United States: And The Winner Is? Digital Platform Liability For Trademark Infringement

Much has been made of the question of liability for the operation or furnishing of digital platforms in the copyright context. Since the U.S. Supreme Court ruling that the provider of the Betamax recorder did not itself infringe copyright in the movies some users illegally copied on it (because the Betamax was capable of substantial non-infringing uses), courts have struggled with the extent to which developers of new technologies, services, or business models that may facilitate copyright infringement cross or don't cross the direct infringement, contributory infringement, or vicarious liability line. It was against this background, and, of course, in the new digital age, that Congress enacted the Digital Millennium Copyright Act (DMCA), providing digital platform providers a safe harbor against most remedies so long as they comply with delineated takedown procedures for challenged content on their sites and meet other conditions.

Trademark law has lagged behind copyright in this context, and there is no equivalent to the safe harbor and notice and takedown process of the DMCA. But, as is typical of jurisprudential development involving the birth and evolution of disruptive new industries, case law develops over time – though not as quickly as some litigants and enterprises might like – ultimately proving guideposts for what is permissible behavior and what crosses the line. Not surprisingly, this organic progression is now evident in connection with trademarks and digital platform liability.

At this writing, the court has just heard closing argument in Academy of Motion Picture Arts and Sciences (AMPAS) v. GoDaddy, a five year old case challenging domain registrar GoDaddy's practice of essentially turning a blind eye to registration of arguably infringing domains, which were then "parked" by the registrants who benefited financially from advertisements displayed on the sites (GoDaddy receiving a small fraction of the purportedly misdirected advertising revenue). At issue is whether GoDaddy's behavior violates the Anticybersquatting Consumer Protection Act (ACPA), federal law intended to prevent cyberpiracy of domain names (15 U.S. C. §1125(d)).

In facilitating the registration and parking of over 200 domain names, each in some way playing off of the Academy Awards (i.e., 2011oscars.com, each in some way playing off of the Academy Awards (i.e., 2011oscars.com, betacademyawards.com), did GoDaddy demonstrate the requisite "bad faith intent to profit" from AMPAS' marks when it registered domains that were confusingly similar to those marks? By the time you read this, the case may have been decided and could be headed for appeal. A win for the Academy would shake up the domain industry – AMPAS has asked for U.S. $30 million in statutory damages – while a win for GoDaddy would signal business as usual. But, regardless of which side wins, the case will add to the growing, if not entirely consistent jurisprudence on platform liability for brand "infringement".

The definitive case in the area is Tiffany, Inc. v. eBay, Inc., 600 F. 3d 93 (2d Cir. 2010), where the court blessed eBay's homegrown takedown policy, holding that Tiffany had an affirmative duty to notify eBay of specific alleged infringements (counterfeit jewelry) on eBay's auction site before eBay was required to act, and eBay was not liable for infringement, either direct or contributory, so long as eBay took down the challenged auction within a reasonable period of time. In closing argument in the AMPAS trial, the Academy's counsel acknowledged that, like eBay, domain registrars may be entitled to safe harbor protection, but GoDaddy crossed the line by monetizing domains via parking services, a scheme which he condemned as "overwhelming evidence of bad faith" under the ACPA.

Platform liability was also at the heart of the flurry of keyword cases over the past decade, culminating in Rosetta Stone v. Google, 676 F.3d 144 (4th Cir. 2012). In that case, the district court had ruled that summary judgment for Google was proper on direct and contributory infringement claims, because Google's use of the brand (the keyword) was essentially functional and therefore there could be no consumer confusion. On appeal, the 4th Circuit reversed, holding that there was sufficient evidence, essentially overlooked by the lower court, such as Google's trademark-specific keyword suggestion tool and the fact that Google could have done more to block serial counterfeiters of Rosetta Stone software from engaging in keyword advertising, to suggest that Google could be liable for both direct and contributory infringement, but not for vicarious infringement. The case settled, so these platform liability issues, not entirely unlike those before the AMPAS court today, or previously before theTiffany court, were never fully resolved.

Beyond domain names and keyword advertising, we now see the issue playing out, on both sides of the pond, in the context of internal website search engines. Last month, the 9th Circuit reversed summary judgment for Amazon inMulti Time Machine, Inc. v. Amazon.com, Inc., 13-55575 (9th Cir. 2015). Multi Time Machine, whose MTM military-style watches were not sold on the Amazon platform, took issue with the fact that searching "MTM" on Amazon delivered search results for arguably competing watches. The lower court found for Amazon, on the basis that the search results clearly identified the watches displayed so there was no potential for consumer confusion. Splitting 2-1, the Ninth Circuit disagreed, holding that summary judgment was improper because there was enough evidence to suggest consumers could be confused based on initial interest confusion.

The Ninth Circuit's decision is consistent with the UK High Court's 2014 decision in Cosmetic Warriors Ltd. v. Amazon.co.uk Ltd., [2014] EWHC 181 (Ch), where a shopper searching for "lush" on the site would encounter multiple references to Cosmetic Warriors' LUSH mark for bath bombs and soaps, and competitive products, but none of plaintiff's products. In fact, Cosmetic Warriors actually shunned the Amazon platform because it disagreed with Amazon's business practices. The Court concluded that the average consumer would think LUSH products were, in fact, sold on the site, and that Amazon did not avoid liability simply because it provided a marketplace bringing buyers and sellers together and not engaging in the transactions itself.

Cosmetic Warriors celebrated its win by threatening to market a shower gel named after the head of the Amazon UK operation; Cosmetic Warriors described the gel as "rich, thick and full of it". Though the issue of platform liability for trademark infringement is far from being fully resolved, it is heartening to see that humor continues to play a key role in development of the relevant law, a tradition honed from the early days of the domain wars when Princeton Review offered to return the kaplan.com domain to its erstwhile competitor, Kaplan, for a case of beer.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
18 Oct 2017, Conference, California, United States

This three-day program will focus on the tax issues presented by the entire spectrum of modern major corporate transactions, from relatively simple single-buyer acquisitions of a division or subsidiary to multi-party joint ventures, cross-border mergers, and complex acquisitions of public companies with domestic and foreign operations, including spin-offs and other dispositions of unwanted operations.

19 Oct 2017, Conference, California, United States

Privacy professionals are facing a number of challenges in determining how best to achieve GDPR compliance and maintain compliance for the long term. The Alliance of Global Privacy Solution Providers (the "Alliance") has been formed with a mandate to educate privacy professionals on making informed decisions on their approach to planning, implementing and managing GDPR and long-term privacy compliance.

30 Oct 2017, Seminar, California, United States

This program will address some of the hottest legal and policy topics that online platforms have brought to the fore: free speech, hate speech, fake news, privacy and surveillance, artificial intelligence, augmented reality, changing notions of “ownership” of information and software-enabled consumer products, and the perennial issue of copyright.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.