Kernochan Center Symposium Explores Secondary Liability for Trademark Infringement Online

Daylong Conference Convenes Trademark Experts to Explore Best Means for Protecting Brands

New York, November 19, 2013—Leading global brands are utilizing tailored enforcement strategies and international, regional, and national laws to confront the rampant trademark infringement enabled by the Internet, said a multidisciplinary assortment of trademark and intellectual property experts at a Nov. 8 symposium at Columbia Law School.

Presented by the Kernochan Center for Law, Media and the Arts, the conference, Who’s Left Holding the [Brand Name] Bag? Secondary Liability for Trademark Infringement on the Internet, explored how trademark stakeholders have resorted to pursuing secondary liability for trademark infringement against online intermediaries since locating alleged direct infringers is so difficult. Unlike copyright infringement, where pirates often distribute protected content for free, trademark infringers typically seek to make a profit from illegal knock-offs.

Graeme Dinwoodie '00
Kernochan Center Executive Director June Besek and IP Fellow Yafit Lev-Aretz introduced keynote speaker Graeme Dinwoodie ’00 J.S.D., professor of intellectual property and information technology law at the University of Oxford. Dinwoodie contrasted EU and U.S. approaches to secondary liability for trademark infringement, highlighting the efficiency of using online intermediaries as “choke points” and shifting enforcement costs away from trademark holders. He warned, however, that a strict regulatory regime based on today’s Internet juggernauts could negatively impact competition and future online innovations.
“There’s a danger in constructing the legal framework around large companies like Ebay and Google without regard for different financial profiles of actors in the marketplace,” Dinwoodie said.
Columbia Law School Visiting Professor Édouard Treppoz, director of the Institute of Art and Cultural Law at the University of Lyon, discussed trademark holders’ uphill battle pursuing cross-border online infringement cases across numerous territorial jurisdictions.
“While the market has become global, the laws remain local, and the Internet has accelerated the trend,” Treppoz said. “Local protection of laws seems parochial, so people are looking to international standards so the scope of the laws matches the scope of the market, but that seems a long way off.”
Tom Rubin, chief intellectual property strategy counsel for Microsoft, detailed his company’s efforts to reduce infringers’ profits and encourage potential customers to legitimately purchase products. He argued courts have been largely successful handling infringement.
“In most cases the courts are getting it right—rewarding good behavior and punishing bad behavior,” Rubin said. “Just as stores hire guards, and offices buy alarms, people need to spend money to protect themselves online.”
In another session, Robert Weigel of Gibson Dunn spoke in favor of pursuing intermediaries—banks, in particular—that enable online trademark infringement.
The afternoon concluded with a discussion of proposed approaches to secondary liability for trademark infringement moderated by Jane Ginsburg, Morton L. Janklow Professor of Literary and Artistic Property Law at Columbia Law School and faculty director of the Kernochan Center. The conversation included experts from academia, government, and professional practice.
Professor Jane Ginsburg, June Besek, and Philippa Loengard

The symposium was organized by Besek, Kernochan Center Assistant Director Philippa Loengard, and Lev-Aretz, and co-sponsored by the Kernochan Center and the Columbia Journal of Law and the Arts.