The Tiffany standard for contributory liability doesn’t protect trademark owners

Despite the Second Circuit’s laborious efforts in Tiffany, the problem of applying contributory trademark liability to e-commerce platforms persists. Recent growth amongst internet and e-commerce platforms has exacerbated the issue and garnered increased attention from Congress and federal agencies.106 In light of this rapid growth, the current contributory trademark liability standard established by Tiffany more than a decade ago is insufficient to protect trademark owners. As it stands, Tiffany’s contributory trademark liability standard is inefficient for all parties involved in the trademark field.107 Trademark owners suffer numerous online infringements and struggle to enforce their rights, while e-commerce platforms are left to guess the scope of their rights and liabilities.108 For instance, due to the growth of online trademark infringements, 74% of respondents in a survey experienced trademark infringement in 2017, with 22% of them experiencing up to thirty infringements in a year.109 Without new judicial decisions to provide clear legal guidance or new legislation to outline clear legal duties, trademark owners and e-commerce platforms do not have sufficient information regarding the scope of their rights and obligations.110

Without clear Supreme Court or Congressional guidance, many cases have zeroed in on which party should bear the burden of monitoring online infringements and at what point the e-commerce platforms’ mediating nature is no longer neutral but instead conducive to—or constitutes knowledge of—such infringements. 111 Legal scholars have responded to this problem by advocating that “[contributory] liability rules must defend rights holders’ interests in better protecting their brands from online trademark infringements.”112 However, these same scholars also contend that the rules must not deter legitimate and productive activities in the internet marketplace.113 This “equilibrium conundrum” has engendered various judicial decisions and academic views,114 all of which are necessary to achieve a balanced approach to contributory trademark liability that would effectively limit trademark infringement on the internet without hurting innocent websites or impeding the free market.115