Contributory Trademark Infringement and Liability

Key Takeaways

• Contributory trademark infringement holds third parties liable for facilitating or knowingly contributing to another’s trademark infringement.
• The standard of “knowledge” is critical — liability requires proof that the defendant had actual or constructive knowledge of the infringement, or was willfully blind to it.
• Online marketplaces, manufacturers, and distributors can all face secondary liability if they enable infringing activities and fail to act after notice.
• The Ninth Circuit and Supreme Court emphasize that “willful blindness” — ignoring clear signs of infringement — can satisfy the knowledge requirement.
• Businesses should implement robust monitoring systems, seller verification processes, and takedown mechanisms to reduce exposure.

What Is Contributory Infringement?

Contributory infringement happens when a person or company uses material protected under infringement laws, such as patent infringement, without permission. Contributory infringement is also called:

• indirect liability;
• indirect infringement;
• vicarious liability;
• contributory liability;
• secondary liability.

It involves material protected under copyright, patent, or trademark laws. It makes third parties responsible for being part of illegal copying. Even if you aren't the person who directly breaks a license, you could be at fault for contributory infringement if you give other people access to the product.

Why Is Contributory Infringement Important?

Direct infringers are hard to catch when they're online. They can:

• do business from other countries;
• hide their identities;
• change websites.

Contributory infringement gives owners another way to protect their licensed material. It lets them go after third parties involved in illegal transactions. To prove contributory infringement, the plaintiff must:

• show that the defendant knew about the illegal activity;
• provided a way for it to happen.

Contributory Infringement of Patents

Contributory infringement of a patent happens when a third party sells or imports into the United States a patented part knowing that it breaks an existing patent. Even if selling the item is legal, they're still liable for contributory infringement.

Contributory Infringement of Copyrights

The Copyright Act doesn't clearly say that third parties are liable for contributory infringement. However, the Supreme Court said that doesn't mean they aren't responsible for their actions. The court went on to say that even if you aren't the one committing the infringing act, you're liable if you help.

Contributory Infringement of Trademarks

The Supreme Court said that even though the Lanham Act doesn't say third parties can't sell trademarked items, that doesn't make it legal. If a manufacturer continues to sell products that it knows infringes on a trademark, it's just as responsible as the person who created them.

Legal Standards for Contributory Trademark Infringement

To prove contributory trademark infringement, courts generally apply the Inwood Laboratories v. Ives Laboratories standard, which states that a party is liable if it:

1. Intentionally induces another to infringe a trademark, or
2. Continues to supply goods or services to someone it knows, or has reason to know, is engaging in trademark infringement.

Recent cases have refined the definition of “knowledge.” The Ninth Circuit in Brandy Melville v. Redbubble reaffirmed that specific knowledge of infringing activity is necessary — general awareness of potential infringement is not enough. This means that online platforms must be aware of particular listings or sellers that infringe a mark before liability attaches.

However, “willful blindness” can substitute for actual knowledge. When a business deliberately avoids confirming what it strongly suspects — such as failing to investigate obvious counterfeit sales — it can still be held liable for contributory trademark infringement.

Courts also look at whether a defendant took reasonable steps to prevent or address known infringements, such as removing counterfeit listings, suspending infringing accounts, or cooperating with brand owners. Failure to act after notice often strengthens a plaintiff’s case.

Is Contributory Infringement Different With Trademarks and Copyrights?

Trademarks and copyrights need different proof for contributory infringement. In trademark cases the plaintiffs must show:

• the third party knows who the direct infringer is, and
• knows the products are illegal.

In copyright cases, the plaintiffs just need to show that the third party knows copyright laws cover the products.

Secondary Liability and Willful Blindness in Trademark Law

Contributory trademark infringement is part of a broader category known as secondary liability, which also includes vicarious liability. Under this doctrine, entities that benefit from, control, or facilitate infringing activity may be held accountable even if they did not commit direct infringement.

“Willful blindness” has become a major focus in secondary liability analysis. As established in Tiffany (NJ) Inc. v. eBay Inc., a defendant cannot escape liability by turning a blind eye to clear signs of infringement. Courts often find willful blindness when a company:

• Receives repeated notices of infringement but does not act,
• Implements weak or inconsistent monitoring practices, or
• Allows known infringers to continue operating.

Companies that profit from user activity — such as e-commerce marketplaces, fulfillment providers, or social platforms — are expected to adopt reasonable enforcement mechanisms. This includes vetting sellers, using technology to detect counterfeits, and establishing takedown procedures.

Failing to do so may expose them to contributory trademark infringement claims, particularly if they benefit financially from the infringing activity or help it persist.

Vicarious Liability

Along with contributory infringement, vicarious liability is one more way to hold another person liable for copyright infringement even if he's not directly infringing. For vicarious liability, the plaintiff must show that the defendant:

• can control the infringer's acts, and
• receives money because of the infringement

Unlike contributory infringement, knowing the act breaks a copyright or trademark law isn't needed for vicarious liability.

Contributory Infringement and Online Marketplaces

Not even online marketplaces are free from contributory infringement. In the case Masck v. Sports Illustrated, et al., plaintiff Brian Masck said Amazon was responsible for selling unauthorized pictures he took. In 1991 Masck took a picture of Desmond Howard striking what is now known as the Heisman pose in a football game between Ohio State and the University of Michigan.

During the trail Masck said:

• he sent the picture to Sports Illustrated;
• the magazine paid him to use it;
• he later learned of unauthorized uses of his picture by third parties;
• he brought a contributory infringement claim against Amazon for allowing third-party sales of his picture on its site.

Amazon said it couldn't be responsible for the thousands of items posted for sale from other sellers using its website. However, Masck was able to prove that he asked Amazon to take down the pictures.

The court ruled Amazon was liable because:

• it knew the activity was happening;
• it knew the activity was illegal;
• it provided a place for direct infringers to sell.

Yet not all cases with online marketplaces end like Masck. In Tiffany (NJ) Inc. v. eBay Inc., the court found that eBay wasn't at fault for fake Tiffany jewelry sold through its website. The court stated that even though eBay knew users were selling fake items, it didn't know about specific listings or people.

The Role of Knowledge and Control in Online Liability

The growth of e-commerce has increased the complexity of proving contributory trademark infringement. Courts analyze both knowledge and control to determine liability for online intermediaries:

• Knowledge: Platforms are not liable merely because infringement could occur. They must know, or be willfully blind to, specific infringing acts or sellers.
• Control: Liability increases if the platform has the ability to monitor or remove listings, control sales processes, or influence which goods appear on the marketplace.

For instance, the Ninth Circuit in Brandy Melville v. Redbubble clarified that Redbubble could not be held liable without proof that it knew of particular infringing listings before sales occurred. Conversely, the Second Circuit in Tiffany v. eBay emphasized that eBay’s proactive removal system helped it avoid liability since it responded to all known infringements.

These cases highlight the delicate balance between trademark enforcement and innovation in online commerce. Courts generally favor platforms that actively cooperate with rights holders, but they also penalize those that ignore red flags or profit from counterfeit sales.

Other Contributory Infringement Cases

These are other cases that include online and in-person transactions:

• Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.: Luxury goods maker Louis Vuitton said that internet service provider (ISP) Akanoc knew websites it hosted were selling fake goods. Even though the plaintiff sent the defendant takedown notices, Akanoc didn't remove the websites. The court found Akanoc liable for contributory infringement.
• Chloe SAS v. Sawabeh Information Services Co.: Six luxury brands sued online marketplace TradeKey.com for contributory infringement. They said TradeKey.com promoted fake goods sold by its members. Even though the brands didn't send takedown notices, TradeKey.com was still liable.
• 1-800 Contacts, Inc. v. Lens.com, Inc.: 1-800-Contacts said that affiliates of Lens.com posted advertisements that infringed on their trademark. Lens.com said it wasn't responsible for the actions of affiliates because it had so many and didn't know which one was at fault. However, the court ruled in favor of 1-800-Contacts, saying Lens.com could have sent a mass email to all affiliates.
• Fonovisa, Inc. v. Cherry Auction, Inc.: Fonovisa said that Cherry Auction created a swap meet where people could sell bootleg music. Cherry Auction said it couldn't control what people sold. Yet the court said that because it advertises to bring in more customers, charges admission to enter, and could kick any seller out, it was liable for vicarious copyright infringement.
• Hard Rock Café Licensing Corp. v. Concession Services, Inc.: Hard Rock Café found vendors selling fake clothing items at Concession Services flea markets. However, the court said that Concession Services' rental fee wasn't a financial interest and the company didn't show bad faith, so it wasn't vicariously liable.
• A&M Records, Inc. v. Napster, Inc.: A&M Records said Napster shared infringing music files for people who wanted to download music illegally. The court said nearly all Napster users were downloading music illegally and Napster made no effort to remove the infringing music files. Therefore, it was liable for contributory infringement.
• Commil USA, LLC v. Cisco Systems, Inc.: Commil, which has a patent for making wireless networks, said that Cisco Systems sold infringing equipment so others could break the patent. Cisco said it thought the patent was invalid, so it could sell the equipment legally. However, the Supreme Court ruled that wasn't a strong defense.

Contributory Infringement in Other Countries

Other countries around the world have infringement laws that are similar and different.

• China: An ISP is liable for contributory infringement if it knows the user is committing the act and it doesn't take steps to stop him.
• European Union: ISPs and online marketplaces must remove or stop access to products or information that break a license as soon as they're aware of the problem.
• France: It's possible to punish a contributory trademark infringer under criminal law. Even though this isn't common, there have been at least two criminal cases.
• Germany: Courts believe that ISPs aren't a liable party. However, they could be liable for interference if they don't take reasonable measures to keep infringing products offline.
• United Kingdom: Won't hold third parties liable for contributory infringement unless they work with the primary party to break trademark or copyright laws.

What Could Happen If You Do Contributory Infringement?

While every case is different, the penalties for contributory infringement are sometimes just as hard as ones for direct infringement. They can include:

• taking away the infringing materials;
• damages for losses;
• fines;
• possible criminal penalties.

Contributory Infringement Cases for Plaintiffs

If you hold a patent, trademark, or copyright and you see a person selling unauthorized products, start by sending them a takedown letter. In your letter make sure you:

• say which product is infringing;
• include a copy of your license;
• ask them to remove the product.

If the person doesn't remove the item, you have clear proof they knew about the protected item and they were providing a way for others to buy it.

Contributory Infringement Cases for Defendants

As earlier Federal and Supreme Court cases have shown, the best way to defend against contributory infringement is to get a non-infringement opinion. This is a legal opinion that says the product doesn't infringe against any license. As long as you share all information about the product with the attorneys making the opinion, it's hard for plaintiffs to argue that you knew about the license.

How Businesses Can Minimize Contributory Liability Risks

To reduce the risk of being accused of contributory trademark infringement, businesses should establish and document preventive measures, such as:

• Implementing robust IP compliance programs and training employees on trademark law.
• Creating internal review systems to investigate reported infringements promptly.
• Maintaining communication records with trademark owners and regulators.
• Using AI and monitoring tools to detect counterfeit or misleading listings.
• Including indemnity clauses in contracts with distributors, resellers, or affiliates to shift liability.

Taking these steps demonstrates good faith efforts to prevent infringement and can serve as strong evidence against claims of willful blindness or negligence.

Frequently Asked Questions

1. What is the difference between contributory and vicarious trademark infringement?
   Contributory infringement focuses on knowledge and assistance in infringing activity, while vicarious infringement depends on the defendant’s control over and financial interest in the infringer’s conduct.
2. Can online marketplaces be liable for contributory trademark infringement?
   Yes. If they know or are willfully blind to sellers offering counterfeit goods and fail to act, they can be held liable.
3. What is “willful blindness” in trademark law?
   Willful blindness occurs when a defendant suspects infringement but deliberately avoids confirming it, effectively ignoring obvious signs of illegal activity.
4. How can a company protect itself from contributory infringement claims?
   By responding quickly to infringement notices, monitoring for unauthorized use of trademarks, and maintaining clear internal enforcement policies.
5. Does contributory trademark infringement apply internationally?
   Yes, though the standards vary. Many jurisdictions require proof of knowledge and some level of control, similar to U.S. law.

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