eBay Becomes a Girl's New Best Friend as The Second Circuit Sidesteps The Nominative Fair Use Doctrine, Leaving Tiffany To Police Counterfeits In The Online Marketplace

June 16, 2012

This article examines the recent Second Circuit decision of Tiffany v. eBay and the effect it has on the nominative fair use doctrine. The Second Circuit was the first circuit to consider the doctrine of nominative fair use in the online marketplace. However, the Second Circuit failed to expressly recognize the doctrine, likely due in part to the current circuit split on nominative fair use. In addition, the Lanham Act lacks clarity by only recognizing nominative fair use in the trademark dilution context. In light of Tiffany v. eBay, this article argues for the need for legislative clarity in the Lanham Act by recognizing the nominative fair use doctrine as an affirmative defense to direct trademark infringement.