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DARTS IP on liability of online intermediaries 13 12 2018

DARTS IP has put together a document on liability of online intermediaries 

13. December 2018

CANADA

Google Inc. v. Equustek Solutions Inc., 28th June, 2017, 2017 SCC 34

Supreme Court of Canada

Summary:

Google was a third party to a dispute where Equustek, a complex networking device provider, claimed that its former distributor, Datalink, had relabeled one of its products to pass it off as its own, thereby conducting a trademark infringement. Equustek required Google to de-index Datalink’s domain from the search engine in order to prevent irreparable harm to its business. Google declined to do so and argued, among the others, that it should remain neutral to the dispute and that the de-indexing would cause unreasonable inconvenience to the search engine.

Despite Google’s arguments, the Supreme Court of Canada ordered the injunction holding that the de-indexing of the defendant’s domain from the search engine was necessary to prevent irreparable harm to Equustek: “Datalink and its representatives have ignored all previous court orders made against them … Google is how Datalink has been able to continue harming Equustek in defiance of several court orders. This does not make Google liable for this harm. It does, however, make Google the determinative player in allowing the harm to occur. On balance, therefore, since the interlocutory injunction is the only effective way to mitigate the harm to Equustek … and since any countervailing harm to Google is minimal to non-existent, the interlocutory injunction should be upheld.”

India

 

Christian Louboutin SAS v. Nakul Bajaj and Ors., 2nd November 2018, CS (COMM) 344/2018

New Delhi High Court

Summary:

Darveys.com is an online marketplace specialized in luxury goods. The marketplace ensures that the goods are authentic through its authentication procedure, however, it does not go as far as guaranteeing the authenticity in its terms and conditions. Notably, the marketplace does not sell the goods but only allows customers to book them from its partner stores.

Christian Louboutin noticed that its products were sold on the marketplace and brought proceedings against Darveys.com claiming that it was selling impaired or counterfeit products bearing Christian Louboutin trademark, using quotes and image of the founder of the company in an unauthorized manner as well as using meta tags of the same marks to attract business.

The Court clarified the meaning of intermediary contained in Section 2(q) of the Information Technology Act 2000: “When an e-commerce website is involved in or conducts its business in such a manner, which would see the presence of a large number of elements enumerated above, it could be said to cross the line from being an intermediary to an active participant. In such a case, the platform or online marketplace could be liable for infringement in view of its active participation.

The court held that Darveys.com was much more than an intermediary because it exercised full control over the products by identifying the sellers, choosing them, promoting and selling their products. In order to benefit from the exemption “the intermediary must not initiate the transmission, select the receiver of the transmission and select or modify the information contained in the transmission”. Consequently, Darveys.com did not fall within the exemption and was found liable for a trademark infringement.

Judgment available at: https://smhttp-ssl-70271.nexcesscdn.net/wp-content/uploads/2018/11/Delhi-HC-Judgment-in-Loreal-v.-Brandworld-Ors..pdf

 

 

Skullcandy Inc vs Shri Shyam Telecom & Ors., 12th November 2018, CS(COMM) 979/2016

New Delhi High Court

Summary:

Skullcandy filed a lawsuit again Shopclues.com claiming that the latter was selling fake products under its brand name. Whether or not Shopclues.com could benefit of the intermediary liability exception was assessed against various criteria: “… the sellers' details are contained in the invoice and the same are also visible on the website. The website is however facilitating payment and allowing sellers to use its partners for logistical support. The website also has a take-down policy … A number of elements in respect of the Shopclues.com website point to the fact that the role of the website is shown to be that of an intermediary.”

On the other hand, the Court held that there were several features on the website pointing towards the fact that Shopclues.com was not merely an intermediary:

i. the website guarantees that "all products are 100% genuine";

ii. repeated sales of counterfeits have been encountered on the website;

iii. Despite several infringement actions against it, the website doesn't seem to be taking precautions to stop sale of counterfeits;

iv. There is a separate category for replicas on its website. On this window, various lookalike products are advertised and sold. …

v. This REPLICA window encourages sellers to post lookalike products as the feature of the replica window would constitute aiding and abetment of violation of intellectual property.”

Finally, the Court concluded that Shopclues.com was disqualified for the exemption under Section 79 of the Information Technology Act 2000.

Judgment available at: https://indiankanoon.org/doc/121169709/

 

Similar cases decided on 12th of November 2018:

-          New Delhi High Court: Loreal vs Brandworld & Anr., CS(COMM) 980/2016

https://indiankanoon.org/doc/55867232/

 

-          New Delhi High Court: M/S Luxottiga Group S.P.A & Another, CS(COMM) 453/2016 https://indiankanoon.org/doc/167333165/

United States

 

Tiffany vs. eBay 600 F.3d 93

Thailand

No case law found for trademark infringement. There is currently ongoing a significant case for intermediary liability for copyright infringement.

True Visions Group v MIMO et al, Tor Por. 118/2561

Central Intellectual Property and International Trade Court

Summary:

On July 2018, True Visions Group filed a lawsuit for copyright infringement in the Central Intellectual Property and International Trade Court against several broadcasters for broadcasting and re-broadcasting FIFA World Cup 2018 and the World Cup Analysis through AIS Play application. True Visions Group held the sole license for the filmed content. True Visions Group has requested the defendants to cease from broadcasting the filmed content and to pay damages worth Baht 585.87 million (equaling to about 16 million euros).

An interim decision has been given on the case in which the court ordered both alleged infringers to inform IS PLAY users regarding the cancellation of broadcasting through AIS PLAY within 88 hours once the alleged infringers have received or deemed to have received this order. After the completion of said period, the alleged infringer shall immediately remove the broadcasting signal and analytic show from AIS PLAY or any other application until the court orders otherwise.