Lack of platform liability means brands seek injunctive relief

2. Have you pursued or defended secondary trademark infringement claims against an e-commerce platform, online third-party marketplace, or other online third-party intermediary where the claim was that the intermediary facilitated the sale of counterfeit goods, including counterfeit goods offered by a third-party seller? If so, what challenges did you face in pursuing or defending these claims under a secondary infringement theory, and what was the result?

We have not directly pursued such claims against e-commerce platforms, in light of the high bar for prevailing under the Tiffany standard. Because of this, we generally advise members and clients to consider pursuing no-fault injunctive relief through which the platform or other third parties (such as payment processors) will shut down seller accounts and any assets they control in relation to counterfeit or other infringing goods.

3. If you have chosen not to pursue a potential claim or defend against a claim for secondary trademark infringement against an e-commerce platform, online third-party marketplace, or other online third-party intermediary for reasons related to the current interpretation of the doctrine of secondary infringement, please explain how your decision-making was affected by the state of the law and how a different interpretation might have led to a different decision.

See our response above. Because the bar under Tiffany for prevailing in secondary infringement claims against platforms is so high, many brand owners, including our members, have been deterred from bringing liability claims against online platforms for the sale of counterfeit goods by third parties. Instead, most suits are brought against individual sellers seeking injunctive relief and damages, if the seller is subject to US jurisdiction. If the seller is not subject to US jurisdiction, adequate relief is generally beyond reach for most brand owners. Even if some limited relief is achieved, most bad actors will simply resume their activities through alternative pseudonyms leading to an endless game of whack-a-mole.