It’s here! Jane Coleman on Secondary Trademark Infringement, the free (for now) online (for now) treatise has been updated for the coming year. Whereas last year’s update featured a host of new cases, this year Jane has not only added the latest reported decisions on contributory and vicarious liability for trademark infringement, she has expanded the topical reach of the treatise by adding entirely new sections.
Here’s an excerpt from the updated overview:
Since the initial release of this treatise in September 2009, courts have addressed a number of novel issues:
- Affiliate Marketing — Should online retailers be liable for their affiliates’ trademark infringement? Two courts have declined to extend contributory liability to online merchants for the infringing activities of their affiliates. The attenuated relationship between the two parties did not support a claim of either contributory or vicarious liability in 1-800 Contacts v. Lens.com and Sellify v. Amazon.
- Is the licensing of IP rights in cartoon characters used to make counterfeit jewelry a “service” or a “product”? The plaintiff in Nomination Di Antonio E Paolo Gensini S.N.C. v. H.E.R. Accessories, Ltd. argued unsuccessfully that the defendant licensors supplied a “product,” albeit an intangible one. The court disagreed, and saw the defendants as providers of a “service,” triggering a “direct control and monitoring” analysis. Indeed, the licensing of IP rights has been contemplated as a service, as for example in Fare Deals, which the court referenced. But Nomination seems distinguishable, because the right to use those characters became manifest as an integral component of the infringing product – the counterfeit jewelry depicting those characters and bearing the plaintiff’s mark – whereas in Fare Deals it did not.
- Damage Awards – Can the secondary infringer face higher damages than the direct infringer? This was the outcome in Roger Cleveland Golf Co. v. Price (sic), where the jury was afforded broad discretion in awarding statutory damages. A new section on remedies explains that the law regards contributory infringers and direct infringers as joint-tortfeasors, and how a secondary infringer may be equally responsible for damages, notwithstanding his indirect role in the underlying infringement.
More cases have been brought as contributory liability claims than as claims for vicarious infringement, though the law is certainly still evolving in this area. The key factor in determining the viability of a contributory liability claim is the defendant’s knowledge. Sometimes the knowledge requirement is readily met with direct evidence such as correspondence revealing a relationship between the direct and indirect infringers. At other times, however, plaintiffs are hard-pressed to meet the knowledge requirement under Inwood. Even where it has been met, it is often because the plaintiffs put the defendants on notice of the infringing activity, in which case the defendants may have taken remedial action, to which courts have been very sympathetic. In Tiffany v. eBay, for example, the court was satisfied that, notwithstanding the volume of complaints by Tiffany, eBay had taken “appropriate steps” through its notice-and-takedown system, the VeRO Program, to avoid liability. . .