Title

Reforming Trademark Laws Approach to Intermediary Liability

Document Type

Book Chapter

Publication Date

2021

Editor(s)

Graeme B. Dinwoodie & Mark D. Janis

ISBN

9781785366215

Publisher

Edward Elgar Publishing

Language

en-US

Abstract

This chapter suggests that courts have gone wrong in defining the underlying direct infringement in secondary liability cases in trademark. “Some courts, concerned about protecting consumers against unscrupulous intermediaries, have reshaped direct infringement into what I have called a ‘roving unfair competition law’ that lacks the limits of traditional infringement doctrine. Rather than limiting direct infringement to parties who create confusion through their own product sales, these courts have allowed claims based on general search engine practices, or on ‘dual-use’ policies that enable both infringing and non-infringing third-party conduct.” The proposal in this chapter encourages “courts [to] restore coherence to trademark law by reinstating the longstanding distinction between direct infringement and derivative forms of liability, such as contributory infringement.” That is, direct infringement for purposes of secondary trademark liability should require “ (a) a use of the mark by the defendant, in connection with the sale or advertising of its own goods or services, (b) in a way that creates a likelihood of confusion between its goods and services and the trademark holder.”

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