SOBRE EL PASADO NACIONAL Y LAS BALAS PERDIDAS

The main approaches employed in this thesis are doctrinal and comparative ones.44 _In essence, the doctrinal method ‘is concerned with the substantive content of the law, and

therefore with the analysis of legal materials, primarily cases and statutes, and primarily for the kinds of purposes … identification of the legal position; resolution of potential or actual questions relating to parties’ rights and liabilities; identification of gaps in the law that require reform or features that can be improved’.45

In general, relevant legislations and case law with their underlying principles and reasons will be assessed. Given that the thesis’ main focus is EU law, pan-European law will be at the core of the doctrinal approach undertaken. This means that the legal instruments provided by the EU legislators at the EU level will be the main focus. In terms of online contributory trade mark liability, there are two main Directives applicable to the issue: E - Commerce Directive 2000/31 (ECD) and Enforcement Directive 2004/48 (ED). The EU directives are binding legal instruments but need to be incorporated into the national laws of MSs to have their effect, and the choice of forms and methods on this is left to each MS.46 MSs can make amendments on these matters while implementing the directives into their national law. Having said that they are also under an obligation to take all necessary measures to achieve the result prescribed by a directive.47The CJEU’s insight on the matters dealt with directives, therefore is significant in terms of establishing harmonised law. Accordingly, it will be the major and primary source along with the above directives.

In addition, analysis of the domestic laws of the MSs is undertaken to provide a comprehensive assessment of the current position of EU law. A comparative approach is therefore adopted as domestic laws of the MSs differ from one to another unless harmonised rules are provided by the EU by means of binding legal instruments. The comparative approach is ‘the study of the legal systems or legal concepts of different

countries (or groups of countries) on a systematic basis’.48 Nevertheless, only two MSs are chosen for this analysis due to the word limit of the work. Those are the UK and

44 _{Simon Halliday (ed) An Introduction to the Study of Law (W. Green 2012).} 45 _{Ibid, 5-6. (Brackets omitted).}

46 _{Art. 249 (3) of the Treaty on the Functioning of the European Union 2012/C 326/01 (TFEU).}

47 _{Case C- 129/96 Inter-Environnement Wallonie ASBL v Région Wallonne [1997] ECR I-07411, para 40.} It is also established by the CJEU that direct effect of a directive can be invoked under some circumstances ie when its provisions are unconditional and sufficiently clear. Case C-41/74 Yvonne van Duyn v Home

Office [1974] ECR I-01337. Case C-26/ 62 NV Algemene Transport- en Expeditie Onderneming van Gend & Loos v Netherlands Inland Revenue Administration [1963] ECR 0.

Germany. It should be noted that only English law is to be considered under UK law.49 The reason behind this selection is that they represent two different major legal traditions, ie England is a common law country while Germany is civil law, and they have a strong influence on the laws of the other MSs. As such, the UK’s Electronic Commerce (EC

Directive) Regulations 2002 (the 2002 Regulations)50 and Germany’s Telemedia Act, Telemediangesetz (TMG)51 are examined as they are the transposition of the ECD into their national laws. Moreover, these countries’ tort law rules governing the issue are also assessed since the assessment of online contributory trade mark liability is left to the national courts of the MSs and their tort law rules. Thus, the joint tortfeasance liability of English law and the general tort law principles provided in the German Civil Code, Bürgerliches Gesetzbuch (BGB) are other legal instruments considered. Therefore, the analysis of their case laws with respect to the application of tort law rules and the implementation of the principles of the ECD will be the main approach in order to fulfil the aim of the thesis. This comparative approach will assist to mark out the general framework of how online contributory trade mark liability is established and applied within the EU at national level.

The comparative approach will also involve comparative analysis of other rights, ie copyright, privacy and the right to be forgotten, and fundamental rights in general. In that respect, specifically provided EU legal instruments considering these rights are discussed where they are relevant. Briefly, those instruments are InfoSoc Directive 2001/29 for copyright and General Data Protection Regulation (GDPR) for the data protection. With respect to fundamental rights, a comparative analysis is also undertaken and the matter is examined by the European Courts of Human Rights (ECtHR) through the lenses of the European Convention on Human Rights (ECHR)52 as well as by the CJEU under the Charter of Fundamental Rights of the European Union (the Charter)53.

The same comparative approach is also adopted for the purposes of transnational comparisons. More precisely, the applications of US law regarding online contributory

49 _{It is because English law is a common law while the Scottish law is a representative of mixed jurisdiction} ie common and civil law.

50 _{2002, No.2013. Available at <http://www.legislation.gov.uk/uksi/2002/2013/made>.}

51 _{Telemediengesetz [TMG] Feb. 26, 2007, BUNDESGESETZBLATT, Teil I [BGB I] at 179 (Ger),} available at < http://www.gesetze-im-internet.de/tmg/ >

52 _{Council of Europe, European Convention for the Protection of Human Rights and Fundamental} Freedoms, as amended by Protocols Nos. 11 and 14, 4 November 1950.

trade mark liability are mentioned in the thesis for the sake of comparison with EU law as they are representatives of two major legal regimes governing intermediaries’ liability. Finally, the chosen terminology should be mentioned. For the sake of the convenience and clarity, the term contributory liability is chosen and used throughout the thesis to describe the liability of the party who is not the direct infringer, but who facilitates or contributes to this infringement. It should be reminded that there is no internationally accepted term to define this type of liability. It is one that has been divergently established under the laws of countries. Thus, there are various terms employed within different laws covering this liability such as secondary liability, joint tortfeasance and accessory liability. Moreover, those terms do not necessarily correspond each other. Indeed, as Dinwoodie states ‘the term secondary infringement has a different (narrow) meaning in

U.K. trade mark law’.54 The term contributory liability is used in the thesis as an umbrella term for the different forms of this liability.

It should also be stated that the thesis’ scope is limited to the specific type to trade mark problem that emerges when counterfeit goods are offered for sale online. This is the case where the direct trade mark infringement is taken place unquestionably. This would follow that the new Internet-specific type of an infringement cases such as keyword selling will only be examined to provide further assistance to tackle the issues that arises online if applicable.

Furthermore, the term Internet intermediary is used interchangeably with intermediary and service provider to describe the online subjects which ‘bring together or facilitate

transactions between third parties on the Internet. They give access to, host, transmit and index content, products and services originated by third parties on the Internet or provide Internet-based services to third parties’. 55 Thus, they should be understood to cover the

activities specified in the ECD, ie Internet access providers (ISPs), mere conduit providers and hosting providers as well as the new intermediaries, ie search engines, P2P file sharing technologies, and linking providers.

54 _{He also points out ‘concept of what Mr. Justice Arnold calls accessory liability approximates to secondary} infringement in U.S. law’. Graeme Dinwoodie ‘Secondary Liability for Online Trademark Infringement: The International Landscape’ (2014) Columbia Journal of Law & the Arts 37 463-501, fn. 130.

55 _{The Economic and the Social Role of Internet Intermediaries (2010), 9, Available at} <http://www.oecd.org/internet/ieconomy/44949023.pdf >

CHAPTER 2: THE GREAT DEBATE OF INTERNET INTERMEDIARIES’