Deceive, inveigle, obfuscate–false discount claims still don’t cause cognizable injury

Posted on July 27, 2017 by rtushnet
Mulder v. Kohl’s Department Stores, Inc., — F.3d —-,
2017 WL 3167620, No. 16-1238 (1st Cir. Jul. 26, 2017)
Mulder bought several items that listed both purchase prices
and significantly higher “comparison prices.” Mulder alleged that these
comparison prices were inflated and invented, and that Kohl’s misled
unsuspecting consumers about the quality of its products. The court of appeals
affirmed the district court’s grant of a motion to dismiss.  She simply didn’t suffer relevant injury under
Massachusetts Chapter 93A.  Even
allegations that Mulder was “induced” to travel to a Kohl’s store by false
advertising and that she therefore suffered a resulting economic injury in the
form of travel expenses wasn’t good enough. 
She didn’t explain how deceptive statements on a price tag could have
caused her to travel to Kohl’s in the first place, and didn’t identify other
deceptive ads with the requisite specificity.
A false sense of value isn’t the requisite identifiable
injury, distinct from the claimed deceptive conduct itself, required by
Massachusetts law. “[A]bsent allegations of real loss grounded in some
objective measure, [an] ‘induced purchase’ theory of injury is simply the ‘per
se’ theory of injury in new clothing.”  So too with the “induced travel” theory,
which, if accepted, “would render meaningless the SJC’s clear rule against ‘per
se’ or ‘deception-as-injury’ claims.”
The same conclusions are also provided in Shaulis v.
Nordstrom, Inc., — F.3d –, 2017 WL 3167619, No. 15-2354 (1st Cir.
Jul. 26, 2017). Shaulis argued that the sweater she bought, allegedly due to
the price misrepresentation, was “worth nothing at all to [her] since she never
would have bought it” absent Nordstrom’s deception. But she received the
benefit of her bargain, and didn’t allege that there were flaws in the sweater
that made it worth less than what she paid. 
Subjective belief in value isn’t a legally cognizable injury under
Chapter 93A.
Of possible interest: the court of appeals rejected Shaulis’
analogy to “fake-Rolex hawking” because “falsely advertising a watch as a ‘Rolex’
is a material misstatement about the watch’s quality.”  But this is obviously insufficient as a
distinction!  According to Shaulis’
complaint, so was the discount claim—and the court of appeals supposedly
accepts her claim that she was materially misled (that is, that she changed her
behavior because of the misrepresentation). 
Why then is not a factual inquiry required to determine whether the fake
Rolex-buyer received the benefit of her bargain?  Arguably there is a drop in resale price once
the fakery is revealed—but if the initial price were low enough, that shouldn’t
matter.  The point being that the court
of appeals carefully distinguishes deception from injury when it comes to the
price representations, but not when it comes to the fake Rolex, because
trademark is different.
The court of appeals did note that Shaulis might well have
inferred greater value from the deceptive price tag, and that Nordstrom could
have hoped that consumers would make that inference.  “Indeed, it is presumably just this kind of
erroneous inference that Massachusetts seeks to prevent by regulation.”  Still, that doesn’t mean there was injury
under Chapter 93A. This essentially means that there is no private cause of
action, because without injury there can’t be injunctive relief either, for
conduct banned by Massachusetts consumer protection law.  But the AG can still enforce the law.

Shaulis’s common law claims — for fraud, unjust enrichment,
and breach of contract – failed for basically the same reasons.

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OJ may be guilty … of adding ingredients without disclosure

Posted on July 27, 2017 by rtushnet
In re: Simply Orange Orange Juice Marketing & Sales
Practices Litig., MDL No. 2361, 2017 WL 3142095 (W.D. Mo. Jul. 24, 2017)
Plaintiffs alleged that Coca-Cola sold Simply Orange, Minute
Maid Pure Squeezed, and Minute Maid Pure Premium without disclosing its use of
added flavors in these products, as required by federal labeling regulations,
leading consumers in seven states to pay a price premium. Coca-Cola argued that
it didn’t add flavoring in need of disclosure, because the “add-backs” it uses
are 100% made-from-the-orange products.  Also, Simply Orange and Minute Maid Pure
Squeezed don’t consistently use add-backs year round, meaning that there was no
injury/standing. Further, Coca-Cola maintained that only 1 in 25 consumers care
about the add backs, according to its survey expert, and therefore plaintiffs couldn’t
demonstrate reliance on a class-wide basis.  The court partially certified the proposed
class.
The first hint of what will happen comes from the court’s
characterization of Coca-Cola’s standing argument: “that its own inconsistent
and un-labelled use of add-backs means that certain consumers purchased orange
juice not containing add-backs, and those consumers were not injured.”  First, every container of Minute Maid Premium
had add-backs, and thus those consumers had standing.  Second, the existing discovery suggested that
approximately 70 percent of the time, purchasers of Simply Orange and MMPS
would be receiving drinks that included add-back; for certain years, nearly
every container sold included add-back. The plaintiffs alleged that they were regular
purchasers of juice throughout the year, and thus “undoubtedly purchased juice
containing add-backs.”  That was enough
to show standing, as required by Spokeo
v. Robins, for the named plaintiffs who represented the class.
Ascertainability: the court was concerned about the privacy
implications of getting purchaser information from merchants/customer loyalty
cards, but the proposed class included all purchasers of the specified products
under each state’s laws. 
Self-identification would work, given that the odds were that most class
members had purchased an orange juice product containing add-back. “[I]n
low-value consumer goods cases, there may be no better means of identifying
members of a class in circumstances such as these.” If unrebutted consumer
testimony “would be sufficient to establish injury in an individual suit, it
follows that similar testimony in the form of an affidavit or declaration would
be sufficient in a class action.” In re Nexium Antitrust Litig., 777 F.3d 9, 20
(1st Cir. 2015).
  
Commonality: the court was concerned about whether
plaintiffs will be able to provide common proof as to reliance, materiality,
and/or causation, but several of plaintiffs’ issues were susceptible to common
proof: whether the orange juice products contain added flavors not permitted by
federal law; whether the orange juice products omit disclosure of added flavors
as required by federal labeling laws; whether the orange juice products
conformed to the representations on the labels of the products; whether the
orange juice products omitted material information from the products’ labels;
whether defendant warranted that the orange juice products would conform to the
label representations; and whether defendant breached these warranties.  The predominance requirement was likewise
satisfied with respect to some elements of the state law claims, but not
others, particularly requirements to prove reliance, materiality, and/or
causation, as well as damages. 
(Plaintiffs’ proposed damages model was based on a flawed survey that
measured consumers preference for juice with “added flavoring,” vs. no “added
flavoring,” with wording that suggested inferiority, even though current FDA
regulations allow some amount of added flavoring.)  An issues class was therefore appropriate.

However, plaintiffs lacked standing to pursue injunctive
relief.

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“Local” can be falsifiable representation of fact

Posted on July 25, 2017 by rtushnet
Bimbo Bakeries USA, Inc. v. Sycamore, No. 13-cv-00749, 2017
WL 3089011 (D. Utah Apr. 28, 2017)
Leland Sycamore invented the process and formula for making
Grandma Sycamore’s Home-Maid Bread and subsequently received federal trademark
protection for part of the packaging’s design. 
Leland ultimately sold Grandma Sycamore’s to Bimbo.  Bimbo sued Leland’s son and related entities
for misappropriation of trade secrets, trademark infringement, and false
advertising based on their sales of Grandma Emilie’s bread.  Though the recipe changed in 2013, Bimbo
alleged that a person involved in developing the new recipe (now sold under a
new brand name) learned the secret from Leland. In July 2012, defendant U.S.
Bakery adopted a new tagline for its products, “Fresh. Local. Quality,” which
provided the basis for the false advertising claims.
Among other things, the court held that U.S. Bakery’s use of
additional ingredients not included in the Grandma Sycamore’s recipe didn’t
absolve it from misappropriation liability. 
Still, whether it used Bimbo’s purported trade secret was disputed.  Infringement claims also avoided summary
judgment.
False advertising: Bimbo argued that the U.S. Bakery tagline
“Fresh. Local. Quality” was false in Utah because U.S. Bakery neither
maintained a baking facility in the state of Utah nor contracted with a Utah
facility to manufacture its bread products. U.S. Bakery argued that the tagline
wasn’t sufficiently definite to be a false designation of origin and wasn’t
attributable to the relevant product. 
The court disagreed.  While
the US Department of Agriculture has concluded “[t]hough ‘local’ has a
geographic connotation, there is no consensus on a definition in terms of the
distance between production and consumption,” Bimbo has provided surveys
showing that the tagline “local” was misleading and material to potential
purchasers. “Because the term local does not carry a set definition, whether
the term is false or misleading is a question appropriate for the fact finder.”  [This really skips over the key question:
does the term have a sufficiently consistent definition among the relevant
consumers to measure its truth or falsity? 
“Good” doesn’t have a set definition either—but it’s nonactionable
puffery.]

As for whether the tagline was actually used on relevant
products, U.S. Bakery argued that shelf-liners saying “Freshly Baked in Utah” were
only used for products that were not baked in Utah once, when a product was
mis-shelved (there are apparently U.S. Bakery buns baked in Utah for which the
slogan was not problematic).  U.S. Bakery
argued that Bimbo couldn’t prove that this was “systematic” (which would be “advertising
or promotion”).  However, Bimbo’s sales
director testified that he saw the shelf liners used in Utah in 2014 during a
time that he understood that U.S. Bakery did not have a bakery in the state,
creating a genuine factual issue.

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Pictures of premium cuts of meat on pet food are ambiguous, court says

Posted on July 25, 2017 by rtushnet

Wysong Corp. v. APN, Inc., Nos. 16-11823, 16-11825, 16-11826, 16-11827, 16-11832 (E.D. Mich. Jul. 20, 2017)

Wysong, a pet food manufacturer, sued six competitors, alleging that their packages used images of “premium meats, poultry, fish, and vegetables” that “do not fairly represent the actual ingredients of the packages.” The court dismissed the complaint without further leave to amend.

Wysong offered three theories of falsity/deceptiveness: (1) Defendants’ packaging used images of “premium cuts” such as “lamb chops, chicken breasts, [ ] steak, or salmon fillets” that consumers “would feed [their] famil[ies],” when, in fact, the food is actually made of the “lower cost parts of the animal left over after all the parts a human finds appetizing have been removed.”  (2) Some pacakging used images of “premium cuts from a particular animal when the primary animal ingredient in the product is not only of a lower cost, it is from a completely different species of animal.” (3) Some packaging used images of premium cuts even though the actual “primary animal ingredient is a low cost and low grade animal ‘by-product’ … derived from the cheapest part of the animal” – such “as stomachs, intestines, bone, [and] blood.”  These misrepresentations allegedly manipulated “the natural inclination among pet caretakers to purchase the highest quality, premium foods that are in accordance with their own sensibilities.”

However, the court concluded that Wysong didn’t explain how any particular image was false or misleading in context, but just attached photos of hundreds of defendants’ packages to its complaint and broadly alleged that every image was false and/or misleading in at least one of the three ways identified above.  But the packages varied widely: Some used large images of premium ingredients, while others used smaller images; some put premium ingredients in the center, while others tucked the images in a bottom corner; some used words or names that highlighted or identified the depicted premium ingredients while others didn’t; some depicted a single image of a premium ingredient, while some used more than one; some came in large bags, others in small cans.

The court found that the images weren’t literally false.  An image of a premium ingredient on a pet food package, standing alone, didn’t “unambiguously,” “necessarily,” and “unavoidably,” convey that the food in the package contained the exact cut or grade of the ingredient pictured, because a reasonable consumer could understand the image as merely identifying the type of ingredients in the product.

Likewise, it is possible that consumers viewing Defendants’ packaging would understand that the images of premium ingredients on Defendants’ packages are for “identification purposes only” and are used to help consumers determine the types of meats, poultry, fish, and/or vegetables included in, or the flavors of, the pet food they are purchasing. Thus, as in Scotts Co., Wysong’s literal falsity claim fails.  So too with the “primary species” theory—an image of an animal doesn’t unambiguously communicate that meat from that animal is the primary animal ingredient.  And so too with the animal by-product theory.

Although misleadingness is often a question of fact, it can also be resolved on a motion to dismiss where appropriate.  The court found Wysong’s theories deficient because they didn’t account for context. The court found it implausible that every image of a premium ingredient – no matter its characteristics or context – conveyed the same misleading message about the product’s contents.  By contrast, complaints about food packaging that survived a motion to dismiss provided details about specific images, their placement on the packaging, their relationship to the product names/slogans/verbal claims/other advertising, etc.

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Transformative work of the year (so far): To tell my story, showing near DC now

Posted on July 21, 2017 by rtushnet
To Tell My Story: A Hamlet Fanfic by Alexandra Petri 
Runs until July 30

Although the structuring conceit is a loose retelling of
Hamlet, with a modern-day fangirl as the tragic protagonist Elsie, there are a
number of other fandoms represented, most obviously Harry Potter, secondarily
Twilight (though only identified as “vampire” in the promo materials, grrr), MCU (similar, grr), LoTR, Sherlock, and Historical RPF (Abraham Lincoln).  Some observations:
1.    
Just as Ready Player One hails as its ideal reader an 80s fanboy, this play hails a 21st-century
fangirl.  I laughed a lot. 
2.    
Me, a pedant: Technically, this isn’t a
“fanfic,” but a “fandrama” or “fanwork,” though I understand why they used the
more well-recognized term.
3.    
For a number of reasons, commercial “fanworks,”
if you accept the application of that term to them—and for this play at least I
think we should—tend to be metafictions, interested in the mechanisms of
storytelling (see, e.g., Jasper Fforde’s series, Dumas père’s Kean as remixed
by Sartre, Supernatural’s Fan Fiction and Slash Fiction episodes), especially
if you include in the metafiction category retellings from the perspective of a
character whose experience is elided from the original (see, e.g., Wide
Sargasso Sea, Lo’s Diary, The Wind Done Gone, Jacqueline Carey’s retelling of
LoTR).  This play is no exception, as the
title indicates, and I also sense a reference to Hamilton’s “who lives, who
dies, who tells your story”—especially since Petri’s play, much more than
Shakespeare’s, emphasizes that you (the character) have little to no control
over those things.  In Petri’s version,
Elsie is not able to orchestrate the narrative for Horatio to repeat.

4.    
The program fascinated me because the format is
very specifically taken from the Archive
of Our Own, with its major tags, additional tags and kudos count, as well
as fandom categorizations.  And I’m
pretty sure all the additional tags are canonical,
even though some of them are not what we envisioned when we set up the
additional tags field.  That’s folksonomy
for you.  Anyway, obviously I don’t think
there’s any trademark problem, and wouldn’t be for a creative work even if it
used more of the Archive’s trade dress, but it’s notable that the AO3 now
provides some standard formatting choices.
FFrom outside, a wall inviting audience members to share their fandoms.  I recognized maybe half?

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Transformative work of the year (so far): To tell my story, showing near DC now

Posted on July 21, 2017 by rtushnet
To Tell My Story: A Hamlet Fanfic by Alexandra Petri 
Runs until July 30

Although the structuring conceit is a loose retelling of
Hamlet, with a modern-day fangirl as the tragic protagonist Elsie, there are a
number of other fandoms represented, most obviously Harry Potter, secondarily
Twilight (though only identified as “vampire” in the promo materials, grrr), MCU (similar, grr), LoTR, Sherlock, and Historical RPF (Abraham Lincoln).  Some observations:
1.    
Just as Ready Player One hails as its ideal reader an 80s fanboy, this play hails a 21st-century
fangirl.  I laughed a lot. 
2.    
Me, a pedant: Technically, this isn’t a
“fanfic,” but a “fandrama” or “fanwork,” though I understand why they used the
more well-recognized term.
3.    
For a number of reasons, commercial “fanworks,”
if you accept the application of that term to them—and for this play at least I
think we should—tend to be metafictions, interested in the mechanisms of
storytelling (see, e.g., Jasper Fforde’s series, Dumas père’s Kean as remixed
by Sartre, Supernatural’s Fan Fiction and Slash Fiction episodes), especially
if you include in the metafiction category retellings from the perspective of a
character whose experience is elided from the original (see, e.g., Wide
Sargasso Sea, Lo’s Diary, The Wind Done Gone, Jacqueline Carey’s retelling of
LoTR).  This play is no exception, as the
title indicates, and I also sense a reference to Hamilton’s “who lives, who
dies, who tells your story”—especially since Petri’s play, much more than
Shakespeare’s, emphasizes that you (the character) have little to no control
over those things.  In Petri’s version,
Elsie is not able to orchestrate the narrative for Horatio to repeat.

4.    
The program fascinated me because the format is
very specifically taken from the Archive
of Our Own, with its major tags, additional tags and kudos count, as well
as fandom categorizations.  And I’m
pretty sure all the additional tags are canonical,
even though some of them are not what we envisioned when we set up the
additional tags field.  That’s folksonomy
for you.  Anyway, obviously I don’t think
there’s any trademark problem, and wouldn’t be for a creative work even if it
used more of the Archive’s trade dress, but it’s notable that the AO3 now
provides some standard formatting choices.
FFrom outside, a wall inviting audience members to share their fandoms.  I recognized maybe half?

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9th Circuit burps up a correction to recent Gerber case

Posted on July 18, 2017 by rtushnet
Bruton v. Gerber Prods. Co., No. 15-15174, 2017 WL 3016740,
— Fed. Appx. — (9th Cir. Jul. 17, 2017)
On a petition for rehearing, the previous
panel opinion and partial dissent were withdrawn and replaced with the
following, still partially reviving plaintiff’s consumer protection class
action but getting rid of a deception theory, as the dissent had wanted.
Bruton filed a putative class action against Gerber,
alleging that labels on certain Gerber baby food products included claims about
nutrient and sugar content that violated FDA regulations as incorporated into
California law.
Again, the court of appeals rejected the district court’s
ruling that the class wasn’t ascertainable. There is no separate
“administrative feasibility” requirement for class certification.
However, there was no genuine dispute of material fact on
Bruton’s claims that the labels were deceptive in violation of the UCL, FAL,
and CLRA.  Her theory of deception was
that the combination of “healthy” claims on Gerber’s products, in violation of
FDA regulations, and the lack of claims on legally compliant competitors’
products made Gerber’s labeling likely to mislead the public into believing
that Gerber’s products were of a higher quality than its competitors’ products.
This theory “may be viable,” since even technically correct
labels can be misleading under California law. 
However, Bruton didn’t produce enough evidence to survive summary
judgment; her own vague, uncorroborated, and self-serving testimony was
insufficient.  Further, the record
included Gerber’s and some competitors’ labels, but it showed that those
competitors made many of the same allegedly illegal claims. “A reasonable jury
comparing the labels side by side could not rationally conclude that Gerber’s
labels were likely to deceive members of the public into thinking that Gerber’s
products were of a higher quality than its competitors’ products that made the
same type of claims.”  Likewise, FDA
warning letters (informal and non-binding) didn’t indicate that competitors
complied with the law.
However, the district court erred in granting summary
judgment to Gerber on Bruton’s claims that the labels were unlawful under the
UCL. The unlawfulness prong “borrows” predicate legal violations and treats
them as independently actionable under the UCL. “The best reading of California
precedent is that the reasonable consumer test is a requirement under the UCL’s
unlawful prong only when it is an element of the predicate violation.” The
predicate violation here was of California’s Sherman Law, which itself
incorporates standards set by FDA regulations, and those standards didn’t
include any requirement of likely deception. (Though query how that works with
modern First Amendment jurisprudence.)

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Park claim fails to fly: formerly well-known mark lacks current secondary meaning

Posted on July 18, 2017 by rtushnet
Parks LLC v. Tyson Foods, Inc., 2017 WL 3014273, — F.3d –,
No. 16-2768 (3d Cir. Jul. 6, 2017)
District
court opinion discussed previously here. Since the 1950s, Parks Sausage
Company has manufactured or licensed sausage under the brand name “PARKS,”
though its registration expired in the early 2000s.  In 2014, Tyson, the owners of the frankfurter
brand BALL PARK, which is responsible for 23% of the revenue of all franks sold
in the US, launched the super-premium line PARK’S FINEST, and Parks sued for
trademark infringement and false advertising. 
Here, the court of appeals affirms the rejection of both claims.
“False advertising claims do not require proof of secondary
meaning, so litigants may be tempted to frame a false association claim as a
false advertising claim, to ease their evidentiary burden.”  That’s what seems to have happened here, so
the court tried to clarify the distinction between §43(a)(1)(A) and
§43(a)(1)(B) claims, holding that the false advertsing claim here failed
because it was “essentially a false association claim in disguise.”
False advertising requires a misrepresentation of “the
nature, characteristics, qualities, or geographic origin” of a product.  “PARK’S FINEST is only misleading in the way
that Parks suggests if a consumer makes the connection between PARK’S FINEST
and PARKS and has in mind a pre-existing association between PARKS and high
quality products. This is a false association claim and nothing more.”  Even the argument that the name would
misleadingly imply that the product was a sausage when it’s really an inferior frankfurter
depended on the consumer knowing that PARKS was a mark for sausages and making
a false association.
Even if Parks argued that “PARK’S FINEST” was misleading for
blurring the distinction between frankfurters and sausages, the packaging was
unambiguous that the product was frankfurters and the rest of the label couldn’t
confuse consumers; plus Parks repeatedly took the position that a frankfurter
is a kind of a sausage, meaning that there was no misleadingness by its own
lights.
Parks contended that PARK’S FINEST was misleading with
regard to “origin,” but that didn’t work both for the reasons given above and
because §43(a)(1)(B) is about geographic origin, not other types of false
designations of origin.  It’s not the
right vehicle “for addressing claims of false designation of origin that are
not concerned specifically with geographic origin.” “Geographic origin” “refers
solely to the place of origin and not to the creator, manufacturer, or any broader
conception of the term ‘origin.’”  (In a
footnote, the court commented that it wasn’t resolving the issue of whether a
term had to be a “geographically distinctive trademark” before a manufacturer could
be found liable for falsely advertising the geographic origin of its goods.  Here “trademark” seems to mean something like
“common-law certification or collective mark.”) 
Because the name PARK’S FINEST says nothing about the product’s
“geographic origin,” there was no valid §43(a)(1)(B) claim.
The false association claim then failed for want of a
showing of secondary meaning.  As a
surname-based mark, PARKS was required to show acquired distinctiveness; it
didn’t have that any more.  Parks argued
that inherent distinctiveness should have been a jury question because “parks”
is also the plural of “park,” as in recreational land, and therefore could be
seen as an “arbitrary” mark. “But it is undisputed that Parks was named after
its founder, someone who Parks describes with justifiable pride as ‘an
important figure in the history of American Business,’ and Parks’s reputation is
closely linked to its founder,” so no reasonable juror could conclude that
PARKS was anything other than a reference to the founder. (Isn’t there a
logical problem here?  If in fact PARKS
lacks acquired distinctiveness, why wouldn’t the hypothetical reasonable
consumer encounter the mark in ignorance of its history, and thus not make the “link”
as described, leaving her to figure out what was going on?)
Of note in the secondary meaning discussion, Parks tried to
use its confusion survey to show secondary meaning; that didn’t work well.  An Ever-Ready
survey shows consumers only the potentially-infringing product and asks open-ended
questions to determine whether they believe the product is associated with the
senior mark; it can also provide evidence of secondary meaning. This kind of
survey works best for commercially strong marks.  “Holders of weaker marks more frequently
employ a Squirt survey,” as
here.  A Squirt survey puts two products side by side and asks consumers
about their beliefs about source.  “[A]
well-designed Squirt survey may show
a likelihood of confusion. What it does not do or even purport to do, however,
is prove secondary meaning.”  Because of
how the survey is conducted, “a consumer who had never heard of PARKS could
still conclude that the two products were affiliated.” Follow-up questions
might have allowed participants to identify the source of PARKS or PARK’S
FINEST, which could have shed light on secondary meaning, but the survey didn’t
ask them.

Parks argued that proof of likely confusion proved secondary
meaning, but that’s just wrong.  The
evidence sometimes overlaps, but not always. “Establishing that two marks are
similar does not necessarily lead to any valid conclusion about whether either
of the two has secondary meaning.”

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Bee aggressive: Copied ad leads to grab bag of claims

Posted on July 18, 2017 by rtushnet
Fischer v. Forrest, 2017
WL 2992663, — F. Supp. 3d –, 14 Civ. 1307 (S.D.N.Y. Jul. 14, 2017) (report and
recommendation)
Fischer invented
Fischer’s Bee-Quick, a product used to facilitate honey harvesting, and
marketed it using, among other things, the following four phrases:
a) “Are you tired of your spouse making you sleep in the garage after
using Butyric Anhydride?”
b) “Are you tired of using a hazardous product on the bees you love?”
c) “Fischer’s Bee-Quick is a safe, gentle, and pleasant way to harvest
your honey”
d) “A Natural, Non-Toxic Blend Of Oils and Herbal Extracts”
Defendants were in
some way involved with Brushy Mountain Bee Farm, which initially resold
Fischer’s product, using the text (whose authorship was disputed):
This 100% Natural, non-toxic blend of oils and herb extracts works just
like Bee Go and it smells good! Fischer’s Bee Quick is a safe, gentle, and
pleasant way to harvest your honey. Are you tired of your spouse making you
sleep in the garage after using Bee Go? Are you tired of using a hazardous
product on the bees you love? Then this is the product for you!
Around 2010, Brushy
Mountain decided to sell a comparable product that performed the same function;
Brushy Mountan bought a third party product and labeled it as “Natural Honey
Harvester,” but continued to use nearly the same promotional text.  A 2011 Brushy Mountain catalog used the
phrases as follows:
For years we have promoted the use of a natural product to harvest
honey but an unreliable supply of such a product has forced us to come out with
our own. This 100% Natural, non-toxic blend of oils and herb extracts works
just like Bee Go® and it smells good! Natural Honey Harvester™ is a safe,
gentle, and pleasant way to harvest your honey. Are you tired of your spouse making
you sleep in the garage after using Bee Go®? Are you tired of using hazardous
products on the bees you love? Then this is the product for you!
Fischer also alleged
that defendants intentionally removed copyright management information (“CMI”)
from Fischer’s promotional brochure and the Fischer’s Bee-Quick bottle photos. Defendants
changed the textual reference in one of the phrases from “Fischer’s Bee-Quick”
to “Natural Honey Harvester,” and allegedly also stripped the metadata from
Fischer’s original Fischer’s Bee-Quick bottle photo displayed on Brushy
Mountain’s website, and overlaid the photo with a watermark of the Brushy
Mountain Bee Farm logo.
There were lots of
factual disputes; the magistrate recommended not granting summary judgment on
the ground that Fischer’s copyright registration was invalid, even though the
first submission (of several) to the Copyright Office didn’t contain the
brochure at the heart of the case.  The
magistrate also recommended finding the brochure as a whole copyrightable, and
concluded that the relevant portions evinced enough originality to be
protected, at least as a whole. The “rhetorical questions that play on the
worries of beekeepers” were unique and the whole of the brochure was greater
than the sum of its parts, although the phrase “A Natural, Non-Toxic Blend Of
Oils and Herbal Extracts” was merely descriptive of the product ingredients. Even
in isolation, though, most if not all of the rhetorical questions were long enough for copyright protection, particularly the “sleep in the garage” bit.
Unfortunately for
Fischer, the copyright claim still had fatal problems.  (1) He did not register before the
infringement began, so he was not eligible for statutory damages or attorneys’
fees.  (As an aside, the magistrate
analyzed the relevance of secondary liability to the rule that infringements
that continue past the date of registration don’t provide eligibility for
statutory damages—although two of the vendors for  which Brushy Mountain was allegedly
secondarily liable began their infringing activities after the registration,
their infringements were republications of the initial ad, and thus part of an
ongoing series of infringing acts that didn’t restart the clock.)  (2) Fischer elected statutory damages and
declined to submit evidence of actual damages (which probably would have been
hard to prove; this is not the type of work for which there is a licensing
market in which money changes hands). 
(3) Defendants agreed to remove the challenged text, mooting the claim
for injunctive relief.  With nothing left
for a court to do, the magistrate recommended granting summary judgment to
defendants on the copyright claim.
DMCA claim:  Fischer alleged that defendants stripped the
metadata from Fischer’s original Fischer’s Bee-Quick bottle photo displayed on
Brushy Mountain’s website, but the magistrate recommended rejecting that
argument because he submitted no evidence that the metadata included CMI; not
all metadata is CMI. Fischer also argued that the allegedly infringing ad had
CMI stripped from it because defendants changed the phrase, “Fischer’s
Bee-Quick™ is a safe, gentle, and pleasant way to harvest your honey,” by
replacing “Fischer’s Bee-Quick™” with “Natural Honey Harvester”:
  
side by side comparison
Fischer argued that the
product’s name, because it had Fischer’s name in it, was CMI.  To prevail on a §1202 claim, Fischer had to
show that defendants “intentionally remove[d]” CMI that was “conveyed in
connection with copies … of [his] work or … displays of [his] work.” The
relevant “work” here was the the brochure, while defendants created derivative
works of the brochure. The creation of infringing derivative works didn’t
qualify as the “removal” of CMI from the original work. 
The magistrate was
also skeptical that even more direct “extraction” of phrases from a larger work
could constitute “removal” of CMI, since the statute contemplates “copies” of a
work and extraction of “distinct elements” of a work doesn’t constitute a “copy.” 
If, for example, someone extracted and reproduced several sentences
from a copyrighted Sherlock Holmes story, without crediting the Conan Doyle
Estate, it would stretch the definition of “removal” to say that CMI had been
“removed” from the copyrighted “work.” It might be copyright infringement, but
it would not be a DMCA violation.
This conclusion
makes total sense—otherwise Blurred Lines
should also have been the basis of a §1202 claim—but it requires a bit of fancy
footwork to reconcile with the idea that substantial similarity can constitute
a violation of the reproduction right, further strengthening my view that the
derivative works right should be where such claims live.
Even assuming that
the relevant “work” was the four key phrases collectively, Fischer didn’t show
that the phrases contained CMI.  “The
DMCA’s expansive definition of CMI cannot trigger liability any time a person’s
name is contained in a copyrighted work without reference to how that
information was used and displayed on the work itself.”  The name of the product discussed in the work
is not CMI for the work; such a name, even if includes the author’s name, “does
not have any CMI significance—it simply is part of the product’s name (just
like Kellogg’s Corn Flakes or Wrigley’s Chewing Gum).”
Fischer didn’t plead
a trademark infringement claim, the magistrate reasoned, because he
consistently alleged only “counterfeiting,” even when represented by
counsel. 
Fischer’s §43(a)
false endorsement claim also failed. 
This claim was based on Brushy Mountain’s use of URLs that, even after
they switched products, still contained “fischer” as part of the address
string, e.g., http://ift.tt/2vxXJjD
 

page for Fischer replacement, with Fischer’s name still in URL post-domain path
The judge applied
the multifactor confusion test, and found that the claimed strength of the
mark, mark similarity, and product similarity all favored Fischer.  But there was no evidence of actual confusion
or bad faith, which the judge found to be the most significant under these circumstances.  This wasn’t a domain name case; the use of “Fischers.com”
or “Fischersbeequick.com” to sell a competing product would support a false
endorsement claim. But a name “buried in the post-domain paths of the Brushy
Mountain web pages” wasn’t likely to confuse consumers about Fischer’s
endorsement or approval. “No consumers are likely to believe that Fischer has
somehow endorsed or approved Natural Honey Harvester when viewing the
post-domain portion of the URL, if they even see it at all.”  Likewise, consumer sophistication favored
defendants.  “Whether defined as the
typical consumer of beekeeping products, or internet users writ large, no
ordinary consumer is likely to see Fischer’s name in the post-domain path of
the URL and wonder if that signified his endorsement of a completely different
product in the accompanying web page.” 
Nor did Fischer provide evidence that, as he contended, the use of his
name in the address led Brushy Mountain’s pages to appear higher in search
results, or that, even if that were true, that fact would have any bearing on
consumer confusion..
Fischer’s only
evidence of actual confusion was an undated review on the Brushy Mountain
website complaining: “The first bottle I bought last year worked well but this
new stuff was a complete waste of time and money.” But there was no evidence
that the commenter ever bought Fischer’s product, as opposed to two different
bottles of the replacement product; defendants submitted an affidavit stating
that the review was posted two and a half years after Brushy Mountain stopped
selling Fischer’s product.
The New York unfair
competition claim is like a §43(a) claim, but requires “‘either actual
confusion or a likelihood of confusion, and there must be ‘some showing of bad
faith’ on the part of the defendants.” So that was a no-go too.
Note: why not a
right of publicity claim?  Would the
court’s CMI reasoning “this is a product name, not an author name” also apply
there?  Would there be any other defense?
The magistrate also
recommended tossing out Fischer’s false advertising claim, which was based on
the statement, “For years we have promoted the use of a natural product to
harvest honey but an unreliable supply of such a product has forced us to come
out with our own. This 100% Natural, non-toxic blend of oils and herb extracts
works just like Bee Go® and it smells good!”  Fischer primarily argued that “our own” was
false, because they bought a third-party product, though he also claimed that “the
third-party manufacturer makes nothing but cleaning products, calling into
question if the product is even food-grade, let alone ‘100% Natural”’  Furthermore, the only thing one defendant said
about whether the product was “actually natural” in deposition was “I assume
so.”  Given where the burden of proof
lies in a private false advertising claim, this wasn’t enough to proceed on the
100% natural claim, even though it was material.
As for “our own,”
that wasn’t literally false; while it could mean that defendants selected the
ingredients and personally created the product, but “another reasonable
interpretation is that defendants marketed a natural honey harvesting product,
from whatever source, under their brand name,” which was true. There was no
evidence of consumer deception, even though Fischer testified that unnamed
competitors had responded to the ad by making their own knockoffs—even if
knockoffs emerged, that didn’t mean the ad caused them, or that consumers were
deceived.

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Bee aggressive: Copied ad leads to grab bag of claims

Posted on July 18, 2017 by rtushnet
Fischer v. Forrest, 2017
WL 2992663, — F. Supp. 3d –, 14 Civ. 1307 (S.D.N.Y. Jul. 14, 2017) (report and
recommendation)
Fischer invented
Fischer’s Bee-Quick, a product used to facilitate honey harvesting, and
marketed it using, among other things, the following four phrases:
a) “Are you tired of your spouse making you sleep in the garage after
using Butyric Anhydride?”
b) “Are you tired of using a hazardous product on the bees you love?”
c) “Fischer’s Bee-Quick is a safe, gentle, and pleasant way to harvest
your honey”
d) “A Natural, Non-Toxic Blend Of Oils and Herbal Extracts”
Defendants were in
some way involved with Brushy Mountain Bee Farm, which initially resold
Fischer’s product, using the text (whose authorship was disputed):
This 100% Natural, non-toxic blend of oils and herb extracts works just
like Bee Go and it smells good! Fischer’s Bee Quick is a safe, gentle, and
pleasant way to harvest your honey. Are you tired of your spouse making you
sleep in the garage after using Bee Go? Are you tired of using a hazardous
product on the bees you love? Then this is the product for you!
Around 2010, Brushy
Mountain decided to sell a comparable product that performed the same function;
Brushy Mountan bought a third party product and labeled it as “Natural Honey
Harvester,” but continued to use nearly the same promotional text.  A 2011 Brushy Mountain catalog used the
phrases as follows:
For years we have promoted the use of a natural product to harvest
honey but an unreliable supply of such a product has forced us to come out with
our own. This 100% Natural, non-toxic blend of oils and herb extracts works
just like Bee Go® and it smells good! Natural Honey Harvester™ is a safe,
gentle, and pleasant way to harvest your honey. Are you tired of your spouse making
you sleep in the garage after using Bee Go®? Are you tired of using hazardous
products on the bees you love? Then this is the product for you!
Fischer also alleged
that defendants intentionally removed copyright management information (“CMI”)
from Fischer’s promotional brochure and the Fischer’s Bee-Quick bottle photos. Defendants
changed the textual reference in one of the phrases from “Fischer’s Bee-Quick”
to “Natural Honey Harvester,” and allegedly also stripped the metadata from
Fischer’s original Fischer’s Bee-Quick bottle photo displayed on Brushy
Mountain’s website, and overlaid the photo with a watermark of the Brushy
Mountain Bee Farm logo.
There were lots of
factual disputes; the magistrate recommended not granting summary judgment on
the ground that Fischer’s copyright registration was invalid, even though the
first submission (of several) to the Copyright Office didn’t contain the
brochure at the heart of the case.  The
magistrate also recommended finding the brochure as a whole copyrightable, and
concluded that the relevant portions evinced enough originality to be
protected, at least as a whole. The “rhetorical questions that play on the
worries of beekeepers” were unique and the whole of the brochure was greater
than the sum of its parts, although the phrase “A Natural, Non-Toxic Blend Of
Oils and Herbal Extracts” was merely descriptive of the product ingredients. Even
in isolation, though, most if not all of the rhetorical questions were long enough for copyright protection, particularly the “sleep in the garage” bit.
Unfortunately for
Fischer, the copyright claim still had fatal problems.  (1) He did not register before the
infringement began, so he was not eligible for statutory damages or attorneys’
fees.  (As an aside, the magistrate
analyzed the relevance of secondary liability to the rule that infringements
that continue past the date of registration don’t provide eligibility for
statutory damages—although two of the vendors for  which Brushy Mountain was allegedly
secondarily liable began their infringing activities after the registration,
their infringements were republications of the initial ad, and thus part of an
ongoing series of infringing acts that didn’t restart the clock.)  (2) Fischer elected statutory damages and
declined to submit evidence of actual damages (which probably would have been
hard to prove; this is not the type of work for which there is a licensing
market in which money changes hands). 
(3) Defendants agreed to remove the challenged text, mooting the claim
for injunctive relief.  With nothing left
for a court to do, the magistrate recommended granting summary judgment to
defendants on the copyright claim.
DMCA claim:  Fischer alleged that defendants stripped the
metadata from Fischer’s original Fischer’s Bee-Quick bottle photo displayed on
Brushy Mountain’s website, but the magistrate recommended rejecting that
argument because he submitted no evidence that the metadata included CMI; not
all metadata is CMI. Fischer also argued that the allegedly infringing ad had
CMI stripped from it because defendants changed the phrase, “Fischer’s
Bee-Quick™ is a safe, gentle, and pleasant way to harvest your honey,” by
replacing “Fischer’s Bee-Quick™” with “Natural Honey Harvester”:
  
side by side comparison
Fischer argued that the
product’s name, because it had Fischer’s name in it, was CMI.  To prevail on a §1202 claim, Fischer had to
show that defendants “intentionally remove[d]” CMI that was “conveyed in
connection with copies … of [his] work or … displays of [his] work.” The
relevant “work” here was the the brochure, while defendants created derivative
works of the brochure. The creation of infringing derivative works didn’t
qualify as the “removal” of CMI from the original work. 
The magistrate was
also skeptical that even more direct “extraction” of phrases from a larger work
could constitute “removal” of CMI, since the statute contemplates “copies” of a
work and extraction of “distinct elements” of a work doesn’t constitute a “copy.” 
If, for example, someone extracted and reproduced several sentences
from a copyrighted Sherlock Holmes story, without crediting the Conan Doyle
Estate, it would stretch the definition of “removal” to say that CMI had been
“removed” from the copyrighted “work.” It might be copyright infringement, but
it would not be a DMCA violation.
This conclusion
makes total sense—otherwise Blurred Lines
should also have been the basis of a §1202 claim—but it requires a bit of fancy
footwork to reconcile with the idea that substantial similarity can constitute
a violation of the reproduction right, further strengthening my view that the
derivative works right should be where such claims live.
Even assuming that
the relevant “work” was the four key phrases collectively, Fischer didn’t show
that the phrases contained CMI.  “The
DMCA’s expansive definition of CMI cannot trigger liability any time a person’s
name is contained in a copyrighted work without reference to how that
information was used and displayed on the work itself.”  The name of the product discussed in the work
is not CMI for the work; such a name, even if includes the author’s name, “does
not have any CMI significance—it simply is part of the product’s name (just
like Kellogg’s Corn Flakes or Wrigley’s Chewing Gum).”
Fischer didn’t plead
a trademark infringement claim, the magistrate reasoned, because he
consistently alleged only “counterfeiting,” even when represented by
counsel. 
Fischer’s §43(a)
false endorsement claim also failed. 
This claim was based on Brushy Mountain’s use of URLs that, even after
they switched products, still contained “fischer” as part of the address
string, e.g., http://ift.tt/2vxXJjD
 

page for Fischer replacement, with Fischer’s name still in URL post-domain path
The judge applied
the multifactor confusion test, and found that the claimed strength of the
mark, mark similarity, and product similarity all favored Fischer.  But there was no evidence of actual confusion
or bad faith, which the judge found to be the most significant under these circumstances.  This wasn’t a domain name case; the use of “Fischers.com”
or “Fischersbeequick.com” to sell a competing product would support a false
endorsement claim. But a name “buried in the post-domain paths of the Brushy
Mountain web pages” wasn’t likely to confuse consumers about Fischer’s
endorsement or approval. “No consumers are likely to believe that Fischer has
somehow endorsed or approved Natural Honey Harvester when viewing the
post-domain portion of the URL, if they even see it at all.”  Likewise, consumer sophistication favored
defendants.  “Whether defined as the
typical consumer of beekeeping products, or internet users writ large, no
ordinary consumer is likely to see Fischer’s name in the post-domain path of
the URL and wonder if that signified his endorsement of a completely different
product in the accompanying web page.” 
Nor did Fischer provide evidence that, as he contended, the use of his
name in the address led Brushy Mountain’s pages to appear higher in search
results, or that, even if that were true, that fact would have any bearing on
consumer confusion..
Fischer’s only
evidence of actual confusion was an undated review on the Brushy Mountain
website complaining: “The first bottle I bought last year worked well but this
new stuff was a complete waste of time and money.” But there was no evidence
that the commenter ever bought Fischer’s product, as opposed to two different
bottles of the replacement product; defendants submitted an affidavit stating
that the review was posted two and a half years after Brushy Mountain stopped
selling Fischer’s product.
The New York unfair
competition claim is like a §43(a) claim, but requires “‘either actual
confusion or a likelihood of confusion, and there must be ‘some showing of bad
faith’ on the part of the defendants.” So that was a no-go too.
Note: why not a
right of publicity claim?  Would the
court’s CMI reasoning “this is a product name, not an author name” also apply
there?  Would there be any other defense?
The magistrate also
recommended tossing out Fischer’s false advertising claim, which was based on
the statement, “For years we have promoted the use of a natural product to
harvest honey but an unreliable supply of such a product has forced us to come
out with our own. This 100% Natural, non-toxic blend of oils and herb extracts
works just like Bee Go® and it smells good!”  Fischer primarily argued that “our own” was
false, because they bought a third-party product, though he also claimed that “the
third-party manufacturer makes nothing but cleaning products, calling into
question if the product is even food-grade, let alone ‘100% Natural”’  Furthermore, the only thing one defendant said
about whether the product was “actually natural” in deposition was “I assume
so.”  Given where the burden of proof
lies in a private false advertising claim, this wasn’t enough to proceed on the
100% natural claim, even though it was material.
As for “our own,”
that wasn’t literally false; while it could mean that defendants selected the
ingredients and personally created the product, but “another reasonable
interpretation is that defendants marketed a natural honey harvesting product,
from whatever source, under their brand name,” which was true. There was no
evidence of consumer deception, even though Fischer testified that unnamed
competitors had responded to the ad by making their own knockoffs—even if
knockoffs emerged, that didn’t mean the ad caused them, or that consumers were
deceived.

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