The Lanham Act does not anywhere provide for secondary liability for trademark infringement. Rather, the language of the Act is directed solely at the direct infringers. Am. Tel. & Tel. Co. v. Winback and Conserve Program, Inc., 42 F.3d 1421, 1429 (3d Cir. 1994) (noting same). Specifically, §43(a) of the Lanham Act provides in pertinent part that:
[a]ny person who, on or in connection with any goods or services … uses in commerce any work, term name, symbol or device … or any false designation of origin, false or misleading representation of fact which … is likely to deceive as to the affiliation, connection or association of such person with another person, or as to origin, sponsorship or approval of his or her goods, services, or commercial activities by another person … shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a).
The anti-counterfeiting provisions in §32(1) of the Act are similarly silent as to secondary liability. That section provides:
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
15 U.S.C. § 1114(1). As noted by the court in Am. Tel. & Tel. Co., supra, by referring to “any person” who infringes on a plaintiff’s rights, the Act is silent as to the existence and scope of secondary liability. See Am. Tel. & Tel. Co., supra (referring specifically to vicarious liability).
Consequently, the notion that a party who does not himself infringe another’s trademark may nevertheless be indirectly liable for such infringement, under a theory of either contributory or vicarious liability, has evolved in the courts. See generally John T. Cross, “Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement,” 80 Iowa Law Rev. 101, 109-129 (1994). And see Tiffany v. eBay, 600 F.3d 93, 103-104 (2d Cir. 2010) (“[c]ontributory trademark infringement is a judicially created doctrine that derives from the common law of torts” ) , affirming in part and remanding in part, 576 F.Supp.2d 463, 502 (S.D.N.Y. 2008) cert denied, 131 S.Ct. 647 (2010)cert denied, 131 S.Ct. 647 (2010). Courts considering the scope of liability for trademark infringement under the Lanham Act have recognized that the Act is derived from the common law tort of unfair competition and concluded that it is therefore appropriate to analogize to common law tort principles. See Am. Tel. & Tel. Co., supra at 1433 (“The Act federalizes a common law tort.”), citing Hard Rock Café Licensing Corp. v. Concession Services Inc., 955 F.2d 1143, 1148 (7th Cir. 1992) (trademark infringement is a “species of tort” and “we have turned to the common law to guide our inquiry into the appropriate boundaries of liability”); David Berg and Co. v. Gatto Int’l Trading Co., Inc., 884 F.2d 306, 311(7th Cir. 1989)(“unfair competition and trademark infringement are tortious”).
The first theory of secondary liability to emerge in the courts was contributory liability. Contributory liability doctrine developed initially in the Supreme Court, which, prior to the enactment of the Lanham Act, relied on common law doctrines to determine the scope of liability. See William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924), discussed in AT & T, supra at 1432. Later on, after the Act was passed, the Supreme Court re-established the validity of contributory infringement theory in the case of Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982), which set out a two-part test for contributory infringement discussed herein.
Thereafter, courts determined that secondary liability based on agency principles is also often appropriate. See Am. Tel. & Tel. Co., supra at 1433; see also David Berg and Co. v. Gatto Int’l Trading Co., Inc., 884 F.2d 306, 311 (7th Cir. 1989)(incorporating similar tests based on joint tortfeasor liability). In fact, the rationale for applying agency principles to the Lanham Act rested in part on the law that already established contributory liability for trademark infringement. The contributory liability cases demonstrated to the court in Am. Tel. & Tel. Co. that “in certain instances, secondary, indirect liability is a legitimate basis for liability under the federal unfair competition statute.” Am. Tel. & Tel. Co., supra at 1433.
The organization of this treatise reflects the development of the two secondary liability doctrines. First, contributory liability doctrine is discussed, beginning with the two-part test articulated by the Supreme Court in Inwood and then its application in various contexts. Vicarious liability for trademark infringement is discussed in the third section of this treatise, which also covers both the standards followed by the courts for finding such liability and the contexts in which it has been found to apply.