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A website / platform is allowing a company in Europe to use…

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A website / platform is...
A website / platform is allowing a company in Europe to use our trademark and, since their platform is heavily used by people in the United States, we are concerned that our customers will get confused and that their use will dilute our mark.To remedy this, I sent a cease and desist order to the platform owner but they are not going to remove the user unless I provide a court order demanding they do so. I need the quickest and least expensive option to obtain a court order. I need to know a standard format I can use, where I need to file and on what basis I should make my request. And, if the user is in Europe but the platform owner (website) is in California, who do I address the suit to? I assume any party to the suit will need to be served, so including the other company on the suit may require proof of service to them in Europe. And, can a general court order cover all use on any platform, website or marketplace, or would I have to file independently?In reviewing some cases of companies in Europe selling in the United States, one notable is of a movie made about a woman attempting to reclaim a painting her family lost in the war, to finally get it due to the fact that the new owner, whom she said acquired stolen property, was selling replicas of the painting in the United States, giving her jurisdiction to sue them.Thanks in advance.
Submitted: 8 months ago.Category: Business Law
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11/19/2017
Business Lawyer: Law Educator, Esq., Attorney replied 8 months ago
Law Educator, Esq.
Category: Business Law
Satisfied Customers: 125,955
Experience: All corporate law, including non-profits and charitable fraternal organizations.
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Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.

You can provide a DMCA Take down notice to the website, since they have to honor such a demand, but once you do so, you would then need to follow through with an infringement action in Europe as a common law infringement. However, if you do not have a International trademark, your mark is generally not recognized outside the US.

The problem with this is that the website is not the one liable for the infringement, the company using your mark is liable for the infringement, the website according to US courts only provides the medium or the tool that is being used by the company, so you would need to pursue the company for any violation. If you cannot do so, the website does not have to remove it.

To go after the website you have to prove secondary or contributory infringement. In Inwood v. Ives 456 U.S. 844, 854 (1982), the US Supreme Court set forth the two-part standard for contributory infringement. . To establish contributory liability under Inwood, a plaintiff must show that the defendant either (1) “intentionally induce[d] another to infringe” his or her trademark or (2) “continue[d] to supply its product to one whom it knows or ha[d] reason to know [was] engaging in trademark infringement.”

Since your mark is not registered internationally, the company is not infringing on your mark in Europe and as such you are going to have an issue with this case, as they will claim they are not targeting US customers but cannot stop them from seeing the internet.

You would need to file against the European company and you can file against them in the US if you can prove they are targeting US customers using the mark, but you must have an intellectual property attorney as these cases are complex and not cheap (so there is no cheapest way to deal with these cases I am sorry to have to tell you).

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Customer reply replied 8 months ago
The issue is that websites can indeed stop traffic from certain geographic areas and larger sites often have the budgets and userbase to make that a reasonable request. iTunes, for example, has technology that can stop users from viewing specific content if they are in a geographic area in which promoting the content is a violation of someone's trademark.Yes, I understand it is expensive. I served notice to them, as I mentioned. On the basis that the platform company is contributing to the distribution of trademarked material by not implementing a reasonable technology to block access, where can I file that claim? Please use the original question for guidance on answer. Thank you.
Business Lawyer: Law Educator, Esq., Attorney replied 8 months ago

Thank you for your reply.

Again, you have to prove the website is engaged in secondary or contributory infringement in accordance with the case law above and the law does not say that anyone has to employ technology to prevent infringement. You would file in the US District Court in the state where the site is located and you have to sue both the site owner and the infringing company.

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