April 1, 2010 (Mountain View, CA) - Sally Abel, partner and Chair of the Trademark Group at Fenwick & West LLP, was recently quoted in the Reuters article "U.S. appeals court rules for eBay in Tiffany spat."
In a U.S. appeals court ruling, it was deemed that eBay Inc. did not engage in trademark infringement and dilution by selling counterfeit Tiffany & Co goods on its website. Tiffany accused eBay of false advertising because its website touted Tiffany goods, but many of them were actually counterfeit. The appeals court disagreed with the finding of the district court that eBay's ads were not likely to confuse consumers.
The court signaled that eBay met its responsibilities in its partnership with brand holders, said Sally Abel, who was not a party in the case.
"It's a win for e-commerce," said Abel, adding that the ruling helps define "the need for the online marketplace to have rules and to protect trademark rights up to a point—but only up to that point."
The case over Tiffany's claims began in 2004 and was seen as a major challenge in the United States to the freedom of Web companies from eBay to Google Inc. After a week long bench trial in late 2007 before the U.S. District Court, Judge Richard Sullivan ruled in July 2008 that eBay was not liable for trademark infringement by allowing fake Tiffany goods to be sold on the website by individuals. Tiffany appealed to the higher court.
In 2009, oral arguments were heard by a panel of judges on the U.S. Court of Appeals for the 2nd Circuit in New York, which ruled that eBay and others have "a strong incentive to minimize the counterfeit goods sold on their websites." Tiffany argued that if eBay were not held liable except when infringing items are brought to its attention, it will have no incentive to stop the sale of counterfeits.
Tiffany has stated it would consider an appeal to the U.S. Supreme Court. eBay criticized the use of courts to settle these issues, saying "we continue to support cooperation, rather than litigation."
The case is Tiffany & Co v eBay Inc, U.S. Court of Appeals for the 2nd Circuit in New York, No. 08-3947.
The article can be read in its entirety on the Reuters website.