PRESENTATION OVERVIEW. Trademark Infringement Cases in the U.S. and Europe involving ebay, Inc.

Transcription

1 PRESENTATION OVERVIEW 1 Trademark Infringement Cases in the U.S. and Europe involving ebay, Inc. Presented by: Austin Renfroe Howrey LLP What constitutes trademark infringement? Applicable EU law ebay cases in the EU: Hermès, Lancôme, and LVMH Applicable U.S. Law ebay cases in the U.S.: Tiffany Implications January 27,

2 WHAT CONSTITUTES TRADEMARK INFRINGEMENT? 2 APPLICABLE EU AND FRENCH LAW 3 U.S. and France: (1) unauthorized use of the mark on an identical or confusingly similar product; (2) unauthorized use on dissimilar products that lessen the mark s uniqueness France: (1) reproduction of the characteristic elements of the mark; or (2) use of the mark in any act of commercial competition conducted with a counterfeit mark even with no likelihood of confusion! EU Madrid Agreement Concerning The International Registration Of Marks European Economic Community ( EEC ) Directive 89/104 Directive 2000/31/EC of June 8, 2000 (the e-commerce directive ) France Law on Confidence in the Digital Economy of June 21, 2004 ( LCEN ) French Civil Code 2

3 A FIRST ATTEMPT Hermès v. ebay (June 4, 2008) 4 A FIRST ATTEMPT (continued) Hermès v. ebay (June 4, 2008) 5 Background Forum: Troyes Court of First Instance Decision based upon trademark law France s LCEN statute (Article 6.1 of the Law of June 21, 2004): Civil liability for hosting providers cannot be invoked unless they effectively were aware of the illegal nature or facts or circumstances identifying the illegal nature of activities or information stored at their customers behest, or if, when they became aware of this illegal nature, they did not take prompt action to remove the data or render it inaccessible. Reasoning: ebay was considered both a hoster (exempt under LCEN) and a service author (not exempt under LCEN) ebay offered tools to allow sellers to create ads and also decided where and how to place content on its website ebay did not have sufficient technical measures established to combat counterfeiting Holding: ebay was complicit in allowing the sale of counterfeit goods on its site 30,000 to defendants in compensatory damages 15,000 per month for Hermes to publish the decision in four magazines of its choice Publication of the decision on for six months under penalty of 1,500 per day for delay 3,500 in attorneys fees and court costs and any additional costs for seizure of the counterfeit goods 3

4 A LANDMARK CASE? LVMH v. ebay (June 30, 2008) 6 A LANDMARK CASE? (continued) LVMH v. ebay (June 30, 2008) 7 Background Selective distribution networks Forum: Commercial Court of Paris Decision based upon tort law Jurisdictional issues Why LVMH chose this route: France s LCEN statute Reasoning: ebay failed to properly police its site Holding: ebay was liable for negligence 3,052,000 to defendants in compensatory damages 15,000 to publish the court s opinion in three newspapers of ebay s choosing 100,000 in attorneys fees and court costs 50,000 per day for each day that ebay does not halt infringement 4

5 MEANWHILE OUTSIDE OF FRANCE Lancôme v. ebay (July 31, 2008) Background Forum: Commercial Court in Brussels, Belgium Decision based upon Directive 2000/31/EC and relevant Belgium law Holding: ebay is not liable for trademark infringement ebay is not liable for any damages Lancôme must pay three-fourths of ebay s costs 8 APPLICABLE U.S. LAW The Communications Decency Act Lanham Act, 15 U.S.C., specifically 1114, 1116, and

6 THE U.S. PERSPECTIVE Tiffany v. ebay (July 14, 2008) 10 THE U.S. PERSPECTIVE (continued) Tiffany v. ebay (July 14, 2008) 11 Background Five or more policy Forum: United States District Court for the Southern District of New York Decision based upon trademark law Authentic secondary sales ebay had taken reasonable measures to prevent the sale of counterfeit goods Why Tiffany chose this route: Communications Decency Act 230 6

7 THE U.S. PERSPECTIVE (continued) Tiffany v. ebay (July 14, 2008) 12 THE U.S. PERSPECTIVE (continued) Tiffany v. ebay (July 14, 2008) 13 No direct infringement Use of Tiffany marks on ebay site was nominative fair use for the sale of genuine Tiffany products ebay s purchase of sponsored search ads constituted a nominative fair use No joint and several liability No contributory infringement Inwood Laboratories standard: defendant either intentionally induces another to infringe or knows or has reason to know that infringement is occurring and continues to supply its product or service to the infringer ebay took reasonable steps and invested resources to investigate and stop counterfeit sales ebay took direct action to stop specific cases of infringement when infringement was discovered; ebay terminated infringing listings and suspended repeat offenders Trademark owners have responsibility to enforce and police their marks 7

8 RECAP 14 IMPLICATIONS 15 What constitutes infringement Governing EU Laws and the Hermès, Lancôme, and LVMH cases Governing U.S. Law and the Tiffany case There is no LCEN in the U.S. for trademark law LCEN offers protection for hosters in France Nominative fair use for those innocently involved in counterfeit case may be strong defense in U.S. but is not strong defense in France 8

9 16 Questions? 9