Rodriguez v. Massive Action, LLC

Background

Jose Rodriguez, proceeding without a lawyer, sued Massive Action LLC, Redbubble, Inc., TP Apparel, LLC, Zazzle, Inc., Etsy, Inc., Amazon.com, LLC, Shopify (USA), Inc., and Nordstrom, Inc. He alleged violations of the federal Lanham Act, common-law trademark infringement and unfair competition, and unjust enrichment. Rodriguez alleged that he owned the federally registered trademark “THE LONELY HEARTS CLUB” for clothing-related goods and that the defendants used the mark on clothing and in online advertising.

The opinion states that Rodriguez filed the case on April 7, 2021. He filed proof of service for Shopify, Zazzle, Etsy, Massive Action, and Amazon, but he did not file proof that he served Redbubble, Nordstrom, or TP. The court had already dismissed the claims against Massive Action, Nordstrom, and TP under Federal Rule of Civil Procedure 4(m), which concerns timely service. The court later dismissed the claims against Redbubble under the same rule because Rodriguez did not file the required proof of service.

Amazon, Shopify, and Etsy filed motions to dismiss for failure to state a claim, and Zazzle joined relevant portions of the motions filed by Etsy and Amazon. Rodriguez did not oppose the motions or file an amended complaint by the deadlines set by the court.

Court’s Analysis

Under Federal Rule of Civil Procedure 12(b)(6), a complaint must contain enough factual information to make liability reasonably plausible, rather than merely reciting the elements of a claim. The court stated that it would read Rodriguez’s self-represented complaint generously, but that this did not require the court to rewrite it.

For the Lanham Act claims, the court accepted that Rodriguez had adequately alleged ownership of a valid registered mark. It concluded, however, that he did not plausibly allege that Amazon, Etsy, Shopify, or Zazzle used the mark in commerce in a way likely to cause consumer confusion. Rodriguez did not identify any allegedly infringing products or listings. He made general statements that Zazzle, Etsy, and Amazon were using his trademark, and he alleged that Shopify provided a platform and online store for third-party users without alleging that Shopify itself used the mark.

Rodriguez also alleged, based on information and belief, that the defendants used his trademark as advertising keywords or purchased related advertising terms. The court found that he provided no examples or facts supporting those allegations. It likewise found that his statements that the defendants’ conduct had caused or would cause confusion were conclusory and unsupported by facts addressing the relevant consumer-confusion factors.

The court dismissed the New York common-law trademark and unfair-competition claims because Rodriguez failed to adequately plead the Lanham Act claims. It also found that he made only conclusory allegations of bad faith, which is an additional requirement for the New York unfair-competition claim.

The court dismissed the unjust-enrichment claim because Rodriguez did not allege any relationship or connection with Amazon, Etsy, Shopify, or Zazzle. It did not reach Amazon’s fair-use argument or the argument that Section 230 of the Communications Decency Act barred the unjust-enrichment claim. The opinion also notes that, on September 6, 2023, a separate trademark-cancellation proceeding resulted in cancellation of Rodriguez’s registration, but the court did not treat that proceeding as establishing the truth of the matters decided there.

Disposition

Judge Vernon S. Broderick granted the motions to dismiss filed by Amazon, Shopify, Etsy, and Zazzle. The court dismissed Rodriguez’s complaint with leave to amend his claims against those four defendants within 45 days of entry of the order. The court stated that any amended complaint would replace, rather than supplement, the original complaint and that Rodriguez would not receive another opportunity to amend.

The court also dismissed Rodriguez’s claims against Redbubble under Rule 4(m) because he did not file proof of service. The opinion does not state that the Redbubble dismissal was with or without prejudice. The earlier dismissals of the claims against Massive Action, Nordstrom, and TP under Rule 4(m) were likewise described in the opinion’s procedural history.