Building a Trademark Safe Harbor for Contributory Counterfeiting Liaibility After Tiffany v. eBay

(Excerpt) Since current anti-counterfeiting tools are not easily applied to the Internet, thereby diminishing their effectiveness, this Note argues that compensating for this deficiency requires legal provisions that encourage online service providers to implement both proactive and reactive anti-counterfeiting measures. After Tiffany, e-commerce businesses in the United States are only required to react appropriately to counterfeiting on their websites. Though it is well-settled that trademark owners must police their own brand, the Tiffany decision makes it extremely difficult and costly for owners to combat counterfeiting on their own. Furthermore, the Second Circuit’s application of a reactive law written specifically for secondary copyright infringement on the Internet does not effectively address the entire temporal range of harm posed by trademark infringement. Part I discusses the goals and policies underlying American trademark law and explains where counterfeiting fits in this framework. This Part also traces the development of the judicially-created doctrine of contributory trademark law and how it has been applied in counterfeiting cases. Part II compares the American approach to contributory trademark infringement to that of European courts. Part III analyzes and assesses how each approach addresses the harms of contributory trademark infringement on the Internet. Part IV proposes a legislative solution similar to the safe-harbor provisions of the DMCA, but tailored to the specific goals, policies, and harms faced by trademark owners. While the Second Circuit properly decided that a notice-and-takedown procedure is one effective way to combat trademark infringement on the Internet, it is a reactive mechanism that does not effectively address harms to trademarks owners and consumers that accrue even before someone buys a counterfeit item. For this reason, a safe-harbor provision for trademark law should incentivize online marketplaces like eBay to take preventive action against trademark infringement