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Civil Remedies
trademark owner, Tiffany, whose mark was being used by jewelry counterfeiters on eBay’s site. 111
The record at trial in that case contained evidence “demonstrat[ing] that eBay had generalized
notice that some portion of the Tiffany goods sold on its website might be counterfeit,” having
received “thousands of [Notice of Claimed Infringement Forms] [Tiffany] filed with eBay alleging .
. . that certain listings were counterfeit.” 112 The Second Circuit held that such evidence was insufficient
to satisfy the “knows or has reason to know” requirement and that Tiffany “would have to
show that eBay knew or had reason to know of specific instances of actual infringement beyond
those that it addressed upon learning of them.” 113 The Second Circuit noted, however, that had there
been evidence of willful blindness, that would have satisfied this standard. 114 “[C]ontributory
liability may arise where a defendant is (as was eBay here) made aware that there was infringement
on its site but (unlike eBay here) ignored that fact.” 115
Indeed, failure to remove infringing websites in response to notices may result in liability for intermediaries.
In Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 116 the defendants were U.S.-based
web hosting services primarily servicing Chinese customers, some of whom advertised and sold
counterfeit goods, including counterfeits of Louis Vuitton, to a U.S. and global consumer base. Louis
Vuitton sent copyright and trademark takedown notices to the defendants, some of which they
ignored. Louis Vuitton sued for direct and secondary copyright and trademark infringement, alleging
that the defendants “had actual knowledge of the websites’ activities,” “knowingly avoided learning
the full extent of the infringing activities and deliberately disregarded Louis Vuitton’s notifications,”
and “knowingly enabled the infringing conduct by hosting the websites and willfully permitting
websites to display the products.” 117 The case went to trial and the jury returned a verdict for Louis
Vuitton, holding the defendants liable for willful contributory infringement of Louis Vuitton’s
trademarks and copyrights. On appeal, the defendants argued that the court’s jury instructions for
contributory trademark infringement “failed to distinguish between the servers or services provided
by [defendants] and the websites maintained by [defendants’] customers.” 118
The Ninth Circuit rejected this argument, stating that the defendants “physically host websites on
their servers and route internet traffic to and from those websites” and defendants “had direct
control over the ‘master switch’ that kept the websites online and available.” 119 The Ninth Circuit
further rejected the argument that contributory infringement had to be intentional, holding that a
plaintiff must only prove that “defendants provided their services with actual or constructive
knowledge that the users of their services were engaging in trademark infringement . . . . An express
finding of intent is not required.” 120
In Chloe SAS v. Sawabeh Info. Svcs. Co., 121 several luxury brands sued 18 individuals who sold
counterfeit versions of the plaintiffs’ trademarked goods and a group of foreign-based internet
companies that promoted and facilitated the sale of the counterfeit goods through several websites,
including www.TradeKey.com. The court found that the sale of counterfeit goods was a large
component of TradeKey’s business, as evidenced by the “Replica Products” and “Replica Retention”
divisions of TradeKey’s sales department, and TradeKey keyword reports for fake branded
products. 122 According to the decision, the counterfeiting occurred on a large scale, as TradeKey
solicited wholesale buyers and distributors worldwide to become paying premium members of
TradeKey.com. 123 The court agreed with plaintiffs that they “have established through uncontroverted
evidence both the necessary predicate of underlying direct counterfeiting by TradeKey
Members, and TradeKey Defendants[’] contributory liability for the direct counterfeiting occurring
on their website at TradeKey.com.” 124 In particular, the court found that (1) TradeKey Members
offered for sale counterfeit versions of plaintiffs’ trademarked products; and that (2) TradeKey
“continued to supply [their] services to one who [they] knew or had reason to know was engaging
in trademark infringement;” and (3) TradeKey “had ‘[d]irect control and monitoring of the instru-
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