Wednesday, September 18, 2013

Contributory Trademark Infringement Claims on Summary Judgment

In the context of a plaintiffs’ motion for summary judgment on contributory infringement claims, denial is particularly appropriate where there are disputed facts and inferences regarding the ability of a “marketplace” to monitor and control the activities of third party alleged counterfeiters based on the size of the marketplace, “number of security personnel, the alleged scope of the infringing activity” as a portion of the marketplace, and the defendants’ ability to identify infringing products. Adobe Sys. Inc. v. Canus Prods., Inc., 173 F. Supp. 2d 1044, 1053-55 (C.D. Cal. 2001) (applying Fonovisa v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996) to deny summary judgment for contributory infringement claim against trade show promoter that did “not possess the practical right and ability to control the sale of infringing products”).  Denial of summary judgment on such a contributory claim is all the more appropriate because “amount of control necessary to support a finding of [contributory] liability is fact-specific.” Canus, 173 F. Supp. 2d at 1053 
Trademark infringement defense attorneys would be well-advised to study the Canus case and apply it in opposition to plaintiff summary judgment motions.

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