trademark infringement accusations are opinion without a final judgment

Trevari Media, LLC v. Colasse, 758 F.Supp.3d 1175 (C.D. Cal. 2024)

Colasse accused Trevari of infringing its trade dress in a “[s]pring-loaded glass-breaking device. Although the trade dress was registered in 2014, when Colasse emailed Trevari alleging infringement in 2021, Trevari responded that the putative trademark was invalid because it was functional, and defendant didn’t respond. Instead, Colasse sent trade dress complaints to Facebook and Instagram, and, as a result, Facebook and Instagram removed posts which advertised Trevari’s glass breaker. While Trevari was petitioning for cancellation at the TTAB, Colasse continued to cause Trevari’s glass breaker product to be removed from various online sites including Shopify, Wordpress, Facebook, and Instagram, and also messaged Trevari’s followers on Facebook and Instagram, claiming that its glass breaker infringed its trademark. In 2023, the TTAB cancelled the registration because the design was functional; Colasse has sought de novo review in district court.

accused design

cancelled registration image

Trevari sued for trade libel, intentional interference with contractual relations, and unfair business practices under California law.

The court found that Colasse’s statements were only opinion. For example, Colasse’s counsel told Shopify that Trevari’s listing was “counterfeited.” The court found it “unclear” whether an assertion of IP infringement could ever be considered provable fact, “at least before a tribunal determines finally whether the IP is valid and infringed.” Although Trevari alleged that Colasse always knew or had serious doubts about the invalidity, the design had been registered at the time the statements were made, providing prima facie evidence of validity. “Given the legal complexity in determining IP validity and infringement, and in line with the above cited cases, the court finds the validity or infringement of IP only becomes a provable ‘fact’ when a final, unappealable decision has been rendered.”

The court also held that “the surrounding context further supports the statement was one of opinion, as the statement was asserted as a ‘reasonable belief’ made in ‘good faith.’” Plus, as to the non-lawyer defendant, “his statement regarding complex legal issues can only reasonably be interpreted as an opinion.”

What about complaints to Shopify calling the product a “Chinese counterfeit” or “cheap low quality made copy from China”? That was also opinion.

Without false factual statements, all the claims failed.