The luxury conglomerate behind Cartier jewellery and Montblanc watches is taking high court action to stop British citizens from seeing websites selling counterfeit goods, in a landmark case that broadband providers fear could change the content of the internet.
Richemont, which also owns the fashion label Chloe and the Shanghai Tang department stores, has ordered the big five home broadband companies – BT, Virgin Media, Sky, TalkTalk and EE – to block access to seven sites selling fake versions of its watches and jewellery.
The Geneva-based Richemont is asking the industry to police the sale of its goods using a similar system of injunctions to the one that blocks websites offering pirated music and films. Operators argue there could be implications for online marketplaces such as eBay and Gumtree, where genuine branded goods are traded alongside some counterfeits, or for the purchase of patented medicines online.
“If websites are to be blocked like this, then parliament ought to debate it first,” said the internet campaigner Jim Killock, the executive director of the Open Rights Group. “This law isn’t designed for trademark infringement, which is an entirely different activity to copyright infringement.”
One of the seven websites Richemont wants taken down is CartierLoveOnline.com, which sells reproductions of its bestselling Love bracelet. The names of the others have not been disclosed to the Guardian.
Since 2012, legal pressure has forced British broadband providers to routinely take down links to websites offering illegal downloads of games, books, music, films and television series.
Once judges have been persuaded that an organisation such as The Pirate Bay is breaching copyright, any future internet addresses associated with it are simply added to the banned list and can be blocked without a new court ruling.
Richemont is understood to be arguing that under section 37(1) of the Senior Courts Act 1981, broadband companies should be subject to piracy-style injunctions when trademarks are breached.
Gareth Mead, a spokesperson for Virgin Media said: “This claim raises untested legal issues and we believe it should be carefully scrutinised by the courts.”
A spokesman for BT said: “We’re fully supportive of trademark and copyright protection, however we believe a thorough review should be given to any such requests that could affect online content. We’re reviewing the claim and will respond in due course.”
The case follows the settlement in February of a seven-year battle by the French cosmetics company L’Oréal, which sought to have counterfeits of its brands removed from eBay. The European court of justice said in 2011 that eBay was not exempt from liability if it had knowledge and control over information about infringing items on its sites.
Toby Headdon, an intellectual property expert at Berwin Leighton Paisner, said: “This is all about a big tussle that is taking place between rights owners and internet service providers about who has to bear responsibility for tackling all this activity online. The pendulum is swinging in favour of the rights owners now.”
On a site such as eBay, where some counterfeit goods appear alongside of millions of legitimate items, injunctions will be difficult to impose. Experts say the case could also have implications for websites selling medicines across borders that may be protected by patent in one country, but generic in another.
Killock said: “It’s better to simply prosecute the company involved and understand what they are doing. Injunctions of this sort are half measures because they don’t stop the company involved from existing and operating, and the people potentially being criminalised aren’t necessarily being heard.”
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