Ruben Castillo
An author who alleges counterfeit copies of his books were posted for sale on Amazon does not have a case against the website for violations of his trademark rights, a federal judge held Monday.
In a written opinion, Chief U.S. District Judge Ruben Castillo threw out an amended lawsuit Reginald Hart filed against Amazon.com Inc. under federal and Illinois law.
Hart did not present enough evidence to support his contention that the copies of “Vagabond Natural” and “Vagabond Spiritual” — accounts of his experience with homelessness — listed for sale on Amazon were counterfeit, Castillo wrote.
And citing cases that included Sebastian International Inc. v. Longs Drug Stores Corp., 53 F.3d 1073 (9th Cir. 1995), he wrote the federal Lanham Act limits trademark owners’ control over the distribution of their products to the original sale.
“Thus, resale by the first purchaser of the original article under the producer’s trademark is generally neither trademark infringement nor unfair competition,” Castillo wrote.
He acknowledged that Hart argues the first-sale doctrine does not apply to “Vagabond Spiritual” because the book was never sold to the public.
But Hart’s claims under the Lanham Act as well as the Illinois Uniform Deceptive Trade Practices Act fail for additional reasons, Castillo wrote.
Hart, he wrote, cannot pursue a false advertising claim because he has not demonstrated the books were counterfeit.
Also, Hart did not demonstrate that Amazon’s use of his trademarks were likely to confuse consumers in violation of either statute into thinking he is associated with Amazon, Castillo wrote.
The trademarks include the name “Henrietta Press” and a symbol consisting of an open book.
“The mere fact that Amazon offers a platform to third-party sellers to sell various products and, subsequently, those individuals sold plaintiff’s books, does not imply that plaintiff has endorsed Amazon or has any specific affiliation with Amazon,” Castillo wrote. “This is not the reality of commerce.”
He dismissed Hart’s suit with prejudice.
Hart, who represents himself in the case, said he’s looking for an attorney to help him challenge Castillo’s ruling before the 7th U.S. Circuit Court of Appeals.
“The court’s opinion holds me, as a pro se litigant, to a different standard,” Hart said.
He described Castillo’s opinion as “very contrived” and contended the judge misunderstood his arguments.
And Hart objected to Castillo’s ruling on the extent of his control over the sale of “Vagabond Spiritual.”
“The court improperly imputed the first-sale doctrine to my case for ‘Vagabond Spiritual,’” he said, “because this book was never sold to the public, and the record shows that.”
The lead attorney for Amazon is Christopher R. Hagale of Bartlit, Beck, Herman, Palenchar & Scott LLP. He could not be reached for comment.
In his opinion, Castillo also dismissed other counts brought under other Illinois laws.
Those counts include a claim that Amazon failed to honor a promise to comply with his request to remove his books from its website within two or three days.
Amazon in its correspondence with Hart did not unambiguously promise to take only two or three days to accomplish that task, Castillo wrote.
Instead, he wrote, the time period was merely an estimate.
Also, Hart provided no details concerning how he relied on the alleged promise to his own determent, Castillo wrote.
The case is Reginald Hart v. Amazon.com Inc., No. 15 C 1217.