Arent Fox partner Alison Arden Besunder and associate Loni J. Sherwin have been published in a recent edition of the New York Law Journal. The analysis piece takes an in-depth look at briefs recently submitted to the US Court of Appeals for the Second Circuit in the highly watched case Tiffany v. eBay -- a case that will have a major impact on the relationship between brand owners and e-commerce.

The case has drawn the submission of amicus briefs from major online retailers and search engines Yahoo, Amazon and Google and organizations such as the International Anti-Counterfeiting Coalition (IACC), the Council of Fashion Designers of America (CFDA), cosmetics manufacturer Coty, and the Electronic Frontier Foundation (EFF).

The arguments contained in the parties’ and amicus briefs raise interesting questions for the Second Circuit, chiefly (1) whether generalized knowledge of counterfeiting, as opposed to specific knowledge of individual instances of infringement and infringing sellers, is sufficient under the Inwood test to impose on eBay an affirmative duty to remedy the problem; and (2) whether trademark owners like Tiffany or e-commerce sites like eBay, or both, can and should bear the burden of “policing” counterfeit activity on the Internet.

To read the full New York Law Journal article, please click here.

Background

Last summer the US District Court for the Southern District of New York found in favor of e-Bay in Tiffany's lawsuit against the world's largest online auctioneer alleging direct and contributory infringement and dilution of Tiffany's trademarks. Specifically, the SDNY ruled that eBay’s general knowledge of counterfeit sales on its site did not render it liable for infringement of the TIFFANY trademarks.

Appealing to the Second Circuit, Tiffany argues that under a 1982 US Supreme Court decision (Inwood Labs Inc. v, Ives Labs Inc.) liability attaches if a provider “knows” or has “reason to know” that its product or service is being used to further trademark infringement. Instead, Tiffany asserts in its brief to the Second Circuit that “[g]eneral knowledge, particularly if it is knowledge of the pervasive sale of counterfeit goods, may be sufficient to trigger action – at a minimum a duty to investigate – on the part of a potential contributory infringer."

Oral argument is set to take place in the next few weeks.