The Experts below are selected from a list of 1422 Experts worldwide ranked by ideXlab platform

Katja Weckstrom - One of the best experts on this subject based on the ideXlab platform.

  • liability for Trademark Infringement for internet service providers
    Marquette intellectual property law review, 2012
    Co-Authors: Katja Weckstrom
    Abstract:

    I. Introduction II. ISPs in Action A. ISPs in the Market Context B. online Auction Sites: eBay C. Search Engines: Google III. LEGISLATIVE BASIS A. The E-Commerce Directive B. European Trademark Law 1. Harmonization in Practice: Trademark-Specific Legislation 2. Harmonization in Practice: General Rules That Apply to Trademarks C. Summary IV. THE CONFLICT IN PRACTICE: THREE APPROACHES A. Property Rules and Contributory Infringement B. Liability Rules: Duty to Act C. Liability Rules and Safe Harbors V. Analysis and Proposals A. Liability for ISPs 1. Intellectual Property Rights and Trademark Protection 2. Protecting Trademarks With Property or Liability Rules 3. Protecting ISPs With Property or Liability Rules B. Pooling Resources and Enhancing Cooperation VI. Conclusion I. Introduction The rise of the internet made two things apparent: (1) borderless, wireless, and classless communication challenges traditional societal and legislative structures; and (2) the advantages of the internet also benefit criminal actors and organized crime, and disproportionally so when legislation lags behind. (1) It is commonly known that members of organized crime groups use both technological hijacking of personal computers as well as ISPs to further their own goals. ISPs may serve as mere [technological] conduits of data, but nonetheless allow illegal activity. In addition, ISPs may also serve as hosts of illegal material or allow illegal transactions on their sites. Unlike in the case of copyright piracy, there are no sites or ISPs that trade exclusively in counterfeit goods. Instead, fake goods are mixed with legitimate trade in the primary or secondary markets. Illegitimate trade, by which Trademarks are exploited, are commonly referred to as Trademark piracy and Trademark counterfeiting. The World Intellectual Property Organization, WIPO, defines Trademark piracy as "the registration or use of a generally well-known foreign Trademark that is not registered in the country or is invalid as a result of non-use."2 Trademark piracy targets the Trademark itself and hijacks the Trademark's value in order to sell the pirate's own products. (3) Article 6bis of the Paris Convention offers a remedy for holders of globally well-known marks who are victims of Trademark piracy and allows them to prevent registration and use of identical or similar marks for identical or similar products, despite the mark not being used or registered in the country in question. (4) Counterfeiting, a second form of illegitimate trade, can be defined as "the unlawful forgery, copying, or imitation of an item, ... or the unauthorized possession of such an item, with the intent to deceive or defraud by claiming or passing the item as genuine." (5) While Trademark counterfeiting often involves copying of the Trademark itself, the primary object of copying is the product that is sold under a particular brand. (6) An element of deceit is present because the goal of the counterfeiter is to tap into the market of the brand and, to some extent, pass off the fakes as the real merchandise. (7) Unlike traditional Trademark Infringement and Trademark dilution, which are sanctioned by civil remedies, Trademark counterfeiting and piracy are universally criminally sanctioned. (8) For purposes of discussion in this article, reference to illegitimate trade refers solely to instances of Trademark counterfeiting. Illegal trade such as the buying, selling, soliciting, or trading in material depicting child pornography is relatively easy to deal with in legislative terms, although enforcement in practice remains difficult. Infringement of Trademark rights presents a more difficult legal conundrum because the sale of counterfeit goods is criminalized, but buying counterfeit goods may not be. …

  • secondary liability for Trademark Infringement in the united states
    2011
    Co-Authors: Katja Weckstrom
    Abstract:

    The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications ("SCLT") of the World Intellectual Property Organization ("WIPO") adopted a Joint Recommendation on the protection of Trademarks on the Internet in 2001. It generally stated that there must be liability for uses of a sign on the Internet, but at the same time countries must apply the exceptions to liability and the limitations to the scope of the rights that exist under various national Trademark laws. In order for the use of a sign on the Internet to be infringing under Article 6 of the Joint Recommendation it must have commercial effect. The Joint Recommendation, does not specify any conditions for determining whether the use is infringing and does not address the issue of liability for Internet intermediaries. The SCLT met in November 2010 to discuss the revision and expansion of the Joint Recommendation. Of particular concern was the liability of Internet auction sites, search engines, and the hosts of virtual worlds and social networking sites. The WIPO Secretariat highlighted two legal questions, one of policy and one of passivity. The policy question centers around which party should bear the burden of policing the mark. While the WIPO Secretariat focuses on Internet auction sites, this question is relevant to all categories of Internet intermediaries. The same is true for the question of passivity; whether and when intermediaries can be liable for failure to act. This Article reviews the discussion in a sample of the relevant case law on these questions in the United States and argues that both questions should presumptively be resolved in favor of the Internet intermediary, unless the Trademark owner can overcome the high burden of proving a positive act directly attributable to the intermediary that amounts to contributory Infringement. This Article also highlights the problems involved in using technical ability or technical standards for deciding issues of contributory Trademark Infringement on the Internet. The WIPO Secretariat focuses on reasons why there should or should not be liability. Although focusing on the core issue is often advisable, this Article argues that such an approach oversimplifies an inherently complicated question, fixes a dynamic question into a static solution, and disconnects decision making from reality on the national level. On the other hand, overly fact-based decision making on this question fails on the same ground, since the key argument against liability for Internet intermediaries is neither intermediary-specific nor backward looking. Instead, decision making should reach a higher level of abstraction, i.e., consider the overall effects on the particular intermediary, the overall effect on the particular electronic market, and the analogous consequences of the ruling. After all, the Internet intermediary does not fail to act in relation to only one Trademark or one Trademark owner as an established duty to act favors all Trademarks and all Trademark owners. Only based on such a general inquiry may the decision maker reach the question of policy, and accurately reflect the societal counterweight to the vested interests of Trademark owners. Diminishing the question to one of whether Trademark use has occurred, whether there is commercial effect, or whether the intermediary has failed to act, inherently favors the Trademark owner and should not be disguised as deciding a question of policy and performing a legitimate weighing of the interests at hand.

  • Liability for Trademark Infringement for Internet Service Providers
    Marquette intellectual property law review, 2010
    Co-Authors: Katja Weckstrom
    Abstract:

    At the wake of the millennium and the rise of the internet, legislative action was taken to shelter internet service providers (ISPs) from various forms of legal action. In the turmoil of chartering new and unregulated territory, such a safe harbor was deemed necessary to protect up-starting businesses. Today, these internet actors e.g. Google, Amazon and eBay have grown strong and powerful. Thus, intellectual property holders have started to challenge this privilege in court. Increasingly, owners of famous marks seek liability and damages for direct and indirect Trademark Infringement in courts around the globe. I focus on liability for ISPs, when a third party sells counterfeit merchandise on the service provider’s site. Courts have reacted differently. Three theoretical approaches have emerged. One, e.g. some courts in France, imposes full liability for willful Trademark Infringement, if the sale of counterfeit goods is shown. Another, e.g. the German Federal Supreme Court, approaches the question as one of interference with property rights. If ISPs knowingly allow continued sale of counterfeit merchandise they can be found liable for damages. Yet another, e.g. in the United States, approaches the question from the perspective of what the ISP can reasonably be required to do in order to prevent the sale of counterfeit goods on their site. This article compares the approaches above and considers what possible other considerations are relevant in determining ISP liability. It argues that Trademark law today, is ill-equipped to handle questions of secondary liability or contributory Infringement and concludes that the safe harbor for ISPs, as tailored in the European E-Commerce Directive, should be given a broad reading and the prohibition against imposing a general duty to monitor or actively seek facts in Article 15 remain absolute until the defects are remedied. In response to Trademark owners’ legitimate concerns, it further argues that Trademark owners should pool their resources, akin to that of Copyright Collective Societies, and form an agency, which, by cooperating with – instead of forcing – ISPs, could more efficiently and legitimately weed out infringing uses on the internet.

Barton Beebe - One of the best experts on this subject based on the ideXlab platform.

  • an empirical study of the multifactor tests for Trademark Infringement
    California Law Review, 2006
    Co-Authors: Barton Beebe
    Abstract:

    The thirteen circuits’ thirteen different multifactor tests for the likelihood of consumer confusion have long played a role of central importance in American Trademark litigation, yet they have received little academic attention and no empirical analysis. Courts, commentators, and practitioners have all the while speculated about which factors, if any, drive the outcome of the tests, how the factors interact, and, most importantly, whether the circuits’ different tests, given the same facts, would yield different outcomes. With a view to the settling of these questions and ultimately to the reform of the multifactor tests, this Article sets forth the results of an empirical study of all reported federal district court opinions for the five-year period from 2000 to 2004 in which a multifactor test for the likelihood of consumer confusion was used. In the process, it presents the multifactor test for the likelihood of consumer confusion as an ideal case study in legal multifactor decision making and develops a methodology and theoretical toolkit for the study of this form of legal analysis across the many areas of law that employ multifactor tests. Working from an original data set of 331 opinions, this Article finds significant variation among the circuits in the application and outcome of their respective tests. Drawing upon recent social science learning on cognition and decision making, it further shows that judges employ “fast and frugal” heuristics to short-circuit the multifactor analysis. A few factors prove to be decisive; the rest are at best redundant and at worst irrelevant.

Sue Westcott Alessandri - One of the best experts on this subject based on the ideXlab platform.

Danielle M. Conway - One of the best experts on this subject based on the ideXlab platform.

  • Remedying Trademark Infringement: The Role of Bad Faith in Awarding an Accounting of Defendant’s Profits
    Santa Clara law review, 2002
    Co-Authors: Danielle M. Conway
    Abstract:

    The Trademark Act of 1946 (“Lanham Act”) has a recent history as a federal law enacted to protect the power of a Trademark from Infringement. One of the remedies for Infringement under the Lanham Act is disgorging the defendant’s profits. Unfortunately, federal courts have muddied the waters in determining when a Trademark owner will be entitled to an accounting of defendant’s profits as a remedy for Trademark Infringement. The judicially created limitation on the accounting of profits remedy appears in the form of a bad faith requirement. Although the Supreme Court appeared to render the definitive answer regarding whether bad faith is required for this remedy, nearly five decades of circuit and district court decisions have resulted in a schizophrenic view of the remedy of an accounting of profits and the bad faith requirement. This article proposes that Congress did not intend a bad faith requirement be met before an owner of an infringed mark is able to recover a defendant’s profits collected on the back of the infringed mark. This thesis, although seemingly simplistic, must travel a circuitous route through judicial precedent, statutory construction, and general empirical data to be proved.

  • remedying Trademark Infringement the role of bad faith in awarding an accounting of defendant s profits
    Santa Clara law review, 2002
    Co-Authors: Danielle M. Conway
    Abstract:

    The Trademark Act of 1946 (“Lanham Act”) has a recent history as a federal law enacted to protect the power of a Trademark from Infringement. One of the remedies for Infringement under the Lanham Act is disgorging the defendant’s profits. Unfortunately, federal courts have muddied the waters in determining when a Trademark owner will be entitled to an accounting of defendant’s profits as a remedy for Trademark Infringement. The judicially created limitation on the accounting of profits remedy appears in the form of a bad faith requirement. Although the Supreme Court appeared to render the definitive answer regarding whether bad faith is required for this remedy, nearly five decades of circuit and district court decisions have resulted in a schizophrenic view of the remedy of an accounting of profits and the bad faith requirement. This article proposes that Congress did not intend a bad faith requirement be met before an owner of an infringed mark is able to recover a defendant’s profits collected on the back of the infringed mark. This thesis, although seemingly simplistic, must travel a circuitous route through judicial precedent, statutory construction, and general empirical data to be proved.

Mark B Houston - One of the best experts on this subject based on the ideXlab platform.

  • hands off my brand the financial consequences of protecting brands through Trademark Infringement lawsuits
    Journal of Marketing, 2018
    Co-Authors: Larisa Ertekin, Alina Sorescu, Mark B Houston
    Abstract:

    AbstractWell-known brands are frequently imitated, misused, or tampered with. Firms facing these threats routinely turn to the legal system and file Trademark Infringement lawsuits in an attempt to prevent revenue losses and brand equity dilution. In this article, the authors address the largely unexplored issue of brand protection. First, they categorize all major types of Trademark Infringement. Second, using signaling and prospect theories, they present a conceptual model that outlines the financial consequences of defending a brand in court. The authors test the predictions of this framework using a large sample of Trademark Infringement lawsuits and find that although investors react negatively in the short term to firms’ filing and even to firms’ winning such cases, the long-term performance of firms that successfully leverage the legal system to protect their brands is positive.