Posted by Rosemary Brkopac on Mon, Apr 19, 2010
Brand owners and eBay shared many a court date throughout the Aughts. In Europe, the online platform was besieged by lawsuits in France, Germany, the UK, Spain and Belgium by luxury brand owners l'Oreal, LVMH, Hermes and Rolex, while on this side of the pond a high profile case launched by Tiffany in 2004 played out in the U.S. At the end of the decade the outcomes of the cases were mixed. In France in 2008 eBay lost two cases; one to Hermes and the other to LVMH. The French courts decided in favour of the rights owners, with eBay order to pay Hermes 20,000 euros while LVMH received 38.6 million euros. eBay was found to be liable for infringement as the auction house was identified as a broker rather than a host of counterfeit goods. A contradictory ruling was made in May, 2009 in the L'Oreal vs eBay case, also launched in France, where eBay was recognized as a host, rather than a broker, and along with that status was entitled to certain exemptions. L'Oreal was found not to have proven infringement by eBay's promotional activities relating to its sale of advertising space. In the L'Oreal Belgium case the Court of Commerce decided eBay had no obligation to monitor its site for counterfeits, while the Rolex decision in Germany echoed the sentiment stating eBay was not the seller of counterfeit goods, and only had the obligation to remove them once notified. The saving grace for eBay is that they do remove auctions of counterfeit goods once notified.
Tiffany ended the decade waiting out a decision of their appeal of a 2008 lower court ruling against them. They had alleged direct trademark infringement, contributory infringement, false advertising, unfair competition and direct and contributory dilution on the part of eBay. The decision was four years in the making, and the District Judge Richard Sullivan said "The court is not unsympathetic to Tiffany and other rights holders who have invested enormous resources in developing their brands, only to see them illicitly and efficiently exploited by others on the 
Internet, nevertheless, the law is clear: it is the trademark owner's burden to police its mark." Tiffany appealed the decision, but a few days ago, any hopes they had of a hail mary breakthrough were dashed as the 2nd U.S. Circuit Court of Appeals agreed with the prior lower court ruling clearing eBay on the trademark infringement allegations.
So, with disparate decisions on the books, is eBay a saint, providing a much needed service to the public with 100 million listing appearing at any one time, or are they a sinner, a willing participant in the sale of counterfeit goods and responsible for tarnishing the image of iconic brands around the globe? In my role at BrandProtect I've had the opportunity to work with eBay and their VERO program for a few years. We continually sweep the site with a view to removing unlawful listings selling replicas of our clients' products as well as listing that use unauthorized copies of their copyrighted images.
Amongst the redeeming qualities I think eBay has are they:
Communicate rules of conduct
eBay has a user agreement that each user must read and accept prior to using the service. The agreement requires users refrain from violating laws, including those concerning third party rights. eBay imposes sanctions such as cancellation of listings and account suspensions in cases where users may have violated these rights. There is a section concerning intellectual property rights that includes information on what users may list and sell
Are compliant with their policies - they close down the culpable -quicky!
eBAY's commitment is that 70-80% of listings are removed within 12 hours and 75% of them removed within 4 hours. My experience has been that once notified, the auction house makes every effort to remove these infringing items quickly.
Are cordial, clear and concise in their communications
Enough said!
As of this writing what IS certain is that Tiffany and eBay will be heading back to court yet again. The appeals court is returning Tiffany's lawsuit to the trial court for further action on a false-advertising claim. On the infringement issue, however, Tiffany Chief Executive Officer Michael J. Kowalski said in a statement "eBay knew that counterfeit merchandise was being sold on its site -- and eBay took no effective steps to stop it. eBay deliberately misled consumers for profit, and unfortunately the court has justified its actions." Tiffany said it may appeal this decision to the U.S. Supreme court. So it looks like this decade may look very much like the last, with trademark owners continuing to battle it out with eBAY.
Posted by Adrian Sertl on Fri, Feb 12, 2010
A short while back I wrote a piece on "Anti-Counterfeit measures and the potential impact to user's web surfing rights". In it I briefly mentioned "a French law" that was created to combat online copyright infringement; it essentially gave ‘infringers' three strikes before their access to the internet would be revoked. The latest version of the bill added that a judicial review is required before any person's internet access can be shut off, which was present in the older versions of the law. This law is now effective in France as of January 1st, 2010, I could not find any cases in which it has been put into practice so far. Then again it has only been a month.
Now while this change is seemingly beneficial to web users, the law can still be viewed as somewhat harsh especially in cases where it is unclear who is actually doing the infringing. A potential infringer could be using an innocent party's unsecured wireless signal to download or seed pirated material or there could be a single party infringing on a machine with multiple users without anyone else knowing. With no criminal or civil trials involved in these instances, at least in France, the possibility exists that innocent parties could have their internet access shut off becau 
se of the actions of others.
Related to this is the issue of making a file available to be shared on a network; does it necessarily qualify as copyright infringement, and in the case of internet users in France could it cause you to lose access to the internet? The owner of the machine hosting the pirated material may be unaware that this is happening at all. Are they, or should they be held responsible?
The debate over this is still ongoing but international precedent seems to indicate that yes they are responsible; the two cases that come to my mind instantly are the Pirate Bay torrent website and of Jammie Thomas-Rassett, which I'll mainly focus on here. In Capitol v Thomas the defendant was sued for copyright infringement for downloading and sharing music. The defence attorneys tried to claim that "Ms. Thomas" computer was hacked", and that the defendant was perhaps the victim in all of this but the judge quickly dismissed it and eventually the defendant was found liable for the damages. Interestingly the case was re-tried in 2009 based on new interpretations of what "making available"should mean. While a similar verdict was reached, the fine was reduced from $1,920,000 USD originally to $25,000 USD. She is currently appealing this ruling.
Using the new HADOPI law and the ongoing Capitol v Thomas case as examples it is fairly obvious that the when it comes to file sharing the onus lies with web users to monitor their own online activities. If you are engaging in these acts you must be prepared to deal with the consequences if and when they arise. It will be very interesting to see how the landmark copyright infringement case in the United States finally concludes and what implications it will have for the future. As interesting will be the first applications of the HADOPI law in France. One thing is for sure, owners of Intellectual Property are making their voices heard, and lawmakers are listening loud and clear.
Oh and one very interesting side note on the HADOPI law. Apparently the font used in the logo by the HADOPI agency "was used without the prior consent of the trademark owner", who created the font for the sole use of France Telecom. If there is a more perfect definition of irony I haven't heard it yet.
Posted by Adrian Sertl on Fri, Nov 20, 2009
I recently
read a very interesting article from the New
York Times by Kevin J. O’Brien titled E.U.
Leaders Bolster Internet Access Protections and it really got me
thinking about how just vital having access to the Internet is in this day and
age, to the point where some government officials are considering it a basic
human right.
To quickly
summarize the piece, on the fifth of this month (which is significant for
reasons that will be explained later on) European lawmakers were able to reach
a ‘middle of the road’ deal between governments that wish to create and
implement harsh laws designed to combat online piracy and advocacy groups that
believe that having access to an Internet connection is a human right. The lynchpin of the agreement mandated that a
legal review must be undertaken before anyone accused of engaging in online
piracy offenses can have their Internet connection cut off. Those in favour of the compromise were
pleased that the deal had essentially made access to the Internet a legal right
in Europe without sacrificing the authorities’ ability to prosecute those that
are found guilty of committing online piracy crimes; although some advocacy
groups were disappointed that the ruling did not go far enough to require a
full on criminal trial before any action could be taken against alleged
offenders. But regardless of the
perceived shortfalls of the deal it was generally considered a success.
This ruling
comes in the wake of attempts by the French Government to get a strict anti-piracy bill passed into law which would give French
authorities the power to disconnect users from the Internet after a third
piracy related offence. There is also a similar
movement in the United Kingdom spearheaded by the Business Secretary Lord
Peter Mandelson. In both cases the
infringers would receive two written warnings before their Internet access
would be disconnected upon being caught offending for the third time, without
even as much as a legal review.
The E.U.
decision also came in the midst, quite literally, of the sixth round of
negotiations regarding the Anti-Counterfeiting
Trade Agreement in Seoul, South Korea, which is what I alluded to earlier
in this post. The main significance of
this, as University of Ottawa Law Professor Michael Geist points out on his blog, is that the chapters of this agreement
that focus on the issue of Internet enforcement are being drafted under a veil
of heavy secrecy. Some of the provisions
in the agreement, that have been made public via a leaked document, would
require that all signatories create, among other things: penalties both civil
and legal for those that are found guilty of “internet infringements”, the
establishment of “third-party liability”, and limitations on what are known as
“safe harbour” rules for Internet Service Providers. One of Geist’s biggest concerns with ACTA,
albeit speaking strictly in the context of Canada, is that it would supersede
any domestic IP legislation that is already in existence, provided any such
legislation exists, and block any attempts to create new laws in the future; it
must be noted that the European Union was represented in Seoul and will no
doubt be present at the next round of negotiations which are slated to commence
in January of next year in Mexico, so if the E.U. were to ratify this agreement
all of the work the officials have done to create the safeguards outlined in
the O’Brien article would, potentially be rendered useless. Geist closes off one of his posts by saying
that “it is clear that there is no bigger IP issue today than the Anti-Counterfeiting
Trade Agreement being negotiated behind closed doors this week in Korea”, and
to his point I may have to agree.
While I
feel that having access to the Internet is becoming, if not already is, a basic
human right it is important to note that like other basic human rights it
should not exceed the boundaries of law; combating illegal online activities is
a fight worth fighting but it must be tempered with provisions that prevent strict
penalties and respect the concept of due process, especially considering that
many of those accused of online piracy are presumed guilty. The problem with this is that the Internet is
still what I would consider a frontier in that laws that govern it are still
being created and refined; in an ideal situation these laws would be impartial
and uninfluenced by any outside force, but sadly as in ‘real life’ that is not
a reality.
I would
love to know what others think of the notion that Internet access is a basic
human right, and from both sides of the argument because I’d like to think I’ve
presented a ‘middle of the road’ point of view.
It is truly a fascinating debate and one that we haven’t fully scratched
the surface of quite yet.