Enforcing Contributory Online Trademark Infringement: Willful Blindness, Knowledge Standard

Description

Contributory trademark infringement occurs when a person or corporation is held liable for secondary infringement without directly engaging in activities that legally constitute infringement. The Ninth Circuit recently addressed the issue of contributory trademark infringement in its decision in Y.Y.G.M. SA v. Redbubble Inc. (9th Cir. July 24, 2023). This was the first time the court had addressed the issue of the applicable standard to use.

Under the Lanham Act, there is a cause of action when a party continues to supply products to a third party despite knowing or having reason to know that the third party is engaging in trademark infringement. The Ninth Circuit concluded that specific knowledge is required for liability to attach and remanded the matter.

With online marketplaces, there are more and more infringers online. As a result, IP owners are more likely to enforce secondary infringement of their trademarks than ever before. Infringers can easily hide their identities when selling products online.

When seeking to enforce their marks online, it is important for brand owners to look at contributory liability, recognizing that to demonstrate infringement they should be ready to show the marketplace had knowledge of specific instances of infringement.

Listen as our authoritative panel of IP attorneys examines contributory trademark infringement and the knowledge standard. The panel will discuss how the courts are addressing the issue of contributory infringement and what online marketplaces should be doing, as well as offer best practices for brand owners.