Trademark Law | Expert Legal Commentary

May 10, 2010

Tiffany v. eBay: General Awareness of Mass Infringement Not Enough to Establish Contributory infringement

Tiffany (NJ) Inc. v. eBay, Inc.

By Yuri Mikulka and Jeffrey J. Zuber of Zuber & Taillieu LLP

The Second Circuit U.S. Court of Appeals has affirmed that brand owners are ultimately responsible for policing and fighting counterfeits, even when a high volume of infringement occurs in one outlet. In Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2nd Cir. 2010), the Second Circuit held that a service provider like eBay only becomes liable for contributory infringement if it continues to provide its services to a specific individual who it knows, or has reason to know, is selling counterfeit goods. The Circuit Court remanded the false advertising claims of the case for the district court to determine whether eBay’s ads falsely implied that all of the goods offered on its site were genuine.

About the Authors

Yuri Mikulka is a Partner of Zuber & Taillieu LLP, and chairs its litigation department.

Jeffrey J. Zuber is a Partner of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.

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Yuri Mikulka
Jeffrey J. Zuber

Companies Mentioned

eBay, Inc.

Tiffany & Co.

Tiffany (NJ) Inc.

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

Haute Diggity Dog, LLC

JA Apparel Corp.

Houndstooth Corp.

Harringbone Creative Services, Inc.

Mars, Inc.

Chute Gerdeman, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

Collegiate Licensing Company

Trademark Trial and Appeal Board

NTU Electronics, Inc.

Midway Services, Inc.

MDCO, Inc.

Internet Specialties West, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Louis Vuitton Malletier S.A.

International Trademark Association

WMS Gaming, Inc.

Manley Toys, Ltd.

McGills Glass Warehouse

WPC Productions Ltd.

AW Computer Holdings LLC

PartyGaming PLC

Wolfe’s Borough Coffee, Inc. d.b.a. Black Bear Micro Roastery

Talisker Corp.

Starbucks U.S. Brands, LLC

Talisker Deer Valley Corp.

Starbucks Corp.

Prime West Jordanelle, LLC

The Crash Dummy Movie, LLC

Prime West Jordanelle II, LLC

Mattel, Inc.

Tabacalera Popular Cubana, Inc.

Monster Cable Products, Inc.

Max Rohr, Inc.

Audiovox Corp.

Cuban Cigar Brands, N.V.

Additional Resources

Trademark Law