Combating Against Counterfeit: Third Party E-commerce Trade Platform’s Liability Analysis




© Springer-Verlag Berlin Heidelberg 2015
Yimeei Guo (ed.)Research on Selected China’s Legal Issues of E-Business10.1007/978-3-662-44542-6_22


22. Combating Against Counterfeit: Third Party E-commerce Trade Platform’s Liability Analysis



Weiwei Hu  and Yimeei Guo 


(1)
School of Law, University of Xiamen, Xiamen, 361005, China

 



 

Weiwei Hu (Corresponding author)



 

Yimeei Guo



Abstract

Is the third party e-commerce trade platform operator such as eBay or Taobao liable for IPR infringement when there is counterfeit product sold on the Web site? This article wants to examine relevant legislation and do some case studies abroad and in China. In addition to the conclusive remark on relevant legislation and judicial decision abroad and in China, this article tends to support the healthy development of third party e-commerce trading platforms in China.


Keywords
E-commerceCounterfeitInfringement liability


Published by “Proceedings of Int’l Conference on Management and Service Science (MASS 2012), August 1, 2012



22.1 Introduction


In recent years, while the convenience of online shopping benefits most people, the accompanying intellectual property right (IPR) especially trademark and copyright infringement cases bring headaches to IPR owners. It is increasingly common to find third party e-commerce trade platform which sell forged or counterfeit products of well-known brands or copyrighted works. Usernames or address can be false, and the Internet users are usually disguised by their IP addresses and thus difficult to locate for commencing legal action. In that case, is the third party e-commerce trade platform operator such as eBay or Taobao liable for the infringement?

This article wants to examine relevant legislation abroad and in China, then do some case studies in European Union, France, German, USA, and China focusing on the courts’ inconsistent judicial interpretation over eBay and Taobao for the same conduct, namely allowing counterfeit goods to be sold on their third party e-commerce trade platforms. Finally, in addition to the conclusive remark on relevant legislation and judicial decision abroad and in China, this article tends to support the healthy development of third party e-commerce trading platforms in China.


22.2 Relevant Legislation Abroad and in China



22.2.1 EU Directive on Electronic Commerce


Paragraph 1, Article 14 of EU Directive on Electronic Commerce (2000/31/EC) provides that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

Article 15 further provides that: “Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.”


22.2.2 The French Trust in Digital Economy Act


France has implemented the E-commerce Directive through the Trust in Digital Economy Act (Law No. 2004-575 of June 21, 2004) which has established a separate liability regime, on the one hand, for Internet providers and on the other hand, for hosts. The Act categorizes Web site administrator as two kinds: one is the Web site editor, another is the cyberspace provider. The Web site editor is the individual or organization that appears and disseminates the selected, sorted out, and controlled information to the public. The cyberspace provider is the individual or organization that provides storage space but does not participate in issuing information. The Web site editor shall bear complete liability for illegitimate information issued on the Web site, whereas the cyberspace provider normally is not obliged to investigate and review the Web site’s information and shall bear liability only when it does not filter the knowing illegitimate information in time. According to the “L’Oréal v. eBay” decision discussed below, third party e-commerce trading platform providers stated here should belong to the cyberspace provider.


22.2.3 German Multimedia Gesetz


German passed “Gesetz zur Regelung der Rahmenbedingungen für Informations- und Komunikations dienste” (also called “Multimedia Gesetz”) on August 1, 1997. “Multimedia Gesetz” classifies Internet service provider (ISP) in accordance with different types and adopts different attribution principle. Third party e-commerce trade platform providers stated here should belong to the hosting service provider under “Multimedia Gesetz,” which clearly provides the infringement liability for the hosting service provider, i.e., only when the hosting service provider knows illegitimate content existing on the Web site and should prevent such illegitimate content’s continual use but does not do so under technology permitted circumstance, shall it bear the infringement liability.