statements to investors not probative of commercial ad/promotion in Lanham Act case

Strategic Partners, Inc. v. FIGS, Inc., 2022 WL 18399950, No. 2:19-cv-02286-JWH-KS (C.D. Cal. Sept. 26, 2022)

[much other stuff skipped] The parties had a false advertising dispute that went to a jury, which found that FIGS wasn’t liable for falsely advertising the antimicrobial properties of its scrubs. Since the court had some interesting evidentiary rulings, I’m blogging that here.

First, FIGS successfully excluded four documents that allegedly contain investor-related communications on the basis that “[o]nly ‘commercial speech’ that is made ‘for the purpose of influencing consumers to buy defendant’s goods or services’ is actionable under the Lanham Act.” Because none of those communications was directed at consumers, they failed as a matter of law to support SPI’s Lanham Act claims. “Even if the documents at issue were aimed at brand builders and consultants, without a showing that those communications were aimed at consumers they cannot serve as commercial speech for Lanham Act purposes.” Motion in limine granted.

Evidence relating to dismissed trade secret etc. claims: Not sufficiently related to false advertising because there was no evidence that the allegedly misappropriated info showed up in advertising. FIGS’ alleged copying of SPI’s products was not relevant to false advertising. And SPI wouldn’t need this to counter FIGS’ allegedly “fraudulent” origin narrative unless FIGS opened the door with that narrative.

However, the court would not exclude SPI’s evidence about the Silvadur trademark guidelines from non-party Dow Chemical. FIGS argued they weren’t probative of falsity or misleadingness, or of intent, because it was never licensed by Dow to use the Silvadur trademark. The issue is that the guidelines disavow anti-microbial qualities, and FIGS apparently relied on Silvadur for its antimicrobial claims. “Although it would be remarkable for Dow to have inaccurately disavowed the antimicrobial properties of Silvadur in its Trademark Guidelines, the ability of FIGS to prove the antimicrobial properties of Silvadur at trial through its own scientific testing does not exclude the ability of SPI to rely on the Trademark Guidelines.” After all, defendants relied on Dow’s published descriptions of Silvadur for its claims that “FIGS antimicrobial fabric reduces hospital-acquired infections by 66%” and in other ways. “FIGS cannot rely on Dow’s published guidance on Silvadur’s antimicrobial properties and then disown it. FIGS may be correct that scientific testing has demonstrated that its claims about Silvadur are true, but SPI has relevant and admissible grounds for referencing the Trademark Guidelines.”