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Finnegan, Henderson, Farrow, Garrett & Dunner, LLP Contributory and Keyword Sale Infringement of Trademarks on the Internet Under U.S. Law LIPPI Forum Session II Buenos Aires, Argentina October 11,

S. Supreme Court's recent decision in Sisolak and the issues presented (see end note). A key U.S. Supreme Court case from October 2009: Fisher v New York Times Co. Sisolak vs. News Corp. (the “Sisolak ruling”) Sisolak v. News Corp. (Purchasing a domain name of the New York Times.com (and presumably other news organizations); also a trademark infringement case that is relevant to this summary) The New York Times Company has a trademark on the word “New York Times,” and the New York Times' website is a website of “New York Times LLC” (“New York Times”). Sisolak alleged that the New York Times infringes an earlier filed trademark registration for the name “The New York Times.” New York Times' defense was a question of fact: the defendant was an Internet web hosting provider (“IP Hosting Provider”). Sisolak was not permitted to identify the IP Hosting Provider as such, for obvious reasons. Sisolak alleged contributory infringement of the New York Times mark under several principles of law: first, that the New York Times is entitled to an interest in the mark; second, that the New York Times is entitled to the protection of its registration when it owns the domain name and uses the website as its own property; and third, that an IP Hosting Provider cannot be liable for infringement when it exercises “fair and lawful control” over what is published in its system. (The argument that an IP Hosting Provider could not possibly be liable for contributory infringement is also discussed elsewhere in this summary.) The U.S. Supreme Court (In its Decision in Sisolak v. News Corp) found as follows: It could not be said that the IP Hosting Provider was “disfavored” over the New York Times.

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