Ledger Vol. 1 – No. 2 (Spring 2010)

Contributory Liability for Trademark Counterfeiting in an Ecommerce World

Scott Gelin and G Roxanne Elings analyze the current standard of contributory liability in the wake of Tiffany (NJ) Inc. v. eBay, in which the Second Circuit affirmed the Southern District’s finding that eBay is not liable to trademark owners for counterfeit sales of their products by third parties on its site. After highlighting certain ambiguities in the current state of the law, the authors propose practical tips to help brand owners protect against counterfeit sales, and to help service providers and selling platforms avoid secondary liability.

Using Clean Hands to Justify Unclean Hands: How the Emergency Exception Provision of the SCA Misapplies an Already Controversial Doctrine

While the government’s encouragement—and even reliance—on third-party monitoring of citizens is not a new phenomenon, the emergency exception to the SCA adopted in the Patriot Act oversteps constitutional bounds by providing the executive with the incentive to exaggerate potential threats in order to gain the collaboration of the telecommunications companies. The policies underlying this strategy are similar to those explained and adapted by the Sixth Circuit while articulating its Clean Hands Exception.Brendan Coffman argues that by allowing the government to gain access to evidence it normally would not be able to obtain, and ignoring the normal parameters of the exclusionary rule, the Sixth Circuit created a regime encouraging complicity between law enforcement and private citizens. Similarly, the arguments running contrary to the Clean Hands Exception ring true when assessing the emergency exception: the government has too great an incentive to encourage third parties to violate the privacy rights of others, and the third parties, especially telecommunications companies, are ultimately trapped in a Hobson’s Choice.

Software Developers, On Guard!: Offering Software for Sale Can Trigger a Bar to Patentability Even If the Software Is Untested and Incomplete

Paul A. Ragusa and Jack Chen discuss the on-sale bar to patentability in the context of nascent software. They conclude that a simple investigation concerning whether software code was complete at the time of an offer for sale is insufficient to establish the critical date for the purposes under 35 U.S.C. § 102(b) (“Conditions for patentability”).