Court refuses to order website to screen ads for infringement

Netherlands

The Zwolle District Court has denied a request by Stokke, owner of the copyright and the trademark rights to the so-called TRIPP TRAPP children's chair, to order Marktplaats BV to screen all offers for children's chairs made on its second-hand sales website for chairs that infringe Stokke's rights.

Stokke had initiated proceedings against Marktplaats because it found that imitation Tripp Trapp chairs were regularly offered for sale by third parties on marktplaats.nl, often using the Tripp Trapp and Stokke names with a photograph of the imitation chairs. Markplaats.nl is one of the most popular websites in the Netherlands, visited daily by more that 600,000 people. It features an average of 70,000 advertisements for second-hand goods, which are placed through an automated process to which the advertiser can (but is not obliged to) provide his or her name and address. In connection with this, Stokke also demanded that Marktplaats be ordered to require its advertisers to provide their names and addresses.

Since August 2003 Stokke has regularly requested Marktplaats to remove advertisements for children's chairs that, in Stokke's opinion, infringe upon its copyright or trademark rights. Marktplaats was taken over by eBay International in 2004 and since then has participated in eBay's Notification of Infringement Programme, a notice and takedown procedure for complaints about IP infringements. Although Marktplaats removed the infringing advertisements, Stokke was of the opinion that Marktplaats should take over the burden of screening its website for infringing products. When Marktplaats refused to do this voluntarily, Stokke initiated proceedings.

The court did not accept Marktplaats' defence that it acts as a hosting provider and that its activities can only be judged on the basis of Article 14 of the EU E-Commerce Directive (Article 6:196c Dutch Civil Code). This provides that a hosting provider is not liable for infringing material on a website hosted by it, provided it removes the information or blocks access to it as soon as it becomes aware that the information is unlawful. The court is of the opinion that this provision does not pre-empt Marktplaats' (or a hosting provider's) liability under the general tort provision of the Dutch Civil Code (Article 6:162). The court subsequently considered whether there is a duty of care for Marktplaats to screen advertisements before or after placing them on its website, which would qualify Marktplaats' non-fulfilment thereof as unlawful behaviour. The court concluded that this is not the case in view of the specific circumstances.

The court considered that, although Marktplaats is aware of the infringement of Stokke's rights through the ads and the fact that Stokke is suffering (limited) damage as a consequence thereof, Marktplaats does not itself inflict that damage and receives only a very limited advantage from the infringing activity. Further, Marktplaats has in place an effective notice and takedown procedure. Finally, requiring Marktplaats to screen all ads for infringing products would probably result in considerable costs and lead to a long delay in placing ads, which would seriously affect the attractiveness of Marktplaats' service. In this context, it should be taken into account that if the order were granted in relation to Stokke's products, it is likely that many other IP owners would demand similar orders, so that Marktplaats would have to screen its ads on a daily basis for possibly thousands of products.

On the basis of this, the court concluded that in these circumstances Marktplaats does not act unlawfully by refusing to screen the ads placed on marktplaats.nl either before or after an advertisement is placed and denied Stokke's demands in relation to the ads.

In relation to Stokke's demand that Marktplaats should provide the contact data of its advertisers and its demand to order Marktplaats to require its advertisers to provide such data to Martkplaats when placing an ad, the court considered that these orders are permitted under the E-commerce Directive and the Data Protection Directive. The court noted that the Supreme Court has considered that an internet service provider (ISP) may be required to make the contact data of a subscriber available to a third party who is damaged by information published on a website of that third party, hosted by the ISP. However, in this case the court was not yet able to decide this issue, as it needed more information, in particular as to the effects of requiring Marktplaats to collect and provide the contact data of all its advertisers.

The importance of the decision lies primarily in the court's well-reasoned refusal to assume a general duty of care for ISPs and ISP-like website operators that would require them to pre-screen or monitor website content. This implies that the burden of enforcing rights, including IP rights, remains on the rights holder. This would appear to be in line with, for instance, the fact that domain name registries are not required to pre-screen or monitor domain name applications against trademark rights (unless they concern prior right applications in a sunrise period in which applications by trademark owners have priority). As regards the provision of contact data, the court sought to balance the rights of IP owners and those of a company that, like Marktplaats, provides a valuable - and generally non-infringing - service over the Internet.

Wolter Wefers Bettink, Houthoff Buruma, Amsterdam

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