Trademark Law | Expert Legal Commentary
September 26, 2008
Tiffany v. eBay: A Trademark Owner Must Police Its Own Marks on the Internet
Tiffany (NJ) Inc., et al. eBay, Inc.
By
Olivier A. Taillieu of Zuber & Taillieu and D. Dennis La
In its significant opinion in Tiffany v. eBay, ___ F. Supp. 2d ___, 2008 WL 2755787 (No. 04 Civ. 4607) (S.D.N.Y. , July 14, 2008) the Southern District of New York rejected an effort by renowned jeweler Tiffany to expand the reach of contributory trademark infringement. Tiffany’s theory of secondary liability would have imposed liability for trademark infringement upon web-based intermediaries whose users infringe on trademarks by selling counterfeit goods. The opinion fills an important gap in the precedent of contributory trademark infringement, but it also emphasizes that trademark law is about consumer protection, not the suppression of speech. Tiffany has filed an appeal of the decision with the U.S. Court of Appeals for the 2nd Circuit.
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About the Author
Olivier A. Taillieu is a Partner of Zuber & Taillieu, focusing on intellectual property litigation and arbitration.
1 Compare this case with the recently-decided Standard Process Inc. v. Total Health Discount Inc., 559 F. Supp. 2d 932 (E.D. Wisc. 2008). There, a company sued an online reseller of its products for resale without authorization. Like eBay, the reseller had purchased keyword advertisements containing the trademarked terms. However, unlike the eBay, the reseller included terms like “we” and “our” in its online product descriptions, potential confusing consumers about the sponsorship or affiliation of the trademark owner with the reseller, precluding the nominative fair use defense. 559 F. Supp. 2d at 938-939.
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