2014 Articles

Leveraging Notice and Takedown to Address Trademark Infringement Online

Rubin, Thomas C.

For the purposes of this Symposium, I was assigned the task of defending the current legal standard for assessing online service providers’ secondary liability for trademark infringement. In other words, I was asked to defend the “status quo.” I think it is safe to say that, at an academic conference, most people would not pick that position as their first option—it’s like being asked to discuss how to prepare meatloaf at a conference on new trends in the culinary arts. That said, with respect to the current law in the United States, I don’t completely shy away from the position. To be clear, my position is not that the current state of affairs is perfect. There are real challenges facing brand owners, challenges that I—and Microsoft—truly understand. Microsoft is an online service provider, and our online services, such as Bing, Skype, OneDrive, Office 365 and Xbox Live, are both important lines of business and valuable services that hundreds of millions of customers around the world rely on every day. At the same time, Microsoft owns some of the world’s most valuable brands and is a victim of substantial online infringement. Our infringement battles run the gamut from pirated and counterfeit software to counterfeit hardware, such as computer peripherals and game consoles. The damage caused by these infringements is estimated to be in the billions of dollars annually. Moreover, Microsoft expects our acquisition of Nokia’s phone business to only increase our counterfeiting and IP enforcement challenges. As my background demonstrates, I understand the importance of effective enforcement for brands, and the challenges brands face in getting the job done. For that reason, I believe that we should carefully consider all reasonable proposals that would protect against consumer harm and enable trademark owners to more effectively protect their brands from commercial threats.