16 February 2015Jurisdiction reportsIsik Ozdogan and Ezgi Baklaci

Liability of online marketplaces

Before the case was taken to the Civil Assembly, the trademark owner started an infringement action against the marketplace, claiming that the defendant was offering infringing goods through its website. The trademark owner requested the cease-and-desist of the sale of the allegedly infringing goods through the website, and claimed compensation.

The defendant argued that the website was an online marketplace for its users, enabling them to connect to other users, and ensuring safe payment. Additionally, the marketplace said it had no control over the goods offered by members of the website and that the allegedly infringing goods were not its property.

Despite accepting that the goods offered through the marketplace were counterfeit, the First Instance Court dismissed the case on the basis that the lawsuit could not be directed at the marketplace. The court’s reasons were as follows:

The obligations of internet service providers are not defined in Turkish Law.

Therefore, the legal arrangement under the E-commerce Directive in the EU, the Digital Millennium Copyright Act in the US and article four of the Turkish Law on Intellectual and Artistic Work can be applied to this case. Under the mentioned regulations, the internet service provider (ISP) has to prevent the infringing activities as long as it is served with a proper takedown notice.

"The decision of the Civil Assembly carries significant implications for online auction and shopping websites."

The marketplace itself is not in a position to know the authenticity of the products offered through its website. Its responsibility starts at the time it is served with a proper takedown notice and does not remove the content immediately after.

Since a takedown notice has not been served to the marketplace, the lawsuit cannot be directed towards it.

The plaintiff appealed against the decision, which was then reversed and remanded back to the First Instance Court on the basis that the marketplace is liable for trademark infringement. As the First Instance Court again backed its decision, dismissing the allegations, the case was brought before the Civil Assembly.

The Civil Assembly held that the marketplace is jointly liable for the infringing acts based on the reasons below:

Although Turkish law does not have a specific regulation defining the obligations of ISPs, the Trademark Decree Law and the Obligation Law accept the responsibility of parties that facilitate infringing activities. As the marketplace facilitates the sale of infringing goods, it should be held liable for contributory trademark infringement. Therefore, the First Instance Court’s insistence on its decision, based on there being no legal arrangement in Turkish Law, is not legitimate.

As the trademark infringement action is a tort, negligence of the infringer is required as a prerequisite for a damages claim. Considering the nature of online sales, the marketplace has not been in a position to know about the infringing goods sold through its website; it should have been notified about the infringing activities.

However, in this case the marketplace has been made aware of the infringing goods by the delivery of the petition of the case. As the petition should also be accepted as a takedown notice, by not preventing the sale of infringing goods the marketplace has indeed acted negligently.

Consequently, the marketplace is liable for contributory infringement as it did not remove the infringing content from its website despite being served by the petition of the lawsuit and therefore being made aware of the infringing activities.

The decision of the Civil Assembly carries significant implications for online auction and shopping websites because it looks as though they have no tools with which to prevent themselves from being pulled into a trademark infringement claim.

Isik Ozdogan is a partner at  Moroglu Arseven. She can be contacted at: iozdogan@morogluarseven.com

Ezgi Baklaci is a senior associate at Moroglu Arseven. She can be contacted at: ebaklaci@morogluarseven.com

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