Uploaded on

 

  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Be the first to comment
    Be the first to like this
No Downloads

Views

Total Views
405
On Slideshare
0
From Embeds
0
Number of Embeds
0

Actions

Shares
Downloads
1
Comments
0
Likes
0

Embeds 0

No embeds

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
    No notes for slide

Transcript

  • 1. Tiffany (NJ) v. eBay, Inc. 2010 WL 1236315 (2d Cir. April 1, 2010)
  • 2. Facts:
    • Tiffany sued eBay, claiming that eBay should be held liable for trademark infringement when sellers offer counterfeit Tiffany goods on the eBay site
    • Evidence established that eBay quickly takes down listings when Tiffany sends notice that it believes a specific item is not genuine
    • However, Tiffany want eBay to police listings on its own, and to be held responsible for any counterfeit items it missed - attempting to expand trademark law
  • 3. District Court Decision
    • eBay preserved most of its 2008 district court victories
    • Judge endorsed eBay’s various efforts to reduce the sale of counterfeit goods on its site and provide extrajudicial recourse to brand owners
    • Tiffany didn’t invest enough in its police efforts
    • Prescribes a notice-and-takedown regime similar to DMCA system (eBay specific)
  • 4. District Court Decision - Cont’d
    • Tiffany’s trademark infringement claim
    • Focused on nominative use defense
    • eBay is free to tell people that it sells legitimate Tiffany goods
    • Buying “Tiffany” as the keyword trigger for ads doesn’t constitute a trademark use in commerce
  • 5. Second Circuit’s Decision
    • eBay isn’t directly liable for trademark infringement based on its advertisement activities due to the normative use doctrine (even though the Court did not adopt the doctrine)
    • eBay isn’t secondarily liable for counterfeit sales because generalized knowledge is not enough and eBay followed a notice-and-take down procedure
    • eBay isn’t liable for direct trademark dilution on the unadopted nominative use doctrine
    • Rejected the lower courts reliance on a nominative use defense to the false advertising claim
    • Remanded the case for further proceedings for re-examination of the false advertising claim
  • 6. Direct Trademark Infringement
    • Never expressly adopted the nominative use defense
    • Similar to 9th Cir. standard: “a defendant may lawfully use a plaintiff’s trademark where doing so is necessary to describe to plaintiff’s product and does not imply a false affiliation or endorsement by the plaintiff of the defendant”
    • eBay referenced Tiffany to describe accurately the genuine goods offered for sale on its website
  • 7. Contributory Trademark Infringement
    • Lockheed v. NSI (9th Cir.) - articulated an online standard
    • 2d Cir. punted and said that parties agreed to use the Inwood standard : two ways in which a defendant can become liable: (1) if the service provider intentioanlly induces another to infringe; or (2) if the service provider continues to supply its service to one whom is knows or has reason to know is engaging in trademark infringement
    • Inducement is not an issue
    • Take down notices provided generalized knowledge and that was not enough
    • Court defined “willful blindness” - “when a service provider has reason to suspect that users of its service are infringement a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way”
  • 8. Dilution
    • There cannot be blurring or tarnishment when the defendant makes a nominative use
    • eBay didn’t sell the goods itself, so it did not commit that dilution
  • 9. False Advertising
    • eBay provided hyperlinks, purchased advertising space on search engines, and sometimes provided a link to eBay’s site
    • These statements are not literally false because genuine Tiffany merchandise was available on eBay - but District Court must conclude that these ads are not likely to mislead or confuse consumers
    • Court rejected nominative use defense
  • 10. Implications of this Ruling
    • Trademarks are subject to notice-and-takedown rule
    • Leaves the door open for Tiffany to challenge eBay’s advertising policy
    • 2d Cir. does not address whether it adopted the nominative use defense or the standard for contributory trademark infringement
    • eBay specific case