Intermediary Liability and Online Trade Mark Infringement: Emerging International Common Approaches

2020 ◽  
pp. 368-380
Author(s):  
Frederick Mostert
Keyword(s):  
Freedom Of Expression ◽  
Trade Mark ◽  
International Perspective ◽  
Fundamental Rights ◽  
Trade Mark Infringement ◽  
Intermediary Liability ◽  
Ius Gentium ◽  
Fair Balance ◽  
Blocking Injunctions ◽  
Voluntary Cooperation

This chapter discusses intermediary liability for trade mark infringement from an international perspective. Given that the lack of uniform international guidelines has made tackling counterfeits in a borderless digital environment even more challenging, this chapter shows that there are emerging intermediary liability common approaches at the international level for online trade mark infringement. The chapter outlines three common tenets that can be distilled into a transnational principle of intermediary liability, including knowledge-and-takedown obligations and availability of blocking injunctions. Further, this chapter discusses how this emerging common international principle is then coupled by a ius gentium of voluntary measures that results from voluntary cooperation between online intermediaries and rightholders to curb infringement. However, it is important to strike a fair balance with other fundamental rights, such as freedom of expression, information and lawful competition.

scholarly journals Intermediary Liability and Trade Mark Infringement: Proliferation of Filter Obligations in Civil Law Jurisdictions?

2020 ◽  
pp. 380-403
Author(s):  
Martin Senftleben
Keyword(s):  
Freedom Of Expression ◽  
Civil Law ◽  
Trade Mark ◽  
The European Union ◽  
Trade Mark Infringement ◽  
Consumer Confusion ◽  
Trade Mark Law ◽  
Intermediary Liability ◽  
Principle Of Proportionality ◽  
Context Specific

This chapter discusses intermediary liability and trade mark infringement from a civil law perspective, while highlighting differences and commonalities of trade mark and copyright enforcement online. The chapter considers first how the infringement test in EU trade mark law is more context-specific than the infringement analysis in copyright law and how limitations of trade mark rights provide room for unauthorized use that serves (commercial) freedom of expression and freedom of competition. In this context, this chapter looks into the use of filtering mechanisms and how they might wash away these important nuances of the scope of trade mark protection. Again, the chapter makes a distinction between legitimate comparative advertising and infringing consumer confusion, legitimate brand criticism and infringing defamation, legitimate offers of second-hand goods and infringing sales of replicas in order to consider the threshold when trade mark owners obtain overbroad protection. Further, this chapter reviews leading case law of the Court of Justice of the European Union on the question of intermediary liability and filter obligations that points towards a cautious approach in trade mark cases—an approach that does not undermine the inherent limits and statutory limitations of trade mark rights. However, examples of court decisions in civil law jurisdictions, such as Germany, show a tendency of developing national doctrines that allow the imposition of more extensive filtering duties. Against this background, the chapter concludes by considering whether a balanced approach based on the principle of proportionality should prevail in trade mark cases.

Intermediary Liability and Trade Mark Infringement: A Common Law Perspective

2020 ◽  
pp. 403-420
Author(s):  
Richard Arnold
Keyword(s):  
Common Law ◽  
Case Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Legal Principles ◽  
Trade Mark Infringement ◽  
Trade Mark Law ◽  
Intermediary Liability ◽  
Eu Trade Mark Law ◽  
Blocking Injunctions

This chapter discusses UK case law in the domain of intermediary liability and trade mark infringement, while situating this common law perspective within EU trade mark law, the e-Commerce Directive, and the Enforcement Directive. The chapter first describes liability stemming from legal principles which are not particular to intermediaries, including primary and accessory liability of online intermediaries for trade mark infringement. Later, the chapter reviews liability depending on the application of principles which are specific to intermediaries, the intermediary liability proper. In this context, the chapter looks into injunctions against intermediaries whose services are used to infringe trade marks that are made available in national jurisdictions under the implementation of Article 11 of the Enforcement Directive. Although other kinds of injunctions against intermediaries are available, the chapter focuses on website-blocking injunctions, which have been recently ported from the copyright domain, where they have been more traditionally deployed, to the trade mark domain.

Intermediary Liability and Fundamental Rights

2020 ◽  
pp. 137-152
Author(s):  
Christophe Geiger ◽  
Giancarlo Frosio ◽  
Elena Izyumenko
Keyword(s):  
Freedom Of Expression ◽  
Legal Framework ◽  
Fundamental Rights ◽  
Fine Tuning ◽  
Intermediary Liability ◽  
The Right

This chapter sets the stage for considering the tension between intermediary liability and fundamental rights with special emphasis on the European legal framework. Competing fundamental rights, such as freedom of expression, privacy, freedom of business, and the right to property are entangled with the intermediary liability conundrum. Policymakers are still in search of a balanced and proportional fine-tuning of online intermediaries’ regulation that might address the miscellaneous interests of all stakeholders involved, with special emphasis on users’ rights. In this context, the increasing reliance on automated enforcement technologies, which will be the topic of further review in multiple chapters throughout the Handbook, might set in motion dystopian scenarios where users’ fundamental rights are heavily undermined.

Sketching the outline of a ghost: the fair balance between copyright and fundamental rights in intermediary third party liability

Info ◽  
2015 ◽  
Vol 17 (6) ◽  
pp. 72-96 ◽  
Author(s):  
Christina Angelopoulos
Keyword(s):  
Design Methodology ◽  
Fundamental Rights ◽  
Third Party ◽  
Content Type ◽  
Underdeveloped Area ◽  
Legal Method ◽  
Practical Effect ◽  
Intermediary Liability ◽  
Copyright Enforcement ◽  
Fair Balance

Purpose – The purpose of this article is to analyse the concept of a fair balance between conflicting fundamental rights in the context of intermediary liability for third party copyright infringement. Design/methodology/approach – European Legal Method. Findings – Fair balance is the appropriate conflict resolution mechanism in cases of fundamental rights clashes. Balancing is in essence a call for rational judicial deliberation. In intermediary liability, balancing excludes the imposition of filtering obligations on intermediaries for the purpose of copyright enforcement, but allows blocking. Originality/value – An in-depth look at a complicated, vague and underdeveloped area of law with significant practical effect.

scholarly journals To Filter or Not to Filter? That Is the Question in EU Copyright Reform

2017 ◽  
Author(s):  
Giancarlo Frosio
Keyword(s):  
Freedom Of Expression ◽  
Case Law ◽  
Fundamental Rights ◽  
Digital Environment ◽  
Negative Externalities ◽  
Liability Rule ◽  
The Public ◽  
Alternative Proposal ◽  
Intermediary Liability ◽  
The Eu

This article discusses the proposed introduction in EU law of an obligation for hosting providers to conclude licencing agreements with copyright holders and ensure their functioning by taking effective technological measures — such as content id technologies — to prevent copyright infringement on online platforms. This proposal is included in Article 13 — and accompanying Recitals — of the European Commission’s Draft Directive on Copyright in the Digital Single Market of September 14, 2016, which forms an important part of the ongoing EU copyright reform. This article highlights the shortcoming of this proposed reform, which might fall short in terms of clarity, consistency with the EU acquis, appropriacy and proportionality. In doing so, the article discusses recent CJEU case law — such as GSMedia, Ziggo and Filmspeler — struggling with the notion of communication to the public in the digital environment. It highlights systemic inconsistencies between the traditional knowledge-and-take-down negligence-based intermediary liability system and the introduction of filtering and monitoring obligations. The article examines the appropriacy of filtering — and monitoring — measures within a fundamental rights perspective by considering proportionality between property rights’ enforcement and competing fundamental rights — such as freedom of expression, freedom of business and privacy. The critical review of the proposed reform serves as an opportunity to briefly advance an alternative proposal seeking a more pragmatical engagement with technological change through an arrangement enforcing a liability rule or an apportionment of profits and producing value for creators out of platform economy’s virality, while limiting negative externalities on users’ rights.

scholarly journals The Death of ‘No Monitoring Obligations’: A Story of Untameable Monsters

2017 ◽  
Author(s):  
Giancarlo Frosio
Keyword(s):  
Due Process ◽  
Freedom Of Expression ◽  
Strict Liability ◽  
Single Market ◽  
Fundamental Rights ◽  
Market Strategy ◽  
Online Platforms ◽  
Legislative Proposals ◽  
Intermediary Liability ◽  
Proactive Monitoring

In imposing a strict liability regime for alleged copyright infringement occurring on YouTube, Justice Salomão of the Brazilian Superior Tribunal de Justiça stated that “if Google created an ‘untameable monster,’ it should be the only one charged with any disastrous consequences generated by the lack of control of the users of its websites.” In order to tame the monster, the Brazilian Superior Court had to impose monitoring obligations on YouTube. This was not an isolated case. Proactive monitoring and filtering found their way in the legal system as a privileged enforcement strategy through legislation, judicial decisions and private ordering. In multiple jurisdictions, recent case law has imposed proactive monitor obligations on intermediaries. These cases uphold proactive monitoring across the entire spectrum of intermediary liability subject matters: intellectual property, privacy, defamation, and hate/dangerous speech. In this context, however, notable exceptions—such as the landmark Belen case in Argentina—highlight also a fragmented international response. Legislative proposals have been following suit. As part of its Digital Single Market Strategy, the European Commission, would like to introduce filtering obligations for intermediaries to close a “value gap” between rightholders and online platforms allegedly exploiting protected content. In addition, proactive monitoring and filtering obligations would also feature in an update of the European audio-visual media legislation. Meanwhile, online platforms have already set up miscellaneous filtering schemes on a voluntary basis.In this paper, I suggest that we are witnessing the death of “no monitoring obligations,” a well-marked trend in intermediary liability policy. Current Internet policy—especially in Europe—is silently drifting away from a fundamental safeguard for freedom of expression online. In this respect, this paper would like to contextualize this trend within the emergence of a broader move towards private enforcement online. The EU Digital Single Market Strategy apparently endorsed voluntary measures as a privileged tool to curb illicit and infringing activities online. As I argued elsewhere, the intermediary liability discourse is shifting towards an intermediary responsibility discourse. This process might be pushing an amorphous notion of responsibility that incentivizes intermediaries’ self-intervention. In addition, filtering and monitoring will be dealt almost exclusively by intermediaries through automatic infringement assessment systems. Due process and fundamental guarantees get mauled by algorithmic enforcement, limiting enjoyment of exceptions and limitations, use of public domain works, and silencing speech according to the mainstream ethical discourse. The upcoming reform—and the border move that it portends—might finally slay “no monitoring obligations” and fundamental rights online, together with the untameable monster.

Intermediary liability for trade mark infringement in India: the Louboutin case

2020 ◽  
Vol 15 (3) ◽  
pp. 150-152
Author(s):  
Aklovya Panwar ◽  
Ashwini Gehlot
Keyword(s):  
Trade Mark ◽  
High Court ◽  
Trade Mark Infringement ◽  
Intermediary Liability ◽  
First Time

Abstract Christian Louboutin SAS v Nakul Bajaj and Ors, CS (COMM) 344/2018, Delhi High Court (Prathiba M Singh J), 2 November 2018 In Christian Louboutin SAS v Nakul Bajaj and Ors, the Delhi High Court has given for the first time an indispensable ruling to clarify the responsibility and liability of online intermediaries for trade mark infringement. In a subsequent judgment in L’Oreal v Brandworld & Anr (CS(COMM) 980/2016, Prathiba M Singh J, 12 November 2018), the same court has confirmed the approach taken in Louboutin.

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