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Chapter 2
mentality used by a third party to infringe’ [Plaintiffs’] marks.” 125 Therefore, the court held the
TradeKey defendants contributorily liable for counterfeiting and trademark infringement.
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(2) Vicarious Trademark Infringement
Vicarious liability for trademark infringement requires “‘a finding that the defendant and the
infringer have an apparent or actual partnership, have authority to bind one another in transactions
with third parties or exercise joint ownership or control over the infringing product.’” 126
As courts have held, the control must be with respect to the infringing product. In Rosetta Stone,
the Fourth Circuit held that evidence that “Google jointly controls the appearance of the ads or
sponsored links on Google’s search-engine results page” is “not evidence, however, that Google
acts jointly with any of the advertisers to control the counterfeit ROSETTA STONE products.” 127
Furthermore, as the Ninth Circuit held in Perfect 10, Inc. v. Visa Intern. Service Ass’n, enabling a
transaction for an infringing product likewise is insufficient to satisfy the vicarious standard.
There, the plaintiffs argued that the defendants and the infringing websites were “in a symbiotic
financial partnership pursuant to which the websites operate their businesses according to defendants’
rules and regulations and defendants share the profits, transaction by transaction.” 128 The
Ninth Circuit held that there was no evidence of vicarious infringement, stating that “Defendants
process payments to these websites and collect their usual processing fees, nothing more.” 129
As with the inducement context, evidence satisfying the vicarious standard is not readily apparent
for many major commercial intermediaries.
D. Practical and Legal Challenges to Suing Predatory Foreign Websites
There are practical and legal obstacles to bringing actions against the operators of Predatory
Foreign Websites.
First, Predatory Foreign Websites are typically hosted on servers located overseas and their operators
may go to great lengths to mask their identities, 130 making it hard for copyright and trademark
owners to track down and bring claims against them. As the Registrar of Copyrights noted in recent
testimony before the House Committee on the Judiciary, “unlike traditional brick-and-mortar
infringers, rogue website operators can be extremely difficult to identify or locate, especially if
they are based outside the United States. As a result, pursuing them can be hopelessly frustrating
for copyright owners and law enforcement agencies alike . . . .” 131 This concern equally applies in
the trademark counterfeiting context.
Moreover, even if the location and identity of a Predatory Foreign Website operator could be
determined, there are legal challenges to filing suit against them in the U.S. It may be difficult, for
example, to establish personal jurisdiction over the site. Courts have held that the “‘sheer availability’
of allegedly infringing video files” on a foreign website is “insufficient to support [personal]
jurisdiction” where the “files were uploaded by unsolicited” users “acting unilaterally and
were equally available to all other . . . users regardless of their location.” 132
Where personal jurisdiction has been exercised over foreign sites hosting and distributing infringing
content, the sites typically have engaged in some additional conduct targeting the forum state,
such as selling advertisements to companies located within the state, promoting the site on statebased
websites, or offering paid subscription services to users in the state. 133 And even if a court
would find personal jurisdiction to exist over the operator of a Predatory Foreign Website, the
operator in all likelihood would not appear in an action in U.S. court and subject itself to jurisdiction,
default, and would be beyond the effective reach of any judgment or order the court could
issue.