Dastar bars false advertising claim against "first of its kind" ads

 Vericool World LLC v. Igloo Prods. Corp., 2023 WL 8634803, No. 22-cv-02440-HSG (N.D. Cal. Dec. 13, 2023)

Vericool alleged that Igloo falsely claimed that its “Recool” biodegradable cooler was the first of its kind. The court found this Dastar-barred, since the alleged misstatements do not go to the “nature, characteristics, or qualities” of the cooler as required under the Lanham Act. The court rejected arguments that the materiality of the claim distinguished it from Dastar-barred claims, and that “first of its kind” doesn’t necessarily imply anything about patent/IP status.

Dastar explicitly stated that the Lanham Act “does not exist to reward manufacturers for their innovation in creating a particular device” and that the Act’s “common law foundations ... were not designed to protect originality or creativity.” “Yet that is precisely what Plaintiff seeks to protect in this case: the originality and novelty of its own cooler design.” There was no meaningful distinction between claims of being the “first” and claims of inventorship. “Plaintiff may not directly challenge the Recool as infringing its patents, but just as in Dastar and Sybersound, it is trying to protect its intellectual property rights through the Lanham Act.”

Vericool didn’t help its claim by stating in its papers that “[t]o vigorously defend its patent, Vericool World had to bring this claim.” But “[t]he rights of a patentee or copyright holder are part of a ‘carefully crafted bargain,’ ” and for whatever reason, it didn’t bring a patent infringement claim.

Zobmondo Ent. LLC v. Imagination Int’l Corp., No. CV 09-02235 ABC PLAX, 2009 WL 8714439, at *1 (C.D. Cal. June 23, 2009), found that the use of “original” to describe a board game was actionable because it was about first physical manufacture, not creation of the idea. The court here disagreed. The ad at issue wasn’t about physical manufacture, just used the word “original.” “Yet the Supreme Court has stated that patent law, and not the Lanham Act, offers protections for a manufacturer’s ‘originality’ and ‘creativity.’” Plus, Zobmondo didn’t explain why date of manufacture was a quality or characteristic of the game itself. “Although when a product was manufactured may have implications for patentability, such as whether it is considered novel or non-obvious, in the Court’s view it does not alter the nature of the product or a user’s experience with it.” In Sybersound, the Ninth Circuit explained that the “nature, characteristics, and qualities” of the karaoke recording referred to things like the “quality of its audio and visual effects.” “Such attributes would affect the consumer’s experience rather than the rights of third parties.” (Comment: “First printing” might therefore be different.)

Blue Spike, LLC v. Texas Instruments, Inc., No. 6:12-CV-499, 2014 WL 11848751, (E.D. Tex. July 25, 2014), report and recommendation adopted, No. 6:12-CV-499, 2014 WL 11829325 (E.D. Tex. Aug. 15, 2014), involved allegations that the defendants falsely claimed on their websites that they were the “first to create content fingerprinting technology,” and that competitors are using “borrowed” technology. Here too, the decision didn’t explain how being the first to use a specific kind of technology goes to the “nature, characteristics, and qualities” of the good itself as opposed to the innovation of the technology at issue.

This reasoning also disposed of the UCL claim.