Articles Posted in False Advertising – 15 USC 1125(a)(1)(B)

Los Angeles, CA – Zobmondo filed a Lanham Act § 43(a) false advertising lawsuit over the phrase “Justin and Dave’s Original Would You Rather…? Board Game.” Zobmondo asserted that the term “original” falsely connoted that Defendant’s product was first in time. Details here.

Defendant Imagination filed a motion to dismiss arguing that Plaintiff was asserting a false designation of authorship claim (i.e. who was the first to come up with the idea for the game) precluded by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003). In Dastar, the Supreme Court stated that “reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act’s common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Dastar, 539 U.S. at 37 (italics in original).

The district court disagreed (order available here) and found that Dastar was inapplicable because the complaint focuses on who was the first to manufacture a “would you rather” board game, not the first to come up with the idea for the game:

Los Angeles, CA – Zobmondo Entertainment would rather file a Lanham Act § 43(a) false advertising lawsuit over the term “original” than allow defendant to use the term. Zobmondo allegedly introduced the first board game in 1998 based on the traditional conversational “would you rather” game.

The complaint alleges that in 2004, Justin Heimberg and David Gomberg introduced their own “would you rather…?” board game, which was purchased by Defendant Imagination in 2008. In February 2009, Imagination marketed its new board game entitled “Justin and Dave’s Original Would You Rather…? Board Game.” Plaintiff alleges that by “including the word ‘Original’ in the title of Imagination’s new board game, Imagination is attempting to deceive the public into believing that Imagination’s game is in fact the first board game based on the ‘would you rather’ concept” and that Zombodo’s games were imitations thereof. The case is Zobmondo Entertainment, LLC v. Imagination International Corporation, CV 09-2235 ODW (C.D. Cal. 2009).

PRACTICE NOTE: In context, does the term “original” convey first in time? It conveys, at least to me, that it’s the same game which was originally produced by Justin and Dave. See Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 582 (E.D.N.Y. 1999) (the term “original” conveyed that the defendant’s product contained the “original” sugar-substitute aspartame-based sweetener, not that it was first in time).

Santa Ana, CA – The court denied Surefire’s preliminary injunction motion and silenced its attempt to shoot down Advanced Armament’s silencer advertising. (Motion details blogged here). The court quickly pointed out that the accused advertisement doesn’t make any reference to Surefire and the pictured suppressor is not readily identifiable as a Surefire product. Surefire must be questioning its decision to file a lawsuit that – unlike the advertisement at issue – unequivocally identified its product as the one pictured in the advertisement and brought more attention to it than the advertisement itself. Indeed, Surefire submitted discussions from weapon forums that referenced the lawsuit and the advertisement at issue.

The alleged four false statements at issue were: “(1) the SureFire suppressor shown uses spot welds; (2) SureFire’s spot welds are not as strong as the fusion welds used by AAC; (3) SureFire’s spot welds are likely to fail during normal semi-automatic and full-automatic firings; and (4) AAC’s suppressors are more durable than suppressors like the SureFire suppressor shown.” The court determined that the statements were not literally false on their face or by necessary implication because the suppressor cannot be positively identified as Surefire’s. As a result, the court also found that Surefire could not evidence actual injury because the non-comparative statements cause injury to all competitors and “none is more likely to suffer from the offending broadcasts than any other.” Thus, Surefire could not show a likelihood of success on the merits or significant hardship if the preliminary injunction was not granted. The case is SureFire, LLC v. Advanced Armament Corp., SACV 08-1405 DOC (C.D. Cal. 2008).

UPDATE April 15, 2009: Judge denies SureFire’s motion to stop Advanced Armament’s Silencer Advertising. Read details here.

Santa Ana, CA – SureFire, LLC manufactures gun silencers (suppressors) and other related products for use with firearms. SureFire filed a Lanham Act, 15 U.S.C. 1125(a), false advertising claim at the Central District of California (Santa Ana Division) against Advanced Armament Corp. (“AAC”). The lawsuit arises out of a comparative advertisement by AAC which features cutaway views of two side-by-side silencers. The advertisements have allegedly been published in magazines such as Combat Hanguns, Guns & Weapons for Law Enforcement, and Tactical Weapons.

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