Intellectual Property Law

"Planted" Articles About Spoiled Spices Not Actionable Under 43(a)

By Marty Schwimmer

I agree with 43(B)log: this 'commercial speech' case has interesting ramifications wrt 'anonymous' plants and false advertising:

The FDA seized one shipment of plaintiff's product (West Indian spices) because it was tainted. A local newspaper targeting the West Indian community reported on the seizure in an article that 'reads as if' it were written by one of plaintiff's competitors. The implication of the news article is that you should avoid all of plaintiff's products. One of plaintiff's competitors distributes the article via email. Plaintiff sues the competitor (and, seemingly, not the newspaper) for defamation and false advertising (alleging that competitor was responsbile for publication of the article in the first place). Competitor moves to dismiss,

Defamation claim upheld on a motion to dismiss. The article's over-stating of the significance of the seizure (that the public should be suspicious of ALL of plaintiff's product as a result of one seizure), strips away fair-reporting and truthfulness defenses.

Here's the interesting part of the decision: The Lanham Act claim was dismissed because the competitor's name doesn't appear in connection with the article and therefore doesn't propose a commercial transaction with competitor, even if the competitor paid the publication to run the article. Even competitor's email (identifying competitor and inviting discussion) doesn't propose a commercial transaction. No commercial speech.

So the lesson is: your client's should pay publications to run articles that slag the competition, just don't mention client and just steer clear of defamation.

Decision Bedessee Beharry

Full post as published by Trademark Blog on April 19, 2010 (boomark / email).