Contributory infringement is a form of secondary liability for direct infringement of a patent, copyright, or trademark. It is a means by which a person may be held liable for infringement even though they did not actually engage in infringing activities.
Liability for contributory infringement of a patent is defined by 35 U.S.C. § 271(c) as follows: "Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or an apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer."
The threshold requirement for a claim of contributory infringement is the existence of direct infringement. This is illustrated in the case law from Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). Additionally, there must be a showing that the alleged contributory infringer knew of the patent and that their actions would lead to infringement of the patent. See Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964). To prevent the patentee from extending their monopoly beyond the limits of the specific grant, the allegedly infringing article or commodity must be unsuited for any commercial non-infringing use. See Dawson Chemical Co. v. Rohm and Haas Co., 448 U.S. 176 (1980). The sale of an article adapted to both an infringing use and other lawful uses is not sufficient for a finding of contributory infringement.
The Copyright Act does not expressly impose liability for contributory infringement. According to the U.S. Supreme Court, the "absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity.
One who knowingly induces, causes or materially contributes to copyright infringement, by another but who has not committed or participated in the infringing acts themselves, may be held liable as a contributory infringer if they had knowledge, or reason to know, of the infringement. See, e.g., Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984).
Although liability for contributory infringement is not expressly imposed by the Lanham Act, the U.S. Supreme Court has recognized that "liability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another." See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).
If a manufacturer or distributor 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, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.
[Last updated in August of 2022 by the Wex Definitions Team]