Magistrate Judge Elizabeth Laporte. Photo: Jason Doiy/ALM

Williams-Sonoma has taken the early lead in a high-profile trademark battle with Amazon.com, but the two are still running almost neck-and-neck.

U.S. Magistrate Judge Elizabeth Laporte of the Northern District of California on Thursday turned away Amazon's bid to dismiss Williams-Sonoma's suit, which accuses Amazon of operating “a fake Williams-Sonoma website” on its platform, and using phrases like “Amazon official site” and “by Williams Sonoma” to trick consumers into believing Amazon is an authorized dealer.

Laporte rejected the fake website claim as “not plausible.” But she concluded the remaining allegations, while “a close call,” state a claim for willful trademark infringement.

“Drawing all inferences in favor of Williams-Sonoma,” Laporte wrote in a 22-page order, Amazon's uses of Williams-Sonoma's service mark “plausibly suggest an affiliation with Williams-Sonoma that does not actually exist.”

It's an early win for Orrick, Herrington & Sutcliffe partner Annette Hurst in a battle of IP titans with Durie Tangri's Mark Lemley.

Williams-Sonoma kicked off the dispute in December, accusing Amazon of trading on its goodwill and infringing its IP. Hurst argued at an April 2 hearing that Amazon's use of phrases like “Amazon official site” on its advertisements for Williams-Sonoma merchandise are “wholly unnecessary to convey the information to the consumer.”

Amazon and Lemley ridiculed the fake website claim. They argued that Amazon's done nothing more than accurately identify Williams-Sonoma products it resells on its website, which it's allowed to do under the first-sale doctrine.

Laporte agreed with Lemley about the fake website claim, noting that Amazon uses its own logo and words like “Try Prime” on pages where it sells Williams-Sonoma merchandise.

She also rejected Hurst's attempt to compare Amazon's behavior to a man who set up fake Trader Joe's stores in Canada.

But she sided with Hurst and Williams-Sonoma on the rest. “It is a close call,” she wrote, “but on balance the allegations raise the plausible inference that Amazon is not merely reselling Williams-Sonoma products, but is instead cultivating the incorrect impression that these sales on Amazon.com are authorized by Williams-Sonoma and that a reasonably prudent consumer is likely to be confused.”

Amazon had pointed to a Second Circuit ruling that cleared eBay of infringing Tiffany & Co.'s trademark by reselling its merchandise. But eBay had posted an explicit disclaimer that Tiffany only sells its products through its own stores and websites. Nothing on Amazon's “Shop Williams-Sonoma” page “explicitly informs consumers that Amazon does not have an official relationship with Williams-Sonoma,” Laporte wrote, although she added that is not legally required.

She added that Williams-Sonoma plausibly stated a claim that Amazon acted willfully, even if Amazon might reasonably believe its conduct to be legal. “It would not be plausible to presume that Amazon conducted its marketing of Williams-Sonoma's products without some careful aforethought (whether consciously in the traditional sense or via algorithm and artificial intelligence),” she wrote.

Laporte will likely be handing off the case to another judge in a few months. She announced in April that she will be stepping down in October after 21 years on the bench.