Intellectual Property Law

Court Grants 56(f) Continuance in Bicycle Components False Advertising Case

By Michael Atkins

In Campagnolo S.R.L. v. Full Speed Ahead, Inc., well-known bicycle component manufacturer Campagnolo claims that Woodinville, Wash.-based Full Speed Ahead has made misrepresentations about the stiffness-to-weight ratios of the parties’ bicycle cranksets.

After the case was transferred to the Western District from the Eastern District of Pennsylvania, Campagnolo moved for partial summary judgment on its false advertising claim, arguing that Full Speed Ahead published false comparative advertisements listing incorrect weights for Campagnolo’s products in comparison with Full Speed Ahead’s products.

Instead of responding to the motion, Full Speed Ahead sought a continuance under Rule 56(f), which provides such relief when a motion for summary judgment is found to be premature. In response, Campagnolo argued that Full speed Ahead has all the information it needs to defend Campagnolo’s motion in its possession because Full Speed Ahead was the only party that published the allegedly false information.

Western District Judge Ricardo Martinez concluded otherwise. The court found: “Campagnolo’s partial summary judgment motion rests almost entirely upon the independent testing performed by Northwest Laboratories of Seattle, Inc. Campagnolo claims that these tests unequivocally reveal that FSA’s cranksets weigh more than what FSA advertised and posted on its website. But as FSA correctly points out, FSA has not had the opportunity to propound any discovery upon Northwest Labs. There is no way for FSA to know with any certainty whether Northwest Labs weighed the same version of the same product that was weighed by Campagnolo before it published the allegedly false information in magazines and on its website. …

“In addition, FSA has had no opportunity to explore whether these allegedly false statements are material. As mentioned above, a plaintiff must show that the deceptive practice influenced the purchasing decision. Furthermore, Campagnolo acknowledges that with respect to FSA’s website, the information online only reveals the weight of FSA’s crankset. While it is certainly true that ‘a product’s weight is the product’s weight’ as Campagnolo contends, the weight is only one factor of a crankset’s stiffness-to-weight ratio. Indeed, Campagnolo fails to produce any customer surveys regarding whether the weight of a bicycle when viewed in isolation would affect a customer’s purchasing decision. As a result, adjudicating a summary judgment motion without the benefit of such information would ignore the well-established test of whether a plaintiff has a valid § 43(a) Lanham Act claim.

“Lastly, the Court finds it worthwhile to address FSA’s affirmative defense of unclean hands. FSA claims that Campagnolo frequently reports weights of components that differ from the actual production line models. Campagnolo contends that this defense is a ploy to distract the Court and implies that it was frivolously brought. However, Campagnolo cannot dispute that ‘[u]nclean hands is a defense to a Lanham Act infringement suit.’ The Ninth Circuit has recognized that ‘it is essential that the plaintiff should not in his trade mark, or in his advertisements and business, be himself guilty of any false or misleading representation.’ Thus, FSA is entitled to explore this affirmative defense that would bar Campagnolo’s right to relief. Should this defense prove to be frivolous as Campagnolo contends, Campagnolo certainly has the ability to pursue the remedial avenues provided by the Federal Rules.”

Based on these findings, the court granted Full Speed Ahead’s motion in part, striking Campagnolo’s motion for summary judgment without prejudice to refile at a later date.

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372, 2009 WL 779221 (W.D. Wash.) (March 23, 2009).

Full post as published by Seattle Trademark Lawyer on March 30, 2009 (boomark / email).