IP Law Daily, COPYRIGHT—N.D. Ill.: Fertility test packaging was too generic and functional to support a copyright infringement claim, (Apr 23, 2024)

By Matthew Hersh, J.D.

The maker of the home fertility test would also face claims of its own for allegedly false takedown notices to Amazon.

The maker of a home test for measuring and tracking fertility could not sue a competitor for allegedly purloining language from its product packaging because the competitor used only small fragments of the product label and the language it took was all but dictated by functional concerns, the federal court in Chicago has held. The court, in dismissing the home test company’s copyright claim, also found that the company should be subject to claims itself for misrepresentation and defamation for its effort to take down the competitor’s materials from Amazon (MFB Fertility, Inc. v. Action Care Mobile Veterinary Clinic, LLC, April 22, 2024, Leinenweber, H.).

The lawsuit involves two companies in the heavily contested fertility business. MFB Fertility, Inc is a Colorado-based corporation that created a test, marketed under the trademark PROOV, to measure the presence of progesterone metabolites in urine and to allow women to confirm successful ovulation by tracking those levels. Action Care Mobile Veterinary Clinic, LLC provides a similar product, which it sells under the name OVUPROOF, albeit targeted to animal care.

The dispute between the two companies began when the Colorado fertility company sent notices to Amazon under the Digital Millennium Copyright Act seeking the takedown of the Maryland veterinary clinic’s online marketplace. The Maryland company eventually restored its Amazon page by means of a counter-notice—but the Colorado company was not done. It sued the Maryland company for copyright infringement and trademark infringement, alleging that the company purloined both its mark as well as the words of its packaging. The Maryland company counterclaimed for misrepresentation, defamation, and tortious interference—all related to the DMCA takedown notice—and for cancellation of the PROOV trademark.

Both parties filed motions to dismiss, leading to this opinion.

Copyright infringement. The court dismissed the Colorado company’s copyright infringement claim. The claim rested on the alleged purloining of phrases such as “Works Great With Tests” (which was allegedly copied as “Works Well with Ovulation/LH Tests”), “The Only FDA-Cleared PdG Test” (which was allegedly copied as “OvuProof is FDA registered”), and “Confirm Ovulation” (which was allegedly copied identically). But there was no plausible claim of copyright infringement based on these allegations, the court found.

The problem for the Colorado test-maker, the court found, was that the forms of expression here were “dictated solely at functional considerations.” Absent verbatim copying or striking similarity, the court noted, language describing what a product does and how it is used is generally noncopyrightable. Here, there was nothing unique about placing the name of a company and the name of a product at the top of a package, putting a description below the image, and wrapping instructions around the rest of the package. Moreover, the court noted, the allegedly purloined instructions were essentially legally mandated warnings. In fact, under the Colorado company’s construction, the Maryland company “would ostensibly be required to violate the FDA’s labeling requirements for in vitro diagnostic products” in order to avoid infringement. “This functional, regulated language is precisely the expression that [the Colorado company] improperly claims intellectual property over,” the court concluded.

DMCA misrepresentation. The court not only dismissed the Colorado company’s infringement claim, but also made clear that the company would have to face a counterclaim for its allegedly false takedown claim to Amazon. A copyright owner who submits a takedown notice to a service provider must swear to a good faith belief that the material is infringing, the court noted. Here, the Maryland company had adequately alleged that the Colorado company did not have such a good faith belief. For one thing, the court noted, the takedown notice allegedly claimed that the posted materials copied “all” of its packaging—plainly not true if the counterclaim allegations were correct. For another, the court noted, the counterclaim also alleged that the Colorado company was willfully blind to the implausibility of its copyright claim. In light of the court’s earlier analysis of the copyright infringement claim, the court noted, that was enough to survive a motion to dismiss.

Defamation and tortious interference. The court also refused to dismiss these claims—which were also based on the allegedly improper DMCA notice. The complaint adequately alleged that the public DMCA notice specifically referenced the Maryland company (a reference subsequently made even more clear by the fact that the Maryland company was later the target of this lawsuit). And the Seventh Circuit had already explicitly acknowledged, the court noted, “that an attempt to prevent product distribution by contacting a third party and asserting meritless copyright claims leads to exposure for tortious interference.” So those two claims would move forward, the court found.

Trademark cancellation. But while the Maryland company prevailed on most issues at this point in the case, its demand for cancellation would go no further. The company sought cancellation of the PROOV mark on the generalized claim that the mark was “causing irreparable harm” to its own business. But for its cancellation claim to proceed, the court noted, the Maryland company would have to have alleged that a likelihood of confusion existed between PROOV and its own product name, OVUPROOF. But the company did not do that, the court noted—and even asserted in its later pleadings that there was no likelihood of confusion between the marks at issue. So the claim would fail on its face.

The Case is No. 1:23-cv-03854.

Attorneys: Arthur Anthony Gasey (Vitale, Vickrey, Niro, Solon & Gasey LLP) for MFB Fertility, Inc. Ilya Zlatkin (Zlatkin Cann Entertainment) for Action Care Mobile Veterinary Clinic, LLC.

Companies: MFB Fertility, Inc.; Action Care Mobile Veterinary Clinic, LLC

Cases: IllinoisNews Copyright