Transcript counterfeit components and related legal issues

COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
Counterfeit Electronic Components Avoidance Workshop
August 27, 2008
Laurence E. Pappas
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
A.
Direct and Contributory Trademark Infringement and
Dilution.
1. Direct trademark infringement: Valid mark entitled to
protection that is used in commerce in connection to
sale or advertising of goods or services without
consent and is likely to cause confusion as to link
user and holder of trademark or origin of goods and
services.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
a. If trademark is valid, key question is
whether use is likely to cause confusion as
to the origin of the goods or services.
b. Nominative fair use: defense to use.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
1. Trademark owners cannot prevent others
from making a descriptive use of their
trademark. Resale of authentic noncounterfeit goods is protected even though
resale is not authorized.
2. Nominative fair use proven when product
or service is not easily identifiable without
trademark, only so much of mark is used
that is necessary to identify goods or
services, and user does not suggest
sponsorship or endorsement by holder of
mark.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
EXAMPLES:
“Tiffany” used to describe Tiffany jewelry. Without using
word “Tiffany”, reseller might have to say “Silver jewelry
from prestigious N.Y. company where Audrey Hepburn once
liked to eat breakfast” or “Jewelry bearing same name as
1980s pop star”.
“Playboy” used to resell goods without special font or
symbols - e.g., the famous Playboy bunny associated with
the mark.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
EXAMPLES: continued
“Playboy Playmate of the Year in 1981” phrase used by
woman (woman had disclaimer of endorsement on
website). Disclaimer not required but safer.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
c. Purchase of sponsored links advertising on
search engines availability of trademark
items: protected in same manner as use
on own website.
© EQuality Services, LLC 2008
COUNTERFEIT COMPONENTS AND RELATED LEGAL
ISSUES
I.
Internet Sales and Trademark Violations
2. Contributory Infringement: A person intentionally
induces another to infringe upon a mark or
continues to supply its product to one whom it
knows or has reason to know is engaging in
trademark infringement.
a. Mere suspicion or general knowledge of
counterfeiting not enough.
© EQuality Services, LLC 2008