ORDER GRANTING IN PART AND DENYING IN PART MOTION TO DISMISS AMENDED COUNTERCLAIMS
SAMUEL CONTI, District Judge.
Plaintiff CrossFit, Inc. ("CrossFit") brings this action against Defendant Jenni Alvies ("Alvies") for trademark infringement, among other things. ECF No. 1 ("Compl."). Alvies has counterclaimed for (1) declaratory judgment; (2) violation of California's Unfair Competition Law ("UCL"), Cal. Bus. & Prof. Code. § 17200,
As it must on a Rule 12(b)(6) motion to dismiss, the Court treats all well-pleaded allegations in the FACC as true.
In April 2011, Alvies, a stay-at-home mother of four children, launched a blog at "crossfitmamas.blogspot.com." FACC ¶ 21. Around the same time, Alvies created a "CrossFit Mamas" Facebook page.
On May 9, 2013, a paralegal from CrossFit contacted Alvies and demanded that Alvies stop using the CrossFit name on her blog and affiliated Facebook page.
CrossFit also requested that third parties remove Alvies's Blog and sent a takedown notice to Facebook pursuant to the Digital Millennium Copyright Act ("DMCA").
Thereafter, CrossFit continued to demand that Alvies disable her Google AdWords and cease selling the vitamin shakes. CrossFit also allegedly reneged on the deal struck by its paralegal, demanding that Alvies cease using the domain "califitmamas.com." Alvies subsequently moved her blog to "hiitmamas.blogspot.com." After the second move, CrossFit repeatedly demanded that Alvies delete over two years of blog posts. Alvies alleges that CrossFit's demands constitute "an improper effort to eradicate all Internet evidence of Alvies's prior use in commerce of marks subject to the Intent-to-Use Applications regarding nutritional shakes, computer software to track workouts, and others."
In August 2013, CrossFit filed the instant action against Alvies in federal court, asserting causes of action for trademark infringement, false designation of origin, trademark dilution, and cyberpiracy. Alvies counterclaims for (1) declaratory judgment, (2) violation of the UCL, and (3) false advertising under the Lanham Act. CrossFit now moves to dismiss all three counterclaims.
A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) "tests the legal sufficiency of a claim."
Alvies seeks declaratory judgment on a number of grounds. CrossFit moves to dismiss with respect to only one aspect of Alvies's counterclaim. Specifically, CrossFit targets Alvies's claim that CrossFit violated 17 U.S.C. § 512(f) by making material misrepresentations in the DMCA takedown notice it submitted to Facebook. MTD at 6-8. The DMCA targets the circumvention of digital walls guarding copyrighted material, but does not provide remedies for trademark infringement.
CrossFit argues that Alvies's claim is implausible because Facebook allows trademark takedown notices as well as DMCA copyright takedown notices. MTD at 7. This argument lacks merit. As an initial matter, it is unclear why the Court should take judicial notice of Facebook's internal compliance procedures. This is simply not a fact that "is generally known within the trial court's jurisdiction," or that "can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b)(1), (2). Even if judicial notice were appropriate, Alvies has plausibly alleged that CrossFit materially misrepresented that Alvies's Facebook page infringed on a copyright, since CrossFit's claims are based only on its asserted trademark rights. Whether CrossFit may have been able to convince Facebook to remove Alvies's page on some other ground has no bearing on CrossFit's compliance with the DMCA.
CrossFit also contends that Alvies's claim fails because she was not injured by the DMCA takedown notice. MTD at 7. CrossFit argues that if it had not submitted a DMCA takedown notice, it could have submitted a trademark takedown notice that would have had the same effect.
Alvies's counterclaim for declaratory relief remains undisturbed.
Alvies's UCL claim is premised on the theory that CrossFit has engaged in harassing conduct in an effort to eradicate all evidence of Alvies's prior use of marks that are subject to CrossFit's intent-to-use applications with the PTO. FACC ¶ 75. The UCL counterclaim targets CrossFit's efforts to delete Alvies's blog and Facebook page and to stop Alvies from selling vitamin shakes.
CrossFit argues that Alvies lacks standing because she has failed to plead an economic injury. Mot. at 8-9. The Court disagrees. Alvies alleges that her blog and affiliated Facebook page generated at least a modicum of revenue through the sale of vitamin shakes and Google AdWords, and that CrossFit wrongfully caused those pages to be removed. Thus, it is plausible that CrossFit's alleged misconduct resulted in economic injury to Alvies.
However, a private plaintiff's remedies under the UCL "are generally limited to injunctive relief and restitution."
Accordingly, the Court DISMISSES Alvies's UCL claim with leave to amend.
False Advertising under the Lanham Act
The Lanham Act prohibits "false representations in the advertising and sale of goods and services.
Alvies claims that CrossFit violated the Lanham Act by making false and misleading representations to readers of her blog regarding her workout regimens. FACC ¶ 83. Specifically, Alvies targets the CrossFit paralegal's representations to a blog reader that Alvies's workouts are "bad," "stupid," or "unsafe."
CrossFit argues that Alvies lacks standing to assert a false advertising Lanham Act claim because the parties are not direct competitors. MTD at 17. CrossFit reasons that it is "one of the largest fitness training companies in the country," while Alvies is merely a "blogger who . . . sells Google AdWords and . . . vitamin shakes."
Next, CrossFit argues that Alvies fails to allege her Lanham Act counterclaim with sufficient particularity. MTD at 18. To the extent that CrossFit contends that Alvies's Lanham Act claim fails to meet the pleading requirements of Rule 9(b), its argument lacks merit. Alvies has pleaded sufficient facts to put CrossFit on notice of the allegedly false statement that forms the basis of her Lanham Act claim. Alvies's pleading identifies who made the statement, to whom the statement was made, the exact contents of the statement, why the statement is false, and the approximate time of the statement.
However, the Court agrees that Alvies has pleaded insufficient facts to establish that the conduct alleged constitutes advertising for the purposes of the Lanham Act. Under the Act's false advertising provisions, statements are only actionable if they constitute "commercial advertising or promotion," which has been defined as "(1) commercial speech; (2) by a defendant who is in commercial competition with plaintiff; (3) for the purpose of influencing consumers to buy defendant's goods or services."
Alvies's pleading targets a single, isolated email from a CrossFit paralegal to a reader of Alvies's blog. This hardly constitutes "an organized campaign to penetrate the market."
For the foregoing reasons, CrossFit's motion to dismiss is GRANTED in part and DENIED in part. Alvies's counterclaim for declaratory relief remains undisturbed. Her counterclaims for violations of the UCL and the Lanham Act are DISMISSED with leave to amend. Alvies shall file an amended pleading within thirty (30) days of the signature date of this Order. Failure to do so may result in dismissal with prejudice of her UCL and Lanham Act counterclaims.