ORG has sent this letter to the Intellectual Property office following reports of takedowns of Epson-compatible ink cartridges asking for guidance on eBay's duties in case of an alleged patent infringement.
Thank you for the conversation earlier this week.We have reflected on it and we still have several concerns.
We want to bring your attention to Section 19 of the Electronic Commerce (EC Directive) Regulations 2002, which say that a platform (Internet Society Service) is not liable if it:
“is not aware of facts or circumstances from which it would have been apparent to the service provider that the activity or information was unlawful”
The question of what kinds of knowledge make it clear to a platform that an activity is unlawful may vary. For the IPO, we believe it would be helpful to provide advice on how copyright, Trade Mark and patent claims should be responded to.
For instance, many copyright claims may appear obvious, although some will not. If a platform receives counter claims, perhaps this should be taken into consideration, as they are under the US DMCA. Trade marks have some case law as a result of the L’Oreal judgment at the CJEU. For patents, the position seems far less clear. Judging whether a patent claim is valid is very difficult for most non-specialists.
In the current example of Epson compatible cartridges, we believe the regulations mean that eBay believe they are protected unless eBay is aware of facts or circumstances which make it apparent to them that the sale of these ink cartridges is unlawful as the result of receiving a notification from Epson that they believe they have a patent that is being infringed.
Our query to you is therefore whether a mere notice of potential or claimed patent infringement makes a platform liable, and whether you could provide detailed advice about the responses and use of the E-Commerce Regulations in relation to patents, trade marks and copyright. We believe it would be very helpful for industry as a whole, eBay in particular, and also could identify areas for potential reform at UK or EU level in the future.
We look forward to hearing from you.