They sue online market places (i.e. eBAy) in the hope of trademark law friendly court rulings:
U.S.: Tiffany (NJ) Inc. v. eBay Inc., No 04 Civ. 4607 (RJS) (S.D.N.Y. July 14, 2008)
Germany: Rolex v. eBay Bundesgerichtshof [BGH], Urt. v. 30.4.2008 – Az.: I ZR 73/05
France: Louis Vuitton c/ eBay Tribunal de Commerce de Paris, 1re chambre B, 30 juin 2008
One of the questions each of the courts needed to answer is what is the legal standard for the duty of care of the online market place with regard to third party trademark infringement. Unlike what I have seen reported in the media, the U.S. Court did not say that the adoption of a simple notice and takedown policy would be enough for eBay to escape contributory liability under U.S. law. The Court puts a lot of emphasis on the extra meaures put in place by eBay, in the absence of which eBay would probably not have escaped liability. In Eric Goldman’s words the judge endorses those measures:
“Most noteworthy is that the judge endorsed eBay’s various efforts to reduce the sale of counterfeit goods on its site and provide extrajudicial recourse to brand owners like Tiffany. Back in the 1990s, some caselaw suggested that affirmative efforts to suppress user activity might exacerbate liability, so the preferred strategy was to remain “passive” with respect to users. eBay chose a different approach. It proactively attempted to reduce the incidence of counterfeiting on the site through its VeRO program, its fraud engine, manual review efforts to seek out auctions that looked like they might be counterfeit goods. Further, eBay continues to innovate new ways to curb bad users or help brand owners.”
As a consequence, it seems that the line between being liable and not liable has been made dependent on a number of different preventive measures. In practice it means that one has to impress the judge with the technological tools one has put in place to monitor counterfeiting and trademark infringement. I am not so sure whether this is such a stable solution and I am also not sure whether this is similar as the safe harbour in the DMCA. What is a reasonable amount of policing for an online market place? As far as I can see all three courts have said: something more than notice and takedown. In that sense also the U.S. decision could be seen as a victory for the luxury goods industry, even though the judge states: “[T]he fact remains that rights holders bear the principal responsibility to police their trademarks.” This is not a hard criterium for the residual responsibility of the online market place.