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Florida Intellectual Property Attorney > Blog > Trademark Copyright Infringement > When Can You Hold A Contributory Infringer Liable In A Trademark Dispute In Florida?

When Can You Hold A Contributory Infringer Liable In A Trademark Dispute In Florida?


In business, brand matters. Trademark infringement can cause material damage to your company’s brand value. The party at-fault for trademark infringement may be legally liable for the resulting damages. Beyond that, in some limited cases, other parties may also be liable for trademark infringement on the grounds of contributory infringement (secondary liability). In this article, our Florida trademark & copyright infringement lawyer explains the key things to understand about contributory infringement and the potential liability for contributory infringers in trademark cases.

What is Contributory Infringement?

The Cornell Legal Information Institute defines contributory infringement as “a form of secondary liability for direct infringement of a patent, copyright, or trademark.” In trademark cases, contributory infringement most often occurs when a third-party acts in a negligent or otherwise irresponsible manner to encourage and/or facilitate trademark infringement. In other words, the third party “contributes” to the infringement and can therefore be held liable as a secondary defendant.

Supreme Court Recognizes Contributory Infringement

 In patent law, secondary liability for contributory infringement is directly expressed in the federal court (35 U.S.C. § 271(c)). However, with trademark cases, there is no federal statute stating that contributory infringement is a violation. That being said, the US Supreme Court  has clearly recognized that parties can be held legally liable for contributory infringement in trademark cases. In the 1982 decision of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., the nation’s highest court found relatively broad grounds for secondary liability due to contributory infringement. 

Proving Contributory Infringement is Complicated: Know the Elements 

Trademark infringement claims are complex—even more so if you are trying to establish secondary liability for contributory infringement. Simply proving that trademark infringement occurred is  not sufficient to hold a third party (non-infringing) party liable as a secondary defendant. To establish contributory infringement for a trademark violation, you generally need to prove that one of the following two things occurred:

  1. The non-infringing third party intentionally induced trademark infringement by the defendant; or
  2. The non-infringing third party knowingly continued to supply/distribute products that were engaged in trademark infringement. 

In other words, plaintiffs in secondary liability trademark infringement cases typically must establish that the defendant intentionally induced trademark infringement by another party or willfully facilitated the trademark infringement by another party. Although complicated, it may still be advisable for a plaintiff to pursue a secondary liability claim in a trademark infringement case. In some circumstances, the actual infringer lacks the financial capacity to pay damages. 

Get Help From Our Boca Raton, Florida Copyright Attorney Today

At Perkins Law, our Florida copyright law attorney is a solutions-driven advocate for clients. If you have any specific questions about contributory infringement and secondary liability, we are available to help. Call us or contact us online today to arrange your confidential, no commitment case review. Our law firm provides copyright infringement representation throughout South Florida, including in Palm Beach County, Miami-Dade County, Broward County, and Martin County.



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