In 2008, jeweler Tiffany & Co. (“Tiffany”) commenced an action against eBay after discovering that a significant amount of counterfeit Tiffany jewelry was being sold on the online auction house. Tiffany had previously used eBay’s Verified Rights Owner program to report the infringement and pursued enforcement actions against individual sellers. Nevertheless, Tiffany sued eBay for various causes of action, including contributory trademark infringement. The Second Circuit held that online service providers like eBay are not liable for contributory trademark infringement unless they have specific knowledge of particular instances of infringement. Due to the ruling, Tiffany bears the burden for policing its marks online while eBay and other service providers may continue with present business models. This comment proposes subpoena legislation similar to the Digital Millennium Copyright Act to better balance the interests of trademark owners and service providers by providing a way for trademark owners to request infringers’ information while allowing online service providers to function.
Jessica L. Hilliard, Rights versus Commerce: Balancing Online Trademark Policing with the Emerging Marketplace, 11 J. Marshall Rev. Intell. Prop. L. 217 (2011)