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A Comparative Analysis of the Secondary Liability of Online Service Providers

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Book cover Secondary Liability of Internet Service Providers

Part of the book series: Ius Comparatum – Global Studies in Comparative Law ((GSCL,volume 25))

Abstract

This Chapter analyzes the secondary liability of online service providers from a comparative perspective, drawing on national reports on the question submitted to the Annual Congress of the International Academy of Comparative Law.

This Chapter draws heavily on national reports prepared by national reporters in advance of the Congress of the International Academy of Comparative Law in Vienna in July 2014, some of which have in turn been revised for publication as chapters in Secondary Liability of Internet Service Providers (Graeme B. Dinwoodie ed., Springer 2017) to which this is the Introductory Chapter. I am extremely grateful to the various National Reporters for that Congress on whose work this Chapter builds: Graeme W. Austin; Christoph Busch; Lung-Sheng Chen; João Fachana; Vincenzo Franceschelli, Oreste Pollicino, and Elisa Bertolini; Xawery Konarski and Tomasz Targosz; Ivana Kunda and Jasmina Mutabžija; David Lametti and Abby Shepard; Caitlin Mulholland; Clement Petersen; Radim Polčák; Cyrill Rigamonti; Jaani Riordan; Tatiana Synodinou and Philippe Jougleux; Marketa Trimble and Salil K. Mehra; Pierre Trudel; Katja Weckstrom; and Georgios N. Yannopoulos. These reports were authored in 2013–2014, although this Chapter takes into account subsequent developments. This Chapter also draws in part on Graeme B. Dinwoodie, Secondary Liability for Online Trademark Infringement: The International Landscape, 36 Columbia. J. L. & Arts 463–501 (2014). Thanks also to Matthew Kruger for editorial assistance with the book in which this Chapter appears.

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Notes

  1. 1.

    “Public structuring” refers to the legal framework that might be established to shape (whether by compulsion or incentive) private ordering and thus give some greater comfort regarding the form the latter takes. See generally Graeme B. Dinwoodie, Private Ordering and the Creation of International Copyright Norms: The Role of Public Structuring, 160 J. Instit. & Theor. Econ. 161 (2004). And, separately, private actors (largely, OSPs) are increasingly making public on an ex post basis aggregated information concerning this private activity, which affords some level of public scrutiny. See, e.g., Google, Inc., Transparency Report, at https://www.google.com/transparencyreport/?authuser=1 (listing 40 major internet companies that release such data). Between 4 January 2016 and 4 January 2017, Google removed 916 million URLs as a result of takedown requests from copyright owners.

  2. 2.

    The most recent jurisdiction to adopt such an approach is Australia. See Roadshow Films Pty Ltd. v Telstra Corporation [2016] FCA 1503 (Dec 15, 2016); § 115A of the Copyright Act 1968 (Cth); see also § 193DDA of Copyright Act (Sing.) (orders to disable access to flagrantly infringing online locations).

  3. 3.

    See Jaani Riordan, The Liability of Internet Intermediaries at §§ 1.49–1.60, at 12–14 (Oxford Univ. Press 2016) (using terminology of “primary”, “secondary” and “injunctive” liability, and describing these mechanisms as “injunctions without wrongdoing”); Martin Husovec, Injunctions Against Intermediaries in the European Union: Accountable But Not Liable? (Camb. Univ. Press 2017) (forthcoming).

  4. 4.

    Anti-Counterfeiting Trade Agreement, Dec. 3, 2010 [hereinafter ACTA], available at http://trade.ec.europa.eu/doclib/docs/2010/december/tradoc_147079.pdf.

  5. 5.

    Trans-Pacific Partnership Agreement, Chapter 18, Feb. 4, 2016, [hereinafter TPP] available at https://ustr.gov/sites/default/files/TPP-Final-Text-Intellectual-Property.pdf; see also Neha Mishra, The Role of the Trans-Pacific Partnership Agreement in the Internet Ecosystem: Uneasy Liaison or Synergistic Alliance? 20 J. Int’l Econ. L 31, 55–56 (2017).

  6. 6.

    See, e.g., Stop Online Piracy Act (“SOPA”) H.R. 3261, 112th Cong. (2011); Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act, S. 968, 112th Cong. (2011) (“PIPA” or “Protect IP Act”); see generally Mark Lemley, David S. Levine & David G. Post, Don’t Break the Internet, 64 Stan. L. Rev. Online 34 (2011).

  7. 7.

    See Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [40] (Lord Sumption, dissenting) (“In both England and the United States, the principles have been worked out mainly in the context of allegations of accessory liability for the tortious infringement of intellectual property rights. There is, however, nothing in these principles which is peculiar to the infringement of intellectual property rights. The cases depend on ordinary principles of the law of tort”). These contexts involve tortious liability. For a much fuller analysis, encompassing for example claims in contract, see Paul S. Davies, Accessory Liability (Hart, 2015) .

  8. 8.

    See infra text accompanying notes 58–75.

  9. 9.

    See National Report of the United Kingdom, at 5 (“although the connecting factors for secondary liability are uniform, the different elements of primary wrongdoing will mean that attaching secondary liability is attended by very different practical considerations depending on the cause of action.”).

  10. 10.

    See, e.g., National Report of New Zealand, at 3 (citing section 2(1) of the Copyright Act 1994 (NZ)).

  11. 11.

    See National Report of the United Kingdom, at 6 (“there is no general concept of a ‘service provider’ that is used specifically to impose secondary liability. However, a small number of English statutes do create secondary liability for online services in particular contexts.”)

  12. 12.

    See National Report of the United Kingdom, at 6 (defined as “a person who provides an ‘internet access service’, which in turn means an electronic communications service consisting wholly or mainly of access to the internet, where an IP address is allocated to each subscriber to enable access”); see also Digital Economy Act 2010, §§ 3–4.

  13. 13.

    See Joined Cases C-236/08–C-238/08, Google France SARL v. Louis Vuitton Malletier SA, 2010 E.C.R. I-2417, ¶¶ 106–20; Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011; Directive 2000/31 of the European Parliament and of the Council of 8 June 2000 on Certain Legal Aspects of Information Society Services, in Particular Electronic Commerce, in the Internal Market, 2000 O.J. (L 178) 1, 11 (EC) [hereinafter E-Commerce Directive].

  14. 14.

    See infra text accompanying notes 185–188 (discussing liability of eBay and YouTube under French, Spanish and Italian law).

  15. 15.

    Even within a single jurisdiction, different safe harbours may also contain different specific conditions. See National Report of the United Kingdom, at 16 (“The scope of the safe harbours and limitations … is delimited by two criteria: first, the defendant must be a “service provider” … Second, the activity of the defendant said to give rise to liability must fall within one of the protected activities. The specific nature of these activities is usually a more significant limitation than the identity of the service provider.”). Thus, a service provider may be protected under one safe harbour but not another. See National Report of the United Kingdom, at 17 (discussing immunity of search engines under the different safe harbours of the E-Commerce Directive).

  16. 16.

    See National Report of Taiwan, at 7 & 12–13 (defining internet service provider in terms of the different types of service that might bring them within a safe harbour); cf. National Report of New Zealand, at 2 & 5–6 (quoting section 2(1) of the Copyright Act 1994, which does the same but with a much smaller set of conditions; instead, conditions appear outside the definition of the safe harbours themselves).

  17. 17.

    The same approach can be found in provisions defining service provider for the purpose of imposing regulatory obligations. Thus, the UK Digital Economy Act only required “qualifying ISPs” to participate in its subscriber notification regime. See National Report of the United Kingdom, at 6.

  18. 18.

    See National Report of Italy, at 5.

  19. 19.

    See 17 U.S.C. 512(k)(1)(A)-(B) (providing narrower definition of providers able to come within the scope of the copyright infringement immunity conferred by Section 512(a) on access providers).

  20. 20.

    See E-Commerce Directive, recital 17.

  21. 21.

    See National Report of the United Kingdom, at 16–17.

  22. 22.

    See id. at 17 (citing Kaschke v Gray [2010] EWHC 690 (QB) , [43]); see also National Report of New Zealand, at 2 (commenting that the definition of a “hosting” service provider for the purposes of the copyright safe harbour “would extend the concept of ‘Internet service providers’ to ‘Web 2.0′ platforms, bulletin boards, blogs, or even websites operated by firms, public entities, and private parties”); Case C-484/14, Tobias McFadden v Sony Music, ECLI:EU:C:2016:689 (CJEU 2016) (discussing free public wifi offered by small business in the vicinity of the business under Article 12 of the E-Commerce Directive).

  23. 23.

    Cf. Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [40] (Lord Sumption dissenting).

  24. 24.

    See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

  25. 25.

    See, e.g., Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001); see generally Jane C. Ginsburg, Separating The Sony Sheep from the Grokster Goats: Reckoning The Future Business Plans of Copyright-Dependent Technology Entrepreneurs, 50 Ariz. L. Rev. 577 (2008).

  26. 26.

    See Viacom International, Inc. v. YouTube Inc., 676 F.3d 19 (2d Cir. 2013), on remand, 940 F.Supp.2d 110 (S.D.N.Y. 2013).

  27. 27.

    See generally Graeme B. Dinwoodie, Secondary Liability for Online Trademark Infringement: The International Landscape, 36 Columbia. J. L. & Arts 463–501 (2014); see also Free Kick Master LLC v. Apple Inc., 2016 WL 77916 (N.D. Cal. Feb 29, 2016) (app store sued for trade mark infringement with respect to apps sold by third parties in its app store).

  28. 28.

    See McGrath v Dawkins, [2012] EWHC B3 (QB) (discussed in National Report of the United Kingdom, at 15).

  29. 29.

    See, e.g., Metropolitan Schools v DesignTechnica, [2009] EWHC 1765 (QB) (UK); A v Google New Zealand Limited [2012] NZHC 2352 (NZ).

  30. 30.

    See Case C-131/12, Google Spain SL, Google Inc. v. Agencia Española de Protección de Datos (AEPD), Mario Costeja González, 2014 ECLI:EU:C:2014:317 [hereinafter Google Spain].

  31. 31.

    See, e.g., Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011).

  32. 32.

    See, e.g., Gucci Am., Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228 (S.D.N.Y. 2010) (allowing secondary infringement claim to proceed against credit card processing companies who provided services to online merchant allegedly selling counterfeit goods); but cf. Perfect 10, Inc. v. Visa Int’l Serv., Ass’n, 494 F.3d 788 (9th Cir. 2007) (affirming dismissal of actions against credit card companies).

  33. 33.

    See, e.g., Cartier Int’l AG v. British Sky Broadcasting Limited [2016] EWCA Civ 658.

  34. 34.

    See National Report of the United Kingdom, at 5 (“Many statutory wrongs define further so-called ‘secondary’ torts—such as dealing commercially with articles that infringe primary rights … “); see also Copyright, Designs and Patents Act 1988, §§ 22–26 (UK). The term “secondary infringement” has a different (narrow) meaning in U.K. trademark law. See Lionel Bently & Brad Sherman, Intellectual Property Law 1044 (4th ed. 2014).

  35. 35.

    See Copyright, Designs and Patents Act 1988, § 16(2) (UK); National Report of the United Kingdom, at 10 (“the definition of primary liability includes a party who authorises another to engage in acts restricted by copyright. Such an authorising party is primarily liable, even though their liability is secondary in the sense that it cannot exist until there has actually been a primary infringement of copyright carried out by the third party whom they have authorised to act.”); Copyright Act 1968, §§13(2), 36(1), 101(1) (Aus.); National Report of New Zealand, at 2. The statutory concept of authorisation has perhaps been most fully fleshed out—both statutorily and in decisional law—in Australia. See Roadshow Films Pty v iiNet Ltd., [2012] HCA 16 (finding Internet service provider not liable for authorising copyright infringement when subscribers infringed copyright by using file sharing software). For discussion of authorisation in UK law, see Richard Arnold and Paul S Davies, Accessory Liability for Intellectual Property Infringement: The Case of Authorisation, 133 Law Q. Rev. ___ (2017) (forthcoming).

  36. 36.

    In the United States, the insertion into the 1976 Copyright Act of the language rendering “authorisation” of an infringing act itself actionable has been explicitly explained as simply offering a statutory hook for secondary liability. See Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir. 1994) (en banc). In the United Kingdom, there is some—but very little—daylight between the concept of authorisation and joint tortfeasorship (or accessory liability). See Arnold and Davies, supra note 35, at [21]–[22] (discussing differences). But it is clearly understood as part of the picture of accessory liability.

  37. 37.

    For use of the term “accessory” liability, see National Report of the United Kingdom, at 2; National Report of Switzerland, at 5. See generally Paul Davies, Accessory Liability: Protecting Intellectual Property Rights [2011] Intellectual Property Quarterly 390; Davies, supra note 7. The term is also found in criminal law. See National Report of the United Kingdom, at 4.

  38. 38.

    Service providers may also be criminally liable as accessories where they participate in criminal wrongdoing. In some jurisdictions, accessorial criminal liability has been set out in detail by statute. See National Report of the United Kingdom, at 4–5 (discussing Accessories and Abettors Act 1861 and Serious Crime Act 2007, and noting judicial interpretation). This Chapter focuses on civil liability. But there are certain circumstances where criminal accessory liability might be broader than civil liability. See National Report of the United Kingdom, at 4.

  39. 39.

    See Gershwin Publishing Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).

  40. 40.

    Cf. Riordan, supra note 3, at § 5.13, at 116 (suggesting that one feature distinguishing participatory from relational liability is the lack of causative analysis).

  41. 41.

    See Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992) (noting that vicarious liability for trademark law requires “a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product”).

  42. 42.

    See Shapiro, Bernstein and Co. v. H. L. Green Co., 316 F.2d 304 (2d Cir. 1963); Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996).

  43. 43.

    See National Report of Taiwan, at 4 (“[P]aragraph 1, Article 188 of the Civil Code provides employer’s liability for their employees’ conducts. The concept of employer’s liability under the statute is similar to the concept of vicarious infringement”); National Report of the United Kingdom, at 4.

  44. 44.

    See OBG Ltd. v Allan [2008] 1 AC 1, 27 (Lord Hoffmann) (UK) (characterising accessory liability as “principles of liability for the act of another”); Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984) (explaining that “the concept of contributory infringement is merely a species of the broader problem of identifying circumstances in which it is just to hold one individually accountable for the actions of another”).

  45. 45.

    See National Report of the United Kingdom, at 2; see also Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1092 (9th Cir. 1994) (en banc) (“Contributory infringement under the 1909 Act developed as a form of third party liability. Accordingly, there could be no liability for contributory infringement unless the authorized or otherwise encouraged activity itself could amount to infringement.”).

  46. 46.

    See National Report of Czech Republic, at 2–3 (discussing application of provision creating “joint liability”). The doctrine of accessory liability in U.K. law is also frequently treated under the label of “joint tortfeasorship”. See generally Davies, supra note 7, at 177 (“The wide umbrella of ‘joint tortfeasance’ has engulfed accessory liability in tort and obscured its constituent elements”); Sea Shepherd v. Fish & Fish [2015] UKSC 10.

  47. 47.

    See National Report of Taiwan, at 3–4 (“Taiwan’s legal system does not expressly recognize concepts of contributory or vicarious liability. Nonetheless, this does not necessarily mean that an ISP will never be held liable for its users’ conduct. [A]n ISP is likely to be held liable for indirect infringement under the Civil Code … [which] states that] “[i]f several persons jointly conducted a tort with another person, they are jointly liable for the damage arising therefrom”).

  48. 48.

    Taiwan also has a copyright-specific statutory form of secondary liability. See id., at 5 (reporting liability for copyright infringement under Article 87 where providing “to the public computer programs or other technology that can be used to publicly transmit or reproduce works, with the intent to allow the public to infringe on others’ economic rights by means of public transmission or reproduction by means of the Internet of the copyrighted works of another, without the consent of or a license from the economic right owners, and to receive benefits therefrom”). The provision was added in 2007 to adopt the reasoning of the U.S. Supreme Court in MGM v. Grokster, and (based upon the meaning of the “intent” element of the claim) in particular the intentional inducement action articulated in Grokster. See id., at 6 (“[T]he ISP’s intent [as required by the cause of action] is satisfied if the ISP instigates, solicits, incites, or persuades its users to make use of the computer program or other technology the ISP provides for the purpose of infringing copyrights of others by advertising or other active measures”). This cause of action appears to duplicate the “instigation” or “inducement” version of secondary liability under Taiwan’s general joint tortfeasorship provision. However, unlike a joint tortfeasorship claim, this extra statutory copyright liability does not depend upon a primary infringement; if the elements of the statutory inducement cause of action exist, the claim is made out. See id., at 8 (“A comparison of the general standard for establishing secondary liability under the Civil Code and that under the Copyright Act reveals differences between them. For an ISP to be held liable for others’ conducts under the Civil Code, there must be a direct infringement. However, under the Copyright Act, an ISP is liable when the four elements are satisfied. In other words, no direct infringement of others is required to establish secondary liability of an ISP under the Copyright Act.”)

  49. 49.

    See National Report of Taiwan, at 4 (noting that under the Civil Code of Taiwan the joint liability provision applies “even if the infringed person cannot indicate that who in fact did commit the tort”); cf. National Report of Switzerland, at 2; National Report of Portugal, at 6.

  50. 50.

    National Report of the United Kingdom, at 9.

  51. 51.

    See, e.g., Twentieth Century Fox Film Corporation v Newzbin Ltd. [2010] EWHC 608 (Ch) (Newzbin I) at [97] (“I am prepared to proceed on that basis because I am satisfied that the claimants’ copyrights have indeed been infringed by the defendant’s premium members. The number of active premium members is very substantial, as evidenced by the defendant’s turnover, and those members are primarily interested in films, as the Newzbin website makes clear. In the light of these matters, the nature of Newzbin as I have described it and the interaction between the defendant and its members as shown by the sharing forums, I consider it overwhelmingly likely that the defendant’s premium members have made use of the facilities to which they have subscribed and that in doing so a number of them have downloaded copies of the claimants’ copyright films, including those specifically identified in these proceedings, all of which are popular titles. The claimants are unable to identify which particular films individual premium members have copied only because the defendant has chosen not to record details of the NZB files they have downloaded…”).

  52. 52.

    See, e.g., Cartier Int’l AG v. British Sky Broadcasting Limited [2016] EWCA Civ 658 at [84]–[85].

  53. 53.

    See Defamation Act 2013 (UK).

  54. 54.

    See National Report of the United Kingdom, at 9 n. 35.

  55. 55.

    Some commentators have suggested that whether the third party’s conduct is notionally unlawful is always relevant under English law, even when the relief sought against an intermediary is non-monetary (and not based upon a finding of illegality by the intermediary). See id., at 20 (“English law recognises a number of [non-monetary] remedies against non-wrongdoers. . . Although they are independent of any finding of primary or secondary liability against the service provider, they require some kind of primary wrongdoing to be demonstrated to the relevant standard of proof.”).

  56. 56.

    See id., at 10 (“The availability of relief against a primary wrongdoer is normally relevant only to proportionate liability. In general, where damage is “indivisible” as between a service provider and primary wrongdoer, both joint causes of harm will each be liable to compensate the whole of the damage. However . . . the service provider may have a claim against the primary wrongdoer under the Civil Liability (Contribution) Act 1978”); see Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [57] (Lord Neuberger) (“I agree with Lord Sumption that, once the assistance is shown to be more than trivial, the proper way of reflecting the defendant’s relatively unimportant contribution to the tort is through the court’s power to apportion liability, and then order contribution, as between the defendant and the primary tortfeasor.”)

  57. 57.

    See e.g., Tribunal de commerce [TC][court of trade] Paris, June 30, 2008, No. 200677799, 11−12 (Fr.) (Louis Vuitton Malletier S.A. v. eBay, Inc.); See, e.g., TC Paris, June 30, 2008, No. 200677799, 11−12 (Fr.) (Louis Vuitton Malletier S.A. v. eBay, Inc.) (unpublished); Tribunal de grande instance [TGI] Troyes, civ., June 4, 2008, No. 060264 (Fr.) (Hermés Int’l v. eBay, Inc.) (unpublished). This is explicitly not the approach taken in the United Kingdom. See, e.g., Cartier Int’l AG v. British Sky Broadcasting Limited [2016] EWCA Civ 658, at [54] (“it is clear in light of the decision of the House of Lords in CBS Songs Ltd. v Amstrad plc that [the access providers] do not owe a common law duty of care to [trade mark owners] to take reasonable care to ensure that their services are not used by the operators of the offending websites.”).

  58. 58.

    Cf. Stacey L. Dogan, Principled Standards vs. Boundless Discretion: A Tale of Two Approaches to Intermediary Trademark Liability Online, 37 Colum. J.L. & Arts 503, 509 (2014).

  59. 59.

    See, e.g., Gov’t Emps. Ins. Co. v. Google, Inc., No. 1:04CV507, 2005 WL 1903128 (E.D. Va. Aug. 8, 2005) (finding for defendant search engine because no likelihood of confusion was proved at trial); see also Eric Goldman, Google Defeats Trademark Challenge to Its AdWords Service, Forbes Online (Oct. 22, 2012, 12:35 PM), http://www.forbes.com/sites/ericgoldman/2012/10/22/google-defeats-trademark-challenge-to-its-adwords-service/ (“In a remarkable litigation tour-de-force, Google has never definitively lost any of these cases in court (though it has occasionally lost intermediate rulings).”). There has as a result been less developed analysis by U.S. courts of the potential secondary liability of search engines for infringements committed by advertisers to whom they have sold keywords tied to the trademarks of others. This is notwithstanding the urging by some scholars that secondary liability is the only appropriate vehicle for assessment of such claims. See Stacey L. Dogan & Mark A. Lemley, Trademark and Consumer Search Costs on the Internet, 41 Hous. L. Rev. 777 (2004). The only substantial resistance to this occurred in the Second Circuit in 1-800 Contacts, Inc. v. WhenU.com, Inc., see 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). and that circuit brought keyword advertising cases back within the primary infringement rubric in its 2009 Rescuecom Corp. v. Google Inc. decision. See Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009); cf. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013). Assessing culpability of search engines under primary infringement standards does not appear to be altering the pro-defendant outcomes that one would expect as a matter of secondary infringement under Tiffany. On the whole, search engines are prevailing. To be sure, Google could (even under the Tiffany standard) be held contributorily liable if an advertiser is found to be primarily infringing and Google, after notice, does not disable the ad. The frequency of that will however depend upon evolving case law on advertiser liability, which also seems still to be largely pro-defendant. See, e.g., J.G. Wentworth, S.S.C. Ltd. P’ship v. Settlement Funding L.L.C., No. 06-0597, 2007 WL 30115 (E.D. Pa. Jan. 4, 2007) (awarding summary judgment to defendant purchaser of keywords on question of confusion); Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011); cf. 1-800 Contacts, 722 F.3d 1229.

  60. 60.

    Joined Cases C-236/08−C-238/08, Google France SARL v. Louis Vuitton Malletier SA, 2010 E.C.R. I-2417, ¶ 55 (CJEU 201). Only uses by a search engine “in its own commercial communication” would fall within the proscription of trademark law; the Court found that this was not the case with the sale of keyword advertising. Id. ¶¶ 55–56.

  61. 61.

    See Interflora v Marks & Spencer, [2013] EWHC 1291 (Ch), rev’d, [2014] EWCA Civ 1403; Cosmetic Warriors Ltd. v Amazon.co.uk Ltd., [2014] EWHC 181 (Ch); Birgit Clark, Fleurop: When Keyword Advertising May Exceptionally Be a Trade Mark Infringement After All, 9 J. Intell. Prop. L. & Prac., 693 (2014) (discussing German Federal Court of Justice (Bundesgerichtshof), Case I ZR 53/12—“Fleurop” 27 June 2013).

  62. 62.

    See Graeme B. Dinwoodie and Mark D. Janis, Lessons From the Trademark Use Debate, 92 Iowa L. Rev. 1703, 1717 (2007).

  63. 63.

    See infra Part V.

  64. 64.

    European Copyright Society, Opinion on the Reference to the CJEU in Case C-466/12 Svensson, at 7, available at https://europeancopyrightsociety.org/opinion-on-the-reference-to-the-cjeu-in-case-c-46612-svensson/

  65. 65.

    See Case C-466/12, Svensson v Retriever Sverige AB, [2014] E.C.D.R. 9 (CJEU 2014).

  66. 66.

    See Case C-348/13, BestWater Int’l GmbH v Mebes and Potsch EU:C:2014:2315 (CJEU 2014); Case C-348/13, C More Entertainment AB v Sandberg, ECLI:EU:C:2015:199 (CJEU 2015); Case C-160/15, GS Media BV v. Sanoma Media Netherlands BV, ECLI:EU:C:2016:644 (CJEU 2016).

  67. 67.

    In copyright, national courts in the E.U. appear to be quick to assess service provider liability as a matter of primary infringement, perhaps following the lead of the Court of Justice. See, e.g., Public Relations Consultants Association Ltd. v The Newspaper Licensing Agency Ltd. [2013] UKSC 18 (UK) (liability of an online news aggregator service turned on whether it engaged in acts which amounted to reproduction of news headlines without coming within the statutory defence of incidental use); cf. Case C-610/15, Stichting Brein v. Ziggo BV, EU:C:2017:99 (AG Szpunar Feb 8, 2017) at ¶3.

  68. 68.

    See National Report of the United Kingdom, at 8–9 (noting that “[i]n trade mark cases, as in other areas of law, English courts frequently call upon primary liability rules as means of demarcating the liability of secondary parties).

  69. 69.

    See National Report of New Zealand, at 3 (discussing Wishart v Murray [2013] 3 NZLR 246, 262, and noting that the liability of the operator of the Facebook page where allegedly defamatory material was posted was plausibly a publisher of the third party material but the degree of the defendant’s responsibility for and control over the content of the Facebook page was considered as a matter of primary liability); National Report of the United Kingdom, at 9 (noting that “in defamation cases the courts apply the ‘long established line of authority’ that exempts secondary disseminators from responsibility for conveying a third party’s material unless they knew or ought reasonably to have known that the material was likely to be defamatory”); see also id., at 19 (“[M]any of the safe harbours mirror devices in substantive liability doctrines which serve to immunise passive and neutral platforms from prima facie liability for third parties’ activities (though these depend on different considerations depending on the type of wrongdoing involved). Doctrines of innocent dissemination in defamation and authorisation liability in copyright provide the clearest examples of this tendency in English law”).

  70. 70.

    See National Report of the United Kingdom, at 9; National Report of New Zealand, at 3 (“in the current state of New Zealand law, the defendant [search engine] would have been liable primarily as a ‘publisher’ of the defamatory material. Secondary liability principles are therefore not apposite.”)

  71. 71.

    See, e.g., Metropolitan Schools v DesignTechnica, [2009] EWHC 1765 (QB); A v Google New Zealand Limited [2012] NZHC 2352 (NZ).

  72. 72.

    See Rescuecom Corp. v. Google Inc., 562 F.3d 123, 129 (2d Cir. 2009). On this latter point, the Second Circuit distinguished between the practice of the defendant in 1-800 Contacts, which had sold advertising keyed to categories of marks (e.g., selling the right to have an ad appear when a user searches for a mark connected to eye care products, but not disclosing to the advertiser the proprietary mapping of marks and categories), and that of Google (which sold advertising tied directly to single marks). See id. at 128−29.

  73. 73.

    Stacey L. Dogan, “We Know It When We See It”: Intermediary Trademark Liability and the Internet, 2011 Stan. Tech. L. Rev. 7 at [19] (2011).

  74. 74.

    See Dogan & Lemley, supra note 59 (discussing trademark liability of intermediaries).

  75. 75.

    National Report of the United Kingdom, at 10 (citing Newzbin [2010] EWHC 608 (Ch)).

  76. 76.

    See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984) (making point in relation to copyright and patent law).

  77. 77.

    See Graeme B. Dinwoodie, Rochelle C. Dreyfuss & Annette Kur, The Law Applicable to Secondary Liability in Intellectual Property Cases, 42 N.Y.U. J. Int’l. L. & Pol. 201 (2009).

  78. 78.

    See Graeme B. Dinwoodie & Rochelle C. Dreyfuss, A Neofederalist Vision of TRIPS: The Resilience Of The International Intellectual Property Regime (Oxford University Press 2012).

  79. 79.

    See National Report of the United Kingdom, at 1 (“Service providers point out that wider secondary liability could hinder [economic] growth and have harmful effects upon innovation, while also doubtlessly threatening to erode their business models”).

  80. 80.

    As a result, the U.S. Supreme Court has been reluctant to find secondary liability based upon design choices alone. But the Court has recognized the relevance of design choice to determinations of inducement liability when combined with other evidence. See MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 939 (2005) (“[T]his evidence of unlawful objective is given added significance by MGM’s showing that neither company attempted to develop filtering tools or other mechanisms to diminish the infringing activity using their software …”).

  81. 81.

    See National Report of the United Kingdom, at 1 (“Internet services contribute as much 5.4 per cent of GDP and account for up to 23 per cent of recent British economic growth” (citing McKinsey Global Institute, Internet Matters: The Net’s Sweeping Impact on Growth, Jobs, and Prosperity (May 2011) 15–16).

  82. 82.

    National Report of Taiwan, at 1.

  83. 83.

    See infra text accompanying notes 148–193.

  84. 84.

    See 17 U.S.C. § 512 (US) (safe harbour); E-Commerce Directive, arts. 12–14 (EU) (safe harbour); E-Commerce Directive, art 15 (“Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.”); Case C-314/12, UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, EU:C:2014:192, [2014] E.C.D.R. 12 (CJEU 2014) (recognizing role of right to conduct business under Article 16 of the Charter).

  85. 85.

    Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 99 (2d Cir. 2010). Not all intermediaries are equally compliant. See National Report of the United Kingdom, at 31 (calculating that, according to the Google Transparency Report, Google “refused to comply with over 2.3 million take-down requests made by BPI in 2013. On average, this figure amounted to around 9.4% of the URLs specified in each take-down request. This may suggest a tendency for false positive requests on the part of rights-holders. On the other hand, many of the ignored requests related to duplicate materials, and the remainder tended to relate to obviously infringing materials”).

  86. 86.

    See National Report of New Zealand, at 1.

  87. 87.

    The level of detail in immunity legislation varies substantially. The process of notice and takedown is laid out in immense detail, including precise time periods, in the US Digital Millennium Copyright Act (“DMCA”). See 17 U.S.C. § 512. The parallel EU provision talks of “expeditious” action by an OSP, which has been fleshed out (and was intended to be fleshed out even more than it has been) by private ordering and negotiated statements of best practices. See Dinwoodie, supra note 1, at 170–172 (discussing efforts to fund and encourage industry agreements in the European Union).

  88. 88.

    See, e.g., Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005); Twentieth Century Fox Film Corporation v Newzbin Ltd. [2010] EWHC 608 (Ch).

  89. 89.

    That principle is also sometimes endorsed via provisions or decisions granting immunity from certain claims. See, e.g., National Report of New Zealand, at 4 (discussing Section 92B(2) of the New Zealand Copyright Act); cf. Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 442 (1984) (protection for technologies having substantial non-infringing uses).

  90. 90.

    See Working Group on Intellectual Prop. Rights, Info. Infrastructure Task Force, Intellectual Property and the National Information Infrastructure (1995), available at http://www.uspto.gov/web/offices/com/doc/ipnii/ipnii.pdf [hereinafter White Paper] at 114–24. The White Paper analyzed ISP liability based on temporary copies made in random access memory of computers as direct infringements of copyright, although it also discussed contributory and vicarious liability.

  91. 91.

    See National Report of the United Kingdom, at 3. In addition, particular regimes augment the general joint tortfeasorship standard with statutory forms of liability (such as authorisation of copyright infringement) that appear to possess a derivative character but be labelled a form of primary liability. See supra notes 35–36.

  92. 92.

    See National Report of the United Kingdom, at 3.

  93. 93.

    L’Oréal S.A. v. eBay Int’l AG, [2009] EWHC 1094 at [350] (quoting Credit Lyonnais Bank Nederland NV v. Export Credit Guarantee Dep’t, [1997] EWCA (Civ) 2165, [1998] 1 Lloyd’s Rep 19, [48] (Eng.)) (emphasis supplied).

  94. 94.

    See Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [41] (Lord Sumption, dissenting) (“I do not think that … Lord Templeman [in CBS] was seeking to limit liability as a joint tortfeasor to cases of inducement or procurement, as opposed to assistance. When read with his general statement of the elements of liability as a joint tortfeasor, it is clear that he was intending to limit it to cases of common intent. Inducing or procuring a tort necessarily involves common intent if the tort is then committed. Mere assistance may or may not do so, depending on the circumstances. The mere supply of equipment which is known to be capable of being used to commit a tort does not suggest intent. Other circumstances may do so.”); id. at [57] (Lord Neuberger) (“the defendant should not escape liability simply because his assistance was (i) relatively minor in terms of its contribution to, or influence over, the tortious act when compared with the actions of the primary tortfeasor, or (ii) indirect so far as any consequential damage to the claimant is concerned.”). Although Lord Sumption dissented from the result in Sea Shepherd, it is not clear that the judges were divided on the applicable legal principles. See id. at [61] (Lord Neuberger) (“I do not detect any significant difference between this analysis of the law and the rather fuller analyses advanced in the judgments of Lord Sumption and Lord Toulson”); id. at [91] (Lord Mance dissenting) (“At the end of the day, the difference of opinion in the court about the outcome of this appeal derives from a difference not about the legal principles which it involves, but about their application to the facts”).

  95. 95.

    See id. at [44]; see also id at [54] (Lord Neuberger) (“the assistance must have been pursuant to a common design on the part of the defendant and the primary tortfeasor that the act be committed”).

  96. 96.

    See National Report of the United Kingdom, at 3–4.

  97. 97.

    It is most commonly satisfied by facts that are different from the facilitation scenario, and look not far removed from vicarious liability claims. See, e.g., Cosmetic Warriers Ltd. v. Amazon.co.uk, [2014] EWHC 181 (Ch) (Eng.) (holding a U.K. and a Luxembourg entity jointly liable for trade mark infringement since they “joined together and agreed to work together in the furtherance of a common plan”).

  98. 98.

    National Report of the United Kingdom, at 3.

  99. 99.

    Although the case settled before the issue was decided, Arnold J. suggested in his judgment referring question to the European Court of Justice that he would come down on eBay’s side on the question. See L’Oréal, [2009] EWHC 1094, at [359]−[372].

  100. 100.

    Cf. Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [37] (Lord Sumption, dissenting) (“The legal elements of liability as a joint tortfeasor must necessarily be formulated in general terms because it is based on concepts whose exact ambit is sensitive to the facts.”)

  101. 101.

    SABAF Spa v MFI Furniture Centres Ltd. [2004] UKHL 45 at [40]; see also Sea Shepherd v. Fish & Fish [2015] UKSC 10 at [38] (Lord Sumption, dissenting) (“It is now well established that if these requirements are satisfied the accessory’s liability is not for the assistance. He is liable for the tortious act of the primary actor, because by reason of the assistance the law treats him as party to it”); see also id. at [19]–[20] (Lord Toulson) (setting out variants of liability); cf. id. at [59] (Lord Neuberger) (“I have some concerns about the notion that the defendant has to “[make the tortious act] his own” … While it can be said that it rightly emphasises the requirement for a common design, this formulation is ultimately circular and risks being interpreted as putting a potentially dangerous gloss on the need for a common design.”).

  102. 102.

    See National Report of the United Kingdom, at 3.

  103. 103.

    See Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 99 (2d Cir. 2010).

  104. 104.

    Both the district court and the Second Circuit applied the Inwood test, notwithstanding that the case involved the continued provision of services. Following Ninth Circuit precedent in Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999), the district court held in Tiffany that “Inwood applies to a service provider who exercises sufficient control over the means of the infringing conduct,” and eBay satisfied this test because of the control it retained over the transactions and listings on its Web site. Tiffany, 576 F. Supp. 2d at 505−07. Although amici challenged whether Inwood applied to services, eBay did not include this argument in its appeal and thus the Second Circuit did not reach that question. See Tiffany, 600 F.3d at 106 (“On appeal, eBay no longer maintains that it is not subject to Inwood.”); see also id. at 105 n.10 (noting amici arguments). Other cases have operated on the same assumption. See, e.g., Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012).

  105. 105.

    Tiffany, 600 F.3d at 106.

  106. 106.

    Id. at 99.

  107. 107.

    See id. at 103.

  108. 108.

    Id. at 98.

  109. 109.

    Id. at 107. The U.S. court did leave one opening for mark owners who had not given notice regarding individual listings, suggesting that willful blindness may satisfy the knowledge standard. Tiffany, 600 F.3d at 109–10 (“A service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way… [W]illful blindness is equivalent to actual knowledge for purposes of the Lanham Act.” (internal quotation marks omitted). The court did not find willful blindness in Tiffany merely because eBay knew generally that infringements were occurring on its site and eBay did not ignore the information it was given. Id. at 110 (“eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. Without more, however, this knowledge is insufficient to trigger liability under Inwood… eBay did not ignore the information it was given about counterfeit sales on its website.”). But this opening may still leave later courts with some room to reach a different result when a defendant with a less legitimate business model makes less reasonable efforts at preventing infringement.

  110. 110.

    Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 109-10 (2d Cir. 2010); see Restatement (Third) of Unfair Competition § 27 (1995) (“[Contributory liability attaches when] the actor fails to take reasonable precautions against the occurrence of the third person’s infringing conduct in circumstances in which the infringing conduct can be reasonably anticipated.”).

  111. 111.

    Reading Inwood is complicated by the fact that Justice White’s concurring opinion ascribes to Justice O’Connor’s opinion a treatment of the lower court’s opinion that she herself disclaimed. In particular, Justice White expressed concern that the majority was endorsing a knowledge standard based on whether the defendant “could reasonably have anticipated” the third parties’ infringing conduct; Justice O’Connor explicitly rejected this charge. Compare Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 n.13 (1982) (O’Connor, J.) (rejecting Justice White’s concern that the majority opinion endorsed any change to the contributory infringement test), with id. at 859−60 (White, J., concurring) (“The mere fact that a generic drug company can anticipate that some illegal substitution will occur to some unspecified extent, and by some unknown pharmacists, should not by itself be a predicate for contributory liability. I thus am inclined to believe that the Court silently acquiesces in a significant change in the test for contributory infringement.”).

  112. 112.

    It is worth noting the extent to which the Second Circuit felt that Inwood spoke to the precise question before the Tiffany court. The court opened its opinion by noting the “paucity of case law to guide us” and the fact that the few cases decided in the Second Circuit contained little detail, leaving the “law of contributory trademark infringement ill-defined.” Tiffany, 600 F.3d at 103, 105. And the Supreme Court in Inwood only applied the inducement prong of the test, so one could even regard what Inwood said about the continued supply prong to be dicta: indeed, the Second Circuit acknowledged that Inwood did not “establish[] the contours of the ‘knows or has reason to know’ prong.” Id. at 108. Yet the Court’s conclusion turned to some extent on a very careful parsing of the language of the Inwood test, which referenced supply to “one” whom the defendant knew was engaging in infringement, and on dicta in Sony that ventured a guess as to how that case would have come out under Inwood as opposed to the copyright standard. See id. at 108–09. Certainly, the court’s protestations about judicial circumspection—that “we are interpreting the law and applying it to the facts of this case [and] could not, even if we thought it wise, revise the existing law in order to better serve one party’s interests at the expense of the other’s”—do seem a little strained given the room for maneuver that appeared to exist. Id. at 109.

  113. 113.

    See, e.g., Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996). Indeed, this approach in offline cases does not seem to have been altered by the Tiffany opinion. See Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013).

  114. 114.

    See Dogan, supra note 58, at 510 n. 38 (noting that judicial assessment of whether the intermediary is in a position where it can stop infringement and can reasonably be required to do so is “often implicit” and channeled “through doctrinal standards of ‘knowledge’ and ‘substantial assistance’”); cf. Barton Beebe, Tiffany and Rosetta Stone: Intermediary Liability in U.S. Trademark Law, Paper Delivered at UCL Institute of Brand and Innovation Law 4 (Feb. 15, 2012), available at http://www.ucl.ac.uk/laws/ibil/docs/2012_beebe_paper.pdf (“[W]ho… doubts that if eBay had done nothing to minimize counterfeit sales, the Second Circuit would have found contributory liability, as federal courts routinely have for flea market operators, whether these operators had general knowledge, actual knowledge, constructive knowledge, or something else? One is tempted to say that the issue was ultimately not so much one of negligence as of who would be the lowest-cost enforcer of the right.”).

  115. 115.

    See Dogan, supra note 58, at 516 (“The [Tiffany] opinion suggested—without holding—that eBay’s generalized knowledge of widespread counterfeiting required it to do something to facilitate the detection and removal of counterfeit goods. The problem with Tiffany’s argument was that eBay had done something; indeed, it had done quite a lot.”).

  116. 116.

    See generally Jane C. Ginsburg, Separating the Sony Sheep from the Grokster Goats: Reckoning the Future Business Plans of Copyright-Dependent Technology Entrepreneurs, 50 Ariz. L. Rev. 577 (2008) (noting the need for copyright law to have tools by which to recognize the different culpability of a range of intermediaries even though all operate dual purpose technologies).

  117. 117.

    Cf. Frederick W. Mostert and Martin B. Schwimmer, Notice and Takedown for Trademarks, 101 Trademark Rep. 248, 264 (2011) (speculating as to some of the misjudgments that might have prompted the lack of responsiveness of the defendant in Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011)). In Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., the Ninth Circuit affirmed a jury verdict of over $10 million against a Web hosting business that leased, inter alia, server space to customers trafficking in counterfeit goods. In that case, the defendant (a small company) failed to respond expeditiously to takedown requests, and thus fell afoul of Tiffany because it had received actual notice. See Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 941 (9th Cir. 2011).

  118. 118.

    See Report from the Commission to the European Parliament and the Council on the Functioning of the Memorandum of Understanding on the Sale of Counterfeit Goods via the Internet, at 6, 11, COM (2013) 0209 final 6, 11 (Apr. 18, 2013) [hereinafter Report from the Commission], available at http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:2013:0209:FIN:EN:PDF.

  119. 119.

    Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 163 (4th Cir. 2012).

  120. 120.

    See id. at 163 (“The district court recognized that Rosetta Stone had come forward with evidence relevant to its contributory infringement claim. The most significant evidence in this regard reflected Google’s purported allowance of known infringers and counterfeiters to bid on the Rosetta Stone marks as keywords … .”).

  121. 121.

    See also Dogan, supra note 58, at 517 (discussing Tiffany (NJ) LLC v. Dong, No. 11 Civ. 2183(GBD)(FM), 2013 WL 4046380 (S.D.N.Y. Aug. 9, 2013)); cf. Plaintiffs’ Motion for Partial Summary Judgment at 9, Chloé SAS v. Sawabeh Info. Servs. Co., No. CV-11-4147-GAF (MANx), 2012 WL 7679386 (C.D. Cal. Oct. 8, 2013) (copy on file with author at 14 (issuing order against business-to-consumer Web sites found to be contributorily liable requiring them to “monitor their websites on an ongoing basis for compliance and must upon written notice remove or disable access to any listing that plaintiffs identify as infringing or that otherwise comes to defendants’ attention as infringing plaintiffs’ marks”).

  122. 122.

    See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1234 (10th Cir. 2013).

  123. 123.

    Id. at 1252.

  124. 124.

    Id.

  125. 125.

    Id.

  126. 126.

    Id.

  127. 127.

    Id. at 1254.

  128. 128.

    Dogan, supra note 58, at 509–510.

  129. 129.

    Id. at 509–510.

  130. 130.

    Id. at 509 n.35.

  131. 131.

    Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).

  132. 132.

    See MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (noting that the doctrine of substantial non-infringing use would not immunize a copyright defendant secondarily liable under intentional inducement standard).

  133. 133.

    See Shapiro, Bernstein and Co. v. H. L. Green Co., 316 F.2d 304 (2d Cir. 1963); Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996); see also Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) (same concept in trademark law).

  134. 134.

    Twentieth Century Fox v. Newzbin Ltd. (Newzbin I), [2010] EWHC 608 (Ch) (Eng.) at [103] (Kitchin J) (“it will seldom if ever be possible to establish joint tortfeasance on the basis of procurement where there is no common design. Procurement is probably a species of common design. Procurement in its various forms—inducement, incitement and persuasion—is sometimes going to be the clearest way to show that there was a common design”); CBS Songs Ltd. v Amstrad Consumer Electronics plc [1988] AC 1013 (HL); cf. Unilever plc v Gillette (UK) Ltd. [1989] RPC 20 (Mustill LJ) (suggesting that there were the two distinct routes to joint tortfeasance).

  135. 135.

    See, e.g., Vertical Leisure Limited v. Poleplus Limited [2015] EWHC 841 (IPEC) (rejecting claim of common design but finding vicarious liability for cybersquatting variant of passing off based upon vicarious liability as employee or agent).

  136. 136.

    Digital Millennium Copyright Act, Pub. L. No. 105–304, 112 Stat. 2860 (1998); see also Mark A. Lemley, Rationalizing Internet Safe Harbors, 6 J. Telecomm’s & High Tech. L. 101, 104 n. 23 (2007) (critiquing that view).

  137. 137.

    See Tiffany v. eBay 600 F.3d 93 (2d Cir. 2010).

  138. 138.

    See Religious Tech. Ctr. v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995).

  139. 139.

    The copyright notice and takedown mechanism has since that decision been further embedded in the operations of online intermediaries in the United States as much through its inclusion as one of the conditions of safe harbor immunities, as discussed below in Part IV.

  140. 140.

    Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010).

  141. 141.

    See id. at 98–100.

  142. 142.

    Id. at 99.

  143. 143.

    Id. at 106.

  144. 144.

    See e.g., Tribunal de commerce [TC][court of trade] Paris, June 30, 2008, No. 200677799, 11–12 (Fr.) (Louis Vuitton Malletier S.A. v. eBay, Inc.); See, e.g., TC Paris, June 30, 2008, No. 200677799, 11−12 (Fr.) (Louis Vuitton Malletier S.A. v. eBay, Inc.) (unpublished); Tribunal de grande instance [TGI] Troyes, civ., June 4, 2008, No. 060264 (Fr.) (Hermés Int’l v. eBay, Inc.) (unpublished).

  145. 145.

    See Matthias Leistner, Structural Aspects of Secondary (Provider) Liability in Europe, 9 J. Intell. Prop. L. & Prac. 75 (2014).

  146. 146.

    The clarity of the German position as regards liability for trademark infringement is somewhat muddied by a line of case law proceeding under the general clause (Section 3) of the German Unfair Competition law. See Annette Kur, Secondary Liability for Trademark Infringement on the Internet: The Situation in Germany and Throughout the EU, 37 Colum. J.L. & Arts 525 (2014). Insofar as such a claim conceptualizes the liability of the intermediary as an autonomous tort, it comes closer to the French approach. See Case Comment, Trademark Law—Infringement Liability—European Court of Justice Holds that Search Engines Do Not Infringe Trademarks: Joined Cases C-236/08, C-237/08 & C-238/08, Google France SARL v. Louis Vuitton Malletier SA, 2010 ECJ EUR-Lex LEXIS 119 (Mar. 23, 2010), 124 Harv. L. Rev. 648 (2010).

  147. 147.

    See Dinwoodie, supra note 1, at 173.

  148. 148.

    These safe harbours have arisen as a result of legislative provisions, judicial creativity, and some degree of private ordering. See National Report of the United Kingdom, at 2 (“[N]ew limitations are emerging. These are both formal (specific statutory defences) and informal (codes of practice, privately-administered takedown procedures and other alternatives to litigation)”).

  149. 149.

    See, e.g., National Report of New Zealand, at 5. New Zealand also appears, despite its safe harbour, to leave open the possibility of secondary liability for a primary copyright infringement that consists of communicating a work to the public. See id., at 5 (concluding that “if a service provider could be secondarily liable for a primary infringer’s act of transmitting copyright-protected material to the public—or liable for “authorising” such infringement—the safe harbour provisions would appear not to apply”).

  150. 150.

    The scope of the immunity provision in a particular country will not necessarily map to the scope of the secondary liability standard. Nor logically must it do so.

  151. 151.

    See National Report of Taiwan, at 3, 11 (noting copyright specific statutory immunities mirrored on those available under the DMCA); National Report of New Zealand, at 4 (safe harbour in copyright, paralleling with some differences the DMCA).

  152. 152.

    National Report of New Zealand, at 4.

  153. 153.

    See Lemley, supra note 136 (calling for rationalization of the matrix).

  154. 154.

    See Communications Decency Act of 1996, 47 U.S.C.A. § 230(c)(1).

  155. 155.

    17 U.S.C. § 512 (2000). The Second Circuit has read the DMCA safe harbor expansively to limit claims not only under the federal copyright statute but also under state copyright law, which is the means by which sound recordings were protected in the United States prior to 1972. See Capitol Records, LLC et al. v. Vimeo LLC, 826 F.3d 78 (2d Cir. 2016).

  156. 156.

    See, e.g., National Report of Taiwan, at 11–17 (discussing 2009 amendments to the Taiwanese Copyright Act).

  157. 157.

    See 17 U.S.C. § 512 (i)–(j). For recent applications, see BMG Rights Management v. Cox Communications 199 F. Supp.3d 158 (E.D. Va. 2016); EMI Christian Music, Inc. v. MP3tunes, LLC, 844 F.3d 79 (2d Cir. 2016), 2016 WL 7235371.

  158. 158.

    In addition, the provider must have publicly designated an agent to receive notifications of claimed infringement. The Copyright Office has recently revised this provision.

  159. 159.

    See 17 U.S.C. § 512 (c).

  160. 160.

    See 17 U.S.C. § 512 (g).

  161. 161.

    Some have argued for a DMCA-like system of notice and takedown, tied to immunity, to be extended to trademarks. See Susan D. Rector, An Idea Whose Time Has Come: Use of Takedown Notices for Trademark Infringement, 106 Trademark Rep. 699 (2016); Mostert and Schwimmer, supra note 117, at 265. The OSP community is split. See Comments of Etsy, Foursquare, Kickstarter, Meetup, Shapeways, In the Matter of Joint Strategic Plan on Intellectual Property Enforcement (Oct. 16, 2015) (asking for consideration of trade mark safe harbour).

  162. 162.

    In the United States, the Lanham Act does contain provisions that immunize certain intermediary conduct from liability. See, e.g., 15 U.S.C. §1114(2)(B)-(C) (protecting innocent publisher or distributor of newspaper, magazine or electronic communication from liability for trademark infringement based upon use in paid advertising matter against liability for damages); see also 15 U.S.C. §1125(c)(3) (defense against dilution liability based upon facilitating fair use, although it the use facilitated was fair it is hard to see much need for this provision). Some scholars have seen Section 32(2) as possessing the potential for operating as a general trade mark immunity. See, e.g., Lemley, supra note 136, at 105–106. Indeed, Mark Lemley has argued that that immunity provision should provide the model for a uniform safe harbor for intermediaries across all causes of action, in preference to that found in the Communications Decency Act or the DMCA. See id. at 115–118. However, the courts have rarely found reason to apply Section 32(2). Cf. Hendrickson v. eBay, Inc., 165 F. Supp. 2d 1082 (C.D. Cal. 2001).

  163. 163.

    Domain name registrars also benefit from provisions drafted in ways that confer limited immunity from liability for trade mark infringement under U.S. law. See 15 U.S.C. § 1114(2)(D)(iii) (West 2014) (“A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.”); see also Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001).

  164. 164.

    In some countries where the DMCA has been copied, the suggestion has been advanced that the system should be extended to trade mark law. See National Report of Taiwan, at 21–22.

  165. 165.

    To qualify for protection, caching must be ‘automatic, intermediate and temporary’, and for the sole purpose of making onward transmission more efficient. Service providers will lose protection if they do not act expeditiously to remove cached information upon obtaining actual knowledge that the original copy has been removed or its removal ordered by a competent authority. See E-Commerce Directive, art. 13.

  166. 166.

    Id. arts. 12–14; see also Case C-484/14, Tobias McFadden v Sony Music, EU:C:2016:689 (CJEU 2016).

  167. 167.

    The safe harbours limit monetary liability whether classified as primary or secondary. This is important. While in common law systems, they will operate most often in limiting secondary liability, see National Report of the United Kingdom, at 18 (“[These safe harbours are] not restricted to secondary liability, though in practice the nature of the conditions mean that primary wrongdoers will rarely qualify (since they would tend to have authority or control over the author of data, or have knowledge of the relevant unlawful activity)”), many countries treat these fact patterns as a matter of primary liability. See supra text accompanying notes 46–48. And even common law countries might treat liability under particular regimes (e.g., defamation) as a matter of primary liability.

  168. 168.

    Contra National Report of the United Kingdom, at 12 (suggesting that uncertainty as to the scope of safe harbours “in large part [derives] from the fact that they define negatively what conduct is incapable of giving rise to liability, rather than stating positively what a service provider must do to avoid liability. This unsatisfactory position has hindered efforts at harmonisation.”). Given the apparent historical contingency as to why courts have shaped service provider liability through an affirmative standard of secondary liability, the development of a zone of immunity, or the evolution of elements of primary liability to cater for intermediary concerns, it should be no surprise that (despite the professed generality of certain principles), once can sometimes find reference to different considerations in different contexts. See id. at 19 (“[M]any of the safe harbours mirror devices in substantive liability doctrines which serve to immunise passive and neutral platforms from prima facie liability for third parties’ activities (though these depend on different considerations depending on the type of wrongdoing involved). Doctrines of innocent dissemination in defamation and authorisation liability in copyright provide the clearest examples of this tendency in English law”).

  169. 169.

    See id. at 15 (“Of the three safe harbours, the storage safe harbour is most frequently relied upon by service providers, most frequently in the context of defamation claims.”).

  170. 170.

    E-Commerce Directive, art. 14.

  171. 171.

    See Joined Cases C-236/08–C-238/08, Google France SARL v. Louis Vuitton Malletier SA, 2010 E.C.R. I-2417, ¶¶ 106–20; Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011, ¶ 113.

  172. 172.

    Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011, ¶ 113; see id. ¶ 115 (“[T]he mere fact that the operator of an online marketplace stores offers for sale on its server, sets the terms of its service, is remunerated for that service and provides general information to its customers cannot have the effect of denying it the exemptions from liability provided for by [the E-Commerce Directive].”)

  173. 173.

    The Advocate-General in eBay had questioned the application of the neutrality condition to immunity under Article 14; the concept is referenced in a recital addressing another provision. See eBay, ¶¶ AG 139−46. But the Court of Justice adopted the requirement in both Google France and eBay. See Google France, at ¶¶ 113−16.

  174. 174.

    See L’Oréal ¶ 119.

  175. 175.

    L’Oréal, [2009] EWHC 1094, [437].

  176. 176.

    Id.

  177. 177.

    Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011, ¶ 113; see id. ¶ 115. The fact that certain services are automated should not always mean that the provider of those services is of itself not “active.” Algorithmic development is surely relevant behavior in assessing degrees of activity. Cf. Lenz v. Universal Music Corp., 815 F. 3d 1145 (9th Cir. 2016) (amending opinion to reflect algorithmic review.) But see Kur, supra note 146, at 532 (noting the majority position in German case law that has treated suggestions proffered by operation of algorithms as within the protection of Article 14).

  178. 178.

    L’Oréal, 2011 E.C.R. I-6011, ¶ 116.

  179. 179.

    Id. ¶ 117.

  180. 180.

    Id. ¶ 124 (quoting Article 14 of the E-Commerce Directive).

  181. 181.

    See id. ¶ 120.

  182. 182.

    National Report of the United Kingdom, at 15.

  183. 183.

    See L’Oréal ¶ 122.

  184. 184.

    The knowledge condition that might take a service provider out of the hosting safe harbor varies slightly from country to country. For example, the New Zealand safe harbor is dependent upon the service provider no knowing or have reason to know that the material infringes copyright in the work. But it is clear that receipt of notice from a copyright owner does not of itself constitute knowledge. See National Report of New Zealand, at 6–7. That would of course put the service provider on notice of a claim of infringement. (And as New Zealand decided not to penalise the service of false or misleading notices, see id. at 7, unlike for example section 512(f) of the US Copyright Act, it is possible that incorrect notices might be served). But that is not the statutory knowledge standard, the establishment of which might require a court to look at the quality of the notice and the information it provides. For example, does it contain sufficient information to enable a service provider to determine whether the allegedly infringing conduct is justified by a defense? See id. at 7.

  185. 185.

    See Cass. com., May 3, 2012, Bull. civ. IV, No. 89 (Fr.) (eBay Inc. v. LVMH, Parfums Christian Dior); see also Beatrice Martinet Farano, French Supreme Court Denies eBay Hosting Protection, Transatlantic Antitrust & IPR Developments, Issue No. 3/2012 (June 21, 2012), available at http://ttlfnews.wordpress.com/2012/07/02/transatlantic-antitrust-and-ipr-developments-issue-no-32012-june-21-2012/ (discussing the French Supreme Court’s decision, in which the court specifically relied on the “active role” standard from the Court of Justice’s L’Oréal and Google France decisions).

  186. 186.

    See Audiencia Provincial Sentencia [A.P.S.] [Provincial Appellate Court Sentence] Madrid, Jan. 14, 2014 (No. 11/2014) (Spain) (Gestevision Telecinco, S.A. v. YouTube, LLC), translated in Decision No. 11/2014 on YouTube v Telecinco, Hogan Lovells Global Media & Comm. Watch (Feb. 14, 2014), http://www.hlmediacomms.com/files/2014/02/Telecinco-v-Youtube_EN.pdf.

  187. 187.

    See Martini Manna & Elena Martini, The Court of Turin on the Liability of Internet Service Providers (June 10, 2014), http://www.lexology.com/library/detail.aspx?g=ec9e1298-7367-4f0a-a263-0cbaff076e29 (reporting on similar outcomes in Italy on similar grounds in Delta TV Programs s.r.l. v. Google Inc., Tribunale Ordinare [Trib.] [Ordinary Court of First Instance] Turin, 23 giugno 2014, Docket No. 38113/2013 (It.), available at http://www.ipinitalia.com/Ordinanza%20Youtube%20Torino.pdf).

  188. 188.

    See Kur, supra note 146, at 531–32 (noting different approaches in Germany and France).

  189. 189.

    This would also have been the approach adopted in New Zealand had the recommendations of the New Zealand Law Commission been accepted. In 1999, the Commission proposed what looked like a horizontal standard for secondary liability of online service providers. See New Zealand Law Commission, Electronic Commerce: Part Two 137, ¶ 333 (Wellington, New Zealand 1999). But strictly what it proposed would have created immunity where the provider had no knowledge of the existence of the unlawful information or acted to remove such information. That is to say, even if knowledge were established, the claimant would still have to show the other elements of an applicable cause of action. See National Report of New Zealand, at 1–2 n.3.

  190. 190.

    See, e.g., L’Oréal S.A. v. eBay Int’l AG, [2009] EWHC 1094, [344] (Ch) (Eng.) (noting that the question of secondary liability is a matter for national law).

  191. 191.

    See, e.g., National Report of the Czech Republic, at 10.

  192. 192.

    See National Report of the United Kingdom, at 13–14 (“In essence, [the mere conduit] safe harbour confirms that mere assistance by passively transmitting will not be sufficient for liability, which largely mirrors the position of English law in relation to secondary liability for defamation, copyright and trade mark infringement” (citing Bunt v Tilley [2006] EWHC 407 (QB)); id. at 14 (“[L]ike the mere conduit safe harbour, the service provider [seeking to benefit from the storage safe harbour] must not have had authority or control over the person who provided the data. This excludes cases of common design, procurement, and vicarious liability.”); id. at 19 (“[M]any of the safe harbours mirror devices in substantive liability doctrines which serve to immunise passive and neutral platforms from prima facie liability for third parties’ activities (though these depend on different considerations depending on the type of wrongdoing involved). Doctrines of innocent dissemination in defamation and authorisation liability in copyright provide the clearest examples of this tendency in English law”).

  193. 193.

    See id. at 15 (“Safe harbours are often invoked by service providers to achieve summary disposal of claims against them, particularly in the context of defamation”).

  194. 194.

    See National Report of Taiwan, at 13 (in copyright law).

  195. 195.

    See e.g., AdWords Trademark Policy, Google, https://support.google.com/adwordspolicy/answer/6118?hl=en. The fact that a service provider adopts a corporate or industry policy (for example, of notice and takedown) should in theory not be dispositive of secondary liability. Cf. Interflora, Inc. v. Marks & Spencer Plc & Anor (C-323/09), [2012] E.T.M.R. 1 (CJEU 2011) (questions referred). But according to the UK National Report, “[a]lthough not decisive on their own, they contribute to the courts’ assessment of service providers’ passivity and neutrality, whether those providers authorise copyright infringements by their users, whether they engage in communications to the public of the relevant copyright works, and whether they intervene in a way that creates tortious secondary liability.” National Report of the United Kingdom, at 27.

  196. 196.

    Memorandum of Understanding on the Sale of Counterfeit Goods via the Internet, May 4, 2011 [hereinafter Memorandum of Understanding], available at http://ec.europa.eu/internal_market/iprenforcement/docs/memorandum_04052011_en.pdf.

  197. 197.

    See, e.g., Meng Jing, Taobao Steps up Fight Against Fake LV, China Daily USA (Nov. 11, 2013, 4:13 PM), http://usa.chinadaily.com.cn/business/2013-10/11/content_17025360.htm.

  198. 198.

    See Office of the U.S. Intellectual Prop. Enforcement Coordinator, Intellectual Property Spotlight 2 (July/August 2013), available at http://www.whitehouse.gov/sites/default/files/omb/IPEC/spotlight/ipec_spotlight_july_aug_2013.pdf. The signatories to the MOU have been discussing its possible extension to payment service providers. See European Comm’n, Memorandum of Understanding on the Sale of Counterfeit Goods via the Internet–Autumn Meeting–13 November 2013–Summary, at 4, E.C. Doc. MARKT D3/FT/cm-Ares(2013)3821568 [hereinafter November 2013 Meeting Report], available at http://ec.europa.eu/internal_market/iprenforcement/docs/summary-of-the-autumn-meeting-20131113_en.pdf.

  199. 199.

    Memorandum of Understanding, supra note 196, at 1.

  200. 200.

    Id. at 1.

  201. 201.

    Id. ¶ 1(1).

  202. 202.

    Id. ¶¶ 11−12; see generally Mostert & Schwimmer, supra note 117.

  203. 203.

    Memorandum of Understanding, supra note 196, at ¶ 12.

  204. 204.

    See supra text accompanying notes 103–113.

  205. 205.

    For an early assessment, see Jennifer M. Urban & Laura Quilter, Efficient Process or “Chilling Effects”? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, 22 Santa Clara Computer & High Tech. L.J. 621 (2006); see also Jennifer M. Urban, Joe Karaganis and Brianna L. Schofield, Notice and Takedown in Everyday Practice (2016).

  206. 206.

    See National Report of the United Kingdom, at 30 (noting inter alia actions for unjustified threats in respect of several intellectual property rights).

  207. 207.

    See id. at 30 (discussing Media CAT Ltd. v Adams [No 2] [2011] FSR 297; Golden Eye (International) Ltd. v Telefónica UK Ltd. [2012] EWHC 723 (Ch), rev’d in part [2012] EWCA Civ 1740).

  208. 208.

    See National Report of the United Kingdom, at 30 (“it seems unlikely that retaliatory action would be practicable in response to a groundless takedown request in all but the most exceptional circumstances”).

  209. 209.

    See 17 U.S.C. § 512(c)(3).

  210. 210.

    See Rossi v. Motion Picture Ass’n of America, 391 F.3d 1000, 1004 (9th Cir. 2004); Lenz v. Universal Music Corp., 572 F.Supp.2d 1150, 1154–55 (N.D. Cal. 2008).

  211. 211.

    See 17 U.S.C. § 512(g)(1).

  212. 212.

    This mechanism also exists in countries that have copied the detail of the DMCA. See, e.g., National Report of Taiwan, at 15.

  213. 213.

    See National Report of New Zealand, at 6.

  214. 214.

    This approach in New Zealand is, however, consistent with its decision also not to immunise from other causes of action service providers who act in good faith on a notice and take down material. See id. at 6; compare 17 USC § 512. This omission in theory might make more balanced the strategic choices faced by service providers receiving notice, but the immunity from exposure to copyright liability coupled with the lack of any clear cause of action through which to pursue wrongful takedowns means that this difference is likely to be theoretical only.

  215. 215.

    See National Report of the United Kingdom, at 31–2.

  216. 216.

    Cf. 17 U.S.C. § 512(f) (West 2014) (imposing liability on “[a]ny person who knowingly materially represents … that material or activity is infringing” or “that material or activity was removed or disabled by mistake or misidentification”).

  217. 217.

    See Memorandum of Understanding, supra note 196, at ¶ 16.

  218. 218.

    Id. ¶ 19.

  219. 219.

    Cf. Mostert & Schwimmer, supra note 117, at 265 (noting that at present intermediaries would be advised to respond even to notices that were “written in crayon”); see also National Report of the United Kingdom, at 15 (discussing adequacy of the notice given in Tamiz v. Google, Inc. [2012] EWHC 449).

  220. 220.

    Annette Kur has observed that “the German Federal Supreme Court has given certain guidelines as to when a notification is to be considered as serious and plausible enough to give rise to removal and prevention claims, but those guidelines inevitably remain fairly vague and general.” Kur, supra note 146, at 534–35; see also BGH Aug. 17, 2011, 191 BGHZ 19, (Ger.) (Perfume Stick), translated in 44 Int’l Rev. Intell. Prop. & Competition L. 123, 128, ¶ 28 (2013) (“This requires that the notice be worded so concretely as to allow the addressee of the notice to detect the violation easily—meaning without a thorough legal or factual examination. The amount of effort to be expected of an operator of an internet trading platform in performing any such examination depends upon the circumstances of the individual case, especially upon the gravity of the reported infringements on the one hand and the operator’s opportunities to learn of them on the other hand.”).

  221. 221.

    National Report of the United Kingdom, at 15 (discussing Tamiz v. Google, Inc. [2012] EWHC 449).

  222. 222.

    Cartier Int’l v. British Sky Broadcasting, [2014] EWHC 3354 (Ch), [2016] EWCA Civ 658.

  223. 223.

    Some scholars have argued that the focus on human rights has impoverished the analysis of the Court of Justice. See Martin Husovec, Holey Cap! CJEU Drills (Yet) Another Hole In The E- Commerce Directive’s Safe Harbors, 12 J. Intell. Prop L. & Prac. 115 (2016) (discussing decision in Tobias McFadden v Sony Music). It certainly runs the risk of fossilising legal norms.

  224. 224.

    See Copyright Modernisation Act (Bill C-11) (effective January 2, 2015).

  225. 225.

    Cf. Kur, supra note 146, at 536 (noting that German courts applying the Störerhaftung doctrine to Internet auction sites “did not confine [filtering] duties to future identical offers made by the same person, but extended them to infringements that were essentially of the same character”).

  226. 226.

    See Cour de cassation [Cass.] [supreme court for judicial matters] 1e civ., July 12, 2012, Bull. civ. I, No. 167 (Fr.) (Google Inc. v. Bac Films); Cass. 1e civ., July 12, 2012, Bull. civ. I, No. 166 (Fr.) (Google Inc. v. Bac Films); Cass. 1e civ., July 12, 2012, Bull. civ. I, No. 162 (Fr.) (consolidated appeals, Google Inc. & Aufeminin.com v. André Rau, H & K); see also Christine Gateau & Pauline Faron, Take Down, Stay Down: Paris Court of Appeal Confirms Hosting Providers Have No General Monitoring Obligation, 20 Computer & Telecomm. L. Rev. 12 (2014) (U.K.) (discussing Cour d’appel [CA] [regional court of appeal] Paris, 2e civ., June 21, 2013 (Fr.) (Societe des Producteurs de Phonogrammes en France v. Google) (unpublished)).

  227. 227.

    Memorandum of Understanding, supra note 194, ¶ 25.

  228. 228.

    Id. ¶ 27.

  229. 229.

    Report from the Commission, supra note 118.

  230. 230.

    See Lemley et al., supra note 6.

  231. 231.

    See European Commission, Proposal for a Directive of the European Parliament and of the Council on copyright in the Digital Single Market – COM(2016)593 (Sept. 14, 2016), art 13. The UK Goverment has been facilitating talks among Google, movie studies and the recording studios intended to negotiate a voluntary code of conduct that would reduce prominence of links to infringing contents.

  232. 232.

    The existing signatories have begun to consider procedures for accession of new brand owners and platforms to the MOU. See European Comm’n, Memorandum of Understanding on the Sale of Counterfeit Goods via the Internet – Spring Meeting – 1 April 2014 – Summary, at 1, E.C. Doc. MARKT D3/FT/cm-Ares(2013)1215882, available at http://ec.europa.eu/internal_market/iprenforcement/docs/mou_meeting_summary_20140401_en.pdf.

  233. 233.

    See November 2013 Meeting Report, supra note 197, at 2−3 (discussing public availability of key performance indicators).

  234. 234.

    See Memorandum of Understanding, supra note 196, at 1.

  235. 235.

    Id. ¶¶ 22, 25.

  236. 236.

    Id. ¶ 10.

  237. 237.

    See UK Intellectual Property Office, Protecting Creativity, Supporting Innovation: IP Enforcement 2020 (May 2016).

  238. 238.

    See National Report of the United Kingdom, at 1 (“service providers have lately been subjected to a range of new regulatory schemes and litigation intended to deputise their services for various public and private purposes, including law enforcement, upholding intellectual property rights, and detecting and prosecuting wrongdoing”).

  239. 239.

    See id. at 20–23; National Report of Germany, at 2.

  240. 240.

    See National Report of the United Kingdom, at 2 (“[service providers] may be liable in the very loose sense of being contractually required to act under an applicable industry code or self-regulatory regime, or of being liable to a declaration under such a regime.”).

  241. 241.

    However, the need to comply with such obligations does not as strict matter render the service providers “liable.” See R (British Telecommunications plc) v Secretary of State [2011] EWHC 1021 (Admin), aff’d [2012] EWCA Civ 232.

  242. 242.

    See National Report of New Zealand, at 2–3. For a critical discussion of several graduated response systems, see Rebecca Giblin, Evaluating Graduated Response, 37 Colum. J. L. & Arts 147 (2014).

  243. 243.

    See National Report of the United Kingdom, at 28; see Digital Economy Act 2010, § 9.

  244. 244.

    See Deregulation Act 2015 c. 20 § 56 (May 26, 2015).

  245. 245.

    See National Report of the United Kingdom, at 28 (“it appears unlikely at this stage that they will ever be implemented”).

  246. 246.

    See National Report of New Zealand, at 3 & 8; see also Copyright Act 1994, § 122A (“file sharing is where—(a) material is uploaded via, or downloaded from, the Internet using an application or network that enables the simultaneous sharing of material between multiple users; and (b) uploading and downloading may, but need not, occur at the same time”).

  247. 247.

    See National Report of New Zealand, at 8.

  248. 248.

    The award can rise to as much as NZ $ 15,000. See id., at 8. However, although some awards have approached NZ $ 1000, most have been lower. See id. at 12.

  249. 249.

    See id., at 8.

  250. 250.

    See id., at 9.

  251. 251.

    See id., at 12.

  252. 252.

    See id., at 13.

  253. 253.

    See id., at 9.

  254. 254.

    National Report of the United Kingdom, at 1–2.

  255. 255.

    See id. at 23 (“it is theoretically possible for English courts to issue de-indexing and payment freezing orders by analogy with Norwich Pharmacal disclosure under the equitable protective jurisdiction. However, no such orders have yet been made”).

  256. 256.

    Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights, 2004 O.J. (L 195) 22 [hereinafter Enforcement Directive]; Case C-275/06, Promusicae v. Telefonica, 2008 E.C.R. I-271. <Emphasis Type="Italic">See also Case C-461/10, Bonnier Audio AB v. Perfect Commc’n Sweden AB, 2012 E.C.R. I-00000, 2 C.M.L.R. 42 (2012) (order for information regarding subscriber to whom ISP gave IP address which was allegedly used to commit infringement); Golden Eye v. Telefonica, [2012] EWHC 723 (Ch) (Eng.) (order to similar effect).

  257. 257.

    See Case C-580/13, Coty Germany GmbH v. Stadtsparkasse Magdeburg, EU:C:2015:485 (CJEU 2015) (Article 8(3)(e) over-rides a national provision which allows, “in an unlimited and unconditional manner,” a banking institution to invoke banking secrecy in order to refuse to provide information concerning the name and address of an account holder”).

  258. 258.

    See Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133 . “Two cases suggest that the English courts are alive to the risk that blanket disclosure orders against ISPs may be abused by claimants for the purpose of extracting monetary settlements from subscribers accused of copyright infringement.” National Report of the United Kingdom, at 21 (citing Media CAT Ltd. v Adams [No 2] [2011] FSR 29, 724–5; Golden Eye (International) Ltd. v Telefónica UK Ltd. [2012] EWHC 723 (Ch), [146]; rev’d in part [2012] EWCA Civ 1740.)

  259. 259.

    National Report of the United Kingdom, at 20.

  260. 260.

    Id., at 20.

  261. 261.

    See The Rugby Football Union v. Viagogo Limited [2011] EWCA Civ. 1585 [27]–[29] (Longmore LJ).

  262. 262.

    See The Rugby Football Union v. Consolidated Info. Servs. (Viagogo), [2012] UKSC 55, [43]–[46] (Lord Kerr JSC).

  263. 263.

    Enforcement Directive art. 11. See also Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society, 2001 O.J. (L 167) 10 [hereinafter Information Society Directive]. Although the claimant is not required to prove the primary wrongdoing, courts do have regard to the nature, seriousness and strength of the primary claim. See National Report of the United Kingdom, at 20–21. As an equitable matter, the service provider’s conduct might also be relevant. See G v Wikimedia Foundation Inc. [2010] EMLR 14, 364.

  264. 264.

    See E-Commerce Directive, recital 45; id., arts. 12(3), 13(3), 14(3). Cf. National Report of the United Kingdom, at 16 (noting that an injunction “under the Equality Act may not impose on such a service provider any liability which would ‘contravene’ articles 12–14 of the E-Commerce Directive, or amount to a general obligation within Article 15. This goes further than the safe harbours, since it suggests that no non-monetary liability can attach in respect of activities protected by a safe harbour.”). Riordan argues that whether the third party’s conduct is notionally unlawful is always relevant, even when the relief sought against an intermediary is non-monetary (and not based upon a finding of illegality by the intermediary). See National Report of the United Kingdom, at 20 (“English law recognises a number of [non-monetary] remedies against non-wrongdoers… Although they are independent of any finding of primary or secondary liability against the service provider, they require some kind of primary wrongdoing to be demonstrated to the relevant standard of proof.”).

  265. 265.

    L’Oréal ¶ 131. The applicability of Article 11 would not render the intermediary liable for damages.

  266. 266.

    See Enforcement Directive, recital 23; see also Information Society Directive, recital 59.

  267. 267.

    See L’Oréal, 2011 E.C.R. I-6011, ¶¶ 136−43.

  268. 268.

    See id. ¶¶ 136, 141.

  269. 269.

    See id. ¶ 143.

  270. 270.

    Cartier Int’l v. British Sky Broadcasting, [2014] EWHC 3354 (Ch), at [162].

  271. 271.

    See L’Oréal, ¶¶ 141−42.

  272. 272.

    See William Horobin & Greg Bensinger, L’Oréal, eBay Settle Dispute over Counterfeit Goods: French Company Was Dissatisfied with Internet Retailer’s Response to Concerns, Wall St. J. Online (Jan. 15, 2014, 3:18 PM), http://online.wsj.com/news/articles/SB10001424052702304419104579322870801818590. But see infra notes 306–351 and accompanying text (discussing Mr. Justice Arnold’s later copyright rulings, where he relied on the Court of Justice’s L’Oréal opinion in interpreting Article 8(3) of the Information Society Directive).

  273. 273.

    See Kur, supra note 146, at 535−39 (discussing the relevant line of German cases).

  274. 274.

    See id. at 9; see also Leistner, supra note 145, at 79 (“Typically, the injunctions also require the interferer … to take reasonable measures, such as filtering, to prevent comparable infringements in the future. However, such preventive measures must not be unreasonably burdensome in the sense that the provider is required to take steps which would jeopardise its entire business model. Instead, only reasonable and technically possible measures in order to identify comparable infringements, i.e., offers of the same trader or comparable counterfeit goods, should be imposed.”). Kur does express a concern that the second Rapidshare judgment may move too far beyond this important limit and flirt with a violation of Article 15 of the E-Commerce Directive. See Kur, supra note 146, at 539–40 (citing the second Rapidshare judgment, BGH Aug. 15, 2013, GRUR 1030, 2013 (Ger.) (File-Hosting-Dienst)).

  275. 275.

    See Kur, supra note 46, at 532; cf. Dogan, supra note 58, at 516 n. 85 (“‘Reasonableness,’ of course, does not require the intermediary to do the impossible, and many courts have made clear that contributory infringement defendants must have ‘sufficient control over the infringing activity to merit liability’.” (citing Gucci Am., Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228, 248 (S.D.N.Y. 2010))).

  276. 276.

    See Leistner, supra note 145 at 78−82; see, e.g., BGH Mar. 11, 2004, 158 BGHZ 236 (Ger.) (Internet Auction I), translated in 2005 E.T.M.R. 25, ¶ 41 (“In the event of an order on injunctive relief being issued, then the defendant would only be held liable for breaches if it committed a culpable act… For trade mark infringements which cannot be recognised in the filtering procedure applied in advance (because, for example, a counterfeit Rolex watch is on offer at a price appropriate for an original, without reference to its counterfeit character), no fault would be attached”).

  277. 277.

    See generally Leistner, supra note 145 at 79; see, e.g., BGH Mar. 11, 2004, 158 BGHZ 236 (Internet Auction I), translated in 2005 E.T.M.R. 25, ¶ 41 (“[E]very time that the defendant is notified of a clear breach of the law, it must not only block the concrete offer without delay … but also apply preventative measures to ensure as far as possible that no further trade mark infringements of this kind occur. In the case in dispute, … a number of clearly recognisable trade mark infringements have occurred. The defendant must see these events as a reason to subject offers for Rolex watches to specific checking… It may be possible for the defendant to make use of a software program in this connection to reveal the corresponding suspicious cases, with the relevant suspect points being perhaps the low price and also any reference to imitation.”).

  278. 278.

    The E-Commerce Directive recognizes that preventing recurring infringement may require some specific monitoring, and that if properly tailored this will not violate Article 15. See E-Commerce Directive, recital 48.

  279. 279.

    Kur, supra note 146, at 534–538; Leistner, supra note 145, at 79; see BGH Mar. 11, 2004, 158 BGHZ 236 (Internet Auction I), translated in 2005 E.T.M.R. 25, ¶ 40 (“A company which … operates a platform for third-party auctions on the internet cannot reasonably be expected to investigate every offer prior to publication on the internet to identify any possible breach of the law. Any such obligation would place in question the entire business model…”).

  280. 280.

    Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011, ¶ 139.

  281. 281.

    Id.

  282. 282.

    Id. ¶ 140.

  283. 283.

    See Leistner, supra note 145, at 88 (identifying as considerations relevant to the imposition of relief, based upon an analysis of European law: “[T]he degree of (objective) risk caused by the secondary infringer as well as the degree of control the secondary infringer has in relation to the acts of direct infringement … Moreover, the (objective) design of a business model of an intermediary might establish tortious liability where the business model is specifically designed to profit from direct acts of infringement …”); cf. MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 939 (2005) (relevance of design); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984) (extent of non-infringing use); Dogan, supra note 58, at 509–10 (discussing control).

  284. 284.

    See Information Society Directive, recital 59 (“In many cases, intermediaries are best placed to bring … infringing activities [of third parties using their services] to an end”).

  285. 285.

    See Dinwoodie, supra note 27, at 489–93.

  286. 286.

    Information Society Directive, art. 8(3).

  287. 287.

    Case C-360/10, (SABAM) v. Netlog NV, 2 C.M.L.R. 18 (2012); Case C-70/10, Scarlet Extended SA v. SABAM, 2011 E.C.R. I-11959.

  288. 288.

    Similar considerations have informed German law applying the Störerhaftung doctrine. See Kur, supra note 146, at 533, 536–37.

  289. 289.

    The Court of Justice may have been more solicitous of the fundamental rights of the Internet service provider than was the European Court of Human Rights in its first case addressing the liability of ISPs. See Delfi v. Estonia, App. No. 64569/09, Eur. Ct. H.R. (2013). In that case, the Court of Human Rights held that it was not necessarily incompatible with the free expression guarantee of Article 10 of the European Convention on Human Rights for an Estonian news portal to be held monetarily liable as a result of anonymous (allegedly defamatory) comments posted on its Web site by users in response to a news story on the site. Indeed, the failure to contemplate such liability might implicate the rights of the defamed party under Article 8 of the Convention. See id. ¶ 91. The Court of Human Rights did not, however, need to have regard to the prohibition against general monitoring found in secondary EU law, and it likewise did not have to weigh in the balance the freedom to conduct business under Article 16 of the Charter of Fundamental Rights. Thus, although the Convention on Human Rights has been more clearly incorporated into EU law post-Lisbon Treaty, see Treaty on European Union, art. 6(3), 2010 O.J. (C 83–13) (“Fundamental rights, as guaranteed by the European Convention for the Protection of Human Rights and Fundamental Freedoms and as they result from the constitutional traditions common to the Member States, shall constitute general principles of the Union’s law.”), the variety of norms at play in a case before the Court of Justice suggests that a different outcome might ensue under EU law. See id. art. 6(1) (“The Union recognises the rights, freedoms and principles set out in the Charter of Fundamental Rights of the European Union …, which shall have the same legal value as the Treaties.”). This implicates the difficult relationship between the European Court of Human Rights and the Court of Justice of the European Union, which is beyond the scope of this Chapter. See generally Sionaidh Douglas-Scott, The European Union and Human Rights After the Treaty of Lisbon, 11 Human Rights L. Rev. 645 (2011); Charter of Fundamental Rights of The European Union 2000 OJ (C 346/3) (Dec 18, 2001) art. 52(3); see also Agyar Tartalomszolgáltatók EgyesüLete and Index.Hu Zrt v. Hungary, Application No. 22947/13 (May 2, 2016) (ECHR).

  290. 290.

    See. Leistner, supra note 145, at 79 (suggesting that the solution found by the German courts “strikes a fair balance between IPRs and the interest of genuinely ‘neutral’ host providers”).

  291. 291.

    See Case C-314/12, UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, EU:C:2014:192 (CJEU 2014).

  292. 292.

    Article 8(3) did not require a specific relationship between the alleged infringer and the intermediary against whom an injunction was sought. See Telekabel, ¶¶ 35, 38. The Court did not address the suggestion by the Advocate-General that the principle of proportionality might, however, warrant the infringers or the host ISP being pursued first. See Telekabel, ¶ AG 107 (“[I]t should be noted that the ISP is not in a contractual relationship with the operator of the copyright-infringing website. As a consequence …, a claim against the ISP is, admittedly, not completely out of the question, but the originator must, as a matter of priority, so far as is possible, claim directly against the operators of the illegal website or their ISP.”); see also Disturber Liability of an Access Provider 2016 I.I.C 481 at ¶ 83 (BGH).

  293. 293.

    The modalities of injunction practice under Article 8(3)—like Article 11 of the Enforcement Directive—are a matter of national law. So variation among member states is allowed subject to the constraints of EU law. See Telekabel, ¶¶ 43–44. That is to say, the Court of Justice was considering whether the Austrian approach was permissible, and not whether that procedure was required in all member states. See infra text accompanying note 336 (comparing nature of blocking orders in the United Kingdom).

  294. 294.

    See Telekabel, ¶ 64.

  295. 295.

    See id. ¶ 47.

  296. 296.

    Because different member states might implement their obligations under Article 8(3) or Article 11 in different ways, the precise conditions that the court imposed on the Austrian courts might not apply to orders of a slightly different nature issued by other courts. For example, some of the detailed procedural protections identified in Telekabel flow from the outcome-based order issued by the Austrian court, and may not apply to orders detailing specific measures that have to be implemented. See Martin Husovec, CJEU Allowed Website-Blocking Injunctions with Some Reservations, 9 J. Intell. Prop. L. & Prac. 631, 633 (2014) (commenting upon applicability of Telekabel to orders that have been issued by the U.K. courts). But the broad principles announced by the Court of Justice will apply to slightly different orders issued by non-Austrian courts.

  297. 297.

    See Telekabel, ¶¶ 50−51.

  298. 298.

    In other countries (such as the United Kingdom) orders issued under the relevant provisions have been far more specific, and have been framed in terms of the measures to be implemented rather than the general outcome to be achieved. See infra notes 306 & 311 (listing U.K. cases). In those countries, ongoing mechanisms devised by the court to accord legal certainty to ISPs will be less crucial to ensuring compliance with the fundamental rights of the ISP.

  299. 299.

    See Telekabel, ¶ 52.

  300. 300.

    See supra text accompanying notes 116–117.

  301. 301.

    See Telekabel, ¶ 53.

  302. 302.

    Id. ¶ 54.

  303. 303.

    Typically, in copyright cases involving the direct interpretation of copyright legislation, the Court of Justice views copyright as a “right” of authors and treats limitations thereon designed to further user freedoms as interests or exceptions. But see Case C-201/13, Deckymyn v. Vandersteen EU:C:2014:2132 at ¶ 26 (CJEU 2014) (exceptions designed to achieve fair balance). This is a debate about the juridical character of user interests that can be seen worldwide. But when filtered through the balancing mechanisms of a fundamental rights analysis, the user interests are put on a par with those of intellectual property owners, and with those of intermediaries. The effects of injecting fundamental rights discourse into intellectual property adjudication on a routine basis remain to be seen. But one possible effect might be the readjustment of the conceptual relationship between author and user interests.

  304. 304.

    See Telekabel, ¶¶ 55−56. This requirement appears to suggest that measures resulting in over-enforcement may be problematic, although it is not clear how much over-enforcement would violate fundamental user rights. The Court of Justice seemed less concerned with under-enforcement; attention to under-enforcement has prompted some national courts to deny relief on the basis that futile measures are not proportionate. The court’s conclusion is to some extent the result of recognizing that intellectual property rights are themselves not absolute. See id. ¶¶ 58−60. According to the court, effective protection of the Article 17(2) right requires that measures “must have the effect of preventing unauthorised access … or, at least, of making it difficult to achieve and seriously discouraging internet users who are using the services [from accessing the infringing work made available in violation of Art 17(2)], thus largely rejecting the futility argument. Id. ¶ 63. Combined with concerns about over-enforcement, arguments highlighting under-enforcement sought to hold right-holders to an impossible “goldilocks” standard. Courts have rightfully resisted such a rule.

  305. 305.

    Telekabel, ¶ 57; cf. 17 USC § 512(g) (West 2014) (counter notice possibility for those on whom DMCA takedown notice served).

  306. 306.

    Twentieth Century Fox Film Corp. v. Britich Telecommc’ns PLC (Newzbin II), [2011] EWHC 1981 (Ch) (Eng.).

  307. 307.

    “Section 97A [which implements Article 8(3)] must be interpreted and applied consistently with the Court of Justice’s guidance in L’Oréal v eBay. In my judgment the court’s reasoning demonstrates that the jurisdiction is not confined to the prevention of the continuation, or even repetition, of infringements of which the service provider has actual knowledge. On the contrary, an injunction may be granted requiring the service provider ‘to take measures which contribute to … preventing further infringements of that kind.’ Although such measures may consist of an order suspending the subscriber’s account or an order for disclosure of the subscriber’s identity, the Court of Justice makes it clear that these examples are not exhaustive, and that other kinds of measures may also be ordered.” Newzbin II, [2011] EWHC 1981, [156].

  308. 308.

    See id. at [177].

  309. 309.

    Id. at [200] (“The order is a narrow and targeted one, and it contains safeguards in the event of any change of circumstances. The cost of implementation to BT would be modest and proportionate.”).

  310. 310.

    Similar measures have also been sought in other countries, but have not given rise to the extensive reasoning provided by Arnold J. The most significant judicial discussion of these issues outside the United Kingdom has occurred in the Netherlands and Germany. Cf. Stichting Brein v. Ziggo BV., EU:C:2017:99 (AG Szpunar Feb 8, 2017).

  311. 311.

    See Paramount Home Entertainment International Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 3479 (Ch) (Arnold J); The Football Association Premier League Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 2058 (Ch) (Arnold J); EMI Records Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 379 (Ch); Twentieth Century Fox Film Corporation v British Telecommunications plc [2011] EWHC 1981 (Ch) (Arnold J); [2011] EWHC 2714 (Ch) (Arnold J) (Newzbin II); Dramatico Entertainment Ltd. v British Sky Broadcasting Ltd. [2012] EWHC 268 (Ch); [2012] EWHC 1152 (Ch) (Arnold J); Golden Eye v. Telefonica, [2012] EWHC 723 (Ch); Football Ass’n Premier League v. British Telecomm. Plc [2017] EWHC 480 (Ch) (order directed at streaming services).

  312. 312.

    National Report of the United Kingdom, at 21.

  313. 313.

    For example, in assessing the particular technical response required of the service providers, Arnold J has taken into account whether the defendant shared an IP address with other web sites. See Dramatico Entertainment Ltd. v British Sky Broadcasting Ltd. [2012] EWHC 1152 (Ch), [13] (Arnold J) (“IP address blocking is generally only appropriate where the relevant website’s IP address is not shared with anyone else. If it is shared, the result is likely to be overblocking. In the present case, however, [the web site’s] IP address is not shared. Thus IP address blocking is appropriate.”) (citation omitted); The Football Association Premier League Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 2058, [56] (Ch) (Arnold J) (“[T]he orders require IP address blocking of the IP address for FirstRow’s domain name firstrow1.eu. FAPL’s evidence is that this will not result in over-blocking since that IP address is not shared. The orders also require IP address re-routing and URL blocking for URLs at any shared IP addresses.”)

  314. 314.

    See The Football Association Premier League Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 2058 (Ch), [57]–[58] (Arnold J) (endorsing permission for any affected service provider to apply to set aside the order).

  315. 315.

    National Report of the United Kingdom, at 22 (“To guard against circumvention, the injunction [in Newzbin II] provided for a mechanism by which additional IP addresses or URLs could be added to the blocking measures, provided they had the sole or predominant purpose of enabling or facilitating access to the blocked website.”).

  316. 316.

    Cartier Int’l v. British Sky Broadcasting [2014] EWHC 3354 (Ch), aff’d, [2016] EWCA Civ 658.

  317. 317.

    Id. at [189].

  318. 318.

    Id. at [196].

  319. 319.

    Id. at [197]–[217].

  320. 320.

    Id. at [236] There is a vibrant debate ongoing about the effect of such measures. See, e.g., Brett Danaher, Michael D. Smith and Rahul Telang, Website Blocking Revisited: The Effect of The UK November 2014 Blocks On Consumer Behavior (April 2016).

  321. 321.

    Cartier, at [264].

  322. 322.

    Id. at [265].

  323. 323.

    [2016] EWCA Civ 658 at [35].

  324. 324.

    Id. at [211].

  325. 325.

    See Roadshow Films Pty Ltd. v Telstra Corporation [2016] FCA 1503 (Dec 15, 2016); see also § 115A of the Copyright Act 1968 (Cth).

  326. 326.

    Cartier Int’l v. British Telecomm [2016] EWHC 339 (Ch) [Cartier II].

  327. 327.

    Injunctions typically are aimed at particular conduct of particular defendants. And the notice and takedown cases in Germany have struggled with how far they can depart from this principle under the storerhaftung doctrine. See supra note 274.

  328. 328.

    See National Report of the United Kingdom, at 22.

  329. 329.

    See id. at 22; see also EMI Records Ltd. v British Sky Broadcasting Ltd. [2013] EWHC 379 (Ch); Dramatico Entertainment Ltd. v British Sky Broadcasting Ltd. [2012] EWHC 268 (Ch); [2012] EWHC 1152 (Ch).

  330. 330.

    See National Report of the United Kingdom, at 31.

  331. 331.

    For a critique in the copyright context, see Matthew Sag, Internet Safe Harbors and the Transformation of Copyright Law, 83 Notre Dame L. Rev . – (2017) (forthcoming). Private corporate policies, or Best Practice statements have grown up in a number of areas. Some are adopted by particular organisation; others are industry standards. See National Reporter of the United Kingdom, at 24–26 (discussing a number of policies voluntarily adopted by service providers as regards blocking of indecent images of children, deletion of links to unlawful conduct from search indices, demoting sites that contain a high percentage of infringing material, and abusive registration of domain names).

  332. 332.

    See Google Inc., Transparency Report—Requests to Remove Content (December 31, 2013) http://www.google.com/transparencyreport/ .

  333. 333.

    See supra text accompanying notes 216–218 (MOU abuse protections).

  334. 334.

    Regulatory systems such as the so-called graduated response often also make provision for appeals by subscribers who are affected by service provider conduct. See National Report of the United Kingdom at 29.

  335. 335.

    See National Report of the United Kingdom, at 31 (suggesting that the lack of any appearance in practice of either the service provider or website operator “has the potential for orders to be made on what is effectively an ex parte basis, as a result of which unintended over-blocking (or other downstream complications) are inevitably likely to occur”).

  336. 336.

    See id. at 23 (“English courts have directed very specific measures (including the URLs to be blocked, the blocking technology to be adopted, the methods for adding mirror websites to the block-list, and permitted maintenance periods)”).

  337. 337.

    It is perhaps unsurprising that the draft costs-sharing order published by the UK regulator (Ofcom) to govern the UK’s graduated response system was challenged by service providers. See R (British Telecommunications plc) v Secretary of State, 2011] EWHC 1021 (Admin), aff’d [2012] EWCA Civ 232. Much of the fight is over the cost of enforcement and responsibility therefor.

  338. 338.

    See National Report of the United Kingdom, at 23.

  339. 339.

    See id. at 23.

  340. 340.

    See id. at 23; id. at 31 (“The emerging practice under Section 97A is problematic. ISP respondents tend not to appear or make submissions in relation to website blocking orders that are sought against them, largely on account of the risk of an adverse costs order. The website operators themselves are very unlikely to appear. This has the potential for orders to be made on what is effectively an ex parte basis, as a result of which unintended over-blocking (or other downstream complications) are inevitably likely to occur.”).

  341. 341.

    See id. at 25 (“Since August 2012, Google has taken account of the number of valid copyright complaints made against a website when determining its search ranking, demoting sites which contain a high percentage of infringing material. Keywords related to copyright infringement are no longer suggested to users by Google’s search auto-completion tools. The same approach is taken to prevent suggesting terms related to pornography, violence, and hate speech. Upon notification, Google also excludes the display of paid keyword advertising on websites it considers to be associated with copyright infringement.”) (citations omitted).

  342. 342.

    See L’Oréal S.A. v. eBay Int’l AG, [2009] EWHC 1094, [370]–[375] (Arnold J).

  343. 343.

    Such rhetorical statements are often (sometimes helpfully) used to frame the debate, but resolution requires some compromise of competing claims. See, e.g., National Report of the United Kingdom, at 28 (describing the cost sharing order proposed as part of the UK graduated response system as “a compromise [for] both service providers and right holders, who continue to fight between the ‘polluter pays’ principle (arguing that because ISPs enjoy benefits from infringement in the form of higher subscription revenues, they should contribute to right holders’ enforcement costs) and the ‘private property’ principle (arguing that because copyright is simply private property, its enforcement should not be subsidised by third parties).”).

  344. 344.

    See id. at 25. It is not clear whether there is a universal corporate standard that continues to be applied nationally, or whether a single Google action will apply to national versions of its search engine. Obviously, the latter most fully ameliorates the costs of territoriality.

  345. 345.

    See Graeme B. Dinwoodie, A New Copyright Order: Why National Courts Should Create Global Norms, 149 U. Penn. L. Rev. 469 (2000).

  346. 346.

    See National Report of the United Kingdom, at 26 (noting concerns expressed by foreign registrars about seizures of domain names in non-British name space).

  347. 347.

    See id. at 37 (noting targeting analysis in copyright cases and threshold requirement of substantial publication within the jurisdiction in libel cases).

  348. 348.

    See id. at 38.

  349. 349.

    See Golden Eye (International) Ltd. v Telefónica UK Ltd. [2012] EWHC 723, [117] (Ch), approved in Viagogo (SC) , [45] (Lord Kerr JSC).

  350. 350.

    See National Report of the United Kingdom, at 33.

  351. 351.

    See id. at 35 (“Orders carrying compliance costs in the region of £5000–£10,000 have been held not to infringe [the freedom to conduct business]. That assessment often folds into the proportionality”).

  352. 352.

    See id. at 7–8 (“English secondary liability principles have been developed incrementally by judges since around the mid-sixteenth century, though obviously not by reference to online service providers, or indeed any particular class of defendants… During the twentieth century, English courts sought to bring new technologies of reproduction and dissemination within the established patterns of secondary liability.”); id. at 8 (“the same general standards are applied to online service providers as are used to establish secondary liability against other classes of defendants”).

  353. 353.

    See id. at 8 (discussing L’Oréal SA v eBay International AG).

  354. 354.

    See id. at 8.

  355. 355.

    Although much of the discussion has revolved around whether offline principles should be extended to the online context, it is intriguing that the principles of Article 11 of the Enforcement Directive—first applied in the online context—have been applied by analogy (and literal text) in the offline context. Thus, in Tommy Hilfiger Licensing LLC v. Delta Center, the tenant of market halls who sublet the various sales points situated in those halls to market-traders, some of whom use [the locations] in order to sell counterfeit branded products, was held to fall within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of Article 11. See Case C-494/15, Tommy Hilfiger Licensing LLC v. Delta Center EU:C:2016:528 (CJEU 2016). The Court of Justice declined to draw any distinction between online and physical marketplace (although it did not decide the hypothetical question whether suppliers of electricity were intermediaries).

  356. 356.

    See Sea Shepherd at [40] (Lord Sumption dissenting) (“In both England and the United States, the principles have been worked out mainly in the context of allegations of accessory liability for the tortious infringement of intellectual property rights. There is, however, nothing in these principles which is peculiar to the infringement of intellectual property rights. The cases depend on ordinary principles of the law of tort.”). This is not without exception—for example, the “substantial non-infringing use” doctrine announced in Sony is formally found in copyright law. But that doctrine clearly drew from the “staple article of commerce doctrine” in patent law. Thus, at a substantive level, it may be the application of a general principle of private law. And one might questions whether, although developed in articulating positive standards of liability, one should not regard that doctrine as an immunity doctrine that operates to define secondary liability in a negative fashion.

  357. 357.

    See Mark P. McKenna, Probabilistic Knowledge of Third-Party Trademark Infringement, 2011 Stan. Tech. L. Rev. 10, 26 (2011), available at http://journals.law.stanford.edu/sites/default/files/stanford-technology-law-review-stlr/online/mckenna-probabilistic-knowledge.pdf. McKenna makes the point that “[i]f … courts were really to take seriously the tort law analogy, they would not treat cases involving probabilistic knowledge as secondary trademark infringement cases at all; they would treat them as negligence cases.” Id.

  358. 358.

    See Tiffany, 600 F. 3d at 103 (“Contributory trademark infringement is a judicially created doctrine that derives from the common law of torts.”).

  359. 359.

    See McKenna, supra note 357, at [26]. McKenna makes the point that “[i]f … courts were really to take seriously the tort law analogy, they would not treat cases involving probabilistic knowledge as secondary trademark infringement cases at all; they would treat them as negligence cases.” Id. So conceptualized, the U.S. approach might look less conceptually divergent from the approaches followed by some courts in continental Europe (as well as the forms of limited relief available under Article 11 of the Enforcement Directive). See id. (“[I]f trademark secondary liability really derived from tort law, liability would exist in cases of probabilistic knowledge only when the defendant unreasonably failed to take precautions in the face of the known risk of infringement. Unreasonableness would be measured, as it generally is in tort cases, by evaluating the probability of harm to the plaintiff and the potential magnitude of that harm, and comparing the product to the cost of the foregone precautions. Secondary liability cases also would entail analysis of causation-in-fact and proximate causation…”); see also supra text accompanying note 144 (liability under French law) and notes 263–351 (discussion of Article 11).

  360. 360.

    The involvement of intermediaries (sometimes as a result of mutually beneficial arrangements between the brand owner and intermediaries) can often be very effective. See Kathy Chu & Joanne Chiu, To Woo Lux Brands, Alibaba Purges Resellers, Wall St. J., Aug. 11, 2014, at B1 (noting effectiveness of intervention by Alibaba, the Chinese owner of the Tmall retail site, in reducing the number of counterfeit and gray market goods available on the site, and tying Alibaba’s intervention to a brand’s opening an official store on the Tmall site).

  361. 361.

    See Beebe, supra note 114, at 5 (discussing the automated “counterfeit filter” used by Google to assess the bona fides of landing pages). Intermediaries may also be able to implement measures that, while not preventing infringement, make their customers aware of potential trademark issues. See Ginny Marvin, Google Keyword Planner Now Shows Trademarked Terms, Search Engine Land (Nov. 27, 2013), http://searchengineland.com/google-keyword-planner-now-shows-trademarked-terms-178359.

  362. 362.

    Tiffany, 576 F. Supp. 2d at 518 (“Certainly, the evidence adduced at trial failed to prove that eBay was a cheaper cost avoider than Tiffany with respect to policing its marks. But even more importantly, even if it were true that eBay is best situated to staunch the tide of trademark infringement to which Tiffany and countless other rights owners are subjected, that is not the law.”); cf. Tiffany, 600 F.3d at 109 (noting, in response to the argument that mark holders could not bear the cost of enforcement, that, “[w]e could not, even if we thought it wise, revise the existing law in order to better serve one party’s interests at the expense of the other’s”).

  363. 363.

    Tiffany, 600 F.3d at 109.

  364. 364.

    Id. at 98−99.

  365. 365.

    Grokster, 545 U.S. at 928.

  366. 366.

    See Sony, 464 U.S. at 442.

  367. 367.

    In Sony, the U.S. Supreme Court noted the kinship on this topic between copyright and patent law, but rejected the idea that there might be a similar kinship between copyright and trademark law. Id. at 439 n.19. Indeed, the Court refused to apply its own standard for contributory trademark infringement, which it clearly saw as harder to satisfy (at least in the fact pattern at issue in Sony). Id. (“If Inwood’s narrow standard for contributory trademark infringement governed here, respondents’ claim of contributory infringement would merit little discussion. Sony certainly does not “intentionally induc[e]” its customers to make infringing uses of respondents’ copyrights, nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of respondents’ copyrights”). Recent U.S. trademark decisions endorse the suggestion that the standards in copyright and trademark cases are different. See Perfect 10, Inc. v. Visa Int’l Serv., Ass’n, 494 F.3d 788, 806 (9th Cir. 2007) (“The tests for secondary trademark infringement are even more difficult to satisfy than those required to find secondary copyright infringement.”).

  368. 368.

    Cf. Dogan, supra note 58, at 504, 506–07 (suggesting that courts applying the trademark doctrine properly are drawing, and should draw, upon principles developed in copyright cases).

  369. 369.

    See Martin R.F. Senftleben, An Uneasy Case for Notice and Takedown: Context Specific Trademark Rights (Mar. 16, 2012), available at www.ssrn.com/abstract/=2025075.

  370. 370.

    See Lemley, supra note 36.

  371. 371.

    There may also be differences between the types of measures appropriate in counterfeiting cases and those appropriate in cases of trademark infringement, again because the factual and legal context may be different, as evident perhaps from the decision of the drafters of the MOU to focus on counterfeiting.

  372. 372.

    The factual context may also vary over time. Thus, while most trademark cases will now involve some form of payment processing and shipment of a physical article, it is not clear how 3D printing might alter online practices with respect to counterfeit goods.

  373. 373.

    See Senftleben, supra note 369, at 2 (focusing on the more limited nature of trademark rights). In fact, the relationship between the strength of copyright and trademark rights may be less linear than Professor Senftleben suggests. But the basic point that the systems are different is well-taken.

  374. 374.

    Newzbin II, [2011] EWHC 1981.

  375. 375.

    See Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669 (2007).

  376. 376.

    Of course, the service provider may have engaged in macro-behaviour that to some extent is independent of particular disaggregated acts by third parties, and which might appropriately be viewed in an autonomous light. See Dinwoodie and Janis, Lessons, supra note 62, at 1717. There may be certain conduct of the search engine that causes confusion wholly independent of the content of particular ads, such as the way in which search results are presented on the search results page. Cf. Dogan, supra note 73, at [19]. One may ask, for example, whether there is clear differentiation of purchased advertising and so-called organic listings, and whether advertisements are clearly labelled as such. Cf. E-Commerce Directive, art. 6 (a).

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    Graeme B. Dinwoodie

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    Graeme B. Dinwoodie

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Dinwoodie, G.B. (2017). A Comparative Analysis of the Secondary Liability of Online Service Providers. In: Dinwoodie, G.B. (eds) Secondary Liability of Internet Service Providers. Ius Comparatum – Global Studies in Comparative Law, vol 25. Springer, Cham. https://doi.org/10.1007/978-3-319-55030-5_1

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