T he Role and Responsibility of Internet Intermediaries in the Field of Trademarks

1. The Role and Responsibility of Internet Intermediaries in the Field of Trademarks Konstantinos Komaitis Policy Advisor, Internet Society

2. 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?

3. What can ‘international regulation’ mean? • Treaty, Agreement or Convention • Binding • Formal (or less formal, depending on the instrument) • Harmonization (general rules of common application) • In ‘writing’ • 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)

4. 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.

5. Regulation < The Internet

6. 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.

7. Impact of international regulation on trademarks • Evolution of trademark law – from incremental judicial making to jus cogens? • Issues of (In)Consistency.

8. Examples of Trademark Inconsistency (1)! • Domain Names • Nature of domain names – contracts for services vs. property rights • Anticybersquatting Consumer Protection Act (ACPA) – United States. • ccTLD Dispute Resolution Policies, e.g. NOMINET UK Dispute Resolution Policy. • The Uniform Domain Name Dispute Resolution Policy (UDRP) – International and managed by the Internet Corporation for Assigned Names and Numbers (ICANN).

9. Examples of Trademark Inconsistency (2)! • Intermediary Liability • 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”. • 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”.

10. 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?

11. Against an International Regulatory Framework! • Premature. • Role of (national) legislature and judiciary. • “We know it, when we see it”! • Best practices and experiences.

12. Guidance: Example of good practice. Intent Design Choices Commercial Motivation

13. Conclusion (1). Two questions: • Policy: which party should police the mark? • Passivity: whether and when intermediaries can be liable for failure to act?

14. 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.

15. Thank you! komaitis@isoc.org