Antitrust Law Daily Wrap Up, ADVERTISING—N.D. Cal.: Blogger could not state false advertising claims against CrossFit certification provider, (Jan 23, 2014)

By Jody Coultas, J.D.

A blogger could not state California Unfair Competition Law (UCL) or Lanham Act false advertising claims against CrossFit, Inc. for allegedly harassing the blogger about using CrossFit’s trademarks and disseminating false representations about the blog, the federal district court in San Francisco has held (CrossFit, Inc. v. Alvies, January 22, 2014, Conti, S.).

CrossFit provides a nationally standardized certificate program to personal trainers who desire to become licensed CrossFit affiliates. The blogger launched a blog and created a “CrossFit Mamas” Facebook page. The blogger also sold vitamin meal-replacement shakes through the blog and added Google AdWords advertising. CrossFit asserted causes of action for trademark infringement, false designation of origin, trademark dilution, and cyberpiracy. The blogger counterclaimed for declaratory judgment, violation of the UCL, and false advertising under the Lanham Act.

The blogger contended that CrossFit violated Digital Millennium Copyright Act (DMCA) by making material misrepresentations in a DMCA takedown notice it submitted to Facebook in an effort to shut down the blog. The blogger alleged that CrossFit’s invocation of the DMCA was improper and misleading since CrossFit’s claims are based on the assertion of trademark rights, not copyrights. Under the DMCA, a person who misrepresents that material infringes on a copyright may be liable for damages incurred by the alleged infringer. CrossFit argued that the claim was implausible because Facebook allows trademark takedown notices as well as DMCA copyright takedown notices. It was unclear why the court should take judicial notice of Facebook’s internal compliance procedures. Also, the blogger plausibly alleged that CrossFit materially misrepresented that the Facebook page infringed on a copyright, since CrossFit’s claims were based only on its asserted trademark rights. The blogger could also allege an injury from the DCMA takedown notice since she derived some income from the Facebook page’s link to the blog, which sold shakes.

UCL claims. The court dismissed the UCL claims with leave to amend. The UCL claim was based on CrossFit’s allegedly harassing the blogger to eradicate all evidence of her prior use of its trademarks. CrossFit argued that the blogger lacked standing because she has failed to plead an economic injury. The blog and affiliated Facebook page generated some revenue through the sale of vitamin shakes and Google AdWords, and the blogger alleged that CrossFit wrongfully caused those pages to be removed. However, private plaintiffs are limited to injunctive relief and restitution under the UCL. The blogger failed to seek injunctive relief and could not show that she was entitled to restitution since CrossFit did not acquire her lost revenue.

Lanham Act claim. The Lanham Act counterclaim also was dismissed by the court because it did not relate to a commercial advertisement. The blogger claimed that CrossFit violated the Lanham Act by making false and misleading representations to readers of her blog regarding her workout regimens. Statements are only actionable under the Lanham Act false advertising section if they constitute “commercial advertising or promotion.” Commercial advertising is commercial speech by a defendant who is in commercial competition with plaintiff for the purpose of influencing consumers to buy defendant’s goods or services. Statements are considered advertising only if the statements are disseminated to the relevant purchasing public. The statements must also be part of an organized campaign to penetrate the market.

The blogger’s claim relied on a single, isolated email from a CrossFit paralegal to a reader of the blog. This one email could not be considered a campaign by CrossFit to penetrate the market, in the court’s view.

The case is No. 13-3771 SC.

Attorneys: Yuo-Fong Chang Amato (Gordon & Rees) for Crossfit, Inc. Virginia Anne Sanderson (Kronenberger Burgoyne, LLP) for Jenni Alvies.

Companies: CrossFit, Inc.

Cases: Advertising StateUnfairTradePractices CaliforniaNews