Interview with TIFFANY’s U.S. Lawyer in the proceeding against EBAY

Mr. James SWIRE from ARNOLD PORTER LLC accepted to answer to our questions further to the US District Court Decision.

Can you tell us a few words about yourself?

I am a partner specializing in intellectual property including trademark matters in the New York Office of the international law firm Arnold & Porter. About 20 years ago, I represented the INSTITUT PASTEUR in litigation against the United States of America involving the credit for discovery of the AIDS virus and patent rights to blood detection kits.

What are for you the main points of the US decision?

We have a number of differences with the Court regarding the proper interpretation of U.S. law, as discussed below. First, a principal purpose of U.S. trademark law is to protect the consumer and the brand owner, yet both are damaged by the U.S. decision. Second, the Court seems to think that TIFFANY had a much greater burden to police its brand than the law actually provides. TIFFANY should not have an obligation to police eBay’s site
for counterfeits: eBay created the site, designed how it works and it is eBay’s responsibility to police its site. Third, the Court ruled that eBay had to have specific knowledge of who was selling counterfeit TIFFANY merchandise before it had an obligation to do anything to stop such sales. But the law provides for a broader obligation. Once eBay had general information that there was a significant problem involving the sale of counterfeit TIFFANY merchandise on eBay, eBay was required to investigate the matter and take appropriate action.

What are your views when eBay considers that only IP right owners are the most skilled and knowledgeable in disclosing auctions on counterfeiting products?

eBay earns substantial income from the listing and the sale of counterfeit goods. It should not be allowed to facilitate and profit from the sale of counterfeit goods and at the same time refuse to take responsibility for them. In this regards, the French decisions were logical and correct: no other than eBay should be required to do the work of eBay. U.S. trademark law should reach that same result.
This is an important case not only for TIFFANY but for all brand owners and the public. If the public and TIFFANY are to be protected, as the law requires, the decision should be reversed.

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