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Journal on Telecommunications & High Technology Law




For several years now, the question of “trademark use” has taken center stage in the debate over trademark liability of online intermediaries. Doctrinally, the debate addresses whether the Lanham Act places any limit on the types of “use” of trademarks that can subject one to a claim of infringement. The real conflict, however, has occurred at the normative level: whatever the Lanham Act says or does not say about trademark use, should trademark law limit the definition of infringement to situations in which the defendant has used the mark to brand its own products?

The Second Circuit appears to have settled the issue, at least temporarily, in its recent opinion in Rescuecom v. Google. The Rescuecom court held that the Lanham Act contains virtually no limitation on the type of “use” of a mark that can qualify as direct trademark infringement. Although cloaked in terms of statutory interpretation, the Rescuecom opinion was clearly driven by normative concerns. The court - like most scholars who oppose a trademark use requirement - worried that a trademark use requirement would give search engines carte blanche to adopt advertising practices that purposefully deceive consumers. This assumption, however, is mistaken. A trademark use requirement would not provide complete immunity from trademark liability for search engines or anyone else. But it would treat them differently than run-of-the-mill infringers based on their status as intermediaries, rather than sellers who brand their products under a protected mark. Confusing branding uses, under a trademark use approach, would constitute direct infringement. Intermediaries like Google could face liability for facilitating such infringement, but as contributory rather than direct infringers.

This Essay makes two points. First, it reiterates why a trademark use doctrine offers the best hope for a rational and coherent framework for evaluating the trademark liability of intermediaries. Despite its appeal, however, the courts have shown little sympathy for a trademark use doctrine in practice. The second part of this essay therefore grapples with the increasingly likely reality of a world without a requirement of trademark use. If courts are unwilling to use contributory infringement doctrine as a platform to develop a law of intermediary liability, I contend that they must adapt direct infringement doctrine to accommodate the unique concerns raised by this new kind of defendant. I close with some tentative suggestions for how they might do so.

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