EBay

Ebay is a platform for the resale of goods, second hand and new. As such, it is prone to claims that vendors are selling copyright, patent and trade mark infringing goods.

In Europe, the protections for platforms like eBay are less clear than the USA. The E-Commerce Directive has a particularly unclear provision for takedowns of allegedly infringing material of any kind.

VeRO programme

The EBay's VeRO (Verified Rights Online) programme allows the owners of intellectual property rights and their authorized representatives to report listings that may infringe on those rights on Ebay's platform.

Under the programme's criteria, eBay will remove listings which include:

• Unauthorized use of your content or photo in a listing description
• Items that infringe on your intellectual property
• Counterfeit or replica items

eBay permits the rightsholders to report listings rightsholders consider infringing their intellectual property, trademark or patent by submitting a Noticed of Claimed Infringement (pdf) (NOCI).

eBay do not require a proof or a court order to remove such listings, they operate the programme on

"a good faith belief that use of the material in the manner complained of above is not authorized by the Intellectual Property Owner, its agent, or the law".

The list of companies participating in the VeRO programme can be found here.

L'Oreal trademark claims

In 2009, L'Oreal brought a case against eBay in the UK regarding their liability for selling counterfeit L'Oreal products on their platform.

The UK court was to assess:

• Whether eBay was liable as a joint tortfeasor with individual sellers on eBay;
• Whether eBay was liable for trade mark infringement by virtue of its purchase of advertising words consisting of L’Oréal trade marks, which appeared in sponsored links leading to infringing products;
• Whether eBay had a “hosting” defence under the E-Commerce Directive (2000/31/EC). In essence, this defence protects internet service providers (ISPs) which act as mere hosts of information, provided that they have no actual knowledge of any illegal activity and that, on obtaining such knowledge, they act promptly to block access to the information in question (Article 14);
• Whether an injunction could be granted against eBay under the Intellectual Property (IP) Rights Enforcement Directive (2004/48/EC) (the Enforcement Directive) (Article 11);
• Whether L’Oréal could object to dealings in certain L’Oréal products, such as testers and unboxed products, supplied to the market for promotional purposes.

Justice Arnold in his judgment said that eBay was not jointly liable for the infringements of individual sellers posting on their website.

The case was later referred to the European Court of Justice (CJEU). The CJEU held that eBay could be injuncted as an intermediary and also in relation to past and futre infringements.

"The ECJ found that for an ISP to be denied entitlement to the Article 14 defence, it is sufficient for it to have been aware of circumstances on the basis of which a diligent economic operator should have identified the unlawful activity in question, and acted in accordance with Article 14(1)(b) (expeditious removal of such information from the site)."

Epson patent claims

Epson have used the VeRO process to remove compatible ink cartridge products on the basis of a patent claim.

Epson was granted a patent for their ink cartridges on 15 July 2008 which relates to a printing material container containing a printing material and a board mounted on the printing material container. The patent also covers an arrangement of alignment points on the container.

The objective of the patents is to provide one or more short circuit detection terminals/contact portions which can be used by the printer to detect short circuits between these terminals/contact portions and the higher voltage terminals. The system prevents damage to cartridges.

Epson believes that third party/compatible cartridges infringe this patent if they are to provide cartridges which would work with their printers. The cartridges only work when their terminal arrangements correspond with the printer's terminal arrangements.

Epson conducted a seemingly random analysis of compatible cartridges sold on eBay and assessed that they infringe their patent. Following the assessment, they compelled eBay to remove corresponding listings.