The role of the Internet provider is crucial in the online environment and is vital for the internet traffic. The environment it manages is full of different by nature and type copyright and trade mark infringements. The unauthorized access to original works without the permission of their right holder is practically unlimited, sometimes as a consequence of the conditions created by the Internet provider himself. “Online” trade mark infringements are even more dangerous than “conventional” infringements in the “material” world, given their distribution in the digital environment. Thus the liability of Internet providers for the infringements committed by their users emerges as one of the most controversial and debatable topics in present day legal theory and judicial enforcement not only on EU level but also globally. The case law of the European Court of Justice (here and after ECJ) being mandatory for the legislative and judicial bodies of the Member States, it undoubtedly represents an interest for legal professionals, particularly in Bulgaria.
The first part of the article deals with the competence of Member States’ national courts to hear requests for injunctions and/or claims for compensation for copyright and trade mark infringements committed on the internet. Two recent judgments of the ECJ are particularly relevant in that regard, namely eDate Advertising, C-509/09 and C-161/10, and L’Oréal, C‑324/09. The ultimate conclusion that can be drawn from these judgments is that the nature and the international character of the Internet justify a more complex and thorough approach when determining the place where the harmful event occurred, the place where damage was caused, and hence – the court where the person whose rights were infringed can seek redress.
The second part of the article examines the liability of the Internet provider for trade mark infringements committed through advertising on the Internet provider’s website. The analysis is based on two of the more significant judgments of the ECJ in that regard – Google France, C‑236/08, С-237/08 and C‑238/08, and L’Oréal, C‑324/09. The essence of the problem comes down to whether trade mark rights are infringed through the Internet provider’s use of a search engine (for instance Google) and whether this infringement gives rise to primary or secondary liability. The general conclusion is that competitors who in their advertising use words identical or similar to a registered trade mark, through the functions of a search engine, are directly liable under Article 5 §1 and §2 of the First Directive. As far the Internet provider’s liability is concerned, the problem cannot always be solved on the sole basis of the applicable law governing trade mark rights. It may be necessary, depending on the facts of the case, to carry out an assessment of the so-called “safe harbors” provided for under the e-commerce Directive. Actions against Internet providers should, by contrast, be sought under Directive 2004/48/EC. It can however be deduced from the case-law that the owner of a brand or a trade mark has strong means of defense against infringements committed by both the internet provider and direct competitors when using the internet provider’s online services.
The case-law of a number of national jurisdictions is also briefly examined in this part of the article. It is shown that national laws provide for different legal frameworks with regard to disputes concerning the Internet provider’s liability for trade mark infringements. The case-law of national courts also varies substantially. No unified standard of review can therefore be readily established. On a national level, the liability of the Internet provider is seen mostly as secondary liability, whereas subsidiary grounds for direct liability do not always find a favourable response from national courts.
The third part of the article deals with a number of problems related to hosting and linking. The ECJ approaches the answers to these problems mostly by defining the notion of “hosting”, its relation with the respective internet provider and whether the latter is exempt from liability under Article 14 of the e-commerce Directive. Eventhough the relevant judgments of the ECJ concern trade mark infringements, they obviously apply to all sorts of intellectual property infringements. Particularly relevant in this regard are cases L’Oréal SA, C-324/09, and Google France, C-236/08, C-237/08 and C-238/08. The conclusion that can be drawn from the case-law from is that it is the responsibility of national courts to verify whether the prerequisites of article 14 of the e-commerce Directive are met, because they are in a better position to establish the facts and the relevant circumstances of the case. This problem should be resolved in accordance with the domestic laws of the Member State, as far as they don’t contradict EU law. The national court should verify whether the Internet provider provides a hosting service. This would be the case where the latter has a passive role in the transfer of information. However, even in that case the Internet provider could be held liable, if he has been in some way aware (including on his own motion) of the infringements that have been committed, but has failed to act fast enough by withdrawing or blocking the access to the relevant information. A number of judgments of national courts in several Member States and third countries are also discussed in this part of the article.
The fourth part of the article addresses the problem of “permanent filtering”, which has been in the center of two widely discussed recent judgments of the ECJ – Scarlet,C‑70/10, and Netlog NV,C‑360/10. The ECJ reached the conclusion that Directives 2000/31/ЕО, 2001/29/ЕО, 2004/48/EО, 95/46/EО and 2002/58/ЕО, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding an injunction made against an internet service provider which requires it to install a system for filtering all electronic communications passing via its services, in particular those involving the use of peer-to-peer software, applicable indiscriminately to all its customers as a preventive measure exclusively at its expense for an unlimited period, and which is capable of identifying on that provider’s network the movement of electronic files containing a musical, cinematographic or audio-visual work in respect of which the applicant claims to hold intellectual-property rights, with a view to blocking the transfer of files the sharing of which infringes copyright. Finally, the article examines several judgments of Dutch, Belgian and UK courts, whose subject matter concerned measures against an Internet provider other than filtering.
Instead of a conclusion, the article summarizes the lessons learnt from the case-law of the ECJ, while putting forward a number of suggestions which may be deemed useful for the Bulgarian judiciary as an indicator for the future development of the case-law regarding the liability of an Internet provider for infringements of intellectual property rights.
 Judge at the District Court of Dimitrovgrad, lecturer of IP law at the National Institute of Justice since 2010.