The plan has to codify a knowledge requirement – otherwise, subsequent court interpretation will make it impossible to enforce
Gina Boone, 2021 - J.D. Candidate, Fordham University School of Law, 2022; M.P.S., Public Relations and Corporate Communications, Georgetown University, “Designing Dupes: A Legislative Proposal for Holding Online Marketplaces Contributorily Liable for Counterfeit Goods”, 31 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1302 (2021). Hein Online, Accessed via University of Michigan //DH
Legislation regarding contributory liability for online marketplaces should address Tiffany's knowledge requirement. Courts are not new to interpreting existing law and adding heightened standards into statutes when they are not explicitly addressed. For example, Congress codified the willful infringement standard in 35 U.S.C. § 298 when it enacted the 2012 American Invents Act ("AIA").218 Courts have changed this standard over the years by first applying a two-prong "objectively reckless" standard,219 to declining an imposition of an affirmative obligation to obtain outside counsel, 220 only later to agree the opinion of counsel may be relevant. 221 The latest discussion from courts for determining willfulness is changing the standard from a question of law to de novo review. 222 If new legislation does not address the Tiffany knowledge standard, there is a chance courts may react similarly for contributory trademark liability by determining a knowledge requirement is necessary. As a result, rightsholders would be unable to meet the heightened standards.