Tiffany (NJ) Inc. v. eBay Inc., 08-3947
In an action by Tiffany Inc. against eBay based on sales of counterfeit Tiffany merchandise on eBay, alleging trademark infringement, false advertising, and trademark dilution, judgment for defendant is affirmed in part where: 1) a defendant may lawfully use a plaintiff's trademark where doing so is necessary to describe the plaintiff's product and does not imply a false affiliation or endorsement by the plaintiff of the defendant; 2) for contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods, and some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary; and 3) there was no second mark or product at issue here to blur with or to tarnish "Tiffany." However, the judgment is vacated in part as to plaintiff's false advertising claim because the district court failed to determine whether extrinsic evidence indicates that the challenged advertisements were misleading or confusing.
- Decided 04/01/2010
- Published 04/01/2010
- SACK, Circuit Judge:, Before: SACK and B.D. PARKER, Circuit Judges, and GOLDBERG, Judge.
- United States Second Circuit
- For Appellant:
- James B. Swire (H. Peter Haveles, Jr., Peter L. Zimroth, Erik C. Walsh, and Elanor M. Lackman, on the brief) Arnold & Porter LLP, New York, NY, for Plaintiffs-Appellants., Bruce P. Keller, David H. Bernstein, Michael R. Potenza, Debevoise & Plimpton LLP, New York, NY, for Amicus Curiae The International Anticounterfeiting Coalition., John F. Cooney, Janet F. Satterwaite, Meghan Hemmings Kend, Venable LLP, Washington, D.C., for Amicus Curiae Coty, Inc., Alain Coblence, Coblence & Associates, New York, NY, for Amicus Curiae The Council of Fashion Designers of America, Inc., Patric J. Carome, Samir C. Jain, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for Amici Curiae Amazon.com, Inc., Google Inc., Information Technology Association of America, Internet Commerce Coalition, Netcoalition, United States Internet Service Provider Association, and United States Telecom Association., Meredith Martin Addy and Howard S. Michael, Brinks Hofer Gilson & Lione, Chicago, IL, David S. Fleming, Brinks Hofer Gilson & Lione, New York, NY, for Amicus Curiae Yahoo! Inc., Fred von Lohmann, Michael Kwum, The Electronic Frontier Foundation, San Francisco, CA, for Amici Curiae The Electronic Frontier Foundation, Public Citizen, and Public Knowledge.
- For Appellees:
- R. Bruce Rich (Randi W. Singer, Jonathan Bloom, and Mark J. Fiore on the brief) Weil, Gotshal & Manges LLP, New York, NY, for Defendant-Appellee.