Eyelash wars: court tosses counterfeiting claim, allows (c) claim to continue

Boost Beauty, LLC v. Woo Signatures, LLC, 2019 WL 560277, No.
2:18-cv-02960-CAS(Ex) (C.D. Cal. Feb. 11, 2019)
Mark Lemley says that many businesses think the term “unfair
competition” is redundant; many trademark plaintiffs likewise think that “infringement”
means “counterfeiting.” Here, though the court allows other claims to continue,
it shoots down that idea where the alleged counterfeiting is AdWords purchases.
Boost sued Woo for copyright infringement, trademark
infringement, and related claims. “In brief, plaintiff alleges that defendants
engaged in a scheme to gain access to plaintiff’s confidential information and
thereby replicate the beauty product that plaintiff produces, markets, and
sells. Specifically, plaintiff alleges that defendants copied its signature
eyelash enhancement product by using plaintiff’s manufacturer, by unlawfully
copying plaintiff’s copyrighted online advertisement, and by unlawfully using
variations of the term ‘BoostLash,’ plaintiff’s trademarked product name, as a
search engine adword.” [Hey, it’s a generic use of “adword.”]
Plaintiff’s copyright registration application is pending.  Here’s the “work” at issue:

Boost alleged that defendants “word for word” “copied [ ]
plaintiff’s advertisement (but ran the advertisement only outside of California
in the hopes plaintiff would not become aware of it)” and that the ads “were
intentionally unlabeled and source-ambiguous in that an ordinary consumer of
the [p]roduct would not be able to tell, unless investigating closely, that the
advertisement did not belong to plaintiff.” 
[I can’t tell from the original
ad that the ad is from the plaintiff; this seems to be a self-generated problem.]

Defendants allegedly “purchased the Google AdWords ‘boost’
and ‘lash’ together in that order as a search engine advertisement to drive
traffic to their website,” constituting infringement, false advertising, and
counterfeiting.  [This nonsense is why
courts have ended up pretty aggressively protecting comparative keyword
advertising; even assuming that BoostLash crosses the threshold of protectability,
boost and lash should still be available to anyone to tout a product that improves
the appearance of eyelashes.]
Copyright: Boost sufficiently alleged that the copying was “word
for word.” Given how long it took Boost to provide the accused ad, the court
declined to address whether there was sufficient objective similarity under the
extrinsic test, reserving this for a motion for summary judgment.  Frankly, I hope the defendants get fees on this one.  Word for word?
Counterfeiting: Although the infringement claim survived a
motion to dismiss (which is sort of depressing in itself), the counterfeiting
claim didn’t.  Defendants pointed out
that the entire point of the claim is that defendants are selling their
differently named product, WooLash, using the accused ads.  Although a plaintiff may not need to allege
direct affixation to a product for counterfeiting, alleging AdWords use was
insufficient. “At the heart of counterfeiting … is a good that has been copied
and which has been sold, offered for sale, or distributed with a counterfeit
mark.” Here, there was no allegation that the BoostLash mark was displayed alongside
defendants’ product to trick consumers into believing they were getting
BoostLash instead of Woo’s product. Use of a mark as an internet search term
isn’t counterfeiting, as a matter of law. 
It is a use in commerce, but to extend counterfeiting this far would
risk turning all infringement claims into counterfeiting claims, with their
harsher penalties.

from Blogger http://bit.ly/2S5fH7X

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