Internet Intermediaries:
Does One Definition Fit All?
Information Meeting on the Role and Responsibility of Internet
Intermediaries in the Field of Trademarks, WIPO, September 17, 2012
Prof. Cédric Manara
EDHEC Business School [LegalEDHEC Research Center]
<www.cedricmanara.com>
Definition
 “Internet intermediaries 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”
• OECD, The economic and social role of
internet intermediaries, 2010
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Who?
How?
Where?
What?
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Who?
 Internet Access Providers
• Orange, Comcast…
• Libraries / Companies / Universities / Conference centers…
 Registries / Registrars
• Verisign… / GoDaddy…
 Internet Service Providers
• Amateur platforms
─ Forums, blogs, wikis
• Commercial platforms
─ eBay  Craigslist
• Generative platforms
─ open: YouTube, SL…
─ v. proprietary: Facebook, App Store…
• Search tools
 Payment systems operators
• PayPal, Visa…
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Where?
(is the information stored)
 DNS
• [+ .tel case]
 Own infrastructure
 Third parties’ servers
• Cogent, Amazon AWS…
• Capacity to intervene on the content
• Dependence
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Where?
(is the intermediary located)
 States with an exemption regime
• EU, US…
 Countries without specific rules
• Effectiveness
─ e.g. (©) Napster  Allofmp3.ru
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What?
(do they store)
 Features
• Technical nature: always bits!
• Formats: text, image, audio, code…
─ Representation of products: eBay, Rakuten
─ Digital products or services: iTunes Store, Google Play
• Size: from one pixel to the whole web
• Content origin
─ Themselves: On-demand video / music / e-books
─ Clients: commercial, amateur, hybrid
─ (or both)
• Monitoring ability / TM filters
• Difference in the liability regime  TM
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Digital content / Physical products
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[Paris Court of First Instance,
Google Books, Dec. 18, 2009]
 “no commercial use of the signs considered here
is being carried out by the service in question
since their only purpose is to inform the user of
the identity of the publisher of the work
mentioned in the results of his search,
designating a publishing activity, whether of
books or magazines, of borrowing books or a
cultural activity”
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What?
(business categories)
 B2B, B2C, C2C, B2B2C platforms
 Revenues
• Free (advertising revenues)
• Fixed prices / Auction
• Multiple actors  personal liability
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What?
(else)
 Search tools
 Advertising intermediaries
 Social media variety
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How?
(attitudes towards TM protection)
 Disparity in means
• Existence or absence of Terms of Use
• In-house team to handle trademark disputes?
 Disparity in (re)action
• Duty of care
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Diverging policies [0]
Diverging policies [1]
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Diverging policies [2]
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ToS of 10 social media
Provisions related to brand protection
Social media concerned
Clause prohibiting any conduct that may violate the rights of
others or be contrary to any existing laws or regulations
Wikipedia, YouTube, Blogger, World of
Warcraft
Clause expressly prohibiting the use of trademarks belonging
to others
Facebook, Twitter, MySpace, SkyBlog,
Second Life, LinkedIn, World of Warcraft
Wikipedia, Facebook, MySpace, Twitter,
Clause allowing the publisher of the site to remove content
Blogger, Skyblog, YouTube, LinkedIn, World
liable to infringe trademark rights
of Warcraft, Second Life
Wikipedia, Facebook, MySpace, Twitter,
Clause allowing the publisher of the site to close user
Blogger, Skyblog, YouTube, LinkedIn, World
accounts in the event of behavior infringing trademark rights
of Warcraft, Second Life
Clause through which the publisher of the site disclaims any
Facebook, MySpace, Twitter, Blogger,
responsibility for content (and makes the user wholly
Skyblog, YouTube, LinkedIn, World of
responsible)
Warcraft, Second Life
Existence of an online reporting procedure for litigious
Wikipedia, MySpace, YouTube, Blogger,
content
SkyBlog
Existence of an online reporting procedure specifically for
Facebook, Twitter, Second Life, LinkedIn
infringement of trademark rights
Clause prohibiting companies from promoting brands or using
a personal profile for commercial ends (except with the
possible authorization of the site publisher)
Facebook, MySpace, YouTube, Skyblog
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Provisions can be exorbitant
 Most of the ToS expressly forbid the use
a of a third party trademark
• or any behavior which may violate third
parties rights
 ToS often go beyond legal provisions
• e.g. (France) Price Minister  eBay
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Provisions can be vague
 “It is often difficult to tell what may or may
not be trademarked”
 “However, use of designer logos and
brand names without permission, such as
Gucci, Nike, Louis Vuiton [sic !], etc., is
usually not acceptable”
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In summary
 Internet intermediaries are extremely
diverse
 … like the internet!
 Actionability depends on
• who/when they are
• what/how they do
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