`
`
`
`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 1 of 18
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF MINNESOTA
`
`Plaintiff,
`
`Civil No. 18-232 (JRT/HB)
`
`
`
`MEMORANDUM OPINION AND
`ORDER
`
`
`
`FURNITERDEALER.NET, INC.,
`
`
`
`v.
`
`AMAZON.COM, INC., and COA, INC.,
`d/b/a COASTER COMPANY OF
`AMERICA,
`
`
`
`
`
`Defendants.
`
`Michael M. Lafeber and O. Joseph Balthazor, BRIGGS & MORGAN, PA,
`80 South Eighth Street, Suite 2200, Minneapolis, MN 55402, for plaintiff.
`
`Daniel M. Cislo, CISLO & THOMAS, LLP, 12100 Wilshire Boulevard,
`Suite 1700, Los Angeles, CA 90025, and Robert J. Gilbertson, GREENE
`ESPEL PLLP, 222 South Ninth Street, Suite 2200, Minneapolis, MN 55402,
`for COA, Inc.
`
`This case arises out of Defendant COA, Inc.’s (“Coaster”) and Defendant
`
`Amazon.com’s (“Amazon”) alleged copying of
`
`text created by Plaintiff
`
`FurnitureDealer.net (“FDN”). In 2010, FDN and Coaster entered into an Agreement
`
`in which FDN agreed to create and license to Coaster a website to market Coaster’s
`
`furniture products. Copyrighted content from that site allegedly appeared on
`
`Amazon URLs in 2016. FDN brought this action against Coaster and Amazon in
`
`2018, alleging copyright infringement and breach of contract. In March 2019,
`
`Coaster brought eight counterclaims against FDN.
`
`
`
`1
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 2 of 18
`
`
`
`Before the Court now is FDN’s Motion for Partial Dismissal of Coaster’s
`
`Answer, Affirmative Defenses, and Counterclaims. FDN moves to dismiss the
`
`following counterclaims: (III) Tortious Interference with Existing Business
`
`Relationships; (IV) Tortious Interference with Prospective Economic Advantage;
`
`(V) False and/or Misleading Representation of Fact – Lanham Act; (VI) Unfair
`
`and/or Deceptive Trade Practices – Minnesota Uniform Deceptive Trade Practices
`
`Act (“MUDTPA”); (VII) Unfair Business Practices – California Business &
`
`Professions Code
`
`(“CBPC”); and
`
`(VIII) Contractual and/or Equitable
`
`Indemnification.
`
`
`
`Because they are preempted by the Copyright Act, the Court will dismiss
`
`Counts III, IV, VI, and VII with prejudice. Because Coaster’s Lanham Act claim is
`
`foreclosed under Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003),
`
`the Court will dismiss Count V with prejudice. Because FDN is not required to
`
`indemnify Coaster for any damages or fees Coaster may be required to pay as a
`
`result of this action, the Court will dismiss Count VIII with prejudice.
`
`BACKGROUND
`
`I.
`
`Coaster and FDN’s Agreement and Website
`
`FDN is a Minnesota corporation that specializes in the creation, production,
`
`and management of marketing solutions for home furniture companies. (1st Am.
`
`Compl. (“FAC”) ¶¶ 1, 8, May 14, 2018, Docket No. 6.) As part of its marketing
`
`services, FDN creates and manages websites for furniture retailers. (Id. ¶ 8.) FDN
`
`
`
`2
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 3 of 18
`
`also creates original content for use on those websites, including written
`
`descriptions of the products sold on the sites. (Id.) FDN keeps its original content
`
`in a content library (the “Content Library”). (Id.) The Content Library is stored in
`
`an automatic database that was copyrighted in September 2015. (Id. ¶ 8-9 & Ex. A
`
`at 2, May 14, 2018, Docket No. 6-1.)
`
`
`
`Coaster is a California furniture company and a longtime customer of FDN.
`
`(FAC ¶¶ 3, 10.) In February 2010, Coaster and FDN executed an agreement (the
`
`“Agreement”) establishing that FDN would create and maintain a customized
`
`website (the “Website”) for Coaster. (Id. ¶ 11; Decl. of Larry Furiani ¶ 3, Ex. 1
`
`(“Agreement”) at 2, July 6, 2018, Docket No. 40.) The Agreement established that
`
`the Website would be owned by FDN and licensed to Coaster. (Agreement ¶¶ 1, 9.)
`
`The Agreement also established that FDN would “retain[] all right, title and interest
`
`in and to all software . . . [and] content . . . used by [FDN] to provide or resulting
`
`from the provision by [FDN] of its services,” and that Coaster would “acquire[] no
`
`rights with respect thereto except for the right to use and administer its Site.”
`
`(Agreement ¶ 11.)
`
`Pursuant to the Agreement, FDN created text to describe the products in
`
`Coaster’s catalog and placed that text on the Website. (See FAC ¶¶ 10-12;
`
`Agreement ¶ 2.) FDN added the descriptive text and other content used on the
`
`Website to its Content Library. (FAC ¶ 11.)
`
`
`
`FDN alleges that, because the descriptive text it created for the Website is
`
`part of its Content Library, the text is protected by both the Agreement and FDN’s
`
`
`
`3
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 4 of 18
`
`2015 copyright. (FAC ¶ 11.) To alert Website users that the Website’s content is
`
`copyrighted, FDN placed a graphic and copyright notice (the “Notice”) on each page
`
`of the Website. (Id. ¶ 34.) The Notice states: “© 2006-2016 FurnitureDealer.net,
`
`Inc., All rights reserved. Nothing on this page may be copied or reproduced without
`
`explicit permission.” (Id.) Coaster disputes that the text is covered by FDN’s
`
`copyright. Coaster also alleges that much of the content on the Website originated
`
`with Coaster’s own catalog and that Coaster owns several copyrights to its catalog
`
`content. (Answer ¶ 146, Mar. 28, 2019, Docket No. 92.)
`
`II.
`
`FDN Discovers Its Text on Amazon.com
`
`FDN noticed that the descriptive text it created for Coaster appeared on
`
`Amazon.com URLs. (FAC ¶¶ 14, 19.) On February 25, 2016, FDN submitted a
`
`takedown request to Amazon via email pursuant to the Digital Millennium
`
`Copyright Act (“DMCA”) and in accordance with Amazon’s policies. (Id. ¶¶ 17-
`
`18.) To help Amazon identify the allegedly infringing material, FDN attached a
`
`spreadsheet to its email identifying 394 examples of URLs with infringing content.
`
`(Id. ¶ 19.) For each instance of alleged infringement, FDN included the text as
`
`written on the relevant Amazon URL and compared it to the text as it appeared on
`
`the Website. (Id.) FDN also included links to the Amazon URLs and the Website.
`
`(Id.)
`
`On February 26, Amazon informed FDN via email that it was unable to
`
`identify the relevant items and directed FDN to paste a link to each item directly
`
`
`
`4
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 5 of 18
`
`into an email. (Id. ¶ 21.) FDN complied with that request. (Id. ¶ 24.) Amazon then
`
`requested that FDN identify the exact text it believed was protected, despite FDN
`
`having already included the text in the spreadsheet attached to its original email.
`
`(Id. ¶¶ 25-26.) On February 29, FDN complied with that request. (Id. ¶ 27.)
`
`Amazon responded to say it had received the information, but did not follow up with
`
`a substantive response. (Id. ¶ 28.)
`
`On April 1, 2016, FDN send a second take down request to Amazon via
`
`FedEx. (Id. ¶ 29.) On April 5, Amazon emailed FDN and stated that it had received
`
`the allegedly infringing material from Coaster. (Id. ¶ 30.) Coaster denied sharing
`
`the text with Amazon, but Amazon insisted that Coaster had provided it and
`
`repeatedly suggested that FDN work with Coaster to resolve the issue. (Id. ¶¶ 32,
`
`37, 44.) Seeking to avoid further confusion, on April 12, FDN requested a telephone
`
`conference with Amazon. (Id. ¶ 42.) Amazon did not respond, prompting FDN to
`
`send another FedEx to Amazon reiterating its claims on April 22. (Id. ¶ 43.)
`
`Amazon responded via email on April 26, this time stating that the alleged
`
`infringement was not governed by the DMCA. (Id. ¶ 44.)
`
`
`
`FDN then sought and received written acknowledgment from Coaster that
`
`FDN was the owner of the content at issue and that Coaster had not authorized
`
`Amazon to use that content. (Id. ¶¶ 45, 47.) FDN sent these confirmations to
`
`Amazon’s legal department via FedEx on May 19 and June 16, 2016. (Id.) Amazon
`
`sent an automated response to FDN but did not provide a substantive response. (Id.
`
`¶ 48.)
`
`
`
`5
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 6 of 18
`
`
`
`FDN alleges that Amazon never removed the allegedly infringing content
`
`from its URLs. (Id.) In contrast, Coaster alleges that, in response to what it labels
`
`FDN’s “harassment” of Amazon, Amazon “may have removed product information
`
`about numerous Coaster products from the product detail pages . . . and caused
`
`Coaster’s furniture items to appear lower in search results.” (Answer ¶ 135.)
`
`Coaster further alleges that its relationship with Amazon has been damaged as a
`
`result of FDN’s actions. (Id. ¶ 136.)
`
`
`
`Only after FDN brought this lawsuit against Amazon did it allegedly learn
`
`that Coaster was responsible for uploading some or all of the text in issue onto
`
`Amazon’s systems. (FAC ¶ 49.)
`
`III.
`
`Indemnification
`
`In addition to the terms discussed above, the Agreement between Coaster and
`
`FDN contains an indemnification clause. (Agreement ¶ 18.) As relevant here, the
`
`clause states:
`
`FURNITUREDEALER.NET must indemnify, defend and
`hold harmless COASTER and its officers, directors, and
`employees, from any claim alleging the software licensed to
`COASTER under this Agreement infringes any patent,
`trademark, or copyright.
`(Id.) The Agreement does not define “software.”
`
`Amazon has allegedly sought indemnification from Coaster for the claims
`
`FDN brought against Amazon. (Answer ¶ 177.) Coaster seeks indemnification
`
`from FDN for Amazon’s claims against Coaster. (Id.)
`
`
`
`6
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 7 of 18
`
`IV. Procedural History
`
`FDN filed an Amended Complaint on May 14, 2018, alleging seven Counts
`
`against Coaster and five Counts against Amazon. (See generally FAC.) Coaster
`
`moved to dismiss for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6).
`
`(Mot. to Dismiss, July 6, 2018, Docket No. 35.) On March 14, 2019, this Court
`
`issued an Order denying Coaster’s motion with respect to all but one of FDN’s
`
`claims. FurnitureDealer.net, Inc. v. Amazon.com, Inc., Civ. No. 18-232, 2019 WL
`
`1207011 (D. Minn. Mar. 14, 2019). Following that decision, Coaster filed an
`
`Answer, Affirmative Defenses, and Counterclaims. (Answer.) Coaster alleges
`
`eight counterclaims against FDN: (I) Declaratory Judgment of Non-Infringement;
`
`(II) Declaratory Judgment of Invalidity; (III) Tortious Interference with Existing
`
`Business Relationships; (IV) Tortious Interference with Prospective Economic
`
`Advantage; (V) False and/or Misleading Representation of Fact – Lanham Act; (VI)
`
`Unfair and/or Deceptive Trade Practices – Minnesota Uniform Deceptive Trade
`
`Practices Act; (VII) Unfair Business Practices – California Business & Professions
`
`Code; and (VIII) Contractual and/or Equitable Indemnification. (Answer ¶¶ 121-
`
`179.) FDN moves to dismiss Counts III-VIII pursuant to Rule 12. (Mot. to Dismiss,
`
`Apr. 18, 2019, Docket No. 95.)
`
`
`
`7
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 8 of 18
`
`DISCUSSION
`
`I.
`
`Standard of Review
`
`In reviewing a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6),
`
`the Court considers all facts alleged in the complaint as true to determine if the complaint
`
`states a “claim to relief that is plausible on its face.” Braden v. Wal-Mart Stores, Inc., 588
`
`F.3d 585, 594 (8th Cir. 2009) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). To
`
`survive a motion to dismiss, a complaint must provide more than “‘labels and conclusions’
`
`or ‘a formulaic recitation of the elements of a cause of action.’” Iqbal, 556 U.S. at 678
`
`(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Although the Court
`
`accepts the complaint’s factual allegations as true, it is “not bound to accept as true a legal
`
`conclusion couched as a factual allegation.” Twombly, 550 U.S. at 555 (quotation omitted).
`
`“A claim has facial plausibility when the plaintiff pleads factual content that allows the
`
`court to draw the reasonable inference that the defendant is liable for the misconduct
`
`alleged.” Iqbal, 556 U.S. at 678. “Where a complaint pleads facts that are merely
`
`consistent with a defendant’s liability, it stops short of the line between possibility and
`
`plausibility,” and therefore must be dismissed. Id. (internal quotations omitted). The Court
`
`“construe[s] the complaint in the light most favorable to the plaintiff[s], drawing all
`
`inferences in their favor.” Ashley Cty., Ark. v. Pfizer, Inc., 552 F.3d 659, 665 (8th Cir. 2009)
`
`(quotation omitted) (alteration in original).
`
`In reviewing a motion to dismiss, the Court may consider the allegations in the
`
`complaint as well as “those materials that are necessarily embraced by the pleadings.”
`
`Schriener v. Quicken Loans, Inc., 774 F.3d 442, 444 (8th Cir. 2014).
`
`
`
`8
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 9 of 18
`
`II.
`
`Preemption
`
`A.
`
`Tortious Interference Claims
`
`Coaster alleges tortious interference based on two theories. First, Coaster alleges
`
`that FDN interfered with Coaster and Amazon’s business relationship and caused Coaster
`
`to lose a portion of its business expectancy through its “overbroad, unsupported claims of
`
`copyright infringement against Amazon.” (Answer ¶¶ 134, 140.) Second, Coaster alleges
`
`that FDN committed “fraud on the Copyright Office” and that such fraud interfered with
`
`Coaster and Amazon’s business relationship. (Id.) Coaster has not alleged facts to support
`
`or explain its allegations of fraud.
`
`
`
`FDN argues that Coaster’s tortious interference claims are preempted by the
`
`Copyright Act. “The Copyright Act provides the exclusive source of protection for ‘all
`
`legal and equitable rights that are equivalent to any of the exclusive rights within the
`
`general scope of copyright as specified by . . . [§] 106’ of the Copyright Act.” Davidson
`
`& Assocs. v. Jung, 422 F.3d 630, 638 (8th Cir. 2005) (quoting 17 U.S.C. § 301(a)). Thus,
`
`state law claims are preempted by the Copyright Act if “(1) the work at issue is within the
`
`subject matter of copyright as defined in §§ 102 and 103 of the Copyright Act, and (2) the
`
`state-law-created right is equivalent to any of the exclusive rights within the general scope
`
`of copyright as specified in § 106.”1 (Id.) As such, FDN must show both that the subject
`
`
`1 Because Coaster raises the issue, the Court notes that neither Davidson nor the Copyright Act
`requires that a party affirmatively state a claim under the Copyright Act before that party’s state
`law claim may be preempted. To the extent Coaster argues otherwise, that argument fails.
`9
`
`
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 10 of 18
`
`matter underlying Coaster’s claims falls within the scope of the Copyright Act and that
`
`Coaster has a cause of action under the Act.
`
`
`
`Coaster’s tort claims rely wholly on FDN’s allegedly unsupported claims of
`
`copyright infringement involving FDN’s descriptive text, thus placing them within the
`
`subject matter of the Copyright Act. Coaster’s allegations of fraud and other bad faith
`
`conduct by FDN do not place its tort claims outside the scope of the Copyright Act. Coaster
`
`argues that FDN “harassed” Amazon, but fails to allege any actions constituting
`
`harassment. Indeed, it appears the only communication FDN had with Amazon was related
`
`to FDN’s DMCA takedown requests. Likewise, Coaster has failed to provide any factual
`
`basis for its allegations of fraud, and the Court is not bound to accept them as true. See
`
`Twombly, 550 U.S. at 555.
`
`
`
`Even so, Coaster’s claim will not be preempted unless Coaster has a cause of action
`
`under the Copyright Act. FDN argues that Coaster has a cause of action under 17 U.S.C §
`
`512(f), which provides:
`
`Any person who knowingly materially misrepresents under
`this section . . . that material or activity is infringing . . . shall
`be liable for any damages . . . incurred by the alleged infringer,
`by any copyright owner or copyright owner’s authorized
`licensee, or by a service provider, who is injured by such
`misrepresentation, as the result of the service provider relying
`upon such misrepresentation in removing or disabling access
`to the material or activity claimed to be infringing, or in
`replacing the removed material or ceasing to disable access to
`it.
`
`Coaster alleges that FDN’s claims of copyright infringement against Amazon and
`
`Coaster are overbroad and unsupported, that Amazon may have removed material as a
`
`
`
`10
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 11 of 18
`
`result of FDN’s claims of infringement, and that Coaster has been injured as a result. These
`
`allegations fit neatly into the language of § 512(f): if FDN “materially misrepresents . . .
`
`that material or activity is infringing . . . [FDN] shall be liable for any damages . . . incurred
`
`by [Coaster] . . . as the result of the service provider relying upon such misrepresentation
`
`in removing or disabling access to the material claimed to be infringing.”
`
`
`
`However, as Coaster points out, this section only applies if Amazon is a “service
`
`provider.” The Copyright Act defines “service provider” as “a provider of online services
`
`or network access, or the operator of facilities therefor.” 17 U.S.C § 512(k)(1)(B). Coaster
`
`argues that Amazon is not a service provider because it is a direct seller of Coaster’s
`
`products. The Court disagrees. Although Amazon sells Coaster’s products, it also provides
`
`online services and operates the facilities through which Coaster’s products are sold. As
`
`such, the Court finds that Amazon is a service provider, that Coaster has a cause of action
`
`under § 512(f), and that Coaster’s tortious interference counterclaims are preempted by the
`
`Copyright Act.
`
`Accordingly, the Court will dismiss Counts III and IV with prejudice.
`
`B.
`
`State Statutory Claims
`
`In asserting its claim under the MUDTPA, Coaster alleges that it owns the
`
`copyrights to some of the content on the Website and, as such, that the Notice placed by
`
`FDN on the Website wrongfully communicates to users that FDN owns content that in fact
`
`belongs to Coaster. Coaster alleges that FDN’s Notice “will confuse, deceive, and/or
`
`mislead” consumers “as to the true ownership of the content” on the Website and that such
`
`
`
`11
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 12 of 18
`
`misrepresentations will harm Coaster’s goodwill and reputation. (Answer ¶¶ 157, 160.) In
`
`asserting its claim under the CBPC, Coaster makes only vague allegations that FDN
`
`engaged in “unfair” acts that “offend public policy.” (Id. ¶ 167.) Alone, these allegations
`
`are conclusory. Reading this claim in the context of the preceding paragraphs, however,
`
`the Court assumes that Coaster’s allegations of unfair acts under its CBPC claim refer to
`
`FDN’s placement of the copyright Notice on the Website.
`
`The Court must decide whether Coaster’s MUDTPA and CBPC claims are
`
`preempted by the Copyright Act. Like Coaster’s tortious interference claims, its state
`
`statutory claims involve work that falls within the subject matter of the Copyright Act.
`
`Specifically, the work includes the descriptive text and, according to Coaster, other
`
`copyrighted content that appears on the Website. As such, Coaster’s claims will be
`
`preempted if Coaster has a cause of action under the Copyright Act.
`
`FDN argues that the conduct underlying Coaster’s claims is governed by 17 U.S.C.
`
`§ 1202(a). That section states: “No person shall knowingly and with the intent to induce,
`
`enable, facilitate, or conceal infringement . . . provide copyright management information
`
`that is false.” Copyright management information (“CMI”) includes the name of the author
`
`of a work or the copyright owner of a work conveyed in connection with copies or displays
`
`of the work. Id. §§ 1202(c)(2)-(3). Because the Notice includes information about
`
`copyright ownership and is conveyed in connection with copyrighted work on the Website,
`
`it constitutes CMI.
`
`Coaster argues that § 1202(a) does not apply because Coaster has not alleged that
`
`FDN posted false CMI “knowingly and with the intent to induce, enable, facilitate, or
`
`
`
`12
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 13 of 18
`
`conceal infringement.” Id. § 1202(a). The Court disagrees. Coaster alleges that FDN
`
`“acted knowingly and deliberately when it made the misrepresentations.” (Answer ¶ 162.)
`
`Coaster also alleges that it owns the copyright to much of the content on the Website and
`
`that the CMI will confuse or mislead consumers as to the content’s ownership. It follows
`
`from those allegations that Coaster believes FDN posted the CMI knowingly and with the
`
`intent to conceal infringement. The Court therefore finds that FDN’s alleged conduct with
`
`respect to CMI is governed by the Copyright Act, not state statutory law.
`
`Accordingly, the Court will dismiss Counts VI and VII with prejudice.2
`
`III. Foreclosure under Dastar v. Twentieth Century Fox
`
`Like its claims under the MUDTPA and the CBPC, Coaster’s Lanham Act claim
`
`relies on allegations that, by posting the Notice, Coaster misrepresented that it owned all
`
`the content on the Website, including content copyrighted by Coaster.
`
`“The Lanham Act was intended to make ‘actionable the deceptive and misleading
`
`use of marks,’ and ‘to protect persons engaged in . . . commerce against unfair
`
`competition.’” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003)
`
`(quoting 15 U.S.C. § 1127). In addition to protecting against trademark infringement, the
`
`Lanham Act protects against the use in commerce of “a false designation of origin, or any
`
`false description or representation in connection with any goods or services.”3 Id. at 29
`
`
`2 FDN also argues that Counts V, VI, and VII should be dismissed as time barred. Because the
`Court will dismiss Counts VI and VII as preempted by the Copyright Act and will dismiss Count
`V as precluded on other grounds, it will not decide the statute of limitations issue.
`3 As relevant here, the Lanham Act states:
` (1) Any person who, on or in connection with any goods or
`services, or any container for goods, uses in commerce any word,
`13
`
`
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 14 of 18
`
`(internal quotations omitted). The Act “covers origin of production as well as geographic
`
`origin.” Id.
`
`In Dastar v. Twentieth Century Fox, the Supreme Court examined the meaning of
`
`“origin of goods” as used in the Lanham Act to determine whether “‘origin’ refers only to
`
`the manufacturer or producer of the physical ‘goods’ that are made available to the public,”
`
`or whether it also “includes the creator of the underlying work that [was] copied.” Id. at
`
`31. “[R]eading the phrase ‘origin of goods’ in the Lanham Act in accordance with the
`
`Act’s common-law foundations (which were not designed to protect originality or
`
`creativity), and in light of the copyright and patent laws (which were),” the Court
`
`concluded “that the phrase refers to the producer of the tangible goods that are offered for
`
`sale, and not to the author of any idea, concept, or communication embodied in those
`
`goods.” Id. at 37 (emphasis in original). Accordingly, under Dastar, a party stating a claim
`
`under the Lanham Act must plead facts showing that the defendant misrepresented the
`
`origin of tangible goods offered for sale.
`
`
`term, name, symbol, or device, or any combination thereof, or any
`false designation of origin, false or misleading description of fact,
`or false or misleading representation of fact, which—
`(A) is likely to cause confusion, or to cause mistake, or to deceive
`as to the affiliation, connection, or association of such person with
`another person, or as to the origin, sponsorship, or approval of his
`or her goods, services, or commercial activities by another person,
`or
`(B) in commercial advertising or promotion, misrepresents the
`nature, characteristics, qualities, or geographic origin of his or her
`or another person's goods, services, or commercial activities,
`shall be liable in a civil action by any person who believes that he
`or she is or is likely to be damaged by such act.
`15 U.S.C. § 1125(a)(1).
`
`
`
`14
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 15 of 18
`
`Here, the “goods” offered for sale can only refer to the furniture sold by Coaster.
`
`Coaster does not allege that the Notice might confuse the public as to the origin of the
`
`furniture, nor could it; the Website makes clear that the furniture is Coaster’s. Instead,
`
`Coaster alleges that FDN misrepresented copyright ownership of its creative content and
`
`that the Notice will confuse the public as to ownership of that content. But the Court in
`
`Dastar established that the Lanham Act does not protect the authors of creative content.
`
`
`
`Even so, Coaster argues that Dastar is inapposite for two reasons. First, Coaster
`
`argues that Dastar applies only to cases involving the copying of uncopyrighted work
`
`without credit to the original creator, not to cases such as this one in which “a person is
`
`falsely stating to the world that they own a complete copyright in a work.” (Def.’s Mem.
`
`in Opposition at 26, May 9, 2019, Docket No. 103.) It is true that the Dastar Court
`
`expressed concern that, if the Lanham Act applied to the unaccredited copying of an
`
`uncopyrighted work, the Act would “conflict with the law of copyright” insofar as
`
`copyright law grants a “right to copy, and to copy without attribution, once a copyright has
`
`expired . . . .” 539 U.S. at 33. But underlying concern over that specific conflict was a
`
`broader concern about over-extending “trademark . . . protections into areas traditionally
`
`occupied by patent or copyright.” Id. at 34. To apply the Lanham Act in this case simply
`
`because it presents a different copyright issue than that presented in Dastar would require
`
`this Court to disregard the Dastar Court’s reasoning entirely.
`
`Coaster also points out that the petitioner in Dastar brought a claim under Section
`
`43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and argues that Dastar does
`
`not apply to claims brought under Section 43(a)(1)(B) of the Act. As an initial matter,
`
`
`
`15
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 16 of 18
`
`while Coaster did not specify in the pleadings whether it brought a Lanham Act claim under
`
`section 43(a)(1)(A) or 43(a)(1)(B), the language Coaster used mirrors the language in
`
`section 43(a)(1)(A).4 But even assuming, arguendo, that Coaster brought its claim under
`
`section 43(a)(1)(B), the Court is not persuaded that the claim should proceed. Coaster cites
`
`one case, Cathedral Art Metal Co., Inc. v. F.A.F., Inc., where a district court declined to
`
`apply Dastar to a Lanham Act claim because it was brought under section 43(a)(1)(B).
`
`No. C.A. 05-315S, 2006 WL 2583584, at *2 (D.R.I. Sept. 6, 2006). However, several other
`
`courts have found that, to avoid overlap between copyright and trademark law, authorship
`
`and licensing status should not be considered part of the “nature, characteristics, or
`
`qualities” of goods as those terms are used in section 43(a)(1)(B) of the Lanham Act. See,
`
`e.g., ZS Associates, Inc. v. Synygy, Inc., Civ. No. 10-4274, 2011 WL 2038513, at *8-9 (E.D.
`
`Pa. May 23, 2011); Baden Sports, Inc. v. Molten USA, Inc., 556 F.3d 1300, 1307 (Fed. Cir.
`
`2009). The Court finds those decisions persuasive and in line with the spirit of the Supreme
`
`Court’s ruling in Dastar.
`
`Accordingly, the Court finds that Coaster’s Lanham Act claim is precluded by
`
`Dastar v. Twentieth Century Fox and will dismiss Count V with prejudice.
`
`IV.
`
`Indemnification
`
`Coaster seeks indemnification from FDN based on the Agreement and/or equitable
`
`principles. Although the allegations are unclear, the Court discerns that Coaster seeks
`
`indemnification from FDN for the following: (1) Amazon’s demand that Coaster indemnify
`
`
`4 Compare 15 U.S.C. § 1125(a)(1)(A) (“likely to cause confusion, or to cause mistake, or to
`deceive”) with (Answer ¶ 147) (“will confuse, deceive, and/or mislead”).
`16
`
`
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 17 of 18
`
`Amazon for damages arising out of FDN’s suit against Amazon; and (2) claims of
`
`unspecified non-parties against Coaster. Coaster argues that FDN’s allegedly false claims
`
`of ownership over images and text related to Coaster’s furniture have resulted in Amazon’s
`
`and others’ claims against Coaster, thus triggering FDN’s obligation to indemnify Coaster
`
`under the Agreement.
`
`As an initial matter, Coaster has failed to allege facts to support its allegation that
`
`non-parties have brought claims against it as a result of this action. Moreover, Coaster’s
`
`argument in support of indemnification is illogical and unsupported by the language of the
`
`Agreement. The Agreement requires FDN to indemnify Coaster “from any claim alleging
`
`the software licensed to Coaster under [the] Agreement infringes any patent, trademark,
`
`or copyright.” But this case does not involve allegations that the software licensed to
`
`Coaster by FDN infringes any patent, trademark, or copyright; instead, it involves
`
`allegations that Amazon and Coaster have violated FDN’s copyright in its descriptive text.
`
`In essence, Coaster asks FDN to indemnify Coaster against payments Coaster may be
`
`required to make as a result of FDN’s own claims of copyright violations against Coaster
`
`and Amazon. Such a request defies both common sense and the plain language of the
`
`Agreement.
`
`Accordingly, the Court will dismiss Count VIII with prejudice.
`
`ORDER
`
`Based on the foregoing, and all the files, records, and proceedings herein, IT IS
`
`HEREBY ORDERED that:
`
`
`
`17
`
`

`

`CASE 0:18-cv-00232-JRT-HB Document 137 Filed 08/08/19 Page 18 of 18
`
`1. Plaintiff’s Partial Motion to Dismiss [Docket No. 95] is GRANTED; and
`
`2. Counts III, IV, V, VI, VII, and VIII of Defendant’s Answer, Affirmative
`
`Defenses, and Counterclaims [Docket No. 92] are DISMISSED with prejudice.
`
`
`
`
`
`DATED: August 8, 2019
`at Minneapolis, Minnesota.
`
`
`
`
`
`
`
`
`
`
`
`
`_______
` _______
`JOHN R. TUNHEIM
`Chief Judge
` United States District Court
`
`
`
`
`
`
`
`
`
`
`
`18
`
`