United States District Court, D. Minnesota
MICHAEL M. LAFEBER AND O. JOSEPH BALTHAZOR, BRIGGS &
MORGAN, PA, FOR PLAINTIFF.
M. CISLO, CISLO & THOMAS, LLP, AND ROBERT J. GILBERTSON,
GREENE ESPEL PLLP, FOR COA, INC.
MEMORANDUM OPINION AND ORDER
R. TUNHEIM CHIEF JUDGE
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.
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
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.
Coaster and FDN's Agreement and Website
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 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.)
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.)
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.)
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 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.)
FDN Discovers Its Text on Amazon.com
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.
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 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. ¶
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.)
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.)
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.)
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.)
addition to the terms discussed above, the Agreement between
Coaster and FDN contains an indemnification clause.