Ruling in Emoji Beach Ball IP Case Left Me Confused đâKangaroo v. Amazon
This case involves the alleged counterfeiting of emoji beach balls on Amazon. It doesnât get into emoji-specific IP issues and devolves into a garbled tangle over Amazon marketplace product catalog issues. Still, EMOJI LAW ALERT!!! đČ
The plaintiff makes emoji beach balls. Amazon and/or its merchants sell the beach balls. (Iâm surprised how many different emoji beach ball options are available on Amazon!) The plaintiff alleges that some of those sales are unauthorized and include counterfeits. The plaintiff submitted NOCIs, but Amazonâs response wasnât satisfactory. The plaintiff sued Amazon. Amazon moved for summary judgment. The resulting opinion confused me (I think Rebecca Tushnet was also confused). Among the claims addressed:
Trademark Infringement and Counterfeiting. Claims based on Amazon acting as the retailer are sent to trial.
Copyright Infringement. Itâs unclear if the plaintiff is complaining about the product shots or copyrights in the emoji designs themselves. The complaint is (deliberately?) waffly on this point. Para. 65 says âKangaroo owns the copyright in: a. the design of the emoji beach balls (Ex. 1); and b. the photographs used to advertise the emoji beach balls (Ex 2).â This suggests that the plaintiff is claiming infringement of both the emoji designs and the product shots. However, the subsequent complaint allegations flip-flop in describing the exact works at issue.
The opinion focuses on the product shots. Amazon requires third parties to upload product shots, but the court nevertheless apparently treats this as a direct infringement claim. Unfortunately, the court never clearly lays out the applicable legal standard, so the opinion is inscrutable. The court says âthe Plaintiff fails to refute the Defendantâs argument that it was a passive publisher of the protected materials that were uploaded by sellers,â but Iâm not sure what copyright doctrine has a âpassive publisherâ defense (and another reminder that the term âpassive publisherâ is an obvious oxymoron). Instead, the court shifts to the DMCA 512 defense. The court says there are material disputes about several elements of the DMCA safe harbor, including what the NOCIs covered (was it the beach ball designs or the photos?) and how quickly Amazon responded to the NOCIs. Thus, the issue will go to trial as well.
Negligence. The plaintiff alleges that Amazon negligently merged its unique product code with its competitorâs code. The court says Amazon âhad full control over the content displayed on its websites. The Defendantâs pleadings demonstrate that it took the responsibility of managing and cultivating the content provided to it.â It sounds like that should increase Amazonâs legal exposure, but instead the court breezily concludes âthe Defendant was acting as an interactive computer service and the Plaintiffâs claims arise out of the Defendantâs course of action while acting as such.â It grants Amazonâs Section 230 motion.
Negligence Per Se. The plaintiff argued that selling counterfeits is negligence per se, but the court says thereâs no precedent supporting that, so the claim fails.
All told, this case is going to trial on the trademark and copyright claims, which doesnât sound like good news for Amazon.
It doesnât appear that the plaintiff is claiming trademark protection for its emoji designs. The complaint appears to address only the word and logo marks. Potential trademark protection for emoji designs (presumably, in this case, as trade dress) would raise extra complexity.
Still, the case facts highlight the potential for emoji trolling. Imagine an IP owner who obtains copyright and trademark registrations for emoji designs and then lobs many NOCIs into Amazon for a wide spectrum of products featuring emoji designs. What happens then?
For more on emoji IP law, see my papers Emojis and the Law and Emojis and Intellectual Property Law.
Case citation: Kangaroo Manufacturing Inc. v. Amazon.com, Inc., 2019 WL 1280945 (D. Ariz. March 20, 2019). The complaint.