claims about others’ patent infringement can be factual, commercial speech subject to Lanham Act

Global Tech Led, LLC v. HiLumz International Corp., 2017 WL
588669, No. 15–cv–553 (M.D. Fla. Feb. 14, 2017)
The parties, former business partners, now compete in the
retrofit LED lighting industry. Global Tech sued defendants for patent
infringement. HiLumz counterclaimed for false advertising/trade libel under
federal and state law based on statements such as one that Global Tech “received
a permanent injunction, rendering account and damages based on its
newly-granted patent against HiLumz USA for infringement of its US patent” and
accusing defendants of “stealing” and “copying” Global Tech’s product ideas.  Someone from Global Tech warned HiLumz
distributors attending the 2015 World Energy Engineering Congress to “be
careful what products you sell” and said that “HiLumz will be out of business
soon.” Global Tech also allegedly told “customers, sales representatives,
competitors, and others” that HiLumz infringed Global Tech’s patents, that
“HiLumz USA is no longer allowed to sell LED retrofit kits,” and that “Global
Tech was preparing to file suit against HiLumz, and would also file suit
against anyone who does business with HiLumz.”
Global Tech argued that its alleged statements were mostly
not made in commercial advertising or promotion.  First, it argued that the challenged ads
weren’t commercial speech because they referenced only Global Tech’s patents,
not any products, but referring to a particular good or service isn’t required
under Bolger.  Plus, even if a product reference were
required, it was present in most of the challenged statements—for example,
Global Tech’s press release  specifically
mentioned Global Tech’s “LED lighting products” with hyperlinks for the word
“products.” Warning distributors to take care when determining which products
to sell, in light of HiLumz’s impending demise, and statements that defendants
couldn’t sell HiLumz retrofit products, also referenced products. And
defendants sufficiently alleged economic motivation.
However, one challenged statement—posted on a personal
LinkedIn profile page, incorrectly asserting that a relevant parent patent  “issued on June 8, 2009” instead of having
been filed then—wasn’t commercial speech. 
The speaker “sought merely to showcase his contribution to the world of
patentable technology.”
The court also mostly found the statements adequately
disseminated to the relevant purchasing public, at least as a matter of
pleading. Disseminating the press release online made it available to the
world; disseminating claims to distributors attending the World Energy
Engineering and to “customers, sales representatives, competitors, and others”
also were plausibly pled as adequate dissemination of those statements “to the
relevant purchasing public.”  However,
allegations that “when internet users searched on the internet for ‘global tech
LED hilumz’ ” at least as late as on October 6, 2015, a Google search result
appeared containing a URL wrongly stating that Global Tech had already received
a permanent injunction against HiLumz.  “[T]he
Court cannot gratuitously infer that any netizen beside Defendants ever
actually googled ‘global tech LED hilumz’ during the relevant time period.”
Global Tech then argued any statements regarding HiLumz’s
impending demise, patent infringement, and inability to sell retrofit kits were
“non-actionable opinion.”  The court
agreed that the statement warning HiLumz distributors that HiLumz was “going
out of business” was non-verifiable “prediction or opinion about the future of
[Hilumz], and consequently, is not actionable as a false or misleading
statement of fact under the Lanham Act.”
However, claims that defendants infringed Global Tech’s
patents and therefore defendants weren’t allowed to sell them  “fairly implies a factual basis” and was thus
properly treated as a statement of fact, despite being “framed as an opinion.” The
outcome of the patent infringement claim will reveal the truth, making the
statements empirically verifiable.  Plus,
the counterclaim alleged that Global Tech had been making these statements as
early as fall of 2012, years before Global Tech actually obtained the patent in
suit. “Given that ‘[a] patent application cannot be infringed,’ the falsity of
these statements may be readily ascertainable.”
State-law unfair competition claims survived to the same
extent. Florida Deceptive and Unfair Trade Practices Act claims also survived;
the court rejected the argument that only consumers have standing under the
current version of the law.

from Blogger

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