Fuse Chicken LLC v. Amazon.com, Inc. et al

Filing 48

Memorandum Opinion and Order: Having considered the positions and arguments of the parties presented both during a telephone conference with counsel on May 23, 2018, and in their Joint Status Report submitted on June 2, 2018 (Doc. 47 ), the undersigned finds that Amazon may not limit its responses either as to time period or products in the respects described in Plaintiff's Notice. See order for details. Magistrate Judge Kathleen B. Burke on 6/8/2018. (D,I)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
FUSE CHICKEN LLC,
Plaintiff,
v.
AMAZON.COM, INC., et al.,
Defendants.

)
)
)
)
)
)
)
)
)
)
)

CASE NO. 5:17CV1538
JUDGE SARA LIOI
MAGISTRATE JUDGE
KATHLEEN B. BURKE

MEMORANDUM OPINION
AND ORDER

This case is before the undersigned on a discovery dispute. Plaintiff Fuse Chicken LLC
(“Plaintiff” or “Fuse Chicken”) alleges in its Complaint that Defendant Amazon.com, Inc.
(“Defendant” or “Amazon”) has engaged in both direct and contributory infringement of
Plaintiff’s trademarks for charging cables that Plaintiff designs and manufactures and that are
sold on Defendant’s website.1 Plaintiff filed a Notice of Request for Local Rule 37.1 Telephone
Conference (“Plaintiff’s Notice”), asserting that Amazon has improperly limited its responses to
Plaintiff’s document requests and interrogatories in two respects: (1) by limiting its responses to
11 of 23 “ASINs” (Amazon Standard Identification Numbers) assigned to Plaintiff’s products;
and (2) by limiting the time period of its responses to 2016 and later.
Having considered the positions and arguments of the parties presented both during a
telephone conference with counsel on May 23, 2018, and in their Joint Status Report submitted
on June 2, 2018 (Doc. 47),2 the undersigned finds that Amazon may not limit its responses either
as to time period or products in the respects described in Plaintiff’s Notice. Specifically, the

1

Plaintiff also alleges claims for false designation of origin, false or misleading advertising; copyright infringement;
Ohio deceptive trade practices; and tortious interference with business expectancy. Doc. 1.
2

During the telephone conference, the undersigned instructed the parties to meet and confer further in an attempt to
resolve the dispute. Despite further meet and confer efforts, counsel were unable to resolve their dispute.
1

undersigned finds that the relevant products are the products sold under the 23 ASINs assigned
by Amazon to Plaintiff’s products.3 The relevant time period for each product is the time period
following Amazon’s assignment of an ASIN to that product, the earliest ASIN having been
assigned in 2013 when Plaintiff began selling on Amazon.4
Analysis
During the telephone conference with counsel, Amazon’s counsel based its position on
Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010). Amazon’s counsel contended that,
under Tiffany, it cannot be held contributorily liable, and therefore should not be required to
provide discovery, as to any time period before it received a specific notice of infringement from
Plaintiff, an event that did not occur until 2016, nor can it be held liable as to any products
beyond the 11 as to which Plaintiff provided such specific notice. Amazon also contends that it
cannot be held liable for direct infringement prior to Fall 2016.
Neither Tiffany, nor cases citing it, including cases decided in this Circuit, is as limited as
Amazon’s counsel contends. In Tiffany, the Second Circuit noted that contributory trademark
infringement “is a judicially created doctrine” and applied a test stated by the Supreme Court in
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), i.e., whether a service
provider accused of contributory infringement “‘continues to supply its [service] to one whom it
knows or has reason to know is engaging in trademark infringement.’” The Second Circuit held
that defendant’s general knowledge that trademark infringement was occurring on its website
was not sufficient to establish liability. Rather, “[s]ome contemporary knowledge of which

3

The Complaint alleges that, after an ASIN is assigned, parties in addition to the manufacturer may sell products
under that ASIN on Amazon.com, i.e., Amazon may sell a product that it purchases from Plaintiff or from others
under an ASIN assigned to one of Plaintiff’s products. So too may third parties. Plaintiff alleges that infringing and
knockoff products have been sold by Amazon and by others using the ASINs assigned to Plaintiff’s products. See,
e.g., Doc. 1, p. 8, ¶¶33-34.
4

Plaintiff argues that the discovery responses should include 2012 when Plaintiff launched its business but before it
began to sell its products on Amazon.com. The undersigned rejects that argument.
2

particular listings are infringing or will infringe in the future is necessary.” 600 F.3d at 107.
Notably, the Second Circuit did not hold that only information provided by the rights holder, as
opposed to third parties, will establish the knowledge necessary to impose liability.
The Sixth Circuit has also followed the Inwood Laboratories test. In Coach, Inc. v.
Goodfellow, 717 F.3d 498, 505 (6th Cir. 2013), the Sixth Circuit affirmed a district court’s grant
of summary judgment in favor of the plaintiff rights holder in a case charging the owner and
operator of a flea market with contributory trademark infringement based on sales of infringing
goods by vendors doing business at the flea market. 717 F.3d at 499-500. Evidence that the
defendant knew or should have known of the infringing sales consisted of letters he received
from the plaintiff and from a prosecutor as well as by raids of the flea market by law
enforcement.
Coach does not hold that evidence that a defendant knows or has reason to know that a
third party to whom the defendant provides a service is engaging in trademark infringement is
limited to information provided by the rights holder. Indeed, the Sixth Circuit’s discussion not
only of the facts before it but also of other cases is to the contrary.5 The Sixth Circuit also
commented that the same reasoning applied in the flea market cases has been applied by other
circuits to internet marketplaces, citing Tiffany and Rosetta Stone Ltd. v. Google, Inc., 676 F.3d
144, 165 (4th Cir. 2012)).

5
The Sixth Circuit described Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143
(7th Cir. 1992), as follows: “Although there was no proof that the flea market operator in Hard Rock Cafe had actual
knowledge its vendors were selling counterfeit products, the court held that knowledge could be established and
contributory liability could be imposed if the flea market operator was shown to be ‘willfully blind’ to ongoing
violations.” Coach, 717 F.3d at 503. The Sixth Circuit concluded that, under Hard Rock Cafe, “a flea market
operator who deliberately fails to investigate suspected infringing activity by vendors and facilitates ongoing
infringement by permitting such vendors to use flea market resources may be subject to contributory liability.” Id.
See also ADT Services v. Brady, 2014 WL 2954722 (W.D.Tenn. June 30, 2013) (business owner personally liable
for direct infringement by business where she was aware of numerous customer complaints to the Better Business
Bureau).

3

Conclusion
Accordingly, the undersigned finds that Amazon may not limit its responses to discovery
to the time period following Plaintiff’s 2016 notice to Amazon of infringement, nor may it refuse
to provide discovery with respect to products sold under some of the 23 ASINS assigned to
Plaintiff’s products on the basis that Plaintiff did not include all of the ASINs in its notice of
infringement. This Order is limited to the questions relating to time period and products raised
in Plaintiff’s Notice and does not address any other issues, including other issues pertaining to
specific discovery requests.

IT IS SO ORDERED.
Dated: June 8, 2018

/s/ Kathleen B. Burke
Kathleen B. Burke
United States Magistrate Judge

4