The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark and name law, was tasked with determining the conditions under which an internet auction house can be held liable for injunctive relief when name rights are infringed on its platform.
The defendant operates the internet auction platform eBay. In november 2003, the plaintiff, who was registered with eBay but did not trade there, was contacted by dissatisfied buyers who believed they had purchased a sweater from him in an eBay auction. It was subsequently discovered that the seller of the sweaters – which were apparently counterfeits of a branded item – had registered on eBay under the pseudonym "universum3333" using the plaintiff's actual name, place of residence, and date of birth. After the plaintiff notified eBay and eBay promptly blocked this seller, further registrations occurred, again using other pseudonyms but incorporating the plaintiff's name, address, date of birth, and email address. Some buyers returned the purchased sweaters to the plaintiff, believing him to be the seller. Consequently, the plaintiff sought an injunction against eBay, asserting that the platform was liable as a disturber for the infringement of his name rights.
Both the Regional Court and the Higher Regional Court ruled in favor of the plaintiff. However, the defendant's subsequent appeal (Revision) led to the case being remanded to the Higher Regional Court for further proceedings.
The Higher Regional Court concluded that the defendant was liable for the infringement of the plaintiff's name rights under the principle of disturber liability. While it acknowledged that the defendant could not be reasonably expected to conduct proactive checks, it asserted that an obligation to investigate arose once the defendant was notified of a specific legal infringement. This had occurred in the present case, yet the defendant had failed to implement (effective) measures to prevent future name right infringements.
The Federal Court of Justice affirmed the Higher Regional Court's position, stating that eBay, having received notifications, is obligated to prevent such infringements of the plaintiff's name rights to a reasonable extent.
According to the Federal Court of Justice's ruling, such an obligation arose as early as the initial notification in november 2003. However, the law prohibits imposing a general monitoring obligation on the operator of an internet platform (host provider) to scrutinize stored and publicly available information for legal infringements. Nevertheless, once a host provider has been alerted to a clear legal violation, it must not only block the infringing party but also, within reasonable bounds, prevent similar future infringements.
The Federal Court of Justice overturned the challenged judgment because the Higher Regional Court had not yet made findings on the disputed question between the parties regarding whether it was technically feasible and reasonable for eBay to prevent further infringements of the plaintiff's name rights committed by users of the auction platform. The burden of pleading and proving this generally lies with the plaintiff.
However, eBay must provide detailed arguments if the reasonableness of such measures is to be contested. eBay's confidentiality interests could, if necessary, be protected by excluding the public and imposing a judicial confidentiality order.
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 contended that it is not feasible, using reasonable means, to monitor its auction portal in a manner that would entirely prevent infringements of name and trademark rights. It now remains to be determined whether eBay can sufficiently substantiate and prove this assertion.
For any inquiries regarding this matter, Goldberg Attorneys at Law are at your disposal.
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
