TIFFANY (NJ) INC. v. EBAY INC. 93 - Columbia Law...

93TIFFANY (NJ) INC. v. EBAY INC.Cite as 600 F.3d 93 (2nd Cir. 2010)

APPENDIX—Continued

threw the Respondent from a small house,causing him to become entangled in a wire.

Behaviors that an adult may not typi-cally associate with persecution or seriousharm may produce lasting damage orphysical or psychological trauma in a childand thus constitute persecution. See Civ-il v. INS, 140 F.3d 52, 62–63 (1st Cir.1998) (dissenting opinion). However, af-ter a careful review of the Record of Pro-ceedings (and bearing in mind the Re-spondent’s age at the time these eventsoccurred), the Court concludes that theRespondent did not suffer from past per-secution. While these events were, with-out a doubt, troubling, they amount to nomore than a series of isolated altercationswith a disgruntled neighbor and with agroup of boys who bullied younger chil-dren into providing them with money.See Awad, 463 F.3d at 76 (harassmentand bullying does not amount to persecu-tion). There is no evidence in the Recordof Proceedings that the Respondent wasever physically punished for possessing abelief or characteristic that others soughtto overcome. Nor is there any evidencethat encounters with ‘‘Hubert’’ or the‘‘Maras’’—and not, perhaps, the difficul-ties involved in traveling unaccompaniedto the United States—caused the Respon-dent such lasting psychological trauma soas to rise to the level of past persecution.Cf. Exhibit 6 (psychological evaluation di-agnosing the Respondent with Post–Trau-matic Stress Disorder). Accordingly, thisCourt finds that the Respondent did notsuffer past persecution.

TTTT

,

TIFFANY (NJ) INC. and Tiffany andCompany, Plaintiffs–Appellants,

v.

eBAY INC., Defendant–Appellee.

Docket No. 08–3947–cv.

United States Court of Appeals,Second Circuit.

Argued: July 16, 2009.

Decided: April 1, 2010.

Background: Jewelry seller brought ac-tion against online auction site proprietorthrough which counterfeit seller-brandedmerchandise was sold, alleging trademarkinfringement, false advertising, or trade-mark dilution. The United States DistrictCourt for the Southern District of NewYork, Richard J. Sullivan, J., 576F.Supp.2d 463, entered judgment in favorof proprietor with respect to claims oftrademark infringement and dilution, andseller appealed.

Holdings: The Court of Appeals, Sack,Circuit Judge, held that:

(1) proprietor’s use of jewelry seller’smark on its website and in sponsoredlinks did not constitute direct trade-mark infringement, and

(2) proprietor’s generalized knowledge ofinfringement of seller’s trademark onits website was not sufficient to imposeupon proprietor an affirmative duty toremedy the problem, and thereforeproprietor was not liable for contribu-tory trademark infringement for facili-tating the infringing conduct of coun-terfeiting vendors.

Affirmed in part, and remanded in part.

1. Trademarks O1421

Test for direct trademark infringe-ment looks first to whether the plaintiff’s

94 600 FEDERAL REPORTER, 3d SERIES

mark is entitled to protection, and secondto whether the defendant’s use of the markis likely to cause consumers confusion as tothe origin or sponsorship of the defen-dant’s goods. Lanham Act, § 32, 15U.S.C.A. § 1114.

2. Trademarks O1523(3)Doctrine of nominative fair use allows

a defendant to use a plaintiff’s trademarkto identify the plaintiff’s goods so long asthere is no likelihood of confusion aboutthe source of the defendant’s product orthe mark-holder’s sponsorship or affilia-tion.

3. Trademarks O1523(1)While a trademark conveys an exclu-

sive right to the use of a mark in com-merce in the area reserved, that rightgenerally does not prevent one who tradesa branded product from accurately de-scribing it by its brand name, so long asthe trader does not create confusion byimplying an affiliation with the owner ofthe product.

4. Trademarks O1523(2)Online auction site proprietor’s use of

jewelry seller’s mark on its website and insponsored links did not constitute directtrademark infringement under LanhamAct; proprietor used the mark to describeaccurately the genuine seller’s goods of-fered for resale on its website, and none ofproprietor’s uses of the mark suggestedthat seller affiliated itself with proprietoror endorsed the sale of its productsthrough proprietor’s website. LanhamAct, § 32, 15 U.S.C.A. § 1114.

5. Trademarks O1566There are two ways in which a service

provider may become contributorily liablefor trademark infringement of another: (1)if the service provider intentionally inducesanother to infringe a trademark, and (2) ifthe service provider continues to supply its

service to one whom it knows or has rea-son to know is engaging in trademarkinfringement.

6. Trademarks O1566

Online auction site proprietor’s gen-eralized knowledge of infringement ofseller’s trademark on its website was notsufficient to impose upon proprietor an af-firmative duty to remedy the problem,and therefore proprietor was not liablefor contributory trademark infringementfor facilitating the infringing conduct ofcounterfeiting vendors; proprietor couldnot be held contributorily liable withoutevidence that it had specific contemporaryknowledge of which particular listingswere infringing or would infringe in thefuture.

7. Trademarks O1566Service provider is not contributorily

liable for trademark infringement of an-other merely for failing to anticipate thatothers would use its service to infringe aprotected mark.

8. Trademarks O1566When service provider has reason to

suspect that users of its service are in-fringing a protected mark, it may notshield itself from liability for trademarkinfringement by willful blindness.

9. Trademarks O1463‘‘Dilution by blurring’’ can occur re-

gardless of the presence or absence ofactual or likely confusion, of competition,or of actual economic injury. Lanham Act,§ 43(c)(2)(B), 15 U.S.C.A. § 1125(c)(2)(B).

10. Trademarks O1463‘‘Dilution by tarnishment’’ generally

arises when the plaintiff’s trademark islinked to products of shoddy quality, or isportrayed in an unwholesome or unsavorycontext likely to evoke unflatteringthoughts about the owner’s product. Lan-


ham Act, § 43(c)(2)(C), 15 U.S.C.A.§ 1125(c)(2)(C).

See publication Words and Phras-es for other judicial constructionsand definitions.

11. Trademarks O1459

New York does not require a mark tobe ‘famous’ for protection against dilutionto apply, and does not permit a dilutionclaim unless the marks are substantiallysimilar. N.Y.McKinney’s General Busi-ness Law § 360–l.

12. Trademarks O1470

Online auction site proprietor did notengage in dilution of jewelry seller’s pro-tected mark in violation of federal or NewYork law by permitting resale of counter-feit seller-branded merchandise throughits website. Lanham Act, § 43(c), 15U.S.C.A. § 1125(c); N.Y.McKinney’s Gen-eral Business Law § 360–l.

13. Antitrust and Trade RegulationO22

A claim of false advertising may bebased on at least one of two theories: thatthe challenged advertisement is literallyfalse, i.e., false on its face, or that theadvertisement, while not literally false, isnevertheless likely to mislead or confuseconsumers; under either theory, the plain-tiff must also demonstrate that the false ormisleading representation involved an in-herent or material quality of the product.Lanham Act, § 43(a)(1)(B), 15 U.S.C.A.§ 1125(a)(1)(B).

14. Antitrust and Trade RegulationO103(1)

Where an advertising claim is literallyfalse, the court may enjoin the use of theclaim without reference to the advertise-ment’s impact on the buying public. Lan-ham Act, § 43(a)(1)(B), 15 U.S.C.A.§ 1125(a)(1)(B).


To succeed in a likelihood-of-confusionfalse advertising case where the statementat issue is not literally false, a plaintiffmust demonstrate, by extrinsic evidence,that the challenged commercials tend tomislead or confuse consumers, and mustdemonstrate that a statistically significantpart of the commercial audience holds thefalse belief allegedly communicated by thechallenged advertisement. Lanham Act,§ 43(a)(1)(B), 15 U.S.C.A. § 1125(a)(1)(B).


Lanham Act prohibits an advertise-ment that implies that all of the goodsoffered on a defendant’s website are genu-ine when in fact a sizeable proportion ofthem are not. Lanham Act, § 43(a)(1)(B),15 U.S.C.A. § 1125(a)(1)(B).

James B. Swire (H. Peter Haveles, Jr.,Peter L. Zimroth, Erik C. Walsh, and Ela-nor M. Lackman, on the brief) Arnold &Porter LLP, New York, NY, for Plaintiffs–Appellants.

R. Bruce Rich (Randi W. Singer, Jona-than Bloom, and Mark J. Fiore on thebrief) Weil, Gotshal & Manges LLP, NewYork, NY, for Defendant–Appellee.

Bruce P. Keller, David H. Bernstein,Michael R. Potenza, Debevoise & PlimptonLLP, New York, NY, for Amicus CuriaeThe International Anticounterfeiting Coali-tion.

John F. Cooney, Janet F. Satterwaite,Meghan Hemmings Kend, Venable LLP,Washington, D.C., for Amicus Curiae Coty,Inc.

Alain Coblence, Coblence & Associates,New York, NY, for Amicus Curiae The


Council of Fashion Designers of America,Inc.

Patric J. Carome, Samir C. Jain, WilmerCutler Pickering Hale and Dorr LLP,Washington, D.C., for Amici Curiae Ama-zon.com, Inc., Google Inc., InformationTechnology Association of America, Inter-net Commerce Coalition, Netcoalition,United States Internet Service ProviderAssociation, and United States TelecomAssociation.

Meredith Martin Addy and Howard S.Michael, Brinks Hofer Gilson & Lione,Chicago, IL, David S. Fleming, BrinksHofer Gilson & Lione, New York, NY, forAmicus Curiae Yahoo! Inc.

Fred von Lohmann, Michael Kwum, TheElectronic Frontier Foundation, San Fran-cisco, CA, for Amici Curiae The ElectronicFrontier Foundation, Public Citizen, andPublic Knowledge.

Before: SACK and B.D. PARKER,Circuit Judges, and GOLDBERG, Judge.*

SACK, Circuit Judge:

eBay, Inc. (‘‘eBay’’), through its epony-mous online marketplace, has revolution-ized the online sale of goods, especiallyused goods. It has facilitated the buyingand selling by hundreds of millions of peo-ple and entities, to their benefit and eBay’sprofit. But that marketplace is sometimesemployed by users as a means to perpe-trate fraud by selling counterfeit goods.

Plaintiffs Tiffany (NJ) Inc. and Tiffanyand Company (together, ‘‘Tiffany’’) havecreated and cultivated a brand of jewelry

bespeaking high-end quality and style.Based on Tiffany’s concern that some useeBay’s website to sell counterfeit Tiffanymerchandise, Tiffany has instituted thisaction against eBay, asserting variouscauses of action—sounding in trademarkinfringement, trademark dilution and falseadvertising—arising from eBay’s advertis-ing and listing practices. For the reasonsset forth below, we affirm the districtcourt’s judgment with respect to Tiffany’sclaims of trademark infringement and dilu-tion but remand for further proceedingswith respect to Tiffany’s false advertisingclaim.

BACKGROUND

By opinion dated July 14, 2008, followinga week-long bench trial, the United StatesDistrict Court for the Southern District ofNew York (Richard J. Sullivan, Judge ) setforth its findings of fact and conclusions oflaw. Tiffany (NJ) Inc. v. eBay, Inc., 576F.Supp.2d 463 (S.D.N.Y.2008) (‘‘Tiffany ’’).When reviewing a judgment following abench trial in the district court, we reviewthe court’s findings of fact for clear errorand its conclusions of law de novo. Gior-dano v. Thomson, 564 F.3d 163, 168 (2dCir.2009). Except where noted otherwise,we conclude that the district court’s find-ings of fact are not clearly erroneous. Wetherefore rely upon those non-erroneousfindings in setting forth the facts of, andconsidering, this dispute.

eBay

eBay 1 is the proprietor of www.ebay.com, an Internet-based marketplace that

* The Honorable Richard W. Goldberg, SeniorJudge, United States Court of InternationalTrade, sitting by designation.

1. eBay appears to be short for Echo Bay-thename of eBay’s founder’s consulting firm wasEcho Bay Technology Group. The name

‘‘EchoBay’’ was already in use, so eBay wasemployed as the name for the website. Seehttp://en.wikipedia.org/wiki/EBay#Originsand history (last visited Feb. 26, 2010);http://news.softpedia.com/news/eBay–Turns–Ten–Happy–Birthday–7502.shtml (last visitedFeb. 26, 2010).


allows those who register with it to pur-chase goods from and sell goods to oneanother. It ‘‘connect[s] buyers and sellersand [ ] enable[s] transactions, which arecarried out directly between eBay mem-bers.’’ Tiffany, 576 F.Supp.2d at 475.2 Inits auction and listing services, it ‘‘providesthe venue for the sale [of goods] and sup-port for the transaction[s], [but] it does notitself sell the items’’ listed for sale on thesite, id. at 475, nor does it ever takephysical possession of them, id. Thus,‘‘eBay generally does not know whether orwhen an item is delivered to the buyer.’’Id.

eBay has been enormously successful.More than six million new listings areposted on its site daily. Id. At any giventime it contains some 100 million listings.Id.

eBay generates revenue by chargingsellers to use its listing services. For anylisting, it charges an ‘‘insertion fee’’ basedon the auction’s starting price for thegoods being sold and ranges from $0.20 to$4.80. Id. For any completed sale, itcharges a ‘‘final value fee’’ that rangesfrom 5.25% to 10% of the final sale price ofthe item. Id. Sellers have the option ofpurchasing, at additional cost, features ‘‘todifferentiate their listings, such as a bor-der or bold-faced type.’’ Id.

eBay also generates revenue through acompany named PayPal, which it owns andwhich allows users to process their pur-chases. PayPal deducts, as a fee for eachtransaction that it processes, 1.9% to 2.9%of the transaction amount, plus $0.30. Id.This gives eBay an added incentive toincrease both the volume and the price ofthe goods sold on its website. Id.

Tiffany

Tiffany is a world-famous purveyor of,among other things, branded jewelry. Id.at 471–72. Since 2000, all new Tiffanyjewelry sold in the United States has beenavailable exclusively through Tiffany’s re-tail stores, catalogs, and website, andthrough its Corporate Sales Department.Id. at 472–73. It does not use liquidators,sell overstock merchandise, or put itsgoods on sale at discounted prices. Id. at473. It does not—nor can it, for thatmatter—control the ‘‘legitimate secondarymarket in authentic Tiffany silvery jewel-ry,’’ i.e., the market for second-hand Tiffa-ny wares. Id. at 473. The record devel-oped at trial ‘‘offere[d] little basis fromwhich to discern the actual availability ofauthentic Tiffany silver jewelry in the sec-ondary market.’’ Id. at 474.

Sometime before 2004, Tiffany becameaware that counterfeit Tiffany merchan-dise was being sold on eBay’s site. Priorto and during the course of this litigation,Tiffany conducted two surveys known as‘‘Buying Programs,’’ one in 2004 and an-other in 2005, in an attempt to assess theextent of this practice. Under those pro-grams, Tiffany bought various items oneBay and then inspected and evaluatedthem to determine how many were coun-terfeit. Id. at 485. Tiffany found that73.1% of the purported Tiffany goods pur-chased in the 2004 Buying Program and75.5% of those purchased in the 2005 Buy-ing Program were counterfeit. Id. Thedistrict court concluded, however, that theBuying Programs were ‘‘methodologicallyflawed and of questionable value,’’ id. at512, and ‘‘provide[d] limited evidence as tothe total percentage of counterfeit goodsavailable on eBay at any given time,’’ id. at486. The court nonetheless decided thatduring the period in which the Buying

2. In addition to providing auction-style andfixed-priced listings, eBay is also the propri-

etor of a traditional classified service. Id. at474.


Programs were in effect, a ‘‘significantportion of the ‘Tiffany’ sterling silver jew-elry listed on the eBay website TTT wascounterfeit,’’ id., and that eBay knew ‘‘thatsome portion of the Tiffany goods sold onits website might be counterfeit,’’ id. at507. The court found, however, that ‘‘asubstantial number of authentic Tiffanygoods are [also] sold on eBay.’’ Id. at 509.

Reducing or eliminating the sale of allsecond-hand Tiffany goods, including gen-uine Tiffany pieces, through eBay’s web-site would benefit Tiffany in at least onesense: It would diminish the competitionin the market for genuine Tiffany mer-chandise. See id. at 510 n. 36 (noting that‘‘there is at least some basis in the recordfor eBay’s assertion that one of Tiffany’sgoals in pursuing this litigation is to shutdown the legitimate secondary market inauthentic Tiffany goods’’). The immediateeffect would be loss of revenue to eBay,even though there might be a countervail-ing gain by eBay resulting from increasedconsumer confidence about the bona fidesof other goods sold through its website.

Anti–Counterfeiting Measures

Because eBay facilitates many sales ofTiffany goods, genuine and otherwise, andobtains revenue on every transaction, itgenerates substantial revenues from thesale of purported Tiffany goods, some ofwhich are counterfeit. ‘‘eBay’s Jewelry &Watches category manager estimatedthat, between April 2000 and June 2004,eBay earned $4.1 million in revenue fromcompleted listings with ‘Tiffany’ in thelisting title in the Jewelry & Watches cat-egory.’’ Id. at 481. Although eBay wasgenerating revenue from all sales of goodson its site, including counterfeit goods, thedistrict court found eBay to have ‘‘an in-terest in eliminating counterfeit Tiffanymerchandise from eBay TTT to preservethe reputation of its website as a safeplace to do business.’’ Id. at 469. The

buyer of fake Tiffany goods might, if andwhen the forgery was detected, faulteBay. Indeed, the district court found that‘‘buyers TTT complain[ed] to eBay’’ aboutthe sale of counterfeit Tiffany goods. Id.at 487. ‘‘[D]uring the last six weeks of2004, 125 consumers complained to eBayabout purchasing ‘Tiffany’ items throughthe eBay website that they believed to becounterfeit.’’ Id.

Because eBay ‘‘never saw or inspectedthe merchandise in the listings,’’ its abilityto determine whether a particular listingwas for counterfeit goods was limited. Id.at 477–78. Even had it been able to in-spect the goods, moreover, in many in-stances it likely would not have had theexpertise to determine whether they werecounterfeit. Id. at 472 n. 7 (‘‘[I]n manyinstances, determining whether an item iscounterfeit will require a physical inspec-tion of the item, and some degree of exper-tise on the part of the examiner.’’).

Notwithstanding these limitations, eBayspent ‘‘as much as $20 million each year ontools to promote trust and safety on itswebsite.’’ Id. at 476. For example, eBayand PayPal set up ‘‘buyer protection pro-grams,’’ under which, in certain circum-stances, the buyer would be reimbursedfor the cost of items purchased on eBaythat were discovered not to be genuine.Id. at 479. eBay also established a ‘‘Trustand Safety’’ department, with some 4,000employees ‘‘devoted to trust and safety’’issues, including over 200 who ‘‘focus ex-clusively on combating infringement’’ and70 who ‘‘work exclusively with law enforce-ment.’’ Id. at 476.

By May 2002, eBay had implemented a‘‘fraud engine,’’ ‘‘which is principally dedi-cated to ferreting out illegal listings, in-cluding counterfeit listings.’’ Id. at 477.eBay had theretofore employed manualsearches for keywords in listings in aneffort to ‘‘identify blatant instances of po-


tentially infringing TTT activity.’’ Id. ‘‘Thefraud engine uses rules and complex mod-els that automatically search for activitythat violates eBay policies.’’ Id. In addi-tion to identifying items actually adver-tised as counterfeit, the engine also incor-porates various filters designed to screenout less-obvious instances of counterfeitingusing ‘‘data elements designed to evaluatelistings based on, for example, the seller’sInternet protocol address, any issues asso-ciated with the seller’s account on eBay,and the feedback the seller has receivedfrom other eBay users.’’ Id. In addition togeneral filters, the fraud engine incorpo-rates ‘‘Tiffany-specific filters,’’ including‘‘approximately 90 different keywords’’ de-signed to help distinguish between genuineand counterfeit Tiffany goods. Id. at 491.During the period in dispute,3 eBay also‘‘periodically conducted [manual] reviewsof listings in an effort to remove those thatmight be selling counterfeit goods, includ-ing Tiffany goods.’’ Id.

For nearly a decade, including the peri-od at issue, eBay has also maintained andadministered the ‘‘Verified Rights Owner(‘VeRO’) Program’’—a ‘‘ ‘notice-and-take-down’ system’’ allowing owners of intellec-tual property rights, including Tiffany, to‘‘report to eBay any listing offering poten-tially infringing items, so that eBay couldremove such reported listings.’’ Id. at 478.Any such rights-holder with a ‘‘good-faithbelief that [a particular listed] item in-fringed on a copyright or a trademark’’could report the item to eBay, using a‘‘Notice Of Claimed Infringement form orNOCI form.’’ Id. During the period under

consideration, eBay’s practice was to re-move reported listings within twenty-fourhours of receiving a NOCI, but eBay infact deleted seventy to eighty percent ofthem within twelve hours of notification.Id.

On receipt of a NOCI, if the auction orsale had not ended, eBay would, in addi-tion to removing the listing, cancel the bidsand inform the seller of the reason for thecancellation. If bidding had ended, eBaywould retroactively cancel the transaction.Id. In the event of a cancelled auction,eBay would refund the fees it had beenpaid in connection with the auction. Id. at478–79.

In some circumstances, eBay would re-imburse the buyer for the cost of a pur-chased item, provided the buyer presentedevidence that the purchased item wascounterfeit. Id. at 479.4 During the rele-vant time period, the district court found,eBay ‘‘never refused to remove a reportedTiffany listing, acted in good faith in re-sponding to Tiffany’s NOCIs, and alwaysprovided Tiffany with the seller’s contactinformation.’’ Id. at 488.

In addition, eBay has allowed rightsowners such as Tiffany to create an ‘‘AboutMe’’ webpage on eBay’s website ‘‘to informeBay users about their products, intellec-tual property rights, and legal positions.’’Id. at 479. eBay does not exercise controlover the content of those pages in a man-ner material to the issues before us.

Tiffany, not eBay, maintains the Tiffany‘‘About Me’’ page. With the headline

3. In its findings, the district court often usedthe past tense to describe eBay’s anticounter-feiting efforts. We do not take this usage tosuggest that eBay has discontinued these ef-forts, but only to emphasize that its findingsare issued with respect to a particular periodof time prior to the completion of trial andissuance of its decision.

4. We note, however, that, Tiffany’s ‘‘AboutMe’’ page on the eBay website states thatTiffany does not authenticate merchandise.Pl.’s Ex. 290.

Thus, it may be difficult for a purchaser toproffer evidence to eBay supporting a suspi-cion that the ‘‘Tiffany’’ merchandise he or shebought is counterfeit.


‘‘BUYER BEWARE,’’ the page begins:‘‘Most of the purported TIFFANY & CO.silver jewelry and packaging availableon eBay is counterfeit.’’ Pl.’s Ex. 290(bold face type in original). It also says,inter alia:

The only way you can be certain thatyou are purchasing a genuine TIFFANY& CO. product is to purchase it from aTiffany & Co. retail store, via our web-site (www.tiffany.com) or through a Tif-fany & Co. catalogue. Tiffany & Co.stores do not authenticate merchandise.A good jeweler or appraiser may be ableto do this for you.

Id.

In 2003 or early 2004, eBay began to use‘‘special warning messages when a sellerattempted to list a Tiffany item.’’ Tiffany,576 F.Supp.2d at 491. These messages‘‘instructed the seller to make sure thatthe item was authentic Tiffany merchan-dise and informed the seller that eBay‘does not tolerate the listing of replica,counterfeit, or otherwise unauthorizeditems’ and that violation of this policy‘could result in suspension of [the seller’s]account.’ ’’ Id. (alteration in original). Themessages also provided a link to Tiffany’s‘‘About Me’’ page with its ‘‘buyer beware’’disclaimer. Id. If the seller ‘‘continued tolist an item despite the warning, the listingwas flagged for review.’’ Id.

In addition to cancelling particular sus-picious transactions, eBay has also sus-pended from its website ‘‘ ‘hundreds ofthousands of sellers every year,’ tens ofthousands of whom were suspected [of]

having engaged in infringing conduct.’’Id. at 489. eBay primarily employed a‘‘ ‘three strikes rule’ ’’ for suspensions, butwould suspend sellers after the first viola-tion if it was clear that ‘‘the seller ‘listed anumber of infringing items,’ and ‘[sellingcounterfeit merchandise] appears to be theonly thing they’ve come to eBay to do.’ ’’Id. But if ‘‘a seller listed a potentiallyinfringing item but appeared overall to bea legitimate seller, the ‘infringing items[were] taken down, and the seller [would]be sent a warning on the first offense andgiven the educational information, [and]told that TTT if they do this again, they willbe suspended from eBay.’ ’’ Id. (alterationsin original).5

By late 2006, eBay had implementedadditional anti-fraud measures: delayingthe ability of buyers to view listings ofcertain brand names, including Tiffany’s,for 6 to 12 hours so as to give rights-holders such as Tiffany more time to re-view those listings; developing the abilityto assess the number of items listed in agiven listing; and restricting one-day andthree-day auctions and cross-border trad-ing for some brand-name items. Id. at492.

The district court concluded that ‘‘eBayconsistently took steps to improve its tech-nology and develop anti-fraud measures assuch measures became technologicallyfeasible and reasonably available.’’ Id. at493.

eBay’s Advertising

At the same time that eBay was at-tempting to reduce the sale of counterfeit

5. According to the district court, ‘‘eBay tookappropriate steps to warn and then to sus-pend sellers when eBay learned of potentialtrademark infringement under that seller’s ac-count.’’ Tiffany, 576 F.Supp.2d at 489. Thedistrict court concluded that it was under-standable that eBay did not have a ‘‘hard-and-fast, one-strike rule’’ of suspending sellers be-cause a NOCI ‘‘did not constitute a definitive

finding that the listed item was counterfeit’’and because ‘‘suspension was a very seriousmatter, particularly to those sellers who reliedon eBay for their livelihoods.’’ Id. The dis-trict court ultimately found eBay’s policy tobe ‘‘appropriate and effective in preventingsellers from returning to eBay and re-listingpotentially counterfeit merchandise.’’ Id.


items on its website, it actively sought topromote sales of premium and brandedjewelry, including Tiffany merchandise, onits site. Id. at 479–80. Among otherthings,

eBay ‘‘advised its sellers to take advan-tage of the demand for Tiffany merchan-dise as part of a broader effort to grow theJewelry & Watches category.’’ Id. at 479.And prior to 2003, eBay advertised theavailability of Tiffany merchandise on itssite. eBay’s advertisements trumpeted‘‘Mother’s Day Gifts!,’’ Pl.’s Exs. 392, 1064,a ‘‘Fall FASHION BRAND BLOWOUT,’’Pl.’s Ex. 392, ‘‘Jewelry Best Sellers,’’ id.,‘‘GREAT BRANDS, GREAT PRICES,’’Pl.’s Ex. 1064, or ‘‘Top Valentine’s Deals,’’Pl.’s Ex. 392, among other promotions. Itencouraged the viewer to ‘‘GET THEFINER THINGS.’’ Pl.’s Ex. 392. Theseadvertisements provided the reader withhyperlinks, at least one of each of whichwas related to Tiffany merchandise—‘‘Tif-fany,’’ ‘‘Tiffany & Co. under $150,’’ ‘‘Tiffa-ny & Co,’’ ‘‘Tiffany Rings,’’ or ‘‘Tiffany &Co. under $50.’’ Pl.’s Exs. 392, 1064.

eBay also purchased sponsored-link ad-vertisements on various search engines topromote the availability of Tiffany itemson its website. Tiffany, 576 F.Supp.2d at480. In one such case, in the form of aprintout of the results list from a search onYahoo! for ‘‘tiffany,’’ the second sponsoredlink read ‘‘Tiffany on eBay. Find tiffanyitems at low prices. With over 5 millionitems for sale every day, you’ll find allkinds of unique [unreadable] Marketplace.

www.ebay.com.’’ Pl.’s Ex. 1065 (bold facetype in original). Tiffany complained toeBay of the practice in 2003, and eBay toldTiffany that it had ceased buying spon-sored links. Tiffany, 576 F.Supp.2d at480. The district court found, however,that eBay continued to do so indirectlythrough a third party. Id.

Procedural History

By amended complaint dated July 15,2004, Tiffany initiated this action. It al-leged, inter alia, that eBay’s conduct—i.e.,facilitating and advertising the sale of ‘‘Tif-fany’’ goods that turned out to be counter-feit—constituted direct and contributorytrademark infringement, trademark dilu-tion, and false advertising. On July 14,2008, following a bench trial, the districtcourt, in a thorough and thoughtful opin-ion, set forth its findings of fact and con-clusions of law, deciding in favor of eBayon all claims.

Tiffany appeals from the district court’sjudgment for eBay.

DISCUSSION

We review the district court’s findings offact for clear error and its conclusions oflaw de novo. Giordano v. Thomson, 564F.3d 163, 168 (2d Cir.2009).

I. Direct Trademark Infringement

[1] Tiffany alleges that eBay infringedits trademark in violation of section 32 ofthe Lanham Act.6 The district court de-scribed this as a claim of ‘‘direct trade-

6. That section states in pertinent part:Any person who shall, without the consentof the registrant—(a) use in commerce anyreproduction, counterfeit, copy, or color-able imitation of a registered mark in con-nection with the sale, offering for sale,distribution, or advertising of any goods orservices on or in connection with whichsuch use is likely to cause confusion, or tocause mistake, or to deceive; TTT shall be

liable in a civil action by the registrant forthe remedies hereinafter provided.

15 U.S.C. § 1114(1)(a). Tiffany’s complaintasserts causes of action under both the Lan-ham Act and New York State common law.The claims are composed of the same ele-ments. We therefore analyze them together.See, e.g., Standard & Poor’s Corp. v. Commodi-ty Exch., Inc., 683 F.2d 704, 708 (2d Cir.1982).


mark infringement,’’ Tiffany, 576F.Supp.2d at 493, and we adopt that termi-nology. Under section 32, ‘‘the owner of amark registered with the Patent andTrademark Office can bring a civil actionagainst a person alleged to have used themark without the owner’s consent.’’ ITCLtd. v. Punchgini, Inc., 482 F.3d 135, 145–46 (2d Cir.), cert. denied, 552 U.S. 827, 128S.Ct. 288, 169 L.Ed.2d 38 (2007). We ana-lyze such a claim ‘‘under a familiar two-prong test. The test looks first to whetherthe plaintiff’s mark is entitled to protec-tion, and second to whether the defen-dant’s use of the mark is likely to causeconsumers confusion as to the origin orsponsorship of the defendant’s goods.’’Savin Corp. v. Savin Group, 391 F.3d 439,456 (2d Cir.2004) (alterations incorporatedand ellipses omitted), cert. denied, 546 U.S.822, 126 S.Ct. 116, 163 L.Ed.2d 64 (2005).

In the district court, Tiffany argued thateBay had directly infringed its mark byusing it on eBay’s website and by purchas-ing sponsored links containing the mark onGoogle and Yahoo! Tiffany, 576F.Supp.2d at 494. Tiffany also arguedthat eBay and the sellers of the counterfeitgoods using its site were jointly and sever-ally liable. Id. The district court rejectedthese arguments on the ground thateBay’s use of Tiffany’s mark was protectedby the doctrine of nominative fair use. Id.at 494–95.

[2] The doctrine of nominative fair useallows ‘‘[a] defendant [to] use a plaintiff’strademark to identify the plaintiff’s goodsso long as there is no likelihood of confu-sion about the source of [the] defendant’sproduct or the mark-holder’s sponsorshipor affiliation.’’ Merck & Co. v. MediplanHealth Consulting, Inc., 425 F.Supp.2d

402, 413 (S.D.N.Y.2006). The doctrine ap-parently originated in the Court of Ap-peals for the Ninth Circuit. See New Kidson the Block v. News Am. Publ’g, Inc., 971F.2d 302 (9th Cir.1992). To fall within theprotection, according to that court: ‘‘First,the product or service in question must beone not readily identifiable without use ofthe trademark; second, only so much ofthe mark or marks may be used as isreasonably necessary to identify the prod-uct or service; and third, the user must donothing that would, in conjunction with themark, suggest sponsorship or endorsementby the trademark holder.’’ Id. at 308.

The Court of Appeals for the Third Cir-cuit has endorsed these principles. SeeCentury 21 Real Estate Corp. v. Lending-tree, Inc., 425 F.3d 211, 222 (3d Cir.2005).7

We have referred to the doctrine, albeitwithout adopting or rejecting it. See, e.g.,Chambers v. Time Warner, Inc., 282 F.3d147, 156 (2d Cir.2002) (noting that thedistrict court had ‘‘[a]ppl[ied] the standardfor non-trademark or ‘nominative’ fair useset forth by the Ninth Circuit’’). Othercircuits have done similarly. See, e.g.,Univ. Commc’n Sys., Inc. v. Lycos, Inc.,478 F.3d 413, 424 (1st Cir.2007); PebbleBeach Co. v. Tour 18 I Ltd., 155 F.3d 526,547 (5th Cir.1998), abrogated on othergrounds by TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255,149 L.Ed.2d 164 (2001).

[3] We need not address the viabilityof the doctrine to resolve Tiffany’s claim,however. We have recognized that a de-fendant may lawfully use a plaintiff’strademark where doing so is necessary todescribe the plaintiff’s product and doesnot imply a false affiliation or endorsement

7. The Third Circuit treats the doctrine as anaffirmative defense, see Century 21, 425 F.3dat 217–32, while the Ninth Circuit views thedoctrine as a modification to the likelihood-

of-confusion analysis of the plaintiff’s underly-ing infringement claim, see Playboy Enters. v.Welles, 279 F.3d 796, 801 (9th Cir.2002).


by the plaintiff of the defendant. ‘‘While atrademark conveys an exclusive right tothe use of a mark in commerce in the areareserved, that right generally does notprevent one who trades a branded productfrom accurately describing it by its brandname, so long as the trader does not createconfusion by implying an affiliation withthe owner of the product.’’ Dow Jones &Co. v. Int’l Sec. Exch., Inc., 451 F.3d 295,308 (2d Cir.2006); see also Polymer Tech.Corp. v. Mimran, 975 F.2d 58, 61–62 (2dCir.1992) (‘‘As a general rule, trademarklaw does not reach the sale of genuinegoods bearing a true mark even thoughthe sale is not authorized by the markowner’’ (footnote omitted)); cf. Presto-nettes, Inc. v. Coty, 264 U.S. 359, 368, 44S.Ct. 350, 68 L.Ed. 731 (1924) (when a‘‘mark is used in a way that does notdeceive the public,’’ there is ‘‘no such sanc-tity in the word as to prevent its beingused to tell the truth. It is not taboo.’’).

[4] We agree with the district courtthat eBay’s use of Tiffany’s mark on itswebsite and in sponsored links was lawful.eBay used the mark to describe accuratelythe genuine Tiffany goods offered for saleon its website. And none of eBay’s uses ofthe mark suggested that Tiffany affiliateditself with eBay or endorsed the sale of itsproducts through eBay’s website.

In addition, the ‘‘About Me’’ page thatTiffany has maintained on eBay’s websitesince 2004 states that ‘‘[m]ost of the pur-ported ‘TIFFANY & CO.’ silver jewelryand packaging available on eBay is coun-terfeit.’’ Tiffany, 576 F.Supp.2d at 479(internal quotation marks omitted). Thepage further explained that Tiffany itselfsells its products only through its ownstores, catalogues, and website. Id.

Tiffany argues, however, that even ifeBay had the right to use its mark withrespect to the resale of genuine Tiffanymerchandise, eBay infringed the mark be-

cause it knew or had reason to know thatthere was ‘‘a substantial problem with thesale of counterfeit [Tiffany] silver jewelry’’on the eBay website. Appellants’ Br. 45.As we discuss below, eBay’s knowledge velnon that counterfeit Tiffany wares wereoffered through its website is relevant tothe issue of whether eBay contributed tothe direct infringement of Tiffany’s markby the counterfeiting vendors themselves,or whether eBay bears liability for falseadvertising. But it is not a basis for aclaim of direct trademark infringementagainst eBay, especially inasmuch as it isundisputed that eBay promptly removedall listings that Tiffany challenged as coun-terfeit and took affirmative steps to identi-fy and remove illegitimate Tiffany goods.To impose liability because eBay cannotguarantee the genuineness of all of thepurported Tiffany products offered on itswebsite would unduly inhibit the lawfulresale of genuine Tiffany goods.

We conclude that eBay’s use of Tiffany’smark in the described manner did notconstitute direct trademark infringement.

II. Contributory Trademark Infringe-ment

The more difficult issue, and the onethat the parties have properly focused ourattention on, is whether eBay is liable forcontributory trademark infringement—i.e.,for culpably facilitating the infringing con-duct of the counterfeiting vendors. Ac-knowledging the paucity of case law toguide us, we conclude that the districtcourt correctly granted judgment on thisissue in favor of eBay.

A. Principles

Contributory trademark infringement isa judicially created doctrine that derivesfrom the common law of torts. See, e.g.,Hard Rock Cafe Licensing Corp. v. Con-cession Servs., Inc., 955 F.2d 1143, 1148


(7th Cir.1992); cf. Metro–Goldwyn–May-er Studios Inc. v. Grokster, Ltd., 545 U.S.913, 930, 125 S.Ct. 2764, 162 L.Ed.2d 781(2005) (‘‘[T]hese doctrines of secondary lia-bility emerged from common law princi-ples and are well established in the law.’’)(citations omitted). The Supreme Courtmost recently dealt with the subject inInwood Laboratories, Inc. v. Ives Labora-tories, Inc., 456 U.S. 844, 102 S.Ct. 2182,72 L.Ed.2d 606 (1982). There, the plaintiff,Ives, asserted that several drug manufac-turers had induced pharmacists to mislabela drug the defendants produced to pass itoff as Ives’. See id. at 847–50, 102 S.Ct.2182. According to the Court, ‘‘if a manu-facturer or distributor intentionally in-duces another to infringe a trademark, orif it continues to supply its product to onewhom it knows or has reason to know isengaging in trademark infringement, themanufacturer or distributor is contributo-rially responsible for any harm done as aresult of the deceit.’’ Id. at 854, 102 S.Ct.2182.8 The Court ultimately decided toremand the case to the Court of Appealsafter concluding it had improperly rejectedfactual findings of the district court favor-ing the defendant manufacturers. Id. at857–59, 102 S.Ct. 2182.

Inwood’s test for contributory trade-mark infringement applies on its face tomanufacturers and distributors of goods.Courts have, however, extended the test toproviders of services.

The Seventh Circuit applied Inwood to alawsuit against the owner of a swap meet,or ‘‘flea market,’’ whose vendors were al-leged to have sold infringing Hard RockCafe T-shirts. See Hard Rock Cafe, 955F.2d at 1148–49. The court ‘‘treatedtrademark infringement as a species oftort,’’ id. at 1148, and analogized the swapmeet owner to a landlord or licensor, onwhom the common law ‘‘imposes the sameduty TTT [as Inwood ] impose[s] on manu-facturers and distributors,’’ id. at 1149;see also Fonovisa, Inc. v. Cherry Auction,Inc., 76 F.3d 259 (9th Cir.1996) (adoptingHard Rock Cafe’s reasoning and applyingInwood to a swap meet owner).

Speaking more generally, the Ninth Cir-cuit concluded that Inwood’s test for con-tributory trademark infringement appliesto a service provider if he or she exercisessufficient control over the infringing con-duct. Lockheed Martin Corp. v. NetworkSolutions, Inc., 194 F.3d 980, 984 (9th

8. The Supreme Court cited two cases in sup-port of this proposition: William R. Warner &Co. v. Eli Lilly & Co., 265 U.S. 526, 44 S.Ct.615, 68 L.Ed. 1161 (1924), and Coca–Cola Co.v. Snow Crest Beverages, Inc., 64 F.Supp. 980(D.Mass.1946) (Wyzanski, J.), aff’d, 162 F.2d280 (1st Cir.), cert. denied, 332 U.S. 809, 68S.Ct. 110, 92 L.Ed. 386 (1947).

Like Inwood, Eli Lilly involved an allega-tion by a plaintiff drug manufacturer that adefendant drug manufacturer had intentional-ly induced distributors to pass off the defen-dant’s drug to purchasers as the plaintiff’s.265 U.S. at 529–30, 44 S.Ct. 615. The Su-preme Court granted the plaintiff’s request foran injunction, stating that ‘‘[o]ne who inducesanother to commit a fraud and furnishes themeans of consummating it is equally guiltyand liable for the injury.’’ Id. at 530–31, 44S.Ct. 615.

In Snow Crest, the Coca–Cola Companyclaimed that a rival soft drink maker hadinfringed Coca–Cola’s mark because bars pur-chasing the rival soft drink had substituted itfor Coca–Cola when patrons requested a‘‘rum (or whiskey) and Coca–Cola.’’ 64F.Supp. at 982, 987. Judge Wyzanski enteredjudgment in favor of the defendant primarilybecause there was insufficient evidence ofsuch illicit substitutions taking place. Id. at990. In doing so, the court stated that ‘‘[b]e-fore he can himself be held as a wrongdoero[r] contributory infringer one who suppliesanother with the instruments by which thatother commits a tort, must be shown to haveknowledge that the other will or can reason-ably be expected to commit a tort with thesupplied instrument.’’ Id. at 989.


Cir.1999); see also id. (‘‘Direct controland monitoring of the instrumentality usedby a third party to infringe the plaintiff’smark permits the expansion of InwoodLab.’s ‘supplies a product’ requirement forcontributory infringement.’’).

We have apparently addressed contribu-tory trademark infringement in only tworelated decisions, see Polymer Tech. Corp.v. Mimran, 975 F.2d 58, 64 (2d Cir.1992)(‘‘Polymer I ’’); Polymer Tech. Corp. v.Mimran, 37 F.3d 74, 81 (2d Cir.1994)(‘‘Polymer II ’’), and even then in littledetail. Citing Inwood, we said that ‘‘[a]distributor who intentionally induces an-other to infringe a trademark, or continuesto supply its product to one whom it knowsor has reason to know is engaging intrademark infringement, is contributoriallyliable for any injury.’’ Polymer I, 975F.2d at 64.

The limited case law leaves the law ofcontributory trademark infringement ill-defined. Although we are not the firstcourt to consider the application of Inwoodto the Internet, see, e.g., Lockheed, 194F.3d 980, supra (Internet domain nameregistrar), we are apparently the first to

consider its application to an online mar-ketplace.9

B. Discussion

1. Does Inwood Apply?

In the district court, the parties disput-ed whether eBay was subject to the In-wood test. See Tiffany, 576 F.Supp.2d at504. eBay argued that it was not becauseit supplies a service while Inwood governsonly manufacturers and distributors ofproducts. Id. The district court rejectedthat distinction. It adopted instead thereasoning of the Ninth Circuit in Lock-heed to conclude that Inwood applies to aservice provider who exercises sufficientcontrol over the means of the infringingconduct. Id. at 505–06. Looking ‘‘to theextent of the control exercised by eBayover its sellers’ means of infringement,’’the district court concluded that Inwoodapplied in light of the ‘‘significant control’’eBay retained over the transactions andlistings facilitated by and conductedthrough its website. Id. at 505–07.

On appeal, eBay no longer maintainsthat it is not subject to Inwood.10 We

9. European courts have done so. A Belgiancourt declined to hold eBay liable for counter-feit cosmetic products sold through its web-site. See Lancome v. eBay, Brussels Commer-cial Court (Aug. 12, 2008), Docket No.A/07/06032. French courts, by contrast, haveconcluded that eBay violated applicabletrademark laws. See, e.g., S.A. Louis VuittonMalletier v. eBay, Inc., Tribunal de Commercede Paris, Premiere Chambre B. (Paris Com-mercial Court), Case No. 200677799 (June 30,2008); Hermes v. eBay, Troyes High Court(June 4, 2008), Docket No. 06/0264; see alsoMax Colchester, ‘‘EBay to Pay Damages ToUnit of LVMH,’’ The Wall Street Journal, Feb.12, 2010, http://online.wsj.com/article email/SB10001424052748704337004575059523018541764–lMyQjAxMTAwMDEwMjExNDIyWj.html (last visited Mar. 1, 2010) (‘‘A Pariscourt Thursday ordered eBay to pay LouisVuitton Q200,000 ($275,000) in damages andto stop paying search engines to direct certain

key words to the eBay site.’’); see generally,Valerie Walsh Johnson & Laura P. Merritt,TIFFANY v. EBAY: A Case of Genuine Dis-parity in International Court Rulings onCounterfeit Products, 1 No. 2 Landslide 22(2008) (surveying decisions by Europeancourts in trademark infringement casesbrought against eBay).

10. Amici do so claim. See Electronic Fron-tier Foundation et al. Amici Br. 6 (arguingthat Inwood should ‘‘not govern where, ashere, the alleged contributory infringer has nodirect means to establish whether there is anyact of direct infringement in the first place’’).We decline to consider this argument. ‘‘Al-though an amicus brief can be helpful inelaborating issues properly presented by theparties, it is normally not a method for inject-ing new issues into an appeal, at least in caseswhere the parties are competently represent-


therefore assume without deciding that In-wood’s test for contributory trademark in-fringement governs.

2. Is eBay Liable Under Inwood?

[5] The question that remains, then, iswhether eBay is liable under the Inwoodtest on the basis of the services it providedto those who used its website to sell coun-terfeit Tiffany products. As noted, whenapplying Inwood to service providers,there are two ways in which a defendantmay become contributorially liable for theinfringing conduct of another: first, if theservice provider ‘‘intentionally induces an-other to infringe a trademark,’’ and sec-ond, if the service provider ‘‘continues tosupply its [service] to one whom it knowsor has reason to know is engaging intrademark infringement.’’ Inwood, 456U.S. at 854, 102 S.Ct. 2182. Tiffany doesnot argue that eBay induced the sale ofcounterfeit Tiffany goods on its website—the circumstances addressed by the firstpart of the Inwood test. It argues in-stead, under the second part of the Inwoodtest, that eBay continued to supply itsservices to the sellers of counterfeit Tiffa-ny goods while knowing or having reasonto know that such sellers were infringingTiffany’s mark.

The district court rejected this argu-ment. First, it concluded that to the ex-tent the NOCIs that Tiffany submittedgave eBay reason to know that particularlistings were for counterfeit goods, eBaydid not continue to carry those listingsonce it learned that they were specious.Tiffany, 576 F.Supp.2d at 515–16. Thecourt found that eBay’s practice waspromptly to remove the challenged listingfrom its website, warn sellers and buyers,cancel fees it earned from that listing, anddirect buyers not to consummate the saleof the disputed item. Id. at 516. The

court therefore declined to hold eBay con-tributorially liable for the infringing con-duct of those sellers. Id. at 518. Onappeal, Tiffany does not appear to chal-lenge this conclusion. In any event, weagree with the district court that no liabili-ty arises with respect to those terminatedlistings.

[6] Tiffany disagrees vigorously, how-ever, with the district court’s further de-termination that eBay lacked sufficientknowledge of trademark infringement bysellers behind other, non-terminated list-ings to provide a basis for Inwood liability.Tiffany argued in the district court thateBay knew, or at least had reason to know,that counterfeit Tiffany goods were beingsold ubiquitously on its website. Id. at507–08. As evidence, it pointed to, interalia, the demand letters it sent to eBay in2003 and 2004, the results of its BuyingPrograms that it shared with eBay, thethousands of NOCIs it filed with eBayalleging its good faith belief that certainlistings were counterfeit, and the variouscomplaints eBay received from buyersclaiming that they had purchased one ormore counterfeit Tiffany items througheBay’s website. Id. at 507. Tiffany ar-gued that taken together, this evidenceestablished eBay’s knowledge of the wide-spread sale of counterfeit Tiffany productson its website. Tiffany urged that eBaybe held contributorially liable on the basisthat despite that knowledge, it continuedto make its services available to infringingsellers. Id. at 507–08.

The district court rejected this argu-ment. It acknowledged that ‘‘[t]he evi-dence produced at trial demonstrated thateBay had generalized notice that someportion of the Tiffany goods sold on itswebsite might be counterfeit.’’ Id. at 507(emphasis in original). The court charac-

ed by counsel.’’ Universal City Studios, Inc. v. Corley, 273 F.3d 429, 445 (2d Cir.2001).


terized the issue before it as ‘‘whethereBay’s generalized knowledge of trade-mark infringement on its website was suf-ficient to meet the ‘knowledge or reason toknow’ prong of the Inwood test.’’ Id. at508 (emphasis in original). eBay had ar-gued that ‘‘such generalized knowledge isinsufficient, and that the law demandsmore specific knowledge of individual in-stances of infringement and infringing sell-ers before imposing a burden upon eBayto remedy the problem.’’ Id.

The district court concluded that ‘‘whileeBay clearly possessed general knowledgeas to counterfeiting on its website, suchgeneralized knowledge is insufficient underthe Inwood test to impose upon eBay anaffirmative duty to remedy the problem.’’Id. at 508. The court reasoned that In-wood’s language explicitly imposes contrib-utory liability on a defendant who ‘‘contin-ues to supply its product [—in eBay’s case,its service—] to one whom it knows or hasreason to know is engaging in trademarkinfringement.’’ Id. at 508 (emphasis inoriginal). The court also noted that plain-tiffs ‘‘bear a high burden in establishing‘knowledge’ of contributory infringement,’’and that courts have

been reluctant to extend contributorytrademark liability to defendants wherethere is some uncertainty as to the ex-tent or the nature of the infringement.In Inwood, Justice White emphasized inhis concurring opinion that a defendantis not ‘‘require[d] TTT to refuse to sell todealers who merely might pass off itsgoods.’’

Id. at 508–09 (quoting Inwood, 456 U.S. at861, 102 S.Ct. 2182) (White, J., concurring)(emphasis and alteration in original).11

Accordingly, the district court concludedthat for Tiffany to establish eBay’s con-tributory liability, Tiffany would have to

show that eBay ‘‘knew or had reason toknow of specific instances of actual in-fringement’’ beyond those that it ad-dressed upon learning of them. Id. at 510.Tiffany failed to make such a showing.

On appeal, Tiffany argues that the dis-tinction drawn by the district court be-tween eBay’s general knowledge of thesale of counterfeit Tiffany goods throughits website, and its specific knowledge asto which particular sellers were makingsuch sales, is a ‘‘false’’ one not required bythe law. Appellants’ Br. 28. Tiffany pos-its that the only relevant question is‘‘whether all of the knowledge, when takentogether, puts [eBay] on notice that thereis a substantial problem of trademark in-fringement. If so and if it fails to act,[eBay] is liable for contributory trademarkinfringement.’’ Id. at 29.

We agree with the district court. Forcontributory trademark infringement lia-bility to lie, a service provider must havemore than a general knowledge or reasonto know that its service is being used tosell counterfeit goods. Some contempo-rary knowledge of which particular listingsare infringing or will infringe in the futureis necessary.

We are not persuaded by Tiffany’s pro-posed interpretation of Inwood. Tiffanyunderstands the ‘‘lesson of Inwood ’’ to bethat an action for contributory trademarkinfringement lies where ‘‘the evidence [ofinfringing activity]—direct or circumstan-tial, taken as a whole—TTT provide[s] abasis for finding that the defendant knewor should have known that its product orservice was being used to further illegalcounterfeiting activity.’’ Appellants’ Br.30. We think that Tiffany reads Inwoodtoo broadly. Although the Inwood Courtarticulated a ‘‘knows or has reason to

11. The district court found the cases Tiffanyrelied on for the proposition that general

knowledge of counterfeiting suffices to triggerliability to be inapposite. Id. at 510.


know’’ prong in setting out its contributoryliability test, the Court explicitly declinedto apply that prong to the facts then be-fore it. See Inwood, 456 U.S. at 852 n. 12,102 S.Ct. 2182 (‘‘The District Court alsofound that the petitioners did not continueto provide drugs to retailers whom theyknew or should have known were engagingin trademark infringement. The Court ofAppeals did not discuss that finding, andwe do not address it.’’) (internal citationomitted). The Court applied only the in-ducement prong of the test. See id. at852–59, 102 S.Ct. 2182.

We therefore do not think that Inwoodestablishes the contours of the ‘‘knows orhas reason to know’’ prong. Insofar as itspeaks to the issue, though, the particularphrasing that the Court used—that a de-fendant will be liable if it ‘‘continues tosupply its product to one whom it knows orhas reason to know is engaging in trade-mark infringement,’’ id. at 854, 102 S.Ct.2182 (emphasis added)—supports the dis-trict court’s interpretation of Inwood, notTiffany’s.

We find helpful the Supreme Court’sdiscussion of Inwood in a subsequent copy-right case, Sony Corp. of America v. Uni-versal City Studios, Inc., 464 U.S. 417, 104S.Ct. 774, 78 L.Ed.2d 574 (1984). There,defendant Sony manufactured and soldhome video tape recorders. Id. at 419, 104S.Ct. 774. Plaintiffs Universal Studios andWalt Disney Productions held copyrightson various television programs that indi-vidual television-viewers had taped usingthe defendant’s recorders. Id. at 419–20,104 S.Ct. 774. The plaintiffs contendedthat this use of the recorders constitutedcopyright infringement for which the de-fendants should be held contributorily lia-

ble. Id. In ruling for the defendants, theCourt discussed Inwood and the differ-ences between contributory liability intrademark versus copyright law.

If Inwood’s narrow standard for con-tributory trademark infringement gov-erned here, [the plaintiffs’] claim of con-tributory infringement would merit littlediscussion. Sony certainly does not ‘in-tentionally induce[ ]’ its customers tomake infringing uses of [the plaintiffs’]copyrights, nor does it supply its prod-ucts to identified individuals known byit to be engaging in continuing infringe-ment of [the plaintiffs’] copyrights.

Id. at 439 n. 19, 104 S.Ct. 774 (quotingInwood, 456 U.S. at 855, 102 S.Ct. 2182;emphases added).

Thus, the Court suggested, had the In-wood standard applied in Sony, the factthat Sony might have known that someportion of the purchasers of its productused it to violate the copyrights of otherswould not have provided a sufficient basisfor contributory liability. Inwood’s ‘‘nar-row standard’’ would have required knowl-edge by Sony of ‘‘identified individuals’’engaging in infringing conduct. Tiffany’sreading of Inwood is therefore contrary tothe interpretation of that case set forth inSony.

Although the Supreme Court’s observa-tions in Sony, a copyright case, about the‘‘knows or has reason to know’’ prong ofthe contributory trademark infringementtest set forth in Inwood were dicta, theyconstitute the only discussion of that prongby the Supreme Court of which we areaware. We think them to be persuasiveauthority here.12

12. In discussing Inwood’s ‘‘knows or has rea-son to know’’ prong of the contributory in-fringement test, Sony refers to a defendant’sknowledge, but not to its constructive knowl-

edge, of a third party’s infringing conduct.Sony, 464 U.S. at 439 n. 19, 104 S.Ct. 774.We do not take the omission as altering thetest Inwood articulates.


Applying Sony’s interpretation of In-wood, we agree with the district court that‘‘Tiffany’s general allegations of counter-feiting failed to provide eBay with theknowledge required under Inwood.’’ Tif-fany, 576 F.Supp.2d at 511. Tiffany’s de-mand letters and Buying Programs did notidentify particular sellers who Tiffanythought were then offering or would offercounterfeit goods. Id. at 511–13.13 Andalthough the NOCIs and buyer complaintsgave eBay reason to know that certainsellers had been selling counterfeits, thosesellers’ listings were removed and repeatoffenders were suspended from the eBaysite. Thus Tiffany failed to demonstratethat eBay was supplying its service toindividuals who it knew or had reason toknow were selling counterfeit Tiffanygoods.

Accordingly, we affirm the judgment ofthe district court insofar as it holds thateBay is not contributorially liable fortrademark infringement.

3. Willful Blindness.

Tiffany and its amici express their con-cern that if eBay is not held liable exceptwhen specific counterfeit listings arebrought to its attention, eBay will have noincentive to root out such listings from itswebsite. They argue that this will effec-tively require Tiffany and similarly situat-ed retailers to police eBay’s website—andmany others like it—‘‘24 hours a day, and365 days a year.’’ Council of Fashion De-signers of America, Inc. Amicus Br. 5.They urge that this is a burden that mostmark holders cannot afford to bear.

First, and most obviously, we are inter-preting the law and applying it to the factsof this case. We could not, even if wethought it wise, revise the existing law inorder to better serve one party’s interestsat the expense of the other’s.

But we are also disposed to think, andthe record suggests, that private marketforces give eBay and those operating simi-lar businesses a strong incentive to mini-mize the counterfeit goods sold on theirwebsites. eBay received many complaintsfrom users claiming to have been dupedinto buying counterfeit Tiffany productssold on eBay. Tiffany, 576 F.Supp.2d at487. The risk of alienating these usersgives eBay a reason to identify and removecounterfeit listings.14 Indeed, it has spentmillions of dollars in that effort.

[7, 8] Moreover, we agree with thedistrict court that if eBay had reason tosuspect that counterfeit Tiffany goodswere being sold through its website, andintentionally shielded itself from discover-ing the offending listings or the identityof the sellers behind them, eBay mightvery well have been charged with knowl-edge of those sales sufficient to satisfyInwood’s ‘‘knows or has reason to know’’prong. Tiffany, 576 F.Supp.2d at 513–14.A service provider is not, we think, per-mitted willful blindness. When it hasreason to suspect that users of its serviceare infringing a protected mark, it maynot shield itself from learning of the par-ticular infringing transactions by lookingthe other way. See, e.g., Hard RockCafe, 955 F.2d at 1149 (‘‘To be willfullyblind, a person must suspect wrongdoingand deliberately fail to investigate.’’); Fo-

13. The demand letters did say that eBayshould presume that sellers offering five ormore Tiffany goods were selling counterfeits,id. at 511, but we agree with the district courtthat this presumption was factually unfound-ed, id. at 511–12.

14. At the same time, we appreciate the argu-ment that insofar as eBay receives revenuefrom undetected counterfeit listings and salesthrough the fees it charges, it has an incentiveto permit such listings and sales to continue.


novisa, 76 F.3d at 265 (applying HardRock Cafe’s reasoning to conclude that ‘‘aswap meet can not disregard its vendors’blatant trademark infringements with im-punity’’).15 In the words of the SeventhCircuit, ‘‘willful blindness is equivalent toactual knowledge for purposes of theLanham Act.’’ Hard Rock Cafe, 955 F.2dat 1149.16

eBay appears to concede that it knew asa general matter that counterfeit Tiffanyproducts were listed and sold through itswebsite. Tiffany, 576 F.Supp.2d at 514.Without more, however, this knowledge isinsufficient to trigger liability under In-

wood. The district court found, after care-ful consideration, that eBay was not will-fully blind to the counterfeit sales. Id. at513. That finding is not clearly errone-ous.17 eBay did not ignore the informationit was given about counterfeit sales on itswebsite.

III. Trademark Dilution

A. Principles

Federal law allows the owner of a ‘‘fa-mous mark’’ to enjoin a person from using‘‘a mark or trade name in commerce that islikely to cause dilution by blurring or dilu-

15. To be clear, a service provider is not con-tributorially liable under Inwood merely forfailing to anticipate that others would use itsservice to infringe a protected mark. In-wood, 456 U.S. at 854 n. 13, 102 S.Ct. 2182(stating that for contributory liability to lie, adefendant must do more than ‘‘reasonablyanticipate’’ a third party’s infringing conduct(internal quotation marks omitted)). Butcontributory liability may arise where a de-fendant is (as was eBay here) made awarethat there was infringement on its site but(unlike eBay here) ignored that fact.

16. The principle that willful blindness is tan-tamount to knowledge is hardly novel. See,e.g. Harte–Hanks Commc’ns, Inc. v. Con-naughton, 491 U.S. 657, 659, 692, 109 S.Ct.2678, 105 L.Ed.2d 562 (1989) (concluding inpublic-official libel case that ‘‘purposefulavoidance of the truth’’ is equivalent to‘‘knowledge that [a statement] was false or[was made] with reckless disregard of wheth-er it was false’’ (internal quotation marksomitted)); United States v. Khorozian, 333F.3d 498, 504 (3d Cir.2003) (acting with will-ful blindness satisfies the intent requirementof the federal bank fraud statute); Friedmanv. Comm’r, 53 F.3d 523, 525 (2d Cir.1995)(‘‘The ‘innocent spouse’ exemption [from therule that married couples who file a joint taxreturn are jointly and severally liable for anytax liability found] was not designed to pro-tect willful blindness or to encourage the de-liberate cultivation of ignorance.’’); Mattinglyv. United States, 924 F.2d 785, 792 (8th Cir.1991) (concluding in civil tax fraud case that‘‘the element of knowledge may be inferred

from deliberate acts amounting to willfulblindness to the existence of fact or acts con-stituting conscious purpose to avoid enlight-enment.’’); Morrow Shoe Mfg. Co. v. New Eng-land Shoe Co., 57 F. 685, 694 (7th Cir.1893)(‘‘The mind cannot well avoid the conclusionthat if they did not know of the fraudulentpurposes of Davis it was because they werewillfully blind. Such facility of belief, it hasbeen well said, invites fraud, and may justlybe suspected of being its accomplice.’’); StateStreet Trust Co. v. Ernst, 278 N.Y. 104, 112, 15N.E.2d 416, 419 (1938) (‘‘[H]eedlessness andreckless disregard of consequence [by an ac-countant] may take the place of deliberateintention.’’).

17. Tiffany’s reliance on the ‘‘flea market’’cases, Hard Rock Cafe and Fonovisa, is una-vailing. eBay’s efforts to combat counterfeit-ing far exceeded the efforts made by the de-fendants in those cases. See Hard Rock Cafe,955 F.2d at 1146 (defendant did not investi-gate any of the seizures of counterfeit prod-ucts at its swap meet, even though it knewthey had occurred); Fonovisa, 76 F.3d at 265(concluding that plaintiff stated a claim forcontributory trademark infringement basedon allegation that swap meet ‘‘disregard[ed]its vendors’ blatant trademark infringementswith impunity’’). Moreover, neither case con-cluded that the defendant was willfully blind.The court in Hard Rock Cafe remanded sothat the district court could apply the correctdefinition of ‘‘willful blindness,’’ 955 F.2d at1149, and the court in Fonovisa merely sus-tained the plaintiff’s complaint against a mo-tion to dismiss, 76 F.3d at 260–61, 265.


tion by tarnishment of the famous mark.’’15 U.S.C. § 1125(c)(1).

[9] ‘‘Dilution by blurring’’ is an ‘‘associ-ation arising from the similarity between amark or trade name and a famous markthat impairs the distinctiveness of the fa-mous mark.’’ Id. § 1125(c)(2)(B). It canoccur ‘‘regardless of the presence or ab-sence of actual or likely confusion, of com-petition, or of actual economic injury.’’ Id.§ 1125(c)(1). ‘‘Some classic examples ofblurring include ‘hypothetical anomalies asDupont shoes, Buick aspirin tablets,Schlitz varnish, Kodak pianos, Bulovagowns, and so forth.’ ’’ Starbucks Corp. v.Wolfe’s Borough Coffee, Inc., 588 F.3d 97,105 (2d Cir.2009) (quoting Mead DataCent., Inc. v. Toyota Motor Sales, U.S.A.,Inc., 875 F.2d 1026, 1031 (2d Cir.1989)). Itis not a question of confusion; few con-sumers would likely confuse the source ofa Kodak camera with the source of a ‘‘Ko-dak’’ piano. Dilution by blurring refersinstead to ‘‘ ‘the whittling away of [the]established trademark’s selling power andvalue through its unauthorized use by oth-ers.’ ’’ Id. (quoting Mead Data Cent., 875F.2d at 1031).

Federal law identifies a non-exhaustivelist of six factors that courts ‘‘may consid-er’’ when determining whether a mark islikely to cause dilution by blurring. Theseare: (1) ‘‘[t]he degree of similarity be-tween the mark or trade name and thefamous mark’’; 18 (2) ‘‘[t]he degree of in-herent or acquired distinctiveness of thefamous mark’’; (3) ‘‘[t]he extent to whichthe owner of the famous mark is engagingin substantially exclusive use of the mark’’;(4) ‘‘[t]he degree of recognition of the fa-

mous mark’’; (5) ‘‘[w]hether the user ofthe mark or trade name intended to createan association with the famous mark’’; and(6) ‘‘[a]ny actual association between themark or trade name and the famousmark.’’ 15 U.S.C. § 1125(c)(2)(B)(i-vi).

[10] In contrast to dilution by blurring,‘‘dilution by tarnishment’’ is an ‘‘associa-tion arising from the similarity between amark or trade name and a famous markthat harms the reputation of the famousmark.’’ 15 U.S.C. § 1125(c)(2)(C). This‘‘generally arises when the plaintiff’strademark is linked to products of shoddyquality, or is portrayed in an unwholesomeor unsavory context likely to evoke unflat-tering thoughts about the owner’s prod-uct.’’ Deere & Co. v. MTD Prods., Inc., 41F.3d 39, 43 (2d Cir.1994).

[11] New York State law also ‘‘pro-vide[s] for protection against both dilutionby blurring and tarnishment.’’ StarbucksCorp., 588 F.3d at 114; see N.Y. Gen. Bus.Law § 360–l. The state law is not identi-cal to the federal one, however. NewYork ‘‘does not[, for example,] require amark to be ‘famous’ for protection againstdilution to apply.’’ Starbucks Corp., 588F.3d at 114. Nor are the factors used todetermine whether blurring has occurredthe same. ‘‘Most important to the distinc-tion here, New York law does not permit adilution claim unless the marks are ‘sub-stantially’ similar.’’ Id.

B. Discussion

[12] The district court rejected Tiffa-ny’s dilution by blurring claim on the

18. We have recently explained that under theTrademark Dilution Revision Act of 2006(‘‘TDRA’’), Pub.L. No. 109–312, 120 Stat.1730, 1731 (Oct. 6, 2006), the similarity be-tween the famous mark and the allegedlyblurring mark need not be ‘‘substantial’’ inorder for the dilution by blurring claim to

succeed. See Starbucks Corp., 588 F.3d at107–09. The district court concluded that theTDRA governs Tiffany’s claim. See Tiffany,576 F.Supp.2d at 522–23. We agree and notethat Tiffany does not dispute this conclusionon appeal.


ground that ‘‘eBay never used the TIFFA-NY Marks in an effort to create an associ-ation with its own product, but instead,used the marks directly to advertise andidentify the availability of authentic Tiffa-ny merchandise on the eBay website.’’Tiffany, 576 F.Supp.2d at 524. The courtconcluded that ‘‘just as the dilution byblurring claim fails because eBay has nev-er used the [Tiffany] Marks to refer toeBay’s own product, the dilution by tar-nishment claim also fails.’’ Id. at 525.

We agree. There is no second mark orproduct at issue here to blur with or totarnish ‘‘Tiffany.’’

Tiffany argues that counterfeiting di-lutes the value of its product. Perhaps.But insofar as eBay did not itself sell thegoods at issue, it did not itself engage indilution.

Tiffany argued unsuccessfully to the dis-trict court that eBay was liable for contrib-utory dilution. Id. at 526. Assumingwithout deciding that such a cause of ac-tion exists, the court concluded that theclaim would fail for the same reasons Tif-fany’s contributory trademark infringe-ment claim failed. Id. Tiffany does notcontest this conclusion on appeal. Wetherefore do not address it. See Palmieriv. Allstate Ins. Co., 445 F.3d 179 (2d Cir.2006) (issues not raised on appeal aretreated as waived).

IV. False Advertising

Finally, Tiffany claims that eBay en-gaged in false advertising in violation offederal law.

A. Principles

[13] Section 43(a) of the Lanham Actprohibits any person from, ‘‘in commercialadvertising or promotion, misrepre-sent[ing] the nature, characteristics, quali-ties, or geographic origin of his or her oranother person’s goods, services, or com-mercial activities.’’ 15 U.S.C.§ 1125(a)(1)(B). A claim of false advertis-ing may be based on at least one of twotheories: ‘‘that the challenged advertise-ment is literally false, i.e., false on itsface,’’ or ‘‘that the advertisement, while notliterally false, is nevertheless likely to mis-lead or confuse consumers.’’ Time War-ner Cable, Inc. v. DIRECTV, Inc., 497F.3d 144, 153 (2d Cir.2007).

In either case, the ‘‘injuries redressed infalse advertising cases are the result ofpublic deception.’’ Johnson & Johnson *Merck Consumer Pharm. Co. v. Smith-kline Beecham Corp., 960 F.2d 294, 298(2d Cir.1992) (‘‘Merck ’’). And ‘‘[u]nder ei-ther theory, the plaintiff must also demon-strate that the false or misleading repre-sentation involved an inherent or materialquality of the product.’’ Time WarnerCable, 497 F.3d at 153 n. 3.19

[14, 15] Where an advertising claim isliterally false, ‘‘the court may enjoin theuse of the claim without reference to theadvertisement’s impact on the buying pub-lic.’’ McNeil–P.C.C., Inc. v. Bristol–MyersSquibb Co., 938 F.2d 1544, 1549 (2d Cir.1991) (internal quotation marks omitted).To succeed in a likelihood-of-confusion casewhere the statement at issue is not literal-ly false, however, a plaintiff ‘‘must demon-strate, by extrinsic evidence, that the chal-

19. We recently adopted ‘‘the ‘false by neces-sary implication’ doctrine,’’ under which ‘‘adistrict court evaluating whether an advertise-ment is literally false ‘must analyze the mes-sage conveyed in full context.’ ’’ Time WarnerCable, 497 F.3d at 158; cf. S.C. Johnson &Son, Inc. v. Clorox Co., 241 F.3d 232, 238 (2d

Cir.2001) (‘‘In considering a false-advertisingclaim, [f]undamental to any task of interpreta-tion is the principle that text must yield tocontext.’’) (quoting Avis Rent A Car Sys., Inc.v. Hertz Corp., 782 F.2d 381, 385 (2d Cir.1986) (internal quotation marks omitted)).


lenged commercials tend to mislead orconfuse consumers,’’ and must ‘‘demon-strate that a statistically significant part ofthe commercial audience holds the falsebelief allegedly communicated by the chal-lenged advertisement.’’ Merck, 960 F.2dat 297, 298; Time Warner Cable, 497 F.3dat 153 (‘‘[W]hereas plaintiffs seeking toestablish a literal falsehood must generallyshow the substance of what is conveyed,TTT a district court must rely on extrinsicevidence [of consumer deception or confu-sion] to support a finding of an implicitlyfalse message.’’ (internal quotation marksomitted and emphasis and alterations inoriginal)).

B. Discussion

eBay advertised the sale of Tiffanygoods on its website in various ways.Among other things, eBay provided hyper-links to ‘‘Tiffany,’’ ‘‘Tiffany & Co. under$150,’’ ‘‘Tiffany & Co.,’’ ‘‘Tiffany Rings,’’and ‘‘Tiffany & Co. under $50.’’ Pl.’s Exs.290, 392, 1064, 1065. eBay also purchasedadvertising space on search engines, insome instances providing a link to eBay’ssite and exhorting the reader to ‘‘Findtiffany items at low prices.’’ Pl.’s Ex.1065 (bold face type in original). Yet thedistrict court found, and eBay does notdeny, that ‘‘eBay certainly had generalizedknowledge that Tiffany products sold oneBay were often counterfeit.’’ Tiffany,576 F.Supp.2d at 520–21. Tiffany arguesthat because eBay advertised the sale ofTiffany goods on its website, and becausemany of those goods were in fact counter-feit, eBay should be liable for false adver-tising.

The district court rejected this argu-ment. Id. at 519–21. The court first con-cluded that the advertisements at issuewere not literally false ‘‘[b]ecause authen-tic Tiffany merchandise is sold on eBay’s

website,’’ even if counterfeit Tiffany prod-ucts are sold there, too. Id. at 520.

The court then considered whether theadvertisements, though not literally false,were nonetheless misleading. It conclud-ed they were not for three reasons. First,the court found that eBay’s use of Tiffa-ny’s mark in its advertising was ‘‘protect-ed, nominative fair use.’’ Id. Second, thecourt found that ‘‘Tiffany has not proventhat eBay had specific knowledge as to theillicit nature of individual listings,’’ imply-ing that such knowledge would be neces-sary to sustain a false advertising claim.Id. at 521. Finally, the court reasonedthat ‘‘to the extent that the advertisingwas false, the falsity was the responsibilityof third party sellers, not eBay.’’ Id.

We agree with the district court thateBay’s advertisements were not literallyfalse inasmuch as genuine Tiffany mer-chandise was offered for sale througheBay’s website. But we are unable toaffirm on the record before us the districtcourt’s further conclusion that eBay’s ad-vertisements were not ‘‘likely to mislead orconfuse consumers.’’ Time Warner Cable,497 F.3d at 153.

As noted, to evaluate Tiffany’s claimthat eBay’s advertisements misled consum-ers, a court must determine whether ex-trinsic evidence indicates that the chal-lenged advertisements were misleading orconfusing. The reasons the district courtgave for rejecting Tiffany’s claim do notseem to reflect this determination, though.The court’s first rationale was that eBay’sadvertisements were nominative fair use ofTiffany’s mark.

But, even if that is so, it does not followthat eBay did not use the mark in a mis-leading advertisement. It may, after all,constitute fair use for Brand X Coffee touse the trademark of its competitor, BrandY Coffee, in an advertisement stating that‘‘In a blind taste test, 9 out of 10 New


Yorkers said they preferred Brand X Cof-fee to Brand Y Coffee.’’ But if 9 out of 10New Yorkers in a statistically significantsample did not say they preferred X to Y,or if they were paid to say that they did,then the advertisement would nonethelessbe literally false in the first example, ormisleading in the second.

There is a similar difficulty with thedistrict court’s reliance on the fact thateBay did not know which particular list-ings on its website offered counterfeit Tif-fany goods. That is relevant, as we havesaid, to whether eBay committed contribu-tory trademark infringement. But itsheds little light on whether the advertise-ments were misleading insofar as they im-plied the genuineness of Tiffany goods oneBay’s site.

Finally, the district court reasoned thatif eBay’s advertisements were misleading,that was only because the sellers of coun-terfeits made them so by offering inau-thentic Tiffany goods. Again, this con-sideration is relevant to Tiffany’s directinfringement claim, but less relevant, ifrelevant at all, here. It is true thateBay did not itself sell counterfeit Tiffa-ny goods; only the fraudulent vendorsdid, and that is in part why we concludethat eBay did not infringe Tiffany’smark. But eBay did affirmatively adver-tise the goods sold through its site asTiffany merchandise. The law requiresus to hold eBay accountable for thewords that it chose insofar as they mis-led or confused consumers.

[16] eBay and its amici warn of thedeterrent effect that will grip online adver-tisers who are unable to confirm the au-thenticity of all of the goods they advertisefor sale. See, e.g., Yahoo! Inc. AmicusBr. 15; Electronic Frontier Foundation etal. Amicus Br. 18–19. We rather doubtthat the consequences will be so dire. Anonline advertiser such as eBay need notcease its advertisements for a kind of

goods only because it knows that not all ofthose goods are authentic. A disclaimermight suffice. But the law prohibits anadvertisement that implies that all of thegoods offered on a defendant’s website aregenuine when in fact, as here, a sizeableproportion of them are not.

Rather than vacate the judgment of thedistrict court as to Tiffany’s false advertis-ing claim, we think it prudent to remandthe cause so that the district court, with itsgreater familiarity with the evidence, canreconsider the claim in light of what wehave said. The case is therefore remandedpursuant to United States v. Jacobson, 15F.3d 19 (2d Cir.1994), for further proceed-ings for the limited purpose of the districtcourt’s re-examination of the false adver-tising claim in accordance with this opin-ion. We retain jurisdiction so that any ofthe parties may seek appellate review bynotifying the Clerk of the Court withinthirty days of entry of the district court’sjudgment on remand. See, e.g., GalvizZapata v. United States, 431 F.3d 395, 399(2d Cir.2005). Such notification will notrequire the filing of a new notice of appeal.Id. If notification occurs, the matter will bereferred automatically to this panel fordisposition.

If circumstances obviate the need forthe case to return to this Court, the par-ties shall promptly notify the Clerk of theCourt. Id.

CONCLUSION

For the foregoing reasons, we affirm thejudgment of the district court with respectto the claims of trademark infringementand dilution. Employing a Jacobson re-mand, we return the cause to the districtcourt for further proceedings with respectto Tiffany’s false advertising claim.

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