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
- 2.1. Background and Scope of Application
- 1. Art. 5.1 and 5.2 TMD
- 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
- 4.1. Initial Reflection
- 5. Joint Tortfeasor
- 5.1. Requirements
- 5.2. Assessment
- 6. Interim Conclusion
Objectives and Key Themes
This paper analyzes the primary liability of an internet service provider (ISP), such as Google, for trademark infringement related to keyword advertising under Article 5 of the EU Trademark Directive. It examines both positive actions and failures to act by the ISP, considering factors like knowledge of infringements and the ISP's tools and processes. The study aims to clarify the distinction between primary and secondary liability in this context.
- Primary versus secondary liability of ISPs for trademark infringement in keyword advertising.
- The role of knowledge and intent in establishing primary liability.
- Application of the EU Trademark Directive and E-Commerce Directive to ISP liability.
- Analysis of Google's specific actions and their legal implications.
- Defining the minimum requirements to identify trademark infringement by an ISP.
Chapter Summaries
Part 1. Introduction: This introductory section likely sets the stage for the paper, outlining the problem of ISP liability for trademark infringement in keyword advertising, highlighting the lack of clear legal precedent and the need for a comprehensive analysis. It probably introduces the key legal frameworks, such as the EU Trademark Directive and the E-Commerce Directive, and previews the paper's structure and methodology.
Part 2. Sponsored Links: This chapter provides an overview of sponsored links and focuses specifically on keyword advertising. It likely explains the mechanics of keyword advertising, illustrating how it works and how it can lead to trademark infringement. It may discuss the different players involved, including advertisers, search engines, and trademark holders, and it could also analyze various examples of keyword advertising practices.
Part 3. Need for Liability: This section probably explores the justifications for holding ISPs liable for trademark infringement in the context of keyword advertising. Arguments for liability might center on the creation of risk, the potential for profit generation from infringing activities, the need for legal certainty, the necessity of finding a balance between protecting trademarks and facilitating online commerce, and the imperative for developing appropriate legal frameworks.
Part 4. Determination Liability: This chapter likely tackles the complexities involved in determining liability, addressing the lack of harmonization across different jurisdictions and providing detailed definitions of key concepts. This includes clarifying the distinctions between direct and indirect infringement, single and joint liability, tortfeasors, and the differences between primary and secondary liability. It establishes a framework for analyzing the various forms of liability.
Part 5. Primary Liability: This part constitutes the core of the paper, delving deeply into the analysis of primary liability for ISPs. It examines different aspects of ISP involvement, including the storing of keywords and the displaying of ads, in the context of Articles 5.1, 5.2, and 5.5 of the TMD. The chapter likely explores the concept of attribution and how it relates to causality, drawing comparisons with other marketing concepts. It also delves into the link between the Trademark Directive and the E-Commerce Directive, examining the minimum requirements for establishing a trademark infringement by an ISP. The role of the ISP's actions, such as providing tools and approval processes, and the significance of the ISP's knowledge of infringement, are thoroughly investigated within the context of joint tortfeasor liability.
Keywords
Primary liability, secondary liability, Keyword Advertising, Keywords, Adwords, Google, Article 5 Trademark Directive, Directive 2008/95/EC, TMD, failure to act, omission, trademark infringement, direct infringement, indirect infringement, attribution, own communication, C-236/08, joint liability, single liability, contributory liability, individual liability, joint tortfeasor, E-Commerce Directive, ECD, Directive 2000/31/EC, Article 14 E-Commerce Directive, Enforcement Directive, EFD, Directive 2004/48/EC, proactive obligation, reactive obligation, obligation to act, reference service provider, willful blindness.
Frequently Asked Questions: Analysis of ISP Liability for Trademark Infringement in Keyword Advertising
What is the main topic of this paper?
This paper analyzes the primary liability of an internet service provider (ISP), such as Google, for trademark infringement related to keyword advertising under Article 5 of the EU Trademark Directive. It examines both positive actions and failures to act by the ISP, considering factors like knowledge of infringements and the ISP's tools and processes. The study aims to clarify the distinction between primary and secondary liability in this context.
What are the key themes explored in the paper?
Key themes include primary versus secondary liability of ISPs for trademark infringement in keyword advertising; the role of knowledge and intent in establishing primary liability; application of the EU Trademark Directive and E-Commerce Directive to ISP liability; analysis of Google's specific actions and their legal implications; and defining the minimum requirements to identify trademark infringement by an ISP.
What are the different parts of the paper and what do they cover?
Part 1 (Introduction) sets the stage, outlining the problem of ISP liability and introducing key legal frameworks. Part 2 (Sponsored Links) provides an overview of sponsored links and keyword advertising. Part 3 (Need for Liability) explores justifications for holding ISPs liable. Part 4 (Determination Liability) tackles complexities in determining liability, defining key concepts. Part 5 (Primary Liability) constitutes the core, analyzing primary liability for ISPs, examining different aspects of ISP involvement (keyword storing, ad displaying) in the context of Articles 5.1, 5.2, and 5.5 of the TMD. It explores attribution, causality, and the link between the Trademark Directive and the E-Commerce Directive. It also investigates minimum requirements for establishing infringement and the role of the ISP's actions and knowledge.
What specific legal frameworks are discussed?
The paper focuses on Article 5 of the EU Trademark Directive (TMD), Directive 2008/95/EC, and its relationship with the E-Commerce Directive (ECD), Directive 2000/31/EC, particularly Article 14. It also implicitly references the Enforcement Directive (EFD), Directive 2004/48/EC.
What is the significance of "attribution" and "causality" in the context of this paper?
The paper deeply examines the concepts of attribution and causality in determining liability. It analyzes how these concepts relate to the ISP's actions and knowledge in facilitating trademark infringement through keyword advertising. The distinction between attribution and causality is crucial for establishing primary liability.
What are the key differences between primary and secondary liability in this context?
The paper aims to clarify the distinction between primary and secondary liability for ISPs. Primary liability focuses on the ISP's direct involvement and contribution to the infringement, while secondary liability involves a less direct role, often requiring knowledge and failure to act.
What role does the ISP's knowledge play in determining liability?
The ISP's knowledge (or "willful blindness") of infringing activities is a crucial factor in determining liability. The paper examines how the ISP's knowledge, combined with its actions (or inaction), contributes to the establishment of primary liability.
What are some of the specific actions of ISPs that are analyzed?
The paper analyzes various aspects of ISP involvement, including storing keywords, displaying ads, providing keyword tools, implementing approval processes, and establishing keyword trademark policies. It investigates whether these actions, or failures to act, constitute sufficient contribution to trademark infringement to establish primary liability.
What are the minimum requirements for an ISP to be held primarily liable?
The paper seeks to define the minimum requirements for establishing primary liability. This involves analyzing the interplay of the ISP's actions, knowledge, and control over the system to determine if their contribution is sufficient to establish primary liability for trademark infringement in keyword advertising.
What keywords are relevant to this research?
Relevant keywords include: Primary liability, secondary liability, Keyword Advertising, Keywords, Adwords, Google, Article 5 Trademark Directive, Directive 2008/95/EC, TMD, failure to act, omission, trademark infringement, direct infringement, indirect infringement, attribution, own communication, C-236/08, joint liability, single liability, contributory liability, individual liability, joint tortfeasor, E-Commerce Directive, ECD, Directive 2000/31/EC, Article 14 E-Commerce Directive, Enforcement Directive, EFD, Directive 2004/48/EC, proactive obligation, reactive obligation, obligation to act, reference service provider, willful blindness.
- Arbeit zitieren
- Assessor jur. Daniel Kalisch (Autor:in), 2011, Sponsored Links and Trademark Infringement, München, GRIN Verlag, https://www.grin.com/document/177470
