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September 17, 2009

OneOK Sues Twitter Over Name-squatting, Then Drops Suit

OneOk sues Twitter after Twitter refuses to provide info regarding Twitter user named ONEOK. Mashable reports that the suit has been dropped.

Complaint Oneok Twitter

July 21, 2009

Steve Madden Sues eBay in SDNY

Early coverage here. Seems that this involves the sale of STEVE MADDEN watches on eBay which is problematic because STEVE MADDEN doesn't license watches.

Steve Madden v Ebay

June 08, 2009

"It's Time to Update the Lanham Act for the 21st Century"

Kimberly Isbel: "It's Time to Update the Lanham Act for the 21st Century" "(Discussion of 'innocent infringer' safe harbor in Section 32):


When applied to the online activities of companies like Twitter, Google and the Internet Archive, the inadequacy of the remedy-limiting language used in Section 32(2) readily becomes apparent.

May 26, 2009

Discussion of EBay / L'Oreal UK Decision

IPKat takes a first look at the EBay / L'Oreal decision in the UK. The Court will hear argument on the formuation of questions to the ECJ.

May 25, 2009

Cartier Sues Apple Over iPhone App, Withdraws Suit The Same Day

Cartier files compaint over 'fake watch' iPhone app, withdraws suit later that day after Apple takes down app.


Compaint Cartier Apple

May 14, 2009

Rare Victory For a Foreign Internet Business on French Soil

IPKat successfully predicts our description of EBay's victory over L'Oreal regarding the sale of counterfeits.

December 05, 2008

Amicus Briefs in Tiffany v EBay Case

Wired: Auction Websites Hang In Legal Limbo:

The latest vocal entrant into the legal debate is the Electronic Frontier Foundation, Public Knowledge and Public Citizen (.pdf). If Tiffany prevails on appeal, online marketplaces would likely come "to a halt," the groups said in a court filing Wednesday. They urged the appellate court "to reject Tiffany's effort to rewrite trademark law to relieve mark-owners of their traditional obligation to police their own marks, online and off."

Amazon and Google, (.pdf) as well as Yahoo (.pdf) and others have sided with eBay. The Council of Fashion Designers of America (.pdf) and the International Anti-counterfeiting Coalition (.pdf) have urged the court to side with Tiffany.

November 10, 2008

Inside Counsel Article on Tiffany/eBay (quoting me)

Schwimmer Inside Counsel Article

Get your own at Scribd or explore others:

September 17, 2008

I'm Doing A 'Webinar' Oct. 2 On Tiffany v eBay (Intermediate Liability)

Details on this October 2 Webinar here.

July 15, 2008

How Much Should Brand Owners Spend On Trademark Lawyers?

In yesterday's decision in Tiffany v eBay, the Court noted:

Notwithstanding the significance of the online counterfeiting problem, it is clear that Tiffany invested relatviely modest resources to combat the problem. In fiscal year 2003, Tiffany budgeted approximately $763,000 to the issue, representing less than 0.05 percent of its net sales for that year . . .

More specifically, Tiffany's time dedicated to monitoring the eBay website and preparing NOCIs [complaints under eBay's VeRO program) was limited. . . a paralegal . . devoted two days a week to reviewing the eBay website and answering emails from buyers and sellers involving removed listings. . . Tiffany's security manager also devoted one day a week to monitoring and reporting on the eBay website. . .

Decision, page 18.

Is 0.05 percent of net sales a lot or a little?

Is two days of a paralegal's time a lot or a little for a brand that's alleging 46,000 allleged infringements in a year?

July 14, 2008

Breaking! EBay Prevails Over Tiffany in SDNY - Text of Decision

From the decision:

First, the Court finds the eBay's use of Tiffany's trademarks in its advertising on its homepage, and in sponsored links purchased through Yahoo! and Google, is a protected nominative fair use of the marks.

Second, the Court finds that eBay is not liable for contributory trademark infringement . . . the standrard is not whether eBay could reasonably anticipate possible infringement, but rather whether eBay continued to supply its services to sellers when it knew or had reason to know of infringement by those sellers (cite to Inwood). Indeed, the Supreme Court has specifically disavowed the reasopnable anticipation standard as a watered down' and incorrect standard Id.

Here, when Tiffany put eBay on notice of specfic items that Tiffany beleived to be infringing, eBay immediately removed those listings . .

The law does not impose contributory trademark infringement on eBay for its refusal to take such preemptive steps in light of eBay's 'reasonable anticipation' or generalized knolwedge that counterfeit goods might be sold on its website. Quite simply, the law demands more specific knowledge as to which items are infringing and which seller is listing those items before requiring eBay to take action. "

The result of the application of this legal standard is that Tiffany must ultimately bear the burden of protecting its trademark. Policymakers may yet decide that the law as it stands is inadequate to protect rights owners in light of the increasing scope of Internet commerce and the concomitant rise in potential trademark infringement.

Read this document on Scribd: eBay Decision

June 30, 2008

WSJ.com: Did French Retailers Win 'Hometown' Verdict Against eBay?"

WSJ.com: "Did French Retailers Win 'Hometown' Verdict Against eBay""

A French court today cracked down on counterfeits — and an outlet that sells them — ordering eBay to pay Louis Vuitton and other luxury brands — Kenzo, Guerlain, Dior and Givenchy — $63.1 million in damages for auctioning fake goods.

November 13, 2007

Tiffany v. eBay Trial Starts Today

WSJ.com Law Blog: Tiffany v. eBay:

"Who is responsible for the policing of counterfeit products on eBay?

If you think that’s an interesting question and you’re here in Gotham, hightail it down to Judge Richard Sullivan’s courtroom in the Southern District where a bench trial gets underway today pitting Tiffany against the online auctioneer. Legal experts say a win for Tiffany could change the way eBay handles its auctions."

July 05, 2007

Perfect 10 v. Visa

PERFECT 10, INC., v. VISA INTERNATIONAL SERVICE ASSOCIATION; FIRST DATA CORPORATION; CARDSERVICE INTERNATIONAL, INC.; HUMBOLDT OPINION BANK; MASTERCARD INTERNATIONAL, INC. No. 05-15170 (9th Cir. July 3, 2007)

"Perfect 10, Inc. (Perfect 10) sued Visa International Service Association, MasterCard International Inc., and several affiliated banks and data processing services (collectively, the Defendants), alleging secondary liability under federal copyright and trademark law and liability under California statutory and common law. It sued because Defendants continue to process credit card payments to websites that infringe Perfect 10’s intellectual property rights after being notified by Perfect 10 of infringement by those websites. The district court dismissed all causes of action under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. We affirm the decision of the district court."

December 07, 2006

Australian Flea Market Operators Want To Know:

Why is it infringement to authorize infringement of copyright or patent, but not trade mark? Horsehair wig wearer Warwick Rothnie discusses a case brought by LVMH against an Australian 'trash and treasure' market.

May 30, 2006

Discussion Of Secondary Liability Of Flea Market

Foley & Lardner: "Flea Market's Theory of Secondary Liability Doesn't Fit, So Court Doesn't Buy" discussing Arista Records v. Flea World (DNJ 03-2670 3/31/06 (Flea market held to be contributory infringer based on vendor's sale of infringing CDs).