Converging Standards of Protection from Secondary Liability for Trademark and Copyright Infringement Online

Secondary liability remains perhaps the only meaningful remedy for rights owners when it comes to the widespread copyright and trademark infringement on the Internet. It is often extremely difficult and costly to reach the direct infringers. Right holders thus seek, under various theories of indirect liability, to hold liable those who provide the means that enable the violations. While trademark and copyright doctrines of secondary liability stem from the same roots in common law, they have evolved separately. Courts have applied secondary liability differently depending on whether the infringement pertains to copyright or trademark, with secondary liability construed more narrowly in trademark than in copyright. In addition, the safe harbors enacted in the Digital Millennium Copyright Act (DMCA) grant Internet service providers liability limitations for monetary and injunctive relief. These safe harbors apply to certain types of intermediary activities—namely, mere conduit, caching, hosting and linking. While the DMCA’s safe harbors scheme has been successful in shielding intermediaries from liability (and thus allowing new services to flourish), the statute lacks clarity and coherence, which sometimes makes the outcomes difficult to predict. Moreover, the statute’s lack of clarity may lead to unintended consequences, particularly in connection with potential abuses of the “notice and takedown” procedure. On the other hand, activities that fail to qualify for safe harbors are analyzed under the ordinary rules of secondary liability, which continue to evolve in courts