Mark A. Lemley

Durie Tangri LLP

San Francisco

Patent, trademark, copyright litigation

Lemley is a founding partner at Durie Tangri LLP, the co-founder of litigation research firm Lex Machina Inc. and the William H. Neukom Professor at Stanford Law School.

For client Amazon.com Inc., he's fighting trademark dilution and unfair competition claims by kitchenware retailer Williams-Sonoma Inc. He expects this litigation to continue this year. Williams-Sonoma Inc. v. Amazon.com Inc., 18-CV07548 (N.D. Cal., filed Dec. 14, 2018).

Last year, U.S. Magistrate Judge Elizabeth Laporte of San Francisco denied Lemley's motion to dismiss the lawsuit's infringement allegations.

The case centers on the plaintiff's allegations that Amazon.com created "a fake Williams-Sonoma website" on its platform; Lemley has countered with the contention that the right to resell others' merchandise is fundamental to the conduct of e-commerce.

The stakes are high, Lemley said.

"This is two big companies going against each other, but it's more than that," he said. "This is fundamentally an effort to change the law of trademark. It's a frontal assault on the principle of the First Sales Doctrine."

That key legal concept limits the rights of trademark owners by conferring on those who purchase a copy of a trademarked work from the owner the right to sell, display or otherwise dispose of that copy.

"Williams-Sonoma says you can buy our products only from us," Lemley said. "It would mean higher prices and less availability. Used goods markets would go away. Used car dealers and used textbook sellers would suffer. Williams-Sonoma's position is that we can't use its name, but if we took the name off they'd probably sue us for that too."

Laporte, though she declined to dismiss the case at its earliest stage, held that Lemley's defense raised legitimate questions and that Williams-Sonoma's broader theory that Amazon set up an unauthorized Williams-Sonoma website were "not plausible."

"This is very interesting and a lot of fun," Lemley said.

In January, as co-lead counsel for HIV/AIDS activists and others, Lemley argued against pharmaceutical manufacturers' motion to dismiss the activists' potential antitrust class action over claims the drugmakers conspired to wrongly keep vital HIV treatment medications expensive. Staley v. Gilead Sciences Inc., 19-CV02573 (N.D. Cal., filed May 14, 2019).

His complaint alleges that through anticompetitive practices, "Gilead has acquired and maintained a monopoly in the market for drugs that comprise the modern HIV treatment regimen known as 'combination antiretroviral therapy." The complaint contends the result has been "exorbitant, supracompetitive prices for the drugs that people living with HIV need."

"They're keeping generics off the market. They got other drugmakers to promise to use their drugs, not generics, and they agreed to share the profits," Lemley said. "I'm confident the judge won't dismiss this case."

-- John Roemer