The famous Christian Louboutin judgment primarily revolves around the topic of safe harbor protection and trademark infringement. Christian Louboutin ('Plaintiff'), the registered owner of the single-color mark for its distinctive ‘red sole,' filed a lawsuit against www.darveys.com ('Defendant'), a website marketing itself as a 'luxury brands marketplace' for alleged marketing, offering, and selling counterfeit Louboutin-branded products using the name and image of Mr. Christian Louboutin. According to Plaintiff, Defendant used Plaintiff's registered trademarks and the names 'Christian' and 'Louboutin' as ‘meta-tags' on its website, thereby diverting web traffic.
Facts of the case
In the present matter before the Hon’ble high court of Delhi, the plaintiff is a luxury shoes manufacturer by the name of Christian Louboutin,
The plaintiff claims that the name, likeness, and photographs of Mr. Louboutin were protected under the Trademarks Act of 1999
The plaintiff further claimed that his products are sold only by two of his authorized dealers located in Delhi and Mumbai.
The plaintiff claims that the defendant has copied his products and apart from selling products the defendant and the names “Christian” and “Louboutin” are also used as meta-tags. By using these meta-tags, the defendants attract traffic to their website.
According to the Plaintiff, the Defendants' website gives the impression that it is sponsored, affiliated, and authorized to sell a variety of luxury goods bearing the mark of the Plaintiffs' authentic goods. This results in an infringement of the Plaintiff's trademark rights, a violation of Mr. Christian Louboutin's personality rights, and the loss of the luxury status enjoyed by their products and brands.
Background
In the present case, it is crucial to understand the liability of the intermediaries in light of the fact that the Defendants case is pivoted on the defendant’s role as intermediaries who take orders from the customers and then the orders are fulfilled by various sellers, in this case, the defendants claimed that they are protected under Section 79 of the Information Technology Act, 2009
which stipulates safe harbor protection conferred to the intermediaries. Henceforth is a discussion in regard to the liability of the intermediaries in various jurisdictions
EU jurisdiction
Emphasis shall be laid on the case of L’Oréal v eBay International where the Court of Justice stated that if an e-commerce platform has not used any trademark for its commercial communication but has merely facilitated the third parties to display their goods for sale and therefore shall not be held liable for infringement.
Further, in the case of the Google France SARL, Google Inc. v. Louis Vuitton Malletier SA the Court of justice concluded that a service provider, who merely provides the internet reference through a keyword or a sign identical to the trademark, does not violate
US Jurisdiction
Emphasis shall be laid on the case of Tiffany Inc. v. eBay Inc. where the federal court took a different approach in juxtaposition to the Court of justice, in this case, the federal court held that the liability of a service provider like eBay could be only when it is informed of the infringement but ignores to take action.
Whether the defendant is protected under section 79 of the IT act?
Firstly, it must be understood that the protection under section 79 of the IT act is not absolute and is subject to certain conditions it may lose the exemption to which it is entitled if it violates any of the conditions mentioned under section 79.
Now Section 79 (3) states that
~The provisions of sub-section (1) shall not apply if (a) the intermediary has conspired or abetted or aided or induced, whether by threats or promise or otherwise, in the commission of the unlawful act;
Further emphasis shall be laid on the intermediary guidelines, specifically Rule 3(2)(d) which states that
The intermediary shall observe the following due diligence when discharging his duties,
(2) Such rules and regulations, terms and conditions, or user agreement shall inform the users of the computer resource not to host, display, upload, modify, publish, transmit, update, or share any information that; (d) infringes any patent, trademark, copyright or other proprietary rights
Now in this case the defendant promotes the products to its Darveys. com-registered members. Without becoming a member, it is impossible to purchase Darveys.com. In such instances, granting Section 79 exemptions would amount to legalizing the infringing activity. The seller and the individual from whom the seller purchases the goods are unknown. It is also unknown whether the product is authentic, despite Darveys.com's claim that it is. In light of the aforementioned considerations, Darveys.com cannot be considered an intermediary entitled to protection under Section 79 of the IT Act. The use of the mark, Christian Louboutin, the name, and the founder's photograph without permission from Plaintiff and without ensuring that the sold products are authentic would constitute a violation of Plaintiff's rights. Hence in light of the same safe harbor protection under section 79 shall not be conferred on the defendant in the present case.
Whether the use of the plaintiff's name and mega tags amounts to Trademark infringement of IP rights?
Before diving into the primary issue at hand we must understand it is crucial to understand the concept of the meta tags as the same is pivotal in determining the liability of the defendant in the present case Meta tags are links that incorporate keywords. If a trademark is used as a keyword and a link is provided, the website will appear whenever a user searches for the trademark in question. The trademark used as a keyword in the code is hidden from the end user or customer. In Kapil Wadhwa v. Samsung Electronics Co., Ltd., it was determined that such use, though invisible to the customer, is illegal. The Plaintiff asserts that when a web user enters the Plaintiff's mark into a search engine such as Google, the Darveys.com website appears among the search results, and an analysis of the code reveals that the Plaintiff's marks are used as meta-keyword-tags to increase the number of hits the Defendant's website receives from search engines.
Further, it shall be duly noted that in the case of luxury products, the owner of a trademark loses a vast customer base. If the products turn out to be counterfeit or substandard, the brand equity of the trademark owner is diminished. The seller does not incur any losses. Such immunity exceeds what Section 79 of the IT Act contemplates for intermediaries. Although Section 79 of the IT Act is intended to protect genuine intermediaries, it cannot be abused by extending protection to those who are neither intermediaries nor passive participants in illegal acts. In addition, if the sellers are located on foreign soil and the trademark owner has no recourse against the seller who is selling counterfeit goods on the e-commerce platform, the trademark owner cannot be left without recourse. Therefore, in the present case, the court held that the defendant did not constitute a valid intermediary, and hence the same shall not be exempted under the safe harbor protection.
Conclusion
In the present case, the Delhi High Court endeavored to clarify the responsibilities and liability of online intermediaries for trademark infringement. The judgment clarifies India’s intermediary liability regime as it relates to trademark infringement This decision is an important step in determining the liability of the intermediaries and protection under section 79 of the IT Act. This decision will protect the trademark rights of the true owner by requiring intermediary e-commerce platforms to exercise due diligence and take appropriate steps regarding the identification of genuine products to take advantage of the IT Act, 2000-provided benefit.
This decision is unquestionably a substantial advance in protecting the rights of brand owners on e-commerce platforms. The decision in the Louboutin case is particularly significant because it clarifies the circumstances under which an e-commerce marketplace can claim "safe harbor" under the IT Act. E-commerce marketplaces may now be required to reevaluate their business models as well as their role in the marketing and sale of products on their platforms, which is a significant practical implication of these cases.
댓글