allegations of copied instructions lead to finding of noninfringement and possible 512(f) violation

MFB Fertility, Inc. v. Action Care Mobile Veterinary Clinic,LLC, --- F.Supp.3d ----, 2024 WL 1719347, No. 23 cv 3854 (N.D. Ill. Apr. 22, 2024)

MFB sued Action Care for copyright and trademarkinfringement; Action Care counterclaimed for misrepresentation under 17 U.S.C.§ 512(f), tortious interference, defamation per se and per quod, andcancellation of Plaintiff’s “PROOV” trademark. Defendant won dismissal of the copyrightclaim and plaintiff won partial dismissal of the counterclaims.

MFB was founded by fertility expert Dr. Amy Beckley, who inventedPROOV to measure the presence of progesterone (PdG) metabolites in urine and toallow women to confirm successful ovulation by tracking their PdG levels.Through Amazon and its website proovtest.com, MFB “promotes, offers for sale,and sells products ... under the trademark PROOV.” Proov products include adsand instructions, such as FDA-required labels and their website’s FrequentlyAsked Questions page, so that Proov can be readily used by unskilled persons athome.

Competitor Action Care also specializes in the sale of PdGovulation test strips. Action Care’s PdG test is called OvuProof, using Amazon  and buyovuproof.com.

MFB sent a DMCA takedown notice to Amazon in 2023 targetingAction Care, resulting in at least 174 units of Action Care’s products beingstranded or lost. MFB’s DMCA Takedown Notice included, along with the statutorilyrequired language, the following statements:

They [Action Care] found a cheapChinese manufacturer to copy our tests then used all of our wording on theproduct page and product inserts. Copyrighted content: They copied all of ourFAQs and product description from this product page [ ] They also took wordingfrom our FAQ on our website: https://proovtest.com/products/proov-test-stripsincluding the ‘who might have a problem with ovulation, comment FAQ, when totest, and what is successful ovulation.

Action Care counternoticed, but MFB sued, sent its complaintto Amazon, and got Amazon to take down OvuProof again. The putative copyrightinfringement is here:

Action Care’s legal strategy (waiting on the trademark part,which courts are often reluctant to decide on a motion to dismiss) was goodhere, and Amazon might well be willing to restore its storefront, though I haveno insight into its decisionmaking. The court reasoned that MFB’s works were “scientificand factual,” “entitled to the narrowest copyright protections.”

It is “axiomatic” that copyright law denies protection to“fragmentary words and phrases” and to “forms of expression dictated solely atfunctional considerations” on the grounds that “these materials do not exhibitthe minimal level of creativity necessary to warrant copyright protection.” “[L]anguagedescribing what a product does and how it is used is generallynoncopyrightable; and even where it is copyrightable, infringement can bedemonstrated only by precise copying.” Even assuming validity of MFB’scopyright and access, there was no substantial similarity given the highlyfactual nature of the works and the lack of striking similarity, a limitimposed to avoid “monopolistic stagnation.” There was no verbatim copying here;any overlap was necessary to describe an unprotected process.

MFB’s own claims of similarity showed their weakness:

• “The term ‘Cycle’ is identical to the term ‘Cycle.’ ”

• “The phrase ‘Works Great with Tests’ is substantiallysimilar to the phrase ‘Works Well with Ovulation/LH Tests.’ ”

• “The term ‘PdG Test Strips’ is identical to the term “‘PdG Test Strips.’ ”

• “The term ‘CONFIRM OVULATION’ is identical to the term‘CONFIRM OVULATION,’ and both are used in the first paragraphs of theirrespective works as a way to distinguish from predicting ovulation.”

• “The phrases ‘THE ONLY FDA-CLEARED PdG Test’ issubstantially similar to the phrase ‘OvuProof is FDA registered,’ and each workincludes that point in the third paragraph of their respective works.”

“In fact, under MFB’s construction, Action Care wouldostensibly be required to violate the FDA’s labeling requirements for in vitrodiagnostic products to bypass MFB’s copyright.” The court cited Feist insupport of the idea that regulatorily mandated statements may not be original;here the FDA requires name and intended use(s), a statement of warnings orprecautions, and other key details. “This functional, regulated language isprecisely the ‘expression’ that MFB improperly claims intellectual propertyover.” Any copying was “limited to fragments that are descriptive of itsproduct and is compelled by the legislature. MFB cannot claim ownership ofmedical terms such as ‘cycle’ or ‘PdG Test Strips’ no more than Pfizer orModerna can claim ownership over ‘COVID-19 vaccine.’”

512(f) misrepresentation: Given the lack of binding precedent,the court looked at Lenz; did Action Care plausibly plead a lack of goodfaith? MFB’s DMCA notification represents that Action Care copied “all” ofMFB’s Copyrighted Works. The word “all” means 100 percent, or verbatim. Thatwas false as a matter of law, rendering Action Care’s allegations significantlymore plausible than in other cases, and Lenz makes willful blindnessactionable as well. “[W]hether a copyright owner formed a subjective good faithbelief is, in most instances, a factual issue that is not appropriate forresolution on a motion to dismiss.” Thus, “a DMCA notice submitter like MFBmust proactively consider the potential that similarities in materials areunprotectable. … Given the discrepancy between ‘all’ and, apparently, nocopying …, there is a triable issue as to whether the MFB formed a subjectivegood faith belief that Action Care’s sale of its OvuProof was infringing, or ifinstead MFB were willfully blind to the fact that Action Care was notinfringing in violation of 512(f).”

Defamation and tortious interference claims based onstatements to Amazon also proceeded.  (Itdoes not appear that MFB argued that 512(f) had preemptive effect.)

But the trademark cancellation claim failed because ActionCare argued that there was no likelihood of confusion, depriving Action Care ofstanding.