Tiffany (NJ) Inc. v. eBay Inc.600 F.3d 93 (2nd Cir. 2010)

Bench/Jurisdiction:

United States Court of Appeals for the Second Circuit (available at: https://www.leagle.com/decision/infco20100401095)

Key Issues:

The case deals with prevention of dilution of well known marks.(Doctrine of Dilution)

Case Background:

Plaintiff Tiffany & Co. filed the complaint, first in 2004, alleging that eBay constituted direct and contributory trademark infringement, trademark dilution, and false advertising since it facilitated and advertised counterfeit Tiffany jewelries on its online market.

Facts:

1. Marketing Display, Inc., the plaintiff, held patents for a two-spring design used to stabilize traffic signs in strong winds.
2. After this patent expired, TrafFix,the defendant, started producing their own signs utilizing the same design. Against this the plaintiff filed a lawsuit alleging trade dress infringement based on the imitation of the distinctive design. So, the main question dealt with was: whether trade dress protection could be granted to a product that was previously covered by patent.

Decision:

1. The Court, in a unanimous opinion by Justice Anthony Kennedy, held that there can be no trademark protection for something that is functional because that would work as a detriment to competitors based on something other than reputation, which is the key consideration in trademark law.
2. Court noted that it is the prerogative of the plaintiff to establish that the characteristics for which protection is sought is not functional, as, general assumption would be, anything that was granted patent protection earlier.

   The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply.