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Secondary Trademark Infringement

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Secondary Trademark Infringement is the first and only comprehensive work on the law of contributory and vicarious trademark infringement, combining in-depth examination of the case law with expert practical insights into litigating secondary liability cases. Beginning with the early “passing off” cases, this treatise covers the development of the law that has become one of the most rapidly expanding areas involving the Internet. Meticulously organized and accessible, Secondary Trademark Infringement covers key topics in the field, such as:

  • Infringement liability of businesses that offer Internet facilities to third parties using trademarks or trademark-protected goods in commerce, including retailers, auctioneers and distributors
  • Company exposure to liability for the online activities of their hosting customers or advertisers
  • Legal issues arising from web-hosting and other Internet infrastructure or connectivity
  • Exposure reduction measures for companies and institutions that do not use or facilitate trademark use directly, but are part of a commercial chain of activity

This reference features extensive and detailed case law, analysis, commentary and practice notes on a wide variety of subjects of practical interest and importance to attorneys and business executives alike. These practice notes provide commentary and guidance, based on real-world litigation experience, about the substantive and procedural issues in secondary trademark infringement cases (from both the trademark owner’s and the accused infringer’s point of view), recovery of damages and injunctive relief and guidelines for trademark protection and enforcement, as well as risk management for Internet service providers and other service providers.

Secondary Trademark Infringement addresses developing areas of law, including:

  • Corporate officers’ liability for the trademark infringement of their companies
  • Whether each “subspecies” of trademark infringement should be governed by the same secondary liability standard
  • The relationship between secondary trademark and secondary copyright infringement
  • Secondary liability for trademark infringement on the Internet, including keyword advertising cases
  • Damages for contributory trademark infringement
  • Contributory trademark dilution and contributory cybersquatting 

Secondary Trademark Infringement is an ideal reference work for legal professionals who use, or whose stakeholders use, trademarks on the Internet and seek guidance with respect to this growing area of potential legal risk.     

About the Authors
Jane Coleman  is author and creator of and a former Assistant Director in the Legal Affairs department for the national office of the Anti-Defamation League (ADL) in New York, N.Y. She is a legal writer and editor on topics as diverse as New York and New Jersey civil practice, estate taxation and claims against public entities. Ms. Coleman also is a co-author, with husband Ron Coleman, of a work on business and commercial litigation in federal courts.
Griffith B. Price, Jr., is senior counsel at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., with extensive background in the procedural and substantive aspects of IP litigation in the federal courts, as well as federal and state appellate courts.

2013/632 pp. Hardcover/ISBN 978-1-61746-271-9/Order #2271  



“This first monograph focusing specifically on secondary trademark infringement bids fair to become a definitive desk reference on a topic of growing importance. Notwithstanding the limitation suggested by its title, the book expansively considers secondary infringement and liability for dilution/tarnishment and cybersquatting as well, and addresses its topic in not only classic trademark disputes but also a variety of special situations, including franchising, web hosting, credit card services, and several others. Beginning with policy, doctrine, and the basic elements of a claim, the book is logically and meticulously well-organized and easy to read and use as a reference. Enhanced by an engaging and user-friendly writing style, and a straightforward approach to its subject, the book offers analysis of the applicable case law as well as practice notes. It’s an instant necessity for the desktop or bookshelf of any serious trademark practitioner.”

Robert C. Cumbow, Attorney, Graham & Dunn PC

Secondary Trademark Infringement is a comprehensive and up-to-date guide to the law of secondary liability for trademark infringement. To my knowledge, it provides the only complete review and analysis of all the relevant cases, legal theories and emerging issues relating to someone other than the direct infringer being accused of infringing another’s trademark. And unlike many other treatises, it includes a full complement of excellent Practice Notes written by a seasoned IP litigator. Topics covered include (i) the elements of contributory trademark infringement, (ii) secondary trademark infringement on the Internet, (iii) a comparison of secondary trademark and secondary copyright infringement, and (iv) a review of other “subspecies” of secondary trademark infringement and their respective legal standards. For anyone seeking practical insight on how to litigate secondary liability cases, or answers to questions on the topic in general, Secondary Trademark Infringement is an essential reference work that belongs on every trademark attorney’s bookshelf. It is a well written, well organized, straightforward guide that delivers on its promise of providing a full overview and examination of this dynamic area of the law.”

—Oliver Herzfeld, SVP and Chief Legal Officer, Beanstalk, a leading global brand licensing agency and part of the Diversified Agency Services division of Omnicom Group