Tiffany, Inc. v. eBay, Inc.: Justice White's Outdated Guide to Trademark Infringement Will Likely Result in Appeals

Abstract

Hidden identities, counterfeit jewelry, and trademark infringement — you can find almost anything, including a lawsuit, on eBay, the Internet auction house giant. Tiffany Inc. and Tiffany and Company (Tiffany) filed suit against eBay in 2004, alleging that the defendant eBay, inter alia, was liable for contributory infringement of Tiffany’s trademark. EBay had advertised Tiffany goods on its Web site before 2003, and had advised its sellers “to take advantage of the demand for Tiffany merchandise” as “Tiffany” was a highly used search term. Tiffany sent letters to eBay complaining that eBay’s dealers were infringing Tiffany’s trademark and notifying eBay that there were no authorized third-party sellers of Tiffany goods. After Tiffany’s efforts to sue individual infringers on eBay failed, Tiffany sued eBay for facilitating the direct infringers’ activities as eBay earned $4.1 million off of items listed as Tiffany between April 2000 and June 2004.

EBay objected to Tiffany’s allegations despite conceding that 30% or more of the jewelry listed as Tiffany was counterfeit. EBay relied on its attempts to prevent fraud through its Fraud Engine and the Verified Rights Owner (VeRO) program where trademark owners would submit a Notice of Claimed Infringement (NOCI) form. EBay argued that it did not have specific knowledge of infringement, and once Tiffany notified eBay of specific infringement through the VeRO program, eBay promptly removed the infringing product.

This comment reviews the court's handling of Tiffany's federal and state claims of contributory trademark infringement and evaluates the significance and repercussions of the court's holding.

Keywords: Tiffany, eBay, Trademark, Infringement, Contributory Infringement, Justice White