If you want to pay by credit card
REPUBLIC OF TÜRKİYE
COURT OF CASSATION
11TH CIVIL CHAMBER
Merits No: 2016/1613
Decision No: 2017/6599
Date of Decision: 27.11.2017
CLAIM FOR THE PREVENTION OF TRADEMARK INFRINGEMENT (Claim for a Decision Identifying the Content Provider of the Subject Website – Considering that the Plaintiff Sent a Notice to the Defendants for the Removal of the Disputed Content, an Injunction Decision Was Issued and Executed in This Respect, and the Defendants Defended the Dismissal of This Lawsuit Filed Against Them, the Conditions for Filing a Lawsuit Were Met, and the Merits of the Dispute Shall Be Examined)
CLAIM FOR A DECISION IDENTIFYING THE CONTENT PROVIDER OF THE WEBSITE (The Non-Party Content Provider Being the Primary Perpetrator, a Direct Lawsuit May Be Filed Against Them Without the Obligation to Send Any Notice – Pursuant to the Principles of Joint and Several Liability, the Injured Party May File a Lawsuit Against All Harm-Causing Parties Together or Exercises the Option to Sue Only a Portion of the Jointly Liable Parties)
LIABILITY OF SERVICE PROVIDERS (The Non-Party Content Provider Being the Primary Perpetrator, a Direct Lawsuit May Be Filed Against Them Without the Obligation to Send Any Notice – Pursuant to the Principles of Joint and Several Liability, the Injured Party May File a Lawsuit Against All Harm-Causing Parties Together or May Also Sue Only a Portion of the Jointly Liable Parties)
Turkish Code of Obligations (Law No. 6098) Art. 61
Law No. 5651 Arts. 1, 4, 5
SUMMARY: The plaintiff claimed that because the content provider could not be reached, service providers are liable pursuant to the law, requesting the acceptance of the lawsuit against both defendants, the blocking of access to the relevant website, the prevention of trademark infringement, and the identification of the content provider of the relevant site. The Court dismissed the lawsuit on the grounds that the condition to file a lawsuit against the defendants, who are service providers, was not met without first pursuing a warning or lawsuit against the primary perpetrator content provider.
However, as also accepted by the Court, the non-party content provider is the primary perpetrator, and a direct lawsuit can be filed against them without the necessity of sending any notice (notice and takedown). On the other hand, pursuant to the principles of joint and several liability, the injured party may file a lawsuit against all harm-causing parties together or possesses the optional right to sue only a portion of the jointly liable parties. In this respect, provided that appropriate conditions are met (service of notice), it is possible to file this lawsuit against the defendants without suing the primary perpetrator.
Considering that a notice was sent by the plaintiff to the defendants for the removal of the disputed content, an injunction decision was rendered and executed in this regard, and the defendants defended the dismissal of this lawsuit filed against them, the Court ought to have examined the merits of the dispute considering that the condition for filing a lawsuit had materialized, rendering a judgment based on the outcome.
Upon the request of the plaintiff's counsel for an appellate examination of the decision dated 26/05/2015, Merits No. 2013/256, Decision No. 2015/146 rendered by the Ankara 3rd Intellectual and Industrial Property Rights Civil Court in the lawsuit heard between the parties, and upon understanding that the appeal petition was submitted within due time, after listening to the report prepared by Reporting Judge ... for the case file, and after reading and examining the petition, pleadings, hearing minutes, and all documents in the file, the necessity was deliberated:
The plaintiff's counsel stated that the client company owns numerous registered trademarks containing the phrases "..." and "..." before the Turkish Patent Institute (TPE); that it promotes its products and services through its official website named ...; that on the website with the domain name "...-..." whose owner could not be identified, the plaintiff's trademarks were used unauthorizedly and misleadingly under the explanation of providing subscription procedure services, thereby violating trademark rights; that an email titled "content removal request" was sent on 09.09.2013 to five email addresses belonging to ... Ltd., which provides services to the infringing website via the address ...-adsl-...; that the other defendant, ... Co., provided hosting services to the subject website; but that the defendants have taken no action to date in line with their requests; that an evidentiary determination was conducted before the Ankara 2nd IP Court; and claiming that because the content provider could not be reached, service providers are liable under the law, requested the acceptance of the lawsuit against both defendants, the blocking of access to the relevant website, the prevention of trademark infringement, and a decision identifying the content provider of the relevant site.
The counsel for the defendant companies defended that the client companies have separate legal personalities; that in the concrete case they function as service providers; that they are not liable for the infringing content; and that content cannot be blocked by a service provider without applying the method specified in Law No. 5651 and without a court decision determining the unlawfulness regarding a website, requesting the dismissal of the lawsuit.
Based on the claim, defense, expert report, and the entire scope of the file, the Court decided to dismiss the lawsuit on the grounds that the plaintiff directed the request for content removal directly to the defendants in the position of service providers via an email titled "content removal request" on 09.09.2013 without sending a warning to the content provider; that the defendants who executed the injunction request before the lawsuit exercised due diligence; that although the name and address of the content provider were determined by the court, directing standing directly to the defendants in the service provider position while the plaintiff had the opportunity to file a lawsuit against the content owner in a lawsuit with prevention and cessation claims lacked legal basis; that directing the request for removal of infringing content primarily to the content owner and circumventing the condition of notifying the service provider thereafter would result in directing every lawsuit with prevention and cessation claims to the service provider; that this situation is far from being a tolerable obligation for service providers and poses a public risk in terms of establishing freedom of communication on the internet; and that the conditions for directing standing to the defendants had not materialized.
The plaintiff's counsel appealed the decision.
In the concrete dispute, it is also accepted by the Court that the non-party natural person named ... is the primary perpetrator in the first degree as the content provider causing the trademark infringement; that the defendants are persons mediating the infringing act within the scope of "jointly causing damage" pursuant to Article 61 of the Turkish Code of Obligations No. 6098 as website hosting and service providers; and that for the defendants to be held liable for the content of the persons they serve, they must be notified of the infringement and the content.
However, the Court dismissed the lawsuit on the grounds that a lawsuit for prevention and cessation should be filed upon the service provider's failure to block access to content after being notified by sending a warning to the service provider only if no result is obtained despite a warning being made to the content provider first; and that in the sub judice case, a lawsuit was filed without pursuing this path against the person providing the infringing content (primary perpetrator).
However, as explained in Assembly of Civil Chambers (HGK) decision dated 15.01.2014, No. 1138/16, because an act of trademark infringement is essentially a tort, awarding damages due to a tort is conditional upon the infringer acting faultily, whereas the existence of fault is not required for the cessation, prevention, and elimination of the consequences of the infringement.
On the other hand, for those who participate in, assist, encourage, or facilitate the performance of infringing acts to be held liable, it is required that they knew or were in a position to know that the primary infringer's act constituted an infringement. Therefore, because it cannot be accepted that the defendants knew or were in a position to know the infringements committed by third parties on the website they operate, the condition of fault must also materialize for the defendants, who are secondary perpetrators (fer'i fail), to be held liable pursuant to Article 61 of the TCO No. 6098 regarding requests for the cessation, prevention, and elimination of consequences of the infringement. Consequently, the defendants must be notified in advance, and despite this, the infringing content must not have been removed by the defendant party from the website served without a justified and legal reason.
As stated above, the Court dismissed the lawsuit on the grounds that the condition for filing a lawsuit against the defendants, who are service providers, did not materialize without first pursuing a warning or lawsuit against the primary perpetrator content provider. However, as also accepted by the Court, the non-party content provider is the primary perpetrator, and a direct lawsuit can be filed against them without the necessity of sending any notice (notice and takedown). On the other hand, pursuant to the principles of joint and several liability, the injured party may file a lawsuit against all harm-causing parties together or possesses the optional right to sue only a portion of the jointly liable parties. In this respect, provided that appropriate conditions are met (service of notice), it is possible to file this lawsuit against the defendants without suing the primary perpetrator.
Considering that a notice was sent by the plaintiff to the defendants for the removal of the disputed content, an injunction decision was rendered and executed in this regard, and the defendants defended the dismissal of this lawsuit filed against them, the Court ought to have examined the merits of the dispute considering that the condition for filing a lawsuit had materialized, rendering a judgment based on the outcome. Dismissing the lawsuit on the grounds that the conditions for directing standing to the defendants had not materialized was not deemed correct, necessitating the reversal of the decision.
For the reasons explained above, it was decided unanimously on 27.11.2017 that the appeal objections of the plaintiff's counsel be ACCEPTED, that the judgment be REVERSED in favor of the plaintiff, and that the advance appeal fee paid be refunded to the appellant upon request.
Share This|
|
