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Tiffany (NJ) Inc. v. eBay, Inc.

United States Court of Appeals for the Second Circuit

July 16, 2009, Argued; April 1, 2010, Decided

Docket No. 08-3947-cv

Opinion

 [***1189]  [*96]   SACK, Circuit Judge:

eBay, Inc. ("eBay"), through its eponymous online marketplace, has revolutionized the online sale of goods, especially used goods. It has facilitated the buying and selling by hundreds of millions of people and entities, to their benefit  [**3] and eBay's profit. But that marketplace is sometimes employed by users as a means to perpetrate fraud by selling counterfeit goods.

Plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (together, "Tiffany") have created [***1190]  and cultivated a brand of jewelry bespeaking high-end quality and style. Based on Tiffany's concern that some use eBay's website to sell counterfeit Tiffany merchandise, Tiffany has instituted this action against eBay, asserting various causes of action -- sounding in trademark infringement, trademark dilution and false advertising -- arising from eBay's advertising and listing practices. For the reasons set forth below, we affirm the district court's judgment with respect to Tiffany's claims of trademark infringement and dilution but remand for further proceedings with respect to Tiffany's false advertising claim.

BACKGROUND

By opinion dated July 14, 2008, following a week-long bench trial, the United States District Court for the Southern District of New York (Richard J. Sullivan, Judge) set forth its findings of fact and conclusions of law. Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) ("Tiffany"). ] When reviewing a judgment following a bench trial  [**4] in the district court, we review the court's findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir. 2009). Except where noted otherwise, we conclude that the district court's findings of fact are not clearly erroneous. We therefore rely upon those non-erroneous findings in setting forth the facts of, and considering, this dispute.

eBay 2 is the proprietor of www.ebay.com, an Internet-based marketplace that  [*97]  allows those who register with it to purchase goods from and sell goods to one another. It "connect[s] buyers and sellers and [] enable[s] transactions, which are carried out directly between eBay members." Tiffany, 576 F. Supp. 2d at 475. 3 In its auction and listing services, it "provides the venue for the sale [of goods] and support for the transaction[s], [but] it does not itself sell the items" listed for sale on the site, id. at 475, nor does it ever take physical possession of them, id. Thus, "eBay generally does not know whether or when an item is delivered to the buyer." Id.

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600 F.3d 93 *; 2010 U.S. App. LEXIS 6735 **; 94 U.S.P.Q.2D (BNA) 1188 ***; 2010-1 Trade Cas. (CCH) P77,013

TIFFANY (NJ) INC. and TIFFANY and COMPANY, Plaintiffs-Appellants, - v. - eBay, Inc., Defendant-Appellee.

Subsequent History: On remand at, Judgment entered by Tiffany (NJ) Inc. v. eBay, Inc., 2010 U.S. Dist. LEXIS 96596 (S.D.N.Y., Sept. 10, 2010)

US Supreme Court certiorari denied by Tiffany (NJ) Inc. v. Ebay Inc., 562 U.S. 1082, 131 S. Ct. 647, 178 L. Ed. 2d 513, 2010 U.S. LEXIS 9355 (U.S., Nov. 29, 2010)

Prior History:  [**1] Appeal from a judgment of the United States District Court for the Southern District of New York. The district court (Richard J. Sullivan, Judge) concluded, inter alia, that eBay -- the proprietor of a website through which counterfeit Tiffany merchandise was sold -- did not, on the facts presented, engage in trademark infringement, false advertising, or trademark dilution. We affirm the judgment with respect to Tiffany's claims of trademark infringement and dilution, but remand for further proceedings with respect to Tiffany's claim of false advertising.

Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 2008 U.S. Dist. LEXIS 53359 (S.D.N.Y., 2008)

Disposition:  The judgment was affirmed with respect to the claims of trademark infringement and dilution. However, the cause was remanded for further proceedings with respect to the false advertising claim.

CORE TERMS

eBay, counterfeit, infringing, district court, website, listings, sellers, advertisements, trademark infringement, contributory, dilution, trademark, merchandise, reason to know, products, genuine, buyer, jewelry, famous, false advertising, blindness, blurring, site, Brand, authentic, consumers, Buying, marks, manufacturers, misleading

Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, De Novo Review, Trademark Law, Causes of Action Involving Trademarks, Infringement Actions, General Overview, Defenses to Incontestability, Fair Use, Nominative Fair Use, Business & Corporate Compliance, Contributory Infringement, Dilution of Famous Marks, Factors for Determining Dilution, Federal Trademark Dilution Act, Types of Dilution, Tarnishment, State Antidilution Statutes, Antitrust & Trade Law, Consumer Protection, False Advertising, Lanham Act