Competitor has standing to bring false association claims for false association w/3d party

FireBlok IP Holdings, LLC v. Hilti, Inc., 2021 WL 6049964, No. 3:19-cv-50122 (N.D. Ill. Dec. 12, 2021)

After Lexmark, can a competitor bring a false association claim when the false association is with an unrelated third party? This court answers yes, though limits the effect of that by applying what looks like ordinary false advertising analysis.

FireBlok owns a patent on a system and method for suppressing fire in electrical boxes using intumescent material. Through a licensing agreement, Hilti also markets and sells the Firestop Box Insert based in part on that same patent.

The labels of both products include the Underwriter Laboratories (UL) certification mark. Hilti claimed that it didn’t design the label, but that defendant RectorSeal did the final design.

RectorSeal also sells a product known as the Metacaulk Box Guard. Hilti was authorized to use the UL mark on its label through UL’s Multiple Listing service, which basically allows one product to piggyback off another identical product that is sold under another brand name. Through this process, the Firestop Box Insert was Multiple Listed with RectorSeal’s Metacaulk Box Guard, and thus—for a time—authorized to use the UL certification mark.

However, in 2008, “RectorSeal sent UL a letter withdrawing the Multiple Listing because it would no longer be manufacturing the Firestop Box Insert for Hilti, which was a requirement of the Multiple Listing program.” UL then allegedly withdrew the Multiple Listing, and therefore Hilti’s authority to use the UL mark on its labels. In 2019, RectorSeal requested that Hilti’s Firestop Box Insert be added back. Despite this, Hilti allegedly used the UL mark continuously during the period of noncertification.  FireBlok alleged that customers were likely confused into thinking that UL certified the Firestop Box Insert when it did not.

Illinois Uniform Deceptive Trade Practices Act: Plaintiff sought injunctive relief, which means that a “nonspeculative likelihood of future harm” is required under the statute (and, in federal courts, under Article III). It wasn’t enough to argue that RectorSeal withdrew the certification in the past and might do so again. Currently, the suggestion that the parties might mislabel the product was speculative.

Illinois Consumer Fraud Act: This requires that the relevant acts occur primarily and substantially in Illinois, but here they were nationwide, so that claim failed too.

Lanham Act claims did better. §43(a)(1)(A) false association with UL: FireBlok isn’t required to own the UL mark to bring a false association claim under Lexmark, since it established the relevant commercial interest and alleged proximate cause:

Nothing in the plain text of section 1125(a)(1)(A) requires trademark ownership. On the contrary, the text of the statute merely contemplates unfair competition that causes a likelihood that consumers will mistakenly believe the defendant’s product is sponsored by, affiliated with, or otherwise endorsed by another entity.

After all, Lexmark held that “the classic plaintiff in a Lanham Act case is one who is directly injured by a competitor’s false statements about its own goods or the goods of the plaintiff, and thereby induces customers to choose its goods over the plaintiff’s goods. That is precisely what FireBlok claims here.”

It was plausible that consumers would interpret the label to mean that the product was UL-certified and that this would cause them to purchase it instead of FireBlok’s product. This was literally false because the product was not UL-certified during the relevant period. “And literally false statements presumptively cause competitors harm.” [This is the ‘false advertising instead of likely confusion’ analysis I mentioned.]

§43(a)(1)(B): Same, without need to analyze materiality: “[B]ecause plaintiffs need not present evidence of actual consumer confusion in literal falsity cases, the only further requirement is that FireBlok has alleged that the literal falsity occurred in a commercial advertisement.” Materiality might have to be shown to avoid summary judgment, though.

RectorSeal argued that it couldn’t be liable for any false advertising on Hilti’s website, but the product label itself, which RectorSeal allegedly designed, also counts as a commercial advertisement. “Hilti and RectorSeal no doubt designed the label to entice customers into purchasing the product. Indeed, what other reason could they have for including the UL certification mark on the label?”

 

Proximate cause and puffery in real estate agent's claim against real estate ranking site

McLaughlin v. HomeLight, Inc., No. 2:21-cv-05379-MCS-KES, 2021 WL 5986913 (C.D. Cal. Sept. 17, 2021)

Lexmark’s “commercial interest” standing requirement gives, and its proximate cause requirement takes away.

HomeLight allegedly analyzes home sales data to generate a list of the best-performing real estate agents in a given area. “The website presents certain representations about its ‘custom, unbiased, data-driven recommendations.’” But its lists of the top real estate agents in Agoura Hills, California do not include McLaughlin, who alleged that he is the agent with the highest number of transactions and gross sales in Agoura Hills over the past 20 years. McLaughlin alleges that HomeLight’s website falsely implies that it has no “pay-for-play” relationship with top agents on its lists, but the real estate agents share part of their commission with HomeLight if HomeLight refers them.

McLaughlin’s alleged injury by “the diversion of real estate customers to Defendants and their commercial partners and/or loss of Plaintiff’s goodwill” fell within the Lanham Act’s “zone of interests.” However, McLaughlin failed to plead that his injury “flow[s] directly from the deception wrought by the defendant’s advertising”—that is, that the “deception of consumers causes them to withhold trade from the plaintiff.” It was not enough to generally allege diversion of potential consumers, tarnishment of his goodwill, or that “he would have even more transactions but for the false and misleading statements of Defendants.”

Indeed, McLaughlin pled that he conducted 12 real estate transactions in Agoura Hills in 2021, and that only two of the agents appearing on HomeLight’s lists conducted real estate transactions in Agoura Hills this year. He didn’t plead facts suggesting that HomeLight “caused the buyers and sellers in those transactions to retain those agents over him, or that he lost any other transactions to other agents because HomeLight did not feature him on its website.” E.g., he didn’t plead facts demonstrating that any clients or prospective clients viewed HomeLight’s advertising, “let alone that the advertising influenced their decisions to retain him or another agent.” He also didn’t explain how HomeLight’s purported failure to disclose its “pay-for-play” relationships with featured agents injured him in any way.

This also meant that he didn’t plausibly plead damages.

Also, he didn’t plausibly plead falsity because “top,” “best performing,” and “top performing” “do not signify any quantifiable, objective measure of agent performance” and constituted nonactionable puffery. The website itself signaled that the terms were nonexhaustive: it claimed to identify “20 of the top REALTORS® and real estate agents in Agoura Hills,” didn’t rank the listed individuals, and didn’t order them by transaction count or gross sales. It presented “objective measures of agent performance, such as transactions completed, as well as subjective information, such as client reviews.” Nor did McLaughlin plead facts showing that his omission from the list disproved HomeLight’s representations that its lists are “data-driven,” “unbiased,” and the result of an analysis of “millions of home sales.”

Also, the website clearly stated that real estate agents HomeLight refers through its website provide a referral fee to HomeLight, so nondisclosure couldn’t support his claim.

MLM's essential oils claims were puffery

Macnaughten v. Young Living Essential Oils, LC, 2021 WL 5965195, No. 5:21-cv-00071 (BKS/ML) (N.D.N.Y. Dec. 16, 2021)

Some cases are a reminder that puffery is a doctrine that allows sellers to trick buyers, as long as the way they trick buyers is with statements that sound like they mean something, but aren’t really tangible if you stop and think about them. Some theorists think there should be no such doctrine, because sellers make it sound like the claims are meaningful and consumers respond to the claims as if they were meaningful. This case, where the legal holding is that the central advertising claims are just puffery, is a good illustration of the problem.

Young Living sells “essential oils and blends” through an MLM model. Challenged claims include:

Defendant’s frankincense oil “promotes feelings of relaxation & tranquility”;

Defendant’s lavender oil “promote[s] feeling of calm and fight[s] occasional nervous tension’ and has ‘balancing properties that calm the mind and body”;

Defendant’s peppermint oil “helps to maintain energy levels when applied topically.”

“Therapeutic-Grade.”

Young Living instructs its salespeople that when “describing therapeutic-grade oils,” they should relay that “every essential oil ... has the highest naturally-occurring blend of constituents to maximize the desired effect.” One now-partially-removed statement said that “you can share our products with confidence, knowing that Young Living truly has the experience to produce essential oils that work.” Its blog said: “Pure, therapeutic-grade essential oils can have therapeutic effects on their users. The purer the oils, the stronger the benefits ... Peppermint essential oil should contain between 38 and 47 percent menthol to be therapeutic ... Look for a guarantee of therapeutic grade, which Young Living provides…. [Young Living’s] guarantee of therapeutic-grade oils is superior to all other ‘therapeutic-grade’ promises because Mr. Young ‘developed Young Living’s very high standards for therapeutic-grade essential oils,’ … that separate its products from its competitors.’”

Customers allegedly pay premium prices for these essential oils.

In 2014, FDA issued a warning letter to Young Living as a result of promoting its essential oils for the treatment of “viral infections (including Ebola), Parkinson’s disease, autism, diabetes, hypertension, cancer, insomnia, heart disease, post-traumatic stress disorder (PTSD), dementia, and multiple sclerosis,” conditions that are not “amenable to self-diagnosis and treatment by individuals who are not medical practitioners.” The NAD also directed Young Living to permanently discontinue its claim that the oils are “therapeutic.” Specifically, the NAD found:

in the absence of specific product testing (or evidence that Young Living’s essential oils have not only the same ingredient, but that such ingredients appear in the products in the same dosage and formulation and that the route of administration is the same as the underlying tests reasonably permitting extrapolation of results from the studies to the claims made) ... claims its essential oils are “therapeutic grade” and confer promised physical and mental benefits are unsubstantiated.

NARB affirmed the ruling in 2020. Young Living agreed to discontinue use of its “therapeutic-grade” claim and several other health-related claims, including that its oils “promote feelings of calm,” “help consumers sleep,” “reduce your anxiety,” and “provide clarity, focus and/or alertness.” Nevertheless, promotion of “therapeutic-grade” continues.

The court held that the challenged claims were puffery: vague and subjective claims on which no consumer was entitled to rely, and if they did so, too bad for them.

The term “100% Pure, Therapeutic-Grade” was puffery because it was on all of Young Living’s product labels, ranging from peppermint and eucalyptus to orange and frankincense, “all of which have different purported health benefits according to claims on Defendant’s website.” The term lacked “concrete discernable meaning,” didn’t communicate “any specific details about the product,” nor was it accompanied by any specific details on the label—other than the type of oil—that would, when viewed together, signal to a consumer that “the product would operate in an objective measurable way.” Considering the overall advertising, the claims were too vague, nonspecific, and aspirational: “promote[ ] feelings of relaxation,” “help[ ] to maintain energy levels,” “can ease ... tension,” or “may help relieve tension.” The advertising describes “intangible, non-measurable benefit[s] akin to puffery.” A reasonable consumer could not rely on the “vague advertising language” that the oils “can help promote feelings,” “may help relieve tension,” or “promote” assorted feelings. “In fact, from the cited language a reasonable consumer could expect that the oils may not help promote feelings or may not relieve tension.”

What about all those statements of superiority to other oils? When defendants’ blog answered the question “If an oil is labeled ‘pure, therapeutic-grade,’ can I be sure that it is?” with “NO! Look for a guarantee of therapeutic-grade which Young Living provides,” that merely reflected an intent to communicate that the products “ ‘work’ and are pure, natural, and of the highest quality, but these representations are couched in boastful, non-specific language … that ultimately neither promises nor even identifies any specific ‘therapeutic effects,’ ‘benefits’ or characteristics.” The claimed health benefits were “vague” and “non-committal,” like “[m]ay help relieve tension,” “create[ ] the feeling of normal clear breathing,” “promote a sense of clarity and focus,” or “help[ ] to maintain energy levels.”

Disgorgement in a noncomparative false advertising case: doctrinal drift?

Watkins Inc. v. McCormick & Co., 2021 WL 5810487, NO. 15-2688(DSD/BRT) (D. Minn. Dec. 7, 2021)

It’s very interesting to me that, even as the TMA made injunctive relief much easier to get in Lanham Act cases, courts also seem to be presuming that disgorgement of profits is a standard remedy. Is there some “IP Institute” for judges that is replicating the successes of the Law & Econ institutes for judges in convincing them of what the law is?

Anyway, Watkins alleged that McCormick deceived consumers about the price of its black pepper and diverted sales from Watkins’s competing products. When Walmart tested Watkins’ products, they competed primarliy against McCormick’s pepper, sold beside it. Walmart was concerned about Watkins’ higher price, but Watkins believed it was responding to commodity price spikes and that everyone else would also increase prices. McCormick, however, allegedly responded by reducing the volume of black pepper in its tins but keeping the tins the same size—shrinking the contents of its small tin from two ounces to 1.5 ounces, its medium tin from four ounces to three ounces, and its large tin from eight ounces to six ounces. This allowed McCormick to advertise what seemed like an attractive lower price and charge more. E.g., McCormick’s small tin sold for an average retail price of $2.10 while Watkins’s small tin had an average retail price of $3.17. McCormick’s per-ounce price, however, was $1.40 while Watkins’s was $1.58 per ounce, a smaller gap. The McCormick medium tin was priced at $3.22 while Watkins’s was $4.11, but McCormick’s per-ounce cost was $1.07 while Watkins’s was $1.03.

Walmart dropped Watkins’s black pepper due to poor sales numbers. Watkins sued McCormick under the Lanham Act and coordinate state law.

McCormick argued that Watkins’s expert testimony on damages should be excluded and thus that Watkins hadn’t established injury or causation for any of the forms of relief it seeks. The court disagreed.

The Watkins expert calculated Watkins’s lost profits during the Walmart test; the profits Watkins would have realized between 2015 and 2020 if the test had been successful and Walmart had expanded the distribution of Watkins’s black pepper to 3,000 stores; and McCormick’s profits from its reduced-volume tins. As to the first, Watkins’s and Walmart’s sales projections provided a reasonable basis for determining lost profits, and as for the second, it was fine to use Watkins’s vanilla extract, a similar product from the consumer’s perspective, to project lost profits (subject of course to cross examination).

Disgorgement: McCormick argued that Watkins failed to submit any evidence on whether its profits were attributable to its allegedly deceptive packaging. But the court accepted Watkins’s argument that “once it established that it suffered injury in fact, it need not prove attribution or diversion of sales in order to bring a disgorgement claim.” As soon as Watkins shows statutory standing, “the burden shifts to McCormick to prove that any of those sales were not due to the allegedly unfair competitive practices.” Thus, for disgorgement of profits, a plaintiff need only show the defendant’s “sales of the allegedly falsely advertised products,” after which the burden shifts to the defendant to prove “any costs or deductions.” This contrasts to damages, which require proof of a causal link between plaintiff’s injury and defendant’s conduct.

Here's the language that caught my eye: “Disgorgement imposes a lower burden than money damages and injunctive relief because it serves a different purpose. Disgorgement, an equitable remedy, targets the wrongdoer and seeks to deter improper conduct and prevent unjust enrichment. To achieve these purposes, any plaintiff with standing may seek to eliminate defendant’s ill-gotten gains by pursuing disgorgement of its profits” (emphasis added). In some sense, this is just a matter of emphasis: the principles of equity are still present, albeit in a footnote later, and to “seek” profits is not definitely to get them. But framing matters, and I have a distinct sense that the framing is turning, with none of the caveats about deliberateness of the false advertising or requiring false comparative advertising before considering a profits award that I have come to expect.

With that out of the way, Watkins showed enough evidence of injury to survive summary judgment.

For money damages, a plaintiff “must prove both actual damages and a causal link between defendant’s violation and those damages.” However, a plaintiff need only prove “the fact of damage with certainty, it need not prove the amount of damage with certainty.” The causation requirement ensures that “[a]ny award of damages ... serve[s] as compensation, not a penalty.”

Watkins argued that its consumer survey (presented by an expert) established injury by showing 1: that McCormick’s reduced-volume tins likely deceived consumers; and 2) that the deception was material to consumer buying decisions. The findings of deception and materiality in the consumer survey “create a triable issue as to whether Watkins suffered injury.” Its evidence showed that McCormick was its primary competitor in Walmart. And its damages expert provided support for the claim that it was damaged during the Walmart test. But what about causation?  Again, a factual dispute: even the alternate explanation, that the black pepper was priced too high, was likely “exacerbated” by McCormick’s conduct.

Disgorgement: The court rejected McCormick’s argument that “a plaintiff seeking disgorgement under the Lanham Act must establish that the profits were diverted from the plaintiff’s own sales” and that “the profits are attributable to the false advertising.”

In contrast to other cases (compare, e.g., TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820 (9th Cir. 2011) (noncomparative advertising doesn’t justify disgorgement without some evidence of monetary harm causation), the court here found that “the Lanham Act requires neither proof of diversion nor attribution for disgorgement of profits.… The Lanham Act then permits a defendant to deduct profits that it can prove were not earned due to its violative conduct.” Plus, plaintiff windfalls would be avoided by the bar on double recovery and by the principles of equity.

targeting residents of one building can be advertising or promotion

De Cortes v. Brickell Investment Realty, LLC, --- F.Supp.3d ----, 2021 WL 5768173, NO. 21-21109-CIV-ALTONAGA/Torres (S.D. Fla. Jul. 1, 2021)

De Cortes, an 84-year old woman, worked for defendants/predecessors from 2003-2020 in their real estate business. “Defendants represent clients in and out of Florida in the negotiations for the purchase or sale of real property.” Defendant BIR’s office is in the Four Ambassadors building, where De Cortes has lived and continues to live. Defendants represent 170 owners of units in the Four Ambassadors.

In 2020, De Cortes obtained a Florida real estate sales associate license and asked if she could serve as a real estate agent for BIR. Instead, BIR terminated her and posted a notice on its office door stating that she’d retired, and it also emailed and texted clients with the same statement.

One of BIR’s employees told De Cortes that she’d signed a non-compete agreement; she alleged that he “slipped the Agreement into a stack of papers” for her to sign because she had no incentive to sign a non-compete agreement. The Agreement restricts her from doing business with BIR’s clients and from working for any of BIR’s competitors for a five-year period after her employment ends. BIR then sent C&D letters to De Cortes and her new real estate firm, alleging she breached restrictive covenants and theatening to sue the firm for injunctive relief and damages. Defendants allegedly informed clients and prospective clients; residents, owners, and renters at the Four Ambassador building; and Four Ambassadors’ agents, employees, and vendors that De Cortes was stealing their clients and violating restrictive covenants.

De Cortes alleged that the restrictive covenants were unenforceable because they didn’t protect any confidential information, long-term relationships, specialized training, or other legitimate interests.

Although De Cortes’s FLSA claim (relating to wages/hours) did not provide a basis for supplemental jurisdiction over state law tortious interference/defamation/etc. claims, the Lanham Act claim did.

Even assuming Rule 9(b) applied, De Cortes sufficiently pled that claim. The “what” was two false statements: (1) “[Plaintiff] was retired from the real estate industry” and (2) “Plaintiff is stealing BIR’s clients and violating lawful restrictive covenants.”

Defendants only argued about (2). Though they contended that she didn’t allege that they believed the noncompete was unenforceable when they made the relevant statements, she did allege that her signature was fraudulently obtained, which was enough on the pleadings.

Commercial advertising or promotion: Defendants argued that the C&D and statements to clients and prospective clients weren’t commercial speech because the statements “pertain to BIR’s legal rights under the Agreement.” But “[c]ommercial speech encompasses not merely direct invitations to trade, but also communications designed to advance business interests.” That was pled here.

Likewise, defendants argued that the purpose of the statements was not to influence consumers to hire BIR, but instead merely to protect BIR’s legal rights. But De Cortes sufficiently alleged an alternative purpose — “to further BIR’s stranglehold on the Four Ambassadors building[.]”

Sufficient dissemination to the relevant public: The requirement is that “the representations must be disseminated sufficiently to the relevant public to constitute advertising or promotion within that industry.” Here, De Cortes plausibly alleged that the members of the relevant purchasing public were the owners and renters, and prospective owners and renters, of the units in the Four Ambassadors, and that the statements were widely disseminated to them.

What about “in commerce”?  De Cortes pled that defendants (1) “represent[ed] clients in and out of Florida in the negotiation of the purchase or sale of property” and (2) made “false and misleading representations to individuals and entities involved in interstate commerce and these false and misleading representations affect interstate commerce.” This was enough.

Under Florida law, “[a]ny restrictive covenant not supported by a legitimate business interest is unlawful and is void and unenforceable.” Because there was an actual controversy, despite defendants’ “near-frivolous” argument to the contrary, the court could evaluate De Cortes’s claim for declaratory relief.

Tortious interference: Defendants’ defense of the privilege of competition was premature.

Defamation per se: The statements about breach of agreements alleged fell within recognized categories of defamation per se in that they would tend to injure De Cortes in her profession. Claims that De Cortes was stealing clients and confidential information and violating enforceable restrictive covenants “naturally imply Plaintiff is untrustworthy.” And they threatened the company with which she affiliated with legal liability should it continue to employ her. Likewise, statements that De Cortes was retired indicated that she was not taking on work or clients. “In each case, a client or potential client, or employer or potential employer, would likely take these statements to mean Plaintiff was either not taking on work or, if she was, she could not be trusted with it — thus injuring her in her trade or profession.”

A talk on jigsaw puzzles and intellectual property

My presentation on jigsaw puzzles and intellectual property at the 2021 virtual Puzzle Parley is now up on YouTube.

The class action continues to die by a thousand cuts: herein of splitting injunctive relief claims

Stout v. Grubhub Inc., 2021 WL 5758889, No. 21-cv-04745-EMC (N.D. Cal. Dec. 3, 2021)

Stout sued Grubhub over an allegedly false promise to provide “Unlimited Free Delivery” to Grubhub+ subscribers. Grubhub sought to enforce its arbitration agreement. Concluding that the complaint sought private injunctive relief in part and public injunctive relief in part, the court found the claim severable under the arbitration agreement, which had a severability clause. These contortions occur because of California’s rule that a right to public injunctive relief can’t be waived, whether by arbitration agreements or otherwise. So the private relief (the request not to charge Grubhub+ subscribers extra for delivery under any circumstance) has to be arbitrated, but not the pure claim “don’t advertise ‘Unlimited Free Delivery’ while actually sometimes charging for delivery.”

This split result occurred because the Ninth Circuit has narrowed the concept of “public injunctive relief” to only things that could in theory benefit anyone, not things that benefit a specific existing class of people (e.g., current Grubhub+ subscribers). I’m not entirely sure why that means a split result in this case, though—the court reasoned that anyone could become a Grubhub+ subscriber, and thus an injunction against falsely advertising the program benefits the public. But by the same logic, wouldn’t a ban on actually charging extra delivery fees to Grubhub+ subscribers in the future benefit the public, any one of whom could join Grubhub+?

This all stems from Hodges v. Comcast Cable Communications, LLC, 12 F.4th 1108 (9th Cir. 2021), which interpreted the California rule (from a case called McGill) as holding that public injunctive relief: (1) is usually future-directed, (2) does not require the class action mechanism, and (3) is distinguished from private injunctive relief, which provides benefits “to an individual plaintiff – or to a group of individuals similarly situated to the plaintiff,” by involving diffuse benefits to the “general public” as a whole. The paradigmatic example of public injunctive relief is an injunction against false advertising aimed at the general public.

Thus, injunctive relief that only benefits people who become customers is private injunctive relief (although injunctive relief that only benefits another subset of the public, such as those eligible for free tax filing services, is not). An order enjoining Grubhub “from continuing to engage, use, or employ [its] practice of misrepresenting [its] delivery fees.”

The court rejected plaintiff’s argument that there were two ways to address the false advertising—either to change the advertising or to make it true--so it was all public injunctive relief. “[T]he fact that the alleged underlying misconduct concerns false advertising does not mean that any requested injunctive relief affecting the accuracy of that advertising is automatically deemed public in nature,” since a court should consider “who primarily benefits from the injunctive relief requested and who is only incidentally benefited.”

I think the “primarily” consideration here is more understandable as being about forward-looking versus backwards-looking; otherwise the logic that false advertising, while targeted at the world at large, actually has a chance of harming only a subset of people should mean that both types of relief are “private.” Either form of relief would benefit the public, who are generally invited to join Grubhub+.

Still, even though Grubhub+ is only available to Grubhub account holders, “there is no indication that Grubhub+ is only advertised to existing Grubhub customers, as opposed to the broader public. Nor is there any showing that one must first be a Grubhub customer before buying a Grubhub+ subscription.” Thus, half of the case stays in federal court as seeking public injunctive relief.

However, the court noted, Stout might lack standing to pursue the “don’t charge the delivery fee” remedy, since he is no longer a Grubhub+ subscriber.  The arbitrator could decide on plaintiff’s standing to seek an end to the putative delivery charges.

Self-Regulation Through Sui-Genericide: When the Law Stands in the Way

Now online at Rebecca Tushnet, 106 Iowa L. Rev. Online 164 (2021) 

A brief response to Jorge Contreras, Sui-Genericide, 106 Iowa L. Rev. 1041 (2021), centering on genericity as normative construct.

Even in a small market, a few varied phone calls aren't commercial advertising or promotion

Meredith Lodging LLC v. Vacasa LLC, No. 6:21-cv-326-MC, 2021 WL 5316986 (D. Or. Nov. 15, 2021)

Previous motion to dismiss. Plaintiff attempted to plead that a small number of calls to people contracting with it constituted “commercial advertising or promotion,” but the court still didn’t buy it.

The parties compete to manage vacation rental properties located in Oregon, and plaintiff alleged a smear campaign against it. Plaintiff alleged that the potential purchasing public was homeowners under contract with it in Lincoln and Deschutes Counties, because that was where the calls with allegedly false claims went, but didn’t explain why that was the market and not also two other counties where plaintiff alleged similar homes were located. But even if that’s the market, about 520 homeowners, that didn’t make a handful of calls with varying contents “sufficiently disseminated” to constitute advertising or promotion.

“While a common theme of attempting to persuade homeowners to switch management companies existed throughout, none of the calls followed a predetermined script. Plaintiff identified only: (1) two phone calls that didn’t allege any false statements; (2) three phone calls alleging cleanliness complaints against it; (3) two phone calls alleging increased revenue for customers who switched; and (4) a phone call where a customer was allegedly misled into thinking the caller worked for plaintiff before he tried to persuade her to switch. Additionally, instead of targeting specific homeowners during specific times, these calls were placed sporadically throughout late 2020 and early 2021 and targeted homeowners who lived in different states and owned homes in different parts of Oregon.” In Grubbs v. Sheakley Grp., Inc., 807 F.3d 785 (6th Cir. 2015), by contrast, the defendant sent identical emails to each of the plaintiff’s 22 customers to inform them that defendant would be taking over plaintiff’s responsibilities. Ten out of 500 customers, at varying times with varying messages, just isn’t enough. Under these circumstances, the court wasn’t willing to infer that, “because a false or misleading statement was allegedly made to one homeowner it was also made to hundreds of others, therefore constituting sufficient dissemination.”

 

False advertising is distinct from violation of antidumping rules; FTC/AGs needed

Dalian Meisen Woodworking Co v. United States, 2021 WL 5371406, No. 20-00109 (Ct. Int’l Trade Nov. 18, 2021)

I can’t improve upon the court’s excellent summary and won’t try, instead joining in the call for FTC/AGs etc. to take note:

Commerce’s investigation revealed that a Chinese producer markets and sells its wooden cabinets in the United States as maple even though they are made of birch, a less costly grade of wood. To borrow a metaphor that could have been written for this case, the producer’s advertising in the United States is a “complete fraud from bark to core.”

Less than amused, the Department [imposed] the steepest possible antidumping duties because a producer has not been forthcoming in an investigation. Here, however, the producer did exactly what it was supposed to do: truthfully respond to Commerce’s questions and otherwise fully cooperate. That the producer defrauded consumers is of no moment for antidumping purposes, as the Department lacks jurisdiction to police false advertising violations.

The court accordingly remands so that Commerce can rethink this one. In the meantime, the Federal Trade Commission, state Attorneys General, and the plaintiffs’ class action bar may wish to take a close look at the producer’s swindling of its U.S. customers.

The Tariff Act of 1930, as amended, targets the sale of imported merchandise in the United States at “less than its fair value.” Where applicable, antidumping duties are “in an amount equal to the amount by which the normal value exceeds the export price (or the constructed export price) for the merchandise.” “Normal value” is generally “the price a producer charges in its home market.” Normal control prices are assigned based on physical characteristics of products.

The American Kitchen Cabinet Alliance petitioned Commerce, alleging that Chinese producers were dumping wooden cabinets and vanities in the U.S. market to the detriment of domestic industry. The three largest Chinese producers/exporters of wooden cabinets and vanities were mandatory respondents, including plaintiff Dalian Meisen, and had to provide its US sales database with prices. It did so, coding its sales as “birch.”  But most, if not all, of its promotional, advertising, and sales materials characterized its products as manufactured with maple, a higher-grade and more expensive wood than birch.

Commerce concluded that, through false advertising, the company created the “potential of masking dumped sales” by obscuring “the degree to which Meisen may be selling at [less-than-fair value].”

Commerce also found that Meisen’s failure to affirmatively flag its false advertising for the Department’s attention reflected a failure to cooperate, justifying an adverse inference under the antidumping rules.

Unfortunately for Commerce, that reasoning didn’t work, because Meisen lied to its customers but not to Commerce, with which it cooperated by disclosing both the truth and the existence of the false advertising. Meisen’s alleged concealment was its attempt to justify the false advertising as reflecting the “look” of the cabinets and not their material. “[T]he Department lacks any authority to investigate why antidumping respondents engage in false advertising, just as it lacks the authority to ask respondents why they violate environmental or antitrust laws, or why their executives are disreputable people.”

It’s not that the Commerce couldn’t make sense of Meisen’s information because of the discrepancy between what the company told the Department and what it told its customers. To the contrary, after reviewing the company’s post-preliminary questionnaire responses, the Department fully understood the implications of the discrepancy, and was (understandably) appalled.

But when a respondent fully and truthfully complies with Commerce’s information requests on subjects that the Department is allowed to investigate under the Tariff Act—and here no party seriously disputes that Meisen truthfully complied and that its responses were not materially misleading—as a matter of law a respondent does not “significantly impede[ ] a proceeding under this subtitle.”

Although the false advertising might have allowed Meisen to charge a higher price, “a respondent’s otherwise illegal manipulation of the U.S. sales price of its products is statutorily irrelevant for antidumping purposes.”

 

Lawfare in the orphan drug space

Neurelis, Inc. v. Aquestive Therapeutics, Inc., --- Cal.Rptr.3d ----, 2021 WL 5355958, D077984, D078186 (Ct. App. Nov. 17, 2021)

The parties compete in developing means to administer diazepam, a drug used to treat acute repetitive seizures (ARS). “Neurelis was further along in the development process than Aquestive. Thus, according to Neurelis, Aquestive engaged in a ‘multi-year, anticompetitive campaign to derail the Food and Drug Administration’ (FDA) from approving Neurelis’s new drug.” Neurelis sued Aquestive for defamation, malicious prosecution, and violation of the UCL, triggering an anti-SLAPP motion. The superior court granted the anti-SLAPP motion as to the defamation claim but not the other two causes of action. The court of appeals splits the baby differently: at least some of the conduct giving rise to the defamation (and UCL) action was covered by the commercial speech exception to the anti-SLAPP statute. But Aquestive’s petitioning activity was protected conduct under the anti-SLAPP statute, and Neurelis didn’t show a likelihood of prevailing on the merits on that, including the malicious prosecution claim in its entirety.

Neurelis received orphan drug designation from the FDA for its Valtoco for management of ARS in 2015. “This designation did not indicate that Valtoco was safe or effective for public use but, instead, operated to qualify Neurelis for various development incentives, like tax credits and potential exclusivity for seven years if the FDA ultimately approved Valtoco.” It then received fast strack designation, which allowed it priority review, and filed an NDA for Valtoco in 2018; this was pending at the time of the operative complaint.

Meanwhile, Aquestive’s Libervant obtained orphan drug designation in 2016. The parties discussed potential partnership in 2017 and 2018, but the discussions didn’t go well. In 2018, Aquestive did an IPO, and its Form S-1 represented that it was “further along” than other companies who were developing “other routes of administration” of diazepam for the treatment of ARS (that is, further along than Neurelis, which was allegedly untrue). In 2019, Aquestive allegedly threatened to file three inter partes review petitions with the PTAB unless Neurelis signed a waiver of its orphan drug exclusivity, which Neurelis did not do. Aquestive filed the petitions; the PTAB denied two of them and the third remains pending.

Aquestive also filed a citizen petition with the FDA requesting that the FDA stay approval of Neurelis’s new drug application for Valtoco “ ‘until additional clinical studies have been conducted that would allow for adequate labeling as requested in this petition.’ ” Aquestive requested that the FDA determine that Valtoco was neither clinically superior to other diazepam products nor offered a “ ‘major contribution to patient care.’ ” Neurelis alleged that this would be equivalent to revoking its orphan drug exclusivity, and that none of Aquestive’s claims against Valtoco were accurate, but instead, they were “founded on misleading, inaccurate, and incomplete data.” After Neurelis responded, Aquestive then submitted a supplemental petition asking the FDA to require Neurelis to reformulate Valtoco because it contains Vitamin E. This too was allegedly based on “inaccurate data and misinformation.”

On a 2019 quarterly investors call, Aquestive’s CEO stated, “ ‘Based on patient survey data, Libervant is preferred by 80-plus percent of patients when compared to nasal sprays. Once approved by the FDA, Libervant will be the only treatment option usable by and delivering a consistent, predictable dose to virtually all patients to whom it’s prescribed.’ ”

Analysis: malicious prosecution inherently arises from an underlying lawsuit, thus implicating petitioning activity. The UCL claim was based on a mix of protected and unprotected conduct; Aquestive’s allegedly “extortionist behavior using litigation as leverage to force Neurelis into waiving [o]rphan [d]rug [e]xclusivity” was not subject to anti-SLAPP treatment. What about statements in the citizen petition/statements to investors? Statements to investors about the parties’ drugs were commercial speech, even if the statements didn’t mention plaintiff or its drug by name and even though they were investors and not ordinary consumers of the underlying product; indeed, the anti-SLAPP exception for commercial speech explicitly lists “securities” among the “goods or services” covered under the exception. The audience was in a position to “influence” a “potential buyer” of Libervant by investing in Aquestive to help ensure that company brought Libervant to market before other competing drugs, like Valtoco.

But the citizen petition wasn’t excepted commercial speech. Neurelis argued that the exemption to the anti-SLAPP law was specifically focused on overturning DuPont Merck Pharmaceutical Co. v. Superior Court (2000) 78 Cal.App.4th 562, which involved a pharmaceutical company’s “ ‘false statements and conduct before a regulatory agency.’ ” But a citizen petition in particular “is a means by which the FDA explicitly allows private entities to express safety, scientific, or legal concerns regarding a product,” and thus a means of petitioning the government for redress, and that wasn’t at issue in DuPont.

With respect to the non-excepted speech, Neurelis didn’t show a probability of prevailing on the merits.

Acquisitive didn’t show that the litigation privilege applied, since it didn’t argue that the citizen petition was part of a judicial or quasi-judicial proceeding. But Noerr-Pennington did apply and Neurelis didn’t show that the petition was a sham. Even though the FDA apparently agreed to some extent that Aquestive’s “ ‘subjective motivation’ ” was to use the petition process “ ‘as an anticompetitive weapon,’ ” commenting that it “appear[ed] to be the case here” that the petition “was submitted for the primary purpose of delaying approval of” a new drug application. But that didn’t amount to a showing that the petition was “objectively baseless.” The FDA noted that “ ‘publicly available information on the general characteristics of nasal spray product[ ]’ showed that ‘it [was] unlikely’ ” that one of Aquestive’s major complaints about Valtoco had any merit. But that didn’t go to the whole petition; the FDA determined that it could not summarily deny the citizen petition as requested by Neurelis because it was “unable to conclude that the petition does not, on its face, raise valid scientific or regulatory issues.” Neurelis didn’t explain how a petition that wasn’t summarily denied could be objectiely unreasonable for Noerr-Pennington purposes.

As for the malicious prosecution claims, two of the PTAB petitions seem to have been time-wasters, but one triggered an actual review. During the pendency of the appeal in this case, the PTAB declared the relevant patent invalid, a decision affirmed by the Federal Circuit. Neurelis didn’t show that Aquestive brought the petitions without probable cause. The denial of two petitions didn’t itself show that they were brought without probable cause, even the one for which the Board said Aquestive did “not show that there is a reasonable likelihood that [it] would prevail with respect to at least one of the claims.” That’s a higher standard than probable cause. As for the other, the Board explained it was a waste “of the Board’s time and resources to revisit the same prior art disclosures that were examined in detail by the Examiner over eight years of patent prosecution.” But that didn’t mean there was no probable cause; the Board just used its discretion to deny the petition, but it had statutory authority to grant a petition “even though it raises claims based on the same prior art or arguments previously made to the PTO.”

 

erroneously collecting sales tax isn't an unfair act or practice in trade or commerce

Ranalli v. Etsy.com, 2021 WL 5166568, No. 21-88 (W.D. Pa. Nov. 5, 2021)

Ranalli brought this putative class action for violations of the Pennsylvania Unfair Trade Practices and Consumer Protection Law (UTPCPL) and the Pennsylvania Fair Credit Extension Uniformity Act (PFCEU), and unjust enrichment, fraud, and misappropriation/conversion based on Etsy’s collection of amounts equal to and purporting to be Pennsylvania sales tax on the sale of protective face masks, when they were not subject to Pennsylvania sales tax due to a governor’s order early in the pandemic.

But the UTPCPL applies to “unfair or deceptive acts or practices in the conduct of any trade or commerce,” and collecting sales tax isn’t conducting trade or commerce because tax collection is “divorced from private profit” and “[r]etailers...collect sales tax on behalf of the Commonwealth’s Department of Revenue” only “because state law requires them to do so.” Similar cases in Massachusetts and Connecticut based on similar statutory language have concluded the same thing. The court also endorsed previous holdings that “the conduct of defendants could not be considered fraudulent, unfair, or deceptive because they disclosed all relevant information relating to the mask purchase in an effort to comply with their understanding of the law at the time of the purchase,” and that there was no justifiable reliance on any misrepresentation, nor was there injury because a refund was available from the state.

The same analysis applied to the Pennsylvania Fair Credit Extension Uniformity Act

(PFCEUA), which prohibits “unfair methods of competition and unfair or deceptive acts or practices with regard to the collection of debts.”

Nor was fraud plausibly alleged, nor misappropriation/conversion, which requires appropriation of property by the offending party for his own use; it was for Pennsylvania, which designates Etsy to collect tax as an agent of the Department of Revenue, and it was “highly implausible” that Etsy kept the mask money for its own use when it was required to remit that money to the state. [Hmm…. If I were the Department of Revenue, I’d just check with Etsy on that one.

So too with unjust enrichment. “It is clear that collection of the sales taxes was not for profit or revenue but rather for basic compliance with the law.”

I can’t believe it’s not butter—because the label said it was all butter

Boswell v. Bimbo Bakeries USA, Inc., 2021 WL 5144552, No. 20-CV-8923 (JMF) (S.D.N.Y. Nov. 4, 2021)

Boswell sued on the theory that the packaging on Entenmann’s “All Butter Loaf Cake” was misleading because the cake contains not only butter, but also soybean oil and artificial flavors. However, “All Butter” was ambiguous in context—it was obvious that the product was not a stick of butter, but a cake—and it wasn’t enough to allege that reasonable consumers would expect from the label that there wouldn’t be non-butter shortening. Judge Furman relied on In re 100% Grated Parmesan Cheese Mktng. & Sales Pracs. Litig., 275 F. Supp. 3d 910 (N.D. Ill. 2017), without noting that it had been rejected by the Seventh Circuit in Bell v. Publix Super Mkts., 982 F.3d 468 (7^th Cir. 2020) (albeit with some Seventh Circuit procedural niceties that may be why the earlier decision is not red-flagged in Westlaw, which is probably Westlaw’s mistake; Bell resolves the same issue—whether “100% Grated Parmesan” is plausibly misleading if the product contains additional additives; it is an appeal from a subsequent 2019 decision in the same MDL).

Judge Furman used 100% Grated Parmesan to state and illustrate the rule that labels are not misleading if the prominent term is ambiguous and the ambiguity is resolved by reference to the list of ingredients or a Nutrition Facts panel, whereas “packaging with a prominent label that is unambiguous and misleading” is actionable even if the ingredients list contradicts the unambiguous label. When you’re deciding that a term is ambiguous, it might be better to rely on a case where there wasn’t judicial disagreement over that very question.

You might have thought that Mantikas, an actual Second Circuit case, resolved a label on all fours when it found that the labeling on “whole grain” Cheez-It crackers could be false or misleading because, while the boxes “contained the words ‘WHOLE GRAIN’ [or ‘MADE WITH WHOLE GRAIN’] in large print in the center of the front panel,” the ingredients list and Nutrition Facts panel revealed that the “grain content” of the crackers “was not predominantly whole grain, but rather enriched white flour.” This stated a valid claim under New York law because “the statements ‘WHOLE GRAIN’ and ‘MADE WITH WHOLE GRAIN’ ... falsely imply that the grain content is entirely or at least predominantly whole grain.” Those statements were unambiguous, so the label couldn’t correct them. Seems kind of analogous to All Butter/shortening content to me.

But no, this case “falls on the 100% Grated Parmesan Cheese side of the line” [again, awkward given the reversal!]. Taken literally, it suggests that the product is entirely butter, but no one would take it literally because it modifies “Loaf Cake” (which by the way means that it does not literally suggest that the product is butter, because that’s not how modifiers work). “[A]ny reasonable consumer would be aware that the product is, notwithstanding the label ‘All Butter,’ likely to contain other ingredients commonly found in cake, such as flour, sugar, milk, and eggs.” It was ambiguous because Boswell herself provided competing definitions—first that consumers would expect all the shortening would be butter, and then that “no butter alternatives or substitutes will be used in the Product where butter is capable of being used.” (I need a baker to tell me whether those actually are different things.) Anyway, “All Butter” could merely be “description of flavor, denoting that the product tastes only of butter and does not include a second flavor, such as almond, chocolate, or cinnamon.” Because of the ambiguity, reasonable consumers here would not be “lulled into a false sense of security” by the bold lettering on the product’s package

Another pandemic university fees claim fails

Yodice v. Touro College, 2021 WL 5140058, No. 21cv2026 (DLC) (S.D.N.Y. Nov. 4, 2021)

It’s now been long enough that there are a couple of cases finding potentially valid claims based on Covid closures, but this is not one of them. Touro allegedly promoted its campus facilities and campus experience as part of the benefits of its non-online-only degree programs, including “New York Medical College research facilities, an anatomy lab, a simulation training center, classrooms and auditoriums, as well many amenities including a cafeteria and café, a bookstore, a Health Sciences Library, sports facilities, and many common spaces”; it promoted “Suburban Living with Easy Access to New York City”; etc. The mandatory fees that Yodice paid included, among others, a “Campus Fee,” “Tech Fee,” and “Materials Fee.” Touro’s online program was allegedly marketed and priced as a “separate and distinct product[ ]” and bore no fees for in-person services.

Because of the NY governor’s orders closing schools, Yodice was “forced from campus” and did not have access to “facilities such as libraries, laboratories, computer labs, and student rooms,” “the myriad of activities offered by campus life,” and “networking for future careers.”

Breach of contract: The complaint failed to allege specific promises sufficient to form an implied contract to provide on-campus services. It didn’t identify any specific promise to provide live, in-person instruction.  Past practice of providing in-person instruction wasn’t a promise to continue to do so, nor was listing classes with meeting times and locations. Likewise, “[t]hat an online program had been offered by Touro with its own format and with a lower tuition before the pandemic does not constitute an implicit promise that TCDM would provide exclusively in-person instruction in a separate program it offered prospective students.”

So too with claims based on fees; the complaint didn’t explain which services were connected to specific fees or whether related academic or extracurricular services were subsequently unavailable to Yodice.

Unjust enrichment: Unlike some treatments of this type of claim, the opinion here dismissed unjust enrichment as duplicative of the breach of contract claim. “Yodice cannot fill this gap [in pleading relevant contractual provisions] through pleading an unjust enrichment claim as an alternative route of recovery.” With an actual contract to interpret, quasi-contract theories were inappropriate.

N.Y. General Business Law §§ 349, 350: No materially misleading act or omission was pled. “No reasonable consumer would be misled into believing that, in the event of a global pandemic and under government shutdown orders, TCDM would remain open to deliver in-person instruction to students.”

 

Dastar bars some claims about "patented" statements but related superiority statements are still at issue

BPI Sports, LLC v. ThermoLife Int’l, LLC, 2021 WL 4972975, No. 19-60505-CIV-SMITH (S.D. Fla. Jul. 27, 2021)

BPI sued ThermoLife for violations of the Lanham Act, 15 U.S.C. § 1125(a), common law unfair competition, and false patent marking. ThermoLife’s Muscle Beach Nutrition CRTN-3 says, on the label and on its website, (1) that CRTN-3 is a “first-time fusion of Creatine Nitrate, Creatine HCl, and Creatine Monohydrate”; (2) that CRTN-3 has a “Hyper Infused Creatine Matrix”; (3) that CRTN-3 has a “Hydro-GO electrolyte matrix”; (4) that CRTN-3 has “THREE OF THE MOST EFFECTIVE FORMS OF CREATINE IN ONE CUTTING-EDGE FORMULA”; and (5) that CRTN-3 will “INCREASE VASODILATION.” ThermoLife’s website also advertises its “Patented Nitrate Technology.” (DE 178-3.) ThermoLife claims to hold “19 Nitrate Related Patents,” “More Than 450 Valid Claims,” and “Patent Coverage in 26 Countries.” It states:

If you are interested in making a dietary supplement with nitrates in it there is a very good chance your intended use or composition is covered by one or more of the 450 valid claims in our patent portfolio, so make sure to speak with us about a license. We are the only legitimate source for patented and licensed amino acid nitrates.

It requires licensees to use its NO3-T logo on products containing ingredients or technology purportedly protected by any one or more of ThermoLife’s patents. Between 2015-2019, its website identified 14 patents as “protect[ed]” by the logo, though in 2019 it modified the site to include a table purporting to demonstrate which of ThermoLife’s patents were practiced by ThermoLife’s licensees. One of the patents was reexamined in a way that did not favor ThermoLife.

ThermoLife argued that BPI didn’t show materiality. But a factfinder could conclude that “the challenged advertising statements are material in that the statements involve inherent qualities or characteristics of the CRTN-3 product that could influence a consumer’s decision to purchase the product.” Each of the five targeted statements “plainly relate to the quality or describe a characteristic of the CRTN-3 product as a dietary supplement,” whether to ingredient quality/characteristics or to purported performance benefits:

The quality of ingredients that compose a dietary supplement directly correlates to the nutritional and/or performance benefits that derive from consuming the product. While most consumers could care less about the chemical composition of glue, it is possible that a consumer who purchases a dietary or nutritional supplement with a desire to “push harder, get stronger, recover quicker, and reach [his or her goals] faster” could be so scrupulous as to care about the quality of ingredients contained within and the performance results advertised to derive from the product that he or she ingests.

Injury: likewise a factual issue. BPI’s CEO’s declaration stated that it suffered a decline in sales of its creatine products because of the introduction of products containing creatine nitrate, which compromised its ability to fairly compete in the market with its traditional creatine-based product. This evidence of lost market share was sufficient to get to a factfinder.

Falsity: Some (“expert” or other) evidence of misleadingness would be required, but the plaintiff could still argue that the ads were misleading even though it didn’t produce market research or a consumer survey; it did produce declarations stating that the ads created a false impression in the marketplace that creatine nitrate was a new, superior form of creatine. And BPI’s expert offered opinions that the five challenged statements were literally false (and misleading and unsubstantiated).

What about statements about the scope of patents? ThermoLife relied on Baden Sports, Inc. v. Molten USA, Inc., 556 F.3d 1300 (Fed. Cir. 2009) and Robert Bosch LLC v. Pylon Mfg. Corp., 632 F. Supp. 2d 362 (D. Del. 2009), to argue that they weren’t covered by the Lanham Act. Baden relied on Dastar to hold that “authorship, like licensing status, is not a nature, characteristic, or quality, as those terms are used in [the Lanham Act].” BPI didn’t successfully distinguish the cases, though the statements about proprietary rights to and licensing requirements for creatine nitrate could be used in support of the remaining claims, where applicable.

False marking: The court previously concluded that ThermoLife didn’t have patent rights in the composition of matter “creatine nitrate” under one of the cited patents. As for intent to deceive, it could be inferred from circumstantial evidence: Notwithstanding the fact that the USPTO rejected ThermoLife’s claim for creatine nitrate, a decision that was affirmed by the PTAB and the Federal Circuit Court of Appeals, it continued to assert propriety rights to creatine nitrate on its websites, and issued a press release entitled “ThermoLife To Be Announced Additional Patent Claims on Creatine Nitrate By The USPTO, Effectively Monopolizing The Use of Creatine Nitrate in Dietary Supplements.” For damages, BPI argued that the false marking prevented it from entering the creatine nitrate market itself and caused decreased sales of its own creatine-based products. This was enough to create a genuine issue of material fact.