Copyright, Trademark and Secondary Liability after Grokster

26 Pages Posted: 19 Jan 2009 Last revised: 26 May 2014

Mark Bartholomew

SUNY Buffalo Law School

Abstract

Even though secondary infringement doctrine in both copyright and trademark stems from the same common law starting points, the doctrines have moved in very different directions, particularly in the last decade. As copyright litigants expanded their litigation strategy to include online intermediaries, secondary copyright liability was stretched to encompass a wider array of defendants with increasingly tangential relationships to the direct infringer. Meanwhile, even though similar online threats jeopardized the ability of trademark holders to safeguard their brands' goodwill, courts refused to implement a similar expansion for secondary trademark liability. Although courts are aware of this doctrinal double standard, they offer no explanation for it. This article tries to provide that explanation by chronicling the case law in this area since the Supreme Court's decision in MGM Studios v. Grokster (a previous article traced the case law up to the Grokster decision) and comparing it to traditional rationales for imposing liability on indirect actors. The article speculates that the divergence in secondary liability standards owes more to the litigation and public relations strategies of copyright interests than obeisance to deep rooted common law principles.

Keywords: copyright, trademark, secondary, indirect, vicarious, contributory, grokster, ebay, perfect 10

Suggested Citation

Bartholomew, Mark, Copyright, Trademark and Secondary Liability after Grokster. Columbia Journal of Law & the Arts, Vol. 32, 2009; Buffalo Legal Studies Research Paper No. 2009-06. Available at SSRN: https://ssrn.com/abstract=1329058

Mark Bartholomew (Contact Author)

SUNY Buffalo Law School ( email )

528 O'Brian Hall
Buffalo, NY 14260-1100
United States
716-645-5959 (Phone)

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