So this comment to my latest blog post got me thinking. Congress has (admirably) made an effort to clarify the legal liability faced by Internet service providers for content posted by users in some areas (see, e.g., Section 230 of the Communications Decency Act, and Section 512 of the Digital Millennium Copyright Act). Yet the so-called "innocent infringer" provisions of the Lanham Act, codified in Section 32 (which was last amended in 1988), still stop woefully short of providing a sufficient safeharbor for online service providers like Twitter, Google or the Internet Archive. (For the purposes of this post, I'm addressing only Google's search engine services, not its AdWords or AdSense businesses.)
Specifically, Section 32 provides that:
(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to a person bringing an action under section 43(a) or (d) [15 USC 1125(a) or (d)] shall be limited as follows:(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 43(a) [15 USC 1125(a)] shall be entitled as against such infringer or violator only to an injunction against future printing.
(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) [15 USC 1125(a)] as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 43(a) [15 USC 1125(a)] with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.
15 U.S.C. § 1114. When applied to the online activities of companies like Twitter, Google and the Interent Archive, the inadequacy of the remedy-limiting language used in Section 32(2) readily becomes apparent.
For example, §32(2)(a) provides insulation against monetary damages for those "engaged solely in the business of printing the mark or violating matter for others." While this section is clearly aimed at protecting companies that use a mark in commerce only at the direction of a third party, the argument that Twitter or Google are engaged in "printing the mark" for others is probably, at best, a strained reading of the statutory language. (So far, no court has directly addressed this question.)
Likewise, the inclusion of the phrase "electronic communications" in §32(2)(b) is a good start towards adapting the Lanham Act to the digital world, but its usefulness for Internet service providers is severely limited by the requirement that reproduction of the mark be part of "paid advertising matter." While the owners of websites like Salon.com or Slate.com may safely take refuge under this section if an infringing mark appears in an advertisement on their site, the likes of Twitter, Google and the Internet Archive would appear to be out of luck if a third party's mark is reproduced in a tweet or cached version of a third-party website.
Similarly, standard industry caching activities are left largely unaddressed by §32(2)'s limitation of injunctive relief to "future issues" and "future printings" containing the infringing material. Left open is the question of whether the permanent indexing and display of such material in response to future consumer queries constitutes a "future issue" or "future printing" of the communication subject to injunction, or instead is part of the original publication, and thus shielded from the issuance of an injunction.
Of course, this remains something of an academic concern at this point. There haven't been a rash of cases seeking to hold Google and the Internet Archive liable for trademark infringement related to their caching activities, as there have been on the copyright side. (Although the same cannot be said for Twitter, who just this month was sued by St. Louis Cardinals manager Tony La Russa for trademark infringement, dilution, and cybersquatting as a result of someone using the Twitter user name TonyLaRussa. Likewise, Google has been sued for trademark infringement relating to both its AdWords and AdSense programs.) So far, only three cases address §32(2)'s "innocent infringer" standard as applied to Internet service providers -- Gucci Am., Inc. v. Hall & Assoc., 135 F. Supp.2d 409 (S.D.N.Y. 2001) (rejecting web site hosting company's motion to dismiss trademark infringement claims); Vulcan Golf, LLC v. Google Inc., 552 F. Supp.2d 752 (N.D. Ill. 2008) (declining to reach Google's motion to dismiss under §32(2) on the grounds that the motion required consideration of materials outside the pleadings); and Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp.2d 463 (S.D.N.Y. 2008) (finding that Internet auction service eBay does not qualify as an "innocent infringer" under §32(2)).
Open to debate is whether this is a symptom or a cause of trademark law's status as the red-headed stepchild of Internet intellectual property scholarship. (If you don't believe me, run the two following Google queries -- "'trademark infringement' internet" and "'copyright infringement' internet.") Even if the issue is not yet keeping Google's lawyers up at night, a little clarity certainly wouldn't be a dangerous thing.
(DISCLOSURE: One of the firms at which I was previously employed represented Tiffany in the eBay case, sued Google over its AdWords program on behalf of GEICO, and also does trademark work for Gucci. Another firm at which I was previously employed represented Hall & Associates in the Gucci litigation.)