Williams-Sonoma, Inc. v. Wayfair Inc. (D. Mass. 21-cv-12063).

Williams-Sonoma sued Wayfair in 2021, accusing Wayfair of design patent infringement, false designation of origin, and unfair competition, saying that Wayfair knocked off several furniture lines sold by Williams-Sonoma’s “West Elm” brand.  Judge Saris granted Wayfair’s motion to dismiss the false designation claim.  Williams-Sonoma asserted that Wayfair advertisements showing a designer sketching out furniture and containing statements that their furniture is available “only at Wayfair” and “Wayfair’s exclusive collection” and the like would lead a consumer to believe that these designs originated with Wayfair and not Williams-Sonoma.  Judge Saris first rejected Williams-Sonoma’s argument that the complaint failed to meet the heightened pleading standard for a fraud charge.  She agreed that this standard applied, at least as to the state unfair competition claim, but found that the complaint met the standard.  She next addressed whether the accused statements were literally false (which would establishes a presumption of consumer confusion, shifting the burden to Wayfair to disprove confusion).  Wayfair contends that the statements related to the “Foundation collection” rather than to the individual pieces of furniture accused of infringement, and that it was literally true that the Foundation collection was only available through Wayfair.  Judge Saris found that the Supreme Court’s 2003 Dastar v. Twentieth Century Fox decision precludes Williams-Sonoma’s argument.  In Dastar, the Court held that the phrase “origin of goods” refers to the producer, and not the designer, of the goods in question.  She further noted that the statements were not actionable under Section 43(a)(1)(B) of the Lanham Act.  That provision prohibits the misrepresentation of the “nature, characteristics, qualities, or geographic origin of… goods: in connection with commercial advertising.  She noted that this section does not extend to issues of design of the goods, as the identity of the designer does not impact the nature, characteristics, qualities or geographic origins of the goods.  Accordingly, she granted Wayfair’s motion and dismissed the Lanham Act claim. 

Judge Saris noted that a Lanham Act violation is sufficient to support a 93A claim, but that it is not a requirement of one, and refused to dismiss the 93A claim.  She did, however, agree to dismiss the California unfair competition and false advertising claims, finding that under California law, Williams-Sonoma would have to have pled reliance on the allegedly misleading statements, and no such factual allegations were found in the complaint.