B. The Elements of Contributory Liability under Inwood: 5. The Requirement to Demonstrate Direct Trademark Infringement
Contributory trademark infringement, by definition, is a derivative action. A claim for contributory infringement therefore requires proof of direct infringement by a third party. See Georgia Pacific Consumer Products, LP, v. Von Drehle Corp., 2010 WL 3155646, *8 (4th Cir.)(defendant cannot be liable for contributory trademark infringement without corresponding direct trademark infringement), citing Inwood, 456 U.S. at 853-854; Louis Vuitton Malletier v. Akanoc, 2010 WL 5598337 *7 (N.D. Cal.)(“Contributory trademark infringement requires that there be an underlying direct trademark infringement by a third party.”) , citing Perfect 10 v. Visa Int’l Serv. Assoc., 494 F.3d 788, 795, 807 (9th Cir. 2007); RGS Labs Int’l, Inc.v. The Sherwin-Williams Co., 2010 WL 317778, *3 (S.D.Fla.)(“a contributory infringement claim requires, at a minimum, both an allegation of a direct infringement by a third party and an allegation of an intentional or knowing contribution to that infringement by the defendant”), citing Optimum Techs. Inc, v. Henkel Consumer Adhesives, Inc. 496 F.3d 1231.1245 (11th Cir. 2007); Monotype Imaging, Inc. v. Bitstream Inc., 376 F.Supp.2d 877 , 2005 WL 1653604, *8 (N.D. Ill. 2005)(rejecting contributory liability claim where plaintiff failed to prove direct infringement); MDT Corp. v. New York Stock Exchange, 858 F.Supp. 1028, 1034 (C.D. Cal. 1994)(dismissing contributory infringement action for failure to state a claim where plaintiff conceded that no direct infringement had taken place). See also Hudson Associates Consulting, Inc. v. Weidner, 2010 WL 1946414, *14 (D.Kan.) and KMMentor, LLC v. Knowledge Mgt. Professional Society, Inc, 2010 WL 1946339, *16, n112 (D.Kan.)(related cases in which court reasoned there cannot be contributory trademark infringement without an underlying protectable trademark); and Triple-I Corp. v. Hudson Associates, Inc., 2010 WL 1979418, *15 (related case in which court granted defendant’s motion for summary judgment on contributory liability claim where plaintiffs asserted defendant supplied product to non-infringing party); Playboy Enterprises, Inc. v. Terri Welles, Inc. 78 F.Supp.2d 1066, 1099 (S.D. Cal. 1999) (where it was determined that model did not infringe trademarks in her website, claim could not be made against former and present webmasters who created or modified that website). And see John T. Cross, “Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement,” 80 Iowa L.Rev. 101, 101 n.4 (1994) (noting that courts both before and after Inwood have consistently dealt with contributory infringement as a form of secondary liability).
It is not necessary, however, for a plaintiff to bring both direct and indirect claims; rather it must demonstrate that the direct infringement did in fact occur. Thus, in the early phases of litigation, the courts have refrained from rejecting contributory liability claims based solely on the plaintiff’s failure to allege direct infringement. See, e.g., Google Inc. v. American Blind & Wallpaper Factory, Inc., 2005 WL 83298, *7 (N.D. Cal. 2005)(denying motion to dismiss, finding that plaintiff’s failure to allege that search engine company’s advertisers had directly violated trademark laws was not fatal to contributory liability claims against search engine company); Government Employees Insurance Co. v. Google, 330 F.Supp.2d 700, 704-705 (E.D. Va. 2004)(denying motion to dismiss, finding that plaintiff’s allegations that third party advertisers made “use in commerce” of the plaintiff’s trademarks by using the marks as source identifiers in the advertising links posted on the defendant search engine’s results page were sufficient to state a claim for contributory trademark infringement); Nat’l. Fed. of the Blind, Inc. v. Loompanics Enterprises, Inc. 936 F.Supp. 1232, 1243-1246 (D. Md. 1996)(denying defendant’s motion to dismiss contributory liability claim notwithstanding that plaintiff had not yet presented any evidence of direct infringement).
In this regard, the courts have been willing, early in a case, to examine the merits of a contributory liability claim while simply assuming the direct infringement has taken place for purposes of their analysis. See, e.g., Georgia Pacific, supra at *7 (court assumed for purposes of analyzing contributory liability claim that the “stuffing” of plaintiff’s branded paper towel dispensers with the defendant’s generic and inferior paper toweling by end-user customers would constitute direct trademark infringement under the Lanham Act); Procter & Gamble Co., 317 F.3d 1121, 1129 n.5 (10th Cir. 2003)(court assumed action of defendants in disseminating Satanic message about manufacturer constituted infringing activity under the Lanham Act); MetroPCS Wireless, Inc. v. Virgin Mobile USA, L.P., 2009 WL 3075205, *15 (N.D.Tex.)(where court granted defendant’s summary judgment motion on another basis, it assumed for the sake of its contributory liability discussion that a reasonable jury could find direct infringement); SB Designs v. Reebok Int’l, Ltd., 338 F.Supp.2d 904, 912 (N.D. Ill. 2004)(court assumed infringement only for purposes of deciding contributory liability claim). But see, conversely, Video Professor, Inc. v. Amazon.com, Inc., 2010 WL 882646, *3 (D.Colo.)(denying plaintiff’s request to extend discovery relevant to a contributory liability claim where plaintiff had failed to include the claim in its complaint, citing Haugen as precedent for not reading such a claim into “broad allegations of a complaint for trademark infringement.”).
Notwithstanding the courts’ forbearance early on in a case, there does have to be at least a colorable claim of direct infringement on which to predicate the contributory liability claim. A tenuous underlying direct infringement claim will certainly undermine the success of a contributory liability claim, as was the case in Sony Computer Entertainment America, Inc. v. GameMasters, 87 F.Supp.2d 976, 986 (N.D. Cal. 1999), discussed supra. In that case the court denied the plaintiff’s motion for a preliminary injunction because the plaintiff had brought “scant evidence and allegations” that only stated that the defendants supplied a product that could have been used by consumers to engage in trademark infringement. And see, Lockheed Martin Corp. v. Network Solutions, Inc. 985 F.Supp.949, 964-965 (C.D. Cal. 1997)(“Contributory infringement doctrine has always treated uncertainty of infringement as relevant to the question of an alleged contributory infringer’s knowledge”), aff’d , 194 F.3d 980 (9th Cir. 1999).