Opinion for the court filed by Circuit Judge PROST. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge BRYSON.

PROST, Circuit Judge.

This case involves alleged infringement by Basic Holding (“Basic”) of a patent and alleged trademark held by Vita-Mix Corporation (“Vita-Mix”). The United States District Court for the Northern District of Ohio granted summary judgment of no direct infringement, no inducement of infringement, no contributory infringement, and no trademark infringement in favor of Basic. The court also granted summary *1321judgment of no invalidity based on anticipation, obviousness, or lack of enablement, no inequitable conduct, and no laches in favor of Vita-Mix. For the reasons set forth below, we vacate and remand the district court’s judgment of no direct infringement. We affirm the judgments of no inducement, no contributory infringement, and no trademark infringement. We vacate and remand the judgments of no invalidity for anticipation, obviousness, or lack of enablement. We affirm the judgments of no inequitable conduct and no laches.

I

A

The patent at issue in this appeal is directed to a method of preventing the formation of an air pocket around the moving blades of a consumer food blender. The method involves inserting a plunger into the body of the blender. The object of the plunger is to block the air channel that creates the air pocket when ingredients are blended. The sole claim of the asserted patent, U.S. Patent No. 5,302,021 (“the '021 patent”) recites:

1. A method of preventing the formation of an air pocket around rotating blades positioned in a pitcher of a blender, the air pocket being created from an air channel of a cross-sectional size defined by a member associated with the blades, comprising the steps of supplying a fluid into the pitcher, and positioning a plunger, having a cross-sectional size approximating the cross-sectional size of the member, adjacent to and above the rotating blades while maintaining the plunger free of contact with the pitcher thereby preventing the formation of an air pocket in the fluid around the rotating blades.

During prosecution, the applicant explained that the claimed method differed from the prior art due to its preventative capability. Prior art methods of combating air pockets involved stirring the contents of the blender to break up or dislodge the pockets after they have begun to form. Stirring is only a temporary solution, however, and air pockets begin to reform as soon as the stirring stops. The applicant stated that the claimed method prevents air pockets from ever forming by blocking the air channel that creates the air pockets, due to the plunger’s size and position within the blender.

Vita-Mix markets one embodiment of its blender and plunger device as the VITA-MIX® 5000, which is the product relevant to Vita-Mix’s trademark infringement claims. Other Vita-Mix blenders include the VITA-MIX® 3600, 4500, and 5200. According to the record before the district court, and the representations of Vita-Mix counsel during oral argument before this court, the numerical designations roughly correspond to the different wattages of the blenders. Vita-Mix markets its products as high-speed liquid food blenders, with emphasis on the plunger device.

Basic markets several accused blenders, including the Smoothie Elite, the Smoothie Plus™, and the Blender Solutions™ 5000. Basic also sells other products under the Blender Solutions™ name, including the Blender Solutions™ 4000 and 5500. Each of Basic’s accused blenders includes a “stir stick,” which resembles the plunger from Vita-Mix’s patented method. The lids of Basic’s blenders have an opening which can be covered with a flat cap, or can receive the stir stick. The proximal end of the stir stick forms a ball and handle. The ball is seated on the lid opening in a ball- and-socket configuration. This configuration allows a user to grip the handle and move the distal end of the stir stick around *1322within the pitcher of the blender. A rubber o-ring mounted on the distal end of the stir stick prevents the stir stick from scratching the inner sides of the pitcher during stirring. The sides of the pitcher also include a vertical ribbing that is interrupted at the points where the o-ring may contact the sides during stirring.

B

The '021 patent issued in 1994. Basic launched its line of blenders around March of 2001. In October of 2006, Vita-Mix filed suit against Back to Basies, Inc., now Basic Holdings, its parent company Focus Products, and two other subsidiaries of Focus Products; Focus Electrics and West Bend. Vita-Mix alleged infringement of the '021 patent by dozens of Basic’s blender models, and trademark infringement by the Blender SolutionsTM 5000 model. Basic responded by filing declaratory judgment counterclaims of noninfringement, invalidity, inequitable conduct, and several affirmative defenses.

The district court conducted a Markman hearing to construe several disputed claim terms. During the hearing, the court examined the prosecution history and determined that the patentee expressly disclaimed any stirring operation that breaks up or dislodges air pockets after they have begun to form, and limited the scope of the claimed invention to positioning the plunger such that it prevents air pockets from forming. The court construed claim 1 to exclude “stirring to disperse, dislodge, or breakup an air pocket after it has begun to form.” The court also construed the term “plunger” as a “device that can be inserted into a blender.” Basic does not dispute that its stir stick is a plunger as that term was construed by the district court.

At the close of discovery in the trial phase following the Markman hearing, both parties filed multiple dispositive motions. These included summary judgment motions and cross-motions on issues of end user infringement of the patented method, inducement of infringement for Basic’s product instructions, contributory infringement for Basic’s products, common law trademark infringement for Basic’s use of the designation “5000,” invalidity of the '021 patent for anticipation and obviousness in light of the cited prior art, lack of enablement due to the patented method’s alleged inability to prevent air pockets, unenforceability for inequitable conduct in making false statements to the patent examiner, and laches for delaying five and a half years before bringing suit.

On July 2, 2008, the district court entered a final order granting Basic’s summary judgment motions of no direct infringement, no inducement, no contributory infringement, and no trademark infringement. The court granted Vita-Mix’s summary judgment motions of no invalidity for anticipation, obviousness, or lack of enablement. The court also granted Vita-Mix’s summary judgment motions of no inequitable conduct and no laches. The district court also ruled on several motions not on appeal before this court, thereby resolving on summary judgment the entire dispute between the parties.

On July 16, 2008, Vita-Mix timely filed a notice of appeal on the issues of no infringement, no inducement of infringement, and no contributory infringement of the '021 patent, and no trademark infringement of Vita-Mix’s use of the designation “5000.” On August 1, 2008, Basie timely filed its notice of conditional cross-appeal on the issues of no invalidity for anticipation, obviousness, and lack of enablement, and unenforceability for inequitable conduct and laches. This court has appellate jurisdiction over the appeal and cross-appeal pursuant to 28 U.S.C. § 1295(a)(1).

*1323II

The appeal and cross-appeal challenge the district court’s resolution on summary judgment of various contested issues. Summary judgment is appropriate when no genuine of issues of material fact exist, and the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Fed.R.Civ.P. 56(c). The burden of showing the absence of a genuine issue of material fact rests with the moving party. Id. A fact is material if its resolution will affect the outcome of the case. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court must afford all reasonable inferences and construe the evidence in the light most favorable to the non-moving party. See id. at 255, 106 S.Ct. 2505. To defeat summary judgment, the evidence as properly construed must be sufficient for a reasonable jury to find for the nonmoving party; a mere scintilla of evidence will not suffice. Id. at 252, 106 S.Ct. 2505. We review a grant of summary judgment de novo, reapplying the standard that the district court employed. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301 (Fed.Cir.1999).

As discussed below, numerous issues are raised by Vita-Mix on appeal. These issues include direct and indirect patent infringement, and trademark infringement. We address each in turn.

A. Claim Construction

Although the district court’s claim construction was not actually appealed, Vita-Mix contends that the district court erred in finding no direct infringement based, in part, on applying to the accused device a claim construction inconsistent with its claim construction order. Direct infringement by Basic’s customers also serves as a basis for Vita-Mix’s claims of inducement and contributory infringement. We must therefore decide whether the district court applied an inconsistent claim construction, and if so, which claim construction should have been applied.

At the Markman hearing, the district court reviewed the prosecution history of the '021 patent and found that the patentee distinguished its invention over prior art stirring actions that break up or dislodge air pockets after they have formed. In light of this characterization, the court found that the preamble of the claim, “a method of preventing the formation of an air pocket around the rotating blades positioned in a pitcher of a blender” was necessary to give life, meaning and vitality to the body of the claim. See, e.g., MBO Labs., Inc. v. Becton Dickinson & Co., 474 F.3d 1323, 1330 (Fed.Cir.2007); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed.Cir.2002). The court found that the prosecution history statements distinguishing the function of the plunger constituted an express disclaimer of other functions. The court construed the preamble to include the limitation, “but not including a method of stirring to disperse, dislodge, or break-up an air pocket after it has begun to form.”

Vita-Mix’s '021 patent originally included apparatus claims to its blender and plunger device. These claims were rejected for anticipation and obviousness. The prior art disclosed blenders with structurally similar stirring wands that were used to break up or dislodge air pockets. The applicant attempted to distinguish the claimed device by emphasizing the novel function of preventing air pockets, as opposed to dealing with air pockets that have already formed. The examiner found that this functional limitation did not overcome the anticipation and obviousness rejections of the apparatus claims, where substantially similar structure was disclosed in the prior art. The method claim, however, did *1324overcome the rejection by the addition of novel functional limitations. The district court interpreted this exchange in the prosecution history to indicate that the examiner understood the invention’s preventative function to be a new use of an existing structure. The district court thus construed “preventing” to exclude methods that eliminate an air pocket at any time after it has begun to form.

In its cross-motion for summary judgment of no infringement, Basic argued that its accused line of smoothie makers did not infringe because the stir stick was used to stir the contents of the blender, and the patentee disclaimed stirring. In its response, Vita-Mix argued that it was irrelevant to the infringement analysis whether Basic’s stir stick was used to stir the ingredients in the blender. Vita-Mix’s infringement theory was that it was the positioning of the stir stick, and not the stirring action, that prevented air pockets from forming. Vita-Mix contended that since the express disclaimer was limited to stirring for a particular purpose — breaking up or dislodging air pockets after they begin to form — Basic could not avoid infringement by just any stirring operation.

In its order granting summary judgment of no infringement, the court held that Vita-Mix’s position was “untenable” and that the patentee disclaimed “all stirring.” Vita-Mix argues on appeal that the exclusion of all stirring was a new construction, and represents a change in the district court’s position. Vita-Mix argues that the original claim construction order correctly construed the term “preventing the formation of an air pocket” to exclude breaking up or dislodging already formed air pockets, and not to exclude stirring for other reasons. Vita-Mix points out that the district court even noted that the '021 patent specification disclosed that the plunger could also be used to stir the ingredients of the blender. Vita-Mix Corp. v. Basic Holdings, Inc., 514 f.sUPP.2D 990 (N.D.Ohio 2007) (Claim Construction Order at 7).

Claim construction is an issue of law. Markman v. Westview Instruments, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claims are properly construed without the objective of capturing or excluding the accused device. NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed.Cir.2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed.Cir.1985) (en bane). A patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope to which he would otherwise have an exclusive right by virtue of the claim language. See, e.g., Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006) (“Under the doctrine of prosecution disclaimer, a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.”).

We agree with Vita-Mix that the district court’s finding that the patentee disclaimed all stirring appears to be inconsistent with its earlier claim construction. We further agree with Vita-Mix that the earlier claim construction is correct for all the reasons articulated by the district court in its claim construction order. To find that the patentee disclaimed all stirring, regardless of whether and how the stirring acts on air pockets, ignores the nature of the distinction between a positioning that prevents air pockets from forming and an operation that breaks up air pockets after they have begun to form.

We will address below what, if any, impact the district court’s apparent change in claim construction had on its grant of summary judgment on the various issues raised.

*1325B. Direct Infringement

The district court found, and the parties do not challenge on appeal, that it is undisputed that the accused blenders can be used in either an infringing or non-infringing manner. Vita-Mix Corp. v. Basic Holdings, Inc., No. 1:06-cv-2622 (N.D.Ohio July 2, 2008) (Summary Judgment Order at 18). The district court then focused its attention on the question of whether or not any infringing use actually occurred.

Vita-Mix presented two experts to testify on the issue of infringement. The first expert, Dr. Swanger, testified that in his opinion the accused device necessarily infringes when the stir stick is inserted into the pitcher but not actively stirred. Basic presented its own expert to dispute these contentions. Vita-Mix used Dr. Swanger’s testimony to support its allegations of direct infringement against Basic, and its allegations of inducement and contributory infringement based on direct infringement by Basic’s customers.

Vita Mix’s allegations of direct infringement by Basic concern two specific incidents involving Basic employees Dale Oldroyd and Tom Daniels. Vita Mix alleges that Mr. Oldroyd infringed the asserted patent during his in-house testing of Basic’s blenders. Mr. Oldroyd testified that when he tested more than one blender at a time, he would allow some blenders to run with stir sticks inserted, but would not be able to stir all of the blenders simultaneously. Vita Mix contends that Mr. Oldroyd infringed the patent when he allowed some of his testing blenders to run without stirring the stir sticks.

Vita-Mix also alleges that Basic’s spokesman Mr. Daniels infringed the patent when he demonstrated Basic’s smoothie maker on a QVC television program. Footage of the demonstration shows a twenty-six second period where one of the accused blenders is allowed to run with the stir stick inserted, but where Mr. Daniels does not stir the stir stick. Vita-Mix contends that Mr. Daniels infringed the asserted patent during these twenty-six seconds.

The district court determined that Mr. Oldroyd could not be shown to infringe the patent, because Mr. Oldroyd did not testify as to how he positioned the stir stick. The court concluded that there was no evidence that he positioned the stir stick as claimed or that the stir sticks prevented air pockets from forming during Mr. Oldroyd’s testing. The court also concluded that Mr. Daniels could not be shown to infringe because there was no evidence in the record as to whether an air pocket actually formed during the twenty-six seconds of Mr. Daniel’s allegedly infringing use of the accused blender.

Vita-Mix’s second expert, Dr. Traylor, conducted a double-blind survey of blender users, and testified that during his survey he observed a certain percentage of users insert the stir stick into the pitcher but not stir it. Vita-Mix offered this testimony as evidence that some of Basic’s customers use the accused products in an infringing manner. The district court struck the Traylor report as irrelevant because Dr. Traylor only testified as to whether and how the survey participants used the stir stick. He did not observe whether or not an air pocket formed in any particular instance. Because he was not informed as to the patent at issue or the positions of the parties, he had no opinion as to whether any of the disputed claim limitations were performed during his survey. The district court concluded that his testimony did not establish whether any infringing act actually occurred and was therefore not relevant to the issue of direct infringement on the part of Basic’s customers. The court then found that the only remaining piece of evidence, Dr. Swanger’s testi*1326mony, was not enough on which to base an underlying direct infringement claim supporting secondary liability because it was “hypothetical” in nature.

Having disposed of the two allegations of direct infringement by Basic, and the allegation of direct infringement by Basic’s customers, the court concluded that there was no evidence of infringement, and granted Basic’s summary judgment motion for no infringement. The court’s conclusion of no direct infringement also served as a basis for granting summary judgment of no contributory infringement and no inducement, which we address in sections I.C. and I.D. below.

We find that the district court erred as a matter of law in disposing of the direct infringement claims by requiring direct evidence of infringement. The court discounted the accusations against Mr. 01-droyd and Mr. Daniels because there was no testimony or footage showing actual infringement in those cases. Such evidence, however, is not required. Direct infringement can be proven by circumstantial evidence. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed.Cir. 1986). Dr. Swanger’s testimony, accepted as true for summary judgment purposes, establishes that the accused blenders will necessarily infringe under certain circumstances. Mr. Oldroyd’s testimony and the footage to Mr. Daniels’s demonstration evidence the occurrence of those circumstances described by Dr. Swanger.

We also find that the district court erred as a matter of law in striking the testimony of Dr. Traylor and thereby disposing of Vita-Mix’s allegations of direct infringement by Basic’s customers. Dr. Traylor’s testimony need not establish the ultimate question of infringement to be relevant. See Daubert v. Merrell Dow Pharms., 509 U.S. 579, 591, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) (holding that evidence is relevant if it may assist the trier of fact in resolving a factual dispute); Moleculon, 793 F.2d at 1272. Dr. Traylor’s testimony is relevant to the question of whether users tend to insert the stir stick into the pitcher without stirring. See Fed. R.Evid. 402 (evidence is relevant if it has any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence). Dr. Swanger testified that if the stir stick was inserted into the pitcher without stirring while the blender was on, then the accused device would necessarily infringe. Dr. Traylor presented the results of a survey indicating that Dr. Swanger’s proffered conditions were present at least a small percentage of the time. It is not too great an analytical leap for the jury to consider both experts’ testimonies and conclude that infringement actually occurs in at least a small percentage of customer use. The limitations of Dr. Traylor’s survey may impact the persuasiveness of his testimony, but they do not render the results of the survey wholly inadmissible.

We find that the combination of Mr. Oldroyd’s testimony and Mr. Daniels’s testimony with Dr. Swanger’s testimony is circumstantial evidence that creates genuine issues of material fact regarding whether employees of Basic engaged in acts of direct infringement. We also find that the combination of Dr. Traylor’s and Dr. Swanger’s testimonies is circumstantial evidence that creates genuine issues of material fact regarding whether and when the accused device performs the infringing method. Accordingly, we vacate the grant of summary judgment of no infringement. We remand the question of direct infringement to the district court for a trial on the merits with instruction to apply the correct claim construction as discussed in Part LA. above.

*1327C. Contributory Infringement

In order to reach the question of contributory infringement, we will adopt arguendo the opinion of Vita-Mix’s expert Dr. Swanger and assume that customer use of the accused device directly infringes unless the stir stick is being used to break up air pockets or is in contact with the sides of the pitcher. See Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (ruling that a defendant can be held liable for contributory infringement if its customers directly infringe).

The patent laws provide that whoever sells an apparatus for use in practicing a patented method, knowing it 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.” 35 U.S.C. § 271(c) (emphases added). Contributory infringement imposes liability on one who embodies in a non-staple device the heart of a patented process and supplies the device to others to complete the process and appropriate the benefit of the patented invention. See Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1337 (Fed.Cir.2008).

District courts have found, and we agree, that non-infringing uses are substantial when they are not unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. Cf. Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.Cir.2001) (finding inducement where the accused device was capable of non-infringing modes of operation in unusual circumstances); D.O.C.C. Inc. v. Spintech Inc., 36 USPQ2d 1145, 1155, 1994 WL 872025 (S.D.N.Y.1994) (“Contributory infringement liability is not meant for situations where non-infringing uses are common as opposed to farfetched, illusory, impractical or merely experimental.”); Haworth Inc. v. Herman Miller Inc., 37 USPQ2d 1080, 1089, 1994 WL 875931 (W.D.Mich.1994) (“The focus is not the utility or ubiquity of the infringing configuration; the focus is the utility, presence, and efficiency of the non-infringing configurations.”).

Since the accused devices are undisputedly capable of non-infringing use, the question of contributory infringement turns on whether the non-infringing use is substantial. Vita-Mix did not argue below, and the district court did not directly address, the substantiality of the accused blenders’ non-infringing uses. Vita-Mix focused only on the frequency of infringing use, as documented in the survey evidence of Dr. Traylor, which does not speak to the substantiality of the non-infringing use in this case. On appeal, Vita-Mix argues that stirring the stir stick in a non-infringing manner or not inserting the stir stick are insubstantial uses, because those uses are based solely on “additional features” of the device. We held in Ricoh that an infringer does not evade liability by bundling an infringing device with separate and distinct components that are capable of noninfringing use. See Ricoh, 550 F.3d at 1337. Although Basic points out that Vita-Mix has waived this argument, we will consider it properly raised for purposes of deciding the question of contributory infringement.

Vita-Mix’s argument is correct with respect to the clear cap included with the accused blenders. This cap is an additional feature, and Basic cannot escape liability by simply including the cap with an otherwise infringing blender. See id. We will therefore confine our analysis only to use of the accused blender with the stir stick. Vita-Mix’s reliance on Ricoh is unavailing, however, with respect to the use of the stir stick to stir. The accused blenders’ ball *1328and socket joint, interrupted ribbing, and rubber o-ring are not merely additional, separable features of the device. Cf. id. at 1337-38 (finding that a microcontroller with no use but to infringe the patent did not escape infringement when it was imbedded in a larger product that had a non-infringing use unrelated to the microcontroller). The undisputed record shows that these features are defining features of the device, are directly related to the use of the stir stick, and are useful only if the stir stick is used to stir the contents of the pitcher and push the ingredients into the blades.

Accordingly, in light of the evidence of record with all reasonable inferences drawn in Vita-Mix’s favor, no reasonable jury could find that using the stir stick to stir — where the stirring operation breaks up air pockets or touches the side of the pitcher — is an insubstantial use of the accused device.1 The existence of substantial non-infringing uses for the accused blenders defeats Vita-Mix’s claim for contributory infringement as a matter of law. See 35 U.S.C. § 271(c). We therefore affirm the district court’s grant of summary judgment of no contributory infringement.

D. Inducement

Reaching the question of inducement also requires adopting arguendo the opinion of Vita-Mix’s expert Dr. Swanger and assuming that customer use of the accused device infringes unless it is being used to break up air pockets or is in contact with the sides of the pitcher. See C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 673 (Fed.Cir. 1990) (ruling that a defendant can be held liable for inducement of infringement if its customers directly infringe).

Patent law provides that whoever actively induces infringement of a patent shall be liable as an infringer. 35 U.S.C. § 271(b). Inducement requires a showing that the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed a specific intent to encourage another’s infringement of the patent. DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed.Cir.2006) (en banc in relevant part). Intent can be shown by circumstantial evidence, but the mere knowledge of possible infringement will not suffice. Id. at 1305-06.

Vita-Mix establishes that Basic knew of the patent, and argues that Basic knew of its products’ potentially infringing use, but goes no further. Indeed, the record is devoid of actual evidence establishing specific intent to encourage customers to infringe the '021 patent. Vita-Mix instead points to the product instructions and the design of the device to support an inference of intent.

With respect to the product instructions, Vita-Mix argues that the directions for operating Basic’s blender teach an infringing use of the product, giving rise to an inference of intent to induce infringement. There are two sets of instructions relevant to this point. The original product instructions teach stirring in a counterclockwise motion while the blades are moving. After Vita-Mix articulated its infringement *1329contentions, but before the filing of suit, Basic amended its instructions to teach stirring in a counterclockwise motion while scraping the sides of the pitcher with the stir stick while the blades are moving. The original product instructions do not evidence a specific intent to encourage infringement, since they teach a stirring action which Basic could have reasonably believed was non-infringing. The amended product instructions teach an undisputedly non-infringing use, evidencing intent to discourage infringement. Thus, Basic’s product instructions provide no basis on which Vita-Mix can rely to infer specific intent to encourage infringement.2

Vita-Mix also points to the device itself to support an inference of intent, arguing that the “default” vertical position of the stir stick leads to infringing use. This argument is insufficient as a matter of law. “Especially where a product has substantial non-infringing uses, intent to induce infringement cannot be inferred even when the defendant has actual knowledge that some users of its product may be infringing the patent.” Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1365 (Fed.Cir.2003). As discussed in Part I.C. above, Basic’s blenders are capable of substantial non-infringing use.

Although the “default” vertical position of the stir stick may lead to infringing use under certain conditions, there is no evidence that Basic intends users to maintain the stir stick in this position. It is undisputedly possible to use the accused device as directed without ever practicing the claimed method. Additionally, the product design naturally encourages non-infringing use. The ball and socket joint facilitates stirring with a full range of motion, the interrupted ribbing encourages continuous contact between the stir stick and the sides of the pitcher, and the rubber o-ring encourages contact between the stir stick and the sides of the pitcher. Finally, pictures of the device in the product instructions, packaging, catalogues, and Basic’s own patent show the stir stick touching the sides of the pitcher.

In sum, the record is devoid of direct or circumstantial evidence that Basic intends to encourage infringement by its customers, and replete with evidence to the contrary. We therefore affirm the district court’s summary judgment of no inducement.

E. Trademark Infringement

Vita-Mix has a federal trademark registration for the mark VITA-MIX®. Vita-Mix has not registered the mark “Vita-Mix 5000,” or the number “5000” itself. Although it has never marked the number “5000tm” in commerce, Vita-Mix claims common law trademark protection for the number 5000. We review non-patent claims, such as claims arising under the Lanham Act, in accordance with the law of the regional circuit within which the case arose. See Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed.Cir.1999). Sixth Circuit law governs our review here.

In the Sixth Circuit, a registrant must meet two criteria to succeed in a trademark infringement case: (1) the plaintiff must possess a protectable mark, *1330 Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 512-13 (6th Cir. 2007), and (2) the plaintiff must show a likelihood of confusion, Tumblebus Inc. v. Cranmer, 399 F.3d 754, 763 (6th Cir.2005). Where a mark is not registered, a claimant must show that it has used the mark at issue as a trademark, and that the defendant has used the accused mark as a trademark. Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998).

An unregistered mark is entitled to protection as a trademark if it is inherently distinctive or has acquired secondary meaning. Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir.1991). A mark is inherently distinctive if its intrinsic nature serves to identify a particular source. Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir.2002). A mark is not inherently distinctive if it serves as a grade designation rather than an indication of the source of the goods. Cf. Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1576 (Fed.Cir.1993); see also Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 392 (2d Cir.1995); J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1469 (10th Cir.1985); In re Armco Steel Corp., 127 USPQ 135, 136 (T.T.A.B.1960).

Vita-Mix argues that that the Sixth Circuit test for trademark infringement is not a two part test. Vita-Mix’s brief asserts that it need not first prove that it holds a protectable trademark in the number 5000 if it can instead establish a likelihood of confusion. Vita-Mix’s interpretation of Sixth Circuit law is incorrect. The controlling case, Rock & Roll Hall of Fame, states:

a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark. In other words, the plaintiff must establish a likelihood that the defendant’s designation will be confused with the plaintiffs trademark, such that consumers are mistakenly led to believe that the defendant’s goods are produced or sponsored by the plaintiff.

134 F.3d at 753-54 (citations omitted). Vita-Mix may be interpreting the phrase “in other words” as signaling that the likelihood of confusion test is a proxy for proving trademark use. More detailed review of the decision in Rock & Roll Hall of Fame reveals that this interpretation is incorrect. The sentence beginning with the phrase “in other words” merely clarifies that the proper foci of the likelihood of confusion test are the two competing trademarks as they are used in commerce, as opposed to the products marked or ancillary designations not used as trademarks.

Vita-Mix does not use the number 5000 in commerce other than in connection with the designation “Vita-Mix® 5000.” Vita-Mix concedes that the number 5000 functions only to distinguish the blender from previous Vita-Mix products on the market, namely the Vita-Mix® 3600 and Vita-Mix® 4500, and to indicate that the 5000 was a higher grade appliance. There is no evidence in the record that the number 5000 has any secondary meaning apart from its appearance in conjunction with the trademark Vita-Mix® within the designation “Vita-Mix® 5000.” The district court correctly concluded that the trademark Vita-Mix® identifies the source of the goods, and the designation 5000 indicates the style or grade of product. No reasonable jury could find from the evidence of record that the number 5000 is inherently distinctive or has secondary meaning and is entitled to trademark protection.

*1331Furthermore, there is no evidence of record that Basic uses the designation 5000 as a trademark in its sale of the Blender SolutionsTM 5000 product. Basic’s website refers to 5000 as a model number, and Basic’s product packaging does not use the number 5000 in the product name. “Blender Solutions” refers to a line of products that also includes the 4000 and the 5500. Basic contends that these numbers corresponded roughly to the suggested retail prices of the products at one time, i.e. the 5000 was suggested to sell for about $50.00. Similar to Vita-Mix’s numbering scheme corresponding to the wattages of the blenders, Basic’s numbering scheme serves as a grade designation rather than an indication of the source of the goods.

Rather than argue that Basic uses the number 5000 as a trademark, Vita-Mix maintains that it need not show anything other than likelihood of confusion. Vita-Mix is incorrect as a matter of law. No reasonable jury could find that either Vita-Mix’s or Basic’s use of the number 5000 is a protectable trademark use. Without a protected trademark use, Vita-Mix cannot make a prima facie case of trademark infringement as a matter of law. The district court correctly granted summary judgment of no trademark infringement.

Ill

Basic filed a conditional cross-appeal challenging the district court’s summary judgments of no invalidity, no inequitable conduct, and no laches. Because the issue of direct infringement was not properly resolved on summary judgment for the reasons stated in Part II.B. above and is remanded to the district court, we reach the conditional cross-appeal. We address each issue raised in turn.

A. Invalidity

Basic filed a motion for summary judgment of invalidity based on anticipation and obviousness. Basic’s motion cited two of Vita-Mix’s older blender models and two prior art patents, one of which was cited by the examiner and the other of which was cited within the first reference. Vita-Mix filed a competing motion for summary judgment of no invalidity based on anticipation, obviousness, or lack of enablement. The district court granted summary judgment of no invalidity for anticipation, obviousness, or lack of enablement in favor of Vita-Mix.

As a preliminary matter, the court made a point of explaining that it was reviewing the validity issues under “its own” claim construction and not Vita-Mix’s proffered claim construction. While it is not entirely clear what claim construction the court refers to as its own in this explanation, it appears that the court is applying a construction that excludes all stirring. As explained in Part I.A. above, we find that a construction that excludes all stirring is inconsistent with the district court’s original claim construction order. We find that the court’s original claim construction order is correct, and that the validity issues, remanded for the reason explained below, should be reconsidered under the proper claim construction.

In reviewing the merits of the cross motions concerning invalidity, the court determined that Basic did not properly cite any expert testimony in its summary judgment motions based on anticipation and obviousness. The court found that without expert testimony, Basic’s motion for summary judgment provided only attorney argument and no evidence of invalidity. For this reason the court granted summary judgment of no invalidity for anticipation, obviousness, or lack of enablement.

*1332While we will not comment on whether the district court’s assessment of the need for expert testimony provides a reason to deny Basic’s motion for summary judgment of invalidity, we find it provides no reason to grant Vitar-Mix’s summary judgment motion of no invalidity. While we are sympathetic to the district court’s plight in dealing with the volume of briefing submitted in connection with the parties’ summary judgment motions in this case, a district court cannot rely on its assessment of one party’s motion for summary judgment of invalidity when evaluating the other party’s motion for summary judgment of no invalidity. It appears that the district court did so here.

Unlike Basic’s motion for summary judgment of invalidity, Basic’s opposition to Vita-Mix’s motion for summary judgment of no invalidity contains numerous citations to expert testimony. In concluding that Basic cited no evidence relevant to the question of invalidity, the district court appears to have overlooked Basic’s opposition memorandum. We find that Basic has raised a genuine issue of material fact with respect to the anticipation, obviousness, and lack of enablement sufficient to defeat Vita-Mix’s motion for summary judgment of no invalidity. We therefore remand the validity issues to the district court for a decision on the merits with instructions to apply the proper claim construction.

B. Inequitable Conduct

Basic asserted a counterclaim and affirmative defense that the '021 patent is unenforceable due to inequitable conduct. To prevail on summary judgment on a claim for inequitable conduct, Basic would have to present evidence of affirmative misrepresentations of material fact, failure to disclose material information, or submission of false material information, coupled with evidence of an intent to deceive. See Dayco Prods. Inc. v. Total Containment, Inc., 329 F.3d 1358, 1362 (Fed.Cir.2003). Both intent and materiality must ultimately be proven by clear and convincing evidence. Id.

Basic’s inequitable conduct charge on appeal is that an inventor of the '021 patent made a false statement in a declaration when he distinguished low-powered prior art blenders as incapable of forming air pockets around the blades. In response to a prior art rejection, inventor John Barnard submitted a declaration to the patent office that the cited prior art reference was irrelevant because it disclosed a low-powered blender. Mr. Barnard stated that such blenders did not usually form air pockets around the blades, and thus do not bear on the claimed solution to the air pocket problem in high-power blenders. Basic offers an additional prior art reference as evidence that this statement is false. In his deposition, Mr. Barnard explained that, regardless of whether the statement is actually false, he believed the statement to be true at the time that he made it. With no other evidence in the record, the district court correctly found that Basic made no genuine showing of deceptive intent.

C. Laches

Vita-Mix filed for summary judgment on Basic’s affirmative defenses, including patent misuse, waiver, laches, estoppel, and failure to mitigate. The district court granted wholesale Vita-Mix’s motion on all of the defenses listed above, “for the reasons stated in Vita-Mix’s motion.” Of these rulings, Basic appeals the court’s judgment only with respect to its laches defense.

Application of the defense of laches is an equitable determination that is reviewed for abuse of discretion, even on summary judgment. Aukerman, 960 F.2d *1333at 1039. To prove an affirmative defense of laches, a defendant must show that (1) the plaintiff delayed for an unreasonable and inexcusable amount of time in filing suit, and (2) that the defendant was prejudiced as a result of the delay. Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 773 (Fed.Cir.1995). A rebuttable presumption of laches arises when a patentee has delayed more than six years after actual or constructive knowledge of the defendant’s alleged infringing activity. A.C. Aukerman, Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed.Cir. 1992); 35 U.S.C. § 286.

With respect to the first laches inquiry, Basic argues that Vita-Mix’s CEO was aware of Basic’s accused blenders “when they first came out,” and that Vita-Mix brought suit over five years after learning of the accused infringement. Such a delay does not give rise to a presumption of laches, although “[t]he length of time which may be deemed unreasonable has no fixed boundaries but rather depends on the circumstances.” Aukerman, 960 F.2d at 1032.

The circumstances of the present case do not support a finding of laches. Vita-Mix’s motion for summary judgment asserted that Basic presented no evidence demonstrating prejudice. In opposition, Basic asserts that it suffered economic prejudice from the delay because it would have changed its product instructions to avoid infringement during the entire period of delay. To support this assertion, Basic notes that it did in fact promptly change its instructions when it learned of the potential infringement. However, while a change to Basic’s product instructions may impact its liability for indirect infringement, no change to those instructions would affect Basic’s liability for direct infringement. In light of our rulings on inducement and contributory infringement, there can be no prejudice arising from Basic’s lost opportunity to change those product instructions. We therefore affirm the district court’s grant of summary judgment of no laches.

CONCLUSION

For the reasons stated above the district court’s judgment of no direct infringement is vacated and remanded for a decision on the merits under the proper claim construction. The judgments of no inducement, no contributory infringement, and no trademark infringement are affirmed. The findings of no invalidity for anticipation, obviousness, or lack of enablement are vacated and remanded for a decision on the merits under a proper claim construction. The judgment of no inequitable conduct is affirmed. The judgment of no laches is affirmed.

COSTS

Each party shall bear its own costs.

AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED

BRYSON, Circuit Judge,

concurring in part and dissenting in part.

I agree with the majority’s analysis and disposition of most of the issues in this case; my disagreement is limited to the portion of the judgment that upholds the district court’s summary judgment rulings on inducement of infringement and contributory infringement. In my view, Vita-Mix introduced enough evidence on those issues to overcome Basic’s summary judgment motion.

1. As to inducement, the majority concludes that although there was evidence of direct infringement, Vita-Mix introduced no evidence that Basic encouraged or instructed users of its accused devices to operate them in an infringing manner. My review of the evidence persuades me *1334that Vita-Mix has pointed to disputed questions of material fact with respect to induced infringement.

In the portion of its opinion dealing with direct infringement, the majority agrees that Vita-Mix’s evidence is sufficient to create a factual issue as to whether, when the stir stick of the accused device is in the “default” position during normal operation — i.e., when it is not being used to stir the contents of the blender — the device infringes. Under those circumstances, a finder of fact could find inducement of infringement based on instructions that direct the user to operate the device in a normal fashion. That is because the fact-finder could conclude that operating the device in the normal fashion entails operating it so that the stir stick is in the default position, even if for a short period at the outset or for intermittent periods during the use of the blender.

In his expert report, Dr. Swanger stated that in normal operation, the accused devices will practice the claimed method. He explained that during operation, “when the stir stick is inserted into the container but not held by a user, the natural, default position for the stir stick is at or near the center of the container without touching the sides.” With the stir stick in that default position during operation, he explained, the accused products would infringe. Dr. Swanger then analyzed Basic’s instructions for using the blenders and found that they did not direct users to avoid using the device in the default mode.

The evidence of Basic’s videotaped demonstration of the operation of the accused device, which was shown on television, was to the same effect. The demonstration showed the normal operation of the device, depicting periods of time in which the operator did not use the stir stick or even touch it. During those periods, the stir stick appeared to remain in the default position near the center of the container, not touching the sides. A fact-finder could regard that advertising demonstration as a form of instruction on the use of the device that entailed using it at least in part in an infringing manner.

The majority relies on Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348 (Fed. Cir.2003), for the proposition that an intent to induce infringement cannot be inferred from a defendant’s knowledge that some users of the product may infringe. But this case is quite different from Warner-Lambert. There, the court found no inducement because there were many uses for the accused product and because “fewer than 1 in 46 sales of that product [were] for infringing uses.” Under those circumstances, the court concluded that “we are not in a position to infer or not infer intent on the part of Apotex without any direct evidence.” Id. at 1365. In contrast, if we accept Vita-Mix’s evidence as true, in this case nearly all users will infringe as soon as they turn on the accused blender.

The difference can be illustrated by a simple example: Suppose a manufacturer sells a device that can be made to infringe by removing a set of screws that are in place when the device is sold. In such a case, the manufacturer would not ordinarily be liable for inducing infringement unless it instructed users to remove the screws or otherwise encouraged them to do so. But if the manufacturer sold the device with the screws removed, so that the device would infringe if used in the ordinary manner in the “as-sold” configuration, the fact that the manufacturer provided screws that would enable a user to convert the device into a non-infringing form would not shield the manufacturer from liability for vicarious infringement. In such a case, the manufacturer could be found liable for inducement even if the instruction manual taught users how to insert the screws and pointed out the ad*1335vantages of using the device in that altered, noninfringing form.

Finally, at least some of Basic’s instructions arguably give specific directions to use the accused device in the default manner for some purposes. To begin with, one of the instruction manuals in the record directs the user to turn on the device with the stir stick in place, to start the blending process, and to turn off the device when the blending is complete. The manual contains no intervening reference to manipulating the stir stick. Elsewhere, the instructions for making “smoothies” direct a sequence of steps, including the use of the “pulse” feature and the low and high power settings sequentially until the contents of the blender are smooth. The instructions add, “Turn the stir stick counter-clockwise for best mixing results.” Even assuming that “turning” the stir stick is interpreted to mean rotating it around the inner edges of the container, the suggested departure from the default operation could be viewed as only an optional step, or one to be used from time to time during the blending process, rather than throughout the process from beginning to end. The “instruction” evidence thus seems to me sufficient to overcome summary judgment on the issue of whether the instructions evidence the intent to encourage infringement.

2. As applied to this case, a similar analysis governs the resolution of the issue of contributory infringement and the question, common to vicarious infringement generally, whether the accused device can be used for substantial noninfringing purposes. As the majority notes, this court has held that a party will not be held liable for infringement if that party provides a device that can be used for infringement but can also be used for substantial noninfringing purposes. In this case, the evidence proffered by Vita-Mix, summarized above, would allow a fact-finder to conclude that when the accused device is used with the stir stick in place, it will frequently be used in an infringing manner and that it would be most unusual for an ordinary purchaser of the blender to use it in a manner that avoided infringement altogether.

Basic makes two arguments as to why there is no contributory infringement in this case, neither of which is persuasive. First, it points out that the accused blenders are sold not only with a stir stick, but also with a “lid cap” that can be used in place of the stir stick, and that when the blenders are used with the lid cap in place of the stir stick, they do not infringe at all. That, according to Basic, is a “substantial non-infringing use” that is sufficient to avoid liability for contributory infringement. That argument is entirely unconvincing, as the majority correctly points out.

Basic’s second argument is based on the testimony of Vita-Mix’s president, who answered “yes” when asked if “it’s possible to use a Basics blender in a non-infringing manner.” That answer, however, does not provide the “Aha!” moment that Basic seems to believe it does. In the context of this case, the question was the wrong one: What is important is not whether it is possible to use the Basic blender in a noninfringing manner, but whether it is possible (or likely) that a user could (or likely would) operate it solely in a noninfringing manner. There is no dispute that the stir stick can be used in a noninfringing manner, such as during the time the user is rotating the stir stick within the blender container, keeping the stir stick in contact with the container’s inner walls. But that does not overcome the evidence offered by Vita-Mix that customers who use the Basic device with the stir stick inserted will infringe in a large percentage of instances and that the device has no *1336substantial use that does not entail at least some period of infringement.

In this regard, I disagree with the majority’s comment that “the frequency of infringing use ... does not speak to the substantiality of the non-infringing use.” Vita-Mix’s evidence suggests that on the facts of this case frequency is closely related to substantiality, and I agree. That is because, based on Vita-Mix’s evidence, a user of the accused devices would have to take exceptional measures to avoid infringement; i.e., the user would have to rotate the stir stick continuously during the blending process without letting it rest at any point in the default position. A finder of fact could conclude that, as a practical matter, the continuous rotation process would be an infrequent mode of noninfringing use, and for that reason, an insubstantial one.

I would likewise discount the elements of the structure and packaging of the accused devices, factors on which the majority relies. The majority is correct that those features suggest using the stir stick to stir in a manner that results in contact with the sides of the container. But the features to which the majority points do not support the inference that the stirring will be continuous and that the stir stick therefore will never be left in the default position during operation. As to that issue, Vita-Mix’s evidence is to the contrary.

In sum, without suggesting how any of the above factual issues might ultimately be decided, I would hold that the evidence before the trial court is sufficient to overcome Basic’s motion for summary judgment on both inducement and contributory infringement.

CUDAHY, Circuit Judge.

The Hard Rock Cafe Licensing Corporation (Hard Rock) owns trademarks on several clothing items, including t-shirts and sweatshirts and apparently attempts to exploit its trademark monopoly to the full. In the summer of 1989, Hard Rock sent out specially trained private investigators to look for counterfeit Hard Rock Cafe merchandise. The investigators found Iqbal Parvez selling counterfeit Hard Rock t-shirts from stands in the Tri-State Swap-O-Rama and the Melrose Park Swap-O-Rama, flea markets owned and operated by Concession Services Incorporated (CSI). The investigators also discovered that Harry’s Sweat Shop (Harry’s) was selling similar items. Hard Rock brought suit against Parvez, CSI, Harry’s and others not relevant to this appeal under the Lanham Trademark Act, 15 U.S.C. § 1051 et seq. (1988). Most of the defendants settled, including Parvez, who paid Hard Rock some $30,000. CSI and * Harry’s went to trial.

After a bench trial, the district court found that both remaining defendants violated the Act and • entered permanent injunctions forbidding Harry’s to sell merchandise bearing Hard Rock’s trademarks (whether counterfeit or genuine) and forbidding CSI to permit the sale of such merchandise at its flea markets. The court also awarded treble damages against Harry’s. . The court did not, however, award attorney’s fees against either defendant.

All of the parties who participated in the trial appealed. CSI believes that it is not liable and that, in any event, entry of the injunction was inappropriate. Hard Rock wants attorney’s fees from both defendants. Harry’s appealed from the finding of liability and the entry of the injunction as well, but filed its appeal one day too *1146late; its appeal has therefore been dismissed. Finding errors of law and a fatal ambiguity in the findings of fact, we vacate the judgment against CSI, vacate the denial of attorney’s fees and remand for further proceedings.

I.

Most of the facts are undisputed. The following account draws from the district court’s findings, the record on appeal and the submissions of the parties. Where there are disputes of fact we will note them and defer to the district court’s resolution unless clearly erroneous. Anderson v. Bessemer City, 470 U.S. 564, 573, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985).

A. The Parties and Their Practices

1. Concession Services, Inc.

In the summer of 1989, CSI owned and operated three “Swap-O-Rama” flea markets in the Chicago area: the Tri-State, in Alsip, Illinois; the Melrose Park, in Mel-rose Park, Illinois; and the Brighton Park, in Chicago itself. Although Parvez sold counterfeits at the Tri-State Swap-O-Rama and at Melrose Park, testimony at trial concentrated on the operations at the Tri-State. We too will refer mainly to the Tri-State Swap-O-Rama, although CSI’s operations are apparently similar at all three flea markets.

CSI generates revenue from a flea market in four ways. First, it rents space to vendors for flat fees that vary by the day of the week and the location of the space. Second, CSI charges a reservation and storage fee to those vendors who want to reserve the same space on a month-to-month basis. Third, CSI charges shoppers a nominal 75$ admission charge. Fourth, CSI runs concession stands inside the market. To promote its business, CSI advertises the markets, announcing “BARGAINS” to be had, but does not advertise the presence of any individual vendors or any particular goods.

Supervision of the flea markets is minimal. CSI posts a sign at the Tri-State prohibiting vendors from selling “illegal goods.” It also has “Rules For Sellers” which prohibit the sale of food or beverages,1 alcohol, weapons, fireworks, live animals, drugs and drug paraphernalia and subversive or un-American literature. Other than these limitations, vendors can, and do, sell almost any conceivable item. Two off-duty police officers provide security and crowd control (an arrangement that does not apply to the other markets). These officers also have some duty to ensure that the vendors obey the Sellers' Rules. The manager of the Tri-State, Albert Barelli, walks around the flea market about five times a day, looking for problems and violations of the rules. No one looks over the vendors’ wares before they enter the market and set up their stalls, and any examination after that is cursory. Moreover, Barelli does not keep records of the names and addresses of the vendors. The only penalty for violating the Seller’s Rules is expulsion from the market.

James Pierski, the vice president in charge of CSI’s flea markets, testified that CSI has a policy of cooperating with any trademark owner that notifies CSI of possible infringing activity. But there is no evidence that this policy has ever been carried into effect. Before this case, there have been a few seizures of counterfeit goods at Swap-O-Rama flea markets. In no case was CSI informed of a pending seizure, involved in a seizure or notified as to the ultimate disposition of the seized goods. On the other hand, CSI did not investigate any of the seizures, though it knew they had occurred.

2. Harry’s Sweat Shop

Harry’s is a small store in Darien, Illinois, owned and operated by Harry Spate-ro. The store sells athletic shoes, t-shirts, jackets with the names of professional sports teams and the like. Spatero testi*1147fied that the store contains over 20,000 different items. When buying t-shirts, Harry’s is somewhat indiscriminate. The store buys seconds, overruns and closeouts from a variety of sources. Harry’s buys most of its t-shirts from Supply Brokers of Pennsylvania, a firm which specializes in buying up stocks from stores going out of business. Spatero testified that Supply Brokers sends him largely unidentified boxes of shirts which he may choose to return after looking them over. But Spatero testified that Harry’s also bought shirts from people who came around in unmarked vans, offering shirts at a discount. The store kept no records of the sources of its inventory.

3. Hard Rock Licensing Corp.

Hard Rock owns the rights to a variety of Hard Rock trademarks. The corporation grants licenses to use its trademarks to the limited partnerships that own and operate the various Hard Rock Cafe restaurants. These restaurants are the only authorized distributors of Hard Rock Cafe merchandise, but apparently this practice of exclusivity is neither publicized nor widely known. The shirts themselves are produced by Winterland Productions, which prints logos on blank, first quality t-shirts that it buys from Hanes, Fruit-of-the-Loom and Anvil. According to the manager of the Chicago Hard Rock Cafe, Scott Floer-sheimer, Winterland has an agreement with Hard Rock to retain all defective Hard Rock shirts.2 Thus, if Winterland performs as agreed, all legitimate Hard Rock shirts sold to the public are well-made and cleanly printed.

The Chicago Hard Rock Cafe has done very well from its business. Since 1986, it has sold over 500,000 t-shirts at an average, gross profit of $10.12 per shirt.

B. The Investigation

National Investigative Services Corporation (NISCOR) carried out the search for counterfeit merchandise on Hard Rock’s behalf. Another firm, Trademark Facts, Inc., trained NISCOR’s investigators to recognize counterfeit merchandise. Recognizing counterfeit Hard Rock goods was apparently easy. Any shirt not sold in a Hard Rock Cafe restaurant was, unless second-hand, counterfeit. Other than this, the investigators were instructed to check for the manufacturer of the t-shirt, a registration or trademark symbol, the quality of the printed design, the color of the design, the quality of the shirt stock and the price. But as to these latter factors (except for the price), Floersheimer testified that even he would have trouble distinguishing a good counterfeit from a legitimate t-shirt.

The investigators visited both the Mel-rose Park and the Tri-State Swap-O-Ra-mas and observed Iqbal Parvez (or his employees) offering more than a hundred Hard Rock t-shirts for sale. Cynthia Myers, the chief investigator on the project, testified that these shirts were obviously counterfeit. The shirts were poor quality stock, with cut labels and were being sold for $3 apiece (a legitimate Hard Rock shirt, we are told, goes for over $14). Harry’s had four Hard Rock shirts for sale, sitting on a discount table for $3.99 each. The district court found that these too were of obviously low quality, with cut labels and cracked and worn designs. Nonetheless, both Parvez and Harry’s were selling t-shirts made by approved manufacturers. Parvez was selling Hanes t-shirts, and Harry’s was selling Fruit-of-the-Loom.

At no point before filing suit did Hard Rock warn Harry’s or CSI (or Parvez, whose supplier Hard Rock was trying to track down) that the shirts were counterfeits.

C. The District Court Proceedings

Hard Rock brought suit against the defendants in- September 1989, alleging violations of sections 32 and 43 of the Lanham Act. 15 U.S.C. §§ 1114 & 1125 (1988). Pending trial, the court entered temporary restraining orders and then preliminary in*1148junctions against both CSI and Harry’s. Harry’s got rid of its remaining Hard Rock t-shirts, and CSI told any vendors selling Hard Rock merchandise in its flea markets to get. rid of their stock as well. There have been no more violations.

After a bench trial, the district court entered permanent injunctions against both defendants and ordered Harry’s to pay treble damages based on Hard Rock’s lost profits on four t-shirts (in sum, $120). Findings of Fact, Conclusions of Law and Order at 8 (Sept. 12, 1990) (hereinafter Mem.Op.). The court denied Hard Rock’s request for attorney’s fees. Id.

The court’s reasoning is crucial to the resolution of this appeal. Accordingly, we think it appropriate to quote from it at some length. The court concluded that both defendants were “guilty of willful blindness that counterfeit goods were being sold on [their] premises.” Id. at 7. Another sentence follows, however, which somewhat dilutes the impact of the preceding finding: “Neither defendant took reasonable steps to detect or prevent the sale of Hard Rock Cafe counterfeit T-shirts on its premise [sic].” Id. This suggests mere negligence.

Willful blindness, the court said, “is a sufficient basis for a finding of violation of the Lanham Act. Louis Vuitton S.A. v. Lee, 875 F.2d 584, 590 (7th Cir.1989).” Id. As to CSI’s argument that it did not actually sell the offending goods, the court observed that CSI is not “merely a landlord; it also advertises and promoted the activity on its premises, sells admission tickets to buyers and supervises the premises. Under these circumstances it must also take reasonable precautions against the sale of counterfeit products.” Id.

II.

The Lanham Trademark Act protects consumers from deceptive claims about the nature and origin of products. 15 U.S.C. § 1114(1)(a) & (b) (use of mark violates Act if “likely to cause confusion, or to cause mistake, or to deceive”); 15 U.S.C. § 1125(a)(1) (false designation of origin violates Act if “likely to cause confusion, or to cause mistake, or to deceive”). But the Lanham Act also protects trademarks as a form of intellectual property. In this case, the Act protects Hard Rock’s investment in a fashionable image and a reputation for selling high quality goods. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 n. 14, 102 S.Ct. 2182, 2188 n. 14, 72 L.Ed.2d 606 (1982) (citing S.Rep. No. 1333, 79th Cong., 2d Sess. 3 (1946)).

A. Secondary Liability

The most interesting issue in this case is CSI’s liability for Parvez’s sales. Hard Rock argues that CSI has incurred both contributory and vicarious liability for the counterfeits, and we take the theories of liability in that order.

It is well established that “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 contributorially responsible for any harm done as a result of the deceit.” Id. at 854, 102 S.Ct. at 2188 (footnote omitted). Despite this apparently definitive statement, it is not clear how the doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else. A temporary help service, for example, might not be liable if it furnished Parvez the workers he employed to erect his stand, even if the help service knew that Parvez would sell counterfeit goods. Thus we must ask whether the operator of a flea market is more like the manufacturer of a mislabeled good or more like a temporary help service supplying the purveyor of goods. To answer questions of this sort, we have treated trademark infringement as a species of tort and have turned to the common law to guide our inquiry into the appropriate boundaries of liability. David Berg & Co. v. Gatto Int’l Trading Co., 884 F.2d 306, 311 (7th Cir.1989).

CSI characterizes its relationship with Parvez as that of landlord and tenant. *1149Hard Rock calls CSI a licensor, not a landlord. Either way, the Restatement of Torts tells us that CSI is responsible for the torts of those it permits on its premises “knowing or having reason to know that the other is acting or will act tortiously....” Restatement (Second) of Torts § 877(c) & cmt. d (1979). The common law, then, imposes the same duty on landlords and licensors that the Supreme Court has imposed on manufacturers and distributors. In the absence of any suggestion that a trademark violation should not be treated as a common law tort, we believe that the Inwood Labs, test for contributory liability applies. CSI may be liable for trademark violations by Parvez if it knew or had reason to know of them. But the factual findings must support that conclusion.

The district court found CSI to be willfully blind. Since we have held that willful blindness is equivalent to actual knowledge for purposes of the Lanham Act, Lee, 875 F.2d at 590, this finding should be enough to hold CSI liable (unless clearly erroneous). But we very much doubt that the district court defined willful blindness as it should have. To be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate. Id. The district court, however, made little mention of CSI’s state of mind and focused almost entirely on CSI’s failure to take precautions against counterfeiting. Mem. Op. at 5-6. In its conclusions of law, the court emphasized that CSI had a duty to take reasonable precautions. Mem.Op. at 7. In short, it looks as if the district court found CSI to be negligent, not willfully blind.

This ambiguity in the court’s findings would not matter if CSI could be liable for failing to take reasonable precautions. But CSI has no affirmative duty to take precautions against the sale of counterfeits. Although the “reason to know” part of the standard for contributory liability requires CSI (or its agents) to understand what a reasonably prudent person would understand, it does not impose any duty to seek out and prevent violations. Restatement (Second) of Torts § 12(1) & cmt. a (1965). We decline to extend the protection that Hard Rock finds in the common law to require CSI, and other landlords, to be more dutiful guardians of Hard Rock’s commercial interests. Thus the district court’s findings do not support the conclusion that CSI bears contributory liability for Parvez’s transgressions.

Before moving on, we should emphasize that we have found only that the district court applied an incorrect standard. We have not found that the evidence cannot support the conclusion that CSI was in fact willfully blind. At the Tri-State, Bar-elli saw Parvez’s shirts, and had the opportunity to note that they had cut labels and were being sold cheap. Further, Barelli testified that he did not ask vendors whether their goods were counterfeit because they were sure to lie to him. One might infer from these facts that Barelli suspected that the shirts were counterfeits but chose not to investigate.

On the other hand, we do not wish to prejudge the matter. For it is undisputed that Hard Rock made no effort to broadcast the information that legitimate Hard Rock t-shirts could only be found in Hard Rock Cafes. Moreover, there does not seem to be any particular reason to believe that inexpensive t-shirts with cut labels are obviously counterfeit, no matter what logo they bear. Cf. Lee, 875 F.2d at 590 (genuine Vuitton and Gucci bags unlikely to display poor workmanship or purple vinyl linings). The circumstantial evidence that Barelli suspected the shirts to be counterfeit is, at best, thin. On remand, the district court may choose to develop this issue more fully.

Perhaps recognizing that the district court’s opinion is unclear, Hard Rock urges us to find CSI vicariously liable for Parvez’s sales, regardless of its knowledge of the counterfeiting. Indeed, if we accept this theory, CSI is liable for Parvez’s sales even if it was not negligent.3 See, e.g., *1150 Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 309 (2d Cir.1963).

We have recognized that a joint tortfeasor may bear vicarious liability for trademark infringement by another. David Berg, 884 F.2d at 311. This theory of liability requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product. Id. The case before us does not fit into the joint tortfeasor model, and Hard Rock does not argue that it does.

Instead, Hard Rock wants us to apply the more expansive doctrine of vicarious liability applicable to copyright violations. Under the test developed by the Second Circuit, a defendant is vicariously liable for copyright infringement if it has “the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.” Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.1971) (hereinafter CAMI); F.E.L. Publications, Ltd. v. National Conf. of Catholic Bishops, 466 F.Supp. 1034, 1040 (N.D.Ill.1978); see also Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36 F.2d 354, 355 (7th Cir.1929) (owner of dance hall liable for copyright violations by band hired to entertain paying customers); Famous Music Corp. v. Bay State Harness Horse Racing & Breeding Ass’n, 554 F.2d 1213, 1215 (1st Cir.1977) (owner of racetrack liable for copyright violations by company hired to supply music over public address system). The purpose of the doctrine is to prevent an entity that profits from infringement from hiding behind un-dercapitalized “dummy” operations when the copyright owner eventually sues. Shapiro, Bernstein, 316 F.2d at 309.

The parties have argued vigorously about the application of this doctrine to the facts.4 But we need not decide the question; for the Supreme Court tells us that secondary liability for trademark infringement should, in any event, be more narrowly drawn than secondary liability for copyright infringement. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 439 n. 19, 104 S.Ct. 774, 787 n. 19, 78 L.Ed.2d 574 (1984) (citing “fundamental differences” between copyright and trademark law). If Hard Rock referred us to some principle of common law that supported its analogy to copyright, we would be more understanding of its claims. But it has not. Further, there is no hint that CSI is playing at the sort of obfuscation that inspired the Second Circuit to develop its more expansive form of vicarious copyright liability. Hard Rock must look to Congress to provide the level of protection it demands of CSI here.

In sum, we find that CSI may bear contributory liability for Parvez’s unlawful sales, but we see no evidence on the record that would support a finding that CSI is vicariously liable. Accordingly, because the district court’s findings fail to establish that CSI knew or had reason to know that Parvez was selling counterfeits, we must vacate the judgment against CSI and remand for further proceedings.

*1151B. Injunctive Relief

CSI argues that entry of a permanent injunction is inappropriate even if it is liable, because there is no reason to believe that it will permit more vendors to infringe Hard Rock’s trademarks. In this Circuit, however, “[i]t is within the discretion of the trial court to grant or deny an injunction against conduct which has ceased and is not likely to recur.” Schutt Mfg. Co. v. Riddell, Inc., 673 F.2d 202, 207 (7th Cir.1982); Scotch Whisky Ass’n v. Barton Distilling Co., 489 F.2d 809, 813 (7th Cir.1973). More generally, a plaintiff in a trademark case:

is entitled to effective relief; and any doubt in respect of the extent thereof must be resolved in its favor as the innocent producer and against the [defendant], which has shown by its conduct that it is not to be trusted.

Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir.1986) (quoting William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 532, 44 S.Ct. 615, 618, 68 L.Ed. 1161 (1924)); see also Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 130, 67 S.Ct. 1136, 1139, 91 L.Ed. 1386 (1947); 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 30:2 at 466 (2d ed. 1984). On remand, if the district court finds that CSI is liable, the entry of an appropriate injunction will again be within its discretion. To paraphrase the Ninth Circuit: if CSI sincerely intends not to permit the sale of Hard Rock merchandise at its flea markets, the injunction harms it little; if it does, the injunction gives Hard Rock substantial protection of its trademarks. Polo Fashions, 793 F.2d at 1135-36.

G. Attorney’s Fees

Section 35 of the Lanham Act, 15 U.S.C. § 1117 (1988), provides that prevailing plaintiffs may be awarded attorney’s fees in two circumstances. If a defendant has sold counterfeit goods by mistake or through negligence, attorney’s fees may be awarded “in exceptional circumstances.” § 1117(a). But if the violation “consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark,” treble damages and attorney’s fees must be awarded unless there are “extenuating circumstances.” § 1117(b). Willful blindness is sufficient to trigger the mandatory provisions of subsection b. Lee, 875 F.2d at 590.

1. Concession Services, Inc.

In response to Hard Rock’s claim for attorney’s fees, CSI argues that it cannot be liable for mandatory attorney’s fees under subsection b because even if it is a contributory infringer, it did not “intentionally us[e]” a counterfeit mark. We reject this argument. If CSI can bear contributory liability under substantive provisions that impose liability on those who “use[ ]” a counterfeit mark “in commerce,” 15 U.S.C. §§ 1114 & 1125 (sections 32 and 43 of the Act), there is no reason to believe that it cannot “intentionally us[e]” a counterfeit within the meaning of section 35(b).

On remand, if the district court finds CSI liable as a contributory infringer, it should consider whether its findings also amount to intentional use. If CSI is liable because it knew that the t-shirts were counterfeit, or because it was willfully blind, an award of attorney’s fees is mandatory under section 35(b). If, however, CSI is liable, but only because it had “reason to know” that the shirts were counterfeits,5 then the district court should award attorney’s fees only if it finds that the circumstances were exceptional.

Finally, CSI also argues that Hard Rock failed to come up with competent evidence to support an award of attorney’s fees and that it already received its fees when it settled with the primary infringer, Parvez. But since the district court refused to *1152award attorney’s fees, it never had a chance to pass on these questions. We decline to do so here and leave these arguments for the district court on remand.

2. Harry’s Sweat Shop

The district court’s findings about Harry’s suffer from the same defect as the findings about CSI. It is simply not clear whether the court used the phrase “willful blindness” to mean that Harry’s suspected the goods were counterfeit but decided not to investigate or to mean that Harry’s failed to take precautions. The evidence would support either conclusion. Unfortunately, because of the ambiguity, we must remand this question as well, although the finding of liability stands.6 If the district court finds that Harry’s was willfully blind as to the counterfeit nature of the t-shirts it sold, it must award attorney’s fees to Hard Rock under section 35(b). Only if Harry’s was not willfully blind does the “exceptional circumstances” standard from section 35(a) apply.7

III.

For the foregoing reasons, we VACATE the finding of liability as to CSI, Vacate the denial of Hard Rock’s request for attorney’s fees against both defendants and Remand for further proceedings consistent with this opinion.

SCHROEDER, Circuit Judge:

This is a copyright and trademark enforcement action against the operators of a swap meet, sometimes called a flea market, where third-party vendors routinely sell counterfeit recordings that infringe on the plaintiffs copyrights and trademarks. The district court dismissed on the pleadings, holding that the plaintiffs, as a matter of law, could not maintain any cause of action against the swap meet for sales by vendors who leased *261its premises. The district court’s decision is published. Fonovisa Inc. v. Cherry Auction, Inc., 847 F.Supp. 1492 (E.D.Cal.1994). We reverse.

Background

The plaintiff and appellant is Fonovisa, Inc., a California corporation that owns copyrights and trademarks to Latin/Hispanie music recordings. Fonovisa filed this action in district court against defendant-appellee, Cherry Auction, Inc., and its individual operators (collectively “Cherry Auction”). For purposes of this appeal, it is undisputed that Cherry Auction operates a swap meet in Fresno, California, similar to many other swap meets in this country where customers come to purchase various merchandise from individual vendors. See generally, Flea Market Owner Sued for Trademark Infringement, 4 No. 3 J. Proprietary Rts. 22 (1992). The vendors pay a daily rental fee to the swap meet operators in exchange for booth space. Cherry Auction supplies parking, conducts advertising and retains the right to exclude any vendor for any reason, at any time, and thus can exclude vendors for patent and trademark infringement. In addition, Cherry Auction receives an entrance fee from each customer who attends the swap meet.

There is also no dispute for purposes of this appeal that Cherry Auction and its operators were aware that vendors in their swap meet were selling counterfeit recordings in violation of Fonovisa’s trademarks and copyrights. Indeed, it is alleged that in 1991, the Fresno County Sheriffs Department raided the Cherry Auction swap meet and seized more than 38,000 counterfeit recordings. The following year, after finding that vendors at the Cherry Auction swap meet were still selling counterfeit recordings, the Sheriff sent a letter notifying Cherry Auction of the on-going sales of infringing materials, and reminding Cherry Auction that they had agreed to provide the Sheriff with identifying information from each vendor. In addition, in 1993, Fonovisa itself sent an investigator to the Cherry Auction site and observed sales of counterfeit recordings.

Fonovisa filed its original complaint in the district court on February 25, 1993, and on March 22, 1994, the district court granted defendants’ motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). In this appeal, Fonovisa does not challenge the district court’s dismissal of its claim for direct copyright infringement, but does appeal the dismissal of its claims for contributory copyright infringement, vicarious copyright infringement and contributory trademark infringement.

The copyright claims are brought pursuant to 17 U.S.C. §§ 101 et seq. Although the Copyright Act does not expressly impose liability on anyone other than direct infringers, courts have long recognized that in certain circumstances, vicarious or contributory liability will be imposed. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 435, 104 S.Ct. 774, 785, 78 L.Ed.2d 574 (1984) (explaining that “vicarious liability is imposed in virtually all areas of the law, and the concept of contributory infringement is merely a species of the broader problem of identifying circumstances in which it is just to hold one individually accountable for the actions of another”).

Similar principles have also been applied in the trademark field. See Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 844-46, 102 S.Ct. 2182, 2184, 72 L.Ed.2d 606 (1982). The Seventh Circuit, for example, has upheld the imposition of liability for contributory trademark infringement against the owners of a flea market similar to the swap meet operated by Cherry Auction. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir.1992). The district court in this case, however, expressly rejected the Seventh Circuit’s reasoning on the contributory trademark infringement claim. Contributory and vicarious copyright infringement, however, were not addressed in Hard Rock Cafe, making this the first case to reach a federal appeals court raising issues of contributory and vicarious copyright infringement in the context of swap meet or flea market operations.

We analyze each of the plaintiffs claims in turn.

Vicarious Copyright Infringement

The concept of vicarious copyright liability was developed in the Second Circuit as an *262outgrowth of the agency principles of respon-deat superior. The landmark case on vicarious liability for sales of counterfeit recordings is Shapiro, Bernstein and Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir.1963). In Shapiro, the court was faced with a copyright infringement suit against the owner of a chain of department stores where a concessionaire was selling counterfeit recordings. Noting that the normal agency rule of re-spondeat superior imposes liability on an employer for copyright infringements by an employee, the court endeavored to fashion a principle for enforcing copyrights against a defendant whose economic interests were intertwined with the direct infringer’s, but who did not actually employ the direct infringer.

The Shapiro court looked at the two lines of eases it perceived as most clearly relevant. In one line of cases, the landlord-tenant cases, the courts had held that a landlord who lacked knowledge of the infringing acts of its tenant and who exercised no control over the leased premises was not liable for infringing sales by its tenant. See e.g. Deutsch v. Arnold, 98 F.2d 686 (2d Cir.1938); c.f. Fromont v. Aeolian Co., 254 F. 592 (S.D.N.Y.1918). In the other line of cases, the so-called “dance hall cases,” the operator of an entertainment venue was held liable for infringing performances when the operator (1) could control the premises and (2) obtained a direct financial benefit from the audience, who paid to enjoy the infringing performance. See e.g. Buck v. Jewell-La-Salle Realty Co., 283 U.S. 191, 198-199, 51 S.Ct. 410, 411-12, 75 L.Ed. 971 (1931); Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36 F.2d 354 (7th Cir.1929).

From those two lines of eases, the Shapiro court determined that the relationship between the store owner and the concessionaire in the case before it was closer to the dance-hall model than to the landlord-tenant model. It imposed liability even though the defendant was unaware of the infringement. Shapiro deemed the imposition of vicarious liability neither unduly harsh nor unfair because the store proprietor had the power to cease the conduct of the concessionaire, and because the proprietor derived an obvious and direct financial benefit from the infringement. 316 F.2d at 307. The test was more clearly articulated in a later Second Circuit case as follows: “even in the absence of an employer-employee relationship one may be vicariously liable if he has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.” Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.1971). See also 3 Melville Nimmer & David Nimmer, Nimmer on Copyright § 1204(A)[1], at 1270-72 (1995). The most recent and comprehensive discussion of the evolution of the doctrine of vicarious liability for copyright infringement is contained in Judge Keeton’s opinion in Polygram Intern. Pub., Inc. v. Nevada/TIG, Inc., 855 F.Supp. 1314 (D.Mass.1984).

The district court in this case agreed with defendant Cherry Auction that Fonovisa did not, as a matter of law, meet either the control or the financial benefit prong of the vicarious copyright infringement test articulated in Gershwin, supra. Rather, the district court concluded that based on the pleadings, “Cherry Auction neither supervised nor profited from the vendors’ sales.” 847 F.Supp. at 1496. In the district court’s view, with respect to both control and financial benefit, Cherry Auction was in the same position as an absentee landlord who has surrendered its exclusive right of occupancy in its leased property to its tenants.

This analogy to absentee landlord is not in accord with the facts as alleged in the district court and which we, for purposes of appeal, must accept. The allegations below were that vendors occupied small booths within premises that Cherry Auction controlled and patrolled. According to the complaint, Cherry Auction had. the right to terminate vendors for any reason whatsoever and through that right had the ability to control the activities of vendors on the premises. In addition, Cherry Auction promoted the swap meet and controlled the access of customers to the swap meet area. In terms of control, the allegations before us are strikingly similar to those in Shapiro and Gershwin.

In Shapiro, for example, the court focused on the formal licensing agreement between defendant department store and the direct infringer-eoncessionaire. There, the concessionaire selling the bootleg recordings had a *263licensing agreement with the department store (H.L. Green Company) that required the concessionaire and its employees to “abide by, observe and obey all regulations promulgated from time to time by the H.L. Green Company,” and H.L. Green Company had the “unreviewable discretion” to discharge the concessionaires’ employees. 316 F.2d at 306. In practice, H.L. Green Company was not actively involved in the sale of records and the concessionaire controlled and supervised the individual employees. Id. Nevertheless, H.L. Green’s ability to police its concessionaire — which parallels Cherry Auction’s ability to police its vendors under Cherry Auction’s similarly broad contract with its vendors — was sufficient to satisfy the control requirement. Id. at 308.

In Gershwin, the defendant lacked the formal, contractual ability to control the direct infringer. Nevertheless, because of defendant’s “pervasive participation in the formation and direction” of the direct infringers, including promoting them (i.e. creating an audience for them), the court found that defendants were in a position to police the direct infringers and held that the control element was satisfied. 443 F.2d at 1163. As the promoter and organizer of the swap meet, Cherry Auction wields the same level of control over the direct infringers as did the Gershwin defendant. See also Polygram, 855 F.Supp. at 1329 (finding that the control requirement was satisfied because the defendant (1) could control the direct infringers through its rules and regulations; (2) policed its booths to make sure the regulations were followed; and (3) promoted the show in which direct infringers participated).

The district court’s dismissal of the vicarious liability claim in this case was therefore not justified on the ground that the complaint failed to allege sufficient control.

We next consider the issue of financial benefit. The plaintiffs allegations encompass many substantive benefits to Cherry Auction from the infringing sales. These include the payment of a daily rental fee by each of the infringing vendors; a direct payment to Cherry Auction by each customer in the form of an admission fee, and incidental payments for parking, food and other services by customers seeking to purchase infringing recordings.

Cherry Auction nevertheless contends that these benefits cannot satisfy the financial benefit prong of vicarious liability because a commission, directly tied to the sale of particular infringing items, is required. They ask that we restrict the financial benefit prong to the precise facts presented in Shapiro, where defendant H.L. Green Company received a 10 or 12 per cent commission from the direct infringers’ gross receipts. Cherry Auction points to the low daily rental fee paid by each vendor, discounting all other financial benefits flowing to the swap meet, and asks that we hold that the swap meet is materially similar to a mere landlord. The facts alleged by Fonovisa, however, reflect that the defendants reap substantial financial benefits from admission fees, concession stand sales and parking fees, all of which flow directly from customers who want to buy the counterfeit recordings at bargain basement prices. The plaintiff has sufficiently alleged direct financial benefit.

Our conclusion is fortified by the continuing line of cases, starting with the dance hall cases, imposing vicarious liability on the operator of a business where infringing performances enhance the attractiveness of the venue to potential customers. In Polygram, for example, direct infringers were participants in a trade show who used infringing music to communicate with attendees and to cultivate interest in their wares. 855 F.Supp. at 1332. The court held that the trade show participants “derived a significant financial benefit from the attention” that attendees paid to the infringing music. Id.; See also Famous Music Corp. v. Bay State Harness Horse Racing and Breeding Ass’n, 554 F.2d 1213, 1214 (1st Cir.1977) (race track owner vicariously hable for band that entertained patrons who were not “absorbed in watching the races”); Shapiro, 316 F.2d at 307 (dance hall cases hold proprietor hable where infringing “activities provide the proprietor with a source of customers and enhanced income”). In this case, the sale of pirated recordings at the Cherry Auction swap meet is a “draw” for customers, as was *264the performance of pirated music in the dance hall cases and their progeny.

Plaintiffs have stated a claim for vicarious copyright infringement.

Contributory Copyright Infringement

Contributory infringement originates in tort law and stems from the notion that one who directly contributes to another’s infringement should be held accountable. See Sony v. Universal City, 464 U.S. at 417, 104 S.Ct. at 774-776; 1 Niel Boorstyn, Boorstyn On Copyright § 10.06[2], at 10-21 (1994) (“In other words, the common law doctrine that one who knowingly participates in or furthers a tortious act is jointly and severally liable with the prime tortfeasor, is applicable under copyright law”). Contributory infringement has been described as an outgrowth of enterprise liability, see 3 Nimmer § 1204[a][2], at 1276; Demetriades v. Kaufmann, 690 F.Supp. 289, 292 (S.D.N.Y.1988), and imposes liability where one person knowingly contributes to the infringing conduct of another. The classic statement of the doctrine is in Gershwin, 443 F.2d 1159, 1162: “[0]ne 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.” See also Universal City Studios v. Sony Corp. of America, 659 F.2d 963, 975 (9th Cir.1981), rev’d on other grounds, 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (adopting Gershwin in this circuit).

There is no question that plaintiff adequately alleged the element of knowledge in this case. The disputed issue is whether plaintiff adequately alleged that Cherry Auction materially contributed to the infringing activity. We have little difficulty in holding that the allegations in this case are sufficient to show material contribution to the infringing activity. Indeed, it would be difficult for the infringing activity to take place in the massive quantities alleged without the support services provided by the swap meet. These services include, inter alia, the provision of space, utilities, parking, advertising, plumbing, and customers.

Here again Cherry Auction asks us to ignore all aspects of the enterprise described by the plaintiffs, to concentrate solely on the rental of space, and to hold that the swap meet provides nothing more. Yet Cherry Auction actively strives to provide the environment and the market for counterfeit recording sales to thrive. Its participation in the sales cannot be termed “passive,” as Cherry Auction would prefer.

The district court apparently took the view that contribution to infringement should be limited to circumstances in which the defendant “expressly promoted or encouraged the sale of counterfeit products, or in some manner protected the identity of the infringers.” 847 F.Supp. 1492, 1496. Given the allegations that the local sheriff lawfully requested that Cherry Auction gather and share basic, identifying information about its vendors, and that Cherry Auction failed to comply, the defendant appears to qualify within the last portion of the district court’s own standard that posits liability for protecting infringers’ identities. Moreover, we agree with the Third Circuit’s analysis in Columbia Pictures Industries, Inc. v. Aveco, Inc., 800 F.2d 59 (3rd Cir.1986) that providing the site and facilities for known infringing activity is sufficient to establish contributory liability. See 2 William F. Patry, Copyright Law & Practice 1147 (“Merely providing the means for infringement may be sufficient” to incur contributory copyright liability).

Contributory Trademark Infringement

Just as liability for copyright infringement can extend beyond those who actually manufacture or sell infringing materials, our law recognizes liability for conduct that assists others in direct trademark infringement. In Inwood Laboratories, 456 U.S. 844, 102 S.Ct. 2182, the Court said that contributory trademark liability is applicable if defendant (1) intentionally induces another to infringe on a trademark or (2) continues to supply a product knowing that the recipient is using the product to engage in trademark infringement. Inwood at 854-55, 102 S.Ct. at 2188-89. As Cherry Auction points out, the Inwood case involved a manufacturer-*265distributor, and the Inwood standard has generally been applied in such cases. The Court in Inwood, however, laid down no limiting principle that would require defendant to be a manufacturer or distributor.

The defendant in Inwood distributed drugs to a pharmacist, knowing that the pharmacist was mislabeling the drugs with a protected trademark rather than a generic label. In this case, plaintiffs correctly point our that while Cherry Auction is not alleged to be supplying the recordings themselves, it is supplying the necessary marketplace for their sale in substantial quantities.

In Hard Rock Cafe, 955 F.2d 1143, the Seventh Circuit applied the Inwood test for contributory trademark liability to the operator of a flea market. In that case, there was no proof that the flea market had actual knowledge of the sale by vendors of counterfeit Hard Rock Cafe trademark merchandise, but the court held that contributory liability could be imposed if the swap meet was “willfully blind” to the ongoing violations. Hard Rock Cafe, 955 F.2d at 1149. It observed that while trademark infringement liability is more narrowly circumscribed than copyright infringement, the courts nevertheless recognize that a company “is responsible for the torts of those it permits on its premises ‘knowing or having reason to know that the other is acting or will act tortiously....’” Id. quoting Restatement (Second) of Torts § 877(c) & cmt. d (1979).

Hard Rock Cafe’s application of the In-wood test is sound; a swap meet can not disregard its vendors’ blatant trademark infringements with impunity. Thus, Fonovisa has also stated a claim for contributory trademark infringement.

The judgment of the district court is REVERSED and the case is REMANDED FOR FURTHER PROCEEDINGS.

Affirmed in part, reversed in part, vacated in part, and remanded by published opinion. Judge Motz wrote the opinion, in which Judge Wynn and Senior Judge Shedd joined.

DIANA GRIBBON MOTZ, Circuit Judge:

BMG Rights Management (US) LLC (“BMG”), which owns copyrights in musical compositions, filed' this suit alleging copyright infringement against Cox Communications, Inc. and CoxCom, LLC (collectively, “Cox”), providers of high-speed Internet access. BMG seeks to hold Cox contributorily liable for infringement of BMG’s copyrights by subscribers to Cox’s Internet service. Following extensive discovery, the district court held that Cox had not produced evidence that it had. imple- • mented a policy entitling it to a statutory safe harbor defense and so granted summary judgment on that issue to BMG. After a two-week trial, a jury found Cox liable for willful contributory infringement and awarded BMG $25 million in statutory damages. Cox appeals, asserting that the district court erred in denying it the safe harbor defense and incorrectly instructed the jury. We hold that Cox is not entitled to the safe harbor defense and affirm the district court’s denial of it, but we reverse in part, vacate in part, and remand for a new trial because of certain errors in the jury instructions.

I.

A.

Cox is a conduit Internet service provider (“ISP”), providing approximately 4.5 million subscribers with high-speed. Internet access for a monthly fee. .Some of Cox’s subscribers shared and received copyrighted files, including music files, using a technology known as BitTorrent. Bib-Torrent is not a software program, but rather describes a protocol—a set of rules governing the communication between computers—that allows individual computers on the Internet to transfer files directly to other computers. This method of file sharing is commonly known as “peer-to-peer” file sharing, and contrasts with the traditional method of downloading a file from a central server using a Web browser.

Although peer-to-peer file sharing is not new, what makes BitTorrent unique is that it allows a user to download a file from multiple peers at the same time—even peers who only have a piece of the file, rather than the complete file. In other *299words, as soon as a user has downloaded a piece of the file, he or she can begin sharing that piece with others (while continuing to download the'rest of the file). This innovation makes sharing via BitTor-rent particularly fast and efficient. Although BitTorrent can be used to share any .type of digital file, many use it, to share copyrighted music and video files without authorization.

As a conduit ISP, Cox only provides Internet access to its subscribers. Cox does not create or sell software that, operates using the BitTorrent protocol, store copyright-infringing material on its own computer servers, or control what its subscribers store on their personal computers.

Cox’s agreement with its subscribers reserves the right to suspend or terminate subscribers who use Cox’s service “to post, copy, transmit, or disseminate any content that infringes the patents, copyrights ... or proprietary rights of any party.” To enforce that agreement and protect itself from liability, however, Cox created only a very limited automated system to process notifications of alleged infringement received from copyright owners. Cox’s automated system rests on a thirteen-strike policy that determines the action to be taken based on how many .notices Cox has previously received regarding infringement by a particular subscriber. The first notice alleging a. subscriber’s infringement produces no action from Cox. The second through seventh notices result in warning emails from Cox tó the subscriber. After the eighth and ninth notices, Cox limits the subscriber’s Internet access to a single webpage that contains a warning, but the subscriber can reactivate complete service by clicking an acknowledgement. After the tenth and eleventh notices, Cox suspends services, requiring the subscriber to call a technician, who, after explaining the reason for suspension and advising removal of infringing content, reactivates service. After the twelfth notice, the subscriber is suspended and directed to a specialized technician, who, after another warning to cease infringing conduct, reactivates service. After the- thirteenth notice, the subscriber is again suspended, and, for the first time, considered for termination. Cox never automatically, terminates , a subscriber.

The effectiveness of Cox’s thirteen-strike policy as a deterrent to copyright infringement has several additional limitations. Cox restricts the number of notices it will process from any copyright holder or agent in one day; any notice received after this limit has been met does not count in Cox’s graduated response escalation. Cox also counts only one notice per subscriber per day. And Cox resets a subscriber’s thirteen-strike counter every six months.

. BMG, a music publishing company, owns copyrights in musical compositions. To protect this copyrighted material, BMG hired Rightscorp, Inc., which monitors Bit-Torrent activity to determine when in-fringers share its clients’ copyrighted works. When Rightscorp identifies such sharing, it emails an infringement notice to the alleged infringer’s ISP (here, Cox). The notice contains the name of the copyright owner (here, BMG), the title of the copyrighted work, the alleged infringer’s IP address, a time stamp, and a statement under penalty of perjury that Rightscorp is an authorized agent and the notice is accurate.

Rightscorp also asks the ISP to forward the notice to the allegedly infringing subscriber, ■ since only the ISP can match the IP address to the subscriber’s identity. For that purpose, the notice contains a settlement offer, allowing the alleged in-fringer to pay twenty or thirty dollars for a release from liability for the instance of *300infringement alleged in the notice. Cox has determined to refuse to forward or process notices that contain such settlement language. When Cox began receiving Right-scorp notices in the spring of 2011 (before Rightscorp had signed BMG as a client), Cox notified Rightscorp that it would process the notices only if Rightscorp removed the settlement language. Right-scorp did not do so. Cox never considered removing the settlement language itself or using other means to inform its subscribers of the allegedly infringing activity observed by Rightscorp.

Rightscorp continued to send Cox large numbers of settlement notices. In the fall of 2011, Cox decided to “blacklist” Right-scorp, meaning Cox would delete notices received from Rightscorp without acting on them or even viewing them. BMG hired Rightscorp in December 2011—after Cox blacklisted Rightscorp. Thus, Cox did not ever view a single one of the millions of notices that Rightscorp sent to Cox on BMG’s behalf.

B.

On November 26, 2014, BMG initiated this action against Cox. BMG alleged that Cox was vicariously and contributorily liable for acts of copyright infringement by its subscribers.

At the conclusion of discovery, the parties filed multi-issue cross-motions for summary judgment, which the district court resolved in a careful written opinion. Among these issues, BMG asserted that Cox had not established a policy entitling it to the safe harbor defense contained in the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512(a). To qualify for that safe harbor, an ISP, like Cox, must have “adopted and reasonably implemented ... a policy that provides for the termination in appropriate circumstances of subscribers ... who are repeat infring-ers.” Id. § 512(i)(l)(A). The district court agreed with BMG and held that no reasonable jury could find that Cox implemented a policy that entitled it to that DMCA safe harbor. The court explained that BMG had offered evidence that “Cox knew accounts were being used repeatedly for infringing activity yet failed to terminate” those accounts and that Cox did “not come forward with any evidence” to the contrary. Accordingly, the court granted summary judgment to BMG on Cox’s Safe harbor defense.

The case proceeded to a jury trial that involved the testimony of more than a dozen witnesses and admission of numerous documents. At the conclusion of the trial, the district court instructed the jury that to prove contributory infringement, BMG had to show “direct infringement of BMG’s copyrighted works” by Cox subscribers, that “Cox knew or should have known of such infringing activity,” and that “Cox induced, caused, or materially contributed to such infringing activity.” The court further instructed the jury that BMG could prove Cox’s knowledge of infringing activity by showing willful blindness, if Cox “was aware of a high probability that Cox users were infringing BMG’s copyrights but consciously avoided confirming that fact.”

The jury found Cox liable for willful contributory infringement and awarded BMG $25 million in statutory damages. The jury also found that Cox was not liable for vicarious infringement. The district court denied all post-trial motions and entered judgment in accordance with the verdict. Cox appeals, arguing that BMG should not have been granted summary judgment as to the DMCA safe harbor and that erroneous jury instructions entitle it *301to a new trial.1

II.

We first address Cox’s contention that the district court erred in denying it the § 512(a) DMCA safe harbor defense. We review de novo the grant of summary judgment. Henry v. Purnell, 652 F.3d 524, 581 (4th Cir. 2011) (en banc).

A.

The DMCA provides a series of safe harbors that limit the copyright infringement liability of an ISP and related entities. As a conduit ISP, Cox seeks the benefit of the safe harbor contained in 17 U.S.C. § 512(a). To fall within that safe harbor, Cox must show that it meets the threshold requirement, common to all § 512 safe harbors, that it has “adopted and reasonably implemented ... a policy that provides for the termination in appropriate circumstances of subscribers ... who are repeat infringers.” 17 U.S.C. § 512(i)(l)(A).

Cox’s principal contention is that “repeat infringers” means adjudicated repeat in-fringers: people who have been held liable by a court for multiple instances of copyright infringement. Cox asserts that it complied with § 512(i)(l)(A)’s requirement and is therefore entitled to the § 512(a) DMCA safe harbor because BMG did not show that Cox failed to terminate any adjudicated infringers. BMG responds that Cox’s interpretation of “repeat infringers” is contrary to “the DMCA’s plain terms.” Appellee Br. at 31.

Because the statute does not define the term “repeat infringers,” to resolve that question, we turn first to the term’s ordinary meaning. See Sebelius v. Cloer, 569 U.S. 369, 376, 133 S,Ct. 1886, 185 L.Ed.2d 1003 (2013). The ordinary meaning of an infringer is “[sjomeone who interferes with one of the exclusive rights of a ... copyright” holder—in short, one who infringes a copyright. Infringer, Black’s Law Dictionary 902 (10th ed. 2014). A repeat infringer, then, is one who infringes a copyright more than once.

Cox contends that because the repeat infringer provision uses the term “infringer” without modifiers such as “alleged” or “claimed” that appear elsewhere in the DMCA, “infringer” must mean “adjudicated infringer.” But the DMCA’s use of phrases like “alleged infringer” in other portions of the statute indicates only that the term “infringer” alone must mean something different than “alleged infringer,” otherwise, the word “alleged” would be superfluous. Using the ordinary meaning of “infringer,” however, fully accords with this principle: someone who actually infringes a copyright differs from someone who has merely allegedly infringed a copyright, because an allegation could be false. The need to differentiate the terms “in-fringer” and “alleged infringer” thus does not mandate Cox’s proposed definition.

Moreover, other provisions of the Copyright Act use the term “infringer” (and similar terms) to refer to all who engage in infringing activity, not just the narrow subset of those who have been so adjudicated by a court. For example, § 501(a), which creates a civil cause of action for copyright owners, states that “[a’Jnyone who violates any of the exclusive rights of *302the copyright owner” provided for in the statute “is an infringer of the copyright or right of the author.” 17 U.S.C. § 501(a) (emphasis added).

Similarly, the DMCA itself provides that ISPs who store copyrighted material are generally not liable for removing “material or activity claimed. to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.” Id. § 512(g)(1) (emphases added). This provision expressly distinguishes among three categories of activity: activity merely “claimed to be infringing,” actual “infringing activity” (as is apparent from “facts or circumstances”), and activity “ultimately determined to be infringing,” The distinction between “infringing activity” and activity “ultimately determined to be infringing” in § 512(g) shelters ISPs from being liable for taking down material that is “infringing,” even if no court “ultimately determine[s]” that it is infringing—because, for example, the copyright holder simply does not file a lawsuit against the person who uploaded the infringing material. As this provision illustrates, Congress knew how to expressly refer to adjudicated infringement, but did not do so in the repeat infringer provision. See also id. § 512(b)(2)(E)(i) (addressing circumstance in which “a court has ordered that ... material be removed”). That suggests the term “infringer” in § 512(i) is not limited to adjudicated infringers.

The legislative history of the repeat in-fringer provision supports this conclusion. Both the House Commerce and Senate Judiciary Committee Reports explained that “those who repeatedly or flagrantly abuse their access to the Internet through disrespect for the intellectual property rights of others should know that there is a realistic threat of losing that access.” H.R. Rep. No. 105-551, pt. 2, at 61 (1998); S. Rep. No. 105-190, at 52 (1998). This passage makes clear that if persons “abuse their access to the Internet through disrespect for-the intellectual property rights of others”—that is, if they infringe copyrights—they should face a “realistic threat of losing” their Internet access. The passage does not suggest that they should risk losing Internet access only once they have been sued in court and found liable for multiple instances of infringement. Indeed, the risk of losing one’s Internet access would hai’dly constitute a “realistic threat” capable of deterring infringement if that punishment applied only to those already subject to civil penalties and legal fees as adjudicated infringers.

The only circuit to expressly consider the definition of a “repeat infringer” in the DMCA has defined it to mean “someone who interferes with one of the exclusive rights of a copyright” “again or repeatedly.” EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d 79, 89 (2d Cir. 2016) (alterations, internal quotation marks, and citations omitted); accord, e.g., Ellison v. Robertson, 357 F.3d 1072, 1080 (9th Cir. 2004) (finding material dispute of fact as to whether ISP was entitled to invoke safe harbor provision because there was “ample evidence” that ISP did not terminate “repeat infringers,” but not suggesting that the infringing subscribers were adjudicated infringers); In re Aimster Copyright Litig., 334 F.3d 643, 655 (7th Cir. 2003) (finding ISP ineligible for safe harbor defense where ISP “invited” “the use of its service by ‘repeat infring-ers,’ ” but not discussing any evidence that users were adjudicated infringers). Cox does not cite a single case adopting its contrary view .that only adjudicated in-fringers can be “repeat infringers” for pur*303poses of the DMCA.2

Accordingly, we reject Cox’s' argument that the term “repeat infringers” in § 512(i) is limited to adjudicated infring-ers.3

B.

Section 512(i) thus requires that, to obtain the benefit of the DMCA safe harbor, Cox must have reasonably implemented “a policy that provides for the termination in appropriate circumstances” of its subscribers who repeatedly infringe copyrights.. 17 U.S.C. § 512(i)(l)(A). We are mindful of the need to afford ISPs flexibility in crafting repeat infringer policies, and of the difficulty of determining when it is “appropriate” to terminate a person’s access to the Internet.-.See id. At a minimum, however, an ISP has not “rea* sonably implemented” a repeat infringer policy if the ISP fails to enforce the terms of its policy in any meaningful fashion. See In re Aimster Copyright Litig., 252 F.Supp.2d 634, 659 (N.D. Ill. 2002), aff'd, 334 F.3d 643 (7th Cir. 2003) (“Adopting a repeat infringer policy and then purposely eviscerating any hope that such a policy could ever be carried out is not an ‘implementation’ as required by § 512(i).”). Here, Cox formally adopted a repeat in-fringer “policy,” but, both before and after September 2012, made every effort to avoid reasonably implementing, that policy.. Indeed, in carrying out its thirteen-strike process, Cox very .clearly determined- not to terminate subscribers who in fact repeatedly violated the policy.

The words of Cox’s own employees confirm this conclusion. In a 2009 email, Jason Zabek, the executive managing the Abusé Group, a team tasked with addressing subscribers’ violations of Cox’s policies, explained to his team that “if a customer is términated for DMCA, you are able to reactivate them,” and that “[ajfter you reactivate them the DMCA ‘counter’ restarts.” The email continued, “This is to be an unwritten semi-policy.” Zabek also advised a customer service representative asking whether she could reactivate a terminated subscriber that “[i]f it is for DMCA you can go ahead and reactivate.” Zabek explained to another representative: “Once the customer has been terminated for DMCA, we have fulfilled the obligation of the DMCA safe harbor and can start over.” He elaborated that this would allow Cox to “collect a few extra weeks of payments for their account.;-).” Another email summarized Cox’s: practice more succinctly: “DMCA = reactivate.” As a result of this practice, from the beginning of the litigated time period until September 2012, Cox never terminated a subscriber for infringement without reactivating them.

Cox nonetheless contends that it lacked “actual knowledge” of its-subscribers’ infringement and therefore did not have to terminate them. That argument misses the *304mark. The evidence shows that Cox always reactivated subscribers after termination, regardless of its knowledge of the subscriber’s infringement. Cox did not, for example, advise employees not to reactivate a subscriber if the employees had reliable information regarding the subscriber’s repeat infringement. An ISP cannot claim the protections of the DMCA safe harbor provisions merely by terminating customers as a symbolic gesture before indiscriminately reactivating them within a short timeframe.

In September 2012, Cox abandoned its practice of routine reactivation. An internal email advised a new customer service representative that “we now terminate, for real.” BMG argues, however, that this was a change in form rather than substance, because instead of terminating and then reactivating subscribers, Cox simply stopped terminating them in the first place. The record evidence supports this view. Before September 2012, Cox was terminating (and reactivating) 15.5 subscribers per month on average; after September 2012, Cox abruptly began terminating less than one subscriber per month on average. From September 2012 until the end of October 2014, the month before BMG filed suit, Cox issued only 21 terminations in total. Moreover, at least 17 of those 21 terminations concerned subscribers who had either failed to pay their bills on time or used excessive bandwidth (something that Cox subjected to a strict three-strike termination policy). Cox did not provide evidence that the remaining four terminations were for repeat copyright infringement. But even assuming they were, they stand in stark contrast to the over 500,000 email warnings and temporary suspensions Cox issued to alleged infringers during the same time period.

Moreover, Cox dispensed with terminating subscribers who repeatedly infringed BMG’s copyrights in particular when it decided to delete automatically all infringement notices received from BMG’s agent, Rightscorp. As a result, Cox received none of the millions of infringement notices that Rightscorp sent to Cox on BMG’s behalf during the relevant period. Although our inquiry concerns Cox’s policy toward all of its repeatedly infringing subscribers, not just those who infringed BMG’s copyrights, Cox’s decision to categorically disregard all notices from Rightscorp provides further evidence that Cox did not reasonably implement a repeat infringer policy. See Ellison, 357 F.3d at 1080 (holding that “the district court erred in concluding on summary judgment that [the ISP] satisfied the requirements of § 512(i)” because the record showed that the ISP “allowed notices of potential copyright infringement to fall into a vacuum and to go unheeded,” indicating it “had not reasonably implemented its policy against repeat infringers”); Aimster, 334 F.3d at 655 (holding that a defendant who “disabled itself from doing anything to prevent infringement” did not reasonably implement a repeat infringer policy).

BMG also provided evidence of particular instances in which Cox failed to terminate subscribers whom Cox employees regarded as repeat infringers. For example, one subscriber “was advised to stop sharing ... and remove his PTP programs,” and a Cox employee noted that the subscriber was “well aware of his actions” and was “upset that ‘after years of doing this’ he is now getting caught.” Nonetheless, Cox did not terminate the subscriber. Another customer was advised that “further complaints would result in termination” and that it was the customer’s “absolute last chance to ... remove ALL” file-sharing software. But when Cox received another complaint, a manager directed the employee not to terminate, but rather to “suspend this Customer, one LAST time,” *305noting that “[t]his customer pays us over $400/month” and that “[e]very terminated Customer becomes lost revenue.”

Cox responds that these post-September 2012 emails do not necessarily “prove actual knowledge of repeat infringement.” Appellants Br. at 59. Again, that argument is misplaced. Cox bears the burden of proof on the DMCA safe harbor defense; thus, Cox had to point to evidence showing that it reasonably implemented a repeat in-fringer policy. The emails show that Cox internally concluded that a subscriber should be terminated after the next strike, but then declined to do so because it did not want to lose revenue. In other words, Cox failed to follow through on its own policy. Cox argues that these emails only concerned “four cases,” and that “occasional lapses” are forgivable. Id. at 58. But even four cases are significant when measured against Cox’s equally small total number of relevant terminations in this period—also four. More importantly, Cox did not produce any evidence of instances in which it did follow through on its policy and terminate subscribers after giving them a final warning to stop infringing.

In addition, Cox suggests that because the DMCA merely requires termination of repeat infringers in “appropriate circumstances,” Cox decided not to terminate certain subscribers only when “appropriate circumstances” were lacking. Appellants Br. at 56-57. But Cox failed to provide evidence that a determination of “appropriate circumstances” played any role in its decisions to terminate (or not to terminate). Cox did not, for example, point to any criteria that its employees used to determine whether “appropriate circumstances” for termination existed. Instead, the evidence shows that Cox’s decisions not to terminate had nothing to do with “appropriate circumstances” but instead were based on one goal: not losing revenue from paying subscribers.

Cox failed to qualify for the DMCA safe harbor because it failed to implement its policy in any consistent or meaningful way—leaving it essentially with no policy. Accordingly, the district court did not err in holding that Cox failed to offer evidence supporting its entitlement to the § 512(a) safe harbor defense and therefore granting summary judgment on this issue to BMG.

III.

We turn to Cox’s other principal challenge to the judgment: that the district court erred in instructing the jury as to contributory infringement. “We generally review a trial court’s ... jury instructions for abuse of discretion.” Coll. Loan Corp. v. SLM Corp., 396 F.3d 588, 595 (4th Cir. 2005). However, we review de novo whether jury instructions correctly state the law, see United States v. Cherry, 330 F.3d 658, 665 (4th Cir. 2003), because a trial court “by definition abuses its discretion when it makes an error of law,” Koon v. United States, 518 U.S. 81, 100, 116 S.Ct. 2035, 135 L.Ed.2d 392 (1996). Where an instruction is erroneous, we will set aside the verdict if “[tjhere is a reasonable probability” that the erroneous instruction “affected the jury’s verdict.” See Cherry, 330 F.3d at 660.

A.

Cox’s initial jury instruction argument rests on its contention that it cannot be held liable for contributory copyright infringement because its technology is “capable of substantial noninfringing use.” Appellants Br. at 15, 38. According to Cox, the district court erred in refusing “to instruct the jury on this principle.” Id. at 15.

*306This argument is meritless. Of course, the mere sale of a product that has both lawful and unlawful uses does not in and of itself establish an intent to infringe. That is the holding of Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). In Sony, copyright holders sought to hold Sony contributorily liable for selling video cassette recorders (VCRs) that customers used to tape copyrighted programs. Id. at 419-20, 104 S.Ct. 774. The Supreme Court rejected that claim, holding that because a VCR was “capable of commercially significant noninfringing uses,” its manufacturer, Sony, could not be held contributory liable for distribution of the VCR. Id. at 442, 104 S.Ct. 774.

A few courts initially interpreted Sony’s limitation, as Cox does, to 'mean that if a product can be substantially used lawfully, its producer cannot be contributorily liable for copyright infringement. See, e.g., Metro-Goldwyn-Mayer Studios, Inc. v. Grokster Ltd., 380 F.3d 1154, 1162 (9th Cir. 2004), vacated and remanded, 545 U.S. 913, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005); Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 262, 267 (5th Cir. 1988). But in Grokster, the Supreme Court rejected this broad reading. See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005). The Court clarified that “Sony barred secondary' liability based on presuming or imputing intent to cause infringement solely from the design or distribution of a product capable oí substantial lawful use, which the distributor knows is in fact used for infringement.” Id. at 933, 125 S.Ct. 2764 (emphasis added). The Grokster Court explained that under Sony, intent to infringe will not be presumed from “the equivocal conduct of selling an item with substantial lawful as well as unlawful uses,” even when the seller has the “understanding that some of [his or her] products will be misused.” Id. at 932-33, 125 S.Ct. 2764. More is needed. But the fact that a product is “capable of substantial lawful use” does not mean the “producer can never be held contributorily liable.” Id. at 934,125 S.Ct. 2764.

Exactly the same flaw infects Cox’s related argument that the district' court erred in refusing to instruct the jury that “[i]t is not a material contribution to provide a product or service that is capable of substantial non-infringing uses.” Appellants Br. 22-23. As the Supreme Court explained, reversal was required in Grok-ster because the Ninth Circuit had “read Sony’s limitation to mean that whenever a product is capable of substantial lawful use, the producer can never be held con-tributorily liable for .third parties’ infringing use of it .... [t]his view of Sony, however, was error.” Grokster, 545 U.S. at 934, 125 S.Ct 2764.

Because the instruction Cox requested misstates the law, the district court did not err in refusing to give.it. See United States v. Smoot, 690 F.3d 215, 223 (4th Cir. 2012). In fact, providing a product with “substantial non-infringing uses” can constitute a material contribution-to copyright infringement. See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007) (holding that Google’s image search engine “substantially assists websites to distribute their infringing copies” of copyrighted images, and thus constitutes a' material contribution, even though “Google’s assistance is available to all websites, not just infringing ones”). Grokster makes clear that what matters is not simply whether the product has some or even many non-infringing uses, but whether the product is distributed with the intent to cause copyright infringement. See Grokster, 545 U.S. at 934, 125 S.Ct. 2764 (“Sony’s rule limits imputing culpable in *307 tent as a matter of law from the characteristics or uses of a distributed product.” (emphasis added)).

Thus, contrary to Cox’s argument, the fact that its technology can be substantially employed for a noninfringing use does not immunize it from liability for contributory copyright infringement. The district court did not err in refusing to instruct the jury to the contrary.

B.

Alternatively, Cox offers a more nuanced attack on the contributory infringement instructions. Cox contends that the court erred in charging the jury as to the intent necessary to prove contributory infringement. Specifically, Cox challenges the district court’s instructions that the jury could impose liability for contributory infringement if the jury found “Cox knew or should have known of such infringing activity.” We agree that in so instructing the jury, the court erred.

i.

Grokster teaches that “[o]ne infringes contributorily by intentionally inducing or encouraging direct'"infringement.” 545 U.S. at 930, 125 S.Ct. 2764 (emphasis added). The requisite intent may, however, be presumed according to the “rules of fault-based liability derived from the common law.” Id. at 934-35, 125 S.Ct. 2764. The most relevant of these common law rules is that if a person “knows that the consequences are certain, or substantially certain, to result from his act, and still goes ahead, he is treated by the law as if he had in fact desired to produce the' result.” See Restatement (Second) of Torts § 8A cmt. b (1965); Grokster, 545 U.S. at 932, 125 S.Ct. 2764 (a person “will be presumed to'intend the natural consequences of his acts” (internal quotation marks and citation'omitted)). Under this principle, “when an article is good for nothing else but infringement ... there is no injustice in presuming or imputing an intent to infringe” based on its sale. Grokster, 546 U.S. at 932, 125 S.Ct. 2764 (internal quotation marks and citation omitted). Assuming the seller is aware of the nature of his product—that its only use is infringing—he knows that infringement is substantially certain to result from his sale of that product and he may therefore be presumed to intend that result.

A similar result follows when a person sells a product that has lawful uses, but with the knowledge that the buyer will in fact use the product to infringe copyrights. In that circumstance, the seller knows that infringement is substantially certain to result from the sale; consequently, the seller intends to cause infringement just as much as a seller who provides a ‘product that has exclusively unlawful uses. See Henry v. A.B. Dick Co., 224 U.S. 1, 32 S.Ct. 364, 56 L.Ed. 645 (1912), overruled on other grounds, Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 (1917). Indeed, Heúry, a hundréd-year-old Supreme Court case involving contributory patent , infringement . that the Supreme Court cited in Grokster, 545 U.S. at 932-33, 935, 125 S.Ct. 2764, and Sony, 464 U.S. at 441-42, 104 S.Ct. 774, rests on this very reasoning. There, the Court affirmed a judgment for contributory infringement based on the defendants’ sale to a specific person with knowledge that the product would be used to infringe, even though the product—ink—also had noninfringing uses. Henry, 224 U.S. at 48-49, 32 S.Ct. 364. The Court reasoned that because the ■ defendants sold the ink “with the expectation that it would be used” to infringe, “the purpose and intent that it would be so used” could be presumed. Id. at 49, 32 S.Ct. 364.

*308These principles apply equally in cases, like this one, that involve subscription services or rentals rather than one-time sales. Consider a company that leases VCRs, learns that specific customers use their VCRs to infringe, but nonetheless renews the lease to those infringing customers. Given those facts, the company knows that its action—renewing the lease of the VCR to these specific customers—is substantially certain to result in infringement, and so an intent to cause infringement may be presumed. See Amazon.com, 508 F.3d at 1172 (explaining that “intent may be imputed” based on “a service provider’s knowing failure to prevent infringing actions.”)

It is well-established that one mental state slightly less demanding than actual knowledge—willful blindness—can establish the requisite intent for contributory copyright infringement. This is so because the law recognizes willful blindness as equivalent to actual knowledge. See Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766, 131 S.Ct. 2060, 179 L.Ed.2d 1167 (2011) (“[PJersons who know enough to blind themselves to direct proof of critical facts in effect have actual knowledge of those facts.”); Aimster, 334 F.3d at 650 (“Willful blindness is knowledge, in copyright law ... as it is in the law generally”).

Whether other mental states— such as negligence (where a defendant “should have known” of infringement)— can suffice to prove contributory copyright infringement presents a more difficult question.4 The notion that contributory liability could be imposed based on something less than actual knowledge, or its equivalent, willful blindness, is not entirely without support. See Aimster, 334 F.3d at 650 (“[I]n copyright law ... indeed it may be enough that the defendant should have known of the direct infringement ....”) Nonetheless, we believe for several reasons, that, as Cox contends, negligence does not suffice to prove contributory infringement; rather, at least willful blindness is required.

First, Grokster’s recitation of the standard—that “[o]ne infringes contributorily by intentionally inducing or encouraging direct infringement”—is on its face difficult to reconcile with a negligence standard. See 545 U.S. at 930, 125 S.Ct. 2764 (emphasis added). In addition, it would have been unnecessary for the Court to discuss in detail the situations in which intent may be presumed, and those situations, like Sony, in which it may not, if liability did not require intent at all, but merely required negligence. See id. at 934, 125 S.Ct. 2764.

Looking to patent law, as the Supreme Court did in Sony and Grokster, further counsels against a negligence standard. The Supreme Court has long held that contributory patent infringement requires knowledge of direct infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964). And in 2011, the Court held that willful blindness satisfies this knowledge requirement, but recklessness (“one who merely knows of a substantial and unjustified risk of ... wrongdoing”) and negligence (“one who should have known of a similar risk but, in fact, did not”) do not. Global-Tech, 563 U.S. at 769-71, 131 S.Ct. 2060. The Court reaffirmed this holding in 2015, stating that contributory patent infringement “requires proof *309the defendant knew the acts were infringing,” and that Global-Tech “was clear in rejecting any lesser mental state as the standard.” Commil USA, LLC v. Cisco Sys., Inc., — U.S. —, 135 S.Ct. 1920, 1928, 191 L.Ed.2d 883 (2015). The Court expressly rejected the possibility “that a person, or entity, could be liable even though he did not know the acts were infringing.” Id. Thus, in the patent context, it is clear that contributory infringement cannot be based on a finding that a defendant “should have known” of infringement.

In both Grokster and Sony, the Supreme Court adopted now-codified patent law doctrines—the staple article doctrine and the inducement rule. The Court did so because of “the historic kinship between patent law and copyright law,” Sony, 464 U.S. at 439-42, 104 S.Ct. 774, and the similar need in both contexts to impose liability on “culpable expression and conduct” without “discouraging the development of technologies with lawful and unlawful potential,” Grokster, 545 U.S. at 936-37, 125 S.Ct. 2764. We are persuaded that the Global-Tech rule developed in the patent law context, which held that contributory liability can be based on willful blindness but not on recklessness or negligence, is a sensible one in the copyright context. It appropriately targets culpable conduct without unduly burdening technological development.5

The law of aiding and abetting, “the criminal counterpart to contributory infringement,” Aimster, 334 F.3d at 651, similarly militates against adoption of a negligence standard. A person “aids and abets a crime when ... he intends to facilitate that offense’s commission.” Rosemond v. United States, — U.S. —, 134 S.Ct. 1240, 1248, 188 L.Ed.2d 248 (2014). The necessary intent can be presumed only “when a person actively participates in a criminal venture with full knowledge of the circumstances constituting the charged offense.” Id. at 1248-49 (emphasis added).

Furthermore, “[t]he Restatement of Torts, under a concert of action principle, accepts a doctrine with rough similarity to criminal aiding and abetting,” and therefore provides another analog to contributory infringement. See Cent. Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A., 511 U.S. 164, 181, 114 S.Ct. 1439, 128 L.Ed.2d 119 (1994). “An actor is liable for harm resulting to a third person from the tortious conduct of another ‘if he knows that the other’s conduct constitutes a breach of duty and gives substantial assistance or encouragement to the other.’ ” Id. (quoting Restatement (Second) of Torts § 876(b) (1977)) (emphasis added). Because the Restatement here uses only the word “knows,” where in other places it uses phrases like “knows or should know,” it is clear that “knows” here refers to actual knowledge, not any lesser mental state. Compare Restatement (Second) of Torts § 876(b) with § 336 (“knows or has reason to know”) and § 366 (“knows or should know”). And the Second Circuit’s widely-cited Gershwin decision on contributory infringement *310expressly drew on precisely this “common law doctrine that one who knowingly participates or furthers a tortious act is jointly and severally liable with the prime tortfeasor.” Gershwin Publ’g. Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971) (internal quotation marks and citation omitted) (emphasis added).

We therefore hold that proving contributory infringement requires proof of at least willful blindness; negligence is insufficient.

ii.

In arguing to the contrary, BMG relies on a pr e-Grokster decision, Ellison v. Robertson,-in which the Ninth Circuit stated that some of its precedents had “interpreted the knowledge requirement for contributory copyright infringement to include both those with actual knowledge and those who have reason to know of direct infringement.” 357 F.3d 1072, 1076 (9th Cir. 2004). But the Ninth Circuit has since clarified,' consistent with our holding today, that contributory infringement requires “actual knowledge of specific acts of infringement” or “[wjillful blindness of specific-facts.” Ludvarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068, 1072-73 (9th Cir. 2013) (internal quotation marks and citation omitted).

BMG also argues that “Sony itself described a case where the defendant ‘knew or should have known’ of the infringement as a “situation! ] in which the imposition of [contributory] liability is manifestly just.” Appellee Br. 44-45 (Appellee’s alterations) (quoting Sony, 464 U.S. at 437-38, 437 n.18, 104 S.Ct. 774). BMG misreads Sony. The quoted sentence refers to vicarious liability, stating that imposing liability is “manifestly just” where the defendant can “control the use of copyrighted works by others,” Sony, 464 U.S. at 437-38, 104 S.Ct. 774—which is an element of vicarious liability, but not of contributory infringement, see Grokster, 545 U.S. at 930 n.9, 125 S.Ct. 2764.

In a footnote to that sentence, Sony cited numerous lower court cases, including one in which the district court held that an infringer’s.advertising, agency and-similar defendants could be held contribu-torily liable if they “knew or should have known that they were dealing in illegal goods.” 464 U.S. at 437 n.18, 104 S.Ct. 774 (citing Screen Gems-Columbia Music, Inc. v. Mark-Fi Records, Inc., 256 F.Supp. 399 (S.D.N.Y. 1966)). Although that district court used the phrase “knew or should have known,” the allegation in that case was that the defendants were dealing with counterfeit musical records priced “so suspiciously below the usual market price” that the defendants must have known or “deliberately closed [their] eyes” to the fact that the records were infringing. Screen Gems-Columbia Music, 256 F.Supp. at 404. In such circumstances, liability could be imposed' based on a theory of willful blindness, making it unnecessary to permit the imposition of liability based on a lesser negligence standard.

iii.

In sum, the district court erred in charging the jury that Cox could be found liable for contributory infringement if it “knew or should have known of such infringing activity.” The formulation “should have known” reflects negligence and is therefore too low a standard. And because there is a reasonable probability that this erroneous instruction affected the jury’s verdict, we remand-for a new trial. See United States v. Wilson, 133 F.3d 251, 265 (4th Cir. 1997) (“[T]he instructions did not adequately impose ... the burden of proving knowledge .... For this reason, a new *311trial is required.”).6

C.

Cox asserts two further errors in the district court’s contributory infringement instructions. Although Cox may not have adequately preserved these' errors for review, we address them in the interest of judicial economy to ensure the correctness of the contributory infringement instructions on remand. See Polk v. Yellow Freight Sys., Inc., 801 F.2d 190, 198 (6th Cir. 1986) (finding error in jury instructions and remanding for a new trial, explaining that “[although it appears that defendant may not have adequately preserved [the alleged errors in the jury instructions] for appeal, we nonetheless address them to ensure that the proper instructions are given on remand”).

First, Cox contends that the district court erred in instructing the jury that Cox could be held liable for contributory copyright infringement on the basis of proof of “direct infringement of BMG’s copyrighted works by users of Cox’s Internet services” and that Cox knew “of such activity.” See Appellants Br. at 24. Cox maintains that such “generalized knowledge—that infringement was occurring somewhere on its network—is exactly what falls short under Sony.” Id. at 27. We must agree.

Selling a product with both lawful and unlawful uses suggests an intent to cause infringement only if the seller knows of specific instances of infringement, but not .if the seller.only generally knows of infringement. See Ludvarts, 710 F.3d at 1072 (holding that contributory copyright infringement “requires more than a generalized knowledge ... of the possibility of infringement”; it requires “specific knowledge of infringement”). A seller who only generally knows of infringement is aware that “some of [his] products will be misused”—but critically, not which products will be misused. See Grokster, 545 U.S. at 932-33, 125 S.Ct. 2764. Thus, when that seller makes a sale to a specific customer, the seller knows only that the . customer may infringe, not that the customer is substantially certain to do so.

BMG does not dispute that the requisite mental state must be tied to specific infringements; it contends, however, that the court’s instructions in fact “tied knowledge to specific acts of direct infringement.” Appellee Br. at 50. BMG rests on the fact that the instruction required that Cox knew “of such infringing activity,” and that such infringing activity referred back-to “direct infringement of BMG’s copyrighted works by users of Cox’s Internet service.”

It does not follow, however, that a jury so instructed found that Cox had knowledge of specific infringements. For example, the jury could have found that Cox knew of “direct infringement of BMG’s copyrighted works” by its subscribers if Cox had data showing that some number' of Ms .subscribers were infringing BMG’s copyrights, even if the data did not show which ones were infringing. That level of generalized knowledge does not reflect an intent to cause infringement, because it is not knowledge that infringement is substantially certain to result from Cox’s continued, provision of Internet access to particular subscribers. Put another way, .the proper standard requires a defendant to have specific enough knowledge of in*312fringement that the defendant could do something about it. On remand, therefore, the contributory infringement instruction should require that Cox knew of specific instances of infringement or was willfully blind to such instances.

Relatedly, Cox challenges the district court’s willful blindness instruction. The court instructed the jury that Cox “acted with willful blindness if it was aware of a high probability that Cox users were infringing BMG’s copyrights but consciously avoided confirming that fact.” Since we have held that contributory infringement requires knowledge of, or willful blindness to, specific instances of infringement, the court’s willful blindness instruction should similarly require a conclusion that Cox consciously avoided learning about specific instances of infringement, not merely that Cox avoided confirming the fact that “Cox users were infringing BMG’s copyrights” in general.

D.

Although we have concluded that the district court incorrectly instructed the jury in some instances, we reject Cox’s argument that with proper instructions, it is entitled to judgment as a matter of law. The district court’s thoroughness and sure grasp of numerous complex issues provide a model of fair administration of justice. At trial, BMG offered powerful evidence from which a reasonable jury could find that Cox willfully blinded itself to specific instances of infringement by its subscribers, such as evidence that Cox prevented itself from receiving any of the more- than one million notices Rightscorp sent on BMG’s behalf. Indeed, that appears to be the primary theory for liability advanced by BMG. See Appellee Br. at 21 (“Cox was put on notice of—and willfully blinded itself to—millions of specific instances of unlawful sharing of BMG’s works by its subscribers .... ”). That determination, of course, must be made by a jury properly instructed as to the law. But the trial record provides no basis for judgment as a matter of law in Cox’s favor.

IV.

Cox advances several other claims of error. None have merit.

A

Cox challenges the district court’s willfulness instruction, arguing that it incorrectly required “the jury to analyze Cox’s knowledge of its subscribers’ actions,” rather than Cox’s knowledge that “its actions constitute an infringement.” Appellants Br. at 59.7 BMG contends that Cox failed to preserve this objection. We need not address whether Cox waived the objection because we reject it on the merits. Cox does not dispute that willfulness in copyright law is satisfied by recklessness, and the case law defines recklessness broadly. For example, we have explained that copyright infringement is willful if the defendant “recklessly disregards a copyright holder’s rights.” Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 799 (4th Cir. 2001). The Second Circuit has similarly held that a finding of willfulness is appropriate if “the defendant’s actions were the result of ‘reckless disregard’ for ... the copyright holder’s rights.” Island *313 Software & Comput. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 263 (2d Cir. 2005). Contributorily (or vicariously) infringing with knowledge that one’s subscribers are infringing is consistent with at least reckless disregard for the copyright holder’s rights.

Cox next argues that the court erred by declining to give an innocent infringer instruction. Again, we disagree. Innocent in-fringer status (which may reduce damages) is only available if the infringer can prove that he or she “had no reason to believe that his or her acts constituted an infringement.” 17 U.S.C. § 504(c)(2). For example, the Second Circuit upheld a district court’s conclusion as to innocent infringement where an infringing music wholesaler reasonably believed that it had received the right to make copies of copyrighted albums under an agreement with the copyright holder. See Bryant v. Media Right Prods., Inc., 603 F.3d 135, 143 (2d Cir. 2010). Cox does not suggest such circumstances were present here. The district court therefore correctly concluded that an innocent infringer instruction was not available to Cox.

Cox also challenges the district court’s DMCA instruction. At trial, witnesses and documents often referred to the DMCA and its safe harbor provisions. Because the court held Cox not entitled to any DMCA safe harbor defense at summary judgment, it instructed the jury that “the DMCA is not a defense in this case and must be disregarded.” Cox fails to show that this instruction—which is not a misstatement of the law—constitutes an abuse of discretion. Cox’s theory is that the instruction “suggested that Cox’s alleged failure to qualify for the DMCA defense made it liable for infringement.” Appellants Br. at 33. But the district court clearly instructed the jury that it alone would determine the facts and weigh the evidence. And indeed, the jury found Cox not liable for vicarious infringement, suggesting it was not so easily confused.

B.

We also reject Cox’s assertions that the district court erred in its evidentiary rulings, which we review for abuse of discretion. See Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997).

Cox unpersuasively argues that the court abused its discretion by admitting Rightscorp’s notices because the notices were hearsay. The district court correctly concluded that the information contained in the notices was not hearsay because it was generated by a computer and thus was not a “statement.” See United States v. Washington, 498 F.3d 225, 231 (4th Cir. 2007) (“Only a person may be a declarant and make a statement. Accordingly, ‘nothing “said” by a machine is hear-say”’ (quoting 4 Mueller & Kirkpatrick, Federal Evidence, § 380, at 65 (2d ed. 1994))). Contrary to Cox’s argument, the fact that the machine-generated notices also contained the signature of Rightscorp’s CEO and an oath under penalty of perjury does not transform them into statements, since the information itself was not prepared or created by a human.

Nor were the notices excludable as more prejudicial than probative under Federal Rule of Evidence 403. The notices were certainly probative, and although they disfavored Cox’s position, Cox fails to demonstrate that they were “unfairly prejudicial.” See PBM Prods., LLC v. Mead Johnson & Co., 639 F.3d 111, 124 (4th Cir. 2011). “The ‘mere fact that the evidence will damage the defendant’s case is not enough’ ” to establish unfair prejudice. Id. (quoting United States v. *314 Williams, 445 F.3d 724, 730 (4th Cir. 2006)).

Cox next faults the district court for admitting two studies examining how much of the content shared using BitTor-rent is infringing. Cox argues that the court erred by admitting these studies under Federal Rule of Evidence 803(17), the hearsay exception for “compilations that are generally relied on ... by persons in particular occupations.” Given that BMG’s expert, Dr. William Lehr, testified that the two studies “were widely cited in the industry” and were “the most substantial published publicly available studies” on the issue, the court did not abuse'its discretion.

Finally, Cox contends that the district court erroneously “allowed BMG’s witnesses and attorneys to use the term ‘infringement’ pervasively when referring to Rightscorp’s automated observations.” Appellants Br. at 32. But as we have explained above, the court clearly and carefully instructed the jurors that they alone could determine infringement. The court even interrupted BMG’s expert testimony to instruct the jury that BMG’s' expert was using the word infringement to describe “the contents in the notices,” but that the jury would “be making the ultimate decision” on infringement. Accordingly, the cour,t did not abuse its discretion.

V.

For the reasons stated above, we affirm the district court’s grant of summary judgment to BMG on the § 512(a) DMCA safe harbor defense, but reverse and remand for a new trial. We also vacate the district court’s grant of attorney’s fees and costs to BMG and its denial of fees and costs to Cox.

AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, AND REMANDED

SACK, Circuit Judge:

eBay, Inc. (“eBay”), through its eponymous online marketplace, has revolutionized the online sale of goods, especially used goods. It has facilitated the buying and selling by hundreds of millions of people and entities, to their benefit and eBay’s profit. But that marketplace is sometimes employed by users as a means to perpetrate fraud by selling counterfeit goods.

Plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (together, “Tiffany”) have created and cultivated a brand of jewelry bespeaking high-end quality and style. Based on Tiffany’s concern that some use eBay’s website to sell counterfeit Tiffany merchandise, Tiffany has instituted this action against eBay, asserting various causes of action- — -sounding in trademark infringement, trademark dilution and false advertising — arising from eBay’s advertising and listing practices. For the reasons set forth below, we affirm the district court’s judgment with respect to Tiffany’s claims of trademark infringement and dilution but remand for further proceedings with respect to Tiffany’s false advertising claim.

BACKGROUND

By opinion dated July 14, 2008, following a week-long bench trial, the United States District Court for the Southern District of New York (Richard J. Sullivan, Judge) set forth its findings of fact and conclusions of law. Tiffany (NJ) Inc. v. eBay, Inc., 576 F.Supp.2d 463 (S.D.N.Y.2008) (“Tiffany ”). When reviewing a judgment following a bench trial in the district court, we review the court’s findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir.2009). Except where noted otherwise, we conclude that the district court’s findings of fact are not clearly erroneous. We therefore rely upon those non-erroneous findings in setting forth the facts of, and considering, this dispute.

eBay

eBay1 is the proprietor of www.ebay. com, an Internet-based marketplace that *97allows those who register with it to purchase goods from and sell goods to one another. It “connect[s] buyers and sellers and [] enable[s] transactions, which are carried out directly between eBay members.” Tiffany, 576 F.Supp.2d at 475.2 In its auction and listing services, it “provides the venue for the sale [of goods] and support for the transaction[s], [but] it does not itself sell the items” listed for sale on the site, id. at 475, nor does it ever take physical possession of them, id. Thus, “eBay generally does not know whether or when an item is delivered to the buyer.” Id.

eBay has been enormously successful. More than six million new listings are posted on its site daily. Id. At any given time it contains some 100 million listings. Id.

eBay generates revenue by charging sellers to use its listing services. For any listing, it charges an “insertion fee” based on the auction’s starting price for the goods being sold and ranges from $0.20 to $4.80. Id. For any completed sale, it charges a “final value fee” that ranges from 5.25% to 10% of the final sale price of the item. Id. Sellers have the option of purchasing, at additional cost, features “to differentiate their listings, such as a border or bold-faced type.” Id.

eBay also generates revenue through a company named PayPal, which it owns and which allows users to process their purchases. PayPal deducts, as a fee for each transaction that it processes, 1.9% to 2.9% of the transaction amount, plus $0.30. Id. This gives eBay an added incentive to increase both the volume and the price of the goods sold on its website. Id.

Tffany

Tiffany is a world-famous purveyor of, among other things, branded jewelry. Id. at 471-72. Since 2000, all new Tiffany jewelry sold in the United States has been available exclusively through Tiffany’s retail stores, catalogs, and website, and through its Corporate Sales Department. Id. at 472-73. It does not use liquidators, sell overstock merchandise, or put its goods on sale at discounted prices. Id. at 473. It does not — nor can it, for that matter — control the “legitimate secondary market in authentic Tiffany silvery jewelry,” i.e., the market for second-hand Tiffany wares. Id. at 473. The record developed at trial “offere[d] little basis from which to discern the actual availability of authentic Tiffany silver jewelry in the secondary market.” Id. at 474.

Sometime before 2004, Tiffany became aware that counterfeit Tiffany merchandise was being sold on eBay’s site. Prior to and during the course of this litigation, Tiffany conducted two surveys known as “Buying Programs,” one in 2004 and another in 2005, in an attempt to assess the extent of this practice. Under those programs, Tiffany bought various items on eBay and then inspected and evaluated them to determine how many were counterfeit. Id. at 485. Tiffany found that 73.1% of the purported Tiffany goods purchased in the 2004 Buying Program and 75.5% of those purchased in the 2005 Buying Program were counterfeit. Id. The district court concluded, however, that the Buying Programs were “methodologically flawed and of questionable value,” id. at 512, and “provide[d] limited evidence as to the total percentage of counterfeit goods available on eBay at any given time,” id. at 486. The court nonetheless decided that during the period in which the Buying *98Programs were in effect, a “significant portion of the ‘Tiffany’ sterling silver jewelry listed on the eBay website ... was counterfeit,” id., and that eBay knew “that some portion of the Tiffany goods sold on its website might be counterfeit,” id. at 507. The court found, however, that “a substantial number of authentic Tiffany goods are [also] sold on eBay.” Id. at 509.

Reducing or eliminating the sale of all second-hand Tiffany goods, including genuine Tiffany pieces, through eBay’s website would benefit Tiffany in at least one sense: It would diminish the competition in the market for genuine Tiffany merchandise. See id. at 510 n. 36 (noting that “there is at least some basis in the record for eBay’s assertion that one of Tiffany’s goals in pursuing this litigation is to shut down the legitimate secondary market in authentic Tiffany goods”). The immediate effect would be loss of revenue to eBay, even though there might be a countervailing gain by eBay resulting from increased consumer confidence about the bona fides of other goods sold through its website. Anti-Counterfeiting Measures

Because eBay facilitates many sales of Tiffany goods, genuine and otherwise, and obtains revenue on every transaction, it generates substantial revenues from the sale of purported Tiffany goods, some of which are counterfeit. “eBay’s Jewelry & Watches category manager estimated that, between April 2000 and June 2004, eBay earned $4.1 million in revenue from completed listings with ‘Tiffany’ in the listing title in the Jewelry & Watches category.” Id. at 481. Although eBay was generating revenue from all sales of goods on its site, including counterfeit goods, the district court found eBay to have “an interest in eliminating counterfeit Tiffany merchandise from eBay ... to preserve the reputation of its website as a safe place to do business.” Id. at 469. The buyer of fake Tiffany goods might, if and when the forgery was detected, fault eBay. Indeed, the district court found that “buyers ... complainfed] to eBay” about the sale of counterfeit Tiffany goods. Id. at 487. “[D]uring the last six weeks of 2004, 125 consumers complained to eBay about purchasing ‘Tiffany’ items through the eBay website that they believed to be counterfeit.” Id.

Because eBay “never saw or inspected the merchandise in the listings,” its ability to determine whether a particular listing was for counterfeit goods was limited. Id. at 477-78. Even had it been able to inspect the goods, moreover, in many instances it likely would not have had the expertise to determine whether they were counterfeit. Id. at 472 n. 7 (“[I]n many instances, determining whether an item is counterfeit will require a physical inspection of the item, and some degree of expertise on the part of the examiner.”).

Notwithstanding these limitations, eBay spent “as much as $20 million each year on tools to promote trust and safety on its website.” Id. at 476. For example, eBay and PayPal set up “buyer protection programs,” under which, in certain circumstances, the buyer would be reimbursed for the cost of items purchased on eBay that were discovered not to be genuine. Id. at 479. eBay also established a “Trust and Safety” department, with some 4,000 employees “devoted to trust and safety” issues, including over 200 who “focus exclusively on combating infringement” and 70 who “work exclusively with law enforcement.” Id. at 476.

By May 2002, eBay had implemented a “fraud engine,” “which is principally dedicated to ferreting out illegal listings, including counterfeit listings.” Id. at 477. eBay had theretofore employed manual searches for keywords in listings in an effort to “identify blatant instances of po*99tentially infringing ... activity.” Id. “The fraud engine uses rules and complex models that automatically search for activity that violates eBay policies.” Id. In addition to identifying items actually advertised as counterfeit, the engine also incorporates various filters designed to screen out less-obvious instances of counterfeiting using “data elements designed to evaluate listings based on, for example, the seller’s Internet protocol address, any issues associated with the seller’s account on eBay, and the feedback the seller has received from other eBay users.” Id. In addition to general filters, the fraud engine incorporates “Tiffany-specific filters,” including “approximately 90 different keywords” designed to help distinguish between genuine and counterfeit Tiffany goods. Id. at 491. During the period in dispute,3 eBay also “periodically conducted [manual] reviews of listings in an effort to remove those that might be selling counterfeit goods, including Tiffany goods.” Id.

For nearly a decade, including the period at issue, eBay has also maintained and administered the ‘Verified Rights Owner (‘VeRO’) Program” — a “ ‘notice-and-take-down’ system” allowing owners of intellectual property rights, including Tiffany, to “report to eBay any listing offering potentially infringing items, so that eBay could remove such reported listings.” Id. at 478. Any such rights-holder with a “good-faith belief that [a particular listed] item infringed on a copyright or a trademark” could report the item to eBay, using a “Notice Of Claimed Infringement form or NOCI form.” Id. During the period under consideration, eBay’s practice was to remove reported listings within twenty-four hours of receiving a NOCI, but eBay in fact deleted seventy to eighty percent of them within twelve hours of notification. Id.

On receipt of a NOCI, if the auction or sale had not ended, eBay would, in addition to removing the listing, cancel the bids and inform the seller of the reason for the cancellation. If bidding had ended, eBay would retroactively cancel the transaction. Id. In the event of a cancelled auction, eBay would refund the fees it had been paid in connection with the auction. Id. at 478-79.

In some circumstances, eBay would reimburse the buyer for the cost of a purchased item, provided the buyer presented evidence that the purchased item was counterfeit. Id. at 479.4 During the relevant time period, the district court found, eBay “never refused to remove a reported Tiffany listing, acted in good faith in responding to Tiffany’s NOCIs, and always provided Tiffany with the seller’s contact information.” Id. at 488.

In addition, eBay has allowed rights owners such as Tiffany to create an “About Me” webpage on eBay’s website “to inform eBay users about their products, intellectual property rights, and legal positions.” Id. at 479. eBay does not exercise control over the content of those pages in a manner material to the issues before us.

Tiffany, not eBay, maintains the Tiffany “About Me” page. With the headline *100“BUYER BEWARE,” the page begins: “Most of the purported TIFFANY & CO. silver jewelry and packaging available on eBay is counterfeit.” Pl.’s Ex. 290 (bold face type in original). It also says, inter alia:

The only way you can be certain that you are purchasing a genuine TIFFANY & CO. product is to purchase it from a Tiffany & Co. retail store, via our website (www.tiffany.com) or through a Tiffany & Co. catalogue. Tiffany & Co. stores do not authenticate merchandise. A good jeweler or appraiser may be able to do this for you.

Id.

In 2003 or early 2004, eBay began to use “special warning messages when a seller attempted to list a Tiffany item.” Tiffany, 576 F.Supp.2d at 491. These messages “instructed the seller to make sure that the item was authentic Tiffany merchandise and informed the seller that eBay ‘does not tolerate the listing of replica, counterfeit, or otherwise unauthorized items’ and that violation of this policy ‘could result in suspension of [the seller’s] account.’ ” Id. (alteration in original). The messages also provided a link to Tiffany’s “About Me” page with its “buyer beware” disclaimer. Id. If the seller “continued to list an item despite the warning, the listing was flagged for review.” Id.

In addition to cancelling particular suspicious transactions, eBay has also suspended from its website “ ‘hundreds of thousands of sellers every year,’ tens of thousands of whom were suspected [of] having engaged in infringing conduct.” Id. at 489. eBay primarily employed a “ ‘three strikes rule’ ” for suspensions, but would suspend sellers after the first violation if it was clear that “the seller ‘listed a number of infringing items,’ and ‘[selling counterfeit merchandise] appears to be the only thing they’ve come to eBay to do.’ ” Id. But if “a seller listed a potentially infringing item but appeared overall to be a legitimate seller, the ‘infringing items [were] taken down, and the seller [would] be sent a warning on the first offense and given the educational information, [and] told that ... if they do this again, they will be suspended from eBay.’ ” Id. (alterations in original).5

By late 2006, eBay had implemented additional anti-fraud measures: delaying the ability of buyers to view listings of certain brand names, including Tiffany’s, for 6 to 12 hours so as to give rights-holders such as Tiffany more time to review those listings; developing the ability to assess the number of items listed in a given listing; and restricting one-day and three-day auctions and cross-border trading for some brand-name items. Id. at 492.

The district court concluded that “eBay consistently took steps to improve its technology and develop anti-fraud measures as such measures became technologically feasible and reasonably available.” Id. at 493.

eBay’s Advertising

At the same time that eBay was attempting to reduce the sale of counterfeit *101items on its website, it actively sought to promote sales of premium and branded jewelry, including Tiffany merchandise, on its site. Id. at 479-80. Among other things,

eBay “advised its sellers to take advantage of the demand for Tiffany merchandise as part of a broader effort to grow the Jewelry & Watches category.” Id. at 479. And prior to 2003, eBay advertised the availability of Tiffany merchandise on its site. eBay’s advertisements trumpeted “Mother’s Day Gifts!,” Pl.’s Exs. 392, 1064, a “Fall FASHION BRAND BLOWOUT,” PL’s Ex. 392, “Jewelry Best Sellers,” id., “GREAT BRANDS, GREAT PRICES,” PL’s Ex. 1064, or “Top Valentine’s Deals,” PL’s Ex. 392, among other promotions. It encouraged the viewer to “GET THE FINER THINGS.” PL’s Ex. 392. These advertisements provided the reader with hyperlinks, at least one of each of which was related to Tiffany merchandise — “Tiffany,” “Tiffany & Co. under $150,” “Tiffany & Co,” “Tiffany Rings,” or “Tiffany & Co. under $50.” PL’s Exs. 392,1064.

eBay also purchased sponsored-link advertisements on various search engines to promote the availability of Tiffany items on its website. Tiffany, 576 F.Supp.2d at 480. In one such case, in the form of a printout of the results list from a search on Yahoo! for “tiffany,” the second sponsored link read “Tiffany on eBay. Find tiffany items at low prices. With over 5 million items for sale every day, you’ll find all kinds of unique [unreadable] Marketplace. www.ebay.com.” PL’s Ex. 1065 (bold face type in original). Tiffany complained to eBay of the practice in 2003, and eBay told Tiffany that it had ceased buying sponsored links. Tiffany, 576 F.Supp.2d at 480. The district court found, however, that eBay continued to do so indirectly through a third party. Id.

Procedural History

By amended complaint dated July 15, 2004, Tiffany initiated this action. It alleged, inter alia, that eBay’s conduct — i.e., facilitating and advertising the sale of “Tiffany” goods that turned out to be counterfeit — constituted direct and contributory trademark infringement, trademark dilution, and false advertising. On July 14, 2008, following a bench trial, the district court, in a thorough and thoughtful opinion, set forth its findings of fact and conclusions of law, deciding in favor of eBay on all claims.

Tiffany appeals from the district court’s judgment for eBay.

DISCUSSION

We review the district court’s findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir.2009).

I. Direct Trademark Infringement

Tiffany alleges that eBay infringed its trademark in violation of section 32 of the Lanham Act.6 The district court described this as a claim of “direct trade*102mark infringement,” Tiffany, 576 F.Supp.2d at 493, and we adopt that terminology. Under section 32, “the owner of a mark registered with the Patent and Trademark Office can bring a civil action against a person alleged to have used the mark without the owner’s consent.” ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 145-46 (2d Cir.), cert. denied, 552 U.S. 827, 128 S.Ct. 288, 169 L.Ed.2d 38 (2007). We analyze such a claim “under a familiar two-prong test. The test looks first to whether the plaintiffs mark is entitled to protection, and second to whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.” Savin Corp. v. Savin Group, 391 F.3d 439, 456 (2d Cir.2004) (alterations incorporated and ellipses omitted), cert. denied, 546 U.S. 822, 126 S.Ct. 116, 163 L.Ed.2d 64 (2005).

In the district court, Tiffany argued that eBay had directly infringed its mark by using it on eBay’s website and by purchasing sponsored links containing the mark on Google and Yahoo! Tiffany, 576 F.Supp.2d at 494. Tiffany also argued that eBay and the sellers of the counterfeit goods using its site were jointly and severally liable. Id. The district court rejected these arguments on the ground that eBay’s use of Tiffany’s mark was protected by the doctrine of nominative fair use. Id. at 494-95.

The doctrine of nominative fair use allows “[a] defendant [to] use a plaintiffs trademark to identify the plaintiffs goods so long as there is no likelihood of confusion about the source of [the] defendant’s product or the mark-holder’s sponsorship or affiliation.” Merck & Co. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402, 413 (S.D.N.Y.2006). The doctrine apparently originated in the Court of Appeals for the Ninth Circuit. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir.1992). To fall within the protection, according to that court: “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id. at 308.

The Court of Appeals for the Third Circuit has endorsed these principles. See Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 222 (3d Cir.2005).7 We have referred to the doctrine, albeit without adopting or rejecting it. See, e.g., Chambers v. Time Warner, Inc., 282 F.3d 147, 156 (2d Cir.2002) (noting that the district court had “[a]ppl[ied] the standard for non-trademark or ‘nominative’ fair use set forth by the Ninth Circuit”). Other circuits have done similarly. See, e.g., Univ. Commc’n Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 424 (1st Cir.2007); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 547 (5th Cir.1998), abrogated on other grounds by TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001).

We need not address the viability of the doctrine to resolve Tiffany’s claim, however. We have recognized that a defendant may lawfully use a plaintiffs trademark where doing so is necessary to describe the plaintiffs product and does not imply a false affiliation or endorsement *103by the plaintiff of the defendant. “While a trademark conveys an exclusive right to the use of a mark in commerce in the area reserved, that right generally does not prevent one who trades a branded product from accurately describing it by its brand name, so long as the trader does not create confusion by implying an affiliation with the owner of the product.” Dow Jones & Co. v. Int’l Sec. Exch., Inc., 451 F.3d 295, 308 (2d Cir.2006); see also Polymer Tech. Corp. v. Mimran, 975 F.2d 58, 61-62 (2d Cir.1992) (“As a general rule, trademark law does not reach the sale of genuine goods bearing a true mark even though the sale is not authorized by the mark owner” (footnote omitted)); cf. Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 68 L.Ed. 731 (1924) (when a “mark is used in a way that does not deceive the public,” there is “no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.”).

We agree with the district court that eBay’s use of Tiffany’s mark on its website and in sponsored links was lawful. eBay used the mark to describe accurately the genuine Tiffany goods offered for sale on its website. And none of eBay’s uses of the mark suggested that Tiffany affiliated itself with eBay or endorsed the sale of its products through eBay’s website.

In addition, the “About Me” page that Tiffany has maintained on eBay’s website since 2004 states that “[m]ost of the purported ‘TIFFANY & CO.’ silver jewelry and packaging available on eBay is counterfeit.” Tiffany, 576 F.Supp.2d at 479 (internal quotation marks omitted). The page further explained that Tiffany itself sells its products only through its own stores, catalogues, and website. Id.

Tiffany argues, however, that even if eBay had the right to use its mark with respect to the resale of genuine Tiffany merchandise, eBay infringed the mark because it knew or had reason to know that there was “a substantial problem with the sale of counterfeit [Tiffany] silver jewelry” on the eBay website. Appellants’ Br. 45. As we discuss below, eBay’s knowledge vel non that counterfeit Tiffany wares were offered through its website is relevant to the issue of whether eBay contributed to the direct infringement of Tiffany’s mark by the counterfeiting vendors themselves, or whether eBay bears liability for false advertising. But it is not a basis for a claim of direct trademark infringement against eBay, especially inasmuch as it is undisputed that eBay promptly removed all listings that Tiffany challenged as counterfeit and took affirmative steps to identify and remove illegitimate Tiffany goods. To impose liability because eBay cannot guarantee the genuineness of all of the purported Tiffany products offered on its website would unduly inhibit the lawful resale of genuine Tiffany goods.

We conclude that eBay’s use of Tiffany’s mark in the described manner did not constitute direct trademark infringement.

II. Contributory Trademark Infringement

The more difficult issue, and the one that the parties have properly focused our attention on, is whether eBay is liable for contributory trademark infringement — i.e., for culpably facilitating the infringing conduct of the counterfeiting vendors. Acknowledging the paucity of case law to guide us, we conclude that the district court correctly granted judgment on this issue in favor of eBay.

A. Principles

Contributory trademark infringement is a judicially created doctrine that derives from the common law of torts. See, e.g., Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1148 *104(7th Cir.1992); cf. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005) (“[T]hese doctrines of secondary liability emerged from common law principles and are well established in the law.”) (citations omitted). The Supreme Court most recently dealt with the subject in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). There, the plaintiff, Ives, asserted that several drug manufacturers had induced pharmacists to mislabel a drug the defendants produced to pass it off as Ives’. See id. at 847-50, 102 S.Ct. 2182. According to the Court, “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 eontributorially responsible for any harm done as a result of the deceit.” Id. at 854, 102 S.Ct. 2182.8 The Court ultimately decided to remand the case to the Court of Appeals after concluding it had improperly rejected factual findings of the district court favoring the defendant manufacturers. Id. at 857-59, 102 S.Ct. 2182.

Inwood’s test for contributory trademark infringement applies on its face to manufacturers and distributors of goods. Courts have, however, extended the test to providers of services.

The Seventh Circuit applied Inwood to a lawsuit against the owner of a swap meet, or “flea market,” whose vendors were alleged to have sold infringing Hard Rock Café T-shirts. See Hard Rock Café, 955 F.2d at 1148-49. The court “treated trademark infringement as a species of tort,” id. at 1148, and analogized the swap meet owner to a landlord or licensor, on whom the common law “imposes the same duty ... [as Inwood ] imposefs] on manufacturers and distributors,” id. at 1149; see also Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996) (adopting Hard Rock Café’s reasoning and applying Inwood to a swap meet owner).

Speaking more generally, the Ninth Circuit concluded that Inwood’s test for contributory trademark infringement applies to a service provider if he or she exercises sufficient control over the infringing conduct. Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th *105Cir.1999); see also id. (“Direct control and monitoring of the instrumentality used by a third party to infringe the plaintiffs mark permits the expansion of Inwood Lab.’s ‘supplies a product’ requirement for contributory infringement.”).

We have apparently addressed contributory trademark infringement in only two related decisions, see Polymer Tech. Corp. v. Mimran, 975 F.2d 58, 64 (2d Cir.1992) (“Polymer I”); Polymer Tech. Corp. v. Mimran, 37 F.3d 74, 81 (2d Cir.1994) (“Polymer II”), and even then in little detail. Citing Inwood, we said that “[a] distributor who intentionally induces another to infringe a trademark, or continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, is contributorially liable for any injury.” Polymer I, 975 F.2d at 64.

The limited case law leaves the law of contributory trademark infringement ill-defined. Although we are not the first court to consider the application of Inwood to the Internet, see, e.g., Lockheed, 194 F.3d 980, supra (Internet domain name registrar), we are apparently the first to consider its application to an online marketplace.9

B. Discussion

1. Does Inwood Apply ?

In the district court, the parties disputed whether eBay was subject to the In-wood test. See Tiffany, 576 F.Supp.2d at 504. eBay argued that it was not because it supplies a service while Inwood governs only manufacturers and distributors of products. Id. The district court rejected that distinction. It adopted instead the reasoning of the Ninth Circuit in Lockheed to conclude that Inwood applies to a service provider who exercises sufficient control over the means of the infringing conduct. Id. at 505-06. Looking “to the extent of the control exercised by eBay over its sellers’ means of infringement,” the district court concluded that Inwood applied in light of the “significant control” eBay retained over the transactions and listings facilitated by and conducted through its website. Id. at 505-07.

On appeal, eBay no longer maintains that it is not subject to Inwood.10 We *106therefore assume without deciding that In-wood’s test for contributory trademark infringement governs.

2. Is eBay Liable Under Inwood?

The question that remains, then, is whether eBay is liable under the Inwood test on the basis of the services it provided to those who used its website to sell counterfeit Tiffany products. As noted, when applying Inwood to service providers, there are two ways in which a defendant may become contributorially liable for the infringing conduct of another: first, if the service provider “intentionally induces another to infringe a trademark,” and second, if the service provider “continues to supply its [service] to one whom it knows or has reason to know is engaging in trademark infringement.” Inwood, 456 U.S. at 854, 102 S.Ct. 2182. Tiffany does not argue that eBay induced the sale of counterfeit Tiffany goods on its website— the circumstances addressed by the first part of the Inwood test. It argues instead, under the second part of the Inwood test, that eBay continued to supply its services to the sellers of counterfeit Tiffany goods while knowing or having reason to know that such sellers were infringing Tiffany’s mark.

The district court rejected this argument. First, it concluded that to the extent the NOCIs that Tiffany submitted gave eBay reason to know that particular listings were for counterfeit goods, eBay did not continue to carry those listings once it learned that they were specious. Tiffany, 576 F.Supp.2d at 515-16. The court found that eBay’s practice was promptly to remove the challenged listing from its website, warn sellers and buyers, cancel fees it earned from that listing, and direct buyers not to consummate the sale of the disputed item. Id. at 516. The court therefore declined to hold eBay contributorially liable for the infringing conduct of those sellers. Id. at 518. On appeal, Tiffany does not appear to challenge this conclusion. In any event, we agree with the district court that no liability arises with respect to those terminated listings.

Tiffany disagrees vigorously, however, with the district court’s further determination that eBay lacked sufficient knowledge of trademark infringement by sellers behind other, non-terminated listings to provide a basis for Inwood liability. Tiffany argued in the district court that eBay knew, or at least had reason to know, that counterfeit Tiffany goods were being sold ubiquitously on its website. Id. at 507-08. As evidence, it pointed to, inter alia, the demand letters it sent to eBay in 2003 and 2004, the results of its Buying Programs that it shared with eBay, the thousands of NOCIs it filed with eBay alleging its good faith belief that certain listings were counterfeit, and the various complaints eBay received from buyers claiming that they had purchased one or more counterfeit Tiffany items through eBay’s website. Id. at 507. Tiffany argued that taken together, this evidence established eBay’s knowledge of the widespread sale of counterfeit Tiffany products on its website. Tiffany urged that eBay be held contributorially liable on the basis that despite that knowledge, it continued to make its services available to infringing sellers. Id. at 507-08.

The district court rejected this argument. It acknowledged that “[t]he evidence produced at trial demonstrated that eBay had generalized notice that some portion of the Tiffany goods sold on its website might be counterfeit.” Id. at 507 (emphasis in original). The court charac*107terized the issue before it as “whether eBay’s generalized knowledge of trademark infringement on its website was sufficient to meet the ‘knowledge or reason to know5 prong of the Inwood test.” Id. at 508 (emphasis in original). eBay had argued that “such generalized knowledge is insufficient, and that the law demands more specific knowledge of individual instances of infringement and infringing sellers before imposing a burden upon eBay to remedy the problem.” Id.

The district court concluded that “while eBay clearly possessed general knowledge as to counterfeiting on its website, such generalized knowledge is insufficient under the Inwood test to impose upon eBay an affirmative duty to remedy the problem.” Id. at 508. The court reasoned that In-wood’s language explicitly imposes contributory liability on a defendant who “continues to supply its product [ — in eBay’s case, its service — ] to one whom it knows or has reason to know is engaging in trademark infringement.” Id. at 508 (emphasis in original). The court also noted that plaintiffs “bear a high burden in establishing ‘knowledge’ of contributory infringement,” and that courts have

been reluctant to extend contributory trademark liability to defendants where there is some uncertainty as to the extent or the nature of the infringement. In Inwood, Justice White emphasized in his concurring opinion that a defendant is not “require[d] ... to refuse to sell to dealers who merely might pass off its goods.”

Id. at 508-09 (quoting Inwood, 456 U.S. at 861, 102 S.Ct. 2182) (White, J., concurring) (emphasis and alteration in original).11

Accordingly, the district court concluded that for Tiffany to establish eBay’s contributory liability, Tiffany would have to show that eBay “knew or had reason to know of specific instances of actual infringement” beyond those that it addressed upon learning of them. Id. at 510. Tiffany failed to make such a showing.

On appeal, Tiffany argues that the distinction drawn by the district court between eBay’s general knowledge of the sale of counterfeit Tiffany goods through its website, and its specific knowledge as to which particular sellers were making such sales, is a “false” one not required by the law. Appellants’ Br. 28. Tiffany posits that the only relevant question is “whether all of the knowledge, when taken together, puts [eBay] on notice that there is a substantial problem of trademark infringement. If so and if it fails to act, [eBay] is liable for contributory trademark infringement.” Id. at 29.

We agree with the district court. For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.

We are not persuaded by Tiffany’s proposed interpretation of Inwood. Tiffany understands the “lesson of Inwood ” to be that an action for contributory trademark infringement lies where “the evidence [of infringing activity] — direct or circumstantial, taken as a whole — ... provide[s] a basis for finding that the defendant knew or should have known that its product or service was being used to further illegal counterfeiting activity.” Appellants’ Br. 80. We think that Tiffany reads Inwood too broadly. Although the Inwood Court articulated a “knows or has reason to *108know” prong in setting out its contributory liability test, the Court explicitly declined to apply that prong to the facts then before it. See Inwood, 456 U.S. at 852 n. 12, 102 S.Ct. 2182 (“The District Court also found that the petitioners did not continue to provide drugs to retailers whom they knew or should have known were engaging in trademark infringement. The Court of Appeals did not discuss that finding, and we do not address it.”) (internal citation omitted). The Court applied only the inducement prong of the test. See id. at 852-59,102 S.Ct. 2182.

We therefore do not think that Inwood establishes the contours of the “knows or has reason to know” prong. Insofar as it speaks to the issue, though, the particular phrasing that the Court used — that a defendant will be liable if it “continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement,” id. at 854, 102 S.Ct. 2182 (emphasis added) — supports the district court’s interpretation of Inwood, not Tiffany’s.

We find helpful the Supreme Court’s discussion of Inwood in a subsequent copyright case, Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). There, defendant Sony manufactured and sold home video tape recorders. Id. at 419, 104 S.Ct. 774. Plaintiffs Universal Studios and Walt Disney Productions held copyrights on various television programs that individual television-viewers had taped using the defendant’s recorders. Id. at 419-20, 104 S.Ct. 774. The plaintiffs contended that this use of the recorders constituted copyright infringement for which the defendants should be held contributorily liable. Id. In ruling for the defendants, the Court discussed Inwood and the differences between contributory liability in trademark versus copyright law.

If Inwood’s narrow standard for contributory trademark infringement governed here, [the plaintiffs’] claim of contributory infringement would merit little discussion. Sony certainly does not ‘intentionally induce[]’ its customers to make infringing uses of [the plaintiffs’] copyrights, nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of [the plaintiffs’] copyrights.

Id. at 439 n. 19, 104 S.Ct. 774 (quoting Inwood, 456 U.S. at 855, 102 S.Ct. 2182; emphases added).

Thus, the Court suggested, had the In-wood standard applied in Sony, the fact that Sony might have known that some portion of the purchasers of its product used it to violate the copyrights of others would not have provided a sufficient basis for contributory liability. Inwood’s “narrow standard” would have required knowledge by Sony of “identified individuals” engaging in infringing conduct. Tiffany’s reading of Inwood is therefore contrary to the interpretation of that case set forth in Sony.

Although the Supreme Court’s observations in Sony, a copyright case, about the “knows or has reason to know” prong of the contributory trademark infringement test set forth in Inwood were dicta, they constitute the only discussion of that prong by the Supreme Court of which we are aware. We think them to be persuasive authority here.12

*109Applying Sony’s interpretation of In-wood, we agree with the district court that “Tiffany’s general allegations of counterfeiting failed to provide eBay with the knowledge required under Inwood.” Tiffany, 576 F.Supp.2d at 511. Tiffany’s demand letters and Buying Programs did not identify particular sellers who Tiffany thought were then offering or would offer counterfeit goods. Id. at 511-13.13 And although the NOCIs and buyer complaints gave eBay reason to know that certain sellers had been selling counterfeits, those sellers’ listings were removed and repeat offenders were suspended from the eBay site. Thus Tiffany failed to demonstrate that eBay was supplying its service to individuals who it knew or had reason to know were selling counterfeit Tiffany goods.

Accordingly, we affirm the judgment of the district court insofar as it holds that eBay is not eontributorially liable for trademark infringement.

S. Willful Blindness.

Tiffany and its amici express their concern that if eBay is not held liable except when specific counterfeit listings are brought to its attention, eBay will have no incentive to root out such listings from its website. They argue that this will effectively require Tiffany and similarly situated retailers to police eBay’s website — and many others like it — “24 hours a day, and 365 days a year.” Council of Fashion Designers of America, Inc. Amicus Br. 5. They urge that this is a burden that most mark holders cannot afford to bear.

First, and most obviously, we are interpreting the law and applying it to the facts of this case. We could not, even if we thought it wise, revise the existing law in order to better serve one party’s interests at the expense of the other’s.

But we are also disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their websites. eBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. Tiffany, 576 F.Supp.2d at 487. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings.14 Indeed, it has spent millions of dollars in that effort.

Moreover, we agree with the district court that if eBay had reason to suspect that counterfeit Tiffany goods were being sold through its website, and intentionally shielded itself from discovering the offending listings or the identity of the sellers behind them, eBay might very well have been charged with knowledge of those sales sufficient to satisfy Inwood’s “knows or has reason to know” prong. Tiffany, 576 F.Supp.2d at 513-14. A service provider is not, we think, permitted willful blindness., When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way. See, e.g., Hard Rock Café, 955 F.2d at 1149 (“To be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate.”); Fo*110novisa, 76 F.3d at 265 (applying Hard Rock Cafe’s reasoning to conclude that “a swap meet can not disregard its vendors’ blatant trademark infringements with impunity”).15 In the words of the Seventh Circuit, “willful blindness is equivalent to actual knowledge for purposes of the Lanham Act.” Hard Rock Café, 955 F.2d at 1149.16

eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. Tiffany, 576 F.Supp.2d at 514. Without more, however, this knowledge is insufficient to trigger liability under In-wood. The district court found, after careful consideration, that eBay was not willfully blind to the counterfeit sales. Id. at 513. That finding is not clearly erroneous.17 eBay did not ignore the information it was given about counterfeit sales on its website.

III. Trademark Dilution

A. Principles

Federal law allows the owner of a “famous mark” to enjoin a person from using “a mark or trade name in commerce that is likely to cause dilution by blurring or dilu*111tion by tarnishment of the famous mark.” 15 U.S.C. § 1125(e)(1).

“Dilution by blurring” is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Id. § 1125(c)(2)(B). It can occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Id. § 1125(c)(1). “Some classic examples of blurring include ‘hypothetical anomalies as Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.’ ” Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 105 (2d Cir.2009) (quoting Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir.1989)). It is not a question of confusion; few consumers would likely confuse the source of a Kodak camera with the source of a “Kodak” piano. Dilution by blurring refers instead to “ ‘the whittling away of [the] established trademark’s selling power and value through its unauthorized use by others.’ ” Id. (quoting Mead Data Cent., 875 F.2d at 1031).

Federal law identifies a non-exhaustive list of six factors that courts “may consider” when determining whether a mark is likely to cause dilution by blurring. These are: (1) “[t]he degree of similarity between the mark or trade name and the famous mark”;18 (2) “[t]he degree of inherent or acquired distinctiveness of the famous mark”; (3) “[t]he extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark”; (4) “[t]he degree of recognition of the famous mark”; (5) “[w]hether the user of the mark or trade name intended to create an association with the famous mark”; and (6) “[a]ny actual association between the mark or trade name and the famous mark.” 15 U.S.C. § 1125(c)(2)(B)(i-vi).

In contrast to dilution by blurring, “dilution by tarnishment” is an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” 15 U.S.C. § 1125(c)(2)(C). This “generally arises when the plaintiffs trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product.” Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir.1994).

New York State law also “provide[s] for protection against both dilution by blurring and tarnishment.” Starbucks Corp., 588 F.3d at 114; see N.Y. Gen. Bus. Law § 360—Z. The state law is not identical to the federal one, however. New York “does not[, for example,] require a mark to be ‘famous’ for protection against dilution to apply.” Starbucks Corp., 588 F.3d at 114. Nor are the factors used to determine whether blurring has occurred the same. “Most important to the distinction here, New York law does not permit a dilution claim unless the marks are ‘substantially’ similar.” Id.

B. Discussion

The district court rejected Tiffany’s dilution by blurring claim on the *112ground that “eBay never used the TIFFANY Marks in an effort to create an association with its own product, but instead, used the marks directly to advertise and identify the availability of authentic Tiffany merchandise on the eBay website.” Tiffany, 576 F.Supp.2d at 524. The court concluded that “just as the dilution by blurring claim fails because eBay has never used the [Tiffany] Marks to refer to eBay’s own product, the dilution by tarnishment claim also fails.” Id. at 525.

We agree. There is no second mark or product at issue here to blur with or to tarnish “Tiffany.”

Tiffany argues that counterfeiting dilutes the value of its product. Perhaps. But insofar as eBay did not itself sell the goods at issue, it did not itself engage in dilution.

Tiffany argued unsuccessfully to the district court that eBay was liable for contributory dilution. Id. at 526. Assuming without deciding that such a cause of action exists, the court concluded that the claim would fail for the same reasons Tiffany’s contributory trademark infringement claim failed. Id. Tiffany does not contest this conclusion on appeal. We therefore do not address it. See Palmieri v. Allstate Ins. Co., 445 F.3d 179 (2d Cir.2006) (issues not raised on appeal are treated as waived).

IV. False Advertising

Finally, Tiffany claims that eBay engaged in false advertising in violation of federal law.

A. Principles

Section 43(a) of the Lanham Act prohibits any person from, “in commercial advertising or promotion, misrepresent[ing] the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.” 15 U.S.C. § 1125(a)(1)(B). A claim of false advertising may be based on at least one of two theories; “that the challenged advertisement is literally false, i.e., false on its face,” or “that the advertisement, while not literally false, is nevertheless likely to mislead or confuse consumers.” Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 153 (2d Cir.2007).

In either case, the “injuries redressed in false advertising cases are the result of public deception.” Johnson & Johnson * Merck Consumer Pharm. Co. v. Smithkline Beecham Corp., 960 F.2d 294, 298 (2d Cir.1992) {“Merck ”). And “[u]nder either theory, the plaintiff must also demonstrate that the false or misleading representation involved an inherent or material quality of the product.” Time Warner Cable, 497 F.3d at 153 n. 3.19

Where an advertising claim is literally false, “the court may enjoin the use of the claim without reference to the advertisement’s impact on the buying public.” McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549 (2d Cir.1991) (internal quotation marks omitted). To succeed in a likelihood-of-confusion case where the statement at issue is not literally false, however, a plaintiff “must demonstrate, by extrinsic evidence, that the chal*113lenged commercials tend to mislead or confuse consumers,” and must “demonstrate that a statistically significant part of the commercial audience holds the false belief allegedly communicated by the challenged advertisement.” Merck, 960 F.2d at 297, 298; Time Warner Cable, 497 F.3d at 153 (“[W]hereas plaintiffs seeking to establish a literal falsehood must generally show the substance of what is conveyed, ... a district court must rely on extrinsic evidence [of consumer deception or confusion] to support a finding of an implicitly false message.” (internal quotation marks omitted and emphasis and alterations in original)).

B. Discussion

eBay advertised the sale of Tiffany goods on its website in various ways. Among other things, eBay provided hyperlinks to “Tiffany,” “Tiffany & Co. under $150,” “Tiffany & Co.,” “Tiffany Rings,” and “Tiffany & Co. under $50.” Pl.’s Exs. 290, 392, 1064, 1065. eBay also purchased advertising space on search engines, in some instances providing a link to eBay’s site and exhorting the reader to “Find tiffany items at low prices.” PL’s Ex. 1065 (bold face type in original). Yet the district court found, and eBay does not deny, that “eBay certainly had generalized knowledge that Tiffany products sold on eBay were often counterfeit.” Tiffany, 576 F.Supp.2d at 520-21. Tiffany argues that because eBay advertised the sale of Tiffany goods on its website, and because many of those goods were in fact counterfeit, eBay should be liable for false advertising.

The district court rejected this argument. Id. at 519-21. The court first concluded that the advertisements at issue were not literally false “[b]ecause authentic Tiffany merchandise is sold on eBay’s website,” even if counterfeit Tiffany products are sold there, too. Id. at 520.

The court then considered whether the advertisements, though not literally false, were nonetheless misleading. It concluded they were not for three reasons. First, the court found that eBay’s use of Tiffany’s mark in its advertising was “protected, nominative fair use.” Id. Second, the court found that “Tiffany has not proven that eBay had specific knowledge as to the illicit nature of individual listings,” implying that such knowledge would be necessary to sustain a false advertising claim. Id. at 521. Finally, the court reasoned that “to the extent that the advertising was false, the falsity was the responsibility of third party sellers, not eBay.” Id.

We agree with the district court that eBay’s advertisements were not literally false inasmuch as genuine Tiffany merchandise was offered for sale through eBay’s website. But we are unable to affirm on the record before us the district court’s further conclusion that eBay’s advertisements were not “likely to mislead or confuse consumers.” Time Warner Cable, 497 F.3d at 153.

As noted, to evaluate Tiffany’s claim that eBay’s advertisements misled consumers, a court must determine whether extrinsic evidence indicates that the challenged advertisements were misleading or confusing. The reasons the district court gave for rejecting Tiffany’s claim do not seem to reflect this determination, though. The court’s first rationale was that eBay’s advertisements were nominative fair use of Tiffany’s mark.

But, even if that is so, it does not follow that eBay did not use the mark in a misleading advertisement. It may, after all, constitute fair use for Brand X Coffee to use the trademark of its competitor, Brand Y Coffee, in an advertisement stating that “In a blind taste test, 9 out of 10 New *114Yorkers said they preferred Brand X Coffee to Brand Y Coffee.” But if 9 out of 10 New Yorkers in a statistically significant sample did not say they preferred X to Y, or if they were paid to say that they did, then the advertisement would nonetheless be literally false in the first example, or misleading in the second.

There is a similar difficulty with the district court’s reliance on the fact that eBay did not know which particular listings on its website offered counterfeit Tiffany goods. That is relevant, as we have said, to whether eBay committed contributory trademark infringement. But it sheds little light on whether the advertisements were misleading insofar as they implied the genuineness of Tiffany goods on eBay’s site.

Finally, the district court reasoned that if eBay’s advertisements were misleading, that was only because the sellers of counterfeits made them so by offering inauthentic Tiffany goods. Again, this consideration is relevant to Tiffany’s direct infringement claim, but less relevant, if relevant at all, here. It is true that eBay did not itself sell counterfeit Tiffany goods; only the fraudulent vendors did, and that is in part why we conclude that eBay did not infringe Tiffany’s mark. But eBay did affirmatively advertise the goods sold through its site as Tiffany merchandise. The law requires us to hold eBay accountable for the words that it chose insofar as they misled or confused consumers.

eBay and its amici warn of the deterrent effect that will grip online advertisers who are unable to confirm the authenticity of all of the goods they advertise for sale. See, e.g., Yahoo! Inc. Amicus Br. 15; Electronic Frontier Foundation et al. Amicus Br. 18-19. We rather doubt that the consequences will be so dire. An online advertiser such as eBay need not cease its advertisements for a kind of goods only because it knows that not all of those goods are authentic. A disclaimer might suffice. But the law prohibits an advertisement that implies that all of the goods offered on a defendant’s website are genuine when in fact, as here, a sizeable proportion of them are not.

Rather than vacate the judgment of the district court as to Tiffany’s false advertising claim, we think it prudent to remand the cause so that the district court, with its greater familiarity with the evidence, can reconsider the claim in light of what we have said. The case is therefore remanded pursuant to United States v. Jacobson, 15 F.3d 19 (2d Cir.1994), for further proceedings for the limited purpose of the district court’s re-examination of the false advertising claim in accordance with this opinion. We retain jurisdiction so that any of the parties may seek appellate review by notifying the Clerk of the Court within thirty days of entry of the district court’s judgment on remand. See, e.g., Galviz Zapata v. United States, 431 F.3d 395, 399 (2d Cir.2005). Such notification will not require the filing of a new notice of appeal. Id. If notification occurs, the matter will be referred automatically to this panel for disposition.

If circumstances obviate the need for the case to return to this Court, the parties shall promptly notify the Clerk of the Court. Id.

CONCLUSION

For the foregoing reasons, we affirm the judgment of the district court with respect to the claims of trademark infringement and dilution. Employing a Jacobson remand, we return the cause to the district court for further proceedings with respect to Tiffany’s false advertising claim.

PER CURIAM.

This case was returned to us by the United States Supreme Court, noting “the possibility that [we] erred by too narrowly circumscribing the scope of § 271(a)” and suggesting that we “will have the opportunity to revisit the § 271(a) question.... ” Limelight Networks, Inc. v. Akamai Techs., Inc., — U.S. -, 134 S.Ct. 2111, 2119, 2120, 189 L.Ed.2d 52 (2014). We hereby avail ourselves of that opportunity.

Sitting en banc, we unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a). We conclude that, in this case, substantial evidence supports the jury’s finding that Limelight Networks, Inc. (“Limelight”) directly infringes U.S. Patent 6,108,703 (the “'703 patent”) under § 271(a). We therefore reverse the district court’s grant of judgment of nonin-fringement as a matter of law.

I. Divided InfRingement

Direct infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity. See BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379-81 (Fed.Cir.2007). Where more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. We will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.1

To determine if a single entity directs or controls the acts of another, we continue to consider general principles of vicarious liability.2 See BMC, 498 F.3d at *10231379. In the past, we have held that an actor is liable for infringement under § 271(a) if it acts through an agent (applying traditional agency principles) or contracts with another to perform one or more steps of a claimed method. 'See BMC, 498 F.3d at 1380-81. We conclude, on the facts of this case, that liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance. Cf. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005) (stating that an actor “infringes vicariously by profiting from direct infringement” if that actor has the right and ability to stop or limit the infringement). In those instances, the third party’s actions are attributed to the alleged infringer such that the alleged in-fringer becomes the single actor chargeable with direct infringement. Whether a single actor directed or controlled the acts of one or more third parties is a question of fact, reviewable on appeal for substantial evidence, when tried to a jury.

Alternatively, where two or more actors form a joint enterprise, all can be charged with the acts of the other, rendering each hable for the steps performed by the other as if each is a single actor. See Restatement (Second) of Torts § 491 cmt. b (“The law ... considers that each is the agent or servant of the others, and that the act of any one within the scope of the enterprise is to be charged vicariously against the rest.”). A joint enterprise requires proof of four elements:

(1) an agreement, express or implied, among the members of the group;

(2) a common purpose to be carried out by the group;

(3) a community of pecuniary interest in that purpose, among the members; and

(4) an equal right to a voice in the direction of the enterprise, which gives an equal right of control.

Id. § 491 cmt.c. As with direction or control, whether actors entered into a joint enterprise is a question of fact, reviewable on appeal for substantial evidence. Id. (“Whether these elements exist is frequently a question for the jury, under proper direction from the court.”).

We believe these approaches to be most consistent with the text of § 271(a), the statutory context in which it appears, the legislative purpose behind the Patent Act, and our past case law. Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision held.3 Rather, to determine direct infringement, we consider whether all method steps can be attributed to a single entity.

II. Application to the Facts of this Case

Today we outline the governing legal framework for direct infringement and address the facts presented by this case. In the future, other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor. Going forward, principles of attribution are to be considered in the context of the particular facts presented.

The facts of this case need not be repeated in detail once again, but the follow*1024ing constitutes the basic facts. In 2006, Akamai Technologies, Inc. (“Akamai”) filed a patent infringement action against Limelight alleging infringement of several patents, including the '703 patent, which claims methods for delivering content over the Internet. The case proceeded to trial, at which the parties agreed that Limelight’s customers — not Limelight — perform the “tagging” and “serving” steps in the claimed methods. For example, as for claim 34 of the '703 patent, Limelight performs every step save the “tagging” step, in which Limelight’s customers tag the content to be hosted and delivered by Limelight’s content delivery network. After the close of evidence, the district judge instructed the jury that Limelight is responsible for its customers’ performance of the tagging and serving method steps if Limelight directs or controls its customers’ activities. The jury found that Limelight infringed claims 19, 20, 21, and 34 of the '703 patent. Following post-trial motions, the district court first denied Limelight’s motion for judgment of noninfringement as a matter of law, ruling that Akamai had presented substantial evidence that Limelight directed or controlled its customers. After we decided Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed.Cir.2008), the district court granted Limelight’s motion for reconsideration, holding as a matter of. law that there could be no liability.

We reverse and reinstate the jury verdict. The jury heard substantial evidence from which it could find that Limelight directs or controls its customers’ performance of each remaining method step, such that all steps of the method are attributable to Limelight. Specifically, Aka-mai presented substantial evidence demonstrating that Limelight conditions its customers’ use of its content delivery network upon its customers’ performance of the tagging and serving steps, and that Limelight establishes the manner or timing of its customers’ performance. We review the evidence supporting “conditioning use of the content delivery network” and “establishing the manner or timing of performance” in turn.

First, the jury heard evidence that Limelight requires all of its customers to sign a standard contract. The contract delineates the steps customers must perform if they use the Limelight service. These steps include tagging and serving content. As to tagging, Limelight’s form contract provides: “Customer shall be responsible for identifying via the then current [Limelight] process all [URLs] of the Customer Content to enable such Customer Content to be delivered by the [Limelight network].” J.A. 17807. In addition, the contract requires that Limelight’s customers “provide [Limelight] with all cooperation and information reasonably necessary for [Limelight] to implement the [Content Delivery Service].” Id. As for the serving step, the form contract states that Limelight is not responsible for failures in its content delivery network caused by its customers’ failure to serve content. See id. If a customer’s server is down, Limelight’s content delivery network need not perform. Thus, if Limelight’s customers wish to use Limelight’s product, they must tag and serve content. Accordingly, substantial evidence indicates that Limelight conditions customers’ use of its content delivery network upon its customers’ performance of the tagging and serving method steps.

Substantial evidence also supports finding that Limelight established the manner or timing of its customers’ performance. Upon completing a deal with Limelight, Limelight sends its customer a welcome letter instructing the customer how to use Limelight’s service. In particular, the *1025welcome letter tells the customer that a Technical Account Manager employed by Limelight will lead the implementation of Limelight’s services. J.A. 17790. The welcome letter also contains a hostname assigned by Limelight that the customer “integrate^] into [its] webpages.” J.A. 17237; 17790. This integration process includes the tagging step. Moreover, Limelight provides step-by-step instructions to its customers telling them how to integrate Limelight’s hostname into its webpages if the customer wants to act as the origin for content. J.A. 17220. If Limelight’s customers do not follow these precise steps, Limelight’s service will not be available. J.A. 587 at 121:22-122:22. Limelight’s Installation Guidelines give Limelight customers further information on tagging content. J.A. 17791. Lastly, the jury heard evidence that Limelight’s engineers continuously engage with customers’ activities. Initially, Limelight’s engineers assist with installation and perform quality assurance testing. J.A. 17790. The engineers remain available if the customer experiences any problems. J.A.- 17235. In sum, Lime-light’s customers do not merely take Limelight’s guidance and act independently on their own. Rather, Limelight establishes the manner and timing of its customers’ performance so that customers can only avail themselves of the service upon their performance of the method steps.

We conclude that the facts Akamai presented at trial constitute substantial evidence from which a jury could find that Limelight directed or controlled its customers’ performance of each remaining method step. As such, substantial evidence supports the jury’s verdict that all. steps of the claimed methods were performed by or attributable to Limelight. Therefore, Limelight is liable for direct infringement.

III. Conclusion

At trial, Akamai presented substantial evidence from which a jury could find that Limelight directly infringed the '703 patent. Therefore, we reverse the district court’s grant of judgment of noninfringement as a matter of law. Because issues in the original appeal and cross-appeal remain, we return the case to the panel for resolution of all residual issues consistent with this opinion.