As promised a few months ago, I bring you the final outcome of the eBay-Rowling controversy. In a detailed order running into 16 pages, the Delhi High Court has ruled on 31st May 2007 that
…the responsibility and/or liability of the defendant No.5 who runs the said website (i.e. eBay) facilitating sale and purchase of goods and services by intending sellers and purchasers using its website, when such sale amounts to infringing the rights of others-like the present one where the defendant Nos.1 to 4 violated the copyrights of the plaintiffs, is the question on which the parties are at issue and it has to be gone into in the main suit. It has not been decided. It is also obvious that not even prima facie opinion has been expressed on this aspect in any of the orders. Of course, at the same time, in so far as the present case is concerned, the counsel for the defendant No.5 has given categorical statement that it would not allow the defendants No.1 to 4 to use its website by placing offending ads amounting to infringement of the plaintiffs copyright in the aforesaid literary work.
Thus the court has categorically clarified that e-Bay has not been injuncted either by the effect of the 16th November 2004 order or 24th January 2007 order. For details on these orders see my earliest post on the subject.
The court’s rationale is as was expected. The court recorded the submissions of e-Bay, who was Defendant No. 5 in the matter, in the following words
“…(e-Bay is) just like a “market place” where sellers and buyers can come and trade…if somebody gives its advertisement for sale on the website of the defendant No.5, the defendant No.5 is not supposed to find out as to whether the goods or services offered by such person for sale are genuinely owned by it or not. The law does not and should not hold network service providers responsible for the content on their website pasted by third parties, is the central theme of the defendant No.5. At the same time, it has explained that it takes all measures that are practically possible for it to monitor the listing on the website and to ensure that the listing do not violate any third party’s intellectual property rights…”
Describing the media furore over Rowling and Co.’s announcement that e-Bay had been injuncted by a court in India, resulting in e-Bay moving court to injunct the Plaintiffs from ‘misrepresenting the court orders’, the Judge remarked, with a dash of humour,
“Two short orders were passed in this application, which are dated 16.11.2004 and 24.1.2007. However, controversy raised by the parties in the interpretation of those orders is, by no means, small and as a consequence (a) “Big Fight” in the form of (a) passionate debate, even touching emotional c(h)ords have ensued between the plaintiffs on the one hand and the defendant No.5 on the other hand. Allegation of the defendant No.5 is that the plaintiff and her representatives are spreading mis-information about the stay orders and the distorted manner in which vide publicity is given in the media, print and electronic, it has caused immense harassment and humiliation to the defendant No.5 and has also damaged its goodwill and reputation in the process. The plaintiffs refute this accusation and maintain that the media has published true contents and meaning of the aforesaid two orders. Therefore, in this application filed by the defendant No.5, whereby it has sought to restrain the plaintiff and her representatives from misrepresenting the proceedings and orders of this Court, the actual exercise, which the Court is compelled to do is to explain the real import of the said two orders.“
While recording the trial by media that happened in the matter, the Court remarked,
“Much furore, however, took place as the aforesaid order dated 24.1.2007 has been widely published in the print as well as electronic media and also on websites stating that the High Court had ruled the defendant No.5, by means of that order, to stop selling pirated ‘Harry Potter works’. The defendant No.5, In these circumstances, has flied this application enclosing the clippings of newspaper reportings as well as reporting of the orders on various websites by downloading text thereof. Blame game is that it is at the instance of the plaintiffs and even the counsel for the plaintiffs that picture is projected giving the impression as if the Court had made scathing remarks condemning the role of the defendant No.5. Therefore, prayer made is that the plaintiff No.1 and her representatives be restrained from misrepresenting the proceedings and the aforesaid orders passed by this Court. Learned counsel for the defendant No.5 submitted that only statement of the counsel for the defendant No.5 was recorded and no injunction order passed as was clarified in the order dated 16.11.2004 itself and arguments were never heard on the merits of the case.“
Rowling’s team of counsels continued however, to maintain that “the undertaking given by the Court and contained in the order dated 16.11.2004 virtually amounted to (an)injunction. It was also submitted that in essence the defendant No.5 was also restrained as it had given voluntary statement that it would not allow the defendant Nos.1 to 4 to display offending advertisement on its site, which was nothing but self-inflicted injunction, as bound by this statement the defendant No.5 is precluded from showing any such advertisement on its website, which would amount to infringing the plaintiffs copyright in the Harry Potter works. It was also argued that it was only because of this statement that the Court had not itself passed specific order as undertaking given serves the purpose of injunction. It was argued that breach of such an undertaking, if any committed, would have same repercussions which a person has to face when he violates injunction or restraining order and since consequences are common, undertaking also amounts to injunction.“
It appears that the Plaintiffs tried to cleverly come up with a legal explanation for their overreaching comments in the press to the effect that e-Bay had been injuncted by the Delhi High Court.
Although for the moment there is a temporary status quo to the extent that the Court has ruled that there is in fact no such order of injunction, the veiled manner in which the order has been passed is a pointer to the fact that the issue itself is far from resolved. The court has been very careful with the language used in the order so that it cannot be interpreted as containing a finding as to ISP liability per se. That issue will be finally decided only after the trial is concluded in the matter and a final judgement is pronounced. Either ways this is a case which can be quite impactful for Indian copyright law in the future.
Needless to say, your best bet to know what finally happens is to diligently, carefully and loyally WATCH THIS SPACE!!
Why can’t courts pass rulings in plain English! Shwetasree, what does the following line mean:
It is also obvious that not even prima facie opinion has been expressed on this aspect in any of the orders.
And in summary, has the court finally said that service providers are not liable for the content the serve or host?
Sorry Nandz, had missed your query until now!
Prima facie as u probably know means at the face of it. So what i meant was that the court has observed that so far the orders passed in this matter cannot be interpreted to mean service providers are liable as the court has not made such a direct or even oblique ruling on this point. The issue of their liability if any, will be determined only at the conclusion of the suit.
The Court leaves unanswered as to the fact eBay cannot be held responsible for items ‘others’ are offering on their ‘market place’?
In Belgium the Court decided 2004/11/26 in a case of Copyright infringment (where an Internet Service Provider made it possible to the users of their ISP services to download illegal electronic musicfiles through so called ‘peer-to-peer’ software) the ISP was liable for allowing others to download material in breach of Copyright on their network.
It was not about offering it themselves, it was about making it possible others could use their ‘network’ to acquire illegal material.
I understand eBay is selling their US viewpoint where a service provider shall not be held liable for
(2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider.
http://www4.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000512—-000-.html
I wonder whether the Indian Statutes on Copyright are excluding the same thing?
“it has explained that it takes all measures that are practically possible for it to monitor the listing on the website and to ensure that the listing do not violate any third party’s intellectual property rights…”
There is plenty of proof eBay is not doing anything against the offer of illegal material where intelectual property rights are not respected. The eBay websites are filled with counterfeit clothing and electronic equipment. Only when someone complains about it these would be removed.
I hope with the present case the Indian Court set an example of what is not acceptable. And an eBay saying they are taking measures that are practically possible is clearly not enough considering the illegal Harry Potter material has found its way on an Indian ‘auction’ website.
Since I am not getting any reply maybe I should add some more food for tought?
http://www.sjberwin.com/publication/practice/intellectual_property/new_german_decision_on_ebays_liability_for_counterfeit_auctions.html
http://www.sjberwin.com/publication/practice/intellectual_property/online_auctions.html
http://www.sjberwin.com/publication/practice/intellectual_property/anti_counterfeiting_in_the_electronic_age.html
Report of Trademarks and Unfair Competition Committee
ONLINE AUCTION SITES AND
TRADEMARK INFRINGEMENT LIABILITY
http://www.abcny.org/pdf/report/Online%20Auction%20Sites%20Final%20Report.pdf
“The Lanham Act contains no explicit language allowing for a cause of action of contributory infringement or vicarious liability. In the seminal case of Inwood Labs., Inc. v. Ives Labs., Inc., however, the Supreme Court interpreted that statute to imply such a cause of action and enunciated what remains the standard for contributory trademark infringement. The Court stated that a party which “intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement … is contributorially responsible for any harm done as a result of the deceit.” Stated differently, the determination of contributory infringement depends upon a
defendant’s intent and knowledge of the wrongful activities.”
A similarity in the train of tought can be found in this report and the German Court decision on eBays liability as well as in the other texts I gave a link to.
The question remains what Indian Law is stating about this matter.
I notice the link about the German decision is not shown correctly while this text is too important as the Court in this case said:
The German Federal Supreme Court in a judgment published on 19 June 2007, following its announcement on 19 April 2007, found that although eBay does not aid or abet any trademark infringements of eBay sellers listing goods on its web pages, eBay is liable as a “contributor” pursuant to German and European trademark law. The Court reasoned that, notwithstanding the fact that the Community Trademark Regulation does not expressly stipulate the liability of “contributors”, the European Enforcement Directive requires that trademark owners are able to take legal action against “intermediaries whose services are used” to infringe an Intellectual Property right. The Court found as well that eBay qualifies as such an “intermediary”.
It’s real easy to get to that document when performing a search with those three keywords : eBay Germany liability.
Hi Linda,
Sorry I’ve been travelling like a maniac and don’t check my mail like an inhabitant of the Information Age rightly should!
Actually the issue of ebay’s liability has not been debated or ruled upon yet. The court is seized of the issue but it will be decided only at the conclusion of the case after the trial is complete.
The present debate, though premature in the lifetime of this particular case, was precipitated by Rowling’s lawyers claiming that ebay had been injuncted by the court when no such injunction order had actually been passed. The scope of what the court had to adjudicate upon at this stage was therefore limited to whether an undertaking by ebay to remove infringing content amounted to an injunction against ebay and a ruling that it was liable (on admission) for any infringement of copyright. The court said no.
However, academically speaking, the Indian Copyright Act recognises landlord liability in that while specifying the categories of infringement in Section 51 of the Act, includes the ownership of premises that are used for the act of infringement.
(You can see the full text of the statute on http://www.ircc.iitb.ac.in/webnew/Indian%20Copyright%20Act%201957.html)
There have been a couple of Indian decisions on landlord liability also but whether the court treats online premises on the same plane as physical ones, remains to be seen at the conclusion of this case.
When searching for Trademark Law on that same website you gave that link to I am directed to texts about Japanese Laws.
Do I need to understand India’s Trademark Law is based on Japanese Law?
http://www.ircc.iitb.ac.in/IPcourse/Dr.%20Ganguli%20IP%20Course/additional%20docs/3-02.pdf
If this is the case there is some interesting reading in there;
On page 49:
“Among the titles of copyright works, the title of a book is given special treatment in the examination of a trademark application.”
On page 56:
“3) Indication on Home Page
Different from the use of a domain name indicated by an Internet browser, the use of a name, a logo, etc. for advertisement and recruit purposes on a home page constitutes the use of a trademark.
Therefore, a third party’s act of this kind without a consent from the owner of a trademark right constitutes an infringement on the trademark right.”
It may be Trademark Law is just giving a possibility to decide on the liabilities of what you call online premises.
Another part contradicting eBay’s own declarations (when they explain they cannot be found liable) in the Rowling case can be found in the US Digital Millennium Copyright Act of 1998:
http://www.copyright.gov/legislation/dmca.pdf
“In addition, to be eligible for any of the limitations, a service provider must meet two overall conditions: (1) it must adopt and reasonably implement a policy of
terminating in appropriate circumstances the accounts of subscribers who are repeat
infringers; and (2) it must accommodate and not interfere with “standard technical measures.” (Section 512(i)). “Standard technical measures” are defined as measures that copyright owners use to identify or protect copyrighted works, that have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair and voluntary multi-industry process, are available to anyone on The Digital Millennium Copyright Act of 1998 Copyright Office Summary December 1998 Page 10 reasonable nondiscriminatory terms, and do not impose substantial costs or burdens
on service providers.”
eBay would be breaking this US Law when they would not adopt and reasonably implement a policy of terminating in appropriate circumstances the accounts of subscribers who are repeat infringers.