MILO & GABBY LLC & KAREN KELLER,

Petitioners,

Vo

AMAZON.COM, INC.,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED

STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

PHILIP P. MANN
Counsel of Record
MANN LAW GROUP
1218 Third Avenue, Suite 1809
Seattle, Washington 98101
(206) 436-0900
phil@mannlawgroup.com

Counsel for Petitioners

August 21, 2017

275158

COUNSEL PRESS

(800) 274-3321 . (800) 359-6859

BLANK PAGE
 QUESTIONS PRESENTED

A long standing feature of both copyright and patent

law is that liability extends not only to those who make
infringing goods, but to those who commercially exploit
them as well. This makes sense, given that the actual
creators of infringing goods are frequently unknown or
are otherwise beyond the reach of United States courts.
Extending liability to those who profit from infringing
sales ensures that innocent victims of copyright and/or
patent infringement are not left helpless while others reap
the benefit of their creations.

To protect authors and inventors from such injustice,

Congress long ago enacted appropriate legislation. In the
case of authors, Title 17 U.S.C. 106(3) grants copyright
owners the exclusive right "to distribute copies...of the
copyrighted work to the public by sale or other transfer of
ownership." In the case of inventors, Title 35 U.S.C. 271(a)
imposes patent infringement liability on "whoever makes,
uses, offers to sell, or sells any patented invention...or
imports into the United States any patented invention..."

In the case below, both the District Court for the

Western District of Washington, and the Federal Circuit,
held that Amazon.corn, Inc., - often described as one of
the "worlds largest retailers" - faced no liability for
otherwise admitted Copyright and Patent infringement
on the basis that it does not actually sell anything or offer
anything for sale. In particular, the Federal Circuit held
that, because Amazon.corn does not hold legal title to the
infringing goods that appear for sale on its website, it does
not "offer," "sell" or "distribute" them within the context
of applicable copyright and patent law.
 ii

The questions presented are:

1. Whether for purposes of copyright and patent law,

one must hold actual legal title to goods in order to "sell,"
"offer to sell," "transfer ownership" or "distribute" such
goods within the meaning of 17 U.S.C. 106(3) and 35
U.S.C. 271(a).

2. Whether Internet retailers can properly escape

liability for otherwise admitted copyright and patent
infringement on the basis that they only "facilitate" sales
and never actually "sell," "offer to sell," "distribute" or
otherwise "transfer ownership" of infringing goods.
 iii

PARTIES TO THE PROCEEDING

Petitioners are Karen Keller and Milo & Gabby

LLC, who were the Plaintiffs in the District Court and
Appellants in the Court of Appeals.

Respondent is Amazon.com, Inc., who was the

Defendant in the District Court and the Appellee in the
Court of Appeals.1

1. The Federal Circuit caption lists several additional

defendants who were added to the case at Amazons request and
over Petitioners objection and who were supposedly suppliers of the
infringing goods. Despite the District Courts efforts to serve these
defendants, service proved impossible and none of these additional
defendants appeared either at the District Court or before the
Federal Circuit.
 iv

RULE 29.6 DISCLOSURE

Pursuant to Supreme Court Rule 29.6, Petitioner Milo

& Gabby LLC states that its parent corporation is Petit
Elin, Co. Ltd., and that no publicly held corporation owns
10% or more of its stock.
 V

TABLE OF CONTENTS
Page
QUESTIONS PRESENTED ...................... i

PARTIES TO THE PROCEEDING ............... iii

RULE 29.6 DISCLOSURE ....................... iv

TABLE OF CONTENTS .......................... v

TABLE OF APPENDICES ...................... vi

TABLE OF CITED AUTHORITIES ............. vii

PETITION FOR A WRIT OF CERTIORARI ........ 1

OPINIONS BELOW .............................. 2

BASIS FOR JURISDICTION ..................... 2

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED ..................... 2

STATEMENT OF THE CASE .................... 4

A. Background Of The Case ....................

4

B. The District Court Proceedings ..............7

C. The Federal Circuit Review ................

10

REASONS FOR GRANTING THE PETITION ..... 15

CONCLUSION ................................. 18
 vi

TABLE OF APPENDICES
Page
APPENDIX A -- OPINION OF THE UNITED
STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT, FILED MAY 23, 2017.

APPENDIX B -- OPINION OF THE

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT
OF WASHINGTON AT SEATTLE,
FILED NOVEMBER 3, 2015 .................. 31a

APPENDIX C -- ORDER OF THE

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT
OF WASHINGTON AT SEATTLE,
FILED SEPTEMBER 2, 2015 ................. 38a

APPENDIX D -- ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE, FILED JULY 16, 2015 ..........
50a

APPENDIX E -- ORDER OF THE UNITED

STATES DISTRICT COURT WESTERN
DISTRICT OF WASHINGTON AT
SEATTLE FILED APRIL 11, 2014 ............ 83a
 vii

TABLE OF CITED AUTHORITIES

Page
CASES

North Am. Philips Corp. v.

American Vending Sales, Inc.,
12
35 F.3d 1576 (Fed. Cir. 1994) ....................

Pinter v. Dahl,
486 U.S. 622 (1988) .........................12, 13

STATUTES AND OTHER AUTHORITIES

Article 1, section 8, clause 8 of the Constitution .......2

17 U.S.C. 106(3) ...........................

3, 11, 17

3
17 U.S.C. 501(a) .................................

2
28 U.S.C. 1254(1) ................................

4
28 U.S.C. 1338(a) ................................

3, 11, 17
35 U.S.C. 271(a) ...........................
BLANK PAGE
 PETITION FOR A WRIT OF CERTIORARI

Milo & Gabby LLC and Karen Keller petition this

Court for a writ of certiorari to the United States Court
of Appeals For The Federal Circuit correcting the Federal
Circuits erroneous holding that Internet retailers, such
as Amazon.corn, do not face liability under copyright
and patent laws for the admittedly infringing products
appearing for sale on their websites. In particular, the
Federal Circuit upheld the decision of the Western District
of Washington, Seattle Division, that, because Amazon
does not take or hold legal title to the products appearing
for sale on its website, it neither "sells," "offers for sale,"
"distributes" or otherwise "transfers ownership" of those
goods.

In apparently believing that business conducted on

the Internet is somehow materially different from the
ordinary retail transactions that have occurred in other
forums and venues for millennia, the Federal Circuit has
created an enormous loophole that holds Amazon and
similarly situated Internet retailers blameless, while
leaving small business people, such as Mrs. Keller and
Milo & Gabby, defenseless against blatant infringement
of their copyrights and patents by largely unknown
overseas copyists who gain instant, easy access to United
States markets through the simple expedient of opening
an Amazon sellers account. But for the activities of
Amazon, such copyists could not enter the United States
market so easily, and small business people, such as Milo
& Gabby and Mrs. Keller, might have a reasonable chance
of remaining in business.
 2

OPINIONS BELOW

The opinion of the U.S. Court Of Appeals for the

Federal Circuit (reproduced at App. la - App. 30A) is not
yet reported. The U.S. District Courts Opinion following
trial is reported at 144 F.Supp.3d. 1251. The U.S. District
Courts Order Granting Attorneys Fees (reproduced at
App. 38a-App. 49a) is not yet reported. The U.S. District
Courts Order Granting In Part and Denying In Part
Defendants Motion For Summary Judgment (reproduced
at App. 50A-App. 82a) is not yet reported. The U.S.
District Courts Order Granting Defendants Motion To
Dismiss For Failure To State A Claim In Part is reported
at 12 F.Supp.3d. 1341.

BASIS FOR JURISDICTION

The judgment of the Court of Appeals was entered on

May 23, 2017. This Courts jurisdiction is invoked under
28 U.S.C. 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

Article 1, section 8, clause 8 of the Constitution

provides:

Congress shall have Power ... To promote the

Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and
Discoveries.
 3

Liability for infringement of a copyright is provided

under 17 U.S.C. 501(a), the pertinent part of which is set
out below:

Anyone who violates any of the exclusive rights

of the copyright owner as provided by sections
106 through 122 or of the author as provided
in section 106A(a), or who imports copies or
phonorecords into the United States in violation
of section 602, is an infringer of the copyright
or right of the author, as the case may be.

Title 17 U.S.C. 106(3), which forms the pertinent part

of the "exclusive rights of the copyright owner as provided
by sections 106 through 122" referenced in Section 501(a)
above reads as follows:

Subject to sections 107 through 122, the

owner of copyright under this title has the
exclusive rights to do and to authorize any of
the following:

(3) to distribute copies or phonorecords of the

copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or
lending;

Liability for infringement of a patent is provided

under 35 U.S.C. 271(a), which is set out in its entirety
below:
 4

Except as otherwise provided in this title,

whoever without authority makes, uses, offers
to sell, or sells any patented invention, within
the United States or imports into the United
States any patented invention during the term
of the patent therefor, infringes the patent.

STATEMENT OF THE CASE

The underlying action is a distressingly common

example of how the current interpretation and imposition
of the copyright and patent laws fails to protect those
who deserve and need such protection the most. The
decisions of the District Court and the Federal Circuit
below deviate so far from the accepted and usual course
of judicial proceedings regarding the meanings of "sell,"
"offer to sell," "transfer ownership" and "distribute" as
used under copyright and patent statutes as to call for an
exercise of this Courts supervisory power.

This action involves claims for copyright infringement

under Title 17 of the United States Code, claims for patent
infringement under Title 35 of the United States Code,
and claims for false designation of origin under Title 15 of
the United States Code. Federal jurisdiction in the court
of first instance was based on 28 U.S.C. 1338(a), which
confers exclusive jurisdiction in the District Courts for
matters arising under any Act of Congress relating to
patents and copyrights.

A. Background Of The Case

Petitioner Karen Keller is a trained, experienced and

talented product designer residing, with her husband,
 5

in the Seattle, Washington area. Over the years, Mrs.

Keller has designed a number of successful products, and
the Kellers have supported themselves and their family
largely through sales of these products.

In late 2004, Mrs. Keller created a series of animal-

shaped pillow cases designed and intended to be of appeal
to young children. Mrs. Keller applied for and received
five U.S. Design Patents and six U.S. copyrights for her
unique pillow case designs that were the subject of the
underlying dispute. Mrs. Keller and her husband, then
set up Milo & Gabby LLC to bring the new pillowcases
to market under the names, "Milo & Gabby" and "Cozy
Companions."

To market and promote the animal-shaped pillowcases,

the Kellers used photographs of their own children resting
their heads on the pillowcases. These photographs
appeared prominently in marketing materials for the
pillowcases as well as on packaging for the pillowcases.

In mid-2013, the Kellers were shocked to discover

that blatant knock-offs of their animal-shaped pillowcases
were being offered for sale on the Amazon.corn website.
To add insult to injury, photographs of the Kellers own
children resting on genuine Milo & Gabby pillowcases
were displayed on the Amazon.corn website and used to
promote the knock-off goods.

To confirm what they already knew, the Kellers

placed orders for the knock-off products using their own
Amazon customer account. Sure enough, the products they
received from Amazon proved to be cheap imitations of
the genuine Milo & Gabby products.
 6

The knock-off products the Kellers received from

Amazon arrived, via UPS, in a box sealed with tape
prominently bearing the "Amazon" logo. That box, in
turn, clearly came from an Amazon "fulfillment" center.

In the proceedings below, it was established (and

never seriously disputed) that the knock-off products
were, in fact, (1) stored in the United States in an Amazon
fulfillment center, (2) placed in the shipping box by
Amazon personnel in response to the order received by
Amazon, and (3) sealed using the "Amazon" labeled tape
by Amazon personnel.

It was also established and never seriously disputed

that Amazon personnel created the shipping label affixed
to the box containing the knock-off goods and delivered
the box to UPS for shipment.

Similarly, it was established and never seriously

disputed that it was Amazon, not someone else, who
actually collected the money paid by the Kellers and others
to purchase the knock-off goods.

Finally, it was established and never seriously

disputed that the knock-off products received from
Amazon did, in fact, infringe Mrs. Kellers valid and
unchallenged copyrights and design patents covering her
animal-shaped pillow case products.

As a result of the numerous knock-off products

appearing at discount prices on the Amazon website, Mrs.
Keller and Milo & Gabby were unable to sell their genuine,
higher quality products at the higher prices needed to
do so profitably. Furthermore, purchasers of the knock-
 7

off products, in turn, often left negative reviews on the

Amazon website complaining of the poor construction
quality of the products. Such negative reviews, appearing
in conjunction with photographs of Mrs. Kellers and Milo
& Gabbys genuine products, left the false and harmful
impression that the genuine products offered by Milo &
Gabby were of inferior quality.

B. The District Court Proceedings

Faced with widespread offers of blatantly infringing

knock-off products on the Amazon website, Mrs. Keller
and Milo & Gabby had little choice but to sue. On October
24, 2013, Mrs. Keller and Milo & Gabby filed their
complaint against Amazon in the Western District of
Washington alleging, among other things, counts for, (1)
patent infringement, (2) copyright infringement, and (3)
violations of the Lanham Act.

On July 16, 2014, the District Court partially granted

Amazons motion for summary judgment. (App. 50a-82a).
In particular, the District Court dismissed Milo & Gabbys
copyright claim in its entirety, finding that "Amazon is
not the seller of the alleged infringing products" because,
"third-party sellers retain full title to and ownership of
the inventory sold by the third party." (App. 62a). While
acknowledging that Amazon (1) stored the infringing
products in its facilities, (2) accepted orders through its
website, (3) received monies paid by purchasers, and (4)
packaged the products for shipment, the District Court
concluded these activities did not constitute sales, based
on its belief that title is controlling.
 8

Based on the District Courts view that Amazon does

not "sell" because it does not take title to the sold goods,
the District Court also concluded that Milo & Gabby could
not assert a patent infringement case on actual sales of
the knock-off products. Curiously, the District Court
permitted Milo & Gabbys patent infringement case to
go forward on the very narrow, limited, sole question of
whether Amazon "offered" the knock-off products for sale.

Trial on the limited question of whether Amazon

"offers" products for sale was held before an advisory
jury between between October 26-29, 2015. At the start of
the trial, the District Court informed the Jury that, "The
Court has previously determined in this case that certain
Third Parties... are responsible for providing the products
that are accused of infringement," and that, "The Court
has also previously determined that Amazon has not
sold any of the allegedly infringing products." (Emphasis
added). Petitioners were precluded from advancing any
arguments that Amazon had, in fact, sold the infringing
knock-off products. With their hands thus tied behind
their back, Mrs. Keller and Milo & Gabby were forced to
try to prove "offers" for sale without being able to point
to actual sales as the best evidence that such "offers"
occurred.

Given that the District Court effectively absolved

Amazon of liability by telling the jury at the very start
of trial that, "certain Third Parties...are responsible for
providing the products that are accused of infringement,"
and that, "The Court has also previously determined
that Amazon has not sold any of the allegedly infringing
products," there is little surprise that the Jury answered
the questions presented in favor of Amazon. Indeed, given
how the questions were framed (e.g. "Do you find that
Amazon set the price at which the allegedly infringing
products could be purchased?" and "Do you find that
Amazon provided the descriptions of the allegedly
infringing products?") the Jury had little real choice but
to return the verdict it did.

Not surprisingly, the District Court accepted the

Jurys advisory findings and entered judgment in favor
of Amazon. Despite so doing, the District Court, to its
credit, stated:

However, the Court is troubled by its conclusion

and the impact it may have on the many small
retail sellers in circumstances similar to the
Plaintiffs. There is no doubt that we now live
in a time where the law lags behind technology.
This case illustrates that point.

As a result, Amazon enables and fosters a

market place reaching millions of customers,
where anyone can sell anything, while at
the same time taking little responsibility for
offering to sell or selling the products. Indeed,
under the current case law, Amazon has been
able to disavow itself from any responsibility for
"offering to sell" the products at all. As noted
above, the purpose of "adding offer [ ] to sell
to section 271(a) was to prevent.., generating
interest in a potential infringing product to the
commercial detriment of the rightful patentee."
[citation omitted] In this instance, the Court
 10

is not convinced that such purpose has been

fulfilled. However, that is a subject which must
be addressed to Congress and not the courts.

(App. 36a-37a).

C. The Federal Circuit Review

On appeal, the Federal Circuit, perhaps to avoid

substantive review of troubling issues, concluded that
Mrs. Keller and Milo & Gabby had waived their patent
infringement claims both at trial and on appeal. This was
based on a bizarre concatenation of findings that Mrs.
Keller and Milo & Gabby had somehow "waived" the
argument that Amazon "sells" goods during summary
judgment proceedings and then somehow "waived" the
argument that Amazon makes "offers to sell" products
on appeal.

In their initial Complaint Mrs. Keller and Milo &

Gabby alleged that, "Defendant Amazon is making, using,
selling, offering for sale, and/or importing the Amazon
knock-offs which are virtually indistinguishable (but for
quality) from Plaintiff Milo & Gabbys patented designs,"
and that such actions "constitute patent infringement
under 35 U.S.C. 271, et seq." It is simply not true that
Milo & Gabby never alleged Amazon sold the infringing
goods.

At trial, Mrs. Keller and Milo & Gabby had no choice

but to argue only that Amazon "offers" the infringing
product for sale. Indeed, that was the only issue the
District Court allowed to go to trial. For Milo & Gabby
to go ahead and argue otherwise, and boldly claim that
 11

Amazon "sold" the infringing goods, would be in direct

defiance of the District Courts prior orders and authority
and would likely expose them to a justified finding of
contempt. Petitioners compliance with the direct order
of the District Court is in no way a waiver of its argument
that Amazon in fact sells the infringing goods as well as
offers them for sale.

Finally, the claim that Mrs. Keller and Milo & Gabby
"waived" their theory that Amazon "sells" the infringing
arguments is belied by the very words of the District
Court itself. Again, at the start of the trial, the District
Court stated, "The Court has also previously determined
that Amazon has not sold any of the allegedly infringing
products." By the clear words of the Court itself, it was the
Court that made this determination, not some supposed
"waiver" on the part of Mrs. Keller and Milo & Gabby.

By thus finding "waiver," the Federal Circuit was able

to avoid direct review of whether Amazon actually sells or
offers to sell products for purposes of 35 U.S.C. 271(a).

As to copyright infringement, however, the Federal

Circuit had no choice but to review the District Courts
holding that Amazon escaped copyright infringement
liability because "Amazon is not the seller of the alleged
infringing products," given that, "third-party sellers
retain full title to and ownership of the inventory sold by
the third party." Addressing this question, the Federal
Circuit concluded that Internet sellers, such as Amazon,
neither "sell" nor "offer for sale," or otherwise engage in
the activities that Congress specified give rise to copyright
and patent infringement liability when 17 U.S.C. 106(3)
and 35 U.S.C. 271(a) were enacted decades ago. (App.
12a-25a).
 12

In absolving Amazon of all liability for infringement,

the Federal Circuit adopted a strained interpretation of
"sale" that runs counter to what the term means in both
its ordinary and legal context.

In their appeal, Petitioners pointed out that, under

long standing law, holding title, and/or passing title,
are not necessary to make one a "seller." As this Court
stated in Pinter v. Dahl, 486 U.S. 622 (1988), "In common
parlance, a person may offer or sell property without
necessarily being the person who transfers title to, or
other interest in, that property." Id. at 642-43. Indeed,
and prior to the instant case, the Federal Circuit itself
recognized that the passage or holding of "title" is not
essential to every sale. See North Am. Philips Corp. v.
American Vending Sales, Inc., 35 F. 3d 1576 (Fed. Cir.
1994) ("[N]o policy [is] furthered by according controlling
significance to the passage of legal title here. This case
has nothing to do, for example, with the proper allocation
of the risk of loss between parties to the underlying sales
contracts."). Id. at 1579-80.

Nevertheless, and after purporting to review

dictionaries, the Uniform Commercial Code and its own
precedent, the Federal Circuit categorically concluded
that, "[We] have found the presence or absence of passage
of title to be a significant indicator of whether a sale
has occurred in the patent law context," (App. 15a), and
that, "We are unpersuaded, however, that our general
insistence on transfer of title should be abandoned in
the circumstances presented here." (App. 17a). The
Federal Circuit then went on to reject each of Petitioners
arguments as either unpersuasive or inapplicable.
 13

For example, in dismissing this Courts highly

relevant decision in Pinter, supra, (i.e., that, "In common
parlance, a person may offer or sell property without
necessarily being tl~e person who transfers title to, or
other interest in, that property"), the Federal Circuit
made herculean efforts to ignore the clear language of
that decision: "Milo & Gabby ignores what else the Court
said in Pinter. First, the Court noted that the buyer-seller
relationship in traditional contractual privity generally
involves passing title, or other interest in the security,
to the buyer for value." (App. 21a-22a). This side-steps
the question. There is no dispute that title is ultimately
transferred to a buyer in an Amazon transaction. That,
however, was not the question. The question was whether
the seller or person making the offer to sell needs to hold
title. This Court, in Pinter, held that one does not need to
hold title to "offer" securities for sale. That is the pertinent
point that the Federal Circuit avoided.

Next, the Federal Circuit, in a further effort to

distinguish Pinter, stated:

Milo & Gabby has not alleged that Amazon

receives profits from the sale of the pillowcases
or that its motivations were anything other
than creating a platform for the benefit of
both purchasers and owners to consummate
their own deals. Based on Milo & Gabbys
own allegations, Amazons activities are more
closely characterized as collateral to the sale
itself.

(App. 22a). At trial it was established without serious

dispute that Amazon charges and receives a percentage
 14

of monies paid in online transactions. Indeed, Amazon, to

its credit, never claimed it made no money on the sales of
the subject infringing goods. And from day one Petitioners
have argued that, but for Amazon, the infringing sales
could and would never have been made in the first place.
Here, the Federal Circuit is relying on "facts" that are
not true and arguments that neither party made.

Ultimately, the Federal Circuit concluded that:

[W]e will not today depart from an insistence

that Milo & Gabby show that Amazon obtained
title to the goods at issue and transferred
that title to the third-party purchasers before
we will find Amazon liable as a seller of the
copyrighted goods.

Because the third-party sellers retain title to

the pillowcases at all times and Amazon, as
relevant to this case, merely provides an online
marketplace followed by logistical and shipping
services after the third-party seller has
completed its transaction with a buyer, Amazon
is not a seller in this case for the purposes of
copyright infringement under 17 U.S.C. 106.

(App. 24a-25a).

On July 10 and July 17, 2017, Amazon and Amicus

Curiae eBay, Inc., respectively, filed uncontested and
agreed motions to reissue the Federal Circuits decision
in this matter as precedential. Despite the agreement of
 15

all parties, including Petitioners, that the opinion should

be made precedential, the Federal Circuit, on July 20,
2017, denied the motions.

REASONS FOR GRANTING THE PETITION

1. This petition should be granted in order to provide

lower courts, the Bar, litigants, business people, and
members of the general public with meaningful guidance
as to what activities and actions give rise to liability for
copyright and patent infringement while conducting
business online. As matters now stand, one can apparently
infringe copyrights simply by viewing websites from
a computer at home, while those who make millions
engaging in the commercial distribution of admittedly
infringing materials escape liability altogether. Whether
Congress intended this anomalous result is ripe for review.

For the better part of a century, the meaning of

terms such as, "sell," "sale," "offer to sell," "transfer of
ownership," "distribute," etc., were well understood by
both the courts and lay public. Today, with the Federal
Circuits ruling, these words have been so distorted and
corrupted that it is now possible for those publicly known
and identified as "the worlds largest retailers" to claim,
with a straight face, that they do not actually sell anything
or offer anything for sale. Clarity in the meaning of these
terms is sorely needed.

The public is not blind to these anomalies, and

continued respect for the law and courts depends on
ensuring that the laws of intellectual property do not
devolve into either a hopelessly opaque morass of technical
minutiae or an outright joke. Review here is needed to
avoid either possibility.
 16

2. This petition should be granted to clarify what

role, if any, "title" plays in determining liability for
copyright and patent infringement. In discounting and
dismissing Petitioners arguments and showings that
"sell," as used both in law and in business, does not always
require a "seller" to hold legal title, the Federal Circuit
has departed radically from both its own precedent and
the decisions of this Court. In systematically finding
each of Petitioners arguments either unpersuasive or
inapplicable, the net effect of the Federal Circuits holding
is that Internet retailers, such as Amazon and amicus
curiae eBay, Inc., can escape liability for blatant and
admitted patent and copyright infringement through the
simple expedient of "facilitating" rather than making
sales, and by burying in the fine print of largely ignored
and unread website "terms of service" agreements that
the infringing manufacturers "retain title." The Federal
Circuits holding that Amazon "merely provides an online
marketplace followed by logistical and shipping services
after the third-party seller has completed its transaction
with a buyer" likely comes as news to the millions of people
who regularly shop on Amazon every day or to the millions
of Amazon stockholders who believe they own part of one
of the worlds largest retailers.

The concept of title, historically created and used

primarily to determine and specify who bears the risk of
loss when goods are shipped by sea or air, or are stored in
a warehouse, etc., essentially determines who should pay
for insurance. Whether title should play the prominent
role given it by the Federal Circuit here, and whether it
should provide a huge escape hatch for those wishing to
infringe the copyright and patent rights of others, have
not, to Petitioners knowledge, been addressed by this
Court.
 17

3. The petition should be granted to clarify whether

Congressional action is needed. The District Court
expressly, and the Federal Circuit implicitly, identified a
supposed "lag" between the development of technology
and law. Indeed, in the case of the District Court, the
Court itself was, "troubled by its conclusion and the
impact it may have on the many small retail sellers in
circumstances similar to the Plaintiffs." (App. 36a). In
the further words of the District Court:

Amazon has been able to disavow itself from any

responsibility for "offering to sell" the products
at all. As noted above, the purpose of "adding
offer [ ] to sell to section 271(a) was to prevent
... generating interest in a potential infringing
product to the commercial detriment of the
rightful patentee." [citation omitted] In this
instance, the Court is not convinced that such
purpose has been fulfilled. However, that is a
subject which must be addressed to Congress
and not the courts.

(App. 37a, emphasis supplied.)

Petitioners respectfully submit that Congress, in

enacting 17 U.S.C. 106(3) and 35 U.S.C. 271(a), has
already anticipated and provided for the advent of new
ways of doing business, and that any supposed lag between
technology and law is illusory. In particular, both 17
U.S.C. 106(3) and 35 U.S.C. 271(a) already include
expansive terms, such as "sale," "offers to sell," "import,"
"distribute," "other transfer of ownership," etc. By their
wording and legislative histories, these statutes are meant
to be interpreted broadly, rather than hyper-technically
and narrowly as the Federal Circuit does in this case.
 18

In any event, whether Congressional action is needed

to address what the District Court itself perceives as a real
problem, or whether existing law is sufficient to address it,
can and should be cleared up through review at this Court.
For this additional reason, the petition should be granted.

CONCLUSION

For reasons set forth above, the decision of the Federal

Circuit below should be reviewed, and the petition should
be granted.

Dated: August 21, 2017. Respectfully submitted

PHILIP P. MANN
Counsel of Record
MANN LAW GROUP
1218 Third Avenue, Suite 1809
Seattle, Washington 98101
(206) 436-0900
phil@mannlawgroup.com

Counsel for Petitioners