# Principles of Indirect Intellectual Property Infringement > A Systematic Treatment of Secondary Liability Across Patent, Copyright, Trademark, Trade Secret, and Right of Publicity Law **By Paul Roberts** | 📊 Comprehensive Guide 📊 **6,100 words** | ⏱️ **25 min read** #Legal_Guide #Patent_Law #Copyright #Comprehensive #AI February 16, 2026 --- ## Summary **Patents (statutory, federal only):** Inducement (§ 271(b)); contributory (§ 271(c)); plus quasi‑indirect/extraterritorial component export (§ 271(f)) and product‑by‑process importation (§ 271(g)). *State:* None (preempted). **Copyright (judge‑made, federal):** Contributory (e.g., *Gershwin*, *Sony*, *Grokster*), vicarious (*Shapiro*, *Fonovisa*), inducement (*Grokster*); related statutory hook for trafficking in circumvention tools (DMCA § 1201). *State:* Preempted; state law limited to contract, trade secret, right of publicity. **Trademark (judge‑made):** Contributory (*Inwood*; extended via *Hard Rock Café*, *Tiffany*, *Coach*), vicarious (agency principles); typically pleaded under Lanham Act § 1114 and/or § 1125(a). *State:* Parallel common law and state registration; secondary liability mirrors federal *Inwood* standards. **Trade secrets (statutory definitions):** Misappropriation expressly includes downstream acquirers/users with knowledge or reason to know; DTSA (§§ 1836(b), 1839(5)) adds federal civil action and references conspiracy in the seizure prong. *State:* UTSA mirrors DTSA; state tort (conspiracy, aiding‑abetting) and preemption vary by jurisdiction. **Right of publicity (primarily state):** No general federal statute; federal overlap via Lanham Act false endorsement (§ 1125(a)) and § 230 (e.g., *Hepp*). *State:* Core doctrine; statutes (e.g., Cal. Civ. Code §§ 3344, 3344.1) and common law; indirect liability via general tort (vicarious, contributory)—e.g., platforms, advertisers, AI. --- ## Prefatory Note The analysis that follows proceeds in five parts, organized by intellectual property regime. For each regime, this guide addresses: (A) the governing statutory framework; (B) the elements of each indirect liability theory recognized under federal law; (C) the controlling case law establishing and refining those elements; and (D) the scope and preemptive effect of federal law on state law claims. A summary table consolidating all five regimes concludes the analysis. Two structural observations apply throughout. First, the regimes differ fundamentally in their legislative architecture: patent indirect liability is codified in express statutory text; copyright, trademark, and right of publicity indirect liability are judge-made, developed through common law tort principles applied to federal statutes; and trade secret indirect liability is baked into the statutory definition of misappropriation itself. Second, federal preemption operates differently across the five regimes — completely for patents and copyrights, partially for trade secrets and trademark, and minimally for the right of publicity, which remains primarily state law. --- ## Table of Contents 1. [Patent](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#i-patent) 2. [Copyright](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#ii-copyright) 3. [Trademark](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#iii-trademark) 4. [Trade Secrets](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#iv-trade-secrets) 5. [Right of Publicity](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#v-right-of-publicity) 6. [Summary Table](https://claude.ai/chat/fd6da9c5-266c-437c-937d-bfff07a2634b#vi-summary-table) --- ## I. Patent ### A. Governing Framework Patent law is exclusively federal. No state patent law exists; indirect infringement is governed entirely by federal statute and federal case law under 35 U.S.C. § 271. Patent law is unique among the five regimes examined here in that **indirect infringement is expressly codified by statute**, rather than developed through judicial common law. The statutory framework encompasses four provisions: - **35 U.S.C. § 271(a)** defines direct infringement: making, using, selling, offering to sell, or importing the patented invention without authorization constitutes infringement. - **35 U.S.C. § 271(b)** codifies inducement: "Whoever actively induces infringement of a patent shall be liable as an infringer." - **35 U.S.C. § 271(c)** codifies contributory infringement: liability attaches to one who sells, offers to sell, or imports a component of a patented invention that is a material part of the invention, knowing it is especially made or adapted for use in an infringing manner, and which is not a staple article or commodity of commerce suitable for substantial noninfringing use. - **35 U.S.C. § 271(f)** creates liability for supplying components from the United States for combination abroad in a manner that would infringe if the combination occurred domestically, closing the legislative gap created by _Deepsouth Packing Co. v. Laitram Corp._, 406 U.S. 518 (1972). - **35 U.S.C. § 271(g)** imposes liability for importing into, or selling or using within, the United States a product made abroad by a process patented in the United States, subject to enumerated statutory exceptions. ### B. Inducement of Infringement — § 271(b) #### 1. Elements A claim for active inducement of infringement under § 271(b) requires proof of three elements: 1. **Direct infringement.** At least one person must have committed direct infringement under § 271(a). There is no inducement liability in the absence of an underlying direct infringer. 2. **Knowledge.** The defendant must have known that the induced acts constituted patent infringement. Actual knowledge is required; general knowledge that a patent exists is insufficient. The "willful blindness" doctrine satisfies the knowledge requirement where the defendant (a) subjectively believed there was a high probability that a fact — here, infringement — existed, and (b) took deliberate actions to avoid learning of that fact. 3. **Specific intent.** The defendant must have specifically intended to bring about the acts of infringement. Intent may be proven through direct evidence of encouraging infringement or through circumstantial evidence including instructions, advertising, business models, or other communications directed to potential infringers. #### 2. Governing Case Law _**(a) Global-Tech Appliances, Inc. v. SEB S.A.**_, 563 U.S. 754 (2011) _Global-Tech_ is the Supreme Court's definitive statement on the knowledge requirement for § 271(b) inducement. The Court held that inducement liability requires the defendant to know that the induced acts constitute patent infringement — not merely that a patent exists in the field. The Court further held, consistent with _United States v. Jewell_, 532 F.2d 697 (9th Cir. 1976) (en banc), that willful blindness satisfies the knowledge requirement. Willful blindness requires two findings: first, that the defendant subjectively believed there was a high probability that infringement was occurring; and second, that the defendant took deliberate actions to avoid learning that infringement was occurring. _**(b) Limelight Networks, Inc. v. Akamai Technologies, Inc.**_, 572 U.S. 915 (2014) _Limelight_ addresses the relationship between § 271(b) and § 271(a) in the context of divided infringement — where multiple parties each perform some steps of a method claim, but no single party performs all steps. The Court held that § 271(b) inducement requires an underlying act of direct infringement under § 271(a), and that § 271(a) direct infringement in the method claim context requires a single entity to perform every step of the claimed method. Where no single party performs all steps, there is no direct infringement and therefore no predicate for inducement liability under § 271(b). **Practitioner Note:** _Limelight_ was decided against the background of the Federal Circuit's contemporaneous development of the "single entity" rule for § 271(a) joint infringement. The Supreme Court's holding in _Limelight_ did not disturb the Federal Circuit's ability to address divided infringement scenarios through the § 271(a) analysis; it simply made clear that § 271(b) cannot serve as an independent basis for imposing liability where § 271(a) direct infringement has not occurred. ### C. Contributory Infringement — § 271(c) #### 1. Elements Contributory infringement under § 271(c) has four elements: 1. **Sale, offer to sell, or importation** of a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process. 2. **Material part of the invention.** The component must constitute a material part of the patented invention — not a trivial or peripheral element. 3. **Knowledge.** The defendant must know that the component is especially made or especially adapted for use in an infringement of the patent. 4. **No substantial noninfringing use.** The component must not be a "staple article or commodity of commerce suitable for substantial noninfringing use." Components with commercially significant alternative lawful uses are excluded from contributory liability even where they are also used in infringing applications. #### 2. Governing Case Law _**(a) Aro Manufacturing Co. v. Convertible Top Replacement Co.**_, 377 U.S. 476 (1964) (_Aro II_) _Aro II_ is the foundational Supreme Court authority on § 271(c). The Court interpreted § 271(c) as codifying contributory infringement in the patent context and addressed the knowledge requirement for the "especially made or especially adapted" element. The Court clarified that a party must know both of the existence of the patent and that the component is especially made for use in infringing it — general commercial knowledge is insufficient. _**(b) Dawson Chemical Co. v. Rohm & Haas Co.**_, 448 U.S. 176 (1980) _Dawson Chemical_ clarified the "especially adapted" and "substantial noninfringing use" elements of § 271(c) in the context of agricultural chemicals. The Court held that a manufacturer of a nonstaple chemical compound used to practice a patented process could be held contributorily liable for supplying the chemical with knowledge of the patented use, even where the manufacturer did not practice the patented process itself. The decision also addressed the intersection of contributory infringement doctrine with the patent misuse defense. ### D. Supplying Components for Foreign Assembly — § 271(f) #### 1. Elements Section 271(f) liability has three elements: 1. **Supply from the United States.** The defendant must supply or cause to be supplied from within the United States all or a substantial portion of the components of a patented invention. 2. **Intent.** The components must be supplied with the intent that they be combined outside the United States in a manner that would constitute infringement if the combination occurred within the United States. 3. **Combination abroad.** The components must actually be combined abroad (or intended to be so combined). #### 2. Governing Case Law _**(a) Microsoft Corp. v. AT&T Corp.**_, 550 U.S. 437 (2007) _Microsoft v. AT&T_ is the foundational authority on the scope and limits of § 271(f) in the software context. The Court held that software code, in the abstract, is not a "component" of a patented invention for purposes of § 271(f) when replicated abroad; only the physical copies actually exported from the United States qualify as "supplied" components under the statute. The Court read § 271(f) narrowly, consistent with the presumption against extraterritorial application of U.S. patent law. ### E. Import of Process-Made Products — § 271(g) Section 271(g) imposes liability for importing into, or selling or using within, the United States a product made outside the United States by a process patented in the United States. The statute contains express exceptions: liability does not attach where the product is materially changed by subsequent processes or becomes a trivial and nonessential component of another product. Section 271(g) was enacted to close the gap identified in _Amoco Chemical Co. v. Comstock Chemical Co._ and related cases, in which foreign manufacturers could exploit U.S. patented processes without U.S. patent liability. ### F. State Law State law has no role in patent indirect infringement. Patent law is exclusively federal under Article I, Section 8 of the Constitution and 35 U.S.C. § 1 et seq. No state indirect patent infringement doctrine exists. State claims alleging rights equivalent to those conferred by the patent statute are preempted. State law claims are limited to ancillary theories — contract, trade secret, unfair competition — that do not duplicate or conflict with patent rights. --- ## II. Copyright ### A. Governing Framework Copyright protection is exclusively federal under the Copyright Act of 1976, 17 U.S.C. § 101 et seq. Section 106 grants copyright owners six categories of exclusive rights; the Act expressly defines direct infringement but is silent as to secondary liability. The entirety of copyright indirect liability doctrine — contributory infringement, vicarious liability, and inducement — has been developed through federal judge-made law, grounded in common law tort principles of enterprise liability and _respondeat superior_. No copyright indirect liability theory is codified in the Copyright Act itself, with the limited exception of the anti-trafficking provision of the Digital Millennium Copyright Act, 17 U.S.C. § 1201. ### B. Contributory Infringement #### 1. Elements Copyright contributory infringement requires proof of two elements: 1. **Knowledge of infringing activity.** The defendant must know of specific infringing activity — not merely a general awareness that infringement occurs somewhere on a platform or service. The knowledge inquiry focuses on whether the defendant had actual knowledge of specific infringing files or acts, or was "willfully blind" to their existence. 2. **Material contribution.** The defendant must induce, cause, or materially contribute to the infringing conduct. This element encompasses conduct ranging from direct facilitation (providing the means for infringement) to indirect contribution (providing infrastructure, services, or space that enables infringement to occur). #### 2. Governing Case Law _**(a) Gershwin Publishing Corp. v. Columbia Artists Management, Inc.**_, 443 F.2d 1159 (2d Cir. 1971) _Gershwin_ is the locus classicus of copyright contributory liability. The court articulated the foundational standard: one who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another may be held liable as a contributory infringer. The defendant in _Gershwin_ organized and promoted concerts at which copyrighted musical works were performed without authorization; the Second Circuit held that the defendant's knowledge and material contribution — through its management and organizational role — established contributory liability. _**(b) Sony Corp. of America v. Universal City Studios, Inc.**_, 464 U.S. 417 (1984) _Sony_ is the Supreme Court's most significant statement on the limits of contributory copyright liability. Borrowing from patent law's § 271(c) "staple article" doctrine, the Court held that distributing a product capable of substantial noninfringing uses does not, by itself, give rise to contributory copyright liability, absent actual knowledge of specific infringement at a time when the defendant can act on that knowledge. The Betamax videocassette recorder was capable of substantial noninfringing uses — principally time-shifting of broadcast television, which the Court held constituted fair use — and Sony had no ongoing relationship with direct infringers sufficient to permit remedial action. _Sony_ establishes the safe harbor for technology providers whose products have commercially significant alternative lawful uses. **Limitation:** _Sony_'s safe harbor does not extend to defendants who actively promote or encourage infringement. The Court in _Grokster_ (discussed below) distinguished _Sony_ on precisely this basis: the question under _Sony_ is whether the technology has substantial noninfringing uses, not whether the defendant's business model depends on infringing uses. ### C. Vicarious Liability #### 1. Elements Copyright vicarious liability requires proof of two elements: 1. **Right and ability to supervise or control.** The defendant must have the legal right and practical ability to supervise or control the direct infringer's conduct. This element focuses on the defendant's actual capacity to police infringement — not merely on contractual authority or formal organizational hierarchy. 2. **Direct financial interest.** The defendant must derive a direct financial benefit from the infringement. The "draw" test asks whether the infringing activity acts as a draw for customers — attracting consumers whose spending benefits the defendant financially. Where infringement is a significant draw, the financial interest element is satisfied even if infringing content does not constitute a majority of available material. **Note on Knowledge:** Unlike contributory infringement, vicarious liability does not require knowledge of the infringement. The doctrine focuses on the structural relationship between the defendant and the direct infringer, not on the defendant's mental state. #### 2. Governing Case Law _**(a) Shapiro, Bernstein & Co. v. H.L. Green Co.**_, 316 F.2d 304 (2d Cir. 1963) _Shapiro_ is the foundational authority for copyright vicarious liability. The Second Circuit held that a department store was vicariously liable for a concessionaire's sale of infringing phonograph records. The store had the right to control the concessionaire's operations under the concession agreement and received a percentage of sales, including sales of infringing records. Both elements — right to control and financial benefit — were satisfied. The court applied a _respondeat superior_ analogy, holding the store liable even absent actual knowledge of the infringement. _**(b) Fonovisa, Inc. v. Cherry Auction, Inc.**_, 76 F.3d 259 (9th Cir. 1996) _Fonovisa_ extended _Shapiro_ to the swap meet context. The Ninth Circuit held that a flea market operator could be vicariously liable for vendors' sale of counterfeit recordings. The operator had the right to control vendors' activities — it could terminate vendor permits, establish rules of operation, and exclude vendors — and derived a direct financial benefit from the swap meet overall, including the attendance draw generated by vendors selling infringing merchandise at low prices. _Fonovisa_ is significant for its broad application of the financial benefit element: the court did not require that the defendant profit directly from the specific infringing sales, only that infringement enhanced the defendant's overall business. ### D. Inducement of Copyright Infringement #### 1. Elements The copyright inducement doctrine, derived from _Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd._, requires proof of two elements: 1. **Distribution of a device or service.** The defendant must distribute a product, service, or technology to users. 2. **Affirmative intent to promote infringement.** The defendant must distribute the product or service "with the object of promoting its use to infringe copyright," as demonstrated by clear expression of that intent or by other affirmative steps taken to foster infringement. Intent is a separate inquiry from the product's capability for noninfringing use. **Relationship to _Sony_:** The inducement theory permits imposition of liability even where a product has substantial noninfringing uses, provided the defendant's own conduct affirmatively promotes infringement. _Sony_'s product capability analysis does not immunize conduct that amounts to encouragement of infringement. #### 2. Governing Case Law _**(a) Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.**_, 545 U.S. 913 (2005) _Grokster_ is the Supreme Court's definitive statement on copyright inducement. The Court held unanimously that one who distributes a device or service with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for third-party infringement that results from promoting that goal. The Court shifted the analytical focus from the technology's capability (the _Sony_ question) to the defendant's intent and conduct: both Grokster and StreamCast had targeted former Napster users, had not developed filtering mechanisms, and had business models that depended on infringing use generating advertising revenue. These affirmative steps established the requisite intent. **Key Evidentiary Factors:** The Court identified three categories of evidence relevant to the inducement inquiry: (1) communications indicating purpose to promote infringement (internal emails, marketing materials); (2) failure to implement filtering or other mechanisms capable of reducing infringement; and (3) business models that depended substantially on infringing use for revenue. ### E. DMCA Anti-Circumvention Trafficking — 17 U.S.C. § 1201 Section 1201 of the Digital Millennium Copyright Act prohibits trafficking in technologies, products, services, or devices designed primarily to circumvent technological measures that effectively control access to, or protect the rights of, a copyright owner. This provision creates a category of liability distinct from traditional indirect copyright infringement: a defendant need not show underlying direct copyright infringement to establish a § 1201 trafficking violation. The statute requires proof that the technology in question is designed primarily for circumvention, marketed for circumvention, or has only limited commercially significant uses other than circumvention. ### F. State Law State law has no role in copyright indirect infringement. The Copyright Act expressly preempts state law claims that are equivalent to any of the exclusive rights within the general scope of copyright, as codified at 17 U.S.C. § 301. Secondary liability for copyright infringement is governed solely by federal law. State law retains concurrent jurisdiction over contractual licensing disputes, trade secret misappropriation, and right of publicity — each of which is addressed separately in this guide. --- ## III. Trademark ### A. Governing Framework Trademark protection exists under both federal law and state law. The federal framework derives from the Lanham Act, 15 U.S.C. § 1051 et seq. State law recognizes trademark rights through common law unfair competition doctrine and state registration statutes. Neither the Lanham Act nor typical state trademark statutes expressly codify contributory or vicarious infringement; the entirety of trademark indirect liability doctrine is judge-made, developed through federal and state case law applying common law tort principles to trademark infringement contexts. The analysis proceeds in four parts: (A) the statutory basis for Lanham Act claims; (B) contributory infringement; (C) vicarious liability; and (D) the parallel state law framework. ### B. Contributory Infringement — Federal Law #### 1. Elements — The _Inwood_ Test _Inwood Laboratories, Inc. v. Ives Laboratories, Inc._, 456 U.S. 844 (1982), established the governing federal standard for contributory trademark infringement. Under _Inwood_, secondary liability attaches where the defendant either: 1. **Intentionally induces** another party to infringe a trademark, or 2. **Continues to supply** a product or service to one it **knows or has reason to know** is engaging in trademark infringement. The two prongs are analytically independent: intentional inducement does not require ongoing supply, and continuing supply liability does not require proof that the defendant affirmatively encouraged infringement — knowledge of ongoing infringement and continued supply is sufficient. **The Knowledge Requirement:** For the second prong, knowledge may be actual or constructive. General awareness that counterfeiting occurs in a marketplace is insufficient; specific knowledge of particular infringing activity is required before a duty to act arises. The degree of control the defendant exercises over the instrumentality of infringement is relevant to both the knowledge inquiry and the scope of the defendant's duty to act. #### 2. Governing Case Law _**(a) Inwood Laboratories, Inc. v. Ives Laboratories, Inc.**_, 456 U.S. 844 (1982) _Inwood_ established the foundational standard for contributory trademark infringement. The case involved generic drug manufacturers who supplied lookalike pills to pharmacists who then substituted them for the branded drug. The Court held that a manufacturer or distributor is contributorily liable for trademark infringement if it intentionally induces another to infringe a trademark, or if it continues to supply a product to one whom it knows or has reason to know is engaging in trademark infringement. The _Inwood_ test has been extended beyond the manufacturer-distributor context to online platforms, landlords, flea market operators, and other intermediaries. _**(b) Hard Rock Café Licensing Corp. v. Concession Services, Inc.**_, 955 F.2d 1143 (7th Cir. 1992) _Hard Rock Café_ extended _Inwood_ to the concession and marketplace context, holding that operators of retail spaces can be contributorily liable for tenants' sale of counterfeit goods where the operator knew or had reason to know of the infringement and continued to provide commercial space. The Seventh Circuit applied an "ostrich" standard: willful ignorance of known infringement in an operator's marketplace does not insulate the operator from contributory liability. _**(c) Tiffany (NJ) Inc. v. eBay Inc.**_, 600 F.3d 93 (2d Cir. 2010) _Tiffany v. eBay_ is the leading authority on contributory trademark liability in the online platform context. The Second Circuit held that general knowledge — here, eBay's awareness that some percentage of "Tiffany" listings involved counterfeit goods — is insufficient to impose contributory liability. The standard requires **specific knowledge** of particular infringing listings and a failure to act on that knowledge. Where eBay had implemented a notice-and-takedown system and acted promptly when notified of specific infringing listings, it satisfied its obligations under _Inwood_ even though counterfeiting continued at some level on the platform. _Tiffany_ establishes that online platforms are not strictly liable for user infringement provided they implement reasonable anti-counterfeiting measures and respond appropriately to specific notice. _**(d) Coach, Inc. v. Goodfellow**_, 717 F.3d 498 (6th Cir. 2013) _Coach_ is the counterpoint to _Tiffany_ in the physical marketplace context. The Sixth Circuit held that a flea market operator was contributorily liable for vendors' sales of counterfeit Coach goods where the operator had specific knowledge — through repeated complaints and inspections — that vendors were selling counterfeits, yet continued to rent space to those vendors. The operator's failure to take meaningful remedial action despite specific knowledge of identified infringing vendors satisfied both the knowledge and continued supply elements of _Inwood_. ### C. Vicarious Liability — Federal Law #### 1. Elements Trademark vicarious liability, like copyright vicarious liability, requires proof of two elements derived from agency principles: 1. **Right and ability to control.** The defendant must have the legal right and practical ability to control the direct infringer's conduct — not merely a formal contractual right, but actual supervisory capacity. 2. **Direct financial interest.** The defendant must derive a direct financial benefit from the infringement, assessed under the same "draw" analysis applied in copyright vicarious liability cases. Trademark vicarious liability is commonly invoked in franchisor-franchisee relationships, employer-employee contexts, and online platform-vendor relationships where the platform exercises significant operational control. ### D. State Trademark Law #### 1. Framework State trademark law encompasses three sources of authority: 1. **Common law.** State common law trademark rights arise from priority of use in commerce and protect against consumer confusion in the geographic market of use. Common law secondary liability theories mirror _Inwood_ standards. 2. **State registration statutes.** Every state maintains a trademark registration system. State statutory claims for infringement generally do not expressly codify contributory or vicarious liability; indirect liability arises through common law tort doctrine. 3. **Deceptive trade practices statutes.** Many states have enacted consumer protection statutes that can encompass trademark-type claims; secondary liability under these statutes follows the same common law analysis. #### 2. Relationship to Federal Standards State courts hearing trademark indirect liability claims apply the same _Inwood_-derived principles as federal courts, treating the doctrine as common law in origin. In federal court proceedings involving state law trademark claims (whether pendent or on diversity jurisdiction), federal courts apply _Inwood_ standards to state law claims as well. Secondary liability principles are effectively uniform between the federal and state trademark regimes, though application may vary by jurisdiction and the contours of each state's specific statutory scheme. --- ## IV. Trade Secrets ### A. Governing Framework Trade secret protection exists under federal law and state law. The federal framework derives from the Defend Trade Secrets Act of 2016 (DTSA), 18 U.S.C. § 1836 et seq. State law derives from adoptions of the Uniform Trade Secrets Act (UTSA) and, in some jurisdictions, residual common law trade secret doctrine. Trade secret law differs structurally from the other four regimes examined here: indirect liability is not a separately labeled doctrine but is instead embedded in the statutory definition of "misappropriation" itself. Beyond the misappropriation definition, additional indirect liability theories arise from general state tort law — conspiracy, aiding and abetting, and joint tortfeasor liability — which are not uniform across jurisdictions. ### B. Federal Law — DTSA #### 1. Statutory Framework The DTSA creates a federal civil cause of action for trade secret misappropriation at 18 U.S.C. § 1836(b). The Act defines the key terms at 18 U.S.C. § 1839: - **Trade secret.** Information that derives independent economic value, actual or potential, from not being generally known or readily ascertainable by proper means to others who can obtain economic value from its disclosure or use, provided the owner takes reasonable measures to maintain its secrecy. 18 U.S.C. § 1839(3). - **Misappropriation.** The definition at 18 U.S.C. § 1839(5) encompasses two categories of actors that constitute what would elsewhere be labeled "indirect" liability: - **Improper acquisition:** Acquisition of a trade secret by one who knows or has reason to know the trade secret was acquired by improper means. - **Downstream disclosure or use:** Disclosure or use of a trade secret without consent by a person who knew or had reason to know, at the time of disclosure or use, that the trade secret was acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use, or derived from or through a person who owed such a duty, or derived from or through a person who acquired the trade secret by improper means. #### 2. Structural Observation The DTSA does not separately label "inducement," "contributory," or "vicarious" infringement. Indirect liability for downstream actors is addressed entirely through the knowledge-based definition of misappropriation: a downstream recipient who knows or has reason to know that information was acquired improperly is directly liable under the misappropriation definition, without need for a separate indirect liability theory. Additional derivative liability — for parties who assist misappropriation without themselves acquiring or using the trade secret — is addressed through general tort law (conspiracy, aiding and abetting), which is primarily state law. The civil seizure provisions of the DTSA, 18 U.S.C. § 1836(b)(2), expressly reference conspiracy to misappropriate trade secrets as a basis for extraordinary relief, confirming that conspiracy theory is available under the federal framework. ### C. State Law — UTSA and Tort Doctrine #### 1. UTSA Framework The UTSA has been adopted in substantially all U.S. states, with varying non-uniform amendments. The UTSA defines "trade secret" and "misappropriation" in terms that mirror the DTSA and similarly impose liability on downstream acquirers and disclosers with requisite knowledge. The UTSA explicitly recognizes that downstream recipients who acquire information knowing or with reason to know it was obtained by improper means are directly liable for misappropriation. "Improper means" under the UTSA includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means. The definition expressly excludes reverse engineering and independent derivation. #### 2. Conspiracy and Aiding-and-Abetting Liability Beyond the UTSA's misappropriation definition, state tort doctrine provides two additional pathways for indirect liability: - **Civil conspiracy.** A defendant who conspires with a direct misappropriator — agreeing to assist in the misappropriation and taking acts in furtherance of the agreement — may be jointly liable for the misappropriation. - **Aiding and abetting.** A defendant who substantially assists another's misappropriation of trade secrets may be liable as an aider and abettor. Joint tortfeasor principles apply. **Preemption Caveat:** UTSA adoptions in many states include a preemption provision displacing other civil claims "based upon" the same factual nucleus as the misappropriation claim. The breadth of this preemption varies significantly by state. In jurisdictions reading the preemption provision broadly, standalone conspiracy and aiding-and-abetting claims must be asserted within the UTSA framework rather than as separate tort theories. Practitioners must consult the relevant state's UTSA enactment and case law before pleading alternative theories. #### 3. Governing Case Law _**(a) InnoSys, Inc. v. Mercer**_, 2015 UT 80 (Utah Supreme Court) _InnoSys_ illustrates state court development of UTSA doctrine, addressing the standard for preliminary injunctive relief in trade secret cases. The Utah Supreme Court held that a prima facie showing of trade secret misappropriation gives rise to a rebuttable presumption of irreparable harm — a UTSA-based standard that affects the preliminary injunction analysis and can accelerate interim relief in trade secret disputes. _**(b) GeoMetWatch Corp. v. Behunin**_, No. 18-4019 (10th Cir.) (applying Utah law) _GeoMetWatch_ addressed conspiracy-type secondary liability theory in the trade secret context. The Tenth Circuit affirmed summary judgment for defendants where the plaintiff failed to establish sufficient, non-speculative evidence of causation between the alleged wrongful assistance and the plaintiff's damages. The decision emphasizes that conspiracy and aiding-and-abetting theories require proof of causation — it is insufficient to show that a defendant assisted in some manner; the plaintiff must establish that the specific assistance caused the alleged harm. --- ## V. Right of Publicity ### A. Governing Framework The right of publicity protects against unauthorized commercial exploitation of a person's name, likeness, voice, signature, or other identifiable aspects of identity. It is primarily state law — recognized through state statute and state common law in the majority of U.S. jurisdictions. No general federal right of publicity statute exists. Federal law intersects with right of publicity claims in three ways: First Amendment defenses, copyright preemption analysis, and Lanham Act false endorsement claims. Indirect liability — contributory and vicarious right of publicity — is not codified in any state statute; to the extent it exists, it arises from general state tort law applied by analogy. ### B. Federal Dimensions #### 1. Lanham Act — False Endorsement Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prohibits false designation of origin and false or misleading description or representation. Federal courts have recognized that unauthorized use of a person's identity in commerce in a manner likely to cause confusion as to sponsorship, affiliation, or endorsement constitutes a Lanham Act violation, providing a federal analogue to state right of publicity claims. This is a distinct federal cause of action; it does not constitute a "federal right of publicity" or a federal indirect right of publicity doctrine. #### 2. Section 230 — CDA Immunity and Its Limits Section 230 of the Communications Decency Act, 47 U.S.C. § 230, provides immunity to interactive computer service providers for content created by third-party users. In _Hepp v. Facebook, Inc._, 14 F.4th 204 (3d Cir. 2021), the Third Circuit held that Section 230 does not bar state statutory right of publicity claims where the platform uses a person's image in the platform's own advertising — as opposed to hosting user-generated content. _Hepp_ does not create a federal cause of action for indirect right of publicity infringement; it clarifies that state law claims survive federal immunity in certain circumstances. #### 3. Constitutional Dimensions — _Zacchini_ **Zacchini v. Scripps-Howard Broadcasting Co.**, 433 U.S. 562 (1977), is the Supreme Court's foundational authority on the right of publicity. The Court held that the First Amendment does not automatically immunize a broadcaster's televising of a performer's entire act without consent. _Zacchini_ confirmed the vitality of state right of publicity law and established that the right is grounded in state law, not federal statute. ### C. State Law — Statutory and Common Law Framework #### 1. Statutory Schemes State right of publicity statutes vary significantly in scope, duration, and assignability. The key variables across state schemes include: 1. **Covered attributes.** Most statutes protect name, voice, signature, photograph, and likeness; some states extend protection to other identifiable personal characteristics. 2. **Commercial purpose requirement.** Liability attaches to knowing, unauthorized use for advertising, selling, or soliciting purposes; noncommercial uses (including most journalistic and artistic uses) are typically exempt. 3. **Post-mortem rights.** Some states (California, Tennessee, Indiana) extend publicity rights to deceased personalities for varying periods; other states do not. 4. **Assignability.** Some states permit assignment of publicity rights; others restrict assignment. **California statutory framework:** Cal. Civ. Code § 3344 protects living persons from knowing, unauthorized use of their name, voice, signature, photograph, or likeness for advertising, selling, or soliciting. Remedies include the greater of $750 or actual damages, disgorgement of profits, punitive damages, and attorney's fees. Cal. Civ. Code § 3344.1 (the Celebrity Rights Act) extends protection to deceased personalities for 70 years post-death. #### 2. Indirect Liability — Vicarious and Contributory Theories State right of publicity statutes generally impose liability on the party who "uses" the protected attribute — i.e., the direct user. They do not expressly create contributory or vicarious right of publicity infringement. Indirect liability, where recognized, arises through general state tort doctrine: - **Vicarious liability** for an employer's unauthorized use of another's identity arises under _respondeat superior_ and general agency principles. Application varies by state. - **Contributory liability** for platforms, advertisers, or other intermediaries who enable a direct user's unauthorized exploitation is not well established as a distinct doctrine in state right of publicity law. Where such claims are asserted, they are pleaded under state common law theories of aiding and abetting or joint tortfeasor liability, which vary by jurisdiction. #### 3. Emerging Contexts — Platforms and Artificial Intelligence Indirect liability for right of publicity claims is most actively contested in three contemporary contexts: 1. **Platforms distributing unauthorized commercial uses.** Social media platforms and digital advertising networks that serve advertisements incorporating a person's identity without authorization may face direct liability under state statutes (where the platform's own conduct constitutes "use") or indirect liability (where the platform hosts third-party content incorporating the unauthorized use). 2. **Advertisers deploying identity through agents.** Where advertisers engage marketing agencies or production companies to create content using a person's likeness, vicarious liability on an agency theory is available where the advertiser had the right to control the content and derived a direct financial benefit. 3. **Artificial intelligence systems.** AI systems that generate synthetic output incorporating a person's recognizable voice, likeness, or other protected attributes raise novel direct and indirect liability questions. Where the AI model was trained on protected identity attributes, or where an operator uses an AI system to generate unauthorized commercial content, direct liability theories apply; where the AI system is deployed by third parties who use it to generate unauthorized content, indirect liability on a platform or technology provider theory is implicated. State right of publicity statutes have not yet been uniformly interpreted to address AI-generated content, and the doctrine in this area is actively developing. #### 4. Governing Case Law _**(a) Comedy III Productions, Inc. v. Gary Saderup, Inc.**_, 25 Cal. 4th 387 (2001) _Comedy III_ is the leading California authority on the balance between right of publicity and First Amendment interests. The California Supreme Court adopted the "transformative use" test: a work that merely reproduces a celebrity's likeness without significant creative transformation is not protected by the First Amendment and may constitute a right of publicity violation. A work that adds significant original expression is protected. _Comedy III_ is essential for understanding the scope of California's right of publicity and its interaction with constitutional defenses. _**(b) Hoffman v. L.A. Magazine, Inc.**_, 255 F.3d 1180 (9th Cir. 2001) (applying California law) _Hoffman_ addressed unauthorized use of a celebrity's likeness through digital image manipulation for commercial purposes. The Ninth Circuit held that the magazine's use of a digitally altered image of Dustin Hoffman — depicting him as if wearing contemporary designer clothing, in a fashion feature — constituted a commercial use subject to right of publicity liability, notwithstanding the magazine's editorial context. _**(c) Downing v. Abercrombie & Fitch**_, 265 F.3d 994 (9th Cir. 2001) _Downing_ held that state right of publicity claims are not preempted by federal copyright law where the gravamen of the claim is commercial exploitation of personal identity rather than reproduction of a copyrightable work. The decision is significant for confirming the independence of state right of publicity claims from federal copyright analysis. _**(d) Brown v. Ames**_, 201 F.3d 654 (5th Cir. 2000) _Brown_ confirmed that state right of publicity claims survive federal copyright preemption where the claims are grounded in personal identity — name, voice, likeness — rather than in any copyrightable element of the work at issue. The Fifth Circuit's analysis of the "extra element" test for preemption remains a standard reference in right of publicity preemption analysis. --- ## VI. Summary Table |IP Area|Indirect Theory|Source of Law|Federal Standard|State Law| |---|---|---|---|---| |**Patent**|Inducement|35 U.S.C. § 271(b)|Knowledge of infringement; specific intent; underlying direct infringement. _Global-Tech_ (2011); _Limelight_ (2014).|N/A — patent law exclusively federal| |**Patent**|Contributory|35 U.S.C. § 271(c)|Nonstaple component; material part; knowledge; no substantial noninfringing use. _Aro II_ (1964); _Dawson Chem._ (1980).|N/A — patent law exclusively federal| |**Patent**|Components for foreign assembly|35 U.S.C. § 271(f)|Supply from U.S.; intent to combine abroad; combination would infringe if domestic. _Microsoft v. AT&T_ (2007).|N/A — patent law exclusively federal| |**Patent**|Import of process-made products|35 U.S.C. § 271(g)|Import/use/sale of U.S.-process-manufactured products; subject to statutory exceptions.|N/A — patent law exclusively federal| |**Copyright**|Contributory|Judge-made|Knowledge of specific infringement; material contribution. _Gershwin_ (1971); _Sony_ (1984).|N/A — preempted under 17 U.S.C. § 301| |**Copyright**|Vicarious|Judge-made|Right and ability to control; direct financial interest; no knowledge required. _Shapiro_ (1963); _Fonovisa_ (1996).|N/A — preempted under 17 U.S.C. § 301| |**Copyright**|Inducement|Judge-made|Distribution with object of promoting infringement; affirmative steps to foster infringement. _Grokster_ (2005).|N/A — preempted under 17 U.S.C. § 301| |**Copyright**|DMCA anti-circumvention trafficking|17 U.S.C. § 1201|Trafficking in circumvention technology; no underlying direct infringement required.|N/A — preempted| |**Trademark**|Contributory|Judge-made — _Inwood_|Intentional inducement, or continuing supply with knowledge or reason to know of infringement. _Inwood_ (1982); _Tiffany v. eBay_ (2010); _Coach_ (2013); _Hard Rock Café_ (1992).|Common law mirrors _Inwood_; no express statutory codification| |**Trademark**|Vicarious|Judge-made — agency principles|Right and ability to control; direct financial interest.|Common law; same or similar standards in state courts| |**Trade Secrets**|Misappropriation (downstream)|DTSA § 1839(5); UTSA|Acquisition, use, or disclosure with knowledge or reason to know of improper origin or duty of secrecy. Civil seizure references conspiracy. Federal courts look to state UTSA for additional derivative theories.|UTSA — downstream users/disclosers with knowledge; UTSA preemption of related state tort claims varies by state; state tort (conspiracy, aiding-abetting) supplemental. _InnoSys_ (Utah 2015); _GeoMetWatch_ (10th Cir.).| |**Right of Publicity**|Vicarious / Contributory|State law (primary)|No general federal statute; Lanham Act § 1125(a) false endorsement; § 230 immunity limited by _Hepp_ (3d Cir. 2021); First Amendment _transformative use_ analysis; _Zacchini_ (1977).|State statutes (e.g., Cal. Civ. Code §§ 3344, 3344.1) + state common law; indirect liability through general tort (_respondeat superior_, aiding and abetting, joint tortfeasor); active development in platform and AI contexts. _Comedy III_ (Cal. 2001); _Hoffman_ (9th Cir. 2001); _Downing_ (9th Cir. 2001); _Brown v. Ames_ (5th Cir. 2000).| --- _This document is a practitioner reference and does not constitute legal advice. Consult the specific statutes, controlling case law, and applicable state enactments for each jurisdiction._ --- **By Paul Roberts** | Modern Patent Law