Amazon Sued For Copyright, Design Patent, Trademark & Trade Dress Infringement Due To Marketplace Seller
from the seems-like-a-stretch dept
Eric Goldman points us to a copyright, design patent, trademark and trade dress infringement lawsuit filed against Amazon by a design company called Mint Inc., (which is not the online financial firm that Intuit bought a while back). Apparently Mint created the “hugging” salt and pepper shakers that you may have seen (I’ve seen them around a few times), and registered a copyright and a design patent on them (again, a design patent is not the same thing as a standard utility patent, and is a lot more limited). Apparently another company, Shokomoko, was selling similar hugging salt and pepper shakers via Amazon’s marketplace. Mint’s lawyers sent a letter demanding this be stopped, then sent another one, and when nothing happened, sued both Shokomoko and Amazon (full filing embedded below).
Now, of course, we often point to safe harbors when it comes to service providers, and those could conceivably come into play partly here. Amazon, as a company with a registered DMCA agent, would normally have a safe harbor against user actions on copyright claims — but the original letter sent by Mint’s lawyer, while not officially declaring itself to be a DMCA takedown, certainly does seem to satisfy all the required elements of a DMCA notice (copyright lawyers, feel free to chime in and clarify). Thus, the fact that Amazon did not respond, may actually open up the company to liability. That’s just the copyright claim, though. While Section 230 protects other types of third party liability, it has an explicit exception for “intellectual property,” meaning that the design patent, (common law) trademark and trade dress claims might live on as well.
Even so, however, it seems like Amazon might have a pretty strong defense, as it has no way of knowing whether or not the salt and pepper shakers actually infringe. In fact, as I read through the complaint, I started to wonder if Shokomoko wasn’t buying Mint’s legitimate salt and pepper shakers and reselling them. Perhaps there’s more evidence that they’re counterfeit, but it’s not clear from the filing. Mint claims Shokomoko is not “authorized” to sell such things, but if it bought them legally and is reselling them, this becomes a bit trickier. I have to admit I’m a bit surprised that Amazon didn’t respond to the two letters from Mint’s lawyers.
Either way, is this really the best use of Mint’s time and money? Is it really such a bad thing that another company is competing with them in selling salt and pepper shakers that look the same? If Mint is the original creator, play up that fact and keep designing cool new things, rather than worrying about any copycats. And, no matter what you think of the evilness of infringement, doesn’t it seem silly to involve Amazon at all? If there’s a legitimate complaint here, shouldn’t it just be between Mint and Shokomoko?
Filed Under: copyright, design patents, salt and pepper shakers, secondary liability, trade dress, trademark
Companies: amazon, mint, shokomoko
Comments on “Amazon Sued For Copyright, Design Patent, Trademark & Trade Dress Infringement Due To Marketplace Seller”
Amazon’s failure to reply pretty much leaves them in the weeds. They are in the position of “being aware”, which pretty much leaves them little room to move on. At bare minimum, Amazon should have communicated with Shokomoko and tried to obtain assurances that they don’t feel they are in violation,and that they had replied to the demand, CC to Amazon. It doesn’t appear (from that we can read) that this has happened. Amazon looks somewhat in a hole on this part of it.
I doubt that these are “buy and resell” products, rather knockoffs or replicas (which would be cheaper than buying retail and trying to resale). Unless they were able to somehow obtain a number of these things way below market value, it is unlikely they could do it with actual product.
Let’s just say it doesn’t look good for either Amazon or Shokomoko at this point.
AC, did you really just suggest that Amazon might be liable because someone said “they are selling a product similar to ours?”
Maybe then most stores start opting on the side of caution rather than get sued? kind of like a DMCA for actual physical goods?
And what store manager gets to determine whether the item infringes, does he get a copy of the original patent to review? I hope its the night shift, then my chocolate rectangle dominates the candy aisle.
“Amazon Sued For Copyright, Design Patent, Trademark & Trade Dress Infringement Due To Marketplace Seller”
So where’s the kitchen sink?
*ducks*
Oh…
Re: Re:
lol too funny oh well nm they can suck it hahahah mwhahahahahahhahah i love you jay xx
If they win, they could make a mint
The sale page credits Mint as the manufacturer. Shokomoko is the only one selling these right now, but other people could list them.
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AC, did you really just suggest that Amazon might be liable because someone said “they are selling a product similar to ours?”
No, I didn’t say that. They were contacted on issues of copyright, trademark, and the like. Once contacted, they do need to take a moment to see where they stand. Either “no, we don’t think so” or “Ooops, we will stop selling it” would be two good answers.
It appears that Amazon didn’t take the notices seriously, which may create liability for them.
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Do these notices arrive via certified mail?
Just curious.
Mint's legal team acted properly.
To a lay person, I can understand why suing under multiple type of theories against multiple defendants seems excessive, but it was a a prudent move by Mint’s legal team.
(1) Someone is liable for patent infringement (utility or design) if they “make, use or sell” an infringing product. Thus, both the manufacturer (Shokomoko) and the distributor (Amazon) may be liable for the damages owing to the alleged infringement. Also, design patents are not necessarily less broad/useful than a utility patent. In each case it depends on how the claim(s) are drafted.
(2) Copyright and Trademark/Trade Dress infringement are harder to prove for consumer products than design patent infringement, mostly because they are easier to invalidate. A copyright in the product requires that the aesthetics of the product must be conceptually or physically separable from the product’s function. Trade dress protection only subsists when consumers associate the product design with its manufacturer (e.g., a Coke bottle).
Often in product design cases a plaintiff must sue under each theory because they are unsure which theory will ultimately prevail at trial. If they don’t allege everything initially, there is a chance they will be estopped from bringing another claim later.
(3) Mint needed to sue Amazon because Shokomoko is a foreign corporation, whereas Amazon is located in the United States. Therefore, it is easier to get jurisdiction over, and enforce a judgment against, Amazon. Also, I would venture to guess that Amazon has deeper pockets. Having established that Amazon would also be liable for selling the infringing products, it is a no-brainer to sue Amazon.
Re: Mint's legal team acted properly.
Suing somebody because they are rich and close by is “acting properly”?
Yikes.
Re: Re: Mint's legal team acted properly.
Yes. That is one of the first things taught in law school. To not do so would be malpractice on the part of the plaintiff’s attorney
But you are missing the point – if Amazon sells an infringing product, they are violating the law, and just as liable as the manufacturer.
Also, lawsuits are rarely initiated without notice. I’m sure Mint advised Amazon that the products allegedly infringed Mint’s design. amazon likely disagreed, and that is why the case is moving forward.
Re: Re: Re: Mint's legal team acted properly.
That is one of the first things taught in law school.
And lawyers wonder why people hate them so.
Amazon on the s**t list.
I am proud to say I bought nothing from Amazon last year.
Amazon should have at least done something about it like contacting the company being accused of copyright infringement.