trademark infringement as literal falsity

CTI Services, L.L.C. v. Energy Maintenance Services Group I, L.L.C., 2013 WL 428054 (N.D. Okla. 2013)

CTI, doing business as Citadel, competes with EMS in the market for composite wrap products used to repair leaking or corroded piping systems—Citadel sells Diamond Wrap and EMS now sells  I-Wrap, though it used to distribute Diamond Wrap.  Citadel alleged that EMS’s predecessor removed references to Citadel from advertising materials for Diamond Wrap, reverse engineered Diamond Wrap, then converted users.  Citadel asserted various claims, and moved for partial summary judgment on its Lanham Act literally false advertising/Oklahoma Deceptive Trade Practices Act claims.

Citadel has a registered trademark for Diamond Wrap; EMS’s predecessor used several marketing materials referring to “EFS’s Diamond Wrap” instead of “Citadel’s Diamond Wrap,” which a representative admitted was literally false and infringed the mark.  EMS conceded the violations (not clear on why it conceded materiality), but argued that summary judgment was inapproprate because the misrepresentations weren’t intentional or malicious.  But intent isn’t a required element of either ODTPA or the Lanham Act, so Citadel was entitled to summary judgment on liability for these claims.  Citadel acknowledged that intent is a factor in assessing likely confusion, though. 

Comment: weird.  Just shows how disconnecting trademark from false advertising has led to strange doctrinal follies; there’s no reason this isn’t a straight-up trademark case, other than the frolic and detour of literal v. implied falsity in 43(a)(1)(B) cases.