Blocking websites selling fake watches in France : the harassing fight against counterfeiting
Groupe Richemont, hand in hand with some of the brands that compose it (Cartier, Mont-Blanc, Officine Panerai, Vacheron Constantin, Piaget, and IWC Schaffhausen), had identified websites selling watches on which their brands were affixed without their consent, namely contrefaconmontre.com, repliquefrance.com, and repliquemontre.cn. Groupe Richemont sued Orange, Bouygues Telecom, SFR and Free for interim measures before what was still called the President of the Paris Tribunal of First Instance (in the meantime, the institution was renamed “President of the Paris Judiciary Court”). Orange, Bouygues Telecom, SFR and Free are Internet service providers (ISPs) for France. Groupe Richemont was not suing ISPs for counterfeiting but wanted them to be ordered to take all necessary measures to prevent the accessibility of the websites concerned on French territory.
The President of the Paris Judicial Court issued his order on January 8, 2020 (Legalis.net, in French). Discussions focused on: the legal basis for the blocking request, the patently unlawful act, and the blocking measures requested. Groupe Richemont was successful, but the road was strewn with pitfalls, and the measures granted, although essential, can only produce a partial result.
The legal basis for the blocking request
Groupe Richemont formulated its request on the ground of articles:
- 6.I.5 of French law n° 2004-575 of June 21, 2004, known as the law to support confidence in the digital economy (LCEN), which is the transposition of Directive 2000/31/EC of the European Parliament and of the Council of June 8 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market; and
- 809 of the Code of Civil Procedure.
Bouygues Telecom, SFR and Free have not argued on this issue. However, Orange disputed the legal basis for a blocking request, claiming that such a measure should be based on Article L. 716-6 of the Code of intellectual property. The later is the transposition of Article 9 of Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004, on the enforcement of intellectual property rights. The judge rejected Orange’s argument. In summary, for the President of the Judicial Paris Court, the provisions of Directive 2004/48 do not affect those of Directive 2000/31, so that the provisions of the Intellectual Property Code do not affect those of the LCEN:
“ORANGE fails to demonstrate that both the European legislator and the national legislator necessarily and implicitly intended to exclude respectively the provisions of Directive 2000/31/EC and the provisions of Article 6.I.8 ° of the law supporting the confidence in the digital economy, by setting out a special trademark rule, in Article 9 of Directive 2004/48/EC and Article L. 716-6 of the Intellectual Property Code. Requests for blocking of access to certain domain names can, therefore, be based on articles 809 of the Code of civil procedure and 6.I.8° of the law supporting the confidence in the Digital Economy”.
A patently unlawful act
Proof of the existence of a patently unlawful act involved demonstrating, on the one hand, the accessibility of the concerned websites on French territory and, on the other hand, counterfeiting acts.
Concerning the accessibility of the websites on French territory, the set of corroborating evidence was made up with the following elements:
- domain names are written in French;
- websites are written in French; and
- the display of prices in euros.
Note that the .CN ccTLD (China) of the repliquemontre.cn domain name did not constitute an obstacle to the recognition of the accessibility of the website for French consumers for the simple reason that this domain name was written in French.
As for the existence of the counterfeiting acts, it was enough to discern that the authors/publishers of the websites contrefaconmontre.com, repliquefrance.com, and repliquemontre.cn made an extensive use of the richness of the lexical field of counterfeiting with words such as “counterfeit”, “copy”, “replica”, “false”, “fake”, “cheap” and “promo”. By doing so, the purpose of counterfeiters was obviously to optimize search engine indexing of the websites.
Article 6-8 of Law No. 2004-575 of June 21, 2004 on confidence in the digital economy provides:
“The judicial authority can prescribe in summary procedure or on request, to any natural or legal person who ensures, even free of charge, for making available to the public by online communication services, the storage of signals, writings, of images, sounds or messages of any kind provided by recipients of these services or, failing this, any person whose activity is to provide access to communication services to the public online, all measures specific to prevent damage or stop damage caused by the content of an online public communication service. “
The President of the Paris Judicial Court recalled that the principle of subsidiarity “presupposes that those who claim to be the victim of an infringement of their rights and who request a measure from internet service providers establish the impossibility of acting effectively and quickly against the host, as well as against the publisher or author of the content in question”.
Groupe Richemont has demonstrated that it has deployed all the means it had in its possession to stop the infringement of its trademark rights.
Indeed, the Claimant had requested the hosts of the disputed websites, namely Cloudfare, Inc. (for contrefaconmontre.com), Enzu Inc. (for repliquefrance.com) and Choopa, LLC (also for repliquefrance.com), so that it could proceed to their blockage. The notification to Enzu Inc. was successful, and repliquefrance.com was blocked. However, thereafter, the authors/publishers of repliquefrance.com had probably moved to Choopa, which did not respond to notifications from Groupe Richemont. Similarly, the notification made by the latter to Cloudfare for the site contrefaconmontre.com had been unsuccessful.
In addition, the Claimant sent a letter of formal notice to the electronic address appearing on the whois file for the domain name repliquemontre.cn. But this attempt had proven unsuccessful.
Finally, the judge also noted that the authors/publishers of the concerned websites, who were obviously aware of the illegal nature of their activities, had done everything to remain unreachable: lack of compulsory legal notices, absence of contact point, and domain names registered anonymously.
The President of the Paris Judicial Court concluded, on the one hand, that Groupe Richemont had justified that it was “unable to formulate against the authors/publishers of these sites, requests for conviction under penalty to put an end to the alleged damage” and, on the other hand, that “the measure blocking the domain names repliquefrance.com and contrefaconmontre.fr against internet service providers [was] strictly necessary“.
The judge then adopted the following injunction measure:
“[Internet service providers] will be enjoined to implement and/or cause to be implemented, all measures capable of preventing access, from French territory, by their subscribers, by reason of a contract signed in this territory, by any effective means of their choice, to the domain names contrefaconmontre.com, repliquemontre.fr, and repliquemontre.cn. These measures must be implemented without delay and at the latest at the end of 15 days following the service of this decision, and for a period of 12 months”.
The plaintiff had, for a time, included in its request a penalty payment accompanied by financial penalties per day of delay in the accomplishment of the blocking of illegal sites. However, it appears that Groupe Richemont has abandoned this request. Such a decision is more than welcomed because the fight against counterfeiting, to be effective, requires peaceful cooperation from all actors.
The Claimant was successful, which is to be welcomed. However, is blocking sites on French territory sufficient? One thing is certain: this measure seemed necessary as the French market was targeted by counterfeiters. Necessary because it was important to exercise the most radical measures to protect investment, reduce financial losses, and preserve the image of the various brands. Necessary, certainly, but insufficient, for two reasons, at least.
First, the most recent studies by the Organisation Internationale de la Francophonie estimate that the number of French speakers exceeds 300 million (Organisation internationale de la Francophonie, La langue française dans le monde 2015-2018, Gallimard, 2019, p. 13). In other words, the blocking makes the sites inaccessible to only 22% of French speakers, notwithstanding the fact that the purchase of a watch does not systematically require a high command of the language in which the sales offer is written. Of course, to achieve more satisfactory results, one should also take into account the Internet penetration rate and purchasing power. In the same vein, one might question the real effectiveness of a blocking measure, which would be pronounced by an American judge or by an English judge. While the target markets are undeniably Europe and North America, it should be kept in mind that counterfeiters are gradually investing in emerging markets. In this regard, the incredible increase in counterfeit medicines on the African continent is as striking as it is disastrous.
Second, authors/publishers of illegal sites are always free to move from a host to another host. In addition, there is the infinite possibility of registering and using new domain names. In order to truly fight counterfeiting, holders of intellectual property rights can only rely on international instruments. Yet among the myriad of bilateral and multilateral treaties that are more or less intended to protect and enhance intellectual property, none is exclusively aimed at combating counterfeiting on a global scale. Such a legal instrument is of primary importance. It could, at a minimum, strengthen international cooperation (particularly concerning the information necessary for the identification of counterfeiters) and guarantee the recognition and enforcement of judgments in all signatory countries, which would also guarantee a certain level of penalty and compensation. Other measures deserve to be adopted, foremost among which should be: i) verification of the identity of traders and; ii) the ban on using anonymous means of payment to buy domain names or to pay a host. The strong cooperation of actors in the banking/finance sector is crucial.
It must be admitted that, despite all the goodwill of the very many institutions daily involved in global cooperation, the results of the fight against counterfeiting will remain fragmentary as long as the States are not armed with an international instrument specifically dedicated to this cause.