Negligent Omissions As a Basis for Holding Internet Intermediaries Liable for Infringements of Trade Mark Rights: Approaches Under the English Common Law

(2017) 1 Intellectual Property Quarterly 52

Posted: 10 Oct 2017

See all articles by Alpana Roy

Alpana Roy

University of Waikato

Althaf Marsoof

Nanyang Business School, Nanyang Technological University

Date Written: 2017

Abstract

Trade mark rights committed by third-party users of the internet, on the basis of English common law principles applicable to cases involving negligent omissions. First, the article argues that loss suffered by a trade mark owner as a result of trade mark infringement is distinguishable from pure economic loss. Making this distinction is crucial, in view of the general reluctance on the part of the English courts to award damages in actions alleging negligence giving rise to pure economic loss. Secondly, the article considers the relevance of English common law principles applicable in cases of negligent omissions to three hypothetical, yet realistic, scenarios that are set out in the article—the first concerning intermediaries that provide access to the internet (i.e. ISPs), the second concerning intermediaries that link content (i.e. search engines) and the third concerning intermediaries that store content at the request of third-party internet users (i.e. hosts). This analysis is carried out in light of the three stage test set out by the House of Lords in Caparo v Dickman that considers three factors—i.e. foreseeability, proximity and policy—before it could be determined that a duty of care should be imposed in any given situation. Accordingly, the article concludes that the first and second limbs of the test will be easily met where online hosts, although not ISPs and search engines, are subject to a duty of care in circumstances where they have been specifically made aware of content residing on their platforms giving rise to trade mark infringements—the failure or omission on their part to remove the infringing content giving rise to a breach of this duty. However, satisfying the third limb of the Caparo v Dickman test, under which policy is considered, could be somewhat difficult. This is because, the imposition of a duty of care, as envisaged in this article, on online hosts would inevitably lead to the practice of notice and takedown, a practice that has been widely criticised as being susceptible to abuse, unless proper safeguards are put in place. The lack of proper safeguards under the laws currently applicable in England, therefore, may be regarded as a sound policy argument against the imposition of a duty of care on online hosts even in the limited circumstances set out in this article.

Suggested Citation

Roy, Alpana and Marsoof, Althaf, Negligent Omissions As a Basis for Holding Internet Intermediaries Liable for Infringements of Trade Mark Rights: Approaches Under the English Common Law (2017). (2017) 1 Intellectual Property Quarterly 52, Available at SSRN: https://ssrn.com/abstract=3050449

Alpana Roy (Contact Author)

University of Waikato ( email )

Private Bag 3105
Hamilton, Waikato 3240
New Zealand
+64 (0) 7 838 4090 (Phone)

HOME PAGE: http://waikato.ac.nz

Althaf Marsoof

Nanyang Business School, Nanyang Technological University ( email )

Singapore, 639798
Singapore

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