counterfeit components and related legal issues counterfeit electronic components avoidance workshop...

COUNTERFEIT COMPONENTS AND RELATED LEGAL ISSUES

Counterfeit Electronic Components Avoidance Workshop

August 27, 2008

Laurence E. Pappas

© EQuality Services, LLC 2008


I. Internet Sales and Trademark Violations

A. Direct and Contributory Trademark Infringement and Dilution.

1. Direct trademark infringement: Valid mark

entitled to protection that is used in commerce in connection to sale or advertising of goods or services without consent and is likely to cause confusion as to link user and holder of trademark or origin of goods and services.





a. If trademark is valid, key question is whether use is likely to

cause confusion as to the origin of the goods or services.

b. Nominative fair use: defense to use.




1. Trademark owners cannot prevent others from making a descriptive use of their trademark. Resale of authentic non- counterfeit goods is protected even though resale is not authorized.

2. Nominative fair use proven when

product or service is not easily identifiable without trademark, only so much of mark is used that is necessary to identify goods or services, and user does not suggest sponsorship or endorsement by holder of mark.




EXAMPLES:

“Tiffany” used to describe Tiffany jewelry. Without using word “Tiffany”, reseller might have to say “Silver jewelry from prestigious N.Y. company where Audrey Hepburn once liked to eat breakfast” or “Jewelry bearing same name as 1980s pop star”.

“Playboy” used to resell goods without special font or symbols - e.g., the famous Playboy bunny associated with the mark.




EXAMPLES: continued

“Playboy Playmate of the Year in 1981” phrase used by woman (woman had disclaimer of endorsement on

website). Disclaimer not required but safer.




c. Purchase of sponsored links advertising on search engines availability of trademark items: protected in same manner as use on own website.




2. Contributory Infringement: A person intentionally induces another to infringe upon a mark or continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement.

a. Mere suspicion or general knowledge of counterfeiting not enough.

counterfeit components and related legal issues counterfeit electronic components avoidance workshop...

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