Archive for the ‘Trademark Law’ Category
Contributory Trademark Infringement Issues for Sales Websites
The following is another news item sitting in my perpetual ‘time permitting’ stack, pertaining to eBay, Tiffany, trademark infringement and the obligation of websites owners to police suspected trademark infringements on their sites:
The Honorable Judge Richard J. Sullivan his decision in the action of Tiffany (NJ) Inc. et al. v. eBay, Inc., No. 1:04-CV-04607-RJS, 2008 WL 2755787 (S.D.N.Y. July 14, 2008) last month. [Decision] The Court first found that eBay’s use of the Tiffany mark to denote goods manufactured (or purportedly manufactured) by Tiffany, and its sponsorship of link purchases using such mark, constituted nominative fair use.
The Court also clarified a website owner’s obligations to police the third-party contents of its website, and its exposure to a potential claim for contributory trademark infringement if it fails to do so. Specifically, a manufacturer or distributor may be liable for contributory infringement if it intentionally induces another person or entity to infringe upon a trademark, or continues to supply its product or service to a person or entity whom it knows, or has reason to know, is engaged in trademark infringement.
With respect to eBay, the issue was whether eBay had sufficient knowledge concerning the existence of potentially infringing activities on its website. The Court found that generalized knowledge of infringement (or a ‘reasonable anticipation’) is insufficient. Instead, there must be some specific knowledge of infringement, and a failure to act in the face of such knowledge, before liability may be imposed for contributory infringement. The Court summarized the requirement as follows:
The law does not impose liability for contributory trademark infringement on eBay for its refusal to take such preemptive steps in light of eBay’s ‘reasonable anticipation’ or generalized knowledge that counterfeit goods might be sold on its website. Quite simply, the law demands more specific knowledge as to which items are infringing and which seller is listing those items before requiring eBay to take action.
The Court also found that Tiffany, as the holder of the trademark rights, had the burden of policing its trademarks in Internet commerce. Without specific knowledge, or reason to know, of an infringement – and with only a generalized knowledge or suspicion that trademark infringement might be occurring somewhere on its website – eBay had no affirmative duty to ferret out potentially infringing activity, or liability for its failure to do so.
[Note: Tiffany filed a Notice of Appeal on August 11, 2008, so we will see how the district court's ruling fares on appeal.]
