copying competitor's website & reviews creates (c), TM, false advertising problems

Boston Carriage, Inc. v. Boston Suburban Coach, Inc., No. 1:21-cv-10688-IT, 2022 WL 4626918 (D. Mass. Sept. 30, 2022)

Plaintiff, d/b/a Logan Car Service, has offered limousine and transportation services primarily in the Greater Boston area since the 2000s and uses logancarservice.com to do so. Boston Suburban is a competitor. The parties used to have an ongoing business relationship in which both companies outsourced clients to each other and engaged in regular communications regarding their business operations. “Boston Carriage’s principals voluntarily shared their business knowledge with Boston Suburban, including Boston Carriage’s business and marketing strategies and its online presence.”

Boston Suburban registered the domain name “logan-car-service.com.” It had a similar color scheme, page layout and website architecture, font type, and artwork and photographs to Boston Carriage’s. On several pages, text, client reviews, and other content “matched, almost verbatim, the content that originally appeared on Boston Carriage’s website.” When Boston Carriage found out, the relationship deteriorated. Although Boston Suburban removed its website from the “logan-car-service.com” domain address after it complained, for several months visitors to the “logan-car-service.com” domain address were automatically rerouted to Boston Suburban’s other website, “bostonsuburbancoach.com.”

Boston Suburban allegedly continued to use the “Logan Car Service” mark in online keyword advertising and in metatags, and continued to copy customer reviews from Boston Carriage’s website and publish them on online review platforms. It also allegedly resumed promoting and advertising the domain name “logan-car-service.com” and re-routing visitors to its own website.

The court refused to dismiss copyright claims (plaintiff amended its complaint when it had registered its copyright, which was timely and ok).

Trademark infringement in “Logan Car Service”: This was a descriptive term; plaintiff successfully alleged secondary meaning by alleging use for nearly 20 years and “substantial time, money, and effort in building up the goodwill associated” with the mark, along with substantial exclusivity until Boston Suburban came in. “Further, Boston Carriage alleged that Boston Suburban’s use of the mark confused one of Boston Carriage’s clients, who was mistakenly sent to Boston Suburban’s domain when looking for Boston Carriage’s website.”

False advertising: Beyond the use of the mark, Boston Suburban allegedly took customer reviews from Boston Carriage and assigned fictitious names to the customers when it copied the reviews onto the “copycat” website. This was plausibly “a separate act intended to mislead customers that Boston Suburban, rather than Boston Carriage, had actually performed these services.” Of note: Unlike some other courts, this one (correctly) doesn't require that the content of the review be more than puffery. The actionable alleged misrepresentation is that defendant performed the relevant services.

An ACPA claim also survived, as did some state law claims (not state TM claims requiring state registration based on conduct before that registration occurred, which was in 2018). This included a state-law dilution claim, since state law required only distinctiveness. But tortious interference didn’t succeed for want of sufficiently specific losses: the one confused client ended up calling in her order to Boston Carriage, and it was insufficient to plead an otherwise “inexplicable” loss in sale volumes. That didn’t amount to a “reasonable expectancy” of future business which was interfered with by Boston Suburban. And conversion of the website content also failed: Claims based on the parts of the site that Boston Carriage owned copyright to were subject to copyright preemption. Its registration specifically excluded client testimonials; this shouldn’t have changed the preemption analysis for those, but the court considered them separately anyway. Boston Carriage argued that it had a legal right of immediate possession to the original content posted to its website by its customers through a non-exclusive license. But as a non-exclusive licensee, it couldn’t alone bring a claim of conversion, which requires a right of possession.

And RICO claims failed because they were RICO claims.