Lack of an internationally harmonized concept of secondary liability
Over the last twenty years, IP infringements in online platforms and e-commerce Intermediaries have been fast growing. Since direct infringers are usually posting content online anonymously, trademark and copyright holders try to seek enforcement under secondary liability against Internet Intermediaries. Internet services providers (ISPs), search engines, and online marketplaces are the most prominent intermediaries.

There is no harmonization of secondary liability under International IP law. US and EU lawmakers have enacted consistent regulations (E-Commerce Directive, Digital Market Single Directive and Digital Millennium Copyright Act), aimed at balancing IP protection and innovation. Both systems establish “safe harbor” taxonomies such as “mere conduit, catching, hosting”. Such safe harbours exempt Internet Intermediaries from liability unless they are aware of and do not adequately impede infringing content. But, how can an ISP become aware of IP infringing content on its platform? Even though they don’t have a legal obligation to monitor illegal content, legislators kindly invite Intermediaries to track user activity for current and upcoming infringement.

Internet Intermediaries EU and US case law tendency
Secondary liability is recognized by US and EU Courts, however, the case law is still in the process of fine-tunning. Despite the fact that every country names their own secondary liability theories (US applies the contributory and vicarious liability doctrines, while the EU applies general principles of civil, tort, competition and criminal laws), they both focus on similar standards: 1) the standard knowledge and awareness of the infringement, and 2) the right and ability to supervise.

Core problems are that none of the approaches establish reasonable secondary liability guidelines to determine the specific knowledge and conduct of the Intermediary. They neither distinguish between the two-fold culpability requirements (intentional or negligence), nor the difficulty or expense of preventing violations, the effectiveness of adopting certain precautionary measures and the consequences of adopting them.

The tendency in ISP EU and US case law is to apply the “reasonable man” test, which requires the same awareness and understanding as a human. Courts do not care about how understandable the infringement notice was for ISPs, because they should have been nonetheless aware and take actions (P10 v. Giganews). Indeed, ISPs shall track user activity, acting as a police officer, without being one.

The case law regarding search engines focuses on the ability to take measures to disable infringement. In the landmark case Google v. LVMH, the European Court of Justice (ECJ) considered that “playing an active role and failing to determine infringement” is a ground for being held liable. The problem remains that there is no guidance as to how this active role and control should be done and to which extent.

For online marketplaces (e.g., eBay or Alibaba), the current approach shows that big corporations and trade groups are pushing online marketplaces to be more proactive, but how does this proactivity have to be measured and what happens if the infringement could not be detected?

The knowledge element remains ill-defined
Regarding the concept of being able to supervise, Courts normally overlap it with the knowledge requirement, since for having knowledge a certain control and supervision is needed. Online intermediaries are not humans but algorithms, therefore the supervision and control relationship analysis does not fit.

Tort law helps to distinguish the culpable from the non-culpable
My thesis entitled ”The reconciliation of secondary liability for trademark and copyright law through tort law in different E-commerce situations” presents the following findings:

Firstly, Courts continue focusing on the “reason to know” test instead of analyzing the problem from the technical knowledge perspective of an Internet Intermediary. Secondly, the causation element, which connects the facts to the case and grants the judge leeway in determining when the damaged was caused in the chain of events, is not considered. Thirdly, the reasons of culpability are not justified. Logically, a computer’s mindset cannot show an intentional conduct per se. For this reason, judges must recur to a negligent theory in order to examine the Internet Intermediary´s culpability. To prove this, an established duty of care must be counterbalanced with the protected interests that come into play, the seriousness and the foreseeability of the damage and the measures to be adopted.

Denying access to an ISP would be like powering off the electricity or computer operating systems. Likewise, not being able to search for something in Google or Yahoo, not being able to buy products in eBay can lead to a negative impact on the economy and stakeholders. Furthermore, some take-down measures can be more invasive for some Intermediaries than for others. Lastly, current legislation and case law, specially the EU-approach, impose a proactive duty of filtering and monitoring the content, which can collide with some human rights such as privacy or freedom of expression.

By analyzing tort law elements, Courts would reduce the motivation of the analysis, the lengths of their opinions, and they would gain in terms of certainty, clarity and consistency. The more tort law is integrated into the secondary liability analysis, the more precise the culpability of online intermediaries in IP infringement claims can be established.