A California federal court has recently ruled that “piggybacking” on an Amazon product listing — where the piggybacking takes the buyer to a different but similar product —  is actionable trademark infringement. See Lavco Solutions, Inc. v. Biztracker Systems of St. John, LLC, Case No. 2:20-cv-03286-VAP-PLAx (US Dist. C.D. Cal. August 25, 2020).

In this case, the plaintiff — Lavco Solutions, Inc. — sells various products under the trademarked name “Epsilont.” Epsilont-branded products include a wide range of electronics used for businesses including security devices, electronic cash registers, and various point-of-sale hardware for both online and brick-and-mortar retailers. Lavco sells its products on its own websites and also on Amazon.com and other online sales platforms. The defendant — Biztracker Systems — markets and sells a software package that can be installed by businesses to help track sales, inventory, and other sales-related details.

In this case, Lavco alleged that, immediately after installing the Biztracker software, the software began “piggybacking” on Lavco’s Amazon product sales listings and diverting customers to non-Epsilont products — products that were similar, but not Epsilont-branded.

As described by the court, an Amazon product sales page has a “Buy Box” and also has a distinct, less visible, box to click if the customer wants to purchase a “similar product.” Often, the box for that option states, “available from other sellers.” Furthermore, the court affirmed the idea that when an online customer clicks on the “Buy Box,” the customer wants the product featured, and not a “similar” product. To quote the court: “In short, by clicking on the “Buy Box,” a consumer expects to be taken not to “similar” products, which are accessed through a distinct link, but rather to purchase the exact product listed on the original Amazon product page …” (emphasis in original).

Lavco alleged — and this allegation was admitted by Biztracker — that, when a customer clicked on the “Buy Box,” the Biztracker software directed the customer to a webpage where Biztracker was listed as the seller and where an Epsilont product was featured. Lavco further alleged that this Biztracker product page was false because the product that was eventually delivered to the customer was not an Epsilont product. According to the court’s opinion, Biztracter did not deny this allegation.

Based on this scheme, Lavco sued Biztracker. Lavco alleged various legal causes of action including trademark infringement. Again, it is worth emphasizing that Biztracker did not deny the essential details of this scheme. Rather, Biztracker asserted various technical defenses including challenging Lavco’s trademark and arguing that Biztracker did not actually “use” Lavco’s trademark and that no consumer confusion resulted. The court rejected each argument.

With respect to use, the court acknowledged that, to prove trademark infringement, a trademark owner must allege and prove that the defendant used either the exact trademark or one that was confusingly similar. In this case, based on the allegations, this legal requirement was met. The Epsilont trademark was highly visible on the Amazon product page. For the court, Biztracker clearly “used” — piggybacked off — of that visible Epsilont trademark to redirect consumers to its alternative page. Further, as admitted, Biztracker’s alternative page featured an Epsilont product, even though the eventual product received by the consumer was non-Epsilont. This was more than sufficient “use” of a trademark to establish that necessary legal element.

With respect to consumer confusion, again, the court found the pleadings sufficient. Lavco alleged that many Amazon buyers had contacted Lavco’s technical support center only to learn that they had bought a non-Epsilont product. The court held that these pleadings had established this necessary legal element (at least at this stage in the litigation). Based on the foregoing, the court rejected Biztracker’s efforts to have the case dismissed.

This result is clearly correct. Imagine a non-online version of this scheme. One travels to a Tiffany store with the hope of buying some Tiffany-branded jewelry. You arrive at the store and a well-dressed greeter directs you through a side door. In this room, the display cases are full of beautiful Tiffany products. You make your purchase, but arrive home only to discover you have a “Triffany” product. You are not happy. The schemers have lured you to their false store by using the Tiffany brand and you end up with a product that you did not want.

Trademark owners have a right to protect their brands and, as this case shows, trademark owners must be extra-vigilant when using software and selling online. For more information and/or if you have questions about how to protect your trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.