Reconsidering the law of contributory liability on the internet: analysis on the trade mark issues, challenges and the remedy

Genc, Berrak (2018) Reconsidering the law of contributory liability on the internet: analysis on the trade mark issues, challenges and the remedy. Doctoral thesis (PhD), University of Sussex.

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Contributory liability is the liability of a party who is not the direct infringer, but who facilitates or contributes to the infringement committed by the direct infringer. With respect to trade marks, neither EU law nor national laws of member states (MS) provide specific rules to deal with the issue except very limited circumstances. Thus, the question of contributory trade mark liability is assessed under tort law rules. In that regard, the law seems straightforward. Yet, it is not. This is because, contributory liability now mainly arises in a new context: the Internet. Except from the cases of where the occurrence of a direct infringement of trade mark is questionable eg selling and buying keywords, Internet intermediaries’ liability arise as contributory liability since they are the vehicles to facilitate transactions between third parties on the Internet. Here, it should be underlined that the thesis’ scope is limited to the cases where it is unquestionable that the direct trade mark infringement has taken place, so the intermediaries’ contributory liability is an issue. More precisely the cases dealing with selling of counterfeit goods. In those circumstances, trade mark owners have been seeking to fix the liability of an intermediary rather than the direct infringers themselves since reaching the latter is not always possible as they can easily remain anonymous or be located in jurisdictions which are not easily accessible for right holders. This is why, intermediaries have been the subject of contributory liability cases. As such, how should their liability be examined given that their involvement does not go beyond providing a necessary platform and infrastructure? How can their involvement be assessed as the Internet’s infrastructure differs from that of the offline world?
For these questions that arise from contributory trade mark liability, there are two legal instruments applicable within the EU: 1) tort laws of the MSs, and 2) pan-EU immunity regime established by the E-Commerce Directive 2000/31. The first is also applicable to the offline world while the latter provides a more Internet-specific approach as it establishes horizontally applicable safe harbour rules for certain activities of intermediaries. According to the Directive, intermediaries which provide mere conduit, caching and hosting services can be granted immunity from the liability arising from its users’ infringements provided that the conditions stated under each Article are qualified. However, the immunity is provided as an additional protection meaning that not qualifying for immunity does not automatically result in the liability of an intermediary. Thus, whether an intermediary is liable or not is ultimately a subject of tort law of the MSs which is not harmonised within the EU.
Thus, the law of contributory trade mark liability in the EU appears to be incoherent. On the one hand, the immunity rules govern when an intermediary would be granted immunity from liability and apply horizontally. On the other hand, tort law rules deal with the question of contributory liability but differ from one MS to another. Therefore, an analysis on existing law appears necessary in order to build the legal framework more systematically by demonstrating how it is applied. Yet, this analysis shall be undertaken to answer whether the current regime proves to be satisfactory in dealing with ongoing and emerging issues that the Internet brings and finally what the remedy would be for the issues where the law falls short in dealing them. These are the questions that have been neglected by the EU legislators. This thesis therefore undertakes this examination in the pursuit of answers to these questions and ultimately the remedy.

Item Type: Thesis (Doctoral)
Schools and Departments: School of Law, Politics and Sociology > Law
Subjects: K Law > K Law in General. Comparative and uniform Law. Jurisprudence > K0520 Comparative law. International uniform law > K1401 Intellectual property
Depositing User: Library Cataloguing
Date Deposited: 10 Dec 2018 11:26
Last Modified: 10 Dec 2018 11:26

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