Recommended Reading: Coleman and Price, Secondary Trademark Infringement
Jane Coleman's online treatise has now evolved into a book published by Bloomberg BNA, and co-authored by Ms. Coleman and Griffith B. Price, Jr., entitled Secondary Trademark Infringement. [Read more and purchase it here]. Coleman's blog, also called "Secondary Trademark Infringement," may be found here. [Back in 2009, I recommended her blog in this post].
As we know, secondary liability for trademark infringement means that someone other than the direct infringer may be held liable for infringement. The Lanham Act does not directly address claims of secondary liability. The doctrine has evolved as courts applied common law principles in various contexts. A large part of current contributory liability doctrine has grown of out of "flea market" cases, where the courts first extended contributory trademark infringement beyond the "supplies a product" context to flea market owners and operators whose vendors sold counterfeits products.
Secondary trademark infringement may take either of two forms: contributory or vicarious. Contributory liability was solidly established by the Supreme Court in Inwood Labs, Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982). Vicarious liability employs the same principles in the agency context.
Coleman and Price cover it all, from the development and evolution of the doctrine to its application to flea markets, landlords, franchisors and franchisees, credit card companies, and the Internet. The book is dividend into five Parts: I. Introduction; II. Contributory Trademark Infringement; III. The Expansion of the Inwood Labs Standard to the Service-Provider Context; IV. Vicarious Trademark Infringement; and V. Remedies. A list of the chapter headings reflects the comprehensive scope of the work.
- The Problem of Secondary Trademark Infringement
- Contributory Liability Doctrine
- The Elements of Contributory Liability Under Inwood Labs
- Contributory Liability for Other Forms of Trademark Infringement
- The Relationship between Secondary Trademark and Secondary Copyright Infringement Claims
- Introduction: Contributory Trademark Infringement in the Service-Provider Context
- Franchisors and Franchisees
- Trademark Infringement on the Internet
- Credit Card Companies and Related Services
- Vicarious Trademark Infringement
This well-researched and well-written treatise - the only treatise focusing on secondary trademark infringement - deserves a place on your trademark library shelf.
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Text Copyright John L. Welch 2014.