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

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.

Intermediary Liability and Trade Mark Infringement: A Common Law Perspective

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.

A Taxonomy of Internet Intermediaries

Overview. This chapter introduces the concept of an internet intermediary and situates their activities within the layered, modular network architecture of the internet. The services considered in this work take many forms, ranging from operators of network equipment to administrators of bulletin boards. Not all providers of internet services are properly described as ‘intermediaries’ as such, and are not necessarily to be treated comparably. Services may consist of different activities or contribute in different ways to wrongdoing. Some entities supply many distinct services which vary in their complexity, control, mental state, and degree of passivity. This makes it crucial to describe these activities accurately and with precision. As Arnold J has explained in the context of blocking injunctions, when considering questions of intermediary liability ‘it is important to consider the nature of the infringing act and its relationship with the service in question’.

Website Blocking in Europe

This chapter considers website blocking practices in European nations besides the United Kingdom. Most member states have enacted legislation to permit courts or administrative authorities to issue website blocking injunctions in some form. The majority of these statutory remedies are restricted to the enforcement of copyright and related rights, but some target other rights or pursue public policies such as the regulation of online gaming or the prohibition of images depicting child abuse. In some jurisdictions, blocking orders are available without any specific legislative basis, pursuant to ordinary rules governing injunctive relief.