26 Pages Posted: 18 Mar 2012
Date Written: March 16, 2012
In recent years, the issue of liability of online platforms for the use of trademarks on their sites has become highly controversial in the light of divergent court cases in various jurisdictions. Given the legal uncertainty in this area, the role and potential responsibility of Internet intermediaries in the field of trademarks may become a topic of deliberations at the international level. At the World Intellectual Property Organization, proposals have been made for the exchange of information. The liability question is particularly complex because of the diversity of online platforms concerned and the diversity of use modalities involved. Recognizing the need for safe harbours in the area of trademarks, however, is only a first step in answering the question of secondary liability for infringing acts of users of online platforms. It is the scope of safe harbour provisions and the eligibility criteria to be fulfilled by platform providers that become crucial in this context. While it is beyond the scope of the inquiry to trace the conceptual contours of notice and takedown in trademark cases, the paper highlights the particular nature and inherent limits of exclusive rights in the field of trademark law. Considering fundamental differences between trademarks and copyright, it shows that the expansion of copyright notice and takedown standards to trademark cases, is likely to yield undesirable results. Instead, an individual safe harbour regime is needed that is tailored to the particular scope and reach of trademark protection. Besides the inherent limits of trademark rights, the limitations imposed on these rights to satisfy competing economic, social and cultural needs are to be considered in this context. In sum, a nuanced approach to the safe harbour question is needed that reflects the specific scope and reach of trademark rights as well as the individual characteristics of online platforms.
Keywords: trademark law, secondary liability, hosting, safe harbour, confusion, dilution, comparative advertising, exhaustion, freedom of expression and information, keyword advertising, auction sites, social media
Suggested Citation: Suggested Citation
Senftleben, Martin, An Uneasy Case for Notice and Takedown: Context-Specific Trademark Rights (March 16, 2012). Available at SSRN: https://ssrn.com/abstract=2025075 or http://dx.doi.org/10.2139/ssrn.2025075