III. Vicarious Trademark Infringement, Secondary Trademark Infringement Comments turned off

Dish Network v. Siddiqi: Vicarious Trademark Infringement

By

A Man, A Plan, a Telemarketing Scam

Vicarious trademark infringement cases such as the recently decided Dish Network[1] are much less common than the contributory liability variety. Courts frequently reject vicarious trademark infringement claims because the plaintiffs fail to plead and prove them. The vicarious liability standard,[2] whether based on joint-tortfeasor theory or agency theory, is simply more difficult to meet[3] than the standard for contributory infringement.[4]

The essential difference between the two forms of secondary liability lies in the nature of the relationship between the defendant and the direct infringer. In a contributory liability case, courts focus on whether the defendant knew of the wrongful activities of the direct infringer.[5]  However, when they consider liability for vicarious trademark infringement, they probe further: A defendant’s “[m]ere knowledge of the primary actor’s wrongful conduct”[6] will not suffice. The plaintiff must plead and prove a business relationship[7] between the defendant and the direct infringer, whether conceptualized as a partnership, joint ownership, or agency relationship. There is no such burdensome requirement for making out a claim for contributory liability, which explains why more secondary infringement claims are advanced on that theory.

 In Dish Network, however, there was no such question. Continue reading Dish Network v. Siddiqi: Vicarious Trademark Infringement →

(e) Online Marketplace Websites Comments turned off

Third party counterfeiting as proof of knowledge?

By

QUERY:  Are sales of counterfeit products other than those of the plaintiff valid proof of a defendant’s “knowledge” in a contributory trademark infringement case?

That question typically arises in the flea-market cases (both virtual and brick-and-mortar) where the direct infringers are vendors with a history of “serial counterfeiting” and the plaintiff sues the landlord or online marketplace operator for contributory infringement. The argument is that the defendant knew or should have known he was facilitating infringement of the plaintiff’s mark based on that history. As we discuss in this year’s Supplement, the courts have signaled their willingness, at least at the pleadings stage, to consider such evidence.

But proof of well-known, widespread counterfeiting is precisely the type of evidence found insufficient in the lead case of Tiffany v. eBay (Tiffany)[1]. Tiffany set the modern standard for determining whether a defendant has the requisite knowledge of direct infringement to find contributory liability.[2] (An in-depth discussion of Tiffany appears here and in the Main Volume, Chapter 3) Such “generalized notice of infringement,” the court held in Tiffany, did not satisfy the actual or constructive knowledge element of contributory liability. To hold a defendant liable for contributory trademark infringement, a plaintiff must prove that it knew or had reason to know of specific acts of infringement of the plaintiff’s mark.[3] Generalized knowledge of infringement was, in Tiffany, found insufficient to place an affirmative duty on the defendant to remediate. To hold otherwise would force defendants like eBay to shut down otherwise legitimate business merely because some portion of sales on its website were counterfeit.[4]

Notwithstanding this admonition, several courts have been open to considering evidence that is non-specific, either as to the identity of the direct infringers or as to the actual acts of infringement. Continue reading Third party counterfeiting as proof of knowledge? →

Secondary Trademark Infringement Comments turned off

Contributory False Advertising

By

This year’s supplement features the Eleventh Circuit’s decision in Duty Free Americas, Inc. v. Estee Lauder Cos. (DFA)[1], another in a growing body of cases to extend contributory liability doctrine beyond the traditional trademark infringement context. In the years since the Supreme Court decided Inwood Labs.[2], courts have generally been predisposed to consider, if not formally recognize, contributory claims across the spectrum of Lanham Act violations.[3] Their basic reasoning has been that all trademark-based claims lend themselves to contributory causes of action because they derive from common-law torts of unfair competition.[4] In DFA, the court expanded on that reasoning when it recognized a claim for contributory false advertising,[5] concluding that the rationale supporting contributory liability in the trademark infringement context applies with even more force to false advertising.[6] Continue reading Contributory False Advertising →

D. Expansion of Inwood Standard to “Non-Product” Cases: The “Direct Control and Monitoring” Test. Comments turned off

Locution, Locution, Locution: IP Licensors – Service Suppliers or Product Providers?

By

Posted on August 4, 2015

Consider the following scenario: Company A is a well-known film producer that licenses its intellectual property rights in famous cartoon characters to Company B, a jewelry manufacturer. Company B in turn features those characters in bracelets that infringe Company C’s marks. Company C sues both Company B and Company A, alleging direct and contributory trademark infringement, respectively.

In this situation, how should the court apply contributory liability doctrine to Company A, the licensor defendant? As explained in the website overview, that doctrine prescribes a different standard depending on whether the defendant has supplied a product or a service to the direct infringer. How then should the court view Company A? Has it supplied the direct infringer with an intangible “product” – its intellectual property? Or has it provided it with a “service” – the licensing arrangement? Neither option seems to capture the essence of the licensor-licensee relationship. And yet the difference is not merely a matter of form: In the latter case, Lockheed Martin’s version of the Inwood Labs. test would apply, with its additional requirement that the plaintiff show “direct control and monitoring” of the instrumentality of infringement.[1]

While the courts generally agree that contributory liability doctrine applies in the licensing context,[2] they have wrestled with how, precisely, to characterize the relationship between the licensors and licensees. In the three cases discussed below, the courts considered licensing relationships in the context of contributory liability. In two of the cases, the courts assumed that Lockheed Martin would apply,[3] while the third court reserved judgment pending further developments in the case.[4] Each court had a different view of how to characterize the licensor’s relationship with its licensee. Continue reading Locution, Locution, Locution: IP Licensors – Service Suppliers or Product Providers? →

Secondary Trademark Infringement Comments turned off

UPDATE: Petroliam Nasional Berhad v. GoDaddy.com — Cert. Denied

By

Posted on October 6, 2014

The Supreme Court issued its order today denying Petroliam’s petition for writ of certiorari.

Increase your website traffic with Attracta.com