Monday, January 27, 2014

TM claims in DMCA notice may lead to 512(f) liability

CrossFit, Inc. v. Alvies, No. 13–3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014)

CrossFit sued Alvies for trademark infringement, among other things, and Alvies counterclaimed for false advertising/unfair competition.  CrossFit moved to dismiss the counterclaims and partially succeeded.  CrossFit alleged that it developed a fitness training regimen and provides a nationally standardized certificate program to personal trainers who can become licensed CrossFit affiliates. It has several CrossFit registrations and ITU applications.  In 2011, Alvies launched a blog at “” and created a “CrossFit Mamas” Facebook page. She posted daily high-intensity interval training routines, and readers used the comments section to post and track their personal progress on certain exercises. She sold vitamin meal replacement shakes through the blog and added Google AdWords advertising.

In Spring 2013, a CrossFit paralegal demanded that Alvies stop using the CrossFit name on her blog and affiliated Facebook page, and also began communicating with at least one reader of Alvies’s blog about the quality of Alvies’s workouts. The paralegal stated that she had “assessed a few days of [Alvies’s] workouts,” that it was “bad programming,” and that a CrossFit trainer determined that Alvies’s workouts were “stupid and unsafe.”

CrossFit requested that third parties (possibly Google) remove Alvies’s blog and sent a DMCA takedown notice to Facebook.  Alvies allegedly reached an agreement to move to “” and “,” though the paralegal allegedly asserted that Alvies could not use the term “CFMamas” because “CF” is a common abbreviation of CrossFit.  CrossFit continued to demand that Alvies disable Google AdWords and stop selling vitamin shakes.  It allegedly reneged on the deal and demanded that she stop using; she moved to “” But then CrossFit repeatedly demanded that Alvies delete over two years of blog posts, allegedly as part of an improper attempt to remove evidence of her prior use in commerce of marks subject to CrossFit’s ITUs for nutritional shakes etc.

CrossFit argued that Alvies’s claim for violation of §512(f) should be dismissed.  The DMCA doesn’t provide trademark remedies, but CrossFit’s claims were based on trademark, not copyright.  CrossFit nonetheless argued that Facebook allows trademark takedown notices too.   The court responded: so what?  Alvies plausibly alleged a material misrepresentation of copyright infringement; “[w]hether CrossFit may have been able to convince Facebook to remove Alvies’s page on some other ground has no bearing on CrossFit’s compliance with the DMCA.” CrossFit argued that she wasn’t injured because if it hadn’t submitted a DMCA notice it would have submitted a trademark notice. The court refused to “hypothesize about what Facebook would or would not have done if it had received a trademark takedown notice regarding Alvies’s Facebook page.”

Alvies brought a California UCL claim on the theory that CrossFit was harassing her to eradicate all evidence of her prior use of marks for which CrossFit had filed ITUs.  CrossFit argued that Alvies lacked standing (of course) because she failed to plead economic injury.  Not so.  “Alvies alleges that her blog and affiliated Facebook page generated at least a modicum of revenue through the sale of vitamin shakes and Google AdWords, and that CrossFit wrongfully caused those pages to be removed.”  But UCL remedies for a private plaintiff are generally limited to injunctive relief and restitution, and Alvies’s prayer for relief was too vague; she didn’t seek injunctive relief and restitution requires that the defendant “acquired the plaintiff’s money or property by means of ... unfair competition”; it was unclear how CrossFit could have received Alvies’s lost revenue.  The UCL claim was dismissed with leave to amend.

As for Lanham Act false advertising, CrossFit argued that Alvies lacked standing because they weren’t direct competitors.  It’s a large fitness training company and she’s a blogger.  Nope.  “Both parties offer fitness training services. Their business models differ, but they offer similar services to consumers. … [N]othing in the Lanham Act suggests that differences in size preclude a finding of competition.”  However, Alvies didn’t plead “advertising or promotion,” because the paralegal’s statements to at least one reader didn’t constitute “an organized campaign to penetrate the market.” Any amended pleading would need to identify CrossFit’s allegedly disparaging statements and explain how they were disseminated to the purchasing public.

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