Columbia Pictures Industries, Inc & Ors v British Telecommunications & Ors

An injunction blocking identified websites used overwhelmingly for copyright infringement may be extended to websites with colourably similar names where the extension is necessary, effective and dissuasive, proportionate, practicable for internet service providers, and safeguarded against abuse.

The court must protect legitimate trade and strike a fair balance between competing fundamental rights. Certification requirements and other safeguards may justify relief against websites not individually identified in the original order.

Movie studios applied under section 97A of the Copyright Designs and Patents Act 1988 for website-blocking orders against internet service providers. Relief against part 1 target websites followed the conventional form previously granted by the High Court. The application also sought an extension covering part 2 websites with similar, but not identical, domain names.

The respondents did not oppose the relief. The central issue was whether the proposed extension, together with certification requirements and other safeguards, was an appropriate exercise of the court’s discretion.

1. The application was granted. The court made the proposed order, including the extension of blocking relief to part 2 target websites.
2. The practical problem was that, after specifically targeted websites were blocked, websites with very similar names could attract the displaced traffic. The fact that the copycat websites might be operated by different persons did not prevent the problem from being legally relevant.
3. The extension was assessed under the court’s discretion and proportionality principles. An injunction should be necessary, effective, dissuasive, practicable to implement, not unduly costly or complicated, protective of legitimate trade, proportionate, and safeguarded against abuse. These considerations reflected Nintendo [2019] EWHC 2376 (Ch), as cited through Columbia Pictures v BT [2021] EWHC 2799 (Ch).
4. The proposed safeguards required certification that a part 2 website was used solely for infringement, operated in the same way as a part 1 website, involved infringement of the applicants’ copyright, and satisfied confidential conditions limiting certification to a colourably similar name. The injunction was therefore sufficiently targeted.
5. The relief was necessary because the earlier form of order did not adequately address the replacement websites. It was efficacious because it directly targeted them, dissuasive because the ISPs had to display information about the block, and straightforward for the ISPs to implement. Since the websites were overwhelmingly infringing, legitimate trade would not be materially impeded. The safeguards were adjusted to reduce that risk further, and the overall balance was fair.
6. The extension was described as a modest but important development of established relief. Any broader future regime would require assessment against the same principles.