The Secret Life of Legal Doctrine: The Divergent Evolution of Secondary Liability in Trademark and Copyright Law

The recent explosion in intellectual property litigation has witnessed increasing recourse to secondary liability theories. The courts have responded favorably to plaintiffs by enunciating substantial reinterpretations of extant principles, thereby precipitating a veritable secondary liability revolution. Numerous commentators have bemoaned this trend, contending that judicial recasting of liability rules expands intellectual property rights beyond their intended scope, thereby resulting in an overprotective regime that stifles innovation. Yet one of the most striking aspects of the secondary liability revolution has been all but ignored in the literature: While the courts have broadened the scope of secondary liability principles with respect to copyright, no such move has occurred in the trademark arena. This divergence is unusual for several reasons. Secondary theories of liability in both trademark and copyright law share the same origins - the common law of tort and agency - and, in the past, were applied identically regardless of whether a trademark or a copyright was at issue. The case law offers no explanation for why this schism between secondary copyright and trademark has developed. Additionally, modern innovations cannot explain the divide: by facilitating the reproduction of marks and the global distribution of products, digital technology poses just as much of a threat to trademark holders as it does to copyright interests. This Article takes a critical first step in clearing the murky waters of secondary infringement by setting forth and analyzing the divergence between the secondary trademark and copyright liability regimes. We first disaggregate the various theories of secondary liability by analyzing the current law of contributory and vicarious trademark and copyright infringement. As we argue, despite common origins, trademark and copyright law have taken divergent paths over the years. Although many courts have recognized this divergence, they have not carefully parsed out the differences and have blindly accepted the differences without serious scrutiny or rationalization. We then attempt to explain the reasons behind the differences we identify in the two secondary liability doctrines. Specifically, we ask why the courts have created a two-tier system of secondary liability. In so doing, we examine what the divergent path of secondary trademark and copyright liability principles says about the law-making process, the evolution of legal doctrine, and the choices being made between two complementary systems of intellectual property protection. As our analysis reveals, it does not appear that fundamental differences in the nature or origin of trademark and copyright, rational balancing of economic risk-bearing considerations, or notions of romantic authorship can explain this bifurcation. Rather, a panic over copyright infringement in the digital age has beset the courts, causing the injudicious and often uncritical expansion of secondary liability principles in the copyright arena. Finally, we assess the ways in which the existing law of secondary trademark and copyright liability fails to lay a reasonable template for our legal regime's response to complex issues of technological change. The Article concludes by suggesting the direction of future legal literature to determine appropriate reforms to the secondary liability regime.