Saturday, December 06, 2008

Tiffany v. Ebay is a serious test of prospective "secondary" liability under trademark law

There is a serious trademark case Tiffany v. Ebay in the Second Circuit now.

A federal judge rejected Tiffany’s claim that Ebay must screen all products for possible trademark infringement before posting on the site. Ebay does remove jewelry items that Tiffany specifically complains about, but Tiffany wants Ebay to be responsible for the “downstream liability” of allowing the item to appear at all.

The Electronic Frontier Foundation, Public Knowledge and Public Citizen have filed a amicus brief urging the Second Circuit to uphold the judge’s ruling. The link for the PDF document is here. It is authored by Fred von Lohmann, Michael Kwun, and Corynne McSherry.

The document mentions several concepts. The Inwood case has to do with “inducing” trademark infringement by continuing to supply objects to an entity that one knows is infringing. But the brief says that the analogy is not valid. The Supreme Court had dealt with contributory infringement in Sony v. Universal in a narrow reading.

However, the was a case in the Seventh Circuit called Hard Rock v. Concession Services, where the concept was extended to “secondary infringement.”

The brief goes on the argue that requiring an intermediary to vet customer placements for possible trademark infringement would have a chilling effect on online commerce, perhaps with other vendors like Amazon, or maybe with self-publishing services. Should a domain name registrar have to vet an application for a domain name for possible trademark infringement? That could make the whole domain business economically impractical, when ICANN already has good-faith mediation procedures in place.

It does sound as thought the “prospective” component of the 2006 Trademark Dilution Revision Act could come into play, however. Other attorneys had speculated after passage that the law could be abused, and Tiffany could represent an attempted abuse.

I wonder how this compares to other areas of intermediary responsibility in Internet law, like Section 230 or the safe harbor provision of the DMCA.

This sounds like a case of a big company with bureaucracy wanting to stifle competition from low-cost entrepreneurs in a difficult economy.

EFF has a Press Release Dec. 4, 2008 “Jewelry Company Quest to Expand Trademark Law Could Quash Internet Commerce: EFF Urges Court to Reject Appeal in Tiffany v. eBay” link here.

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