Attorneys and business executives will benefit from this treatise's comprehensive treatment of the law of contributory and vicarious trademark infringement. Real-world litigation examples highlight substantive and procedural issues in secondary trademark infringement cases. Client and practice notes lend a practical tone to this readable book. The authors cover the rapidly expanding area of contributory cybersquatting under the Anticybersquatting Protection Act.
Thorough analysis and guidance on this rapidly growing area of intellectual property law.
Secondary Trademark Infringement is the first and only work that provides a comprehensive treatment of 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:
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:
The 2016 Supplement covers the following developments and new material:
Chapter 4 has been expanded to include a new section on contributory false advertising in light of the Eleventh Circuit’s decision in Duty Free Ams., Inc. v. Estee Lauder Cos., 797 F.3d 1248 (11th Cir. 2015)(DFA). DFA signals the courts’ willingness to continue to extend contributory liability doctrine across the spectrum of Lanham Act violations, as discussed throughout Chapter 4.
The courts’ further movement away from a rigid reading of Tiffany’s requirement of “specific knowledge of infringement” is addressed in Chapter 3.
Chapter 12 examines the court’s decision to award maximum statutory damages against the contributory infringers in Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 2016 U.S. Dist. LEXIS 44576 (E.D.N.Y. Mar. 31, 2016), a case involving wide-scale counterfeiting of a popular liquid dietary supplement produced in a facility that posed a threat to public health.
Although, as a general rule, a corporate parent is not automatically liable for the acts of its wholly owned subsidiary, in TRB Acquisitions LLC v. Seduka, LLC, 2016 U.S. Dist. LEXIS 64846 (S.D.N.Y. May 10, 2016)(TRB Acquisitions), the court nonetheless sustained the plaintiff’s joint tortfeasor claim against a corporation and its parent where the plaintiff’s allegations asserted more than a mere parent-subsidiary relationship. TRB Acquisitions is discussed in detail in Chapter 11.
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.
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.
SVP and Chief Legal Officer, Beanstalk, a leading global brand licensing agency and part of the Diversified Agency Services division of Omnicom Group
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