Transcript Konstantinos Komaitis

The Role and Responsibility of Internet
Intermediaries in the Field of Trademarks
Konstantinos Komaitis
Policy Advisor, Internet Society
www.internetsociety.org
Overarching theme
Is there a need for regulatory action at an international
level concerning the use of trademarks on the Internet
and, if so, what would that be?
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What can ‘international regulation’ mean?
a. Treaty, Agreement or Convention
b. Binding
c. Formal (or less formal, depending on the instrument)
d. Harmonization (general rules of common application)
e. In ‘writing’
f. General Rules of law, independent of previous
practice of states (e.g. art. 2(4) of the UN Charter
prohibiting the threat of or use of force in
international relations)
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Regulation vs. the Internet
The Internet:
 Open and distributive architecture, managed and
evolved through incremental direct user-based
process.
 Speed, flexibility and global (technical) value.
Regulation:
 Managed and evolved incrementally through judicial
and legislative processes.
 Cumbersome, bureaucratic and national (public
policy) value.
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Regulation < The Internet
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International vs. Trademarks
Trademarks
 Territorial, national intangibles (culture), and
geopolitic specific.
 Consumer-focused.
International (law)
 Global values and framework.
 Focusing on states rather than private citizens.
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Impact of international regulation on trademarks
 Evolution of trademark law – from incremental judicial
making to jus cogens?
 Issues of (In)Consistency.
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Examples of Trademark Inconsistency (1)!
 Domain Names
a. Nature of domain names – contracts for services vs.
property rights
b. Anticybersquatting Consumer Protection Act (ACPA)
– United States.
c. ccTLD Dispute Resolution Policies, e.g. NOMINET UK
Dispute Resolution Policy.
d. The Uniform Domain Name Dispute Resolution Policy
(UDRP) – International and managed by the Internet
Corporation for Assigned Names and Numbers
(ICANN).
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Examples of Trademark Inconsistency (2)!
 Intermediary Liability
a. Tiffany v. eBay – United States: “Tiffany must ultimately
bear the burden of protecting its trademark. […] The court
finds that when eBay possessed the requisite knowledge,
it took appropriate steps to remove [counterfeiting]
listings and suspend service”.
b. L’Oreal v. eBay – ECJ: “Websites such as eBay may be
liable for trademark infringement if they play an “active
role” in promoting fake goods. When the operator has
played an ‘active role’ [of that kind], it cannot rely on the
exemption from liability which EU law confers, under
certain conditions, on online service providers such as
operators of internet marketplaces”.
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In favor(?) of an International Regulatory
Framework!
 Which body would be appropriate to address such
issues pertaining to trademarks and the Internet?
 Under what governance and institutional
arrangements?
 How do we reconcile the existing inconsistency to
move towards an international framework?
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Against an International Regulatory Framework!
 Premature.
 Role of (national) legislature and judiciary.
 “We know it, when we see it”!
 Best practices and experiences.
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Guidance: Example of good practice.
Intent
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Design Choices
Commercial Motivation
Conclusion (1).
Two questions:
a. Policy: which party should police the mark?
b. Passivity: whether and when intermediaries can be
liable for failure to act?
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Conclusion (2).
Should we continue to pressure for answers regarding
intermediary liability (in the context of trademarks)?
 Oversimplifies an inherently complicated question;
 Juxtaposes a dynamic question by seeking static
solutions;
 Disconnects decision making from the realities of the
Internet and the (individual) needs of the nation State.
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Thank you!
[email protected]
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