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.


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


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.


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.


Inside Counsel Article on Tiffany/eBay (quoting me)

Schwimmer Inside Counsel Article

Get your own at Scribd or explore others:


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

Details on this October 2 Webinar here.


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?


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


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.


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.”