While this was mainly a breach of contract action, the court
had occasion to resolve various Lanham Act false advertising/trademark and
business tort issues. TenCate (actually
a bunch of related entities) entered into three contracts to supply FieldTurf
with polyethylene fiber used to make artificial grass turf for athletic fields.
Initially, FieldTurf entered into a supply agreement in which TenCate’s
predecessor would provide monofilament fiber called Evolution exclusively to
FieldTurf. FieldTurf allegedly began receiving
complaints about fields installed using Evolution fiber. Its testing allegedly demonstrated that
Evolution yarn was degrading prematurely.
It subsequently released Revolution, a competing fiber product. FieldTurf sued TenCate for breach of contract,
breach of warranty, and fraud. TenCate counterclaimed for false advertising,
trademark infringement, slander, etc.
On FieldTurf’s statement that Revolution was the “industry’s
strongest fiber,” TenCate argued that this meant tensile strength, and provided
evidence that Revolution didn’t have the strongest tensile strength. But a TenCate employee admitted in deposition
that fiber strength can be measured in many ways; this was not literally false,
and TenCate didn’t have evidence of consumer reception. As for the statement that Revolution had “strongest
ultraviolet inhibitor technology in the industry,” TenCate showed that other UV
stabilizers were equal, but that wasn’t enough to show literal falsity, “only
that the advertisement was phrased in a manner which may have misled consumers
about the strength of Revolution's ultraviolet inhibitor technology.”
Revolution also claimed to have the “most natural looking
fiber,” but this was puffery. TenCate’s
expert testified that there were ways to make turf fiber more natural looking,
but also admitted that whether one type was more natural looking than another
was unprovable.
And Revolution claimed to have the “strongest tuft bind” in
the industry, but the court found that TenCate didn’t have standing to contest this claim. According to FieldTurf, “tuft bind” related to
“how hard it is to pull a tuft of fiber out of its backing” and has nothing to
do with the fiber itself. Thus, there was no prudential standing. Although TenCate’s commercial interests may
have been harmed if end users purchased turf through FieldTurf rather than a
TenCate-supplied turf producer, that didn’t counsel heavily in favor of
standing because (NB: this is not a because, but a conclusion about
materiality) the ads at issue made a lot of claims for Revolution, and there
was no reason to think that the brief “tuft bind” claim persuaded a purchaser
more than any other claim. The
directness of the injury counseled against prudential standing because the
parties didn’t generally compete to sell the same products to the same end
users. TenCate was a commercial entity competing in the general market for
artificial turf and was therefore connected to the effects of the false
advertising, which counseled slightly in favor of standing, but determining
FieldTurf’s profits and TenCate’s losses from the “tuft bind” claims would
involve too much speculation given the other important components of the
product. And the possibility of
duplicative claims weighed against standing because, if TenCate could sue, so
could every other competitor in the market for artificial turf and its
components.
TenCate argued that FieldTurf’s ads were deceptive
comparative advertising, justifying a presumption of causation and harm for
actual damages. But the “tuft
bind”-related claims weren’t comparative advertising. The ad pamphlet said that a third party fiber
manufacturer’s “quality began to suffer” and repeated Revolution's motto: “This
is no evolution. This is revolution.” (How is that not comparative with
Evolution, the third party product?) The
ads “only” said that Revolution had the “strongest tuft bind in the industry”
but didn’t “compare the tuft bind with the tuft bind of any competitors,
including TenCate.” (How is “strongest”
not comparative? Ugh.) Thus there could
be no presumption of causation or harm.
FieldTurf also sought summary judgment on TenCate’s
trademark infringement/unfair competition counterclaims, on the grounds that
TenCate couldn’t show confusion. The
Evolution 3GS mark was incontestable, giving it “presumptive[]” strength (ugh
again—no, incontestability means irrebuttable nondescriptiveness: as a matter of law, if it’s not generic, it functions as a mark, but that doesn’t
make it a strong mark, so that’s
wrong in two distinct ways). But
FieldTurf overcame the presumption of strength by showing that, when it
introduced Revolution, Evolution had been sold exclusively to FieldTurf in the
US, and “with trivial exceptions,” it hadn’t been advertised or promoted.
Therefore it was (commercially) weak.
(Wonder why that pamphlet reads that way—an inside jab?)
The marks differed only by a single letter, but the buyers
were sophisticated purchasers of technical products who were unlikely to be
deceived. The motto “It’s not evolution,
it’s Revolution” made clear that FieldTurf was trying to distinguish the products,
not to deceive, especially since it was saying that Evolution was defective;
deception made no sense in context.
Plus, the parties dealt with consumers at different stages of the buying
process: FieldTurf sold turf to athletic facilities, while TenCate sold fiber
to other manufacturers of artificial turf—FieldTurf’s competitors. And there was de minimis evidence of actual
confusion.
FieldTurf also won summary judgment on the slander claim
because TenCate provided only hearsay to prove that it had occurred. TenCate argued that a form letter FieldTurf
sent was libelous, but the court agreed that the statements were privileged:
made in good faith to a properly limited set of persons to protect the
speaker’s interest in a matter in which it was concerned. Though FieldTurf’s
letter was (relatively) widely disseminated in the “design community,” the
letter was limited in scope. It simply
repeated the allegations of FieldTurf’s lawsuit that TenCate changed the fiber and
didn’t live up to its promises. FieldTurf’s
protection of its reputation was privileged.
The tortious interference counterclaim also failed because
the statements were privileged, and TenCate also failed to show financial
injury. Though three potential customers
declined to adopt Evolution for various reasons, including that it had “a lot
of baggage,” the statements didn’t show that the customers were affected by any
FieldTurf statement, whether about the lawsuit or about a TenCate product. Specific claims of lost sales, on inspection,
were traced to reasons other than FieldTurf’s statements about TenCate, showing
again how hard a tortious interference claim is to win in most instances.
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