cyckV4

Contributory Infringement 207
an unwholesome or unsavory context likely to evoke unflattering thoughts about the
owner’s product.” Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994).
New York State law also “provide[s] for protection against both dilution by
blurring and tarnishment.” Starbucks Corp., 588 F.3d at 114; see N.Y. Gen. Bus. Law
§ 360-l. The state law is not identical to the federal one, however. New York “does not[,
for example,] require a mark to be ‘famous’ for protection against dilution to apply.”
Starbucks Corp., 588 F.3d at 114. Nor are the factors used to determine whether blurring
has occurred the same. “Most important to the distinction here, New York law does not
permit a dilution claim unless the marks are ‘substantially’ similar.”
B. Discussion
The district court rejected Tiffany’s dilution by blurring claim on the ground that
“eBay never used the TIFFANY Marks in an effort to create an association with its own
product, but instead, used the marks directly to advertise and identify the availability of
authentic Tiffany merchandise on the eBay website.” The court concluded that “just as
the dilution by blurring claim fails because eBay has never used the [Tiffany] Marks to
refer to eBay’s own product, the dilution by tarnishment claim also fails.”
We agree. There is no second mark or product at issue here to blur with or to tarnish
“Tiffany.”
Tiffany argues that counterfeiting dilutes the value of its product. Perhaps. But
insofar as eBay did not itself sell the goods at issue, it did not itself engage in dilution.
Tiffany argued unsuccessfully to the district court that eBay was liable for
contributory dilution. Assuming without deciding that such a cause of action exists, the
court concluded that the claim would fail for the same reasons Tiffany’s contributory
trademark infringement claim failed. Tiffany does not contest this conclusion on appeal.
We therefore do not address it.
IV. False Advertising
[The court remanded to the District Court on the issue of whether the eBay’s
advertising implied to a reasonable consumer that the Tiffany products on eBay were
genuine.]
CONCLUSION
For the foregoing reasons, we affirm the judgment of the district court with respect
to the claims of trademark infringement and dilution. . . . [W]e return the cause to the
district court for further proceedings with respect to Tiffany’s false advertising claim.