Stanford Center for Internet and Society

Author: Allison Pedrazzi Helfrich

Following an investigation and notification attempts, clothing distributor Louis Vuitton Malletier filed a complaint against several websites that it believed were selling goods that infringed on Vuitton’s copyrights and trademarks, alleging contributory trademark infringement; vicarious trademark infringement; contributory copyright infringement; and vicarious copyright infringement. The court denied the defendants’ motion for summary judgment on the contributory copyright and trademark infringement claims. With respect to the contributory trademark infringement claim, the court held that the proper inquiry in this context was how much control the defendant had over the means of infringement.

Author: Morgan Galland

In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the United States Court of Appeals for the Ninth Circuit ruled that the makers of a popular video game did not violate section 43(a) of the Lanham Act by depicting a modified version of plaintiff’s Los Angeles strip club. On Appeal from the United States District Court for the Central District of California, the Ninth Circuit upheld a summary judgment decision for defendants, holding that use of a modified trademark in a video game to create a parody of a real setting is protected under the First Amendment of the United States Constitution. In doing so, it expanded the traditional application of the test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989).

Tiffany (NJ) and Tiffany and Company (Tiffany) sued eBay in Federal District Court for trademark infringement, trademark dilution, false advertising, contributory trademark infringement, and contributory trademark dilution. EBay challenged the counts of contributory infringement and dilution on two grounds. First eBay claimed it did not offer a product, and therefore could not be liable. Second eBay asserted that it did not support any known infringers. EBay claimed fair use for all the counts of trademark infringement. The court found contributory infringement applied to eBay because it controlled its site. However, it agreed that eBay did not support any known infringers. The court rejected the claims of infringement and dilution because eBay’s use was fair.

Defendant Tim Oey appealed a preliminary injunction preventing him from using the Internet to protest the trademark application of plaintiff, The Freecycle Network, Inc. (TFN), which was seeking to trademark the term “freecycle.” The case examined whether the Lanham Act allows a claim for “trademark disparagement” and whether trademark applicants may use the Act to suppress speech that opposes registration of a mark and encourages its generic use. The Court of Appeals for the Ninth Circuit held the Lanham Act does not allow such claims and vacated and remanded the district court’s order, holding that TFN could not enjoin Oey from expressing his objection to trademarking the freecycle name.

The Freecycle Network, Inc. v. Tim Oey and Jane Doe Oey, No. 06-16219 (Sept. 26, 2007).