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

MFB was founded by fertility expert Dr. Amy Beckley, who invented PROOV to measure the presence of progesterone (PdG) metabolites in urine and to allow 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 ads and instructions, such as FDA-required labels and their website’s Frequently Asked Questions page, so that Proov can be readily used by unskilled persons at home.

Competitor Action Care also specializes in the sale of PdG ovulation 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 targeting Action Care, resulting in at least 174 units of Action Care’s products being stranded or lost. MFB’s DMCA Takedown Notice included, along with the statutorily required language, the following statements:

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

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

 

comparison of instructions (far from identical)

Action Care’s legal strategy (waiting on the trademark part, which courts are often reluctant to decide on a motion to dismiss) was good here, and Amazon might well be willing to restore its storefront, though I have no insight into its decisionmaking. The court reasoned that MFB’s works were “scientific and 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 at functional considerations” on the grounds that “these materials do not exhibit the minimal level of creativity necessary to warrant copyright protection.” “[L]anguage describing what a product does and how it is used is generally noncopyrightable; and even where it is copyrightable, infringement can be demonstrated only by precise copying.” Even assuming validity of MFB’s copyright and access, there was no substantial similarity given the highly factual nature of the works and the lack of striking similarity, a limit imposed 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 substantially similar 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 their respective works as a way to distinguish from predicting ovulation.”

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

“In fact, under MFB’s construction, Action Care would ostensibly be required to violate the FDA’s labeling requirements for in vitro diagnostic products to bypass MFB’s copyright.” The court cited Feist in support of the idea that regulatorily mandated statements may not be original; here the FDA requires name and intended use(s), a statement of warnings or precautions, and other key details. “This functional, regulated language is precisely the ‘expression’ that MFB improperly claims intellectual property over.” Any copying was “limited to fragments that are descriptive of its product and is compelled by the legislature. MFB cannot claim ownership of medical terms such as ‘cycle’ or ‘PdG Test Strips’ no more than Pfizer or Moderna 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 good faith? MFB’s DMCA notification represents that Action Care copied “all” of MFB’s Copyrighted Works. The word “all” means 100 percent, or verbatim. That was false as a matter of law, rendering Action Care’s allegations significantly more plausible than in other cases, and Lenz makes willful blindness actionable as well. “[W]hether a copyright owner formed a subjective good faith belief is, in most instances, a factual issue that is not appropriate for resolution on a motion to dismiss.” Thus, “a DMCA notice submitter like MFB must proactively consider the potential that similarities in materials are unprotectable. … Given the discrepancy between ‘all’ and, apparently, no copying …, there is a triable issue as to whether the MFB formed a subjective good faith belief that Action Care’s sale of its OvuProof was infringing, or if instead MFB were willfully blind to the fact that Action Care was not infringing in violation of 512(f).”

Defamation and tortious interference claims based on statements to Amazon also proceeded.  (It does not appear that MFB argued that 512(f) had preemptive effect.)

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