Online Reseller Accuses Lavazza Coffee of Bringing Phony IP Infringement Claims
The reseller says it's lawfully permitted to resell Lavazza products without violating the company's intellectual property rights under the first sale doctrine.
November 12, 2019 at 05:56 PM
3 minute read
A New Jersey company that operates an Amazon storefront claims Italian coffee purveyor Lavazza is unlawfully interfering with the online resale of its products, according to a lawsuit filed Tuesday.
The suit filed by LY Berditchev Co. of Passaic says Lavazza is stifling competition by making false reports to Amazon that resellers are violating its intellectual property rights.
The suit says LY Berditchev is lawfully permitted to resell Lavazza products without violating the company's intellectual property rights under the first sale doctrine. That doctrine provides that, once a manufacturer places a product in the stream of commerce through its first sale, it can no longer enforce its intellectual property rights on resellers if the products being sold are authentic and unaltered.
Lavazza is not the only purveyor of goods to find itself in court over the online sale of its products, although the producer of brand-name goods is usually the plaintiff.
In December 2018, retailer Williams-Sonoma sued Amazon in a San Francisco federal court, accusing the online retailer of trading on its goodwill and infringing its intellectual property. In May, a judge denied Amazon's motion to dismiss that case after it cited the first sale doctrine, finding the use of Williams-Sonoma's service mark "plausibly suggest an affiliation with Williams-Sonoma that does not actually exist."
Chanel has filed two suits against operators of fashion resale websites, accusing them of trying to deceive consumers into falsely believing that they are affiliated with Chanel. And in 2010, the U.S. Court of Appeals for the Second Circuit ruled for eBay in a trademark infringement suit brought by Tiffany & Co., which accused the online retailer of selling counterfeit versions of its products.
The LY Berditchev suit was filed by Mark Berkowitz of Amster, Rothstein & Ebenstein in New York. The suit names Milan-based Luigi Lavazza S.p.A. and its American subsidiary as defendants. It seeks a declaratory judgment that LY Berditchev did not engage in trademark infringement or counterfeiting. The suit also accuses Lavazza of making false or misleading representations and engaging in unfair competition, and brings claims of tortious interference with contract and business relations, defamation and trade libel.
LY Berditchev acquires Lavazza products and resells them at a profit. Lavazza has made at least 14 complaints to Amazon that its products sold by LY Berditchev are counterfeit, the suit claims. Amazon suspended the sales of Lavazza products by LY Berditchev in each case, the suit said.
Lavazza was unable to provide any evidence in support of its claims, but nevertheless refused to withdraw those complaints, according to the suit.
"It is well-known among brand owners that Amazon has a policy of acting on virtually any notice of intellectual property infringement, whether legitimate or not," the suit claims. The complaint cites an article from a website called Web Retailer stating that, "Unless you (and possibly your legal team) can prove that the notice claim is false, Amazon considers it valid and actionable. Unfortunately, word is out among potential notice claim abusers that anyone can submit a form."
Lavazza, which has not filed a response, did not respond to a request for comment.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2025 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllAmazon's Audible Hit With Privacy Class Action Over Use of Tracking Pixels
Suit Claims Amazon Violates Workers' Privacy With Unauthorized Medical Inquiries
5 minute readCalling It Unconstitutional, Companies Sued Over Daniel's Law Want It Struck Down
5 minute readToo Fast? Personal Injury Suit Puts Spotlight on Amazon's Delivery Quotas
4 minute readTrending Stories
- 1Restoring Trust in the Courts Starts in New York
- 2'Pull Back the Curtain': Ex-NFL Players Seek Discovery in Lawsuit Over League's Disability Plan
- 3Tensions Run High at Final Hearing Before Manhattan Congestion Pricing Takes Effect
- 4Improper Removal to Fed. Court Leads to $100K Bill for Blue Cross Blue Shield
- 5Michael Halpern, Beloved Key West Attorney, Dies at 72
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250