Contributory liability is overbroad and causes online platforms to bar non-infringing uses

If platforms are required to actively seek out and block or remove potentially infringing content, the situation will only get worse. A case currently pending in federal court, Melo v. Frida Kahlo Corporation, offers a preview of what this might look like. Ms. Melo, an independent artist, alleges that Frida Kahlo Corporation (FKC) claims ownership of several Frida Kahlo-related trademarks and uses those purported marks to have Kahlo-inspired artwork removed from platforms such as Redbubble, Etsy, and Zazzle.6 Zazzle in particular has an agreement with FKC to take down “all references to Frida Kahlo in the title or search terms for any product”; Zazzle agreed to this arrangement in response to 2010 infringement allegations by FKC.7 Of course, FKC does not and cannot have a monopoly over all uses of the name Frida Kahlo—that is not how trademark law works. But when the responsibility for policing infringement is shifted to intermediaries, the predictable result is that they will prefer to bar non-infringing uses, no matter how numerous, rather than risk liability for letting an infringing use fall through the cracks.

The goal of trademark law is to protect consumers by increasing access to information and promoting fair competition. But if the proper balance is not struck in the standards for intermediary liability, the resulting suppression of lawful speech and competition will end up doing more harm than good. EFF urges the USPTO and policymakers not to pursue changes to the doctrine of secondary trademark liability that would shift the cost of policing infringement from trademark owners onto intermediaries—and ultimately consumers.