Infringement & DMCA Takedown Notices on E-Commerce Platforms Like Amazon

Presented by Milord A. Keshishian, Esq.

Course Description:

Live Webcast – April 30, 2021  (also available on-demand)

  • 10:00-11:00am PT / 11:00-12:00pm MT / 12:00-1:00pm CT / 1:00-2:00pm ET

E-commerce’s rise to dominance has resulted in enforcement of patent, copyright, and trademark rights against sellers on different storefront platforms like and To enforce these rights effectively and remove infringing content, an infringement analysis should be performed to avoid lawsuits by the accused.ProLawCLE-e1619636118888-300x82
In such competitive marketplaces, competitors have engaged in frivolous takedown notices to remove the competitors’ listings and effective measures should be instituted to have falsely accused listings and content restored.


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Attorney Slade Neighbors filed a copyright infringement lawsuit against his former girlfriend Veronica Monger for posting his text messages and emails on her blog website.  Monger’s website

claims that the text messages and emails were sent by Neighbors and evidence the alleged physical and mental abuse.  Monger adds commentary to the postings, including providing domestic abuse victims encouragement, resources and information for organizations offering assistance.  The complaint admits that Neighbors “created the emails and text messages,” which he registered with the Copyright Office obtaining two separate registration numbers.  The complaint appears to admit the authenticity of the communications by alleging that Neighbors “discovered that the Copyrighted Works were being used on the website(s) identified above without Plaintiff’s permission.”

The veracity of Monger’s abuse claims aside, if both parties were responding to text messages, an argument can be made that Monger is also a joint author of the text message string.  As a joint author, she is allowed to publish and exploit the work as she sees fit.

Dog chew toys are in the middle of a design patent and trade dress infringement tug-of-war lawsuit filed by Benebone against Pet Qwerks.  The design patents cover a stick design with “Y” shaped ends.  Patent Nos. D870,400 and D871,686.  Benebone contends that Pet Qwerks, “rather than design its own product[,]…began selling a ‘BarkBone Stick’ that is a knock-off of Benebone’s patented design and the ‘Flavorit BarkBon’ that knocks off another popular Benebone design.”  The complaint admits, as it must, that Pet Qwerks’ ends have three prongs instead of the double prong “Y” shape claimed in the patents, but maintains that the accused product appears substantially the same to an ordinary observer and would deceive the observer to purchase the product supposing it to be Benebone’s patented product.

The trade dress design infringement claim, however, seems like a bit of a stretch, but the complaint is dogmatic in its trade dress definition and contentions.  “The Maplestick is a clear example of this design language; while its modern and clean design takes cues from sticks, it intentionally does not look like an actual stick. There are several key design features at work here. First, the main portion of the Maplestick is dead-straight, unlike a real stick.”  Commentary: I have seen straight sticks and distinctly remember one from Catholic boarding school.  “Second, it has equal branches at both ends, unlike a real stick.”  Commentary: it appears that someone has never fashioned a slingshot from a tree branch.  “Third, the branches at each end are terminated in a cylindrical way, which is not found in a natural stick.”  Commentary: sticks are usually cylindrically shaped, that’s why we count the “rings” to determine a tree’s age.  The complaint also lists similarities in the respective packaging, but makes the surprising allegations that both packages display “the American flag and Made in USA label,” as well as Pet Qwerks marking its packaging with “Real Bacon” while Benebone’s uses “Did somebody say Real Bacon?”  Those allegations in support of trade dress similarity are dubious and unprotectable.

Although design patents and trade dress both protect ornamental product designs and often overlap, the test for infringement under each discipline is different.  Design patents use the Ordinary Observer test: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  Gorham Manufacturing, Inc. v. White, 81 U.S. 511, 528 (1871).  The Federal Circuit then tweaked the test to account for prior art and the modified test becomes: ““whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008).

Kendall Jenner’s copyright infringement lawsuit is the most recent in a growing list of celebrities being sued by paparazzi for copyright infringement for posting pictures and videos of themselves to Instagram and other social media sites.  Photographers who take photos of the celebrities in public are deemed the copyright owners and in turn license them to different outlets for publishing.  Celebs who publish these same pictures to their respective Instagram and other social media accounts are then sued by paparazzi photographers for copyright infringement under the Copyright Act (17 U.S.C. § 501).

In Gigi Hadid’s New York case, Hadid was sued a second time for posting a photograph on two of her Instagram accounts.  Her attorneys called the copyright infringement accusation copyright misuse and an attempt to extract money from Hadid.  Her attorneys also argued that Hadid had an implied license or joint authorship because she posed and smiled for the photograph, adding to its protectable elements.  Xclusive-Lee, Inc. v. Hadid, 1:19-cv-00520-PKC-CLP (E.D.N.Y. 2019).  The court dismissed this case and did not address these arguments because the Plaintiff had only applied for a copyright, but not received registration when it brought the suit.  In 2019, the U.S. Supreme Court issued its opinion, holding that a copyright registration is mandatory before bringing a copyright infringement lawsuit.

Another celebrity, Odell Beckham Jr., sued a photo agency arguing the photos and the agency’s later attempt to extort money from Beckham for posting the pictures of him on his social media violated his right to publicity.  Beckham V. Splash News and Picture Agency, LLC et al., 2:18-cv-01001-JTM-JCW (E.D. La. 2018).  This case settled before the court addressed these arguments.

fortnite-copyright-orange-shirt-kid-trademark-lawsuit-300x229The Orange Shirt Kid sued Fortnite’s creator for copyright and trademark infringement for using his signature “Random” dance moves and catchphrase “It’s also a great exercise move!” in the wildly popular videogame.  The Kid shot to YouTube stardom in 2018 after posting his Random dance video and catchphrase.  Fortnite is a free-to-play video game that generates income from in-game purchases, including avatars performing dances.  The complaint alleges:

Like selling a cheap knockoff, Defendants sold the Random dance in-game and simply renamed it to “Orange Justice.”  However, the Orange Justice and the Random are one and the same.  Indeed, this is made plain by the caption text that accompanies the Orange Justice that is the same as the Orange Shirt Kid’s Catchphrase “It’s also a great exercise move” as well as the name of the emote—“Orange Justice” is an obvious reference to “Orange Shirt Kid.”  Defendants did not credit Orange Shirt Kid nor seek his consent to use, display, reproduce, sell, or create a derivative work based upon Orange Shirt Kid’s Random dance or likeness in Fortnite. Defendants also did not seek his consent to use the Catchphrase in Fortnite.

The Orange Shirt Kid’s lawsuit is the latest in a string of similar suits alleging Fortnite creators copied other people’s dance moves for sale in the videogame.  The complaint references Epic Games, Inc.’s alleged copying of “the Backpack Kid’s ‘Floss’ dance (which is known by the same name in-game)…Alfonso Ribeiro’s performance of his famous dance on The Fresh Prince of Bel-Air television show (named the “Fresh” emote)…and 2 Milly’s ‘Milly Rock’ dance (named the ‘Swipe It’ emote).”

chair-design-patent-copyright-furnitureAmini designs and sells unique furniture at various tradeshows and through distributors and its furniture designs are featured in magazines and on popular websites.  Amini obtains intellectual property protection for its furniture designs, including three copyright registrations (Reg. Nos. VA 1-627-918; VA 1-627-828; VA 1-627-832) and three design patents (Design Patent Nos. D592,893 for a table; D644,852 for a China cabinet-buffet; and D576,409 for a chair).  These registrations are for various items such as china cabinets, arm chairs, and tables.

Amini is suing Cosmos Furniture, both its U.S. and Canadian companies, for copyright infringement, design patent infringement, and breach of settlement agreements.  In a prior litigation, Amini sued Cosmos Canada for copyright infringement and design patent infringement.  Before trial, Cosmos Canada settled by agreeing to cease sales of the accused furniture and removing the products from their website.  This 2009 agreement extended to all companies, affiliates, and employees related to Cosmos Canada, which includes Cosmos U.S.

In 2011, Amini allegedly learned that many of the items in the settlement agreement were reintroduced to the website and still sold.  Amini notified Cosmos and another settlement agreement was reached.  This second settlement agreement required Cosmos to exercise due diligence to avoid infringing Amini’s designs, and specifically itemized Amini’s intellectual property rights that could not be violated.

Sugarfina sells premium gourmet candy, including alcohol flavored gummy bears, including luxurious gift packages sold in stores, hotels, and food retailers.  Sugarfina started in 2012 and because of early popularity, federally registered many intellectual property rights, including design patents, copyrights, and trade dress protection for its products and packaging.  Sugarfina’s trade dress protection includes its products’ designs, appearance, and packaging, including features like the square and rectangular shapes, the color combinations, the clear top cubes with a patterned band and shapes, and the bottom container holding a series of cube wells or trays.  Its copyrights cover the box for its clear candy cubes, spaced arrangements, spaced cube receiving wells, and the distinctive boxes use for the clear cubes (Reg. Nos. VA00019663482 and VA0001963483).  Lastly, Design Patent No. D763,684 protects Sugarfina’s “Candy Bento Box” packaging design.  Trade-Dress-Packaging-Candy-1024x363

Bouquet Bar and its owners are sued for federal trade dress infringement, federal false designation of origin and unfair competition, federal patent infringement, federal copyright infringement, and state unfair competition.  Defendants began in 2017 selling gummy bears and other candy products in square and rectangular shaped packaging.  Bouquet Bar appeared on an ABC show called Shark Tank, where they presented their products to a group of wealthy investors.  During the course of the TV show, one investor specifically mentioned that “[t]his looks just like Sugarfina” and advised the owners that they need to pursue something different or more unique.  Additionally, defendants had worked events as a flower vendor where Sugarfina products were present, making them aware of the Sugarfina’s brand and intellectual property rights.

In October 2017 and January 2018, Sugarfina sent Bouquet Bar cease and desist letters and attempted face-to-face meetings to settle the issue to no avail.  Thus, Sugarfina alleges that Bouquet Bar is intentionally copying its trade dress with the intent to cause consumer confusion, despite advice from entrepreneur experts and cease and desist letters.  The Supreme Court held that product design trade dress could not be inherently distinctive and required secondary meaning.  Wal-Mart Sores v. Samara Bros., 529 U.S. 205, 211 (2000).  However, product packaging can be inherently distinctive if it is arbitrary, fanciful, or suggestive.  Id.  Because Sugarfina does not have a federally registered trade dress in its product packaging, it would have to prove that its product packaging is inherently.

On August 10, 2018, I have the pleasure of speaking at CLE-picture-300x105Bridgeport Continuing Education’s “What Makes Jurors Tick?” seminar at Hotel Indigo LA Downtown.  I will discuss how to successfully communicate complex and technical information to jurors.  Click here for more information and to register for the seminar.

House of Lashes is a Southern California beauty company that sells eyelashes, beauty products, and accessories, and is well known in the beauty and eyelash industry.  House of Lashes owns the federally registered ICONIC trademark (Reg. No. 4.839,324) for false eyelashes, adhesives for affixing eyelashes, and artificial eyelashes.  Additionally, House of Lashes has a federal copyright registration for a photograph of its “Iconic” lashes (Copyright Reg. No. VA 1-996-524).  House of Lashes’ ICONIC brand of lashes is one of its most popular products and designs on the market and is sold online as well as in many stores nationwide.  Additionally, House of Lashes alleges that its product’s packaging is inherently distinctive because it is unique in the eyelash industry, and combines elements making it recognizable to consumers without accompanying words.Final-image-273x300

Kiss Nail Products is a competitor in the beauty industry that began selling “Iconic” brand eyelashes on websites and in stores.  On April 24, 2018, House of Lashes sent Kiss Nail Products a cease and desist letter, and the latter responded that it would not be complying with the cease and desist letter and would continue to make and sell “Iconic” branded eyelashes.  Thus, House of Lashes is suing Kiss Nail Products for (1) infringement of registered trademarks (15 U.S.C. § 1114), (2) unfair competition (15 U.S.C. § 1114), (3) false designation of origin (15 U.S.C. § 1125(a)), (4) trade dress infringement (15 U.S.C. § 1125(a)), (5) copyright infringement (17 U.S.C. § 501), (6) registered trademark infringement (Cal. Bus. & Prof. Code § 14335), (7) unfair competition and false designation of origin (Cal. Bus. & Prof. Code § 17200 et seq. and § 17500), and (8) declaratory judgment.

House of Lashes alleges money and time investment in building a loyal fan base and protecting its ICONIC trademark, including a strong social media presence with millions of followers, videos with 18 million views, and estimates over a billion impressions related to their ICONIC brand eyelashes.  House of Lashes argues that the defendant’s purpose in using the Iconic trademark and packaging trade dress is to cause confusion or to deceive customers.  Defendant is also accused of intentionally copying the design, layout, visual presentation, and arrangement in photographs displaying the eyelashes, thereby infringing House of Lashes’ copyright registrations for photographs.