Factory Direct Wholesale, LLC v. Office Kick, Inc.

CourtDistrict Court, S.D. Georgia
DecidedFebruary 27, 2023
Docket4:21-cv-00368
StatusUnknown

This text of Factory Direct Wholesale, LLC v. Office Kick, Inc. (Factory Direct Wholesale, LLC v. Office Kick, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Georgia 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. Office Kick, Inc., (S.D. Ga. 2023).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF GEORGIA SAVANNAH DIVISION

FACTORY DIRECT WHOLESALE, LLC,

Plaintiff, CIVIL ACTION NO.: 4:21-cv-00368

v.

OFFICE KICK, INC.; CKNAPP SALES, INC.,

Defendants.

O RDE R Presently before the Court is Defendants Office Kick, Inc., and CKNAPP Sales, Inc.’s (collectively “Defendants”) Motion to Dismiss. (Doc. 32). Plaintiff Factory Direct Wholesale, LLC, brought this suit alleging, inter alia, that Defendants engaged in a civil conspiracy to tortiously interfere with Plaintiff’s contractual relationship with non-party Amazon, Inc. (“Amazon”). (Doc. 15.) Plaintiff alleges that Defendants filed frivolous notices to Amazon that certain desk converters sold by Plaintiff on Amazon’s website were infringing Defendants’ patents, resulting in Amazon removing the products from the site. (Id.) Pursuant to Federal Rule of Civil Procedure 12(b)(6), Defendants filed the at-issue Motion to Dismiss, arguing that Plaintiff failed to state claims for tortious interference and civil conspiracy. (Doc. 32.) The Motion has been fully briefed. (See id.; docs. 43, 49–50.) For the reasons stated below, the Court DENIES Defendants’ Motion. (Doc. 32.) BACKGROUND I. The Parties and Defendants’ Patents

The following allegations are set forth in Plaintiff’s Amended Complaint. (Doc. 15.) Plaintiff sells various models of adjustable standing desk converter units, which allow users to either stand or sit while using the work surface. (Id. at p. 5.) Plaintiff has sold at least fifteen different models of desk converters on Amazon’s website. (See id. at pp. 6, 29–30.) Defendants are Plaintiff’s competitors, selling desk converters on their own respective websites. (Id. at p. 4.) Defendant CKNAPP Sales, Inc., also known as Vivo (“Vivo”), is a parent or related company of, or is otherwise affiliated with, Defendant Office Kick, Inc. (“Office Kick”). (Id. at p. 3.) Specifically, Vivo owns and/or exercises managerial control over Office Kick, and Chance Knapp, Vivo’s President, is Office Kick’s registered agent. (Id. at p. 5.) According to the records of the United States Patent Office, Office Kick is the holder of three patents related to desk converter designs: (1) Patent No. 11,134,773 (the “773 Patent”), (2) Patent No. 11,134,774 (the “774 Patent”), and (3) Patent No. 10,575,630 (the “630 Patent,” and,

collectively with the 773 and 774 Patents, the “Patents”). (Id. at pp. 7–8, 22, 25; see docs. 15-1, 15-5, 15-6.) Both Office Kick and Vivo identified the Patents as part of their respective intellectual property (“IP”) portfolios on their websites. (Doc. 15, p. 5.) II. Amazon’s Seller Agreement and IP Policies1

1 Although the documents described in this section are not attached to Plaintiff’s Amended Complaint, Defendants attached them to their Motion to Dismiss, (docs. 32-1, 32-2), and the documents are both undisputed and central to Plaintiff’s Amended Complaint. In fact, Plaintiff references and relies upon them in its Response to Defendants’ Motion to Dismiss. (See, e.g., doc. 43, pp. 6–7.) Thus, pursuant to the incorporation by reference doctrine, the Court may consider them without converting Defendants’ Motion to a motion for summary judgment under Rule 56. See Bakos v. Unum Life Ins. Co. of Am., No. 1:21-cv- 058, 2022 WL 791922, at *3 n.2 (S.D. Ga. Mar. 14, 2022) (“[T]he court may consider a document attached to a motion to dismiss without converting the motion into one for summary judgment if the attached document is (1) central to the plaintiff’s claim and (2) undisputed.”) (quoting Day v. Taylor, 400 F.3d 1272, 1275–76 (11th Cir. 2005)), aff’d, No. 22-11131, 2022 WL 3696648 (11th Cir. Aug. 25, 2022). Sellers on Amazon are bound by the Amazon Services Business Solutions Agreement (the “Seller Agreement”). (See doc. 32-1, p. 2 (“By registering for or using [Amazon’s] services, you . . . agree to be bound by the terms of [the Seller Agreement].”).) Paragraph 18 of the Seller Agreement gives Amazon “the right to immediately halt any [seller’s] [t]ransactions, prevent or

restrict access to the Services or take any other action to restrict access to or availability of . . . any unlawful items[] or any items otherwise prohibited by applicable Program Policies.” (Id. at p. 12.) “Service” includes selling on Amazon. (Id. at p. 17.) The Seller Agreement also binds sellers to Amazon’s “service terms and program policies” for the country in which the seller is authorized to use Amazon’s services. (Id. at p. 2.) A separate webpage, titled “Intellectual Property for Rights Owners,” (the “IPRO page”) indicates that a patent holder (i.e. “rights owner”) may submit a notice of patent infringement to Amazon by submitting a report. (Doc. 32-2, pp. 2, 8.) The IPRO page is contained in a section of Amazon’s website titled “Policies, agreements, and guidelines.” (See id. at p. 1.) According to the IPRO page, to be “valid,” the report must identify the infringing products and include

“information that will help Amazon in processing [the] complaint.” (Id. at p. 8.) Furthermore, the webpage states that, if the notice is “valid,” Amazon will inform the responsible seller of the infringement claim and provide the seller with the claimant’s contact information. (Id. at p. 10.) Additionally, if the notice of infringement is “accepted,” Amazon “will remove the [reported] content . . . and take appropriate action against the responsible sellers.” (Id.) Finally, the IPRO page provides a link to “[r]elated articles” on Amazon’s site, including “Program Policies.” (Id.) III. Defendants’ Infringement Notifications and the Removal of Plaintiff’s Products from Amazon’s Website

On October 6, 2021, Defendants’ counsel wrote to Amazon and demanded that it remove two of Plaintiff’s best-selling models—which were sold under the Amazon Standard Identification Numbers (ASINs) B07G36F79M (the “79M desk converter”) and B07WDV1GDV (the “GDV desk converter”)—from its website because, counsel claimed, the products were infringing the 773 Patent. (Doc. 15, pp. 6–8.) On that same day, Amazon notified Plaintiff of Defendants’ request. (Doc. 15, p. 8; see doc. 15-2.) Soon after, Plaintiff contacted Defendants and asked them to

withdraw their takedown request because, in Plaintiff’s view, the products were not infringing the 773 Patent. (Id. at p. 9.) Defendants refused, however, and, on November 2, 2021, Amazon removed the 79M and GDV models from its website. (Id.) Ultimately, at Defendants’ request, Amazon removed thirteen other models of desk converters Plaintiff offered for sale on the site for infringing one of the Patents. (See id. at pp. 19– 30.) Although Plaintiff asked Amazon to re-list the removed products, Amazon refused to do so because Defendants never withdrew their infringement claims. (Id. at pp. 9, 21 24, 28.) According to Plaintiff, the product removals have caused it to suffer damages, including lost sales and profits, as well as reputational harm. (Id. at pp. 2, 6, 21, 24, 28–29.) IV. Procedural History

On December 31, 2021, Plaintiff brought this suit, asserting, inter alia, tortious interference and civil conspiracy claims against Defendants.2 (Doc. 1 (original Complaint); see doc. 15 (Amended Complaint).) Plaintiff alleges that Defendants conspired to hire counsel to wrongfully notify Amazon that Plaintiff’s desk converters infringed the Patents, thereby inducing Amazon to remove the products from its site. (Doc. 15, pp. 40–43.) According to Plaintiff, Defendants lacked a “colorable or good faith argument” that its products were infringing, and, thus, Defendants’ notices were “frivolous and objectively baseless.” (Id. at pp. 40, 43.) Plaintiff alleges that its

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Factory Direct Wholesale, LLC v. Office Kick, Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/factory-direct-wholesale-llc-v-office-kick-inc-gasd-2023.