Crossfit, Inc. v. Alvies

Filing 33

Order by Hon. Samuel Conti granting in part and denying in part 24 Motion to Dismiss.(sclc1, COURT STAFF) (Filed on 1/22/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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United States District Court

For the Northern District of California

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CROSSFIT, INC.,

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Plaintiff,

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v.

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JENNI ALVIES, and DOES 1-10,
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Defendants.
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AND RELATED COUNTERCLAIMS

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Case No. 13-3771 SC
ORDER GRANTING IN PART AND
DENYING IN PART MOTION TO
DISMISS AMENDED COUNTERCLAIMS

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I.

INTRODUCTION
Plaintiff CrossFit, Inc. ("CrossFit") brings this action

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against Defendant Jenni Alvies ("Alvies") for trademark

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infringement, among other things.

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has counterclaimed for (1) declaratory judgment; (2) violation of

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California's Unfair Competition Law ("UCL"), Cal. Bus. & Prof.

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Code. § 17200, et seq.; and (3) false advertising under the Lanham

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Act, 15 U.S.C. § 1125.

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("FACC")).

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pursuant to Federal Rule of Civil Procedure 12(b)(6).

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("MTD").

ECF No. 1 ("Compl.").

Alvies

ECF No. 16 (First Amended Counterclaims

CrossFit now moves to dismiss Alvies's counterclaims
ECF No. 24

The motion is fully briefed, ECF Nos. 26 ("Opp'n"), 30

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("Reply"), and appropriate for determination without oral argument

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per Civil Local Rule 7-1(b).

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motion is GRANTED in part and DENIED in part.

For the reasons set forth below, the

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II.

BACKGROUND
As it must on a Rule 12(b)(6) motion to dismiss, the Court

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treats all well-pleaded allegations in the FACC as true. 1

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has developed a fitness training regimen and provides a nationally

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standardized certificate program to personal trainers who desire to

United States District Court

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For the Northern District of California

Compl. ¶¶ 9, 11.

CrossFit

become licensed CrossFit affiliates.

CrossFit

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owns several registered United States trademarks and service marks

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comprised of the word mark CROSSFIT, including a service mark for

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use in connection with fitness training services.

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FACC ¶ 23.

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United States Patent and Trademark Office ("PTO") for other uses of

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the CROSSFIT mark on an "intent-to-use" basis, meaning that

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CrossFit has yet to use the mark in commerce in connection with

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those uses.

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energy bars, computer software that tracks workouts, weight-loss

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equipment, magazines, books, and sports bags.

Compl. ¶ 10,

CrossFit has also filed trademark applications with the

FACC ¶ 24.

The applications relate to nutritional

Id. ¶¶ 25-28.

In April 2011, Alvies, a stay-at-home mother of four children,

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launched a blog at "crossfitmamas.blogspot.com."

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Around the same time, Alvies created a "CrossFit Mamas" Facebook

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page.

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high-intensity interval training routines.

Id. ¶ 48, Compl. ¶ 13.

FACC ¶ 21.

Alvies used the blog to post daily
Id. ¶¶ 20-21.

Readers

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For background, the Court also refers to a number of allegations
from CrossFit's complaint. However, for the purposes of
adjudicating the instant motion, the Court only considers Alvies's
allegations.

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of the blog use the comments section to post and track their

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personal progress on certain exercises.

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recoup some money for her efforts, Alvies sold vitamin meal-

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replacement shakes through the blog and added Google AdWords

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advertising.

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Id. ¶ 21.

In an effort to

Id. ¶ 22.

On May 9, 2013, a paralegal from CrossFit contacted Alvies and

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demanded that Alvies stop using the CrossFit name on her blog and

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affiliated Facebook page.

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began communicating with at least one reader of Alvies's blog about

Id. ¶ 48.

CrossFit's paralegal also

United States District Court

For the Northern District of California

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the quality of Alvies's workouts.

Id. ¶ 52.

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that she had "assessed a few days of [Alvies's] workouts" and

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determined it was "bad programming."

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represented that a CrossFit trainer determined that Alvies's

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workouts were "stupid and unsafe."

Id.

The paralegal stated

The paralegal also

Id.

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CrossFit also requested that third parties remove Alvies's

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Blog and sent a takedown notice to Facebook pursuant to the Digital

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Millennium Copyright Act ("DMCA").

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reached an agreement with CrossFit's paralegal whereby she would

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move her blog to the domains "califitmamas.com" and

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"califitmamas.blogspot.com."

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asserted that Alvies could not use the term "CFMamas" because "CF"

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is a common abbreviation of CrossFit.

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Id. ¶ 55.

Id. ¶ 49.

Alvies allegedly

The paralegal allegedly

See id. ¶ 51.

Thereafter, CrossFit continued to demand that Alvies disable

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her Google AdWords and cease selling the vitamin shakes.

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also allegedly reneged on the deal struck by its paralegal,

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demanding that Alvies cease using the domain "califitmamas.com."

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Alvies subsequently moved her blog to "hiitmamas.blogspot.com."

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After the second move, CrossFit repeatedly demanded that Alvies

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CrossFit

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delete over two years of blog posts.

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CrossFit's demands constitute "an improper effort to eradicate all

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Internet evidence of Alvies's prior use in commerce of marks

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subject to the Intent-to-Use Applications regarding nutritional

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shakes, computer software to track workouts, and others."

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64.

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Alvies alleges that

Id. ¶

In August 2013, CrossFit filed the instant action against

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Alvies in federal court, asserting causes of action for trademark

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infringement, false designation of origin, trademark dilution, and

United States District Court

For the Northern District of California

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cyberpiracy.

Alvies counterclaims for (1) declaratory judgment,

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(2) violation of the UCL, and (3) false advertising under the

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Lanham Act.

CrossFit now moves to dismiss all three counterclaims.

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III. LEGAL STANDARD
A motion to dismiss under Federal Rule of Civil Procedure

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12(b)(6) "tests the legal sufficiency of a claim."

Navarro v.

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Block, 250 F.3d 729, 732 (9th Cir. 2001).

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on the lack of a cognizable legal theory or the absence of

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sufficient facts alleged under a cognizable legal theory."

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Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.

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1988).

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should assume their veracity and then determine whether they

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plausibly give rise to an entitlement to relief."

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Iqbal, 556 U.S. 662, 679 (2009).

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must accept as true all of the allegations contained in a complaint

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is inapplicable to legal conclusions.

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elements of a cause of action, supported by mere conclusory

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statements, do not suffice."

"Dismissal can be based

"When there are well-pleaded factual allegations, a court

Ashcroft v.

However, "the tenet that a court

Threadbare recitals of the

Id. (citing Bell Atl. Corp. v.

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Twombly, 550 U.S. 544, 555 (2007)).

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IV.

DISCUSSION

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A.

Declaratory Relief

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Alvies seeks declaratory judgment on a number of grounds.

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CrossFit moves to dismiss with respect to only one aspect of

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Alvies's counterclaim.

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claim that CrossFit violated 17 U.S.C. § 512(f) by making material

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misrepresentations in the DMCA takedown notice it submitted to

United States District Court

For the Northern District of California

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Facebook.

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digital walls guarding copyrighted material, but does not provide

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remedies for trademark infringement.

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asserts that CrossFit's invocation of the DMCA was improper and

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misleading since CrossFit's claims are based on the assertion of

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trademark rights, not copyrights.

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specifically 17 U.S.C. 512(f), any person who knowingly materially

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misrepresents that material infringes on a copyright shall be

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liable for damages incurred by the alleged infringer.

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MTD at 6-8.

Specifically, CrossFit targets Alvies's

The DMCA targets the circumvention of

See 17 U.S.C. § 502.

FACC ¶ 72.

Alvies

Under the DMCA,

CrossFit argues that Alvies's claim is implausible because

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Facebook allows trademark takedown notices as well as DMCA

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copyright takedown notices.

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As an initial matter, it is unclear why the Court should take

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judicial notice of Facebook's internal compliance procedures.

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is simply not a fact that "is generally known within the trial

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court's jurisdiction," or that "can be accurately and readily

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determined from sources whose accuracy cannot reasonably be

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questioned."

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notice were appropriate, Alvies has plausibly alleged that CrossFit

MTD at 7.

This argument lacks merit.

Fed. R. Evid. 201(b)(1), (2).

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This

Even if judicial

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materially misrepresented that Alvies's Facebook page infringed on

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a copyright, since CrossFit's claims are based only on its asserted

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trademark rights.

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Facebook to remove Alvies's page on some other ground has no

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bearing on CrossFit's compliance with the DMCA.

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Whether CrossFit may have been able to convince

CrossFit also contends that Alvies's claim fails because she

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was not injured by the DMCA takedown notice.

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argues that if it had not submitted a DMCA takedown notice, it

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could have submitted a trademark takedown notice that would have

CrossFit

United States District Court

For the Northern District of California

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had the same effect.

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Court to find that (1) Alvies's Facebook page infringed on

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CrossFit's trademarks, and (2) had CrossFit submitted a trademark

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takedown notice, Facebook would have removed Alvies's page.

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is asking too much.

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trademark claims on a motion to dismiss Alvies's counterclaim, let

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alone hypothesize about what Facebook would or would not have done

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if it had received a trademark takedown notice regarding Alvies's

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Facebook page.

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Alvies's pleading.

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at least some income from her blog and that the blog was associated

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with the Facebook page that CrossFit caused to be removed through

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an improper DMCA takedown notice.

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Id.

MTD at 7.

Essentially, CrossFit is asking the

This

The Court cannot adjudicate CrossFit's

The Court limits its analysis to the allegations in
Those allegations indicate that Alvies derived

Alvies's counterclaim for declaratory relief remains

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undisturbed.

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B.

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Alvies's UCL claim is premised on the theory that CrossFit has

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engaged in harassing conduct in an effort to eradicate all evidence

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of Alvies's prior use of marks that are subject to CrossFit's

UCL

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intent-to-use applications with the PTO.

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counterclaim targets CrossFit's efforts to delete Alvies's blog and

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Facebook page and to stop Alvies from selling vitamin shakes.

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The UCL prohibits any business act or practice that is unlawful,

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unfair, or fraudulent.

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asserts claims under all three prongs.

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FACC ¶ 75.

The UCL

Cal. Bus. & Prof. Code § 17200.

Id.

Alvies

FACC ¶¶ 76-78.

CrossFit argues that Alvies lacks standing because she has

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failed to plead an economic injury.

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disagrees.

Mot. at 8-9.

The Court

Alvies alleges that her blog and affiliated Facebook

United States District Court

For the Northern District of California

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page generated at least a modicum of revenue through the sale of

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vitamin shakes and Google AdWords, and that CrossFit wrongfully

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caused those pages to be removed.

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CrossFit's alleged misconduct resulted in economic injury to

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Alvies.

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Thus, it is plausible that

However, a private plaintiff's remedies under the UCL "are

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generally limited to injunctive relief and restitution."

Cel-Tech

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Commc'ns, Inc. v. Los Angeles Cellular Tel. Co., 20 Cal. 4th 163,

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179 (Cal. 1999).

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to the UCL.

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CrossFit violated the statute.

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that Alvies is seeking injunctive relief.

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a plaintiff cannot recover restitution unless that plaintiff had an

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"ownership interest in the money or property sought to be

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recovered" and the defendant "acquired the plaintiff's money or

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property by means of . . . unfair competition."

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Ct., 154 Cal. App. 4th 1491, 1494 (Cal. Ct. App. 2007) (internal

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quotations omitted).

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acquired the lost revenue alleged by Plaintiff.

Alvies's prayer for relief is vague with respect

She merely asks that the Court enter judgment that
FACC p. 17.

There is no indication
Moreover, under the UCL,

Shersher v. Super.

Here, it is unclear how CrossFit could have

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Accordingly, the Court DISMISSES Alvies's UCL claim with leave
to amend.

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C.

False Advertising under the Lanham Act

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The Lanham Act prohibits "false representations in the

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advertising and sale of goods and services.

Jack Russell Terrier

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Network of N. Ca. v. Am. Kennel Club, Inc., 407 F.3d 1027, 1036

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(9th Cir. 2005).

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Lanham Act, a plaintiff must show, inter alia, "a false statement

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of fact by the defendant in a commercial advertisement about its

To prevail on a false advertising claim under the

United States District Court

For the Northern District of California

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own or another's product."

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108 F.3d 1134, 1139 (9th Cir. 1997).

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"competitive or harmful to the plaintiff's ability to compete with

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the defendant."

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omitted).

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Southland Sod Farms v. Stover Seed Co.,
The injury alleged must be

Jack Russell, 407 F.3d at 1027 (quotations

Alvies claims that CrossFit violated the Lanham Act by making

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false and misleading representations to readers of her blog

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regarding her workout regimens.

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targets the CrossFit paralegal's representations to a blog reader

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that Alvies's workouts are "bad," "stupid," or "unsafe."

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Alvies further alleges that CrossFit's representations have

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irreparably injured her goodwill and reputation.

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FACC ¶ 83.

Specifically, Alvies

Id.

Id. ¶ 84.

CrossFit argues that Alvies lacks standing to assert a false

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advertising Lanham Act claim because the parties are not direct

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competitors.

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largest fitness training companies in the country," while Alvies is

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merely a "blogger who . . . sells Google AdWords and . . . vitamin

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shakes."

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fitness training services.

Id.

MTD at 17.

CrossFit reasons that it is "one of the

The argument lacks merit.

Both parties offer

See Compl. ¶ 9; FACC ¶ 18.

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Their

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business models differ, but they offer similar services to

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consumers.

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vitamin shake sales rather than a nationally standardized

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certificate program does not mean that she does not compete with

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CrossFit.

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differences in size preclude a finding of competition.

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That Alvies earns revenues through advertisements and

Moreover, nothing in the Lanham Act suggests that

Next, CrossFit argues that Alvies fails to allege her Lanham

extent that CrossFit contends that Alvies's Lanham Act claim fails

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United States District Court

Act counterclaim with sufficient particularity.

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For the Northern District of California

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MTD at 18.

To the

to meet the pleading requirements of Rule 9(b), its argument lacks

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merit.

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notice of the allegedly false statement that forms the basis of her

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Lanham Act claim.

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statement, to whom the statement was made, the exact contents of

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the statement, why the statement is false, and the approximate time

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of the statement.

Alvies has pleaded sufficient facts to put CrossFit on

Alvies's pleading identifies who made the

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However, the Court agrees that Alvies has pleaded insufficient

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facts to establish that the conduct alleged constitutes advertising

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for the purposes of the Lanham Act.

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advertising provisions, statements are only actionable if they

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constitute "commercial advertising or promotion," which has been

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defined as "(1) commercial speech; (2) by a defendant who is in

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commercial competition with plaintiff; (3) for the purpose of

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influencing consumers to buy defendant's goods or services."

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Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d

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725, 735 (9th Cir. 1999) (quoting Gordon & Breach Sci. Publishers

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v. Am. Inst. of Physics, 859 F. Supp. 1521 (S.D.N.Y. 1994)).

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"While the representations need not be made in a 'classic

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Under the Act's false

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advertising campaign,' but may consist instead of more informal

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types of 'promotion,' the representations (4) must be disseminated

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sufficiently to the relevant purchasing public to constitute

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'advertising' or 'promotion' within that industry."

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"Representations that are commercial advertising or promotion under

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the Lanham Act must be part of an organized campaign to penetrate

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the market, rather than isolated disparaging statements."

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Inc. v. SMD Software Inc., CV-10-02052-PHX-JRG, 2012 WL 1379063, at

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*5 (D. Ariz. Apr. 20, 2012).

United States District Court

eMove

Alvies's pleading targets a single, isolated email from a

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For the Northern District of California

Id.

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CrossFit paralegal to a reader of Alvies's blog.

This hardly

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constitutes "an organized campaign to penetrate the market."

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id.

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Act counterclaim concerns commercial advertising or promotion.

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Accordingly, the Lanham Act counterclaim is DISMISSED with leave to

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amend.

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disparaging statements and explain how they were disseminated to

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the purchasing public.

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See

Without more, the Court cannot conclude that Alvies's Lanham

The amended pleading should identify CrossFit's allegedly

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V.

CONCLUSION
For the foregoing reasons, CrossFit's motion to dismiss is

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GRANTED in part and DENIED in part.

Alvies's counterclaim for

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declaratory relief remains undisturbed.

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violations of the UCL and the Lanham Act are DISMISSED with leave

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to amend.

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days of the signature date of this Order.

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result in dismissal with prejudice of her UCL and Lanham Act

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counterclaims.

Her counterclaims for

Alvies shall file an amended pleading within thirty (30)
Failure to do so may

United States District Court

For the Northern District of California

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IT IS SO ORDERED.

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January 22, 2014

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UNITED STATES DISTRICT JUDGE

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