Amazon escapes liability for its Brand Registry advertising

Deetsch v. Lei, 2023 WL 6373073, No. 22-cv-1166-RSH-BLM (S.D. Cal. Jul. 21, 2023)

Deetsch alleged that he owned design patents for CPAP pillow products, which the Lei defendants infringed. They also allegedly used Deetch’s image in ads and on packaging, and allegedly falsely claimed on Amazon that their pillow products “were designed in the United States but are manufactured in China.”

In December 2020, Deetsch notified Amazon of his patents through the Brand Registry portal and asked Amazon to remove the Lei defendants’ products. He sent two letters by mail in March 2022, but was told he needed to use the Brand Registry … which he had already done.

Amazon’s Brand Registry advertises “Automated Protections” that are “[p]owered by Amazon’s Machine Learning.” Amazon claims its service will “save valuable time,” allows users to report “patent[ ] and design right violations,” uses “advanced machine learning that prevents bad listings,” and can “[r]emove counterfeits instantly” “without the need to contact [Amazon].” Deetch signed up for and paid for a Brand Registry service subscription, and submitted multiple complaints through that system, allegedly to no avail.

Since the designs were not plainly dissimilar, infringement was plausible.

False advertising, Lei defendants: The complaint didn’t explain how “designed in the United States but … manufactured in China” was materially deceptive and thus didn’t meet FRCP 9(b) pleading standards. A “true statement that a product was designed in the United States” is not “a representation that the product does not infringe any third party’s intellectual property rights.” Motion to dismiss granted.

False advertising, Amazon defendants: The complaint didn’t explain how any of the statements about the Brand Registry were false or misleading. It wasn’t enough to suggest that “taking all of the statements together, a consumer would reasonably expect the Brand Registry service to work better or faster than it did for Plaintiff.” Even a reasonable consumer’s “disappointment that a service did not work as well or as quickly as hoped” doesn’t show false advertising. Also, plaintiff was a customer, not a competitor, and not within the relevant zone of interests. (State law claims would have been better.)

False association, Lei defendants: Although he alleged that they used his image, he didn’t allege that this would cause confusion, mistake, or deception as to his association with the Lei defendants’ products, nor any facts that would establish that his likeness is recognizable by would-be consumers. Again, right of publicity would’ve been better.

A copyright claim was dismissed because the plaintiff had yet to receive his registration; this couldn’t be corrected by amendment in order to implement the command of Fourth Estate; the dismissal was without prejudice to refiling a new action.