Factory Direct Wholesale, LLC v. iTouchless Housewares & Products, Inc.

CourtDistrict Court, N.D. California
DecidedOctober 23, 2019
Docket5:19-cv-01228
StatusUnknown

This text of Factory Direct Wholesale, LLC v. iTouchless Housewares & Products, Inc. (Factory Direct Wholesale, LLC v. iTouchless Housewares & Products, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Factory Direct Wholesale, LLC v. iTouchless Housewares & Products, Inc., (N.D. Cal. 2019).

Opinion

8 UNITED STATES DISTRICT COURT

9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11

12 FACTORY DIRECT WHOLESALE, LLC, Case No. 19-CV-01228-LHK

13 Plaintiff, ORDER GRANTING IN PART AND DENYING IN PART MOTION TO 14 v. DISMISS

15 ITOUCHLESS HOUSEWARES & Re: Dkt. No. 31 PRODUCTS, INC., 16 Defendant. 17

18 Plaintiff Factory Direct Wholesale (“Plaintiff”) sued Defendant iTouchless Housewares & 19 Products, Inc. (“Defendant”) and alleged false advertising under the Lanham Act, intentional 20 interference with contract, intentional interference with prospective economic advantage, 21 negligent interference with prospective economic advantage, violations of California’s Unfair 22 Competition Law, and trademark infringement. Before the Court is Defendant’s motion to 23 dismiss. ECF No. 34. Having considered the submissions of the parties, the relevant law, and the 24 record in this case, the Court GRANTS in part and DENIES in part Defendant’s motion to 25 dismiss. 26 I. BACKGROUND 27 A. Factual Background 1 As alleged in the First Amended Complaint (“FAC”), Plaintiff and Defendant are 2 competing sellers on the Amazon e-commerce platform. ECF No. 28 ¶ 2 (FAC). Sellers on 3 Amazon are subject to established rules and policies that govern their advertisements (i.e., listings) 4 of their products on the website. Id. ¶ 20. For example, the Amazon Seller Agreement, which 5 governs the seller’s access and use of Amazon’s online marketplace, requires the seller to 6 represent and warrant that “any information provided . . . to Amazon . . . is at all times accurate 7 and complete.” Id. ¶¶ 20-21. Other policies, such as the Amazon Code of Conduct, requires that 8 sellers “not engage in any ‘unfair behavior’ or activities that (a) intentionally damage another 9 seller, including its listings or ratings, or (b) manipulate or game the Amazon.com selling or 10 buying process, including Amazon’s search results or sales rankings.” Id. ¶ 24. “Sellers are 11 further prohibited from contributing false, misleading or inauthentic content.” Id. (citation 12 omitted). The FAC alleges that both Plaintiff and Defendant agreed to these terms with Amazon 13 in order to sell their products. Id. ¶¶ 22-23. 14 Products on Amazon are identified “through a unique combination of 10 letters and 15 numbers, referred to as an Amazon Standard Identification Number or “ASIN” designation.” Id. 16 ¶ 31. “When a vendor uploads information for a new product for sale,” “Amazon assigns that new 17 product a unique ASIN,” which appears in the product’s details and can be used to search and find 18 the product. Id. Plaintiff’s products have various unique ASIN designations and are advertised on 19 Amazon. Id. ¶¶ 32-33. 20 In the “summer of 2018,” Plaintiff discovered that “false, deceptive, and unauthorized 21 changes were being made” to its product advertisements and listings. Id. ¶¶ 34-35. These 22 alterations included changing product descriptions, providing improper ASIN numbers, and 23 changing the product’s listing category (thereby moving the product from Amazon’s Home & 24 Kitchen category). Id. Plaintiff learned that a third party was requesting Amazon to make these 25 changes, and as a result of Amazon’s actions, Plaintiff’s products’ ASINs were being merged into 26 other products. Id. ¶ 36. 27 Plaintiff reportedly discovered that Defendant was responsible for making these requests 1 and filed suit in the Northern District of Georgia on August 29, 2018 (the “Georgia action”). Id. 2 ¶¶38-42; see also Factory Direct Wholesale, LLC v. iTouchless Housewares & Prods. Inc., Case 3 No. 1:18-cv-04091-CAP, ECF No. 1 (N.D. Ga. Aug. 29, 2018); ECF No. 31-1 Ex. A. Around 4 October 23, 2018, Plaintiff also discovered that Defendant was utilizing, without authorization or 5 license, Plaintiff’s BESTOFFICE trademark to advertise a 13-gallon trash can. FAC ¶ 73. 6 Plaintiff is the owner of the trademark for BESTOFFICE (“Supplemental Mark”) and has used the 7 Supplemental Mark since December 7, 2013. Id. ¶ 65-66. Defendant had used the mark since no 8 later than January 10, 2018 and sought to register the Supplemental Mark on September 10, 2018. 9 Id. ¶¶ 68-69. The United States Patent and Trademark Office (“USPTO”) rejected the registration 10 on December 19, 2018 because the mark was too similar to Plaintiff’s Supplemental Mark. Id. 11 ¶ 75.1 Plaintiff did not bring suit for trademark infringement in the Georgia action. 12 During the pendency of the Georgia action, Plaintiff alleges that the “knowingly false and 13 deceptive changes” to its listings ceased. However, beginning in February 2019, after the filing of 14 the Georgia action, Defendant allegedly “renewed its conduct in requesting that Amazon make 15 changes to [Plaintiff’s] product listings that are knowingly false, deceptive and unauthorized, and 16 that mislead the consuming public by misrepresenting Defendant’s advertised products as well as 17 [Plaintiff’s] products and listings.” Id. ¶ 46. 18 For example, in late February 2019, Defendant allegedly requested unauthorized changes 19 to one of Plaintiff’s listings, the “4ZB4 Listing.”2 As a result of these requests, Amazon altered 20 the 4ZB4 Listing such that it falsely advertised the 4ZB4 product as a “product manufactured and 21 branded by Defendant”. Id. ¶ 49; see id. ¶ 50 (Defendant “caused Amazon to make changes to the 22 product image, title, and description that falsely and deceptively changed FDW’s 4ZB4 Listing 23 from the original 13-gallon trash can to an ‘iTouchless EcoWise Compost Bin Container Dual 24 Deodorizer Activated Carbon Filters, 1.32 Gallon Kitchen Trash Can, Stainless Steel Lid, Odor- 25

26 1 On March 5, 2019, the USPTO found that the Supplemental Mark satisfied the requirements to move to the Principal Register. Id. ¶ 77. 27 2 The 4ZB4 Listing was not at issue in the Georgia action. See ECF No. 31-1, Ex. A ¶ 11 (the “Georgia complaint”). 1 Stopping Power White/Cream Buck.’”). 2 Plaintiff alleges that during this time period starting in February 2019, Defendant 3 attempted to make additional and similar false and deceptive changes to other product listings 4 belonging to Plaintiff. See id. ¶¶ 54-64. According to Plaintiff, Defendant “falsely represented to 5 Amazon that [Plaintiff’s] 4ZB4 Listing was a duplicate listing that should be merged into 6 [Defendant’s] Listing.” Id. ¶ 54. Amazon merged the two listings such that the 4ZB4 Listing “no 7 longer appeared in customer searches on” Amazon. Id. ¶ 55. 8 Defendant also allegedly “attempted to falsely and deceptively” merge two of Plaintiff’s 9 listings—the “FQWE Listing” and the “JYK7 Listing,” both of which are unrelated to the 4ZB4 10 Listing. Id. ¶¶ 59-62. Plaintiff, however, does not allege that Defendant’s efforts were successful. 11 Id.. Finally, Plaintiff alleges that Defendant made additional requests to Amazon in 2019, 12 including (1) “[f]alse and deceptive changes to the image(s) in [Plaintiff’s] listing; (2) “[f]alse and 13 deceptive changes to the description in [Plaintiff’s] listing; (3) “[f]alsely submitted an unfavorable 14 review for [Plaintiff’s] listing; (4) [f]alsely and deceptively removing [Plaintiff] from Amazon’s 15 vendor control.” Id. ¶ 63. 16 B. Procedural History 17 1. The Georgia Action 18 On August 29, 2018, Plaintiff sued Defendant in the Northern District of Georgia. ECF 19 No. 31-1 Ex. A (the “Georgia complaint”). Plaintiff claimed that Defendant requested 20 unauthorized changes to Plaintiff’s listings, including providing improper ASIN variances, but the 21 Complaint did not allege that any of the changes were deceptive or misleading. Id. ¶¶ 8-22. 22 Plaintiff sued pursuant to product listings with ASINs B071KZ91K1, B0727VDHZQ, 23 B072F1WBXW, and B07BTHQMPQ.3 Id. ¶ 11. Plaintiff sued under the Lanham Act, the 24 Georgia Uniform Deceptive Trade Practices Act, and the Georgia Fair Business Practices Act. Id. 25 ¶¶ 23-36.

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