Secondary Trademark Infringement

Secondary trademark infringement, also known as indirect or contributory infringement, is the liability a party assumes when it doesn't actually take part in trademark infringing activities but contributes to infringement by other parties. Entities that are accused of secondary infringement may be held liable for their actions.

Secondary liability covers the following:

  • Trademarks
  • Copyrights
  • Patents

To claim secondary infringement, a plaintiff's case must meet the threshold requirement of direct infringement. There also has to be evidence that the accused party knew of the patent or trademark and that the party's actions would lead to infringement.

To prevent a patent holder from extending his or her rights beyond specific limits related to a product, the article being alleged has to be unsuitable for any commercial non-infringing use. Even if an article for sale is adapted for both lawful use and infringing use, it's not enough to show contributory infringement.

However, a party who knowingly causes, induces, or contributes to copyright infringement by another party, even if the first party doesn't participate in or commits these infringing actions, may still be held liable for secondary infringement if he or she had reasonable knowledge of actual infringement. 

The Lanham Act doesn't expressly impose liability for secondary infringement, but the U.S. Supreme Court expresses that such liability for infringement can be extended to reach beyond those parties who actually mislabel products with another entity's mark.

If a distributor or manufacturer purposely induces another party to infringe on a trademark or service mark or if the distributor continues to supply a product to one that it knows or believes is participating in infringement, then that distributor can be held responsible as a contributory party for harm or damages that result from their deceit.

Internet Platforms and Brick-and-Mortar Stores

The application of the Lanham Act can be interpreted differently in regards to secondary liability depending on whether the alleged infringement occurs in a brick-and-mortar marketplace or internet platform. The differences result from the nature of the mediums and what could likely happen or not happen in each particular medium.

In the case of a flea market's landlord, the court expects that a landlord could reasonably monitor the type of merchandise that's sold on his or her premises, but the same can't be expected of a domain name registrar on the internet. Registrars can't be reasonably expected to monitor the worldwide web.

In a brick-and-mortar location, whether it's a distributor store or flea market, the operator can easily see what's going on in the store. If someone sells infringing products there, the intellectual property holder can find the store and send a notice. The holder can easily track what the landlord actually does about the notice or complaint, if anything, or if the store owner chooses to ignore the acts of alleged infringement.

Actions, such as a seizure or raid done by law enforcement, can help the court confirm if the landlord had knowledge of the alleged infringement or not. The trademark holder will have more evidence under the requirement that a landlord knew or had reason to know about any alleged infringement activities. Monitoring these activities is harder to do on the internet.

Standards for Secondary Liability

Courts don't follow strict standards for secondary liability. As new business methods and new technologies continually develop, standards continue to change. Courts are grappling with how to apply these changing standards in the digital era. Websites aren't easy to monitor, and they can possibly carry a number of infringing products. On the web, it's not difficult to hide information.

Letters and notices can be sent to a specific website, but after that, the challenge becomes showing that the alleged infringer is willfully taking a blind eye to knowledge of the activities. Letters and notices sent aren't sufficient or persuasive enough to meet standards of proof of intent.

In some cases, a party might not be aware he or she is committing secondary infringement. However, once they're alerted to it, they must either stop any infringing actions or risk being sued. The nature of the internet makes it more difficult for trademark holders to pursue actions against online parties, but some major companies have had successful outcomes.

If you need help with understanding secondary trademark infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.