A recent case development worth noting: The Regional Court of Düsseldorf held that an Amazon European entity is liable for design infringement and issued a preliminary injunction against an arm of the retail behemoth on the basis that the standards set by the Court of Justice of the European Union (“CJEU”) in a string of Christian Louboutin-initiated trademark cases can also be applied in the Community design law context. The German court’s August 21, 2023 decision is the latest round in a platform liability-centric lawsuit that Louboutin waged against Amazon over its sale and advertising of allegedly infringing red soled shoes on its marketplace platform.
Some Background: Louboutin previously waged separate trademark cases against Amazon in Belgium and Luxembourg in 2019 (cases C-148/21 and C-184/21), arguing that Amazon should be held directly liable for trademark infringement as a result of the presence of third-party listings for infringing goods on its platform. Amazon argued in response that it should be shielded from liability, since as the operator of an online marketplace comprised largely of third party-offered products, it does not “use” the trademarks at issue. Louboutin disagreed, asserting that traditional online marketplace principles are not applicable to Amazon due to its hybrid operator marketplace model, which sees it offer up and advertise its own products and those of third parties. Against that background, the French footwear company argued that Amazon should be considered a distributor of the goods sold on its platform and the advertisements for third-party sellers’ goods on the Amazon site should be considered part of Amazon’s own commercial communications.
Both courts had sought guidance from the CJEU on whether an online marketplace could be held directly liable for trademark infringement (under Article 9(2) of the EUTMR) for: (1) displaying advertisements for sellers that are using third-party trademarks (Louboutin’s in this case) without authorization, and (2) stocking and delivering the sellers’ infringing goods to customers. At the heart of the referrals to the CJEU was essentially the question of what “use” as a trademark looks like for infringement purposes when it comes to online marketplace platforms.
In a decision in December 2022, the CJEU held that a marketplace operator like Amazon can be found directly liable for trademark infringement if a reasonable consumer could establish a link between the trademark at issue and the services of the online marketplace. Put another way, a marketplace operator can be considered to be using a trademark by way of advertisements, if those ads are likely to cause a reasonable consumer to believe that the marketplace operator is marketing the trademark-bearing goods on its own behalf rather than for the third-party.
In the combined cases, the CJEU noted that Amazon consistently presented advertisements for the allegedly infringing shoes on its e-commerce site using its own logo, which could lead consumers to believe that the shoes were being marketed and by Amazon. Moreover, the court was persuaded by the fact that in addition to presenting its own products alongside those of third-party sellers on its site (and not distinguishing between them), Amazon provides additional services to third-party sellers – including handling customer service inquiries and facilitating customer returns – thereby, contributing to the appearance of a link between Amazon and the third-party products available on its site.
> Amazon v. Coty: This was not the first time that the CJEU determined whether online marketplaces can be directly liable for trademark infringements of third parties using their marketplaces. In the Amazon v. Coty case, the CJEU held in April 2020 that Amazon could not be liable for the infringement of Coty’s Davidoff trademark, which was being used in connection with the unauthorized sale – and shipment – of perfumes by a third-party seller via the Amazon marketplace. The court sided with Amazon in a decision that largely centered on the fact that the infringing perfume products were shipped directly by the seller and not by Amazon.
Design Law & Platform Liability
“Taking into account the principles established by the CJEU [in the previously-decided Louboutin cases],” the Regional Court of Düsseldorf determined last month that it is “clear” in the case at hand (No. 14c O 67/23) that Amazon used the design at issue – Louboutin’s red soled shoes – “within the meaning of Article 19(1).” (That provision states that “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it.”)
Addressing the potential for platform liability for “illegal third-party content in trademark and design law,” the court stated that “the possibility developed by the CJEU of being directly liable for an infringement if the relevant public attributes the use of the trademark to the platform operator can also be transferred to [the] design law [context]. Because here, too, it can be argued that those who generate themselves like the user must also be [held] responsible.”
The Bigger Picture: LÖFFEL ABRAR Rechtsanwälte PartG mbB partner Oliver Löffel says that is that the Düsseldorf regional court’s decision is very likely the first that applies/extends the CJEU Louboutin standards beyond the trademark context to design law. But more than that, the decision seems as though it may be an indication that courts are willing to use the CJEU’s determination in the Louboutin cases broadly, an outcome that brands’ counsels have been hoping for, particularly in the wake of what has been viewed as a particularly disappointing outcome for brands in Amazon v. Coty.