Who Else Is Liable? Contributory and Vicarious Trademark Infringement From Inwood to the Marketplace Era
By Casey Scott McKay ·
The person selling counterfeits is often judgment-proof, anonymous, or overseas. The landlord, the marketplace, the payment processor, and the shipper are none of those things. This article explains the judge-made doctrine that decides when those parties answer for someone else's infringement, starting with the two-pronged test the Supreme Court announced in Inwood Laboratories and tracing how courts extended a rule written for manufacturers to flea markets, domain registrars, credit card networks, print-on-demand platforms, and online marketplaces. It works through the knowledge question that decides nearly every modern case - the difference between knowing counterfeits are sold on your platform and knowing that this seller is selling them - and the willful blindness doctrine that plaintiffs use to bridge the gap. It separates contributory liability from vicarious liability, which in trademark is much narrower than in copyright and is routinely pleaded wrong. It explains why there is no DMCA safe harbor for trademarks and why Section 230 does not fill the gap, then maps the defendant categories with their own case law. It closes with the reach of an injunction against parties who were never sued.
IP and Technology > Trademarks | Article | Published 25 July 2025 - Updated 6 September 2025 | Casey Scott McKay - marksy.us
Summary. The person selling counterfeits is often judgment-proof, anonymous, or overseas. The landlord, the marketplace, the payment processor, and the shipper are none of those things. This article explains the judge-made doctrine that decides when those parties answer for someone else's infringement, starting with the two-pronged test the Supreme Court announced in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) and tracing how courts extended a rule written for manufacturers to flea markets, domain registrars, credit card networks, print-on-demand platforms, and online marketplaces. It works through the knowledge question that decides nearly every modern case — the difference between knowing counterfeits are sold on your platform and knowing that this seller is selling them — and the willful blindness doctrine that plaintiffs use to bridge the gap. It separates contributory liability from vicarious liability, which in trademark is much narrower than in copyright and is routinely pleaded wrong. It explains why there is no DMCA safe harbor for trademarks and why Section 230 does not fill the gap, then maps the defendant categories with their own case law. It closes with the reach of an injunction against parties who were never sued.
Keywords: contributory trademark infringement · inwood test · vicarious trademark liability · tiffany v ebay · specific knowledge requirement · willful blindness · hard rock cafe · fonovisa · lockheed direct control · omega v 375 canal · redbubble · print on demand liability · payment processor liability · landlord liability counterfeiting · marketplace liability · no dmca for trademarks · section 230 ip exception · rule 65(d) active concert · contributory dilution
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