the principles underlying those jurisdictions should nonetheless now be treated as rendering the grant of the injunction appropriate.
Thirdly, an injunction may issue pursuant to its natural power to grant injunctions conferred in respect of a particular subject matter, such as family law or trade practises law.
Fourthly, an injunction may issue in the protection of a legal privilege or freedom. So an injunction may be obtained to prevent a person from harassing the plaintiff. Likewise even if, on the principles that have been set out here, an injunction is not otherwise obtainable to enjoying the bringing or continuation of proceedings in another court - whether in an inferior court, a court of special jurisdiction or a foreign court - it may nevertheless be obtained if the bringing or continuation of those proceedings would be unconscionable. Injunctions of these kinds may be granted whether or not inconsistent proceedings have been or will be commenced in the forum.
Fifthly, an injunction (such as a Mareva injunction or freezing order) may issue in other cases in which, on miscellaneous grounds, the conduct restraint would be unconscionable. It has been said in the House of Lords that this term includes conduct which is oppressive or vexatious or which interferes with the due process of the court. Here s. 37 of the Supreme Court Act 1981 and other such provisions merely confirm the width of the court's inherent powers. "
"If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester, 24 ChD 231) will infringe another's patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing. The man having the goods in his possession or control must not aid the infringement by letting the goods get into the hands of those who may use them or deal with them in a way which will invade the proprietor's rights. Even though by doing so he might not himself infringe the patent or trade mark, he would be in dereliction of his duty to the proprietor. This duty is one which will, if necessary, be enforced in equity by way of injunction: see Upmann v Elkan, L.R. 12 Eq. 140, 7 Ch App 130."
Although this principle is inapplicable to the circumstances of the present case, it is not a long step from this to conclude that, 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.
"70. Before I proceed however, I should first consider whether or not there is power to grant a publicity order of this sort—publicity by an intellectual property claimant that he has failed in his action for infringement. Publicity orders in intellectual property cases are quite a new thing at least in this jurisdiction. Prior to the Enforcement Directive 2004/48/EC they were, so far as I am aware, unknown here. The nearest one came to such an order was a recognition that a plaintiff could be entitled to the costs of obtaining an order for an injunction in open court even though the defendant consented for the sake of the publicity that such an order afforded, see Fox v Luke (1925) 43 R.P.C. 37 .
71. The Enforcement Directive changed that, providing expressly for publicity orders where the IP right holder has been successful. The purpose (Recital 27) was to act as a 'supplementary deterrent to future infringers and to contribute to the awareness of the public at large.' The Directive does not provide for publicity orders the other way round—where a party has successfully defended an unjustified claim of infringement or has obtained a declaration of non-infringement.
72. [Counsel for Samsung] accepted that the Directive was limited to publicity where an IP right holder was successful. So jurisdiction to grant the order could not stem from the Directive. [Counsel] contended that jurisdiction stemmed from s.37 of the Senior Courts Act 1981: …. The provision replaces identical legislation going back to at least the Judicature Acts of 1873–5. As is set out in Spry on Equitable Remedies, 7th edn (cited by Apple) the exercise of the power is not entirely unfettered. It is limited to inter alia 'the enforcement of an equitable right' and 'to restrain unconscionable conduct, such as conduct which would interfere with the due process of the court'.
73. [Counsel for Apple] did not actually contest that s.37(1) gave the court in principle a power to grant a publicity order in favour of a successful non-infringer. He referred us … to what Lord Nicholls said in Mercedes-Benz AG v Leiduck  AC 284 at p.308:
'…the jurisdiction to grant an injunction, unfettered by statute, should not be rigidly confined to exclusive categories by judicial decision. The court may grant an injunction against a party properly before it where this is required to avoid injustice, just as the statute provides and just as the Court of Chancery did before 1875. 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 the 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 the light of today's conditions and standards, not those of yester-year.'
75. I have no doubt that the court has jurisdiction to grant a publicity order in favour of a non-infringer who has been granted a declaration of non-infringement. A declaration is a discretionary, equitable, remedy. The injunction is an adjunct to the declaration. It will not always be appropriate to grant it. Whether or not it is depends on all the circumstances of the case—as I said earlier where there is a real need to dispel commercial uncertainty. It is that test I propose to apply here."
Implementation of Article 8(3) of the Information Society Directive and Article 11 of the Enforcement Directive
"Regarding Article 8.3, it is already possible under UK law to seek injunctions against intermediaries. It is also possible to notify an intermediary of an injunction served on an infringer so that the intermediary is liable for contempt of court proceedings if he aids and abets an infringer. It is considered that this meets the requirements of Article 8.3."
"8.3 The consultation paper suggested that no specific action might be needed to implement Article 8.3, requiring that right owners be able to apply for injunctions against intermediaries whose services are used by third-parties to infringe rights, on the basis that it is already possible to seek such injunctions under common law in the UK. Right owner organisations generally expressed strong concern that, unless specific provision is made to implement Article 8.3, there would be uncertainty as to whether right owners can apply for injunctions, the more so because the Article 5.1 exception means that intermediaries will not themselves be infringing rights in the circumstances set out in that article. Some representatives of internet service providers, the main 'intermediaries' to whom A.8.3 relates, also sought clarity as to the position.
8.4 On further consideration, the Government has concluded that, in order to avoid uncertainty, Article 8.3 should be specifically implemented in UK law, by way of provisions in Parts I & II of the CDPA enabling the High Court (or Court of Session in Scotland) to grant injunctions against service providers, where the latter have actual knowledge of a third party using the service to infringe rights. …"
"No action is required.
The jurisdiction of the High Court to grant injunctions is derived from section 37(1) of the Supreme Court Act 1981. It may do so on such terms and conditions as it thinks fit (Section 37(2)).
A final injunction is usually granted to an intellectual property right holder who proves at trial that his rights have been infringed by the defendant (Chiron v Organon (No 10)  FSR 325 (as a general rule a defendant who interferes with a proprietary right will be injuncted).
(see earlier comments about intermediaries)."
"This wording in the Article repeats that found in Article 8(3) of Directive on the harmonisation of copyright and related rights in the information society11 [sic]. Article 8(3) was implemented by section 97A of the Copyright and Related Rights Regulation 200311 [sic]. Section 97A provides that the High Court shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright …"
This section of the document also states:
"No action is required.
The Supreme Court Act 1981, section 37 states that the High Court may, by order, whether interlocutory or final grant an injunction in all cases in which it is just and convenient to do so.
The court is only able to issue an interim injunction against a person against whom a cause of action exists. The following are the persons against whom a cause of action will exist and injunction may be made:
[Separate lists for copyright, patents, trade marks, design right and registered designs]".
Interpretation of section 37(1) in accordance with the third sentence of Article 11
"Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, does Article 11 …. require Member States to ensure that the trade mark proprietor can obtain an injunction against the intermediary to prevent further infringements of the said trade mark, as opposed to continuation of that specific act of infringement, and if so what is the scope of the injunction that shall be made available?"
"… in view of the fact, stated in the order for reference and referred to at paragraph 24 of this judgment, that the United Kingdom has not adopted specific rules to implement the third sentence of Article 11 …, the referring court will, when applying national law, be required to do so, as far as possible, in the light of the wording and the purpose of the third sentence of Article 11 (see, by analogy, Case C-106/89 Marleasing  ECR I-3135, paragraph 8, Joined Cases C-378/08 to C-380/07 Angelidaki and Others  ECR I-3071, paragraph 106)."
"In view of the foregoing, the answer to the tenth question is that the third sentence of Article 11 of Directive 2004/48 must be interpreted as requiring the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, dissuasive and must not create barriers to legitimate trade."
Provided for by law?
"The Court reiterates at the outset that the expression 'prescribed by law', within the meaning of Article 10 § 2, requires firstly that the impugned measure should have some basis in domestic law; however, it also refers to the quality of the law in question, requiring that it should be accessible to the person concerned, who must moreover be able to foresee its consequences, and that it should be compatible with the rule of law (see, among many other authorities, Dink v. Turkey, nos. 2668/07, 6102/08, 30079/08, 7072/09 and 7124/09, § 114, 14 September 2010). According to the Court's established case-law, a rule is 'foreseeable' if it is formulated with sufficient precision to enable any individual – if need be with appropriate advice – to regulate his conduct (see, among many other authorities, RTBF v. Belgium, no. 50084/06, § 103, ECHR 2011, and Altug Taner Akçam v. Turkey, no. 27520/07, § 87, 25 October 2011)."
See also Delfi v Estonia (2014) 58 EHRR 29 at -.
Threshold conditions for the exercise of the jurisdiction
Are the threshold conditions satisfied in the present case?
Are the ISPs intermediaries?
Are the operators of the Target Websites infringing the Trade Marks?
Do the operators of the Target Websites use the ISPs' services to infringe?
"Is the term 'intermediary' in Article 5(1)(a) and Article 8(3) of Directive [2001/29] to be interpreted as including an access provider who merely provides a user with access to the network by allocating him a dynamic IP address but does not himself provide him with any services such as email, FTP or file-sharing services and does not exercise any control, whether de iure or de facto, over the services which the user makes use of?"
"Tele2 maintains, inter alia, that intermediaries must be in a position to bring copyright infringements to an end. Internet access providers, on the other hand, in as much as they exercise no control, whether de iure or de facto, over the services accessed by the user, are not capable of bringing such infringements to an end and, accordingly, are not 'intermediaries' within the meaning of Directive 2001/29."
"42. … under Article 8(3) of Directive 2001/29, Member States are to ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.
43. Access providers who merely enable clients to access the Internet, even without offering other services or exercising any control, whether de iure or de facto, over the services which users make use of, provide a service capable of being used by a third party to infringe a copyright or related right, inasmuch as those access providers supply the user with the connection enabling him to infringe such rights.
44. Moreover, according to Recital 59 in the preamble to Directive 2001/29, rightholders should have the possibility of applying for an injunction against an intermediary who 'carries a third party's infringement of a protected work or other subject-matter in a network'. It is common ground that access providers, in granting access to the Internet, make it possible for such unauthorised material to be transmitted between a subscriber to that service and a third party.
45. That interpretation is borne out by the aim of Directive 2001/29 which, as is apparent in particular from Article 1(1) thereof, seeks to ensure the legal protection of copyright and related rights in the framework of the internal market. The protection sought by Directive 2001/29 would be substantially diminished if 'intermediaries', within the meaning of Article 8(3) of that directive, were to be construed as not covering access providers, which alone are in possession of the data making it possible to identify the users who have infringed those rights.
46. In view of the foregoing, the answer to the first question is that access providers which merely provide users with Internet access, without offering other services such as email, FTP or file-sharing services or exercising any control, whether de iure or de facto, over the services which users make use of, must be regarded as 'intermediaries' within the meaning of Article 8(3) of Directive 2001/29."
"Is Article 8(3) of Directive 2001/29/EC (the Information Society Directive) to be interpreted as meaning that a person who makes protected subject matter available on the internet without the rightholder's consent (Article 3(2) of the Information Society Directive) is using the services of the access providers of persons seeking access to that protected subject matter?"
"31. Having regard to the objective pursued by Directive 2001/29, as shown in particular by Recital 9 thereof, which is to guarantee rightholders a high level of protection, the concept of infringement thus used must be understood as including the case of protected subject-matter placed on the internet and made available to the public without the agreement of the rightholders at issue.
32. Accordingly, given that the internet service provider is an inevitable actor in any transmission of an infringement over the internet between one of its customers and a third party, since, in granting access to the network, it makes that transmission possible (see, to that effect, the order in Case C-557/07 LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten  ECR I-1227, paragraph 44), it must be held that an internet service provider, such as that at issue in the main proceedings, which allows its customers to access protected subject-matter made available to the public on the internet by a third party is an intermediary whose services are used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29.
33. Such a conclusion is borne out by the objective pursued by Directive 2001/29. To exclude internet service providers from the scope of Article 8(3) of Directive 2001/29 would substantially diminish the protection of rightholders sought by that directive (see, to that effect, order in LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten, paragraph 45).
34. That conclusion cannot be called into question by the argument that, for Article 8(3) of Directive 2001/29 to be applicable, there has to be a contractual link between the internet service provider and the person who infringed a copyright or related right.
35. Neither the wording of Article 8(3) nor any other provision of Directive 2001/29 indicates that a specific relationship between the person infringing copyright or a related right and the intermediary is required. Furthermore, that requirement cannot be inferred from the objectives pursued by that directive, given that to admit such a requirement would reduce the legal protection afforded to the rightholders at issue, whereas the objective of that directive, as is apparent inter alia from Recital 9 in its preamble, is precisely to guarantee them a high level of protection.
36. Nor is the conclusion reached by the Court in paragraph 30 of this judgment invalidated by the assertion that, in order to obtain the issue of an injunction against an internet service provider, the holders of a copyright or of a related right must show that some of the customers of that provider actually access, on the website at issue, the protected subject-matter made available to the public without the agreement of the rightholders.
37. Directive 2001/29 requires that the measures which the Member States must take in order to conform to that directive are aimed not only at bringing to an end infringements of copyright and of related rights, but also at preventing them (see, to that effect, Case C-70/10 Scarlet Extended  ECR I-11959, paragraph 31, and Case C-360/10 SABAM  ECR, paragraph 29).
38. Such a preventive effect presupposes that the holders of a copyright or of a related right may act without having to prove that the customers of an internet service provider actually access the protected subject-matter made available to the public without their agreement.
39. That is all the more so since the existence of an act of making a work available to the public presupposes only that the work was made available to the public; it is not decisive that persons who make up that public have actually had access to that work or not (see, to that effect, Case C-306/05 SGAE  ECR I-11519, paragraph 43)."
Do the ISPs have actual knowledge of this?
Principles to be applied
i) the relief must be necessary;
ii) the relief must be effective;
iii) the relief must be dissuasive;
iv) the relief must not be unnecessarily complicated or costly;
v) the relief must avoid barriers to legitimate trade;
vi) the relief must be fair and equitable and strike a "fair balance" between the applicable fundamental rights; and
vii) the relief must be proportionate.
"If the answer to the first question or the second question is in the affirmative and an injunction is therefore to be issued against the user's access provider in accordance with Article 8(3) of the Information Society Directive: is it compatible with Union law, in particular with the necessary balance between the parties' fundamental rights, to prohibit an access provider from allowing its customers access to a certain website (without ordering specific measures) as long as the material available on that website is provided exclusively or predominantly without the rightholder's consent, if the access provider can avoid incurring preventive penalties for breach of the prohibition by showing that it had nevertheless taken all reasonable measures?"
"45. In order to assess whether an injunction such as that at issue in the main proceedings, taken on the basis of Article 8(3) of Directive 2001/29, is consistent with EU law, it is … necessary to take account in particular of the requirements that stem from the protection of the applicable fundamental rights, and to do so in accordance with Article 51 of the Charter of Fundamental Rights of the European Union ('the Charter') (see, to that effect, Scarlet Extended, paragraph 41).
46. The Court has already ruled that, where several fundamental rights are at issue, the Member States must, when transposing a directive, ensure that they rely on an interpretation of the directive which allows a fair balance to be struck between the applicable fundamental rights protected by the European Union legal order. Then, when implementing the measures transposing that directive, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with that directive but also ensure that they do not rely on an interpretation of it which would be in conflict with those fundamental rights or with the other general principles of EU law, such as the principle of proportionality (see, to that effect, Case C-275/06 Promusicae  ECR I-271, paragraph 68).
47. In the present case, it must be observed that an injunction such as that at issue in the main proceedings, taken on the basis of Article 8(3) of Directive 2001/29, makes it necessary to strike a balance, primarily, between (i) copyrights and related rights, which are intellectual property and are therefore protected under Article 17(2) of the Charter, (ii) the freedom to conduct a business, which economic agents such as internet service providers enjoy under Article 16 of the Charter, and (iii) the freedom of information of internet users, whose protection is ensured by Article 11 of the Charter."
"56. In this respect, the 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.
57. It must be possible for national courts to check that that is the case. In the case of an injunction such as that at issue in the main proceedings, the Court notes that, if the internet service provider adopts measures which enable it to achieve the required prohibition, the national courts will not be able to carry out such a review at the stage of the enforcement proceedings if there is no challenge in that regard. Accordingly, in order to prevent the fundamental rights recognised by EU law from precluding the adoption of an injunction such as that at issue in the main proceedings, 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.
58. As regards intellectual property, it should be pointed out at the outset that it is possible that the enforcement of an injunction such as that in the main proceedings will not lead to a complete cessation of the infringements of the intellectual property right of the persons concerned.
59. First, as has been stated, the addressee of such an injunction has the possibility of avoiding liability, and thus of not adopting some measures that may be achievable, if those measures are not capable of being considered reasonable.
60. Secondly, it is possible that a means of putting a complete end to the infringements of the intellectual property right does not exist or is not in practice achievable, as a result of which some measures taken might be capable of being circumvented in one way or another.
61. The Court notes that there is nothing whatsoever in the wording of Article 17(2) of the Charter to suggest that the right to intellectual property is inviolable and must for that reason be absolutely protected (see, to that effect, Scarlet Extended, paragraph 43).
62. None the less, the measures which are taken by the addressee of an injunction, such as that at issue in the main proceedings, 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.
63. Consequently, even though the measures taken when implementing an injunction such as that at issue in the main proceedings are not capable of leading, in some circumstances, to a complete cessation of the infringements of the intellectual property right, they cannot however be considered to be incompatible with the requirement that a fair balance be found, in accordance with Article 52(1), in fine, of the Charter, between all applicable fundamental rights, provided that (i) they do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (ii) that they 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."
Not unnecessarily complicated or costly
"Accordingly, such an injunction would result in a serious infringement of the freedom of the ISP concerned to conduct its business since it would require that ISP to install a complicated, costly, permanent computer system at its own expense, which would also be contrary to the conditions laid down in Article 3(1) of Directive 2004/48, which requires that measures to ensure the respect of intellectual-property rights should not be unnecessarily complicated or costly."
See also Case C-360/10 Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA v Netlog NV  2 CMLR 18 at  and L'Oréal v eBay at .
Avoidance of barriers to legitimate trade
Fair and equitable and fair balance
"… 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."
"… First, the Claimants' copyrights are property rights protected by Article 1 of the First Protocol to the ECHR and intellectual property rights within Article 17(2) of the Charter. Secondly, the right to privacy under Article 8(1) ECHR/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) ECHR/Article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S  UKHL 47,  1 AC 593 at  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 ECHR/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."
i) The comparative importance of the rights that are engaged and the justifications for interfering with those rights.
ii) The availability of alternative measures which are less onerous.
iii) The efficacy of the measures which the orders require to be adopted by the ISPs, and in particular whether they will seriously discourage the ISPs' subscribers from accessing the Target Websites.
iv) The costs associated with those measures, and in particular the costs of implementing the measures.
v) The dissuasiveness of those measures.
vi) The impact of those measures on lawful users of the internet.
Safeguards against abuse
Application to the present case
The comparative importance of the rights engaged and the justifications for interfering with those rights
Availability of alternative measures
"Two consecutive consumer surveys provide insight into consumers' reactions to the intervention after three, six and ten months, as well as the reaction they expect shortly before blocking. The intervention can only affect consumers who download or intend to download from illegal sources, 27-28% over the past year. For this segment of the population, it is found that a large majority (70-72%) is non-responsive to blocking access to TPB. This is significantly more than consumers expect prior to the blocking. About half of those who report a response to the intervention state they download less, while a third state they stopped downloading altogether. The rest claim to download more as a result of the intervention.
This would suggest a small negative blocking effect of the intervention on the percentage of the population downloading from illegal sources. However, no such effect is found. Instead, the percentage downloading films & series, games and books from illegal sources in the preceding six months increased between May and November/December 2012, while downloading music from illegal sources remained constant. This implies that any behavioural change in response to blocking access to TPB has had no lasting net impact on the overall number of downloaders from illegal sources, as new consumers have started downloading from illegal sources and people learn to circumvent the blocking while new illegal sources may be launched, causing file sharing to increase again (relapse effect)."
"BitTorrent monitoring reveals only small changes in the distribution of Dutch peers over the different ISPs over the three measurements, which implies very limited effect of the intervention on BitTorrent file sharing."
"… even if the present application is successful, I think it is clear that rightholders will not undertake future applications lightly. On the contrary, I consider it probable that they will concentrate their resources on seeking relief in respect of the more egregious infringers. I therefore do not anticipate a flood of such applications."
Richemont contend that this prediction has been borne out by subsequent events, whereas the ISPs contend that it has been contradicted. On this point I agree with Richemont. Even taking into account the pending applications referred to in paragraphs 69-71 above, I do not consider that there has been a flood of applications over the past three years. It seems to me that the rightholders have indeed concentrated their resources on seeking relief in respect of the more egregious infringers.
Impact on lawful users
Overall assessment of proportionality
Safeguards against abuse