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 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
Secondary Trademark Infringement features extensive and detailed case law analysis and commentary and practice notes that discuss a wide variety of subjects of practical interest and importance to attorneys and business executives alike. These include notes on substantive and procedural issues in secondary trademark infringement litigation (from both the trademark owner’s and the accused infringer’s point of view), recovery of damages and injunctive relief and guidelines for trademark protection and enforcement as well as risk management for internet service providers and other service providers. Secondary Trademark Infringement also addresses developing areas of law in online commerce and social networking.
Robert C. Cumbow, Graham & Dunn PC:
This first monograph focusing specifically on secondary trademark infringement bids fair to become a definitive desk reference on a topic of growing importance. Notwithstanding the limitation suggested by its title, the book expansively considers secondary infringement and liability for dilution/tarnishment and cybersquatting as well, and addresses its topic in not only classic trademark disputes but also a variety of special situations, including franchising, web hosting, credit card services, and several others. Beginning with policy, doctrine, and the basic elements of a claim, the book is logically and meticulously well-organized and easy to read and use as a reference. Enhanced by an engaging and user-friendly writing style, and a straightforward approach to its subject, the book offers analysis of the applicable case law as well as practice notes. It’s an instant necessity for the desktop or bookshelf of any serious trademark practitioner.
Oliver Herzfeld, SVP and Chief Legal Officer, Beanstalk, a leading global brand licensing agency and part of the Diversified Agency Services division of Omnicom Group:
Secondary Trademark Infringement is a comprehensive and up-to-date guide to the law of secondary liability for trademark infringement. To my knowledge, it provides the only complete review and analysis of all the relevant cases, legal theories and emerging issues relating to someone other than the direct infringer being accused of infringing another’s trademark. And unlike many other treatises, it includes a full complement of excellent Practice Notes written by a seasoned IP litigator. Topics covered include (i) the elements of contributory trademark infringement, (ii) secondary trademark infringement on the Internet, (iii) a comparison of secondary trademark and secondary copyright infringement, and (iv) a review of other “subspecies” of secondary trademark infringement and their respective legal standards. For anyone seeking practical insight on how to litigate secondary liability cases, or answers to questions on the topic in general, Secondary Trademark Infringement is an essential reference work that belongs on every trademark attorney’s bookshelf. It is a well written, well organized, straightforward guide that delivers on its promise of providing a full overview and examination of this dynamic area of the law.
UPDATED: And this just in from John Welch: “This well-researched and well-written treatise — the only treatise focusing on secondary trademark infringement — deserves a place on your trademark library shelf.”