User:Imj369/sandbox

Article Draft - Inwood Laboratories, Inc. v. Ives Laboratories, Inc.
Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) is a United States Supreme Court case, in which the Court confirmed the application of and set out a test for contributory trademark liability under § 32 of the Lanham Act (15 U.S.C. § 1114).

Contributory Trademark Infringement
Under the Lanham Act, an owner of a trademark is permitted to sue anyone who uses a mark that is identical or confusingly similar to the trademark owner's mark or who otherwise makes deceptive claims of origin. The Lanham Act does not explicitly provide a cause of action for contributory infringement. Thus, contributory trademark infringement is a judicial doctrine based on the common law of torts. Specifically, contributory liability is based on the principle that parties should be held liable for their contribution to a harm, even when they did not directly cause the harm.

The Supreme Court first recognized the doctrine of contributory infringement in 1924, in William R. Warner & Co. v. Eli Lilly & Co. In this case, the salesmen for the defendant, a manufacturer, suggested to retail dealers that defendant's product could be imperceptibly substituted for the plaintiff's product. Despite the fact that the manufacturer itself did not use plaintiff's mark and the retail dealers were not deceived, the Court found liability, stating: "The wrong was in designedly enabling the dealers to palm off the preparation as that of the respondent."

Facts
The plaintiff, Ives Laboratories, Inc., owned a patent on the drug cyclendelate, which it distributed in colored blue and blue-red capsules and marketed under the name Cyclospansmol. After the patent expired in 1972, the defendant, Inwood Laboratories, Inc., and other manufacturers began to make and distribute generic versions of the drug using identically colored capsules. Ives sued several manufacturers and wholesalers under § 32 of the Lanham Act, alleging that some pharmacists were distributing generic versions of cyclendelate and mislabeling them as Cyclospansmol. Ives argued that the generic manufacturers' use of identical capsules induced the pharmacists to substitute and mislabel generic versions of the drug as Cyclospansmol, and that pharmacists would continue to make such infringing substitutions as long as the nearly identical generic versions were available.

Prior Procedural History
The Federal District Court denied Ives' request for a preliminary injunction on the sale of drugs that appear identical to Ives' Cyclospansmol, as Ives did not demonstrate that the manufacturers had conspired with the pharmacists to commit the infringement or suggested that the pharmacists make substitutions. The Court of Appeals for the Second Circuit affirmed the decision, but noted that the District Court's standard for contributory infringement was too narrow. Instead, the Court of Appeals stated that a manufacturer or distributor could be held liable for infringement if they suggested that the pharmacists engaged in such infringing conduct, or if they continued to sell the generic drug to retailers whom they knew or had reason to know were engaging in infringing practices.

Supreme Court Opinion
The question before the Court was whether the manufacturer could be held liable for trademark infringement when it was the distributors of those drugs (the pharmacists) who actually committed the infringing acts. In an opinion written by Justice Sandra Day O'Connor, the Supreme Court found that a manufacturer or distributor may be held liable for contributory trademark infringement where it "intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement."

Much of the opinion is centered around the Supreme Court's disapproval of the Circuit Court's overstepping its role on appellate review. The Court stated that an appellate court could not interpret the evidence on its own in place of the district court's findings, as the trier of fact has the exclusive responsibility of determining the weight and credibility of the evidence.

The Court remanded the case to the Court of Appeals for the Second Circuit for further proceedings, as the Circuit Court had not considered the rest of Ives' claims.

Footnote 10
Although the Supreme Court opinion did not deal with the issue of functionality and focused primarily on the appellate court's overstepping of appellate review, the Court has since referred back to its definition of functionality in Footnote 10. In Footnote 10, the Supreme Court stated: "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The Court cited Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964) and Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122 (1938) as support. In Qualitex Co. v. Jacobson Products Co., the Court reiterated this Inwood test for functionality, along with additional language. The Court also reiterated the test in TrafFix Devices v. Mktg Displays, 532 U.S. 159 (1995).

Cases after Inwood
Inwood involved a manufacturer or distributor, but it left open whether its test of contributory liability applied beyond this context. Since Inwood, courts have extended the application of contributory infringement to other areas, including flea markets, franchises , and service providers.



Article
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) is the first case in which the Supreme Court stipulated a test for contributory infringement of a trademark. In addition, in footnote 10 of the case, the Supreme Court stated a test for functionality that is cited in future cases. Currently, this article is a brief stub. Although courts have declined to extend Inwood or distinguished Inwood in multiple cases, the case still appears to be cited frequently and is relevant for the underlying doctrine. Thus, this article would benefit from significant expansion to explain the background of the case, the opinion of the Court, and the subsequent history of the doctrine established in the case.

Primary case

 * Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982)

Citing cases

 * Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2010)
 * Traffix Devices v. Mktg Displays, 532 U.S. 23 (2001)
 * Lockeed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 9984 (9th Cir. 1999)
 * Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995)
 * Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143 (7th Cir. 1992)

Statute

 * 15 U.S.C. § 1114 (Lanham Act § 32)

Law review articles

 * John T. Cross, Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement, 80 Iowa L. Rev. 101 (1994-95)
 * David Hricik, Remedies of the Infringer: The Use By the Infringer of Implied and Common Law Federal Rights, State Law Claims, and Contract to Shift Liability for Infringement of Patents, Copyrights, and Trademarks, 28 Tex. Tech. L. Rev. 1027 (1997)
 * Justin Hughes, Cognitive and Aesthetic Functionality in Trademark Law, 36 Cardozo L. Rev. 1227 (2015)


 * Julie Liu, From Inwood to Internet and Beyond: Assessing the Web Host-User Relationship in Contributory Online Trademark Infringement, 11 Wash. J.L. Tech. & Arts 105
 * Mark Alan Thurmon, The Rise and Fall of Trademark Law's Functionality Doctrine, 56 Fla. L. Rev. 243 (2004)

General background on trademark infringement

 * Gregory P. Gulia et al., Trademark Infringement and Dilution Claims, Remedies, and Defenses, Westlaw: Practical Law


 * Deborah Buckman, Liability as vicarious or contributory infringer under Lanham Act—modern cases, A.L.R., 152 A.L.R. Fed. 573

Contributory Trademark Infringement

 * Deborah Buckman, Liability as vicarious or contributory infringer under Lanham Act—modern cases, A.L.R., 152 A.L.R. Fed. 573
 * John T. Cross, Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement, 80 Iowa L. Rev. 101 (1994-95)
 * Darrel C. Karl,  'Look-Alike' Capsules, Generic Drug Substitution, and the Lanham Act: The Elusive Contributory Infringement Standard of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 35 Cath. U. L. Rev. 345 (1982).
 * Julie Liu, From Inwood to Internet and Beyond: Assessing the Web Host-User Relationship in Contributory Online Trademark Infringement, 11 Wash. J.L. Tech. & Arts 105

Functionality

 * Justin Hughes, Cognitive and Aesthetic Functionality in Trademark Law, 36 Cardozo L. Rev. 1227 (2015)
 * Mark Alan Thurmon, The Rise and Fall of Trademark Law's Functionality Doctrine, 56 Fla. L. Rev. 243 (2004)

Article evaluation
Matal v. Tam

Overall, the material included in the Matal v. Tam page appears to be relevant to the topic and is supported by a significant number of citations, including to the case itself, other cases, newspaper articles, and law review articles. However, there are some sentences missing citations, and the organization of the article, both the general structure and the organization of each section, could use significant improvement. For instance, first-level headings are helpful and relevant, but the numerous sub-headings are distracting and make it more confusing to understand how all of these sub-headings relate. In addition, the section on the Federal Circuit Court decision is a bit confusing with numerous subheadings and only a short intro paragraph that is quite vague, stating that the Circuit Judge found the Lanham Act provision unconstitutional "for a variety of reasons."

Some of the language in the Background section is biased, particularly in the description of the PTO's interpretation of "the Slants." The article states that the PTO reached its interpretation "despite claims from the Band . . ." and that the PTO's decision was based on "anecdotal sources like Urban Dictionary" while the PTO "ignor[ed] survey data, linguistic experts, and legal declarations from the Asian American community." Furthermore, in describing the background of The Slants and Tam, the article says

The article has a large amount of space devoted to the Federal Circuit decision and has hardly any discussion of the Supreme Court decision, likely because the page hasn't been updated as much since this recent Supreme Court decision. Based on the history, the article was first created in 2016 and much of the content on the Federal Circuit decision was added then, before the Supreme Court cases was decided. The article would benefit from incorporating more information on the Supreme Court decision.

The article is part of the WikiProject Law and WikiProject U.S. Supreme Court cases and is rated Start-class, low importance in each. This categorization makes sense considering that there is a reasonable amount of information available on the page, but it could use considerable improvements in the organization of that information and some improvement in the citations.