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Secondary trademark infringement: The whole of the law

Originally posted 2009-09-07 15:00:09. Republished by Blog Post Promoter

Secondary Trademark Infringement — the website:

This website is dedicated to an examination of the law of secondary liability for trademark infringement – the idea that someone other than a direct infringer can be liable for infringing another’s trademark.  Secondary liability for trademark infringement is a relatively recent development in the law, and it has evolved entirely in the courts. . . .

Of all the contexts in which secondary liability has been raised, whether contributory or vicarious, the Internet has by far generated the most interest and attention. The advent of Internet commerce has created new problems for the law to address. On the Internet, buying and selling take place among a seemingly infinite number of parties at lightning speed, making it difficult both to police and remediate infringement.  These issues came to light in Tiffany v. eBay, where the court observed that “more than six million new listings are posted on eBay daily, and at any given time, some 100 million listings appear on the website.”

That’s from the overview of Jane Coleman‘s new short treatise on vicarious infringement and contributory infringement of trademarks — those are the two different types of secondary liability, you know — which is the first work to analyze and digest thoroughly the entire law on this developing subject.

And talk about thorough!  Be sure and read it through and through so you’ll be ready to comment incisively when the Second Circuit does its work on Tiffany v. eBay (oral argument was in mid July, by the way).  You’ll be the hit of the party.

Tiffany’s escalates it

Originally posted 2014-10-26 19:37:35. Republished by Blog Post Promoter

A peeler

A peeler

Tiffany’s is, not surprisingly, appealing the decision dismissing its claims against eBay.


Petroliam Nasional Berhard to SCOTUS: Gimme shelter

Originally posted 2014-04-24 11:15:02. Republished by Blog Post Promoter

Did the 9th Circuit miss a spot?

In December 2013 I wrote, mostly cribbing from Jane Coleman‘s commentary, about the very dubious Ninth Circuit decision in Petroliam Nasional Berhad v. (9th Cir. Dec. 4, 2013) that declared the existential impossibility of a claim for contributory liability based on the Anticybersquatting Consumer Protection Act (ACPA).  The bottom line, I wrote then, was that “Unfortunately the Ninth Circuit went beyond dictum here, it seems, affirmatively deciding a question it didn’t have to and doing so with unfortunately overbroad language that’s likely to cause a lot of litigation confusion.”

Reasonably enough, then, given the view of the matter around my house, Petroliam Nasional Berhad has filed a Petition for Certiorari to the Supreme Court.  The question presented:

Do the normal rules for contributory trademark infringement set forth in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) apply to trademark infringement by “cybersquatting” under Section 43(d) of the Lanham Trademark Act?

That’s a nice way to present it, I think.  The summary of argument:

In rare cases, a federal court decides an important federal question in a way that conflicts with relevant decisions of this Court. This is such a case, as the court below held that there is no contributory liability for trademark infringement committed in violation of Section 43(d) of the Lanham Act. This approach conflicts with  longstanding contributory liability principles that have guided this Court and other federal courts for more than 30 years. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) (holding that there is a cause of action for contributory trademark infringement under the Lanham Act.). And it contradicts this Court’s well established precedent that “when Congress creates a tort action, it legislates against the legal background of ordinary tort related vicarious liability rules and consequently intends its legislation to incorporate those rules.” Meyer v. Holley, 537 U.S. 280,285 (2003).

And, if you will, the meat of it:

The Ninth Circuit’s opinion thus misapprehends Section 32(D)(iii) – quoted above – which only exempts from liability the registration or maintenance of a domain name by a registrar “absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.” More importantly, it contradicts the plain language of the statute which shows that Congress did intend for there to be contributory liability for cybersquatting in violation of Section 43(d), albeit subject to the narrow exception in Section 32(D)(iii). And the legislative history of Section 32(D)(iii) confirms what the statute’s plain language makes clear, namely, that Congress was codifying an existing limitation on secondary liability for cybersquatting. See 1999 WL 594571 (Leg.Hist.), S. Rep. 106 140, at 11 (Section 32(D)(iii)’s intended effect was “codifying current case law limiting the secondary liability of domain name registrars and registries for the act of registration of a domain name.”). Neither the language of the statute nor the legislative history supports the Ninth Circuit’s conclusion that Congress intended to eliminate secondary liability altogether.

Secondary Trademark Liability

It’s all in here!

The plain-language point being this:  It’s clear that there is no liability for domain registrars, secondary or otherwise, under the ACPA arising out of their simple execution of the “rote” function of domain registration.  But under the Ninth Circuit’s opinion in Petroliam Nasional Berhardnothing a registrar could do, no matter how beyond this “ministerial” registration function, could result in secondary liability for any party based on an underlying violation of the ACPA. While that wasn’t even close to the dumbest thing a circuit court said about IP law in 2013 (this is), there doesn’t seem to be any reason for the Circuit Court to have said it.  And yes, there are plenty of good reasons for it not to have said that.  Jane explains it all, if you don’t follow.

Still, it’s hard to see how the petitioner gets the Supremes’ attention on this, because the outcome appears to have been right.  As far as I can tell, there isn’t a very good factual hook to justify reversal, and the Court of Courts isn’t in the business of tidying up messes like the one the 9th made here.  (Whose business, exactly, it is to do that is not entirely clear.)

Bully, all the same, and best of luck to Perry Clark, counsel for petitioner, who has ample experience to appreciate the uphillness of his battle.

Secondary liability; primary shelf

Originally posted 2014-04-28 11:43:05. Republished by Blog Post Promoter

John Welch of the TTABlog

Ver veist besser fun John?

John Welch recommends Secondary Trademark Infringement, the recent Bloomberg BNA treatise,  via his TTABlog®:

Jane Coleman’s online treatise has now evolved into a book published by Bloomberg BNA, and co-authored by Ms. Coleman and Griffith B. Price, Jr., entitled Secondary Trademark Infringement. [Read more and purchase it here]. . . .

Coleman and Price cover it all, from the development and evolution of the doctrine to its application to flea markets, landlords, franchisors and franchisees, credit card companies, and the Internet. The book is dividend into five Parts: I. Introduction; II. Contributory Trademark Infringement; III. The Expansion of the Inwood Labs Standard to the Service-Provider Context; IV. Vicarious Trademark Infringement; and V. Remedies. A list of the chapter headings reflects the comprehensive scope of the work.

The King of Bling

The King of Bling

  1. The Problem of Secondary Trademark Infringement
  2. Contributory Liability Doctrine
  3. The Elements of Contributory Liability Under Inwood Labs
  4. Contributory Liability for Other Forms of Trademark Infringement
  5. The Relationship between Secondary Trademark and Secondary Copyright Infringement Claims
  6. Introduction: Contributory Trademark Infringement in the Service-Provider Context
  7. Landlords
  8. Franchisors and Franchisees
  9. Trademark Infringement on the Internet
  10. Credit Card Companies and Related Services
  11. Vicarious Trademark Infringement
  12. Remedies

This well-researched and well-written treatise — the only treatise focusing on secondary trademark infringement — deserves a place on your trademark library shelf.

Now, unlike John most of us don’t have a trademark library, but you can trust me to trust him on this, despite my obvious shelf interest.

Indirect Liability and Grokster

Originally posted 2012-10-29 11:41:37. Republished by Blog Post Promoter

This post on the Marginal Revolution blog (where this blog once advertised) links to (or tries to link to) an amicus brief filed by… a bunch of guys — namely Kenneth J. Arrow, Ian Ayres, Gary Becker, William M. Landes, Steven Levitt, Douglas Lichtman, Kevin Murphy, Randal Picker, Andrew Rosenfield, and Steven Shavell. Their self-described interest as amici?

Amici are professors and scholars who teach and write on economic issues and, in particular, on the economics of innovation, the economics of intellectual property, and the economics of both deterrence and enforcement. . . . Amici file solely as individuals and not on behalf of the institutions with which they are affiliated. Amici represent neither party in this action, and write solely to offer an economic perspective on the important social issues at stake in this dispute.

Nice work if you can get it. All but two of them are University of Chicago (i.e., “law and economics”) professors; the other two are Ian Ayres of Yale (formerly a Northwestern prof, which is why his name jumped out at me) and the other is from Stanford Law.

So what do they say? Their focus in the brief is on the usefulness of the doctrine of indirect or secondary liability in intellectual property. That’s a topic of great interest to us around here, but we have always focused on trademark, where the issues can be quite different. But regarding copyright, here is the conception of the problem by these learned men (yes, all men), per their own brief:

In this dispute, the Court is being asked to clarify the conditions under which those conventional remedies should be supplemented by an additional cause of action: liability that would hold responsible a firm whose product or service facilitates copyright infringement. The argument in favor of this sort of “indirect” liability is that in certain circumstances it will be the only practical way to maintain the efficacy of copyright markets. That is, direct liability is so costly in certain situations that, without indirect liability, authors would in those settings no longer have a meaningful right to prevent unauthorized use of their work. The argument against indirect liability is that, because the products and services at issue here have both legal and illegal uses, any legal intervention must be cautious or else risk inadvertently interfering unreasonably with legitimate activity.

And here is their conclusion, based (Cliff’s Notes-like) on their legal argument headings and the summary at the end of the argument section: Read More…

Contributory trademark infringement liability: Give it to me short

Secondary Trademark Liability | Bloomberg BNA

Buy me!

Last week LIKELIHOOD OF CONFUSION® featured a guest post by Jane Coleman by way of the upcoming update to her book, Secondary Trademark Infringement.  It addressed the question of how the doctrine of contributory liability’s asserted distinction between service providers and product suppliers deals with trademark licenses.

You can just imagine what a wacky summer it’s been at the Coleman place with an issue like that to banter about!

Good enough. But no less exciting — I’d argue, frankly, that it’s more exciting! — is that at the website of the same name, which formerly offered, online and for free, the core of what became the Bloomberg BNA treatise, and then cruelly withdrew all that learning from the free-o-sphere when the book stuff got serious, there is now some consolation for the educated public:  A new overview of contributory liability in trademark, which, of course, is where most of the secondary liability action is anyway.

Thus you will want to bookmark “A Short History of Contributory Liability Doctrine.”

That’s not to say you shouldn’t still buy the book.  If you don’t, frankly, the joke’s on you.

But, in a pinch, that link will probably do the trick.

How the 9th Circuit drove secondary cybersquatting liability off the cliff

The fallout continues

In December 2013 I wrote about and linked to the devastating critique by the diva of secondary trademark liability, Jane Coleman, of the Ninth Circuit’s decision reading contributory liability for cybersquatting out of the law in Petroliam Nasional Berhad v.,  737 F.3d 546 (2013).

But wait.  There’s more.  Now that she has sent her annual update of Secondary Trademark Infringement to Bloomberg BNA, she’s gunning for (more) bear in a new post at her blog called “How the 9th Circuit Veered Off Course in Petroliam Nasional Berhad (Petronas) v.  The Misapplication of Central Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A.

Oh yes:

We’ve had a lot to say — and with good reason — about Petroliam Nasional Berhad (Petronas) v., Inc., the Ninth Circuit decision that held there is no cause of action for contributory cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA), which was passed as an amendment to the Lanham Act in 1999. This ruling was no mere “development”; it was a great upheaval in the law. The court’s analysis is at odds with the plain meaning of the statute, its legislative history, and the contributory liability case law construing it. We first reported the decision as a blog post here. A lengthier analysis appeared in the Winter 2014 issue of Bloomberg BNA’s Books Monitor. And the case gets the million-dollar treatment in the upcoming 2014 Supplement to Secondary Trademark Infringement. Each time we looked at the opinion, it became harder to understand it.

Secondary Trademark Liability treatiseIn addition to the issues we’ve already addressed is the less obvious but equally problematic dependence by the court on Central Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A (Central Bank), which involved aiding and abetting liability under the SecuritiesExchange Act of 1934 (the “Exchange Act”).The GoDaddy court relied on that Supreme Court case to help answer an old question that had already been answered, albeit not in the cybersquatting context: Should courts apply common law principles of secondary liability to the Lanham Act?

Both the Supreme Court and subsequent circuit courts have done so for decades. . . .

Heh.  “The court’s analysis is at odds with the plain meaning of the statute, its legislative history, and the contributory liability case law construing it.”  Otherwise, no problem, huh?

The application for certiorari is pending.  Read the whole thing, as they say.

That means you, Supreme Court!



EFF backs eBay in Tiffany spat

See, we don’t agree with Public Citizen all the time!  Read on, via the Electronic Frontier Foundation (EFF):

[EFF] along with Public Citizen and Public Knowledge urged a U.S. court of appeals Wednesday to reject jewelry-maker Tiffany’s attempt to rewrite trademark law and create new barriers for online commerce and communication. . . .

“Millions of Americans use sites like eBay and craigslist to buy and sell goods,” said EFF Senior Intellectual Property Attorney Michael Kwun. “If Tiffany had its way, sites like eBay would be responsible for figuring out whether items its users are selling — items eBay itself never sees — are authentic or counterfeit. That’s an impossible task.”

It is?  Where are the metrics for “impossible”?  Can we start with nearly half a billion dollars in quarterly profits in the third quarter of this year? How do you get from that to “impossible”?

Here’s the EFF amicus brief.  Lots of talk about “burdens,” and “impossible,” but no data.  Yes, as a general rule the burden of proof is on the plaintiff in civil matters, but hasn’t Tiffany shifted that burden by coming forward with the undisputed claim that massive amounts of counterfeit merchandise is being sold on eBay?

Now take a look at the amicus brief of the International Anti-Counterfeiting Coalition (IACC), written by my friend David Bernstein and his partner Bruce Keller and counsel Michael Potenza. Read More…

Secondary Trademark Infringement: The Monograph

Now it’s out!  The book that transcends the Secondary Trademark Infringement website — itself now converted to a blog by Jane Coleman that will report on and analyze ongoing developments in this area (such as this one on the topic of the Ninth Circuit’s recent screwup on the law of contributory cybersquatting — is now available for purchase from Bloomberg / BNA.

I make no claim here to objectivity.  But I will say it anyway: this book is very, very good; and if you think you know it because you used the old online treatise, you are mistaken.

Buy one one for everyone in your family!

The text below is adapted from the Bloomberg / BNA website.

Secondary Trademark Infringement BookSecondary Trademark Infringement by Jane Coleman and Finnegan’s Griff Price is the first and only comprehensive work on the law of secondary liability for trademark infringement—an area that is quickly becoming an important topic of interest among both practicing attorneys and scholars. The treatise is ground-breaking in its analytical power. Meticulously organized and accessible, it is an ideal reference work for legal and business professionals who use, or whose stakeholders use, trademarks on the internet, who seek guidance with respect to this growing area of potential legal risk.

Secondary Trademark Infringement covers important topics, such as:

  • Infringement liability of businesses that offer internet facilities to third parties using trademarks or trademark-protected goods in commerce, including retailers, auctioneers and distributors
  • Company exposure to liability for the online activities of their hosting customers or advertisers
  • Legal issues arising from web-hosting and other Internet infrastructure or connectivity
  • Exposure reduction measures for companies and institutions that do not use or facilitate trademark use directly, but are part of a commercial chain of activity and present a tempting “deep pocket” or accessible litigation target for claims based on activities of others in the chain

Read More…

The eBay / trademark dance evolves

Years ago eBay was a problem for trademark owners, who were very exercised about what they regarded as a casual attitude toward the sales of counterfeit merchandise on its website — which was, and is, a serious problem. Speaking to IP lawyers at a recent INTA committee meeting, I had the impression that there was genuine sense that eBay has succeeded at changing the impression that it regarded this as the markholder’s problem.

But has the pendulum swung too far in the opposite direction? Ed Foster writes:

As with all of EBay’s VeRO notices, the reader was told that her only recourse if she thought the takedown was a mistake was to contact the intellectual property owner who had made the claim. So she wrote to the Nervous Tattoo “fraud” department and attempted to persuade them with the receipt, detailed pictures of the merchandise with the AAFES tags still clearly attached, and an e-mail from AAFES headquarters confirming the merchandise was authentic. But the folks at Nervous Tattoo seemed uninterested in determining whether the goods were actually counterfeit. Instead, all of her very polite queries to the Don Ed Hardy fraud staff received terse, nasty responses accusing her, AAFES, and basically anyone else selling their merchandise on EBay of being crooks.

While the reader wanted to get her auctions reinstated, her bigger concern was getting the suspension of and black marks against EBay account removed. “I have been with EBay for over eight years with thousands of all positive feedback reports — not one neutral, not one negative,” she wrote. “I have worked very hard for a long time to maintain my feedback rating. I am an honest person and I have done nothing wrong. I feel like my legs have been kicked out from underneath me.”

He reports that the user eventually found someone at the company who helped to lift the ban. It seems as if eBay has not necessarily gone too far — essentially, it still considers counterfeiting the markholder’s problem. It is sharing a little of that burden by aggressive takedowns, but leaving the markholder and the eBay seller to sort it all out.

What else can eBay do without becoming so involved in the process that it will hurt profitability or, no less important, expose it by virtue of its higher involvement to a greater likelihood of third-party liability for infringement? The answer seems obvious: Provide a bona fide contact name for the company whose goods or trademarks are at issue, and perhaps even facilitate communications between blacklisted sellers and company reps. Is that so hard? I can’t claim to know. But in light of this story, it seems like a bit of fine tuning that is worth the investment.