Legislation is vital to reducing compliance uncertainty

While the flexibility of a common law approach leaves the courts greater discretion in adapting the judicial precedents to the facts at issue, the uncertainty in this area could perhaps be best resolved by adopting a legislative amendment. This amendment would introduce contributory trademark infringement as a statutory action for infringement in the Lanham Act, but it would also elaborate on the definition of the relevant elements necessary to assess this type of liability. Notably, this amendment should include detailed definitions of “knowledge,” “control,” “willful blindness,” and any related concepts that could be relevant to assess a claim for contributory infringement. Such an amendment should also include a provision detailing the exceptions and limitations to contributory infringement.161 Finally, as part of this amendment, Congress should also consider introducing a “safe harbor” provision for intermediaries as part the Lanham Act. This provision could be modelled after the safe harbor provision that was adopted as part of the Digital Millennium Copyright Act (“DMCA”).162 In particular, it should detail the measures that intermediaries should observe, or create a system of “notice-and-takedown” that intermediaries could implement to avoid claims of contributory trademark infringement. Even though the DMCA, and the safe harbor provision, have been criticized, the safe harbor provision represents an important mechanism for intermediaries to prove compliance with the DMCA and thus likely exclude copyright infringement.163 Introducing a similar provision into the Lanham Act could offer intermediaries a greater level of certainty in conducting their activities from a contributory trademark liability perspective.