Secondary Trademark Infringement treatise updated for 2010-11
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 in a matter of moments, 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.” Tiffany v. eBay, 576 F.Supp.2d 463, 475 (S.D.N.Y. 2008), affirmed in part and remanded in part, 600 F.3d 93 (2d Cir. 2010). For application of secondary liability doctrine in a variety of specific Internet contexts, see the treatise outline.
Since the initial release of this treatise in September 2009, newsworthy developments have taken place in the following areas:
- Search Engines — Rosetta Stone v. Google. The court declined to extend contributory liability for trademark infringement to the search engine Google for supplying trademark-protected keywords to infringing websites, importing the court’s reasoning in Tiffany v. eBay.
- Credit Card Processing Services — Gucci v. Frontline Processing. The essential role played by credit card companies in online trademark infringement was recognized in Gucci v. Frontline Processing, where the court allowed contributory liability claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, and most of the infringing sales – of which the companies allegedly knew or should have known — were allegedly consummated using credit cards.
- Domain Name Registrars — Transamerica Corp. v. Moniker Online. Although domain name registrars have generally not been subject to contributory liability, in a case where the plaintiff’s allegations against the defendant domain name registrar made out a complex scheme of cybersquatting, the court allowed the contributory liability claim to proceed against it. Far from the “rote translation” involved in Lockheed, the facts alleged in Transamerica depicted a domain name registrar that acted in concert with other defendants to profit from the infringing activities of its customers.
In all, the following decisions have been integrated into the treatise text:
- Georgia Pacific v. Von Drehle (4th Cir. 2010)
- Rosetta Stone v. Google (E.D. Va. 2010)
- TracFone Wireless v. SND Cellular (S.D.Fla. 2010)
- Triple-I Corp. v. Hudson Associates (D.Kan. 2010)
- Hudson Associates v. Weidner (D.Kan. 2010)
- KMMentor v. Knowledge Mgt. Professional Society (D.Kan. 2010)
- Gucci America, Inc. v. Frontline Processing Corp. (S.D.N.Y. 2010)
- Baidu, Inc. v. Register.com, Inc. (S.D.N.Y. 2010)
- Tiffany v. eBay (2d Cir. 2010)
- Too Marker Products, Inc. v. Shinhan Art Materials, Inc. (D.Or. 2010)
- Transamerica v. Moniker Online Services (S.D.Fla. 2009)
- Guantanamera Cigar Co. v. Corporacion Habanos, S.A. (D.D.C. 2009)
- MetroPCS Wireless, Inc. v. Virgin Mobile USA, L.P. (N.D.Tex. 2009)
- Symantec Corp. v. Logical Plus, Inc. (N.D.Cal. 2009)
- Coach, Inc. v. Asia Pacific Trading Co., Inc. (C.D.Cal. 2009)
- Nomination Di Antonio E Paolo Gensini S.N.C. v. H.E.R. Accessories, Ltd. (S.D.N.Y 2009)
- L & L Wings, Inc. v. Marco-Destin, Inc. (S.D.N.Y. 2009)
- RGS Labs Int’l, Inc.v. The Sherwin-Williams Co. (S.D. Fla. 2010)
- Video Professor, Inc. v. Amazon.com, Inc. (D. Colo. 2010)
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