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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, December 5, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide IP counsel on contributory trademark infringement and the knowledge required. The panel will discuss recent court treatment of contributory infringement, particularly in the online context. The panel will address what online marketplaces should be doing and will offer best practices for brand owners.

Faculty

Susan M. Kayser
Partner
K&L Gates, LLP

Ms. Kayser litigates and counsels clients including international brands and startups on trademark, advertising, and copyright matters. She provides strategic advice to brand owners in the apparel, fashion, luxury, consumer products, and automotive industries and has been on the forefront of contributory infringement law on the internet. She handles all aspects of USPTO practice. She also provides counseling, manages multibillion dollar worldwide trademark portfolios and worldwide clearance projects, serves as lead negotiator for multi-jurisdictional disputes, and leads IP due diligence teams for brand acquisitions.

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Steven J. Wadyka
Shareholder
Greenberg Traurig LLP

Mr. Wadyka focuses his practice on the protection, enforcement and defense of intellectual property rights. He has represented both plaintiffs and defendants in trademark infringement, copyright infringement, trade dress infringement, trademark dilution, false advertising, anti-counterfeiting and unfair competition litigation in federal courts throughout the United States.

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Jonathan Uffelman
Domain Name Specialist/Attorney
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Uffelman practices trademark, domain name, and internet law. In particular, he works on a broad range of internet and cyber law issues, including on-line brand enforcement and the Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings. Mr. Uffelman handles a variety of on-line brand enforcement issues including gray-market goods, trademark and copyright infringement, and cybersquatting. He has successfully handled numerous UDRP cases on both the complainant and respondent side, and his practice spans a wide spectrum of industries.

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Description

Contributory trademark infringement occurs when a person or corporation is held liable for secondary infringement without directly engaging in activities that legally constitute infringement. The Ninth Circuit recently addressed the issue of contributory trademark infringement in its decision in Y.Y.G.M. SA v. Redbubble Inc. (9th Cir. July 24, 2023). This was the first time the court had addressed the issue of the applicable standard to use.

Under the Lanham Act, there is a cause of action when a party continues to supply products to a third party despite knowing or having reason to know that the third party is engaging in trademark infringement. The Ninth Circuit concluded that specific knowledge is required for liability to attach and remanded the matter.

With online marketplaces, there are more and more infringers online. As a result, IP owners are more likely to enforce secondary infringement of their trademarks than ever before. Infringers can easily hide their identities when selling products online.

When seeking to enforce their marks online, it is important for brand owners to look at contributory liability, recognizing that to demonstrate infringement they should be ready to show the marketplace had knowledge of specific instances of infringement.

Listen as our authoritative panel of IP attorneys examines contributory trademark infringement and the knowledge standard. The panel will discuss how the courts are addressing the issue of contributory infringement and what online marketplaces should be doing, as well as offer best practices for brand owners.

Outline

  1. Contributory infringement
  2. Knowledge standard
  3. Recent court treatment
  4. Expectations of online marketplaces
  5. Best practices for brand owners enforcing marks online

Benefits

The panel will review these and other important issues:

  • When is some knowledge enough?
  • How have the courts addressed contributory infringement, particularly in the context of online selling?
  • What best practices should brand owners and their counsel employ when seeking to enforce trademark rights with online sellers?