FireBlok IP Holdings v. Hilti, Inc., No. 19-cv-50122, 2025
WL 1557924 (N.D. Ill. Jun. 4, 2025)
FireBlok sued defendants, relevantly for false advertising
and false association. The court denied FireBlok’s motion for summary judgment.
FireBlok alleged that defendants’ use of the UL certified
mark and FM approved mark on their product, the Firestop Box Insert, was false
advertising and false association. “According to UL’s website, a product with
the UL certification mark is one that UL found to meet UL’s requirements by a
representative sample. According to FM’s website, an FM approved mark denotes
that a product has completed FM’s testing process.” FireBlok was never FM
approved, and its UL certification was withdrawn in 2025. Defendants’ product
has used the UL and FM marks since 2008 and 2009, respectively, but requested
withdrawal of UL certification/sent an email to FM leading FM to withdraw its
listing in 2008.
FireBlok was asserting false association claims on behalf of
a third party as false advertising, which led to an “undifferentiated amalgam
of a claim.”
“A ‘literal’
falsehood is bald-faced, egregious, undeniable, over the top.” (This is a bad
standard, risking a conflation of falsity with willfulness.)
The court found that it was not enough to get summary
judgment on literal falsity that defendants withdrew their certifications with
both certifying bodies. Defendants argued that the Firestop Box Insert was, in
fact, UL certified as shown by UL’s continued listing of Hilti’s product as a
UL certified product and UL’s lack of adverse actions against Defendants for
their use of the UL certified mark, and that their use of the FM approved mark
was not literally false because FM continued to conduct routine inspections of
the manufacturing process, issued Certificates of Compliance, and continued
listing the Firestop Box Insert as an FM Approved product. This was a genuine
factual dispute over what the use of certification marks meant. A jury could
find the use to mean that the Firestop Box Insert met the safety requirements
set by UL and FM, “in which case the statement would be true.” But a jury could
also reasonably interpret these statements to mean that defendants were
authorized to use these marks on their product [though one has to wonder about
materiality in that event].
The parties argued over the likely confusion factors, but false
attribution isn’t enough: “a false advertising claim requires a showing of
deception about the product itself.”
FireBlok also failed to show that there was no dispute about
materiality. Nor was injury to FireBlok shown sufficiently to grant summary
judgment; it wasn’t enough that the parties competed.
What about false association? (I would probably have held
that there wasn’t standing under 43(a)(1)(A), only (B).) Doing conflating of
its own, the court said that, without literal falsity, FireBlok had to show misleadingness
with actual consumer confusion, and there was no evidence of that. The court
would not presume likely confusion from literal falsity in a false association
case.
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