Fit as a filter

The Holmes Group, Inc. v. RPS Products, Inc., --- F.Supp.2d ----, 2006 WL 785056 (D. Mass.)

Replacement filters for portable air purifiers were at issue in this case. The court rejected plaintiff’s patent infringement claims, leaving trademark, false advertising, and unfair competition claims. Effective filters have to form a seal that prevents air from bypassing the filter; plaintiff claims that its filter was easier for consumers to put into position, thus avoiding problems of misinstallation. Moreover, while prior filters had to be configured specially for each air filter on the market, the Holmes product could be configured in multiple ways to fit many air filters, reducing inventory requirements substantially.

Holmes also makes a line of air purifiers. RPS made and sold its own replacement filter for use in Holmes purifiers. The court found that the revised RPS filter fit into all Holmes purifiers, though the original version would not. According to tests performed using generally accepted standards, the cleaning power of RPS filters in Holmes purifiers is less than the cleaning power of Holmes filters. Holmes contended that consumers would not know enough to blame the filter for the lower performance, but would blame the entire machine. RPS countered that it never represented that its replacement filters met the original specifications, and that its customers are generally satisfied.

Individual RPS boxes carry the RPS label and the statement, “Fits Holmes® HEPA Air Cleaners.” Filters are sent to retailers, and at to least one individual customer, in a master shipping carton, on which is printed “HOLMES HEPA FILTER” and “HOLMES FILTER.” Underneath that is RPS’s name and location. At the RPS website, its replacement air filter page states that all its filters are made by RPS, that other company names are used for identification purposes only, and that RPS isn’t affiliated with the other companies named. However, for several years, the website description of the filters at issue said “Holmes air filter for HEPA models,” until it was changed to “HEPA Air filter fits Holmes model …”

Holmes argued that the claim that RPS’s filter “fits” Holmes purifiers is false and misleading because (1) the original RPS filter didn’t physically fit one model, (2) RPS filters don’t hang properly in another model (and even fall out if not held in place until the door is closed), and (3) the filters don’t work as well as Holmes filters.

The court ruled that a jury could find that “fits” necessarily implies a secure fit and a normal installation that doesn’t require undue dexterity. Thus it denied RPS’s motion for summary judgment on theories (1) and (2). Commiting the question to the jury, which is not a result unique to this case, seems to me to represent an expansion of falsity by necessary implication, which was originally used by courts where a statement could practically have only one meaning and no reasonable person would think otherwise. Letting a jury decide whether something is necessarily implied or not opens up further ground for debate. Whether the fit really was secure, by contrast, is a classic fact for the jury to find.

The court did reject theory (3), that “fit” means “perform to Holmes’s original specifications.” Replacement parts manufacturers have a right to advertise that their parts fit in a competitor’s device, even if they don’t perform exactly the same way, to avoid giving the original producer a monopoly on parts for its own machine. (As usual, I’ll ask whether this result could be defeated by a properly conducted consumer survey, in this case one showing that consumers believe that “fit” means “fit Holmes’s purifiers as well as Holmes filters.”) The court pointed out that “fit” implies some minimum level of suitability; if the replacement filter literally “fit” into the machine, but were made of solid plastic, the “fit” claim would be false. But here the claim is only that the product doesn’t work quite as well as the original.

The court distinguished In re Emergency Beacon Corporation, 13 Bankr.Rep. 773 (S.D.N.Y.1981), which found a “fit” claim false when the original company made emergency locator transponders for locating crashed airplanes. The competitor made battery packs to replace the original battery packs and said they’d “fit” all transponders, but, though they did fit in the transponders, they weren’t water or stress resistant and thus would fail in a crash at sea or on impact (which pretty much covers the waterfront, so to speak, of airplane crashes). The product wouldn’t perform in accordance with its intended design – ever – so the replacement didn’t really “fit.”

A jury could find trademark infringement based on the earlier version of the website, which described the filters as “Holmes filters” rather than lookalike or similar products. The disclaimer, on a different page than the Holmes filter page, wasn’t close enough that any reasonable consumer would have seen it. Because the page now says the RPS filter “fits Holmes [purifiers],” the court said the question is whether that statement is true, and since there’s a genuine issue of material fact, Holmes’s trademark infringement claim based on the revised webpage also survives. This is plain error; the revised claim may be false, but that doesn’t make it false as to source, affiliation, or anything trademark law protects.

The court also refused to dismiss the trademark infringement claims based on RPS shipping cartons marked “HOLMES HEPA FILTER” and “HOLMES FILTER.” Though the individual filters in the cartons have disclaimers, a jury could find that these were ineffective to eliminate confusion arising from the use of the mark on the master shipping carton. This ruling makes much more sense, though the decision would have benefited from some discussion of the relevant consumers’ (mostly retailers’) sophistication and of post-sale confusion, since the shipping cartons don’t seem to have been part of RPS’s sales pitch.