ebay must prevent the infringement of naming rights

The First Civil Senate of the Federal Court of Justice, which is responsible for trademark and name law, had to decide under which conditions an internet auction house can be sued for injunctive relief if name rights are infringed on its platform.

The defendant operates the Internet auction platform eBay. The plaintiff, who was himself registered on eBay but did not trade there, was called in November 2003 by dissatisfied buyers who thought they had bought a jumper from him in an eBay auction. It turned out that the seller of the jumper - which was apparently a plagiarism of a brand-name jumper - had registered on eBay under the alias universum3333 with the plaintiff's civil name; the plaintiff's place of residence and date of birth were also given. After the plaintiff had informed eBay of this and eBay had immediately blocked this seller, there were subsequently further registrations using other aliases, again with the plaintiff's name, address, date of birth and email address. Individual buyers returned the jumpers they had purchased to the plaintiff as the alleged seller. The plaintiff then filed a claim for injunctive relief against eBay for infringement of his right to a name as a disrupter.

The Regional Court and the Court of Appeal upheld the action. The defendant's appeal against this led to the case being referred back to the court of appeal.

The court of appeal assumed that the defendant was responsible for the infringement of the plaintiff's right to a name within the scope of "Stoererhaftung" (Breach of Duty of Care). It could not be expected to carry out checks in advance. However, the defendant had a duty to check if it was made aware of a specific infringement. This had happened in the present case without the defendant having taken (successful) measures to prevent future infringements of the right to a name.

The Federal Court of Justice confirmed the opinion of the Court of Appeal that eBay had a duty to prevent such infringements of the plaintiff's right to a name within the bounds of what was reasonable.

According to the decision of the BGH, such an obligation already exists due to the first notification in November 2003. However, according to the law, the operator of an Internet platform (host provider) may not be imposed with a general monitoring obligation to check the information stored and posted on the Internet for violations of the law. However, once the host provider has been notified of a clear violation of the law, he must not only block this provider, but also prevent corresponding violations in the future within the bounds of what is reasonable.

The Federal Court of Justice overturned the contested judgment because the Court of Appeal had not yet made any findings on the question at issue between the parties as to whether it was technically possible and reasonable for eBay to prevent further infringements of the plaintiff's right to a name committed by users of the auction platform. The burden of proof and presentation in this regard basically lies with the plaintiff.

However, if the reasonableness of such measures was to be disputed, eBay would have to substantiate its case. eBay's interest in secrecy could, if necessary, be taken into account by excluding the public and by a court order of secrecy.

Judgment of April 10, 2008 I ZR 227/05 -
AG Potsdam, judgment of December 3, 2004 22 C 225/04 (CR 2005, 232) OLG Brandenburg, judgment of November 16, 2005 4 U 5/05 (NJW-RR 2006, 1193)
Karlsruhe, April 11, 2008
Source: Press release of the Press Office of the Federal Court of Justice No. 71/2008 of April 11, 2008, www.bundesgerichthof.de

Our opinion:

eBay has frequently objected that it is not possible by reasonable means to monitor the auction portal eBay in such a way that name and trademark infringements can be completely prevented. It now remains to be seen whether eBay will succeed in demonstrating and proving this in a sufficiently substantiated manner.

If you have any questions on this topic, please do not hesitate to contact Goldberg Rechtsanwälte.

Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)