Amazon Sued for Violations of Lanham Act

What is the Lanham Act?

The Lanham act is a Federal statute that was passed in 1946 by President Harry Truman. The Lanham act governs trademarks, service marks, and unfair competition. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is essentially that same thing as a trademark, except a service mark identifies and distinguishes the source of a service rather than goods. Some examples of trademarks include Toyota (Cars and Trucks), Nike (Apparel), and Microsoft (Software).

The Lanham act outlines the procedure for federally registering trademarks, states when owners of trademarks may be entitled to federal judicial protection against trademark infringement, and sets forth other guidelines and remedies for trademark owners.

trademark-law

Claims for Lanham Act violations are extremely prevalent in relation to the Amazon platform.

There are two common situations that arise involving Amazon and the Lanham Act:

(1) When a manufacturer sues Amazon directly, or an Amazon seller for a listing that used a trademark without the permission of the manufacturer, and (2) When a manufacturer sues Amazon, or an Amazon seller for selling items that are inauthentic or counterfeit and thus violate the Lanham Act for trademark infringement.

In recent litigation, it has been held that Amazon can not be held liable for infringement when other companies sell infringing products on the Amazon platform.1 The court in Milo held that Amazon could not be held liable when a third party sold infringing goods on the Amazon platform because Amazon itself did not directly offer to sell infringing goods or engage in any other infringing acts. 2

  1. Milo & Gabby, LLC v. Amazon.com, No. C13-1932RSM, 2015 U.S. Dist. LEXIS 149939 (W.D. Wash. Nov. 3, 2015).
  2. Id.
  • Amazon.com, Inc. v. Nat’l Ass’n of College Stores, Inc., 826 F. Supp. 2d 1242, 2011 U.S. Dist. LEXIS 135880 (W.D. Wash. 2011).

The court denied NACS’s Motion to Dismiss as it determined the court did have jurisdiction over the claims and the case and the complaint was valid and presented a controversy.

  • Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 2004 U.S. Dist. LEXIS 27155, 77 U.S.P.Q.2D (BNA) 1182 (W.D. Wash. 2004).

Court dismissed plaintiff’s claim under Lanham Act as it was duplicative of their copyright infringement claim for which the Court already decided in favor of Amazon.

  • M-Edge Accessories LLC v. Amazon.com Inc., 2015 U.S. Dist. LEXIS 10095 (D. Md. Jan. 29, 2015).

Plaintiff could not successfully argue False Advertising where it only produced a print out of Amazon’s website without further authentication, and also did not show it suffered any harm by the alleged false advertising.

  • Milo & Gabby, LLC v. Amazon.com, Inc., 12 F. Supp. 3d 1341 (W.D. Wash. 2014)

Milo & Gabby sued Amazon.com for multiple infringement claims. Amazon.com motioned to dismiss claiming that the plaintiffs failed to state a claim. The District Court agreed with Amazon and granted to motion to dismiss the III, V, VII claims.

  • Milo & Gabby, LLC v. Amazon.com, Inc., 2015 U.S. Dist. LEXIS 143252 (W.D. Wash. Oct. 21, 2015)

Milo & Gabby sued Amazon.com for multiple infringement claims. The defendant, Amazon.com motioned in Limine. The court granted in part and denied in part.

  • Milo & Gabby, LLC v. Amazon.com, 2015 U.S. Dist. LEXIS 149939 (W.D. Wash. Nov. 3, 2015).

Milo & Gabby sued Amazon.com for multiple infringement claims. Amazon.com motioned to dismiss claiming that the plaintiffs failed to state a claim. After a jury hearing, the court adopted the jury’s finding that Amazon.com was not liable for “offering to sell” the alleged infringing products at issue in this matter. A judgment was placed in favor of Amazon.com and all claims against Amazon.com were dismissed.

  • Multi Time Mach., Inc. v. Amazon.com, Inc., 792 F.3d 1070 (9th Cir. 2015).

Court denied Amazon’s motion to dismiss the case and found that Plaintiff raised a triable issue of fact as to whether Amazon infringed on plaintiff’s trademark and confused customers in violation of the Lanham Act.

  • Roe v. Amazon.com, 2016 U.S. Dist. LEXIS 33297, 118 U.S.P.Q.2D (BNA) 1070, 44 Media L. Rep. 1469, 2016 WL 1028265 (S.D. Ohio Mar. 15, 2016).

In 2014, Defendant Jane Doe wrote a book entitled A Gronking to Remember and had it published by the Defendants Amazon.com, Inc., Barnes & Noble, Inc., Apple, Inc. and Smashwords. The Corporate Defendants offered the book for sale on their websites in both digital formats (Nook, Kindle, iBooks) as well as in paperback. The cover of the book contains a photograph of Plaintiffs taken during their engagement prior to their wedding. The Court concluded that the Corporate Defendants including Amazon.com Inc. were not publishers, and the corporate defendants’ motion for summary judgment was granted.

  • Routt v. Amazon.com, Inc., 2012 U.S. Dist. LEXIS 170602, 105 U.S.P.Q.2D (BNA) 1089, Copy. L. Rep. (CCH) P30,334 (W.D. Wash. Nov. 30, 2012).

The court granted the defendant’s motion to dismiss as plaintiff failed to state a valid claim in the complaint and allege factual allegations to support her claim. Amazon did not directly infringe, had no supervision over third-party’s infringing activities to be vicariously liable, and did not induce or encourage the infringement to be contributorily liable.

  • Routt v. Amazon.com, Inc., 2013 U.S. Dist. LEXIS 26265, Copy. L. Rep. (CCH) P30,388, 2013 WL 695922 (W.D. Wash. Feb. 26, 2013).

Amazon.com was a defendant in this suit where plaintiff, Sandy Routt alleged that Amazon.com’s associates had used her copyrighted photographs on the website without her permission. Amazon.com motioned to dismiss the amended complaint. Finding that the amended complaint did not change the court’s original analysis, the court granted the motion to dismiss.

  • com v. Amazon.com, Inc., 584 Fed. Appx. 713, 2014 U.S. App. LEXIS 16794, Copy. L. Rep. (CCH) P30,647, 2014 WL 4252287 (9th Cir. Wash. 2014).

This is an appeal from the United States District Court by plaintiff, Sandy Routt for the dismissal of her first amended complaint against Amazon.com. The court of appeals affirmed the lower court’s decision.

  • Sanmedica Int’l, LLC v. Amazon.com, Inc., 2015 U.S. Dist. LEXIS 50470 (D. Utah Mar. 27, 2015).

Court refused to grant Amazon’s motion to dismiss where it found the use of Plaintiff’s trademark may cause initial interest confusion and thus was a question for the jury.

  • Sellify Inc. v. Amazon.com, Inc., 2010 U.S. Dist. LEXIS 118173 (S.D.N.Y. Nov. 3, 2010).

The court here was determining whether to grant defendants motion for summary judgment. The court granted the motion. The claims at issue here required direct action by Amazon in order to state a claim and no evidence existed as to this point. Further the court found that the damages requested by the plaintiff were too speculative to survive a motion to dismiss. The court therefore granted the motion.

  • Video Professor, Inc. v. Amazon.com, Inc., Civil Action No. 09-cv-00636-REB-KLM, 2010 U.S. Dist. LEXIS 29414 (D. Colo. Mar. 8, 2010).

The court here was determining whether to grant plaintiff’s motion to modify the discovery schedule. The motion was denied and the court held that plaintiff had not shown good cause for amendment of the deadline for discovery. Plaintiff’s efforts to pursue discovery were less than diligent, and plaintiff had not shown evidence that additional discovery was relevant to claims as they were stated in the complaint.