Hart v. Amazon.Com, Inc. et al
Filing
76
MEMORANDUM Opinion and Order. Signed by the Honorable Ruben Castillo on 6/13/2016. Mailed notice. (kp, )
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
REGINALD HART,
Plaintiff,
No. 15 C 01217
v.
Chief Judge Rub6n Castillo
AMAZON.COM, INC.,
Defendant.
MEMORANDUM OPINION AND ORDER
Reginald Hart ("Plaintiff') brings his amended complaint in this action against Defendant
Amazon.com, lnc. ("Amazon")l alleging tradernark infringement, unfair competition, and false
designation of origin under Illinois common law and the Lanham Act, t5 U.S.C. $ 1125. (R. 68,
Am. Compl.) Plaintiff also alleges negligence, promissory estoppel, negligent infliction of
ernotional distress, and violations of the Illinois Consumer Fraud and Deceptive Business
Practices Act
("ICFA"), 815 Irr. Coup. Srer. 505/l
Trade Practices Act
("IUDTPA"), 815 Irr.
Colrap.
et seq.,the
Srer. 5l0ll
Illinois Uniform Deceptive
et seq., and the
Illinois Right of
Publicity Act ("IRPA"),765I1r. Coirap. Srar. l075ll et seq. (R. 68, Am. Compl.) Presently
before the Court is Amazon's motion to dismiss pursuant to Federal Rule of Civil Procedure
l2OX6). (R. 69, Mot.) For the reasons
stated below, the motion is granted.
RELEVANT FACTS
PlaintifPs amended complaint includes many of the same facts as his original complaint,
which have already been explained in this Court's prior opinion, Hart v. Amazon.com,No. 15-C-
Glenda Scales as a co-defendant, (R. 1, Compl.fl 1); however,
the amended complaint neither identifies Ms. Scales as a defendant nor asserts any claims against her, (R.
68, Am. Compl.). Thus, the Court concludes that Plaintiff has abandoned his claims against Ms. Scales
and the Court will dismiss her from this case.
'Plaintiffs original complaint identified
01217,2015 WL 8489973, at *1 (N.D. Ill. Dec. 8, 2015); accordingly, only
a
brief recitation
of
the relevant facts is required. Plaintiff, a resident of Illinois, has authored two books: Vagabond
Natural andYagabond Spiritual. (R. 68, Am. Compl.l]fl 1-2.) These books focus on Plaintiff
s
experiences with homelessness and seek to "raise money and bring an end to vagabondage . . . ."
(Id. n2.) Plaintiff has "never sold Vagabond Spiritual inthe market place" and has only
distributed a limited number of copies of Vagabond Natural. (Id. nn 45 -46, 60.)
Despite the limited distribution of Plaintiff s books, Plaintiff discovered copies
of
Vagabond Natural and Yagabond Spiritual listed for sale on Amazon's website. (1d.Ifr 45-46.)
Plaintiff believes that these copies were counterfeits. (Id.\n39-47.) Throughout March 2014,
Plaintiff submitted
a series
of eleckonic notices to Amazon through its "Report Infringement"
webpage claiming that Amazon was selling "unlawful reproductions" of his books. (1d.[n3941
.) Plaintiff also sent Amazon a letter dated March 23 , 2014, asking Amazon to remove the
books from its website, disclose how long the books had been available for sale, and specify how
many copies had been sold. (/d. fl a7; R. 68, Ex. 8 to Am. Compl.) Amazon responded with a
letter that "implied . . . it was solely a search engine and not an online retailer." (R. 68, Am.
Compl. n47.) Approximately nine months later, Plaintiff submitted another electronic notice
asking Amazon to rernove the books from its website because Vagabond Natural and Vagabond
Spiritual "[had] never been published to the public atlarge." (Id. I a2; R. 68, Ex. 4 to Am.
Compl.)
On January
2l,2ll5,Amazon
sent Plaintiff an email informing him that it was
"in the
process of removing" Vagabond Natural and Vagabond Spiritual from its website and that
typically takes 2-3 days for
a
"[i]t
listing to disappear once it has been removed." (R. 68, Am. Compl.
l|fl 80, 90; R. 68, Ex. l0 to Am. Compl.) Both books remained on Amazon's website until March
25,2015. (R. 68, Am. Compl.
1T
103.) Amazorprovided Hart with its sales records, which
indicate that there were a total of six sales of Hart's books by third parties through Amazon's
website. (R. 68, Ex. 7 to Am. Compl.) Plaintiff claims that Amazon's conduct caused him
oomental
anguish" and violated his trademark rights. (Id.
\fl
77
, 83,
87 , 93
,
123 .)
PROCEDURAL HISTORY
Plaintiff first filed apro se complaint on February 9,2015, against Amazon and "All
Unknown and Known Third Party Agent Sellers of Amazon" alleging direct, contributory, and
vicarious copyright infringement under the Federal Copynght Act,17 U.S.C. $
l0l
et seq.,
negligent spoliation of evidence, aiding and abetting "wrongful acts," intentional infliction
of
emotional distress, and a violation of the IRPA. Hart,2015 WL 8489973, at*2. On March 15,
2015, Plaintiff moved to have counsel appointed. (R. 28, Min. Entry.) The Court granted
Plaintiff s motion and counsel appeared on Plaintiff s behalf.
(1d.; R. 30, Appearance.) However,
appointed counsel subsequently moved to withdraw because Plaintiff "insist[ed] upon presenting
a
claim that, in fcounsel's] view, [was] not wa:ranted under existing law and [could not] be
supported by a reasonable argument for an extension, modification, or reversal of existing law."
(R. 37, Mot. to Withdraw.) Following an unsuccessful settlement conference with Amazon, the
Court granted counsel's motion to withdraw. (R. 41, Min. Entry.)
On August 19,2015, Amazon moved for judgment on the pleadings arguing that
Plaintiff s claims were "legally and factually deficient." (R.43, Def.'s Mot. at 15.) The Court
granted Amazon's motion because Plaintiff failed to adequately plead his claims. Hart,2015
WL
8489973, at *9. However, this Court granted him leave to file an amended complaint consistent
with the Court's opinion. Id. OnJanuary 4,2016, Plaintiff filed an amended complaint alleging
negligence (Count I), "trademark infringement, unfair competition, and false designation
of
origin" (Count II), a violation of the ICFA (Count III), a violation of the IUDTPA (Count IV),
promissory estoppel (Count V), a violation of the IRPA (Count VI), and negligent infliction
emotional distress (Count VID.
of
G. 68, Am. Compl. flfl 48-123.) Amazon again moves to dismiss.
(R. 69, Mot.; 70, Mern.)
LEGAL STANDARI)
"A motion to dismiss pursuant to Rule 12(b)(6)
challenges the
viability of
a complaint
by
arguing that it fails to state a claim upon which relief may be granted." Firestone Fin. Corp. v.
Meyer,796F.3d822,825 (7th Cir. 2015) (alterations and citation omitted). To survive
a
motion
to dismiss under Rule 12(b)(6), a complaint must provide "enough facts to state a claim to relief
that is plausible on its face." Bell Atl. Corp.v. Twombly, 550 U.S. 544,570 (2007). "A claim has
facial plausibility when the plaintiff pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal,
556 U.S. 662,678 (2009). Under this standard, the Court "accept[s] as true all of the well-
pleaded facts in the complaint and draw[s] all reasonable inferences in favor of the plaintiff."
Kubiakv. City of Chi.,810 F.3d 476,480-81 (7th Cir.2016). However, the Court "need not
accept as true any legal assertions or recital of the elements of a cause of action supported by
mere conclusory statements." Vesely v. Armslist
LLC,762 F.3d 661, 664-65 (7th Cir. 2014)
(citation and internal quotation marks omitted).
Because Plaintiff is proceeding pro se) the Court construes his complaint
"liberally" and
holds it to a "less stringent standard than formal pleadings drafted by lawyers." Perez v.
Fenoglio,792F.3d768,776 (7th Cir. 2015) (citation omiued). However, while apro se litigant's
pleadings are held to a lesser standard, the litigant must still comply with the Court's rules and
procedures . See
Mclnnis v. Duncan, 697 F.3d 661, 665 (7th Cir.2012) ("As we often have
reminded litigants, even those who are pro se must follow court rules and directives."); see also
McNeil v United States,508 U.S. 106, 113 (1993) ("While we have insisted that the pleadings
prepared by ltrtro se litigants] . . .be liberally construed, . . . we have never suggested that
procedural rules in ordinary civil litigation should be interpreted so as to excuse mistakes by
those who proceed without counsel." (internal citations omitted)).
ANALYSIS
I.
Lanham Act and IUDTPA Claims
The Court
will first address Plaintiff s Lanham Act claim and then move to the remaining
state law claims. Count
II of the amended complaint includes claims for trademark infringement,
unfair competition, and false designation of origin under the Lanham Act and Illinois common
law. (R. 68, Am. Compl. 1fl68-77.) In addition, Plaintiff asserts an IUDTPA claim; however, the
allegations are nearly identical to those in the Lanham Act claims.(Id
\fl
85-87.) Amazon argues
that Plaintiff fails to state claims under the Lanham Act, common law, or the IUDTPA. (R. 70,
Mem. at 4-8; see also id. at 11-12.) As discussed below, Plaintifls claims are insufficient
because he does not allege that Amazon's actions are
likely to cause confusion among
consumers.
Plaintiff spro se complaint is at times difficult to understand, but his claims ultimately
revolve around the same conduct: Amazon allegedly engaged in counterfeiting and displayed and
sold counterfeit copies of his books featuring his tradename and trademark. (R. 68, Am. Compl.
lfl l, 47 , 69,70,
86.) Plaintiff claims that his trademarks include the name "Henrietta Press" and
a symbol "comprised of an [o]pen [b]ook
with [p]ages emerging therefrom." (Id.
1169.)
Plaintiff s counterfeiting claim focuses on three different allegations. First, Amazon allegedly
sold counterfeit copies of Hart's books and thereby improperly used his tradename and
trademark that were affixed to the allegedly counterfeit versions. (/d.
']Tfl 7
5-77 ,81 .) Second,
Amazon allegedly caused confusion in the marketplace by suggesting that Plaintiff is affiliated
with or approves of Amazon . (Id. \fl
7I
,
75
.) Third, Amazon allegedly caused confusion in the
marketplace by suggesting that the copies of Hart's books sold through Amazon were authentic.
(1d.n72.) In support of his IUDTPA claim, Plaintiff similarly alleges that Amazon"engaged in
deceptive acts, including but not limited to misrepresenting to Consumers that Henrietta Press is
the source of the Vagabond Products and that Henrietta Press approves of, or is affiliated . .
with defendant; which it is not."
.
(1d. 1T85.)
The Lanham Act protects registered marks from interference by state legislation, prevents
unfair competition, and protects against fraud by the use of copies or counterfeits of marks.
Paclvnanv. Chi. Tribune Co.,267 F.3d 628,638 (7th Cir. 2001). Section ll25(a) of the Lanham
Act imposes liability on:
(1) AnV person who, on or in connection with any goods or
services
uses ln
commerce any word, term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of fact, or false or misleading
representation of fact, which-
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or
(B) in
commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities . . .
.
l5 U.S.C. $ 1125(a)(l). Such person "shall be liable in a civil action by any person who believes
that he or she is or is likely to be damaged by such act." Id.2
To state a claim under 15 U.S.C. $ 1125(aXl) of the Lanham Act,"aplaintiff must
establish that (1) its mark is protectable and (2) the defendant's use of the mark is likely to cause
confusion among consumers." CAE, Inc. v. Clean Air Eng'g, lnc.,267 F.3d 660, 673-74 (7th Cir.
2001). The same analysis applies to Plaintiffls common law trademark claim, unfair competition
claim, and IUDTPA claim. See Fortres Grand Corp. v. Warner Bros. Entm't Inc., 763 F.3d 696,
700-01 (7th Cir. 2014) (likelihood of confusion analysis applies equally to Lanham Act and state
law unfair competition claims); TMT N. Am., Inc. v. Magic Touch GmbH, l24F.3d 876, 881 (7th
Cir. 1997) ("federal and state laws regarding trademarks and related claims of unfair competition
are substantially congruent"); Right Field Rooftops, LLC v. ChL Cubs Baseball Club,
F. Supp. 3d 911, 917 (N.D. Ill. 2015) ("Counts
III
and
IV
LLC,136
are allegations of violations of the
Lanham Act and the [IUDTPA] respectively and can be analyzed using the same framework.").
While Amazon's motion does not expressly concede that Hart has alleged a trademark or
tradename entitled to protection,
it does not substantively
address this element in its motion. (R.
70, Mern. at 5.) Thus, the Court turns to whether Plaintiffadequately alleges that Amazon's use
of Plaintiff
s
trademark is likely to cause confusion among consumers.
First, Amazon argues that its actions are protected by the first-sale doctrine and cannot as
a
matter of law cause a likelihood of consumer confusion. (Id. at 5-6.) Specifically, Amazon
argues that Plaintiff "does not plausibly allege that the books sold through Amazon were
'While Plaintiff
does not identi$z which section of the Lanham Act his claims are premised on, his
15 U.S.C. $ 1125. (R. 73, Resp. at 9.) Because Plaintiff does not allege that he has a
registered trademark, he may not bring trademark infringement claims under 15 U.S.C. $ 11 14(l ). See
Guaranty Bank v. Chubb Corp.,538 F.3d 587,593 (7th Cir. 2008) (15 U.S.C. $ 111a(a) does not protect
unregistered marks). As such, the Court looks to the requirements of U.S.C. $ 1125(aX1).
response cites
to
counterfeits" and further that he o'cannot control the use of a trademark on authentic copies of his
books in the resale market." (Id. at 5.)
A trademark owner's right under the Lanham Act to control distribution of its own
products is limited by the "first sale" doctrine. See Sebastian Int'I, Inc. v. Longs Drug Stores
Corp., 53 F.3d 1073, 1074 (9th Cir. 1995); Standard Process, Inc. v. Banl
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