Brussels, 13/07/2011 (Agence Europe) - Internet marketplace operators may be held responsible for infringements of copyright law if they have had an “active role” which is likely to confer upon them a knowledge or control of information regarding products and services offered through their platform. The national jurisdictions should be able to call upon them to take measures aiming not only to put an end to any infringements of intellectual property rights, but also to prevent further infringements of this nature. This ruling of the Court of Justice of the EU, which was returned on Tuesday 12 July in Case C-324/09, is to become case-law as regards the obligations and responsibilities of marketplace operators on the internet, a subject which is still largely without any defined legislation.
The court had to answer a number of questions from the High Court of Justice (England and Wales), which approached it with regard to a dispute between the French cosmetics group L'Oreal and the company eBay, which operates a global electronic marketplace on the internet. L'Oreal distributes products through a closed distribution network, within which it is not permitted for accredited distributors to supply products to other distributors. The French group is accusing eBay of being involved in the infringements of trademark law committed by users of its site. Additionally, by buying keywords corresponding to the names of L'Oreal brands from chargeable referencing services (such as Google's AdWords system), eBay is directing its users towards products which contravene trademark law, offered for sale on its internet site. Additionally, L'Oreal takes the view that the efforts made by eBay to prevent the sales of counterfeit products on its site are inadequate. Among the various forms of infringement identified are the sale and offer for sale, to consumers within the Union, of branded L'Oreal products intended by L'Oreal for sale in third states (parallel importation).
In its ruling, the court firstly indicates that the trademark owner can only invoke its exclusive right over a physical person who sells branded products online if these sales take place within the context of the commercial activity, in other words when they exceed the sphere of private activity in terms of volume and frequency. It goes on to state that the rules of the Union on trademarks apply to offers for sale and advertising for trademarked products carried out by third states to consumers of the Union. As regards the responsibility of the operator of an internet marketplace, it takes the view that this does not in itself constitute a use of trademarks in the sense of EU legislation if a service is offered which consists simply of allowing its clients to place on its website, in the framework of their offers for sale, signs corresponding to trademarks. However, the operator's responsibility is engaged if it plays an active role likely to give it knowledge or control of the data regarding these offers, when it lends assistance which may consist, amongst other things, of optimising the presentation of the offers for sale in question or to promote them. And even if it has not played this active role, the operator's responsibility would be engaged if it had knowledge of facts or circumstances, on the basis of which a diligent economic operator should have noted the illegal nature of the offers for sale in question, and had failed to act to remove the offending data from its website, or to block them. The competent national jurisdictions are authorised, in such cases, to order it to facilitate the identification of the clients and to order an end to the infringements of intellectual property rights and prevent them from happening again. These injunctions must be effective, proportionate, dissuasive and should not create obstacles to legitimate trade, the court concludes. (F.G./transl.fl)