In U.S. law, the term “secondary liability” is an umbrella term encompassing a number of different types of trademark infringement claim. Its essence is that liability does not turn on the defendant itself using the plaintiff’s mark, but rather on the defendant being held responsible for the infringements occasioned by the use of the plaintiff’s mark by a third party infringer. Secondary liability claims might be strategically preferable to trade mark owners over bringing actions against the primary infringer. The advent of the Internet has only enhanced some of these strategic benefits. However, secondary liability also creates the spectre of highly intrusive regulation of the business of intermediaries operating in the online environment. In these cases, we must balance the rights of the mark owner with enabling legitimate development of innovative technologies that allow new ways of trading in goods.
The online context of many contemporary uses of marks has also, as in other areas of intellectual property law, prompted a demand for international solutions to the potential liability of online intermediaries for secondary trademark infringement. And indeed most countries have long recognised a cause of action for engaging in conduct that U.S. law would call secondary trade mark infringement. This Article assesses the international treatment of these causes of action, first by looking at international law principles conventionally understood, namely, state to state obligations regarding the content of domestic law. There is little of relevance to the secondary liability question if the international landscape is understood in those terms. Thus, the Article proceeds also to analyse commercial practices that are contributing to soft transnational law and to compare the regimes adopted by the United States and the European Union as leading examples of approaches to the secondary liability question.
The Article focuses on parallel fact patterns that have been litigated to appellate level in a number of countries. Thus, the paradigmatic cases considered are (1) claims brought against online auction sites, each essentially alleging that the auction site could have done more to stop the sale of counterfeit and other allegedly infringing items by third parties on its web site; (2) claims brought against search engines alleging that the sale of keyword advertising consisting of the trademarks of parties other than the mark owner resulted in infringement (normally, by causing actionable confusion).