Opinion
Civil Action 22-1646
06-14-2023
GERALD COHEN, Plaintiff, v. HOT HOUSE BEAUTY LIMITED, et al., Defendants.
REPORT AND RECOMMENDATION
PATRICIA L. DODGE, UNITED STATES MAGISTRATE JUDGE
I. Recommendation
It is respectfully recommended that Defendant Amazon.com's Motion to Dismiss the First Amended Complaint of (ECF No. 30) be granted.
II. Report
Plaintiff Gerald Cohen brings this action against nine companies, alleging that they have infringed his trademark “Tan in a Can” in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a)(1)(A). He asserts that they did so either by placing the mark on their products or by their unauthorized use of his mark as an internet search term. This, he claims, misled consumers by creating a false connection between his mark and other products of disparate quality.
A. Relevant Procedural History
Plaintiff commenced this action in November 2022 and filed a First Amended Complaint in February 2023 (ECF No. 27). Federal question jurisdiction is alleged based on the trademark claims, 28 U.S.C. §§ 1331, 1338(a).
Count I of the First Amended Complaint alleges a claim of trademark infringement based on the sale of infringing products. In Count II, Plaintiff asserts a claim based on keyword searching offering and hosting. In addition, the First Amended Complaint alleges that all Defendants engaged in contributory and induced infringement.
On March 10, 2023, Amazon.com filed a motion to dismiss (ECF No. 30) which has been fully briefed (ECF Nos. 31, 38, 44).
B. Relevant Factual Background
On August 11, 2015, U.S. Trademark Reg. No. 4790241 “TAN IN A CAN” was registered to Plaintiff based on its use in commerce since December 23, 2014 in connection with self-tanning products. The mark was determined to be incontestable after 5 years of commercial use and has remained in force since that time. At all relevant times, the rights in the mark have been owned by Plaintiff. As a result of his promotional efforts, as well as the high quality and safety of products associated with the mark, his distinctive self-tanning products have earned valuable goodwill and reputation. (Am. Compl. ¶¶ 2, 17-19.)
Plaintiff states that a copy of the registration is attached as Exhibit A, but neither the original Complaint nor the First Amended Complaint includes this exhibit.
Plaintiff has not granted a license or any other authorization to Defendants to use, offer for sale, sell, distribute, or import self-tanning products that use the mark. However, he asserts that Defendants have infringed the mark through distribution and/or sale in stores or online of self-tanning products that use the mark. Further, Defendants may also distribute products for or among each other which infringe the mark. (Am. Compl. ¶¶ 20-22.)
On or about August 20, 2022, Plaintiff's counsel sent cease-and-desist letters to Defendants. While infringing sales diminished after the original Complaint was filed, infringing promotion and offers for sale have not stopped. Plaintiff's searches of the internet for ads and videos revealed continued unauthorized use and promotion of sales of the mark “Tan in a Can.” (Am. Compl. ¶¶ 23-25 & Exs. 1-3.)
As it relates to Amazon.com, Plaintiff alleges that it sells infringing products online, but his Amended Complaint does not identify any such product. (Am. Compl. ¶ 8(g).) Plaintiff also contends that Amazon.com facilitates keyword searching by using Plaintiff's mark on its website. He alleges that keyword searches using the mark confuse consumers by offers of various random and branded products as connected with his mark. (Id. ¶ 8(h) & Exs. 4-5.) As Amazon.com notes, however, Exhibits 4 and 5 to the First Amended Complaint actually show the results of searches on a Google-hosted website or mobile app using search string “amazon Tan in a can,” not searches on Amazon.com's website. Further, the results show one product sold by Amazon.com identified as “Body Drench Quick Tan Insta...” which does not use the phrase “tan in a can.” In addition, a sponsored ad from Amazon.com refers to “self tan on Amazon for under $10-fast delivery with prime.” This ad similarly does not contain the phrase “tan in a can.”
In his response to the motion to dismiss, Plaintiff contends that this claim should include “shoppers typing a search into an Amazon Search Box” on Amazon.com. (ECF No. 38 at 10.) He argues that his “legitimate product, using his own ‘Tan in a Can' identifying mark is hard to find in a long list of among other sellers' products. Attachment 1 shows such a search result.” (Id. at 11 & Ex. 1.) However, Amazon.com replies that this exhibit does not show the results from using the Amazon.com search bar, but rather the results of a search on a Google mobile website. (Carraway Decl. II ¶ 4 & Ex. B.) In any event, the exhibit shows two results: Plaintiff's own product and another called “Body Drench Quicktan Quick Tan Bronzing Spray Medium Dark,” which does not use his mark.
C. Analysis
1. Standard of Review
Under Rule 12(b)(6), a motion to dismiss may be granted only if, accepting all well-pleaded allegations in the complaint as true and viewing them in the light most favorable to the plaintiff, a court finds that plaintiff's claims lack facial plausibility.” Warren Gen. Hosp. v. Amgen Inc., 643 F.3d 77, 84 (3d Cir. 2011) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007)). “This requires a plaintiff to plead “sufficient factual matter to show that the claim is facially plausible,” thus enabling “the court to draw the reasonable inference that the defendant is liable for misconduct alleged.” Id. (quoting Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009)). While the complaint “does not need detailed factual allegations ... a formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. See also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
As noted by the Court of Appeals for the Third Circuit in Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011), a 12(b)(6) inquiry includes identifying the elements of a claim, disregarding any allegations that are no more than conclusions and then reviewing the well-pleaded allegations of the complaint to evaluate whether the elements of the claim are sufficiently alleged.
In ruling on a Rule 12(b)(6) motion, courts generally consider only the complaint, exhibits attached thereto and matters of public record. Schmidt v. Skolas, 770 F.3d 241, 249 (3d Cir. 2014). In addition, “[d]ocuments that the defendant attaches to the motion to dismiss are considered part of the pleadings if they are referred to in the plaintiff's complaint and are central to the claim.” Santomenno ex rel. John Hancock Tr. v. John Hancock Life Ins. Co. (U.S.A), 768 F.3d 284, 291 (3d Cir. 2014). Plaintiff has attached images of searches allegedly showing infringement of the mark and they may be considered without converting the motion into a motion for summary judgment. Similarly, Amazon.com has attached images from searches, the authenticity of which Plaintiff has not challenged, which may be considered without converting the motion into a motion for summary judgment. See, e.g., Datel Holdings Ltd. v. Microsoft Corp., 712 F.Supp.2d 974, 984 (N.D. Cal. 2010) (taking judicial notice of publicly available web pages when the plaintiff did not dispute their authenticity).
2. Trademark Infringement Based on Selling Infringing Products
The Court of Appeals “measure[s] federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15 U.S.C. § 1125(a)(1)(A), by identical standards. To prove either form of a Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000) (citation and footnote omitted).
Plaintiff has adequately pleaded that he has a valid and legally protected mark which he owns. Here, the focus is on his claim that Amazon.com has unlawfully used his mark, thereby causing the likelihood of confusion. A likelihood of confusion exists when “consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark.” Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (quotation marks omitted).
Plaintiff alleges in Count I that Amazon.com and the other defendants have infringed his trademark by selling competing products. The First Amended Complaint does not identify any competing product that Amazon.com sells, however. Thus, Amazon.com contends that Plaintiff's failure to identify any such infringing goods is fatal to his trademark infringement claim against it. See Lynch v. Basinger, 2012 WL 6213781, at *4 (D.N.J. Dec. 12, 2012) (“there are no allegations concerning Defendants' current use, if any, of the AverTox mark, nor is there any showing of confusion that could result from such use.”); Lopez v. Bonanza.com, Inc., 2019 WL 5199431, at *12 (S.D.N.Y. Sept. 30, 2019) (“Plaintiff's failure to identify the Retail 12(b)(6) Moving Defendants' allegedly infringing products items is fatal to his claims.”).
As noted by Amazon.com, the First Amended Complaint asserts infringement by other Defendants associated with St. Moriz and Kahuna Bay products (First Am. Compl. ¶ 8(a-f) & Exs. 1-3), but these allegations are not made against Amazon.com.
The original Complaint identified a product listed for sale on the Amazon.com website that contained the phrase “Tan in a Can” (ECF No. 1-11). Before Amazon.com responded to the Complaint, Plaintiff filed the First Amended Complaint, which no longer refers to this product and does not identify any products that use the phrase “Tan in a Can” that are sold on Amazon.com's website. Rather, the First Amended Complaint simply states that “Defendant Amazon.com, Inc. sells infringing products on line.” (Am. Compl. ¶ 8(g).) As Amazon.com notes, an “amended complaint supersedes the original and renders it of no legal effect, unless the amended complaint specifically refers to or adopts the earlier pleading.” West Run Student Hous. Assocs., LLC v. Huntington Nat. Bank, 712 F.3d 165, 171 (3d Cir. 2013) (citation omitted). The First Amended Complaint does not adopt the earlier pleading.
While not dispositive to resolving its motion, Amazon.com asserts that once it learned of this issue, it removed the listing from its website and confirmed that no sales of the product were made prior to the removal. (Carraway Decl. ¶¶ 3-4. & Exs. 1-2.) (ECF No. 32.)
Plaintiff responds that he “is thankful for Defendant[']s compliance with the request to stop infringement,” but that he “urges denial” of the motion to dismiss because “the Court could better fashion an appropriate remedy through an accounting of Defendant[']s infringing acts.” (ECF No. 38 at 9.) However, Plaintiff having amended his claim against Amazon.com to remove his earlier claim, he has failed to plead any facts to support an accounting. Simply put, he has not identified a single infringing product that is sold by Amazon.com. The failure to do so compels dismissal of Count I.
3. Infringement Based on Keyword Search “Offering and Hosting”
In Count II, Plaintiff alleges that “Defendants have infringed and continue to infringe Plaintiff[']s trademark by unauthorized offering and hosting of searches using Plaintiff's mark as a keyword.” (First Am. Compl. at 10.) Amazon.com argues that the First Amended Complaint contains no plausible allegations that it offers or hosts searches using Plaintiff's mark as a keyword. Moreover, if the pleading can be liberally construed to allege that Amazon.com purchases keywords from Google, the search results attributable to Amazon.com do not contain Plaintiff's mark and are clearly labeled. Thus, they cannot constitute infringement.
The Court of Appeals for the Third Circuit has held that “initial interest confusion is actionable under the Lanham Act.” Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 292 (3d Cir. 2001). “Trademark infringement can be based upon confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion.” 4 McCarthy on Trademarks and Unfair Competition, § 23:6 (5th ed.). At the same time, however:
Initial interest confusion must be distinguished from actions by a competitor that merely divert the shopper's attention to consider another source of the product or service. For example, “distracting” or “diverting” an internet shopper's attention by a search engine displaying keyword ads for competitive sources is not the same as “confusing” the web shopper. “Diverting” the potential buyer's interest by displaying alternative sources of goods or services is what makes the competitive free market work. It is a sign of healthy competition. It is not evidence of “unfair competition.”McCarthy, id. (footnote omitted). See also Checkpoint Sys., 269 F.3d at 294 (customer diversion does not provide a cause of action unless the competitor does so in an unlawful manner, such as by passing off its goods as those of the trademark holder in a bait-and-switch scheme).
Plaintiff alleges that Amazon.com facilitates keyword searching using Plaintiff's mark, causing shoppers to falsely connect Plaintiff's mark and good will with other products of various quality. As purported examples of this contention, Plaintiff attaches to his Amended Complaint several exhibits which show the results of a Google search for “amazon Tan in a can.” The search results yielded a product found at Amazon.com, “Body Drench Quick Tan” and a sponsored link “self tan on amazon under $10-fast delivery with prime.” (ECF 27-4 & 5.) Notably, as Amazon.com points out, these searches are from a Google website or app and do not reflect any “offering or hosting” by Amazon.com.
In J.G. Wentworth, S.S.C. Ltd. Partnership v. Settlement Funding LLC, 2007 WL 30115 (E.D. Pa. Jan. 4, 2007), the plaintiff alleged that the defendant was liable for using the plaintiff's mark to generate search results that included links to the defendant's website. But the court granted defendant's motion to dismiss, holding that: “Even accepting plaintiff's allegations as true-i.e., assuming that defendant did in fact use plaintiff's marks through Google's AdWords program or in the keyword meta tags for its website-as a matter of law defendant's actions do not result in any actionable likelihood of confusion under the Lanham Act.” Id at *6.
As noted in the J.G. Wentworth opinion, “Google provides an internet search engine that finds websites related to terms provided by internet users. An internet user seeking information will enter various terms into a space provided on Google's website, and Google's computers will search its database for websites relevant to the terms provided. The Google search engine then will present an ordered list of relevant websites identified by the Google database with the most relevant website listed first. The Google search engine will also present a separate list of websites in a ‘Sponsored Links' section, either at the top or in the right margin of the searchresults screen. Google's AdWords program is the keyword-triggered advertising program that generates the Sponsored Links section on the search-results screen. Advertisers participating in AdWords purchase or bid on certain keywords, paying Google for the right to have links to their websites displayed in the Sponsored Links section whenever an internet user searches for those words. Additionally, each time an internet user clicks on a particular Sponsored Link, Google charges a fee to the AdWords participant associated with that linked website. Businesses often participate in the AdWords program to generate more visits to their websites. Id. at * 1
Specifically, the court found that “the links to defendant's website always appear as independent and distinct links on the search result pages regardless of whether they are generated through Google's AdWords program or search of the keyword meta tags of defendant's website. Further, plaintiff does not allege that defendant's advertisements and links incorporate plaintiff's marks in any way discernable to internet users and potential customers.” Id. at *7. Thus, the court found that: “Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant's services, goods, advertisements, links or websites for those of plaintiff.” Id. at *8. See also General Steel Domestic Sales, LLC v. Chumley, 2013 WL 1900562, at *10 (D. Colo. May 7, 2013) (citing J.G. Wentworth), aff'd, 627 Fed.Appx. 682 (10th Cir. 2015); Penn Eng'g & Mfg. Corp. v. Peninsula Components, Inc., 2022 WL 3647817, at *4-5 (E.D. Pa. Aug. 24, 2022) (applying J.G. Wentworth to dismiss claims because the facts demonstrated only diversion and not confusion).
In his Response in opposition to Amazon.com's motion to dismiss, Plaintiff attaches a search result that he claims is from Amazon.com's website in which he used the keywords “tan in a can.” The results show two products: “Body Drench Quicktan Quick Tan Bronzing Spray” and “Tan in a Can.” This public record does not support his claim of consumer confusion, however, even assuming that Plaintiff's exhibit reflects a search on Amazon.com. Several courts have specifically held that, “because Amazon's search results page clearly labels the name and manufacturer of each product offered for sale and even includes photographs of the items, no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products.” Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 933 (9th Cir. 2015). See also Melwani v. Amazon.com, Inc., 2022 WL 760919, at *3 (W.D. Wash. Mar. 7, 2022) (applying Multi Time to dismiss infringement claims based on searches using plaintiff's mark that resulted in clearly labeled products but no third party product labeled with his mark); Sen v. Amazon.com, Inc., 2020 WL 4582678, at *6 (S.D. Cal. Aug. 10, 2020) (the plaintiff argued that consumers were likely distracted by Amazon's ads and would click on them rather than the plaintiff's website, but because the ads were clearly labeled, there could be no confusion with the plaintiff's mark), aff'd, 2021 WL 6101385 (9th Cir. Dec. 21, 2021), cert. denied, 143 S.Ct. 354 (2022).
Amazon.com has submitted a second Declaration (ECF No. 45) that attaches an exhibit that shows a screen capture of the results of a search for “tan in a can” on its website (ECF No. 45-1). A second exhibit attached to the Declaration (ECF No. 45-2) is submitted to dispute Plaintiff's contention that the search result attached to his Response was from Amazon.com's website. Rather, Amazon.com contends that it is a screen capture of search result from one portion of Google search results on a mobile phone for the phrase “amazon tan in a can.” Amazon.com argues that the Court can consider the search results from Amazon.com because Plaintiff's Response “now claims that they form the basis for his Count II claim against Amazon.” Regardless of the source of the search, however, Plaintiff's claim fails as a matter of law as explained in the body of this Report and Recommendation.
As detailed above, Plaintiff's allegation is that a keyword search using his mark confuses consumers. Nevertheless, the cited examples in the First Amended Complaint show clearly marked distinct products that do not contain the use of his mark. Similarly, the search results attached to Plaintiff's Response show two clearly distinct and identified products. In other words, consumers may be “diverted” but they are not “confused.” Thus, these facts are insufficient to support a claim of initial interest confusion.
Even if the First Amended Complaint can be construed to assert that Amazon.com purchased keywords from Google, the search results reflected in Exhibits 4 and 5 to the Amended Complaint do not use Plaintiff's mark and are clearly labeled. Regardless, the purchase of the mark alone would not create liability under the Lanham Act. “Virtually no court has held that, on its own, a defendant's purchase of a plaintiff's mark as a keyword term is sufficient for liability.” Alzheimer's Disease & Related Disorders Ass'n, Inc. v. Alzheimer's Found. of Am., Inc., 307 F.Supp.3d 260, 284 (S.D.N.Y. 2018) (citing, inter alia, General Steel Domestic Sales, LLC v. Chumley, 2013 WL 1900562, at *10 (D. Colo. May 7, 2013), aff'd, 627 Fed.Appx. 682 (10th Cir. 2015); and Hearts on Fire Co. v. Blue Nile, Inc., 603 F.Supp.2d 274, 285 (D. Mass. 2009). See also Jacobs v. Fareportal, Inc., 2019 WL 11029415, at *13 (D. Neb. Sept. 19, 2019) (“the purchase of a competitor's marks as keywords alone, without additional behavior that confuses consumers, is not actionable as unfair competition.”) As noted by the Court of Appeals for the Second Circuit by way of analogy: “it is routine for vendors to seek specific ‘product placement' in retail stores precisely to capitalize on their competitors' name recognition. For example, a drug store typically places its own store-brand generic products next to the trademarked products they emulate in order to induce a customer who has specifically sought out the trademarked product to consider the store's less-expensive alternative.” 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 411 (2d Cir. 2005). The court held that this conduct did not violate the Lanham Act.
Therefore, with respect to Count II, the motion to dismiss should be granted.
4. Contributory and Induced Infringement
Finally, Plaintiff alleges that Defendants “have been and are infringing, contributing to the infringement of, and/or actively inducing others to infringe” his mark. (Am. Compl.¶ 11.) Amazon.com argues that these bald allegations do not include any facts that support a claim against it. The Court agrees.
“The two elements for contributory infringement are thus summed up as (1) supply of a product, and (2) knowledge of direct infringement.” American Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1432 (3d Cir. 1994) (citation omitted). The Supreme Court has held that when defendant “continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.” Inwood Labs., 456 U.S. at 854.
The First Amended Complaint does not allege any facts that support a claim of contributory infringement. Plaintiff does not allege that Amazon.com sold products to others who were engaging in trademark infringement or continued to do so after notice of an alleged infringement. Plaintiff does not claim that he had any pre-lawsuit communications with Amazon.com or that it was otherwise aware of any infringement upon Plaintiff's trademark rights. Courts routinely dismiss contributory infringement claims under these circumstances. See Nomination Di Antonio E Paolo Gensini S. N.C. v. H.E.R. Accessories Ltd., 2009 WL 4857605, at *7 (S.D.N.Y. Dec. 14, 2009); Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1245 (11th Cir. 2007) (“a contributory infringement claim requires, at a minimum, both an allegation of a direct infringement by a third party, and an allegation of an intentional or knowing contribution to that infringement by the defendant.”)
In turn, induced infringement applies when a defendant “intentionally induces another to infringe a trademark.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982). Although Plaintiff names other alleged infringers, he fails to identify any infringers whom Amazon.com is alleged to have induced or identify any actions Amazon.com took to encourage others to infringe Plaintiff's mark. See Dentsply Sirona Inc. v. Net32, Inc., 2018 WL 3473973, at *2 (M.D. Pa. July 19, 2018); Perfect 10, Inc. v. Visa Int'l Serv. Ass'n, 494 F.3d 788, 807 (9th Cir. 2007). Without any such factual allegations, Plaintiff's claim for induced infringement also fails.
Thus, to the extent that Plaintiff alleges that Amazon.com engaged in contributory or induced infringement, the motion to dismiss should be granted.
III. Conclusion
For these reasons, it is recommended that the Motion to Dismiss the First Amended Complaint of Defendant Amazon.com (ECF No. 30) be granted. Because Plaintiff has already amended his complaint once and has not sought leave to further amend his complaint to include any factual allegations that may support a claim or claims against Amazon.com, the dismissal should be with prejudice. See Fletcher-Harlee Corp. v. Pote Concrete Contractors, Inc., 482 F.3d 247, 252-53 (3d Cir. 2007).
Litigants who seek to challenge this Report and Recommendation must seek review by the district judge by filing objections by June 28, 2023. Any party opposing the objections shall file a response by July 12, 2023. Failure to file timely objections will waive the right of appeal.