12 F. Supp. 3d 1341
W.D. Wash.2014Background
- Milo & Gabby, LLC (and founder Karen Keller) design and sell animal-shaped "Cozy Companion" pillowcases and hold registered trademarks, U.S. copyrights, and design patents.
- Plaintiffs allege Amazon sold knock‑off versions on amazon.com; some listings identified FAC System, LLC as the seller and Amazon as the fulfiller.
- Plaintiffs sued Amazon asserting claims including patent and copyright infringement (Counts I–II), Washington Consumer Protection Act (CPA) / unfair competition (Count III), right of publicity (Count V), and trademark counterfeiting (Count VII).
- Amazon moved under Fed. R. Civ. P. 12(b)(6) to dismiss Counts III, V, and VII, and to strike requests for relief based on induced, contributory, or willful patent/copyright liability.
- The Court evaluated preemption under federal IP law, pleading adequacy under Iqbal/Twombly, and whether exhibits and public records could be judicially noticed. Court also raised possible joinder of FAC System as a necessary party.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether CPA/unfair competition claim survives or is preempted | CPA protects Milo & Gabby from Amazon’s sale/distribution of infringing products; allegations incorporate prior infringement facts | CPA claim is a formulaic recitation that merely incorporates copyright/patent claims and is thus preempted | Dismissed without prejudice; claim ambiguous and, as pled, preempted by federal IP law |
| Standing and preemption for right of publicity (use of children’s photos) | Keller’s allegation of use of her children’s images suffices; publicity right distinct because children (not Milo & Gabby) own it | Keller lacks factual basis to show authority to sue for children; claim duplicates copyright rights and is preempted | Dismissed without prejudice for lack of standing facts and copyright preemption |
| Trademark counterfeiting under Lanham Act | Plaintiffs rely on complaint exhibits showing reproduction of registered Milo & Gabby mark | Exhibits do not show the registered mark; counterfeiting and intent not plausibly pled | Dismissed without prejudice for failure to plausibly allege reproduction or willful intent |
| Requests for injunctive/enhanced relief for induced/contributory or willful infringement | Plaintiffs may plead alternative theories (inducement, contributory, willfulness) | Plaintiffs failed to plead facts showing Amazon’s knowledge or inducement; relief for indirect/willful theories unsupported | Portions of the prayer for relief stricken (enhanced damages, exceptional case finding, injunctive relief for inducement/contributory infringement) |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility standard for pleading)
- Bell Atl. v. Twombly, 550 U.S. 544 (2007) (complaint must do more than labels and conclusions)
- Laws v. Sony Music Entertainment, 448 F.3d 1134 (9th Cir. 2006) (two‑part copyright preemption test)
- Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010) (right‑of‑publicity claim preempted where essence is unauthorized reproduction/distribution)
- Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663 (7th Cir. 1986) (right‑of‑publicity claims preempted when they fall within copyright subject matter and are equivalent to exclusive §106 rights)
- G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Service, Inc., 958 F.2d 896 (9th Cir. 1992) (patent law preempts broader state‑law protections)
- Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984) (state law claims restating copyright claims are preempted)