Eyelash wars: court tosses counterfeiting claim, allows (c) claim to continue

Boost Beauty, LLC v. Woo Signatures, LLC, 2019 WL 560277, No. 2:18-cv-02960-CAS(Ex) (C.D. Cal. Feb. 11, 2019)

Mark Lemley says that many businesses think the term “unfair competition” is redundant; many trademark plaintiffs likewise think that “infringement” means “counterfeiting.” Here, though the court allows other claims to continue, it shoots down that idea where the alleged counterfeiting is AdWords purchases.

Boost sued Woo for copyright infringement, trademark infringement, and related claims. “In brief, plaintiff alleges that defendants engaged in a scheme to gain access to plaintiff’s confidential information and thereby replicate the beauty product that plaintiff produces, markets, and sells. Specifically, plaintiff alleges that defendants copied its signature eyelash enhancement product by using plaintiff’s manufacturer, by unlawfully copying plaintiff’s copyrighted online advertisement, and by unlawfully using variations of the term ‘BoostLash,’ plaintiff’s trademarked product name, as a search engine adword.” [Hey, it’s a generic use of “adword.”]

Plaintiff’s copyright registration application is pending.  Here’s the “work” at issue:

Boost alleged that defendants “word for word” “copied [ ] plaintiff’s advertisement (but ran the advertisement only outside of California in the hopes plaintiff would not become aware of it)” and that the ads “were intentionally unlabeled and source-ambiguous in that an ordinary consumer of the [p]roduct would not be able to tell, unless investigating closely, that the advertisement did not belong to plaintiff.”  [I can’t tell from the original ad that the ad is from the plaintiff; this seems to be a self-generated problem.]

Defendants allegedly “purchased the Google AdWords ‘boost’ and ‘lash’ together in that order as a search engine advertisement to drive traffic to their website,” constituting infringement, false advertising, and counterfeiting.  [This nonsense is why courts have ended up pretty aggressively protecting comparative keyword advertising; even assuming that BoostLash crosses the threshold of protectability, boost and lash should still be available to anyone to tout a product that improves the appearance of eyelashes.]

Copyright: Boost sufficiently alleged that the copying was “word for word.” Given how long it took Boost to provide the accused ad, the court declined to address whether there was sufficient objective similarity under the extrinsic test, reserving this for a motion for summary judgment.  Frankly, I hope the defendants get fees on this one.  Word for word?

Counterfeiting: Although the infringement claim survived a motion to dismiss (which is sort of depressing in itself), the counterfeiting claim didn’t.  Defendants pointed out that the entire point of the claim is that defendants are selling their differently named product, WooLash, using the accused ads.  Although a plaintiff may not need to allege direct affixation to a product for counterfeiting, alleging AdWords use was insufficient. “At the heart of counterfeiting … is a good that has been copied and which has been sold, offered for sale, or distributed with a counterfeit mark.” Here, there was no allegation that the BoostLash mark was displayed alongside defendants’ product to trick consumers into believing they were getting BoostLash instead of Woo’s product. Use of a mark as an internet search term isn’t counterfeiting, as a matter of law.  It is a use in commerce, but to extend counterfeiting this far would risk turning all infringement claims into counterfeiting claims, with their harsher penalties.