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15.19 Derivative Liability—Contributory Infringement

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15.19 DERIVATIVE LIABILITY–CONTRIBUTORY INFRINGEMENT

A person is liable for trademark infringement by another if the person [sells] [supplies] goods to another knowing or having reason to know that the other person will use the goods to infringe the plaintiff’s trademark.

The plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. the defendant [sold] [supplied] goods to [name of direct infringer];

2. [name of direct infringer] used the goods the defendant [sold] [supplied] to infringe the plaintiff’s trademark;

3. the defendant knew or should have known [name of direct infringer] would use the goods to infringe the plaintiff’s trademark; and

4. the plaintiff was damaged by the infringement.

If you find that each of the elements on which the plaintiff has the burden of proof has been proved, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant.

Comment

This instruction should be modified when the case does not involve the provision of a product. See Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984-85 (9th Cir.1999) (Internet address registrar’s publication of a web domain name was not contributing to infringement of plaintiff’s mark where defendant does not supply or sell the infringer goods or products, "we consider the extent of control exercised by the defendant over the third party’s means of infringement. . . Direct control and monitoring of the instrumentality used by a third party to infringe" permits treatment of a defendant who provides a service, for instance, liable for contributory infringement); Hard Rock Café Licensing Corp. v. Concession Servs., 955 F.2d 1143, 1148 (7th Cir.1992) ("[I]t is not clear how the doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else. A temporary help service, for example, might not be liable if it furnished ... the workers (the direct infringer) employed to erect his stand, even if the help service knew that (the direct infringer) would sell counterfeit goods.").

See Comment following Instruction 15.18 (Derivative Liability—Inducing Infringement). See 4 J. Thomas McCarthy, Trademarks And Unfair Competition § 25.17 (4th ed. 2001) (discussion of contributory infringement).

Regarding the elements of contributory infringement, see Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984-85 (9th Cir.1999) (elements of contributory infringement); Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 712-13 (9th Cir.1999) (intent element of contributory infringement). See also Mini Maid Servs. Co. v. Maid Brigade Sys., 967 F.2d 1516, 1521 (11th Cir.1992) (although Inwood Laboratories v. Ives Laboratories, Inc., 456 U.S. 844 (1982), involved relationship between manufacturers and retailers, its analysis is equally applicable to relationship between franchisor and franchisees).