Contributory Trademark Liability
Today, many trademarks (e.g., symbols and words registered to represent a company or product) exist on the Internet through various websites. Even though, this provides businesses with a broader venue for operations, however, it also exposes trademarks to potential infringement. In cases dealing with such misconduct, the question often becomes who is to blame? Stated otherwise, may the victims seek remedies from the webpages holding the trademarks? Is an Internet Service Provider ("ISP") also subject to liability? The issue of contributory trademark liability has been the subject of recent litigation.
In general, contributory liability is a branch of secondary liability, which also includes vicarious liability. Vicarious liability holds employers liable for their employees' misconducts or violations. To have a case for contributory infringement, plaintiffs must demonstrate that a defendant either intentionally compelled another party to commit infringement or that a defendant knew of the infringement and did not take steps to prevent future harm. In some circumstances involving online misconduct, a third party may be responsible for the wrongful acts. These third parties may include ISPs, forums, and websites. Under contributory liability, parties who contribute to wrongful conduct, or make it possible, may be responsible for the illegal acts of another. Pursuant to this standard, ISPs may be responsible for trademark infringement where they do not take steps to prevent the misconduct.
ISP liability can sometimes be the most rewarding remedy available to victims. The courts have reached different decisions on whether ISPs are contributorially liable for trademark infringement. Typically, decisions will depend on the specific circumstances of each case. ISPs are liable for contributory liability when dealing with copyrights. As to trademarks, the courts have extended secondary liability to third parties in some cases. The courts will also look to whether the ISP was aware of the infringement and took appropriate steps to prevent further harm. Additionally, it is important to determine whether the ISP had control over the website to be able to monitor and prevent infringement. ISPs are not liable in all circumstances. For instance, if the ISP is not aware of the wrongful behavior, then it may not be responsible. This is a severe limitation for trademark holders who are harmed by cybersquatting. In effect, they may not be able to sue third-parties for contributory infringement. The Ninth Circuit decided this issue in Petronas v. GoDaddy.com. It seems that at this time, the courts are faced with the predicament of balancing the legal rights of both the victims and the ISPs.
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