ISP’s legal liability under trademark law with regards to Keyword Advertising is not well developed in literature and jurisdiction. Despite some few judgments in this field, it is obvious that also in other areas of law national courts do mainly focus on ISP’s secondary liability without any clear distinction from primary liability. There seems to be also some hesitation to base a primary liability on a failure to act. For that reasons this paper analyses primary liability of an internet reference provider like Google (TM) for Keyword Advertising under Art. 5 EU Trademark Directive taking into account not only positive activities but also a failure to act. Apart from storing Keywords and displaying ads also other contributions of Google like its Keyword Tool and approval process for ads or the ISP’s knowledge of infringements are contemplated. Starting point of the investigation is the recent decision of the ECJ to Google Adwords (TM)from 23.3.2010 where the court held that the provider can not be liable for a trademark infringement as the ISP did not use a sign itself in own commercial communication. The author goes beyond this judgment and suggests to apply this new criterion of attribution to all forms of trademark uses within the entire Art. 5 EU Trademark Directive including an omission of the provider. By establishing a link between Ecommerce Directive and Trademark Directive the writer defines the scope of trademark protection and examines some minimum requirements to identify a trademark infringement of the ISP. This is absolutely a new method as no literature exists. As a first main result it was found that Google is not directly engaged in a trademark infringement by its positive actions. By contrast, the research made clear that actual knowledge of ongoing infringements is the core element to establish a primary liability for a failure to stop or prevent trademark infringements and makes the ISP use a trademark itself in its own communication. This paper shall contribute to define a clear distinction between direct and indirect infringements and it also wants to sensitize the reader for the legal importance and consequences of actual knowledge of the ISP.
Table of Contents
Part 1. Introduction
Part 2. Sponsored Links
A. Overview
B. Keyword Advertising
Part 3. Need for Liability
A. Creating a Risk
B. Gaining Profit
C. Legal Certainty
D. Finding a Balance
E. Developing Laws
Part 4. Determination Liability
A. Lack of Harmonization
B. Definitions
1. Direct and indirect Infringement
2. Single and joint Liability
3. Tortfeasor and joint Tortfeasor
4. Activities and Failure to Act
5. Primary and Secondary Liability
Part 5. Primary Liability
A. Initial Considerations
B. Storing Keywords and Displaying Ads
1. Art. 5.1 and 5.2 TMD
1.1. Court’s Decision
1.2. Attribution
1.3. Distinction between Attribution and Causality
1.4. Comparison with other Marketing Concepts
1.5. Interim Conclusion
2. Art. 5.5 TMD
2.1. Background and Scope of Application
2.1.1 Adoption
2.1.2 Scope of Application
2.1.3 Request for a mandatory Provision
2.1.4 Additional Form of Use
2.2. Requirements
2.2.1 Attribution
2.2.2 Structure
2.2.3 Wording
2.2.4 Nature of Actions
2.2.5 Orbiter Dictum of ECJ
2.3. Interim Conclusion
C. Other Actions of ISP
1. Initial Consideration
2. Link between TMD and ECD
2.1. Objectives
2.2. Adoption
2.3. Application
2.3.1 Areas of Law
2.3.2 Attribution
2.3.3 Jurisprudence
2.4. Interim Conclusion
3. Minimum Requirements
3.1. Impact on Selection of Keywords
3.2. Control of Data
3.3. Knowledge
3.4. Interim Conclusion
4. Tortfeasor
4.1. Initial Reflection
4.1.1 No Trademark Use
4.1.2 Gap of Actions
4.2. Sufficient Contribution
4.2.1 Keyword Tool, Training and other Tools
4.2.2 Approval Process
4.2.3 Keyword Trademark Policy
4.2.4 Control of Data
4.2.5 Knowledge
4.3. Interim Conclusion
5. Joint Tortfeasor
5.1. Requirements
5.2. Assessment
6. Interim Conclusion
D. Failure to act
1. Definitions and Distinctions
1.1. First, ongoing and further Infringements
1.2. Stop or prevent Infringements
2. Requirements
3. Obligation to Act
3.1. Proactive and reactive Obligation
3.2. Establishing a legal Obligation
3.2.1 Law
3.2.2 Status, Contract or close Relationship
3.2.3 Prior Acts
3.2.4 Stricter Elements
4. Knowledge of the Infringement
4.1. Degree of Knowledge
4.1.1 Type of Knowledge
4.1.2 Extend of Knowledge
4.2. Moment of actual Knowledge
4.3. Interim Conclusion
5. Possible and reasonable Obligation
5.1. Initial Considerations
5.2. Criteria
5.3. Proactive Obligation
5.3.1 Required Acts
5.3.2 Assessment
5.4. Reactive Obligation
5.4.1 Required Acts
5.4.2 Assessment
5.5. Interim Conclusion
6. Refrain to Act
6.1. Refrain to stop Infringements
6.1.1 Remove Ads and disable Keywords
6.1.2 Refusal to Investigation
6.2. Refrain to prevent further Infringement
E. Conclusion
Part 6. Limitation of Liability
A. Positive Activities
1. Application
2. Keyword Storage
B. Failure to act
1. Application
2. Primary Liability
3. Secondary Liability
C. Conclusion
Part 7. Summary and Comments
Research Objectives and Topics
The thesis aims to define and clarify the primary liability of Internet Service Providers (ISPs) regarding trademark infringements in the context of Keyword Advertising. It examines whether an ISP can be held directly liable for such infringements under the EU Trademark Directive, distinguishing between positive activities and a failure to act, while also establishing a link between the E-Commerce Directive and the Trademark Directive.
- Primary vs. Secondary liability for ISPs
- Application of the Trademark Directive (TMD) to Keyword Advertising
- The role of "actual knowledge" in establishing ISP liability
- Distinction between positive acts and failure to act (omission)
- Liability exemptions and the role of the E-Commerce Directive
Excerpt from the Book
1.2. Attribution
As shown above, the court made very clear that Google has to use the sign itself in its own commercial communication under Art. 5.1 and 5.2 TMD61. Thus, in terms of provider’s primary liability the ECJ introduced a new criterion which is a form of attribution62. This conclusion is also underpinned by the court’s decision with regards to the exemptions from the liability on information society service provider like Google based on Art. 14 ECD. The ECJ held that it is necessary to examine ‘what role played by Google in the drafting of the commercial message’ or in ‘selection of Keywords’ and ‘whether the role played by that service provider is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge or control of the data’ which it stores. Furthermore, the court said ‘where the provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored … [Google] cannot be held liable for the data which it has stored at the request of an advertiser.’ The application of Art. 14 ECD depends on an attribution of the infringement to the ISP and it is a logic consequence that the service provider can only be liable if he uses the trademark itself. Also under German law the same requirement applies when analyzing the liability of a direct tortfeasor63. According to the degree of contribution and involvement of the infringer German attribution distinguishes between tortfeasor and participator (abettor and inciter) and interferer64. While a tortfeasor is a form of primary liability are participators or interferers subject to secondary liability. Acting as a tortfeasor with regards to the primary liability the ISP would have to use the trademark itself65. Also US courts use this element to determine a direct infringement when it says the provider ‘does not itself sell’ or ‘possess the items available on the
Summary of Chapters
Part 1. Introduction: This chapter contextualizes the economic importance of Sponsored Links and outlines the legal ambiguity regarding ISP liability for trademark infringements triggered by advertisers.
Part 2. Sponsored Links: This chapter defines the technical and business model of Sponsored Links and Keyword Advertising, focusing specifically on Google's Adwords program.
Part 3. Need for Liability: This chapter argues for the necessity of establishing clear liability rules for ISPs to ensure legal certainty, prevent the creation of uncontrolled risks, and find a balance between innovation and trademark protection.
Part 4. Determination Liability: This chapter provides necessary definitions to differentiate between primary and secondary liability, including concepts like direct/indirect infringement and the role of the tortfeasor.
Part 5. Primary Liability: This chapter serves as the core of the thesis, analyzing ECJ judgments to determine whether an ISP's activities, such as storing Keywords or displaying ads, constitute a trademark use under the Trademark Directive.
Part 6. Limitation of Liability: This chapter examines whether the E-Commerce Directive provides an exemption for ISPs from trademark liability and under what conditions such a limitation might not apply.
Part 7. Summary and Comments: This chapter synthesizes the findings, confirming that while ISPs are generally not primarily liable for positive acts, they may be liable for a failure to act once they possess actual knowledge of an infringement.
Keywords
primary liability, secondary liability, Keyword Advertising, Google Adwords, Article 5 Trademark Directive, trademark infringement, direct infringement, indirect infringement, attribution, E-Commerce Directive, failure to act, obligation to act, actual knowledge, willful blindness, notice and take down
Frequently Asked Questions
What is the core focus of this legal thesis?
The work examines the primary liability of Internet Service Providers (ISPs), particularly Google, regarding trademark infringements caused by third-party advertisers in the context of Keyword Advertising.
Which central themes are analyzed in the document?
Key topics include the distinction between primary and secondary liability, the interpretation of "trademark use" under the EU Trademark Directive, the role of ISP activities versus omissions (failure to act), and the applicability of liability exemptions from the E-Commerce Directive.
What is the primary research objective?
The research seeks to determine the conditions under which an ISP can be considered a direct infringer when its platform is used for trademark violations and to define the role of "actual knowledge" in creating an obligation to act.
Which scientific methodology is utilized?
The author employs a legal analysis method, evaluating European Court of Justice (ECJ) jurisprudence, comparing EU directives (TMD and ECD), and contrasting these with national legal concepts of liability and tort law, primarily from Germany.
What content is covered in the main body of the paper?
The main body focuses on the legal requirements for attribution, the "gap of actions" where liability is ambiguous, and detailed evaluations of whether ISPs are fulfilling their "duty of care" or "obligation to act" when notified of infringements.
Which keywords best characterize this research?
The research is characterized by terms such as primary/secondary liability, Keyword Advertising, actual knowledge, attribution, failure to act, and the EU Trademark and E-Commerce Directives.
Does the author consider Google’s Keyword policy changes?
Yes, the author notes that Google's policy changes—specifically moving away from proactive investigations—effectively create a state of "willful blindness" and argues that this necessitates a reactive "Examination Duty" to maintain trademark protection.
What is the author's conclusion regarding ISP liability?
The author concludes that ISPs are not primarily liable for mere hosting or technical activities (positive acts), but they do become primarily liable for a "failure to act" once they acquire "actual knowledge" of a specific infringement and fail to take reasonable steps to stop it.
How does the author define the "gap of actions"?
The "gap of actions" refers to acts by ISPs that exceed the passivity protected by the E-Commerce Directive but do not reach the threshold of active trademark use required for primary liability under the Trademark Directive, thereby potentially falling into the realm of secondary liability.
- Quote paper
- Assessor jur. Daniel Kalisch (Author), 2011, Sponsored Links and Trademark Infringement, Munich, GRIN Verlag, https://www.hausarbeiten.de/document/177470
