In Rem Injunctions:Case of website blocking

PhD Candidate at IMPRS-CIMax Planck Institute for IP & Competition law

Martin Husovec Dallas, May 2013

'Derailing injunctions from tort law'

Courtesy of Prof. Zittrain

EU law

● Art. 11 of Enforcement & Art. 8(3) of InfoSoc Directive:

“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.”

● European Commission (Official report on Enforcement Directive):

'[..] neither Article 11 (third sentence) of the Directive, nor Article 8(3) of Directive 2001/29 link injunctions with the liability of an intermediary. [..] Injunctions against intermediaries are not intended as a penalty against them, but are simply based on the fact that such intermediaries (e.g. Internet service providers) are in certain cases in the best position to stop or to prevent an infringement.'

Remedy landscape

Entitlement extension

actor non-actor

fault

no-fault

Blue: US tort law scope (contributory & vicarious liability);

● by extending the enforceability of the right, extends also the property entitlement

Injunctions as 'actio in rem'

● how can we explain injunctions against non-infringing persons?

● tort law centric vs. 'in rem' paradigm

● action in rem as a remedy of law of property, and not law of torts

● 'in rem action' focus on a factual situation of disharmony between law and reality, not on a person and his conduct that lead to that situation [rei vindicatio vs. tort of conversion];

● with tort-law centric system of injunctions, the right is naked (not enforceable) in certain situations, although de iure, it's exclusionary power is effective towards all (erga omnes).

● question for injunctive reliefs: who has factual and legal possibility to stop infringements;

● injunction is seen as remedy directly supporting a legal right of a private individual, rather than a sanction for wrongful behaviour;

Canonical example

Practice of website blocking injunctions

● at least 8 European jurisdictions

How does it work?

● civil proceedings of private plaintiffs holding copyright or trade mark rights against the Internet access providers, who as defendants are asked to employ certain technical means to make the access to disputed websites more difficult for its subscribers;

● Internet access providers, who are not liable in terms of tort law (legal bases: Art. 8(3), Art. 11);

● targeted website operator is usually not part of the proceedings;

Effective remedy?

Three technical methods:

● DNS blocking (black-lists a DNS record);

● IP address blocking (black-lists an IP address);

● Deep Packet Inspection (scans packets and black-lists them);

Two ways of formulating injunctions:

● Fixed = naming exact domain name or IP address;

● Open formulated = identifying the service, but asking to block any future IP address or domain name;

Concerned subject matter:

● Copyright (big user demand);

● Trade marks (usually smaller user demand);

(Some) problems

x website operator can not defend himself before the block is granted and does not have a remedy to challenge such blocks ex post [vs. right to a fair trail];

x website operator's right to engage in commercial activities, his property rights or other rights as a private individual (e.g. free speech), can be interfered with by such a blockade.

x plaintiffs can abuse injunctions by preferring to sue for website blocking even if tort law would work for them (e.g. website block instead of a lawsuit against a domain name holder);

x who will defend blocked innovations?

x who will review application of open formulated website blocks?

View of industry

Yahoo!: "[..] disproportionate injunctions are being imposed by the courts on online intermediaries. Such injunctions are very damaging for online intermediaries, even if they are not, per se, liable. [..] For online intermediaries, legal liability per se is not key, but rather the effect of injunctions on their business. Therefore, reassurances from rightholders that injunctions need not be linked to liability are of no comfort if these injunctions cause economic damage and oblige them to take decisions on the legality of content, which would damage the fundamental rights of Internet users." (Public Hearing on IPRED)

Summary

● right holders see that there are certain persons in the infrastructure of the Internet economy who have technical and legal means and resources to reduce negative externalities impacting upon their rights, but are too far for the tort-law;

● thus they demand a private enforcement tool also against them; in rem injunctions are such a tool;

● if it's legitimate as separate independent remedy is questionable; It certainly creates lot of new problems;

● if we now shift to this new paradigm of injunctions, we should also start discussing new positive intellectual property limitations not only on the level of the scope of the right, but also on the level of the scope of it's enforcement.

Thank you for your attention!

[Blog] www.husovec.eu

[Email] martin@husovec.eu