Web Retailers Bear No Burden to Police Trademarks


A federal judge in New York has ruled that online retailers do not have a burden to affirmatively police trademark infringers that sell on their sites. The case pitted Tiffany, maker of fine jewelry, against eBay. Tiffany asked the court to rule that eBay should be responsible for policing its site for trademark infringers, often in the form of forgeries sold on eBay.

The Court ruled that eBay did not have a duty to affirmatively seek trademark infringers on its site, noting that the duty to protect a trademark falls to the mark’s owner, not a third party sales outlet. Of particular importance, however, was the fact that eBay had promptly investigated and removed any reports of trademark infringements provided by Tiffany.

This is a sensible ruling. eBay and other online retailers should not be assigned policing tasks that are already assigned to other parties, notably, the mark holders. Once the mark holders do their part by notifying retailer of infringement, however, online retailers should have the burden of investigating credible IP threats on their respective sites. The judge noted that eBay had done that in this particular factual scenario. Other courts would be wise to adopt similar assignments of burden to both mark holders and online retailers in future matters.

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