ISP liability: the implications of L’Oréal v eBay
A person who uses or reproduces a work, without conventional or legal authorisation, may be harming the copyright holder.
Using a trademark in this way would also be considered to be an illicit use, although certain trademark uses are permitted, as defined in the rules for exhaustion of rights and fair use, for example.
In the Dominican Republic, legislation governing liability for copyright and trademark infringement, which has existed since 2000, provides for ‘contributory infringement’ and ‘vicarious liability’. Under the concept of ‘contributory infringement’, a party may be guilty of infringement when it causes or contributes to the infringing conduct of another party and has knowledge of the other party’s infringing activities.
Additionally, under the concept of ‘vicarious liability’, a party may be liable for the infringing actions of another if the party has the right and ability to control the infringer’s acts and receives a direct financial benefit from the infringement. Internet service providers (ISPs) are subject to these definitions of infringement.
Some jurisdictions also have special rules for considering the liability of ISPs in IP issues. Some, like France, have a special body to oversee protection of IP (HADOPI). Trademark and copyright owners have tried, many times, to see existing regulations enforced against ISPs that they consider to be infringers.
"it is obvious that an isp cannot have actual knowledge of illegal content, and so it needs a policy for the rapid removal of illegal content when it is notified. also, a polic is not enough, an isp needs to activly enforce that policy."
The Court of Justice of the EU has decided, in consecutive years, two important cases involving L’Oréal (the trademark owner) and eBay (the ISP). Both decisions establish important interpretations of IP liability online. In the July 2011 decision, the court found that eBay may be liable for its users’ trademark violations, provided that the ISP plays an “active role” in acquiring specific knowledge or data control of the auction offers in which counterfeit products were sold.
In the Dominican Republic, contributory infringement and vicarious liability doctrines exist under copyright and trademark law. Dominican Republic IP laws also include articles that hold all persons who ‘facilitate’ infringing or illicit acts as liable.
The Dominican Republic, with other Central American countries, is a member of a free trade agreement with the US (DR-CAFTA), which includes IP immunity provisions for ISPs using language from the US Digital Millennium Copyright Act (DMCA).
The DR-CAFTA protects ISPs from liability for activities under its ‘safe harbours’. These safe harbours include: a) Transmitting, routing, or providing connections for material; b) Automated caching; c) Storage at the user’s direction; and d) Referring or linking. Relief is limited to nonmonetary measures and to compelling ISPs to make ‘reasonable restrictions’.
In order to be protected by a safe harbour, an ISP has to provide a service without creating, selecting or modifying content or how users select the content. An ISP’s service has to be technical, automatic and passive. It is obvious that an ISP cannot have actual knowledge of illegal content, and so it needs a policy for the rapid removal of illegal content when it is notified. Also, a policy is not enough; an ISP needs to actively enforce that policy.
This part of the DR-CAFTA has not been implemented and some judicial cases are trying to enforce the ‘self-implementation’ of the trade agreement.
The Dominican Republic is clear in ISP liability for copyright. In trademarks, the nature of an active or a passive role in “illicit use in commerce” of a trademark is still to be determined.
Other Latin American countries, such as Chile (which also has a free trade agreement with the US), already have an ISP liability law. Argentina and Colombia have proposed legislation for this issue. ISP rules in the Dominican Republic and Latin America area have started to develop.
Jaime R. Angeles is a partner at Angeles & Lugo Lovatón. He can be contacted at: jangeles@angeleslugo.com
