Hart v. Amazon.com, Inc.
191 F. Supp. 3d 809
N.D. Ill.2016Background
- Plaintiff Reginald Hart, an author, alleged Amazon sold or displayed counterfeit copies of two books (Vagabond Natural and Vagabond Spiritual) and used his tradename/mark (Henrietta Press) without permission.
- Hart submitted multiple infringement reports to Amazon and a written demand; Amazon replied it was removing listings and said removal typically takes 2–3 days; listings remained longer and were ultimately removed months later.
- Amazon provided sales records showing six third-party sales of Hart’s books through its site; Hart claims mental anguish and trademark/other harms.
- Hart (pro se originally, later with counsel who withdrew) filed an amended complaint asserting Lanham Act claims (false designation/false endorsement/false advertising), Illinois common-law trademark/unfair competition, IUDTPA, ICFA, negligence, negligent infliction of emotional distress, promissory estoppel, and Illinois Right of Publicity Act claims.
- Amazon moved to dismiss under Rule 12(b)(6); the district court dismissed all claims with prejudice, concluding Hart failed to plausibly allege counterfeit goods, consumer confusion, cognizable damages, or required elements (e.g., impact for emotional distress, unambiguous promise for promissory estoppel).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Lanham Act / likelihood of confusion (false endorsement, false advertising) | Amazon sold/displayed counterfeit books and its listings implied affiliation/approval or authenticity, causing consumer confusion | Listings were resales of genuine goods (first-sale doctrine); Hart fails to plead counterfeit or facts showing likely confusion | Dismissed: no plausible allegation of counterfeits or likelihood of confusion; first-sale doctrine bars claim |
| IUDTPA (state unfair competition) | Amazon’s conduct was deceptive and misrepresented source/approval of books | Claim duplicates Lanham Act theory and fails for same reasons | Dismissed: same failure to plead likelihood of confusion |
| ICFA (consumer fraud) | Amazon misrepresented authenticity and promised timely removal but delayed, causing harm | Hart fails to plead deceptive intent with particularity and lacks allegations of actual, calculable damages | Dismissed: pleading fails Rule 9(b) particularity and plaintiff lacks requisite actual damages |
| Negligence / Negligent infliction of emotional distress | Amazon assumed duty via its takedown/reporting process and breached it, causing emotional/physical harms | Hart fails to allege any contemporaneous physical impact or other elements to sustain these torts | Dismissed: impact rule not satisfied; alleged emotional harms insufficient |
| Promissory estoppel | Hart relied on Amazon’s Report Infringement webpage and email promise (2–3 days) to remove listings | Statements were not unambiguous promises and Hart did not plausibly allege detrimental reliance | Dismissed: no unambiguous promise and reliance inadequately pleaded |
| Illinois Right of Publicity Act | Amazon monetized Hart’s identity by displaying his name and running ads alongside listings | Listing an author’s name truthfully is an IRPA exemption; no misuse for commercial endorsement pleaded | Dismissed: truthful author identification is exempt; no plausible misuse alleged |
Key Cases Cited
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.) (Lanham Act protects against use of marks likely to cause confusion)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir.) (elements of a Section 1125(a) claim: protectable mark and likelihood of confusion)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (U.S.) (plausibility standard for pleadings)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S.) (complaints must contain factual content permitting reasonable inference of liability)
- Sebastian Int’l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073 (9th Cir.) (first-sale doctrine limits trademark owner’s control after initial sale)
- Tumblebus, Inc. v. Cranmer, 399 F.3d 754 (6th Cir.) (resale of genuine goods under producer’s trademark generally does not cause consumer confusion)
- Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813 (7th Cir.) (false advertising requires statements that are literally false or likely to deceive and plaintiff injury)