Updated November 19, 2020:

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.

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.

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.

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.

Contributory infringement is a serious matter that has penalties just as severe as if you're actively involved in the infringing activity. If you have contributory infringement issues, you can post your legal need on UpCounsel to find an experienced attorney to help you with your needs. UpCounsel only works with the top 5 percent of lawyers. The lawyers on UpCounsel average 14 years of legal experience and have degrees from law schools such as Harvard, Yale and Berkley.