Trademark Liability For BitTorrent Download

In a first of its kind opinion, an order has issued enforcing Oregon state trademark law against a defendant who used BitTorrent to pirate a film.

According to the order, the defendant used BitTorrent to pirate the motion picture The Company You Keep. In addition to a conventional claim for copyright infringement, Voltage sought to enforce its rights in its trademark to enjoin against future infringement of not only the specific movie, but to protect against future infringement of the entire Voltage branded catalog.

As per the order:

Under ORS § 647.095, a person may not use a copy of a mark in connection with distribution of goods if it is likely to cause confusion or mistake or deceive as to the origin of the goods… plaintiffs have submitted evidence of the distribution of the motion picture involves a down sampled resolution reducing the quality of the product. Accordingly, a consumer could be confused into believing an inferior copy of the product is authorized by plaintiff Voltage Pictures because of the use of its trademark displayed with the inferior product.

Under ORS § 647.105(1) (a) the court may enjoin future use of a counterfeit or imitation of a registered mark. The court may also order all counterfeits or imitations destroyed. ORS § 647.105(1) (c) Accordingly, defendant is enjoined from further unauthorized use of plaintiff Voltage Pictures’ trademark and defendant shall destroy all unauthorized copies of plaintiffs’ motion pictures.

With this, the Federal Court has paved the way for BitTorrent piracy enforcement at the state level.

The case is: Voltage et al v. Smith, USDC OR 14-cv-1193-AA


Relevant Order: Voltage et al v. Smith 14-cv-1193-AA Dkt. 22



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