trademark infringement accusations are opinion without a final judgment

Trevari Media, LLC v. Colasse, 758 F.Supp.3d 1175 (C.D. Cal.2024)

Colasse accused Trevari of infringing its trade dress in a“[s]pring-loaded glass-breaking device. Although the trade dress was registeredin 2014, when Colasse emailed Trevari alleging infringement in 2021, Trevariresponded that the putative trademark was invalid because it was functional,and defendant didn’t respond. Instead, Colasse sent trade dress complaints toFacebook and Instagram, and, as a result, Facebook and Instagram removed postswhich advertised Trevari’s glass breaker. While Trevari was petitioning forcancellation at the TTAB, Colasse continued to cause Trevari’s glass breakerproduct to be removed from various online sites including Shopify, Wordpress,Facebook, and Instagram, and also messaged Trevari’s followers on Facebook andInstagram, claiming that its glass breaker infringed its trademark. In 2023, theTTAB cancelled the registration because the design was functional; Colasse hassought de novo review in district court.

Trevari sued for trade libel, intentional interference withcontractual relations, and unfair business practices under California law.

The court found that Colasse’s statements were only opinion.For example, Colasse’s counsel told Shopify that Trevari’s listing was “counterfeited.”The court found it “unclear” whether an assertion of IP infringement could everbe considered provable fact, “at least before a tribunal determines finallywhether the IP is valid and infringed.” Although Trevari alleged that Colassealways knew or had serious doubts about the invalidity, the design had been registeredat the time the statements were made, providing prima facie evidence ofvalidity. “Given the legal complexity in determining IP validity andinfringement, and in line with the above cited cases, the court finds thevalidity or infringement of IP only becomes a provable ‘fact’ when a final,unappealable decision has been rendered.”

The court also held that “the surrounding context furthersupports the statement was one of opinion, as the statement was asserted as a ‘reasonablebelief’ made in ‘good faith.’” Plus, as to the non-lawyer defendant, “hisstatement regarding complex legal issues can only reasonably be interpreted asan opinion.”

What about complaints to Shopify calling the product a “Chinesecounterfeit” or “cheap low quality made copy from China”? That was alsoopinion.

Without false factual statements, all the claims failed.