United States Court of Appeals - JD Supra
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08-3947-cv
08-3947-cv
d THE IN THE
United States Court of Appeals
United States Court of Appeals FOR THE FOR THESECOND SECONDCIRCUIT CIRCUIT
TIFFANY(NJ) TIFFANY(NJ) INC. INC. and andTIFFANY TIFFANYAND AND COMPANY, COMPANY,
Plaintiffs-Appellants, —against— eBAY eBAY IINC., NC .,
Defendant-Appellee. ON APPEAL FROM THE UNITED UNITED STATES STATES DISTRICT COURT COURT FOR FOR THE SOUTHERN DISTRICT OF NEW YORK YORK (NO. (NO. 04 04 CIV. CIV. 4607 4607 (RJS)) (RJS))
BRIEF OFOF THE BRIEFAMICUS AMICUSCURIAE CURIAE THE COUNCIL OF FASHION DESIGNERS OF AMERICA, INC. INC. COUNCIL OF FASHION DESIGNERS OF AMERICA,
ALAIN ALAIN COBLENCE COBLENCE COBLENCE COBLENCE & & ASSOCIATES ASSOCIATES 200 Park Avenue South
New York, New York 10003 10003 (212) 593-9191 Attorneys Attorneys for Amicus Curiae Council of of Fashion Fashion Designers Designers of America, Inc.
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CORPORATE DISCLOSURE STATEMENT CORPORATE DISCLOSURE STATEMENT Pursuant thethe Council of of Pursuant to to Fed. Fed. R. R.App. App.P.P.26.1, 26.1,amicus amicuscuriae curiae Council Fashion (“CFDA”) states that that it is not publiclyFashion Designers DesignersofofAmerica, America,Inc. Inc. (“CFDA”) states it isanot a publiclyheld entity. CFDA does does not have held corporation corporationororother otherpublicly-held publicly-held entity. CFDA not any have any parent corporation or other publicly-held parent corporation corporationand andno nopublicly-held publicly-held corporation or other publicly-held entity IACC’s stock. entityholds holds10% 10%orormore moreofof IACC’s stock.
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TABLE CONTENTS TABLEOF OF CONTENTS STATEMENT OF INTEREST OF OF AMICUS CURIAE ... .. 1 STATEMENT OF INTEREST AMICUS CURIAE................................ 1 SUMMARY OFOF THE ARGUMENT ... .............................................................. 5 SUMMARY THE ARGUMENT 5 ARGUMENT ... .. 6 ARGUMENT.................................................................................................. 6 I. I.
The Placed thethe Burden of Policing The District DistrictCourt CourtImproperly Improperly Placed Burden of Policing Trademark Counterfeiting on eBay’s Online Auctions on Brand Trademark Counterfeiting on eBay’s Online Auctions on Brand Owners ... Owners.................................................................................................... 66
CONCLUSION... ... 15 CONCLUSION............................................................................................. 15
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TABLE AUTHORITIES TABLEOF OF AUTHORITIES CASES C ASES
Tiffany (NJ) ___ F. F. Supp. 2d 2d ___, 2008 WL WL Tiffany (NJ)Inc. Inc.v.v.eBay, eBay,Inc., Inc., ___ Supp. ___, 2008 2755787 (“Op.”)... ...passim 2755787 (S.D.N.Y. (S.D.N.Y.2008) 2008) (“Op.”)...............................................................passim
OTHER OTHER AUTHORITIES AUTHORITIES Coalition Property Rights (CIPR) “First“First Global Coalitionfor forIntellectual Intellectual Property Rights (CIPR) Global Congress on Combating Counterfeiting” Brussels May 25-26 20042004...................3 ... . Congress on Combating Counterfeiting” Brussels May 25-26 3 Moises Anchor Books , 2005 ... ........................................................... .3-4 Moises Naim, Naim,Illicit, Illicit, Anchor Books , 2005 .3-4 Organization Cooperation andand Development - “The Organizationfor forEconomic Economic Cooperation Development – “The Economic Impact of Counterfeiting and Piracy” June 2007 Report ... .. Economic Impact of Counterfeiting and Piracy” June 2007 Report....................4 4
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The of of America, Inc.Inc. (“CFDA”) The Council CouncilofofFashion FashionDesigners Designers America, (“CFDA”) 1 support of the appeal of Tiffany (NJ) submits submits this thisbrief briefasasamicus amicuscuriae1 curiaein in support of the appeal of Tiffany (NJ)
Inc. (together, “Tiffany”) from from the judgment Inc. and and Tiffany Tiffanyand andCompany Company (together, “Tiffany”) the judgment entered Court. Tiffany (NJ) (NJ) Inc. v.Inc. eBay, Inc., Inc., entered against against Tiffany Tiffanybybythe theDistrict District Court. Tiffany v. eBay, ___ (S.D.N.Y. 2008) (“Op.”). ___ F. F. Supp. Supp. 2d 2d___, ___,2008 2008WL WL2755787 2755787 (S.D.N.Y. 2008) (“Op.”). STATEMENT OFOF INTEREST OF AMICUS CURIAECURIAE STATEMENT INTEREST OF AMICUS The of of America, Inc.Inc. (“CFDA”) is a is a The Council CouncilofofFashion FashionDesigners Designers America, (“CFDA”) not-for-profit whose membership consists of 350 of of not-for-profittrade tradeassociation association whose membership consists of 350 America’s and accessory designers as as well as as many newer America’sforemost foremostfashion fashion and accessory designers well many newer and and smaller smaller designers. designers. Founded goals areare “to“to further the the position of of Founded in in1962, 1962,the theCFDA’s CFDA’s goals further position fashion artart andand culture, to to fashion design designas asaa recognized recognizedbranch branchofofAmerican American culture, advance establish and maintain a a advance its its artistic artisticand andprofessional professionalstandards, standards,toto establish and maintain code benefit in professional, public, and and code of of ethics ethicsand andpractices practicesofofmutual mutual benefit in professional, public, trade public understanding andand trade relations, relations,and andtotopromote promoteand andimprove improve public understanding appreciation leadership in quality and and taste.” appreciationofofthe thefashion fashionarts artsthrough through leadership in quality taste.” The activity are:are: The CFDA’s CFDA’sthree threemain mainareas areasofof activity 1 1
The of of thisthis proposed amicus curiae The parties parties have haveconsented consentedtotothe thefiling filing proposed amicus curiae brief. brief.
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Educational — The CFDA is committed to nurturing the EducationalInitiatives Initiatives — The CFDA is committed to nurturing the development future American designers by by developmentofofthe thefashion fashionindustry’s industry’s future American designers providing post-graduate, andand early providingsupport supportand andresources resourcesatatthe thecollegiate, collegiate, post-graduate, early stages of aa designer’s stages of designer’scareer, career,through: through: ••
Scholarship ScholarshipPrograms; Programs;
••
Masters Masters Programs; Programs;
••
Professional thethe ProfessionalDevelopment DevelopmentPrograms Programsincluding including
CFDA/Vogue which provides cash awards andand mentoring CFDA/VogueFashion FashionFund, Fund, which provides cash awards mentoring teams teams to to emerging emergingdesigners. designers. Philanthropy —— Through a separate, not-for-profit entity,entity, CFDACFDA Philanthropy Through a separate, not-for-profit Foundation, raises funds forfor charitable initiatives and and Foundation,Inc., Inc.,CFDA CFDA raises funds charitable initiatives campaigns. efforts include: campaigns. The Themain mainphilanthropic philanthropic efforts include: ••
Fashion industry’s Fashion Targets TargetsBreast BreastCancer Cancer- –the thefashion fashion industry’s
response to the has raised and response to the devastating devastatingimpact impactofofbreast breastcancer, cancer,which which has raised and distributed since its founding in 1994; distributedmore morethan than$40 $40million million since its founding in 1994; ••
7th fundraising event for for 7th on on Sale Sale -–aaground-breaking ground-breaking fundraising event
HIV/AIDS HIV/AIDSorganizations. organizations. The Awards — Annual awards gala to recognize and and The CFDA CFDAFashion Fashion Awards — Annual awards gala to recognize celebrate made to to American fashion by by celebrate the the outstanding outstandingcontributions contributions made American fashion
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individuals thethe industry. Awards are given for design individualsininallallareas areasofof industry. Awards are given for design excellence awards excellence ininwomenswear, womenswear,menswear, menswear,and andaccessories, accessories,and andspecial special awards are presented in retailing, photography, and and are presented in such such varied variedfields fieldsasaspublishing, publishing, retailing, photography, entertainment. entertainment. CFDA brief because counterfeiting strikes at the CFDAoffers offersthis thisamicus amicus brief because counterfeiting strikes at the very industry. TheThe counterfeiting of fashion very heart heartofofthe theAmerican Americanfashion fashion industry. counterfeiting of fashion products, hashas been estimated to to products, clothing clothingand andaccessories, accessories,world-wide world-wide been estimated 2 comprise With the worldwide counterfeit comprise 33 33toto45% 45%ofofallallcounterfeiting.2 counterfeiting. With the worldwide counterfeit
market $600 billion a year, andand the the market estimated estimatedas asofof2006 2006totobebeworth worth $600 billion a year, 3 worldwide fashion counterfeit exponential market,3 exponentialgrowth growthofofthis this market,the the worldwide fashion counterfeit
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The (WCO) andand Interpol are credited with with The World WorldCustoms CustomsOrganization Organization (WCO) Interpol are credited this Property Rights (CIPR) this estimate. estimate.See See Coalition Coalitionfor forIntellectual Intellectual Property Rights (CIPR) “First Global Congress on Combating Counterfeiting” Brussels May 25- 25“First Global Congress on Combating Counterfeiting” Brussels May 26 26 2004 2004
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Since Interpol, trade in counterfeits has has Since the the early early1990’s, 1990’s,according accordingtoto Interpol, trade in counterfeits grown trade. Twenty years ago,ago, grownatateight eighttimes timesthe thespeed speedofoflegitimate legitimate trade. Twenty years commercial due to to counterfeiting were estimated commerciallosses lossesaround aroundthe theworld world due counterfeiting were estimated in the $5 billion range; today, they are around $500 billion. That puts the the in the $5 billion range; today, they are around $500 billion. That puts cost 5 and 1010 percent of the total value of of cost of of counterfeiting counterfeitingbetween between 5 and percent of the total value world GDP of of Australia. AndAnd still itstill grows, worldtrade, trade,on onaapar parwith, with,say, say,thethe GDP Australia. it grows, at least measured by the number of customs seizures of counterfeit at least measured by the number of customs seizures of counterfeit goods. these seizures grew 900900 percent between goods. InInthe theEuropean EuropeanUnion, Union, these seizures grew percent between 1998 and 2001, only to double again the following year. Seizures by 1998 and 2001, only to double again the following year. Seizures by U.S. and Japan U.S. customs customs increased increased12 12per-cent per-centbetween between2002 2002and and2003, 2003, and Japan reported Internet onlyonly makes it more reported substantial substantialin-creases in-creasesas aswell. well.The The Internet makes it more
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market byby 2006, without counting perfumes market may mayhave haveexceeded exceeded$200 $200billion billion 2006, without counting perfumes and and cosmetics.4 cosmetics.4 Given thethe talents of of new American fashion Given its itsfocus focuson onfostering fostering talents new American fashion designers of of established designers, CFDA is is designers and and promoting promotingthe theefforts efforts established designers, CFDA acutely that counterfeits have on the fashion acutely aware awareofofthe thedevastating devastatingimpact impact that counterfeits have on the fashion industry. notnot only affect a designer’s financial bottom line but industry.Counterfeits Counterfeits only affect a designer’s financial bottom line but also brand that thethe designer hashas painstakingly also erode erode the the goodwill goodwillininthethe brand that designer painstakingly worked workedtotodevelop. develop. Given of of auction websites in the United States Given the thegrowing growingnumber number auction websites in the United States and fashion products, bothboth articles of clothing and and and around around the the world worldoffering offering fashion products, articles of clothing accessories, as well well as products accessories, as as the the considerable considerableamount amountofofcounterfeited counterfeited products offered monitoring on aondaily basis offeredon onthese thesesites sitesand andthe theinordinate inordinatecost costofof monitoring a daily basis the transactions on sites, CFDA wishes to have its its the sales sales transactions on the themultitude multitudeofofweb web sites, CFDA wishes to have members’ which involves the largest — by— by members’voices voicesheard heardininthis thisproceeding, proceeding, which involves the largest far far — —ofofthese theseon-line on-linemarketplaces. marketplaces.
so: in counterfeit goods is is so: by by one one estimate, estimate,on onthe theorder orderofof$25 $25billion billion in counterfeit goods traded Illicit, Anchor Books, 2005.2005. traded each each year year online. online.See SeeMoises MoisesNaim, Naim, Illicit, Anchor Books, 4 4
See Organization for and Development - “The See Organization forEconomic EconomicCooperation Cooperation and Development – “The Economic andand Piracy” JuneJune 20072007 Report EconomicImpact ImpactofofCounterfeiting Counterfeiting Piracy” Report
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SUMMARY OFOF THE ARGUMENT SUMMARY THE ARGUMENT This its its This case case presents presents an an issue issue of ofgreat greatimportance importancetotothe theCFDA, CFDA, members, submits thatthat the the district courtcourt errederred members, and and to to consumers. consumers.The TheCFDA CFDA submits district in eBay’s online auctions for counterfeit in placing placingthe theburden burdenofofpolicing policing eBay’s online auctions for counterfeit products onon eBay, which is responsible for for products on onthe thebrand brandowner, owner,instead insteadofof eBay, which is responsible creating and is aware of the open andand creating and and maintaining maintainingthe themarketplace marketplace and is aware of the open notorious andand counterfeiting taking placeplace notoriousacts actsofoftrademark trademarkinfringement infringement counterfeiting taking there.5 there.5
By eBay’s online auctions for for By placing placingthe theburden burdenofofpolicing policing eBay’s online auctions counterfeits court’s holding effectively requires counterfeitson onbrand brandowners, owners,the thedistrict district court’s holding effectively requires all and other web sites around thethe world, 24 24 all fashion fashiondesigners designerstotopolice policeeBay eBay and other web sites around world, hours thethe district court’s ruling, fashion hours aa day, day, and and 365 365days daysaayear. year.Under Under district court’s ruling, fashion designers, to spend unspecified designers, big bigand andsmall, small,are areunder underthe theobligation obligation to spend unspecified amounts thethe clock. amounts of ofresources resourcestotopolice policethose thosemarketplaces marketplacesaround around clock. Because forfor many, if not most, fashion Because itit would wouldbe benearly nearlyimpossible impossible many, if not most, fashion
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The brief to address thethe issue of placing The CFDA CFDAsubmits submitsthis thisamicus amicus brief to address issue of placing responsibility for policing eBay’s online auctions for counterfeits on theon the responsibility for policing eBay’s online auctions for counterfeits brand thethe CFDA is not addressing otherother aspects of the brand owner. owner.Although Although CFDA is not addressing aspects of the District Court’s decision, CFDA’s silence should not be interpreted as District Court’s decision, CFDA’s silence should not be interpreted as agreement Court’s opinion. agreement with withother otheraspects aspectsofofthe theDistrict District Court’s opinion.
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designers court hashas critically weakened designers to to meet meet this thisnew newburden, burden,the thedistrict district court critically weakened the the fight fightagainst againstcounterfeiting counterfeiting Accordingly, believes thatthat thethe district courtcourt has improperly and and Accordingly,CFDA CFDA believes district has improperly unfairly with thethe obligation to police a marketplace, unfairlyburdened burdenedbrand brandowners owners with obligation to police a marketplace, which is founded upon the the whichhas hasbeen been created createdand anddeveloped developedbybyeBay, eBay,which which is founded upon types andand in which the the types of of faceless facelesstransactions transactionspreferred preferredbybycounterfeiters, counterfeiters, in which evidence products soldsold on eBay are are evidence reflects reflectsthat that30% 30%atatleast leastofofTIFFANY TIFFANY products on eBay counterfeit. counterfeit. (Op. (Op. at at 21) 21) ARGUMENT ARGUMENT I. I.
The Court Improperly Placed the Burden of Policing The District District Court Improperly Placed the Burden of Policing Trademark Counterfeiting on eBay’s OnlineOnline Auctions on Brandon Brand Trademark Counterfeiting on eBay’s Auctions Owners Owners In court incorrectly identifies the central issue issue In its itsopinion, opinion,the thedistrict district court incorrectly identifies the central
in owner and thethe online in the the case case to to be be which whichparty, party,asasbetween betweenthe thebrand brand owner and online auction thethe brand owner’s marks. auction site, site,should shouldbear bearthe theburden burdenofofpolicing policing brand owner’s marks. For appellate briefbrief (Tiffany Br. pp. 38For all allthe thereasons reasonsset setforth forthininTiffany’s Tiffany’s appellate (Tiffany Br. pp. 3843), thethe wrong issue. TheThe TIFFANY mark mark is 43), CFDA CFDAbelieves believesthis thisis is wrong issue. TIFFANY is conceded thethe conceded to to be be famous famousand andas assuch suchthere thereisisno nolegal legalbasis basisforfor determination has failed to adequately police its mark. The only determinationthat thatTiffany Tiffany has failed to adequately police its mark. The only valid oror had reason to to know thatthat counterfeiting validissue issueisiswhether whethereBay eBayknew knew had reason know counterfeiting
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activity onon itsits website, which, according to the activitywas wasoccurring occurring website, which, according toevidence the evidence adduced adduced at at trial, trial,ititclearly clearlydid. did. The of of thethe district court’s decision go well The practical practicalimplications implications district court’s decision go well beyond its its decision, the the District CourtCourt sets out litany of beyond this thislegal legalerror. error.In In decision, District setsaout a litany of acts that Tiffany, player in the luxury goods industry with more acts that Tiffany,a asignificant significant player in the luxury goods industry with more resources in in seeking to stem the the flowflow resources than than most most CFDA CFDAmembers, members,performed performed seeking to stem of of of eBay’s online auctions. As the of counterfeits counterfeitspouring pouringoutout eBay’s online auctions. AsCourt the Court recognized, recognized, Tiffany: Tiffany: ••
Had viavia letter Had its its outside outsidecounsel counselcontact contacteBay eBaydirectly directly letter
and and telephone telephone (Op. (Op.atat15-16); 15-16); ••
Participated Rights Owner (“VeRO”) ParticipatedinineBay’s eBay’sVerified Verified Rights Owner (“VeRO”)
Program, 284,149 suspect listings from JuneJune 2003 Program, reporting reportingaatotal totalofof 284,149 suspect listings from 2003 through through September September2007 2007(Op. (Op.atat18)6; 18)6; ••
Participated Program to to report Participatedininthe theRanger RangerOnline Online Program report
counterfeit counterfeitgoods goods(Op. (Op.atat16); 16);
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Indeed, waswas among the the top top ten ten Indeed, as as the the Court Courtrecognized, recognized,“Tiffany “Tiffany among reporters June and September 2005. reporters in in21 21ofofthe the2828months monthsbetween between June and September 2005. Thus, by any measure, it is clear that Tiffany was one of the most Thus, by any measure, it is clear that Tiffany was one of the most frequent (Op.(Op. at 18) frequent reporters reportersininthe theVeRO VeROProgram.” Program.” at 18)
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••
Conducted thethe first of which Conducted two twobuying buyingprograms, programs, first of which
indicated silver TIFFANY merchandise on eBay indicatedthat that73% 73%ofofthe thesterling sterling silver TIFFANY merchandise on eBay was was genuine, while the the second found that that was counterfeit, counterfeit,and andthat thatonly only5% 5% was genuine, while second found 75.5% TIFFANY merchandise on eBay was counterfeit 75.5% of ofthe thesterling sterlingsilver silver TIFFANY merchandise on eBay was counterfeit (Op. (Op. at at 20); 20); ••
Budgeted to to anti-counterfeiting efforts Budgeted over over$14 $14million million anti-counterfeiting efforts
(including for for its case against eBay) overover the 2003 - 2007 (including$3-5 $3-5million million its case against eBay) the 2003 - 2007 period period (Op. (Op.atat18); 18); ••
Devoted 240 man-hours perper month Devoted anywhere anywherefrom from172 172toto 240 man-hours month
to onon thethe eBay website, “reflect[ing] the equivalent to monitoring monitoringand andreporting reporting eBay website, “reflect[ing] the equivalent of employees per per month dedicated to to of anywhere anywherebetween between1.15 1.15toto1.6 1.6full-time full-time employees month dedicated monitoring (Op. at 18-19); monitoringthe theeBay eBaywebsite” website” (Op. at 18-19); ••
Ultimately, one full-time employee to patrol Ultimately,dedicating dedicating one full-time employee to patrol
eBay Claimed Infringement forms (“NOCI’s”) throughthrough the eBay and and file fileNotice Noticeofof Claimed Infringement forms (“NOCI’s”) the VeRO at at 19); VeROProgram Programon onaadaily dailybasis basis(Op. (Op. 19); Despite thethe district court found Despite these these extensive extensiveefforts, efforts,however, however, district court found Tiffany’s Indeed, the the district courtcourt seemed to goto out its of its Tiffany’sconduct conductlacking. lacking. Indeed, district seemed goofout way for for not not allocating moremore resources way to tocriticize criticizeand andsecond-guess second-guessTiffany Tiffany allocating resources to of of counterfeits through eBay. (Op. (Op. at 19;at23to its its attempts attemptstotostop stopthe theflow flow counterfeits through eBay. 19; 23-
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24 Tiffany’s brief, “[t]he“[t]he district court, court, in effect, held that 24 n.22). n.22). As Asnoted notedinin Tiffany’s brief, district in effect, held that Tiffany’s insufficient efforts to police its marks creates a Tiffany’spurportedly purportedly insufficient efforts to police its marks creates a defense (Tiffany Br. p.Br. 38). a legal defense to to eBay’s eBay’sillegal illegalbehavior.” behavior.” (Tiffany p.As 38). As amatter, legal matter, the is in for all set forth in in the district districtcourt’s court’sholding holding is error in error forofallthe ofreasons the reasons set forth Tiffany’s which areare adopted herein by the CFDA. (Tiffany Br. pp.Br. 38-pp. 38Tiffany’sbrief, brief, which adopted herein by the CFDA. (Tiffany 43). however, thethe district court’s holding wouldwould have have 43). As Asaapractical practicalmatter, matter, however, district court’s holding a devastating impact of of fashion designers to protect against the the a devastating impactofofthe theability ability fashion designers to protect against counterfeiting intellectual property. counterfeitingofoftheir their intellectual property. Under ruling, all fashion designers, largelarge and and small, Under the the district districtcourt’s court’s ruling, all fashion designers, small, would forfor monitoring the counterfeiting of their wouldbear bearthe theresponsibility responsibility monitoring the counterfeiting of their trademarks web sites. On On eBay alone, this this trademarks taking takingplace placeon oneBay eBayand andsimilar similar web sites. eBay alone, would the millions of transactions that that taketake placeplace everyevery wouldmean meanmonitoring monitoring the millions of transactions day thethe world. Further, just within the the day in in the theUnited UnitedStates Statesand andininthe therest restofof world. Further, just within United platforms offering UnitedStates, States,there thereare areeasily easilymore morethan thana adozen dozenother other platforms offering 7 fashion luxury goodgood fashion goods goodsfor forauction auctionononthe theInternet.7 Internet.Unlike Unlike luxury
conglomerates of the CFDA membership conglomerates such suchas as Tiffany, Tiffany,the thevast vastmajority majority of the CFDA membership
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See, e.g., Amazon; Amazon; e-offer; Alibaba; uBid; eBid; CQout; Swoopo; See, e.g., e-offer;ioffer; ioffer; Alibaba; uBid; eBid; CQout; Swoopo; Tazbar; InetBid; Clothingbids; fashiononauction; Clothesbid; and Tazbar; InetBid; Clothingbids; fashiononauction; Clothesbid; and Apparelbids. Apparelbids.
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cannot to to monitor thethe transactions on these cannot afford affordtotohire hirethe thenecessary necessarystaff staff monitor transactions on these web investigators; or to and and web sites; sites; to tooutsource outsourcesuch suchwork worktotooutside outside investigators; oracquire to acquire effectively thethe software available for monitoring eBay’s onlineonline effectivelyutilize utilize software available for monitoring eBay’s auctions.8 CFDA members do not eveneven havehave an inauctions.8 Indeed, Indeed,aamajority majorityofof CFDA members do not an inhouse house attorney attorney to toadvise adviseon onissues issuesconcerning concerningcounterfeiting. counterfeiting. Even LizLiz Claiborne, Inc.,Inc., Even large large fashion fashionhouses housessuch suchas asCFDA CFDAmember member Claiborne, which COUTURE andand KATE SPADE brands, whichwhich have have whichowns ownsthe theJUICY JUICY COUTURE KATE SPADE brands, been counterfeited and have found it difficult to allocate been counterfeited andsold soldthrough througheBay, eBay, have found it difficult to allocate the eBay. As Gene Bolmarcich, the manpower manpowernecessary necessarytotoconstantly constantlymonitor monitor eBay. As Gene Bolmarcich, Vice Inc., hashas noted, “Liz“Liz Claiborne has has VicePresident, President,Liz LizClaiborne, Claiborne, Inc., noted, Claiborne experienced thethe sale of of counterfeit Juicy Couture experienced enormous enormousproblems problemswith with sale counterfeit Juicy Couture and until recently we had a fulla time and Kate Kate Spade Spade products productson oneBay. eBay.UpUp until recently we had full time person Vero takedown notices, but but as of few person monitoring monitoringeBay eBayand andsending sending Vero takedown notices, asaof a few months time person on on thisthis for for months ago ago we wehave havebeen beenunable unabletotokeep keepaafull full time person budgetary causing significant harm to our budgetary reasons. reasons. OfOfcourse coursethis thisis is causing significant harm to brands our brands now. of of such surveillance to specialized companies and and now. The Theoutsourcing outsourcing such surveillance to specialized companies
8 8
For subscription to one of the leading For instance, instance,the thebudget budgetfor fora ayearly yearly subscription to one of the leading search service companies can exceed $150,000 depending upon the search service companies can exceed $150,000 depending upon the number number of oflistings. listings.
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even given our our trademark even the the available availablesoftware softwareisiscost costprohibitive, prohibitive, given trademark enforcement enforcementbudget.”9 budget.”9 What forfor companies selling hundreds of of What isisalready alreadyextremely extremelyonerous onerous companies selling hundreds millions worth of luxury goods, is absolutely prohibitive for millionsofofdollars dollars worth of luxury goods, is absolutely prohibitive for smaller, fashion designers whose smaller, but butnonetheless nonethelesspopular popularand andemerging, emerging, fashion designers whose annual dollars or less. As Bob Sui, Sui, ChiefChief annual sales sales amount amount to toaafew fewmillions millions dollars or less. As Bob Financial Anna SuiSui Corp., hashas stated, “We“We cannot pursue further FinancialOfficer Officerofof Anna Corp., stated, cannot pursue further efforts time. WeWe cancan afford neither the hiring of effortson onthe theeBay eBayfront frontatatthis this time. afford neither the hiring of people outsourcing of such people on on staff stafftotoaddress addressthe theproblem problemororthethe outsourcing of such surveillance a matter of fact, even the the available surveillancetotospecialized specializedcompanies. companies.AsAs a matter of fact, even available software software isisout outofofreach.”10 reach.”10 Perhaps more problematic is the feeling Perhaps more problematicthan thanthe theissue issueofofmanpower, manpower, is the feeling expressed by CFDA experience) that that the the expressed by CFDAmembers members(and (andechoed echoedbybyTiffany’s Tiffany’s experience) policies eBay forfor reporting counterfeiting policiesand andprocedures proceduresput putininplace placebyby eBay reporting counterfeiting activity At base, there is the issueissue that that activityare arelargely largelyineffective. ineffective. At base, there is fundamental the fundamental
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Email Vice President, Liz Liz Emailcorrespondence correspondencewith withGene GeneBolmarcich, Bolmarcich, Vice President, Claiborne, Claiborne,Inc., Inc.,dated datedOctober October22, 22,2008. 2008.
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Email Sui, Chief Financial Officer, AnnaAnna Sui, Sui, Emailcorrespondence correspondencewith withBob Bob Sui, Chief Financial Officer, Inc., Inc., dated dated October October22, 22,2008. 2008.
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the sale of of potential counterfeit goods at the the brand brand owner owneronly onlylearns learnsofofthethe sale potential counterfeit goods at the same time such TheThe auction process is most same time such goods goodsare are offered offeredtotothe thepublic. public. auction process is most of effective action to be and and by the the the of the the time timetoo toobrief briefforfor effective action to taken, be taken, by time the time brand with eBay, thethe sales may have already been brand owner ownerfiles filesaaNOCI NOCI with eBay, sales may have already been concluded. concluded. Moreover, products as as counterfeit solely based on the Moreover,identifying identifying products counterfeit solely based on the pictures areare often doctored or or pictures posted postedby byeBay’s eBay’sfaceless facelesssellers, sellers,which which often doctored actually thethe actual goods being offered, is is actuallyshow showauthentic authenticgoods goodsand andnot not actual goods being offered, ineffective. even when a brand owner’s NOCI results in having an an ineffective.Further, Further, even when a brand owner’s NOCI results in having auction items willwill not not auction removed, removed,there thereisisnonoguarantee guaranteethat thatthe thecounterfeited counterfeited items merely As As Mr.Mr. Bolmarcich merely reappear reappearunder underthe thename nameofofsome someother otherseller. seller. Bolmarcich has stated, “More “More than is seen asas notnot being has stated, thanjust justthe thecost, cost,such suchexpenditure expenditure is seen being cost a small bandage onon a gaping wound. The The cost effective effectivebecause becauseititisissimply simply a small bandage a gaping wound. VeRO response to to thethe auction of of VeROsystem systemdoes doesnot notconstitute constituteananeffective effective response auction counterfeit photographs of the products offered on on counterfeitproducts productsononeBay. eBay.The The photographs of the products offered the of the products the site site are are usually usuallydoctored doctoredsosoasastotorender renderour ouridentification identification of the products ineffective It isIta is game of ‘whack a mole’ — in the ineffectiveififnot notimpossible. impossible. a game of ‘whack a mole’ — in the instances with ourour NOCIs and and actually instances where where eBay eBayhad hadcomplied compliedinintime time with NOCIs actually
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withdrawn hours, thethe veryvery same products werewere offered by by withdrawnthe theoffers, offers,within within hours, same products offered the and wewe hadhad to start all over.”11 the same same party party under underaadifferent differentidentity identity and to start all over.”11 These member These sentiments sentiments are are echoed echoed by bySusan SusanPosen, Posen,Chair ChairofofCFDA CFDA member Zac Posen. items thatthat areare for for salesale as ‘Zac Posen’ on eBay. In In Zac Posen. “We “Wemonitor monitor items as ‘Zac Posen’ on eBay. instances where wewe send an an instances where we wespot spotgarments garmentsthat thatare arebeing beingcounterfeited, counterfeited, send email to them that they areare selling counterfeit itemsitems and and email tothe theseller sellerinforming informing them that they selling counterfeit demand that from eBay. In many instances, they they demand that they theyremove removethe thelisting listing from eBay. In many instances, comply. Shortly thereafter thethe very same counterfeit goods appear under the the comply. Shortly thereafter very same counterfeit goods appear under name of thethe endend wewe areare ineffective.”12 name of aa different differentseller. seller.In In ineffective.”12 The onon eBay is further exacerbated by eBay’s The counterfeiting counterfeitingproblem problem eBay is further exacerbated by eBay’s response to the requiring suchsuch response to the purchasers purchasers of ofcounterfeit counterfeitgoods. goods.ByBy requiring purchasers through a third purchasers to to establish establishthat thatthe thegoods goodsare areindeed indeedcounterfeit counterfeit through a third party directing suchsuch purchasers to the party (Op. (Op.atat12), 12),eBay eBayisiseffectively effectively directing purchasers to brand the brand owners, requests to to authenticate goods or or owners, who whoare arethen thenforced forcedtotorespond respondtoto requests authenticate goods
11 11
Email Vice President, Liz Liz Emailcorrespondence correspondencewith withGene GeneBolmarcich, Bolmarcich, Vice President, Claiborne, Claiborne,Inc., Inc.,dated datedOctober October22, 22,2008. 2008.
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Email Zac Posen, dated Emailcorrespondence correspondencewith withSusan SusanPosen, Posen,Chair, Chair, Zac Posen, dated October October 21, 21,2008. 2008.
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for such requests areare refused, it isitthe brand owner’s for compensation. compensation.When When such requests refused, is the brand owner’s goodwill eBay’s. goodwillthat thatsuffers, suffers,notnot eBay’s. Ultimately, required to monitor the the salesale of products Ultimately,the theinvestment investment required to monitor of products offered too costly for for many, if not of theofmembers offeredon oneBay eBayisissimply simply too costly many, if most, not most, the members of If the is thrown on the of the the CFDA CFDAtotobebeable abletotoafford. afford. If burden the burden is thrown onfashion the fashion houses, they will to to respond to atothreat thatthat trulytruly putsputs houses, they willnever neverbebeinina aposition position respond a threat at which has has created, maintained and and at risk risk their theirvery veryexistence. existence.It isIt eBay, is eBay, which created, maintained profited marketplace, andand which acknowledges that that 30% 30% or or profitedfrom fromthis thisonline online marketplace, which acknowledges more products sold through its site is counterfeit that that more of ofthe theTIFFANY TIFFANY products sold through its site is counterfeit should eliminating counterfeits fromfrom its its should properly properlybear bearthe theburden burdenofof eliminating counterfeits marketplace. marketplace. As design house, wewe cancan As Ms. Ms.Posen PosenofofZac ZacPosen, Posen,states, states,“As “Asa asmall small design house, only thisthis problem. We can only devote devoteso somuch muchtime timeand andresources resourcestotopolicing policing problem. We can not really have no recourse. To absolve not even even afford affordtotobuy buythe thesamples. samples.WeWe really have no recourse. To absolve eBay forfor selling counterfeit goods on their market eBay from fromany anyresponsibility responsibility selling counterfeit goods on their market and thethe problem andand give freefree reinrein to counterfeiters.”13 and site site will willonly onlyworsen worsen problem give to counterfeiters.”13
13 13
Id. Id.
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The members cited herein are are The views viewsofofMs. Ms.Posen Posenand andthe theother otherCFDA CFDA members cited herein reflective membership. reflectiveofofthe theexpressed expressedconsensus consensusamong amongthe theCFDA CFDA membership. CONCLUSION CONCLUSION For respectfully request thatthat thisthis For the the foregoing foregoingreasons, reasons,the theCFDA CFDA respectfully request Court Court andand remand for proceedings Court vacate vacatethe thejudgment judgmentofofthe theDistrict District Court remand for proceedings consistent opinion on on thisthis appeal. consistent with withthe theCourt’s Court’s opinion appeal. Dated: Dated: October October22, 22,2008 2008
Respectfully Respectfullysubmitted, submitted, COBLENCE ASSOCIATES COBLENCE&& ASSOCIATES By: Coblence By: /s//s/Alain Alain Coblence Alain AlainCoblence Coblence 200 200 Park Park Avenue AvenueSouth South New 10003 New York, York,New NewYork York 10003 Tel: Tel: (212) (212)593-9191 593-9191 Fax: Fax: (212) (212)593-0011 593-0011 Attorneys Attorneysfor forAmicus AmicusCuriae Curiae
15 15
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CERTIFICATE OF OF COMPLIANCE CERTIFICATE COMPLIANCE Pursuant thethe Federal Rules of Appellate Pursuant to to Rule Rule32(a)(7)(C) 32(a)(7)(C)ofof Federal Rules of Appellate Procedure, Procedure, the the undersigned undersignedcertifies certifiesthat: that: 1. 1.
This thethe type-volume limitation of Fed. This brief briefcomplies complieswith with type-volume limitation of R. Fed. R.
App. contains 3,243 words, excluding the the App. P. P.32(a)(7)(B) 32(a)(7)(B)because becausethis thisbrief brief contains 3,243 words, excluding parts App. P. P. 32(a)(7)(B)(iii), as as parts of of the the brief briefexempted exemptedbybyFed. Fed.R.R. App. 32(a)(7)(B)(iii), determined used to to generate thethe brief. determined by bythe theword wordprocessing processingsystem system used generate brief. 2. 2.
This thethe typeface requirements of Fed. R. R. This brief briefcomplies complieswith with typeface requirements of Fed.
App. requirements of Fed. R. App. P. 32(a)(6) App. P. P.32(a)(5) 32(a)(5)and andthe thetype typestyle style requirements of Fed. R. App. P. 32(a)(6) because this brief spaced typeface using because this briefhas hasbeen beenprepared preparedininproportionally proportionally spaced typeface using Microsoft Word 2003 in 14 Times NewNew Roman font. font. MicrosoftOffice Office Word 2003 in point, 14 point, Times Roman Dated: York Dated: New NewYork, York,New New York October October 22, 22,2008 2008
/s/ /s/ Alain AlainCoblence Coblence Alain AlainCoblence Coblence COBLENCE ASSOCIATES COBLENCE&& ASSOCIATES 200 Park Avenue 200 Park AvenueSouth South New York, NY 10003 New York, NY 10003 (212) (212) 593-9191 593-9191 Counsel Counsel for forAmicus AmicusCuriae Curiae Council of Fashion Designers of of Council of Fashion Designers America, America,Inc. Inc.
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ANTI-VIRUS CERTIFICATION ANTI-VIRUS CERTIFICATION
Case (NJ) Inc. Inc. v. eBay Inc. Inc. Case Name: Name:Tiffany Tiffany (NJ) v. eBay Docket 08-3947-cv DocketNumber: Number: 08-3947-cv
I, hereby certify that the Amicus Brief submitted in PDF I, Samantha SamanthaCollins, Collins, hereby certify that the Amicus Brief submitted in PDF form e-mail attachment to [email protected] in the above formasasanan e-mail attachment to [email protected] in the above referenced Software Anti-Virus Release 8.3.028.3.02 (with (with referenced case, case, was wasscanned scannedusing usingCA CA Software Anti-Virus Release updated filefile as as of of 10/22/2008) andand found to betoVIRUS FREE.FREE. updated virus virusdefinition definition 10/22/2008) found be VIRUS
/s/ /s/ Samantha SamanthaCollins Collins Samantha SamanthaCollins Collins Record Press, Record Press,Inc. Inc.
Dated: 22,22, 2008 Dated:October October 2008
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CERTIFICATE OF OF SERVICE http://www.jdsupra.com/post/documentViewer.aspx?fid=03d96e80-6a66-40c9-ade9-fed5d55416d9 CERTIFICATE SERVICE 08-3947-cv 08-3947-cv
Tiffany v. v. eBay Inc.Inc. Tiffany(NJ) (NJ)Inc. Inc. eBay
II hereby copies of of thisthis Brief Amicus Curiae of The hereby certify certifythat thattwo two copies Brief Amicus Curiae of The Council of Fashion Designers of America, Inc. were sent by Federal Express NextNext Council of Fashion Designers of America, Inc. were sent by Federal Express Business Business Day Daydelivery deliveryto:to: James B. Swire, James B. Swire,Esq. Esq. Arnold Arnold&&Porter PorterLLP LLP 399 Park Avenue 399 Park Avenue New 10022 New York, York,New NewYork York 10022 (212) 715-1000 (212) 715-1000 Attorneys Attorneysfor forPlaintiffs-Appellants Plaintiffs-Appellants Robert Robert Bruce BruceRich, Rich,Esq. Esq. Weil, Gotshal & Manges, LLP Weil, Gotshal & Manges, LLP 767 Fifth Avenue 767 Fifth Avenue New 10153 New York, York,New NewYork York 10153 (212) 310-8000 (212) 310-8000 Attorneys Attorneysfor forDefendant-Appellee Defendant-Appellee
II also and nine copies were alsoalso shipped via Hand delivery also certify certifythat thatthe theoriginal original and nine copies were shipped via Hand delivery to: to: Clerk ClerkofofCourt Court United States Court of Appeals, Circuit United States Court of Appeals,Second Second Circuit United UnitedStates StatesCourthouse Courthouse rd 500 floor 500 Pearl Pearl Street, Street, 3rd 3 floor New 10007 New York, York,New NewYork York 10007 (212) 857-8576 (212) 857-8576 on on this this 22nd 22ndday dayofofOctober October2008. 2008. Notary NotaryPublic: Public: /s/ /s/ Ramiro RamiroA. A.Honeywell Honeywell
/s/ /s/ Samantha Samantha Collins Collins
Sworn to me this
SAMANTHA COLLINS Record Inc. Record Press, Press, Inc. th 229 Street, 8 8th Floor 229 West West 36th 36th Street, Floor York, New York New 10018 York 10018 (212) 619-4949
October 22, 2008
RAMIRO A. HONEYWELL Notary Public, State of New New York York State of No. 01HO6118731 Qualified in Kings County County Commission Expires 15, 2008 2008 Expires November November 15,
08-3947-cv
08-3947-cv
d THE IN THE
United States Court of Appeals
United States Court of Appeals FOR THE FOR THESECOND SECONDCIRCUIT CIRCUIT
TIFFANY(NJ) TIFFANY(NJ) INC. INC. and andTIFFANY TIFFANYAND AND COMPANY, COMPANY,
Plaintiffs-Appellants, —against— eBAY eBAY IINC., NC .,
Defendant-Appellee. ON APPEAL FROM THE UNITED UNITED STATES STATES DISTRICT COURT COURT FOR FOR THE SOUTHERN DISTRICT OF NEW YORK YORK (NO. (NO. 04 04 CIV. CIV. 4607 4607 (RJS)) (RJS))
BRIEF OFOF THE BRIEFAMICUS AMICUSCURIAE CURIAE THE COUNCIL OF FASHION DESIGNERS OF AMERICA, INC. INC. COUNCIL OF FASHION DESIGNERS OF AMERICA,
ALAIN ALAIN COBLENCE COBLENCE COBLENCE COBLENCE & & ASSOCIATES ASSOCIATES 200 Park Avenue South
New York, New York 10003 10003 (212) 593-9191 Attorneys Attorneys for Amicus Curiae Council of of Fashion Fashion Designers Designers of America, Inc.
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CORPORATE DISCLOSURE STATEMENT CORPORATE DISCLOSURE STATEMENT Pursuant thethe Council of of Pursuant to to Fed. Fed. R. R.App. App.P.P.26.1, 26.1,amicus amicuscuriae curiae Council Fashion (“CFDA”) states that that it is not publiclyFashion Designers DesignersofofAmerica, America,Inc. Inc. (“CFDA”) states it isanot a publiclyheld entity. CFDA does does not have held corporation corporationororother otherpublicly-held publicly-held entity. CFDA not any have any parent corporation or other publicly-held parent corporation corporationand andno nopublicly-held publicly-held corporation or other publicly-held entity IACC’s stock. entityholds holds10% 10%orormore moreofof IACC’s stock.
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TABLE CONTENTS TABLEOF OF CONTENTS STATEMENT OF INTEREST OF OF AMICUS CURIAE ... .. 1 STATEMENT OF INTEREST AMICUS CURIAE................................ 1 SUMMARY OFOF THE ARGUMENT ... .............................................................. 5 SUMMARY THE ARGUMENT 5 ARGUMENT ... .. 6 ARGUMENT.................................................................................................. 6 I. I.
The Placed thethe Burden of Policing The District DistrictCourt CourtImproperly Improperly Placed Burden of Policing Trademark Counterfeiting on eBay’s Online Auctions on Brand Trademark Counterfeiting on eBay’s Online Auctions on Brand Owners ... Owners.................................................................................................... 66
CONCLUSION... ... 15 CONCLUSION............................................................................................. 15
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TABLE AUTHORITIES TABLEOF OF AUTHORITIES CASES C ASES
Tiffany (NJ) ___ F. F. Supp. 2d 2d ___, 2008 WL WL Tiffany (NJ)Inc. Inc.v.v.eBay, eBay,Inc., Inc., ___ Supp. ___, 2008 2755787 (“Op.”)... ...passim 2755787 (S.D.N.Y. (S.D.N.Y.2008) 2008) (“Op.”)...............................................................passim
OTHER OTHER AUTHORITIES AUTHORITIES Coalition Property Rights (CIPR) “First“First Global Coalitionfor forIntellectual Intellectual Property Rights (CIPR) Global Congress on Combating Counterfeiting” Brussels May 25-26 20042004...................3 ... . Congress on Combating Counterfeiting” Brussels May 25-26 3 Moises Anchor Books , 2005 ... ........................................................... .3-4 Moises Naim, Naim,Illicit, Illicit, Anchor Books , 2005 .3-4 Organization Cooperation andand Development - “The Organizationfor forEconomic Economic Cooperation Development – “The Economic Impact of Counterfeiting and Piracy” June 2007 Report ... .. Economic Impact of Counterfeiting and Piracy” June 2007 Report....................4 4
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The of of America, Inc.Inc. (“CFDA”) The Council CouncilofofFashion FashionDesigners Designers America, (“CFDA”) 1 support of the appeal of Tiffany (NJ) submits submits this thisbrief briefasasamicus amicuscuriae1 curiaein in support of the appeal of Tiffany (NJ)
Inc. (together, “Tiffany”) from from the judgment Inc. and and Tiffany Tiffanyand andCompany Company (together, “Tiffany”) the judgment entered Court. Tiffany (NJ) (NJ) Inc. v.Inc. eBay, Inc., Inc., entered against against Tiffany Tiffanybybythe theDistrict District Court. Tiffany v. eBay, ___ (S.D.N.Y. 2008) (“Op.”). ___ F. F. Supp. Supp. 2d 2d___, ___,2008 2008WL WL2755787 2755787 (S.D.N.Y. 2008) (“Op.”). STATEMENT OFOF INTEREST OF AMICUS CURIAECURIAE STATEMENT INTEREST OF AMICUS The of of America, Inc.Inc. (“CFDA”) is a is a The Council CouncilofofFashion FashionDesigners Designers America, (“CFDA”) not-for-profit whose membership consists of 350 of of not-for-profittrade tradeassociation association whose membership consists of 350 America’s and accessory designers as as well as as many newer America’sforemost foremostfashion fashion and accessory designers well many newer and and smaller smaller designers. designers. Founded goals areare “to“to further the the position of of Founded in in1962, 1962,the theCFDA’s CFDA’s goals further position fashion artart andand culture, to to fashion design designas asaa recognized recognizedbranch branchofofAmerican American culture, advance establish and maintain a a advance its its artistic artisticand andprofessional professionalstandards, standards,toto establish and maintain code benefit in professional, public, and and code of of ethics ethicsand andpractices practicesofofmutual mutual benefit in professional, public, trade public understanding andand trade relations, relations,and andtotopromote promoteand andimprove improve public understanding appreciation leadership in quality and and taste.” appreciationofofthe thefashion fashionarts artsthrough through leadership in quality taste.” The activity are:are: The CFDA’s CFDA’sthree threemain mainareas areasofof activity 1 1
The of of thisthis proposed amicus curiae The parties parties have haveconsented consentedtotothe thefiling filing proposed amicus curiae brief. brief.
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Educational — The CFDA is committed to nurturing the EducationalInitiatives Initiatives — The CFDA is committed to nurturing the development future American designers by by developmentofofthe thefashion fashionindustry’s industry’s future American designers providing post-graduate, andand early providingsupport supportand andresources resourcesatatthe thecollegiate, collegiate, post-graduate, early stages of aa designer’s stages of designer’scareer, career,through: through: ••
Scholarship ScholarshipPrograms; Programs;
••
Masters Masters Programs; Programs;
••
Professional thethe ProfessionalDevelopment DevelopmentPrograms Programsincluding including
CFDA/Vogue which provides cash awards andand mentoring CFDA/VogueFashion FashionFund, Fund, which provides cash awards mentoring teams teams to to emerging emergingdesigners. designers. Philanthropy —— Through a separate, not-for-profit entity,entity, CFDACFDA Philanthropy Through a separate, not-for-profit Foundation, raises funds forfor charitable initiatives and and Foundation,Inc., Inc.,CFDA CFDA raises funds charitable initiatives campaigns. efforts include: campaigns. The Themain mainphilanthropic philanthropic efforts include: ••
Fashion industry’s Fashion Targets TargetsBreast BreastCancer Cancer- –the thefashion fashion industry’s
response to the has raised and response to the devastating devastatingimpact impactofofbreast breastcancer, cancer,which which has raised and distributed since its founding in 1994; distributedmore morethan than$40 $40million million since its founding in 1994; ••
7th fundraising event for for 7th on on Sale Sale -–aaground-breaking ground-breaking fundraising event
HIV/AIDS HIV/AIDSorganizations. organizations. The Awards — Annual awards gala to recognize and and The CFDA CFDAFashion Fashion Awards — Annual awards gala to recognize celebrate made to to American fashion by by celebrate the the outstanding outstandingcontributions contributions made American fashion
2
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individuals thethe industry. Awards are given for design individualsininallallareas areasofof industry. Awards are given for design excellence awards excellence ininwomenswear, womenswear,menswear, menswear,and andaccessories, accessories,and andspecial special awards are presented in retailing, photography, and and are presented in such such varied variedfields fieldsasaspublishing, publishing, retailing, photography, entertainment. entertainment. CFDA brief because counterfeiting strikes at the CFDAoffers offersthis thisamicus amicus brief because counterfeiting strikes at the very industry. TheThe counterfeiting of fashion very heart heartofofthe theAmerican Americanfashion fashion industry. counterfeiting of fashion products, hashas been estimated to to products, clothing clothingand andaccessories, accessories,world-wide world-wide been estimated 2 comprise With the worldwide counterfeit comprise 33 33toto45% 45%ofofallallcounterfeiting.2 counterfeiting. With the worldwide counterfeit
market $600 billion a year, andand the the market estimated estimatedas asofof2006 2006totobebeworth worth $600 billion a year, 3 worldwide fashion counterfeit exponential market,3 exponentialgrowth growthofofthis this market,the the worldwide fashion counterfeit
22
The (WCO) andand Interpol are credited with with The World WorldCustoms CustomsOrganization Organization (WCO) Interpol are credited this Property Rights (CIPR) this estimate. estimate.See See Coalition Coalitionfor forIntellectual Intellectual Property Rights (CIPR) “First Global Congress on Combating Counterfeiting” Brussels May 25- 25“First Global Congress on Combating Counterfeiting” Brussels May 26 26 2004 2004
33
Since Interpol, trade in counterfeits has has Since the the early early1990’s, 1990’s,according accordingtoto Interpol, trade in counterfeits grown trade. Twenty years ago,ago, grownatateight eighttimes timesthe thespeed speedofoflegitimate legitimate trade. Twenty years commercial due to to counterfeiting were estimated commerciallosses lossesaround aroundthe theworld world due counterfeiting were estimated in the $5 billion range; today, they are around $500 billion. That puts the the in the $5 billion range; today, they are around $500 billion. That puts cost 5 and 1010 percent of the total value of of cost of of counterfeiting counterfeitingbetween between 5 and percent of the total value world GDP of of Australia. AndAnd still itstill grows, worldtrade, trade,on onaapar parwith, with,say, say,thethe GDP Australia. it grows, at least measured by the number of customs seizures of counterfeit at least measured by the number of customs seizures of counterfeit goods. these seizures grew 900900 percent between goods. InInthe theEuropean EuropeanUnion, Union, these seizures grew percent between 1998 and 2001, only to double again the following year. Seizures by 1998 and 2001, only to double again the following year. Seizures by U.S. and Japan U.S. customs customs increased increased12 12per-cent per-centbetween between2002 2002and and2003, 2003, and Japan reported Internet onlyonly makes it more reported substantial substantialin-creases in-creasesas aswell. well.The The Internet makes it more
3
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market byby 2006, without counting perfumes market may mayhave haveexceeded exceeded$200 $200billion billion 2006, without counting perfumes and and cosmetics.4 cosmetics.4 Given thethe talents of of new American fashion Given its itsfocus focuson onfostering fostering talents new American fashion designers of of established designers, CFDA is is designers and and promoting promotingthe theefforts efforts established designers, CFDA acutely that counterfeits have on the fashion acutely aware awareofofthe thedevastating devastatingimpact impact that counterfeits have on the fashion industry. notnot only affect a designer’s financial bottom line but industry.Counterfeits Counterfeits only affect a designer’s financial bottom line but also brand that thethe designer hashas painstakingly also erode erode the the goodwill goodwillininthethe brand that designer painstakingly worked workedtotodevelop. develop. Given of of auction websites in the United States Given the thegrowing growingnumber number auction websites in the United States and fashion products, bothboth articles of clothing and and and around around the the world worldoffering offering fashion products, articles of clothing accessories, as well well as products accessories, as as the the considerable considerableamount amountofofcounterfeited counterfeited products offered monitoring on aondaily basis offeredon onthese thesesites sitesand andthe theinordinate inordinatecost costofof monitoring a daily basis the transactions on sites, CFDA wishes to have its its the sales sales transactions on the themultitude multitudeofofweb web sites, CFDA wishes to have members’ which involves the largest — by— by members’voices voicesheard heardininthis thisproceeding, proceeding, which involves the largest far far — —ofofthese theseon-line on-linemarketplaces. marketplaces.
so: in counterfeit goods is is so: by by one one estimate, estimate,on onthe theorder orderofof$25 $25billion billion in counterfeit goods traded Illicit, Anchor Books, 2005.2005. traded each each year year online. online.See SeeMoises MoisesNaim, Naim, Illicit, Anchor Books, 4 4
See Organization for and Development - “The See Organization forEconomic EconomicCooperation Cooperation and Development – “The Economic andand Piracy” JuneJune 20072007 Report EconomicImpact ImpactofofCounterfeiting Counterfeiting Piracy” Report
4
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SUMMARY OFOF THE ARGUMENT SUMMARY THE ARGUMENT This its its This case case presents presents an an issue issue of ofgreat greatimportance importancetotothe theCFDA, CFDA, members, submits thatthat the the district courtcourt errederred members, and and to to consumers. consumers.The TheCFDA CFDA submits district in eBay’s online auctions for counterfeit in placing placingthe theburden burdenofofpolicing policing eBay’s online auctions for counterfeit products onon eBay, which is responsible for for products on onthe thebrand brandowner, owner,instead insteadofof eBay, which is responsible creating and is aware of the open andand creating and and maintaining maintainingthe themarketplace marketplace and is aware of the open notorious andand counterfeiting taking placeplace notoriousacts actsofoftrademark trademarkinfringement infringement counterfeiting taking there.5 there.5
By eBay’s online auctions for for By placing placingthe theburden burdenofofpolicing policing eBay’s online auctions counterfeits court’s holding effectively requires counterfeitson onbrand brandowners, owners,the thedistrict district court’s holding effectively requires all and other web sites around thethe world, 24 24 all fashion fashiondesigners designerstotopolice policeeBay eBay and other web sites around world, hours thethe district court’s ruling, fashion hours aa day, day, and and 365 365days daysaayear. year.Under Under district court’s ruling, fashion designers, to spend unspecified designers, big bigand andsmall, small,are areunder underthe theobligation obligation to spend unspecified amounts thethe clock. amounts of ofresources resourcestotopolice policethose thosemarketplaces marketplacesaround around clock. Because forfor many, if not most, fashion Because itit would wouldbe benearly nearlyimpossible impossible many, if not most, fashion
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The brief to address thethe issue of placing The CFDA CFDAsubmits submitsthis thisamicus amicus brief to address issue of placing responsibility for policing eBay’s online auctions for counterfeits on theon the responsibility for policing eBay’s online auctions for counterfeits brand thethe CFDA is not addressing otherother aspects of the brand owner. owner.Although Although CFDA is not addressing aspects of the District Court’s decision, CFDA’s silence should not be interpreted as District Court’s decision, CFDA’s silence should not be interpreted as agreement Court’s opinion. agreement with withother otheraspects aspectsofofthe theDistrict District Court’s opinion.
5
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designers court hashas critically weakened designers to to meet meet this thisnew newburden, burden,the thedistrict district court critically weakened the the fight fightagainst againstcounterfeiting counterfeiting Accordingly, believes thatthat thethe district courtcourt has improperly and and Accordingly,CFDA CFDA believes district has improperly unfairly with thethe obligation to police a marketplace, unfairlyburdened burdenedbrand brandowners owners with obligation to police a marketplace, which is founded upon the the whichhas hasbeen been created createdand anddeveloped developedbybyeBay, eBay,which which is founded upon types andand in which the the types of of faceless facelesstransactions transactionspreferred preferredbybycounterfeiters, counterfeiters, in which evidence products soldsold on eBay are are evidence reflects reflectsthat that30% 30%atatleast leastofofTIFFANY TIFFANY products on eBay counterfeit. counterfeit. (Op. (Op. at at 21) 21) ARGUMENT ARGUMENT I. I.
The Court Improperly Placed the Burden of Policing The District District Court Improperly Placed the Burden of Policing Trademark Counterfeiting on eBay’s OnlineOnline Auctions on Brandon Brand Trademark Counterfeiting on eBay’s Auctions Owners Owners In court incorrectly identifies the central issue issue In its itsopinion, opinion,the thedistrict district court incorrectly identifies the central
in owner and thethe online in the the case case to to be be which whichparty, party,asasbetween betweenthe thebrand brand owner and online auction thethe brand owner’s marks. auction site, site,should shouldbear bearthe theburden burdenofofpolicing policing brand owner’s marks. For appellate briefbrief (Tiffany Br. pp. 38For all allthe thereasons reasonsset setforth forthininTiffany’s Tiffany’s appellate (Tiffany Br. pp. 3843), thethe wrong issue. TheThe TIFFANY mark mark is 43), CFDA CFDAbelieves believesthis thisis is wrong issue. TIFFANY is conceded thethe conceded to to be be famous famousand andas assuch suchthere thereisisno nolegal legalbasis basisforfor determination has failed to adequately police its mark. The only determinationthat thatTiffany Tiffany has failed to adequately police its mark. The only valid oror had reason to to know thatthat counterfeiting validissue issueisiswhether whethereBay eBayknew knew had reason know counterfeiting
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activity onon itsits website, which, according to the activitywas wasoccurring occurring website, which, according toevidence the evidence adduced adduced at at trial, trial,ititclearly clearlydid. did. The of of thethe district court’s decision go well The practical practicalimplications implications district court’s decision go well beyond its its decision, the the District CourtCourt sets out litany of beyond this thislegal legalerror. error.In In decision, District setsaout a litany of acts that Tiffany, player in the luxury goods industry with more acts that Tiffany,a asignificant significant player in the luxury goods industry with more resources in in seeking to stem the the flowflow resources than than most most CFDA CFDAmembers, members,performed performed seeking to stem of of of eBay’s online auctions. As the of counterfeits counterfeitspouring pouringoutout eBay’s online auctions. AsCourt the Court recognized, recognized, Tiffany: Tiffany: ••
Had viavia letter Had its its outside outsidecounsel counselcontact contacteBay eBaydirectly directly letter
and and telephone telephone (Op. (Op.atat15-16); 15-16); ••
Participated Rights Owner (“VeRO”) ParticipatedinineBay’s eBay’sVerified Verified Rights Owner (“VeRO”)
Program, 284,149 suspect listings from JuneJune 2003 Program, reporting reportingaatotal totalofof 284,149 suspect listings from 2003 through through September September2007 2007(Op. (Op.atat18)6; 18)6; ••
Participated Program to to report Participatedininthe theRanger RangerOnline Online Program report
counterfeit counterfeitgoods goods(Op. (Op.atat16); 16);
6 6
Indeed, waswas among the the top top ten ten Indeed, as as the the Court Courtrecognized, recognized,“Tiffany “Tiffany among reporters June and September 2005. reporters in in21 21ofofthe the2828months monthsbetween between June and September 2005. Thus, by any measure, it is clear that Tiffany was one of the most Thus, by any measure, it is clear that Tiffany was one of the most frequent (Op.(Op. at 18) frequent reporters reportersininthe theVeRO VeROProgram.” Program.” at 18)
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••
Conducted thethe first of which Conducted two twobuying buyingprograms, programs, first of which
indicated silver TIFFANY merchandise on eBay indicatedthat that73% 73%ofofthe thesterling sterling silver TIFFANY merchandise on eBay was was genuine, while the the second found that that was counterfeit, counterfeit,and andthat thatonly only5% 5% was genuine, while second found 75.5% TIFFANY merchandise on eBay was counterfeit 75.5% of ofthe thesterling sterlingsilver silver TIFFANY merchandise on eBay was counterfeit (Op. (Op. at at 20); 20); ••
Budgeted to to anti-counterfeiting efforts Budgeted over over$14 $14million million anti-counterfeiting efforts
(including for for its case against eBay) overover the 2003 - 2007 (including$3-5 $3-5million million its case against eBay) the 2003 - 2007 period period (Op. (Op.atat18); 18); ••
Devoted 240 man-hours perper month Devoted anywhere anywherefrom from172 172toto 240 man-hours month
to onon thethe eBay website, “reflect[ing] the equivalent to monitoring monitoringand andreporting reporting eBay website, “reflect[ing] the equivalent of employees per per month dedicated to to of anywhere anywherebetween between1.15 1.15toto1.6 1.6full-time full-time employees month dedicated monitoring (Op. at 18-19); monitoringthe theeBay eBaywebsite” website” (Op. at 18-19); ••
Ultimately, one full-time employee to patrol Ultimately,dedicating dedicating one full-time employee to patrol
eBay Claimed Infringement forms (“NOCI’s”) throughthrough the eBay and and file fileNotice Noticeofof Claimed Infringement forms (“NOCI’s”) the VeRO at at 19); VeROProgram Programon onaadaily dailybasis basis(Op. (Op. 19); Despite thethe district court found Despite these these extensive extensiveefforts, efforts,however, however, district court found Tiffany’s Indeed, the the district courtcourt seemed to goto out its of its Tiffany’sconduct conductlacking. lacking. Indeed, district seemed goofout way for for not not allocating moremore resources way to tocriticize criticizeand andsecond-guess second-guessTiffany Tiffany allocating resources to of of counterfeits through eBay. (Op. (Op. at 19;at23to its its attempts attemptstotostop stopthe theflow flow counterfeits through eBay. 19; 23-
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24 Tiffany’s brief, “[t]he“[t]he district court, court, in effect, held that 24 n.22). n.22). As Asnoted notedinin Tiffany’s brief, district in effect, held that Tiffany’s insufficient efforts to police its marks creates a Tiffany’spurportedly purportedly insufficient efforts to police its marks creates a defense (Tiffany Br. p.Br. 38). a legal defense to to eBay’s eBay’sillegal illegalbehavior.” behavior.” (Tiffany p.As 38). As amatter, legal matter, the is in for all set forth in in the district districtcourt’s court’sholding holding is error in error forofallthe ofreasons the reasons set forth Tiffany’s which areare adopted herein by the CFDA. (Tiffany Br. pp.Br. 38-pp. 38Tiffany’sbrief, brief, which adopted herein by the CFDA. (Tiffany 43). however, thethe district court’s holding wouldwould have have 43). As Asaapractical practicalmatter, matter, however, district court’s holding a devastating impact of of fashion designers to protect against the the a devastating impactofofthe theability ability fashion designers to protect against counterfeiting intellectual property. counterfeitingofoftheir their intellectual property. Under ruling, all fashion designers, largelarge and and small, Under the the district districtcourt’s court’s ruling, all fashion designers, small, would forfor monitoring the counterfeiting of their wouldbear bearthe theresponsibility responsibility monitoring the counterfeiting of their trademarks web sites. On On eBay alone, this this trademarks taking takingplace placeon oneBay eBayand andsimilar similar web sites. eBay alone, would the millions of transactions that that taketake placeplace everyevery wouldmean meanmonitoring monitoring the millions of transactions day thethe world. Further, just within the the day in in the theUnited UnitedStates Statesand andininthe therest restofof world. Further, just within United platforms offering UnitedStates, States,there thereare areeasily easilymore morethan thana adozen dozenother other platforms offering 7 fashion luxury goodgood fashion goods goodsfor forauction auctionononthe theInternet.7 Internet.Unlike Unlike luxury
conglomerates of the CFDA membership conglomerates such suchas as Tiffany, Tiffany,the thevast vastmajority majority of the CFDA membership
7 7
See, e.g., Amazon; Amazon; e-offer; Alibaba; uBid; eBid; CQout; Swoopo; See, e.g., e-offer;ioffer; ioffer; Alibaba; uBid; eBid; CQout; Swoopo; Tazbar; InetBid; Clothingbids; fashiononauction; Clothesbid; and Tazbar; InetBid; Clothingbids; fashiononauction; Clothesbid; and Apparelbids. Apparelbids.
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cannot to to monitor thethe transactions on these cannot afford affordtotohire hirethe thenecessary necessarystaff staff monitor transactions on these web investigators; or to and and web sites; sites; to tooutsource outsourcesuch suchwork worktotooutside outside investigators; oracquire to acquire effectively thethe software available for monitoring eBay’s onlineonline effectivelyutilize utilize software available for monitoring eBay’s auctions.8 CFDA members do not eveneven havehave an inauctions.8 Indeed, Indeed,aamajority majorityofof CFDA members do not an inhouse house attorney attorney to toadvise adviseon onissues issuesconcerning concerningcounterfeiting. counterfeiting. Even LizLiz Claiborne, Inc.,Inc., Even large large fashion fashionhouses housessuch suchas asCFDA CFDAmember member Claiborne, which COUTURE andand KATE SPADE brands, whichwhich have have whichowns ownsthe theJUICY JUICY COUTURE KATE SPADE brands, been counterfeited and have found it difficult to allocate been counterfeited andsold soldthrough througheBay, eBay, have found it difficult to allocate the eBay. As Gene Bolmarcich, the manpower manpowernecessary necessarytotoconstantly constantlymonitor monitor eBay. As Gene Bolmarcich, Vice Inc., hashas noted, “Liz“Liz Claiborne has has VicePresident, President,Liz LizClaiborne, Claiborne, Inc., noted, Claiborne experienced thethe sale of of counterfeit Juicy Couture experienced enormous enormousproblems problemswith with sale counterfeit Juicy Couture and until recently we had a fulla time and Kate Kate Spade Spade products productson oneBay. eBay.UpUp until recently we had full time person Vero takedown notices, but but as of few person monitoring monitoringeBay eBayand andsending sending Vero takedown notices, asaof a few months time person on on thisthis for for months ago ago we wehave havebeen beenunable unabletotokeep keepaafull full time person budgetary causing significant harm to our budgetary reasons. reasons. OfOfcourse coursethis thisis is causing significant harm to brands our brands now. of of such surveillance to specialized companies and and now. The Theoutsourcing outsourcing such surveillance to specialized companies
8 8
For subscription to one of the leading For instance, instance,the thebudget budgetfor fora ayearly yearly subscription to one of the leading search service companies can exceed $150,000 depending upon the search service companies can exceed $150,000 depending upon the number number of oflistings. listings.
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even given our our trademark even the the available availablesoftware softwareisiscost costprohibitive, prohibitive, given trademark enforcement enforcementbudget.”9 budget.”9 What forfor companies selling hundreds of of What isisalready alreadyextremely extremelyonerous onerous companies selling hundreds millions worth of luxury goods, is absolutely prohibitive for millionsofofdollars dollars worth of luxury goods, is absolutely prohibitive for smaller, fashion designers whose smaller, but butnonetheless nonethelesspopular popularand andemerging, emerging, fashion designers whose annual dollars or less. As Bob Sui, Sui, ChiefChief annual sales sales amount amount to toaafew fewmillions millions dollars or less. As Bob Financial Anna SuiSui Corp., hashas stated, “We“We cannot pursue further FinancialOfficer Officerofof Anna Corp., stated, cannot pursue further efforts time. WeWe cancan afford neither the hiring of effortson onthe theeBay eBayfront frontatatthis this time. afford neither the hiring of people outsourcing of such people on on staff stafftotoaddress addressthe theproblem problemororthethe outsourcing of such surveillance a matter of fact, even the the available surveillancetotospecialized specializedcompanies. companies.AsAs a matter of fact, even available software software isisout outofofreach.”10 reach.”10 Perhaps more problematic is the feeling Perhaps more problematicthan thanthe theissue issueofofmanpower, manpower, is the feeling expressed by CFDA experience) that that the the expressed by CFDAmembers members(and (andechoed echoedbybyTiffany’s Tiffany’s experience) policies eBay forfor reporting counterfeiting policiesand andprocedures proceduresput putininplace placebyby eBay reporting counterfeiting activity At base, there is the issueissue that that activityare arelargely largelyineffective. ineffective. At base, there is fundamental the fundamental
9 9
Email Vice President, Liz Liz Emailcorrespondence correspondencewith withGene GeneBolmarcich, Bolmarcich, Vice President, Claiborne, Claiborne,Inc., Inc.,dated datedOctober October22, 22,2008. 2008.
10 10
Email Sui, Chief Financial Officer, AnnaAnna Sui, Sui, Emailcorrespondence correspondencewith withBob Bob Sui, Chief Financial Officer, Inc., Inc., dated dated October October22, 22,2008. 2008.
11 11
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the sale of of potential counterfeit goods at the the brand brand owner owneronly onlylearns learnsofofthethe sale potential counterfeit goods at the same time such TheThe auction process is most same time such goods goodsare are offered offeredtotothe thepublic. public. auction process is most of effective action to be and and by the the the of the the time timetoo toobrief briefforfor effective action to taken, be taken, by time the time brand with eBay, thethe sales may have already been brand owner ownerfiles filesaaNOCI NOCI with eBay, sales may have already been concluded. concluded. Moreover, products as as counterfeit solely based on the Moreover,identifying identifying products counterfeit solely based on the pictures areare often doctored or or pictures posted postedby byeBay’s eBay’sfaceless facelesssellers, sellers,which which often doctored actually thethe actual goods being offered, is is actuallyshow showauthentic authenticgoods goodsand andnot not actual goods being offered, ineffective. even when a brand owner’s NOCI results in having an an ineffective.Further, Further, even when a brand owner’s NOCI results in having auction items willwill not not auction removed, removed,there thereisisnonoguarantee guaranteethat thatthe thecounterfeited counterfeited items merely As As Mr.Mr. Bolmarcich merely reappear reappearunder underthe thename nameofofsome someother otherseller. seller. Bolmarcich has stated, “More “More than is seen asas notnot being has stated, thanjust justthe thecost, cost,such suchexpenditure expenditure is seen being cost a small bandage onon a gaping wound. The The cost effective effectivebecause becauseititisissimply simply a small bandage a gaping wound. VeRO response to to thethe auction of of VeROsystem systemdoes doesnot notconstitute constituteananeffective effective response auction counterfeit photographs of the products offered on on counterfeitproducts productsononeBay. eBay.The The photographs of the products offered the of the products the site site are are usually usuallydoctored doctoredsosoasastotorender renderour ouridentification identification of the products ineffective It isIta is game of ‘whack a mole’ — in the ineffectiveififnot notimpossible. impossible. a game of ‘whack a mole’ — in the instances with ourour NOCIs and and actually instances where where eBay eBayhad hadcomplied compliedinintime time with NOCIs actually
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withdrawn hours, thethe veryvery same products werewere offered by by withdrawnthe theoffers, offers,within within hours, same products offered the and wewe hadhad to start all over.”11 the same same party party under underaadifferent differentidentity identity and to start all over.”11 These member These sentiments sentiments are are echoed echoed by bySusan SusanPosen, Posen,Chair ChairofofCFDA CFDA member Zac Posen. items thatthat areare for for salesale as ‘Zac Posen’ on eBay. In In Zac Posen. “We “Wemonitor monitor items as ‘Zac Posen’ on eBay. instances where wewe send an an instances where we wespot spotgarments garmentsthat thatare arebeing beingcounterfeited, counterfeited, send email to them that they areare selling counterfeit itemsitems and and email tothe theseller sellerinforming informing them that they selling counterfeit demand that from eBay. In many instances, they they demand that they theyremove removethe thelisting listing from eBay. In many instances, comply. Shortly thereafter thethe very same counterfeit goods appear under the the comply. Shortly thereafter very same counterfeit goods appear under name of thethe endend wewe areare ineffective.”12 name of aa different differentseller. seller.In In ineffective.”12 The onon eBay is further exacerbated by eBay’s The counterfeiting counterfeitingproblem problem eBay is further exacerbated by eBay’s response to the requiring suchsuch response to the purchasers purchasers of ofcounterfeit counterfeitgoods. goods.ByBy requiring purchasers through a third purchasers to to establish establishthat thatthe thegoods goodsare areindeed indeedcounterfeit counterfeit through a third party directing suchsuch purchasers to the party (Op. (Op.atat12), 12),eBay eBayisiseffectively effectively directing purchasers to brand the brand owners, requests to to authenticate goods or or owners, who whoare arethen thenforced forcedtotorespond respondtoto requests authenticate goods
11 11
Email Vice President, Liz Liz Emailcorrespondence correspondencewith withGene GeneBolmarcich, Bolmarcich, Vice President, Claiborne, Claiborne,Inc., Inc.,dated datedOctober October22, 22,2008. 2008.
12 12
Email Zac Posen, dated Emailcorrespondence correspondencewith withSusan SusanPosen, Posen,Chair, Chair, Zac Posen, dated October October 21, 21,2008. 2008.
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for such requests areare refused, it isitthe brand owner’s for compensation. compensation.When When such requests refused, is the brand owner’s goodwill eBay’s. goodwillthat thatsuffers, suffers,notnot eBay’s. Ultimately, required to monitor the the salesale of products Ultimately,the theinvestment investment required to monitor of products offered too costly for for many, if not of theofmembers offeredon oneBay eBayisissimply simply too costly many, if most, not most, the members of If the is thrown on the of the the CFDA CFDAtotobebeable abletotoafford. afford. If burden the burden is thrown onfashion the fashion houses, they will to to respond to atothreat thatthat trulytruly putsputs houses, they willnever neverbebeinina aposition position respond a threat at which has has created, maintained and and at risk risk their theirvery veryexistence. existence.It isIt eBay, is eBay, which created, maintained profited marketplace, andand which acknowledges that that 30% 30% or or profitedfrom fromthis thisonline online marketplace, which acknowledges more products sold through its site is counterfeit that that more of ofthe theTIFFANY TIFFANY products sold through its site is counterfeit should eliminating counterfeits fromfrom its its should properly properlybear bearthe theburden burdenofof eliminating counterfeits marketplace. marketplace. As design house, wewe cancan As Ms. Ms.Posen PosenofofZac ZacPosen, Posen,states, states,“As “Asa asmall small design house, only thisthis problem. We can only devote devoteso somuch muchtime timeand andresources resourcestotopolicing policing problem. We can not really have no recourse. To absolve not even even afford affordtotobuy buythe thesamples. samples.WeWe really have no recourse. To absolve eBay forfor selling counterfeit goods on their market eBay from fromany anyresponsibility responsibility selling counterfeit goods on their market and thethe problem andand give freefree reinrein to counterfeiters.”13 and site site will willonly onlyworsen worsen problem give to counterfeiters.”13
13 13
Id. Id.
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The members cited herein are are The views viewsofofMs. Ms.Posen Posenand andthe theother otherCFDA CFDA members cited herein reflective membership. reflectiveofofthe theexpressed expressedconsensus consensusamong amongthe theCFDA CFDA membership. CONCLUSION CONCLUSION For respectfully request thatthat thisthis For the the foregoing foregoingreasons, reasons,the theCFDA CFDA respectfully request Court Court andand remand for proceedings Court vacate vacatethe thejudgment judgmentofofthe theDistrict District Court remand for proceedings consistent opinion on on thisthis appeal. consistent with withthe theCourt’s Court’s opinion appeal. Dated: Dated: October October22, 22,2008 2008
Respectfully Respectfullysubmitted, submitted, COBLENCE ASSOCIATES COBLENCE&& ASSOCIATES By: Coblence By: /s//s/Alain Alain Coblence Alain AlainCoblence Coblence 200 200 Park Park Avenue AvenueSouth South New 10003 New York, York,New NewYork York 10003 Tel: Tel: (212) (212)593-9191 593-9191 Fax: Fax: (212) (212)593-0011 593-0011 Attorneys Attorneysfor forAmicus AmicusCuriae Curiae
15 15
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CERTIFICATE OF OF COMPLIANCE CERTIFICATE COMPLIANCE Pursuant thethe Federal Rules of Appellate Pursuant to to Rule Rule32(a)(7)(C) 32(a)(7)(C)ofof Federal Rules of Appellate Procedure, Procedure, the the undersigned undersignedcertifies certifiesthat: that: 1. 1.
This thethe type-volume limitation of Fed. This brief briefcomplies complieswith with type-volume limitation of R. Fed. R.
App. contains 3,243 words, excluding the the App. P. P.32(a)(7)(B) 32(a)(7)(B)because becausethis thisbrief brief contains 3,243 words, excluding parts App. P. P. 32(a)(7)(B)(iii), as as parts of of the the brief briefexempted exemptedbybyFed. Fed.R.R. App. 32(a)(7)(B)(iii), determined used to to generate thethe brief. determined by bythe theword wordprocessing processingsystem system used generate brief. 2. 2.
This thethe typeface requirements of Fed. R. R. This brief briefcomplies complieswith with typeface requirements of Fed.
App. requirements of Fed. R. App. P. 32(a)(6) App. P. P.32(a)(5) 32(a)(5)and andthe thetype typestyle style requirements of Fed. R. App. P. 32(a)(6) because this brief spaced typeface using because this briefhas hasbeen beenprepared preparedininproportionally proportionally spaced typeface using Microsoft Word 2003 in 14 Times NewNew Roman font. font. MicrosoftOffice Office Word 2003 in point, 14 point, Times Roman Dated: York Dated: New NewYork, York,New New York October October 22, 22,2008 2008
/s/ /s/ Alain AlainCoblence Coblence Alain AlainCoblence Coblence COBLENCE ASSOCIATES COBLENCE&& ASSOCIATES 200 Park Avenue 200 Park AvenueSouth South New York, NY 10003 New York, NY 10003 (212) (212) 593-9191 593-9191 Counsel Counsel for forAmicus AmicusCuriae Curiae Council of Fashion Designers of of Council of Fashion Designers America, America,Inc. Inc.
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ANTI-VIRUS CERTIFICATION ANTI-VIRUS CERTIFICATION
Case (NJ) Inc. Inc. v. eBay Inc. Inc. Case Name: Name:Tiffany Tiffany (NJ) v. eBay Docket 08-3947-cv DocketNumber: Number: 08-3947-cv
I, hereby certify that the Amicus Brief submitted in PDF I, Samantha SamanthaCollins, Collins, hereby certify that the Amicus Brief submitted in PDF form e-mail attachment to [email protected] in the above formasasanan e-mail attachment to [email protected] in the above referenced Software Anti-Virus Release 8.3.028.3.02 (with (with referenced case, case, was wasscanned scannedusing usingCA CA Software Anti-Virus Release updated filefile as as of of 10/22/2008) andand found to betoVIRUS FREE.FREE. updated virus virusdefinition definition 10/22/2008) found be VIRUS
/s/ /s/ Samantha SamanthaCollins Collins Samantha SamanthaCollins Collins Record Press, Record Press,Inc. Inc.
Dated: 22,22, 2008 Dated:October October 2008
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CERTIFICATE OF OF SERVICE http://www.jdsupra.com/post/documentViewer.aspx?fid=03d96e80-6a66-40c9-ade9-fed5d55416d9 CERTIFICATE SERVICE 08-3947-cv 08-3947-cv
Tiffany v. v. eBay Inc.Inc. Tiffany(NJ) (NJ)Inc. Inc. eBay
II hereby copies of of thisthis Brief Amicus Curiae of The hereby certify certifythat thattwo two copies Brief Amicus Curiae of The Council of Fashion Designers of America, Inc. were sent by Federal Express NextNext Council of Fashion Designers of America, Inc. were sent by Federal Express Business Business Day Daydelivery deliveryto:to: James B. Swire, James B. Swire,Esq. Esq. Arnold Arnold&&Porter PorterLLP LLP 399 Park Avenue 399 Park Avenue New 10022 New York, York,New NewYork York 10022 (212) 715-1000 (212) 715-1000 Attorneys Attorneysfor forPlaintiffs-Appellants Plaintiffs-Appellants Robert Robert Bruce BruceRich, Rich,Esq. Esq. Weil, Gotshal & Manges, LLP Weil, Gotshal & Manges, LLP 767 Fifth Avenue 767 Fifth Avenue New 10153 New York, York,New NewYork York 10153 (212) 310-8000 (212) 310-8000 Attorneys Attorneysfor forDefendant-Appellee Defendant-Appellee
II also and nine copies were alsoalso shipped via Hand delivery also certify certifythat thatthe theoriginal original and nine copies were shipped via Hand delivery to: to: Clerk ClerkofofCourt Court United States Court of Appeals, Circuit United States Court of Appeals,Second Second Circuit United UnitedStates StatesCourthouse Courthouse rd 500 floor 500 Pearl Pearl Street, Street, 3rd 3 floor New 10007 New York, York,New NewYork York 10007 (212) 857-8576 (212) 857-8576 on on this this 22nd 22ndday dayofofOctober October2008. 2008. Notary NotaryPublic: Public: /s/ /s/ Ramiro RamiroA. A.Honeywell Honeywell
/s/ /s/ Samantha Samantha Collins Collins
Sworn to me this
SAMANTHA COLLINS Record Inc. Record Press, Press, Inc. th 229 Street, 8 8th Floor 229 West West 36th 36th Street, Floor York, New York New 10018 York 10018 (212) 619-4949
October 22, 2008
RAMIRO A. HONEYWELL Notary Public, State of New New York York State of No. 01HO6118731 Qualified in Kings County County Commission Expires 15, 2008 2008 Expires November November 15,
