Tiffany v. eBay – Transnational Trademark Problems?

by Jeff Liu , MTTLR Associate Editor

Last summer, a federal district court ruled, in Tiffany v. Ebay, that online marketplace eBay was not liable under trademark and unfair competition law for facilitating the sale of counterfeit items on its website. The court noted that it is a “Trademark owner’s burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring.” Some U.S.-based commentators praised the decision; others were somewhat more critical. Few, however, commented on the way this decision has the potential to the put the U.S. directly at odds with several key European Union countries on contributory liability for trademark violations.

While this decision represents a victory for eBay and other online marketplaces in the United States, courts in other countries have shown less sympathy for eBay. Especially in European jurisdictions decisions have tilted in support of trademark holders rather than the operator(s) of online marketplaces. Several judicial decisions handed down by countries in the European are opposite to the decision handed down in Tiffany Inc. Two important decisions highlight the conflict at hand. On June 30, 2008, a French court ordered eBay to pay 61 million dollars in compensation to LVHM for allowing the sale of fake merchandise on its website. Just a month earlier, another French court had ordered eBay to pay Hermes a compensation of 20,000 Euros for the sale of counterfeit merchandise on its website. And both of these decisions come in light of decision by a German appeals court in April, 2008 against eBay on the same issue. The German appeals court ruled eBay had to take preventive measures against the sale of fake Rolexes on its website. Both the French and German courts seem to have taken the position that eBay has a responsibility to prevent the sale of counterfeit goods on its website, but the U.S. court has taken the opposite position, that the burden falls onto the holder of the trademark. In an increasingly global marketplace, this conflict will have to be resolved.

DIY Campaign

by: Nancy Sims, MTTLR Blog Editor

The McCain campaign's visual themes (i.e. the Optimum typeface, his simple star logo) have drawn positive comments for the strength and military experience they convey. But many commentators agree that the Obama "O" logo is a radical political innovation: "probably the only political campaign logo to have a visual theme in it", "[a] true logo, one that is recognizable apart from the candidate's name" and "the first sophisticated corporate-style identity to emerge from presidential politics", "signals by design that Obama has a different message", "perhaps one of the few conceptual logos in the history of presidential elections", "[c]learly not the old standards of years past."A few have pointed out that the Bush 2004 campaign's "W" logo was similarly identifiable, but it did not convey the same level of conceptual information.

The "O" logo has been criticized as derivative of other logos, (although the same criticism has been leveled with similar plausibility at the McCain logo.) For any number of possible reasons (its innovation, its visual impact, its simplicity, basic political demographics) the "O" logo has become a favorite new theme of makers, hackers, crafters and other habitues of the DIY/maker/remix culture. (In an attempt to keep this post politically neutral, I searched extensively for McCain remixes. The closest match I found were these commercially available McCain logo cookies.) Despite plausible copyright and trademark claims to the art and product-identifying use of the logo, unauthorized reinterpretations have rapidly proliferated.

(For all of the following examples, click the thumbnail to see the image in its original context.)

It's popular in food (particularly cookies):

CC-licensed by-nc-sa
	CC-licensed by-nc-sa	CC-licensed by-nc

Knitters and other textile and fabric crafters have also interpreted the logo:

	CC-licensed by-nc-nd

Several artisans have made their own "O" products:

CC-licensed by-nc-nd

Finally, a few of the reinterpreted "O" logos defy categorization. They include:

The Penn State S-Zone is transformed into the O-Zone: CC-licensed by

A bicycle wheel is transformed into a glowing "O":

A pregnant supporter displays her own "O" logo:

Additionally, the logo seems clearly a motivating factor for the Barack O-Lanterns of non-campaign-affiliated Yes We Carve and other Obama O'Lanterns.

It is interesting to note all the different claims people are making as to "ownership" of their logo-derivatives. A number of images are Creative Commons licensed, but with varying levels of control asserted (from the very loose "attribution" license, to the more restrictive "attribution-noncommercial-noderivatives" license.) Several of the images on Flickr also display the traditional "all rights reserved" language, but since this is the Flickr default, it doesn't necessarily mean a great deal. The creators of both the necklace and the earrings have their derivative images for sale on craft website Etsy - almost certainly a commercial use, although the necklace maker claims to be donating to the Obama campaign with every sale.

In the midst of an intense political campaign, the Obama camp's interests may, in many ways, be opposite from those of most trademark and copyright owners. It is in the campaign's interest for the mark to be distributed widely. Although using the language of trademarks - the Obama website refers to the "'O' Logomark" - this distinctive image does not appear to have been registered with the PTO (a TESS search for "obama" yielded 38 results, none of which appeared to be for this image.) In fact, they make the image freely downloadable in a variety of formats from the campaign website.

Given the limited utility of the mark once the election is over, there is little incentive for the campaign to police others' uses of the mark, be they positive or negative. Without anyone having directly dedicated the "O" mark to the public domain, it appears to have become de facto public property.