(L to R) Mark Lemley, Durie Tangri and Annette Hurst, Orrick (Photos: Jason Doiy/ALM)

Patents had Apple v. Samsung. Copyright has Oracle v. Google. Now a knock-down drag-out trademark fight is brewing between two of America's premier retailers. Amazon.com and Williams-Sonoma Inc. have hired blue-chip lawyers to fire the opening shots in a bid to shape trademark rules for 21st century e-commerce.

On one side, Stanford professor and Durie Tangri partner Mark Lemley is wielding the first-sale doctrine in a bid to maintain space for Amazon to market Williams-Sonoma-branded merchandise on Amazon's website. On the other side, Orrick, Herrington & Sutcliffe partner Annette Hurst, a chief architect of Oracle's two Federal Circuit wins in its copyright war with Google, comes armed with longstanding trademark authority—plus a quirky 2016 Ninth Circuit decision involving fake Trader Joe's stores.

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Williams-Sonoma, also known as WSI, kicked off the dispute in December by accusing Amazon of “trading upon WSI's goodwill and infringing WSI's intellectual property” by advertising goods on Amazon.com as “by Williams-Sonoma” and “fulfilled by Amazon.” Williams-Sonoma says it carefully guards its online reputation, and calls Amazon's use “a counterfeit mark.”

Lemley asked U.S. Magistrate Judge Elizabeth Laporte to dismiss the case Feb. 5. “Williams-Sonoma alleges that Amazon has violated the law by accurately identifying legitimate Williams-Sonoma products as exactly what they are: products made and sold by Williams-Sonoma in the first instance. Whatever else that is, it's not counterfeiting,” Lemley writes.

He contends Williams-Sonoma is trying to distract from the fact that it “can't get what it really wants,” which is to prevent others from reselling its products. Under the first-sale doctrine, buyers of branded products can lawfully resell them so long as they're not materially changed, Lemley argues. Amazon's advertisements “simply state the truth: that Williams-Sonoma products are available through Amazon's website.”

Hurst responded Tuesday in characteristic take-no-prisoners fashion. “Amazon has in fact engaged in prototypical counterfeiting” by publishing and creating “a fake Williams-Sonoma website,” she writes in opposition.

The first-sale doctrine might let Amazon display and resell unaltered merchandise, but it does not permit Amazon to mislead customers into believing they're buying from Williams-Sonoma or an authorized dealer, she argues. Plus, Amazon is jacking up prices and selling damaged merchandise—even presenting small washcloths as full-sized dish towels. “Customer complaints run rampant on Amazon's 'Shop Williams Sonoma' website, plainly damaging WSI's goodwill,” she writes.

Hurst points to Trader Joe's v. Hallatt, in which the Ninth Circuit ruled that a person could be blocked from buying Trader Joe's merchandise and re-selling it in Canada at stores called Pirate Joe's. If Lemley is right, then “Pirate Joe's would have nothing to fear,” Hurst declares.

Along with its trademark claims, Williams-Sonoma is also asserting a single design patent on an upholstered dining chair, which means any appeal of the case would go to the Federal Circuit, rather than the Ninth.

Williams Sonoma and Amazon are scheduled to square off April 2 in Laporte's San Francisco courtroom.