Acosta v. Board of Trustees of UNITE HERE Health

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

MFB FERTILITY, INC.,

Plaintiff, No. 23 cv 3854

v. Judge Harry D. Leinenweber

ACTION CARE MOBILE VETERINARY

CLINIC, LLC,

Defendant.

MEMORANDUM OPINION AND ORDER

On June 6, 2023, Plaintiff (and counter-defendant) MFB Fertility, Inc., filed a two-

count complaint against Defendant (and counter-plaintiff) Action Care Mobile Veterinary

Clinic, LLC, for copyright and trademark infringement. Defendant moved to dismiss

Plaintiff’s copyright claim for failure to state a claim under Rule 12(b)(6) and levied five

counterclaims against Plaintiff for misrepresentation under 17 U.S.C. § 512(f), tortious

interference, defamation and , and cancellation of Plaintiff’s “PROOV”

trademark. Plaintiff moved to dismiss Defendant’s counterclaims.

The Court now decides Defendant’s and Plaintiff’s Motions to Dismiss. For the

reasons stated herein, the Court fully GRANTS Defendant’s Motion to Dismiss and

GRANTS Plaintiff’s in part.

I. BACKGROUND

Plaintiff MFB Fertility, Inc (“MFB”) is a Colorado-based corporation founded by

nationally recognized fertility expert Dr. Amy Beckley (“Dr. Beckley”). Dr. Beckley

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 marketplace and its website www.proovtest.com, MFB “promotes, offers for sale,

and sells products . . . under the trademark PROOV®.” (Dkt. No. 22 ¶ 27; Amended

Complaint (“Compl.”), (U.S. Registration Number: 5,622,245; International

Registration Number: 1,444,237). MFB’s PROOV branded products include

advertisements 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. MFB registered their copyrights in these materials on November 9, 2023

(“Copyrighted Works”). (Compl. ¶ 50).

Competitor and Defendant Action Care Mobile Veterinary Clinic, LLC, (“Action

Care”), a Maryland limited liability company and online retailer, similarly specializes in the

sale of PdG ovulation test strips. Action Care’s PdG test is called OvuProof, and it is sold

under the trade name Action Care Wellness (“Action Care”). In addition to using Amazon’s

marketplace, Defendant Action Care operates the website www.buyovuproof.com, where

it promotes, advertises, offers for sale, and sells its PdG products under the name

“OVUPROOF.” (Compl. ¶ 41).

On or around June 2, 2023, Plaintiff MFB, through one of MFB’s authorized

representatives, submitted a takedown notice to Amazon under the Digital Millennium

Copyright Act (“DMCA” and such takedown notice, “DMCA Takedown Notice”). This

resulted in the automatic, immediate takedown and removal of the Action Care Amazon

Product Listing Page. (Dkt. No. 15 ¶ 12, Defendant’s Answer and Counterclaims

(“Countercl.”)). Deactivation of the Action Care Amazon Product Listing Page further

resulted in at least 174 units of Action Care’s products being stranded or lost. (Countercl.

¶ 18).

In addition to including language mandated by the DMCA and by Amazon for

submission of takedown notices under the DMCA, MFB’s DMCA Takedown Notice included

the following statements:

They [Action Care] found a cheap Chinese manufacturer to copy our

tests then used of our wording on the product page and product inserts.

Copyrighted content: They copied 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.

( ¶ 13) (emphasis added).

On or around June 2, 2023, Action Care submitted a counternotice to Amazon under

the DMCA, momentarily reinstating its OvuProof product listing. But on June 17, 2023,

purportedly seeking to further protect their intellectual properties, MFB filed the instant

copyright and trademark infringement claims against Action Care. In Plaintiff’s complaint,

now amended after Defendant filed its Motion to Dismiss (Dkt. No 11, Def’s Mot. to

Dismiss), MFB alleges that Action Care “traded off the goodwill” of MFB’s PROOV

trademark in an effort “to maximize its profits” and “minimize its overhead expenses” in

Action Care’s sale of OvuProof. (Compl. ¶ 52). These violations include “text associated

with FAQ’s and product descriptions from MFB’s Amazon website and the MFB corporate

website,” and “text and information as to who might have a problem with ovulation, when

to test, what constitutes information as its own on its Amazon listing website page.” (Dkt.

No. 64 12, Complaint (Orig. Compl.”)). MFB sent its complaint to Amazon, who again

removed Action Care’s OvuProof product listing. Action Care’s purported infringement is

pictured in the following table:

sate) AUD | od LO mo) gle] K=eMN ALO) Gs DY=)c=)a\elc lala veld(e)am -NcM OlY0 cele)

MEISIIELS

Proov PdG - Progesterone Metabolite — Test OvuProof PdG Tests/Progesterone

| Only FDA-Cleared Test to Confirm Metabolite/FDA Registerea Rapid Test to

Successful Ovulation at Home | 4 Cycle Pack Confirm Successful Ovulation/Monitor

| Works Great with Ovulation Tests | 18 PdG Pregnancy/ 5 Tests/1Cycle/ Works Well

1 Test Strips with Ovulation/LH Tests/ 5 PdG Test Strips

‘ per Box

Le coMonarecan neous tem

successful pregnancy — a key piece of the puzzle when you're trying to homet Uniike traditional ovulation tests which measure LH (luteinizing

concalas. hormone) and attempt to predict ovulation. Ove" of actually contms:

"ator gel bra mene rvea al bare dg, bccn pur peee cee

. □□□ neat OAL RIGAT (OPKs) AND PREGNANCY: concn saa os soe cn

eee om cede eae. se . (OvuProot i vesigned o ssoiaely tests. Pregnancy tests. and other

Lee Sour orases ors ney rere an

5 Seeman , Sateen ae og

Proov PdG - Progesterone Metabolite — Test OvuProof PdG Tests/Progesterone

| Only FDA-Cleared Test to Confirm esi)

Successful Ovulation at Home | 4 Cycle Pack acera Ene ee Rape Test to

| Works Great with Ovulation Tests | 18 PdG enem Succes ae

3 Test Strips Pregnancy/ 5 Tests/1Cycle/ Works Well

" with Ovulation/LH Tests/ 5 PdG Test Strips

per Box

Proov PdG - Progesterone Metabolite — Test OvuProof PdG Tests/Progesterone

| Only FDA-Cleared Test to Confirm Metabolite/FDA Registerea Rapid Test to

Successful Ovulation at Home | 4 Cycle Pack Confirm Successful Ovulation/Monitor

| Works Great with Ovulation Tests | 18 PdG Pregnancy/ 5 Tests/1Cycle/ Works Well

4 Test Strips with Ovulation/LH Tests/ 5 PdG Test Strips

. A per Box

In response to MFB’s Complaint, Action Care moved to dismiss Plaintiff's copyright

claim under 12(b)(6) for failure to state a claim and levied five counterclaims against MFB

for misrepresentation under 17 U.S.C. § 512(f), tortious interference, defamation per se

and per quod, as well as cancellation of Plaintiff's “PROOV” trademark. (Def’s Mot. to

- 4 -

Dismiss ¶¶ 24-63). Reciprocating, MFB moved to dismiss Action Care’s counterclaims

under 12(b)(6). (Dkt. No. 31, Pl’s Mot. to Dismiss).

A review the parties’ complaints and the relevant case law compels the Court to

GRANT both motions, Action Care’s fully and MFB’s in part. Specifically, the following

order concludes first that MFB’s Copyrighted Works are scientific and factual. Scientific

and factual works are entitled to the narrowest copyright protections, and Plaintiff fails

to plead a cognizable basis of infringement for its Copyrighted Works. The order then

turns to MFB’s Motion to Dismiss Action Care’s counterclaims, concluding that Action Care

alleges facts sufficient to state a claim to relief that is plausible on its face for each of its

claims except for trademark cancellation.

II. LEGAL STANDARD

“‘To survive a motion to dismiss under Rule 12(b)(6), the complaint must provide

enough factual information to state a claim to relief that is plausible on its face and raise

a right to relief above the speculative level.’” , 2023 WL

3947617, *2 (date N.D. Ill. 2023) (quoting ,

887 F.3d 329, 333 (7th Cir. 2018). “‘While detailed factual allegations are not necessary

to survive a motion to dismiss, [the standard] does require ‘more than mere labels and

conclusions or a formulaic recitation of the elements of a cause of action to be considered

adequate.’” , at *2. (quoting , 931 F.3d 610, 614

(7th Cir. 2019). “A claim has facial plausibility when the plaintiff pleads factual content

that allows the court to draw the reasonable inference that the defendant is liable for the

misconduct alleged.” , 556 U.S. 662, 678 (2009). Dismissal is appropriate

only if “‘it is clear that no relief could be granted under any set of facts that could be

proved consistent with the allegations.’” , 105 F.3d 354, 356 (7th Cir.

1997) (quoting , 467 U.S. 69, 73 (1984)).

III. DEFENDANT’S MOTION TO DISMISS

A. Copyright Infringement

To state a claim for copyright infringement, a plaintiff must allege (1) ownership of a

valid copyright, and (2) copying of constituent elements of the work that are original.

, 499 U.S. 340, 361 (1991). Where, as here, direct

evidence such as an admission of copying is not available, the plaintiff must allege facts

that reasonably show that (1) the defendant had “access” — that is, a reasonable

opportunity to copy the work, and that (2) the works at issue are substantially similar in

their protectable expression. , 692 F.3d 629, 633 (7th Cir. 2012).

Though instructions, promotional materials, and warnings associated with

products like Plaintiff’s PROOV and Defendant’s OvuProof are entitled to copyright

protection, it is “axiomatic” that copyright law denies protection to “fragmentary words

and phrases” and to “forms of expression ” on

the grounds that these materials do not exhibit the minimal level of creativity necessary

to warrant copyright protection. , 2017 WL

4954698, at *7 (N.D. Ind. Oct. 30, 2017) (emphasis added). In contexts where

opportunities for originality are indeed limited by functional requirements, “the substantial

similarity requirement is particularly hard to satisfy,” requiring a threshold showing of

“striking” similarity or verbatim copying. ,

858 F.3d 1093, 1101 (7th Cir. 2017) (“A similarity may be striking without being

suspicious”). Absent verbatim copying or “striking” similarity, no infringement exists both

because language 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. , 889 F. Supp. 343,

345 (N.D. Ill. 1995) (conceding that defendant Roshco expressed many of the same ideas

as competitor and Plaintiff Sassafras but granting summary judgment because the

copying was not verbatim).

Action Care does not dispute at this stage that MFB owns a valid copyright in their

PROOV Copyrighted Works nor that it had access. Instead, Action Care purports that its

OvuProof digital properties are not “substantially similar (let alone strikingly similar) to

the PROOV Content as a matter of law.” (Def’s Mot. to Dismiss at 5). MFB encourages

the Court to deny Defendant Action Care’s Motion to Dismiss because the cases which

Action Care relies on are “inapposite.” (Dkt. No. 23; MFB’s Response to Defendant’s Partial

Motion to Dismiss at 11 (“MFB Resp. to Mot. To Dismiss”)).

The Court agrees that cases Defendants cited are not direct fits for this case, but

they remain instructive and suggest dismissal at this stage would be appropriate. In

, for instance, plaintiffs alleged that the

defendant conspired to steal their copyrighted property by producing and distributing an

episodic television program “very similar” to the plaintiff’s. 2018 WL 4467147 (N.D. Ill.

Sept. 18, 2018). The court granted the defendant’s motion to dismiss

despite similarities between the two works, including the “conflict-of-loyalty” theme, use

of the phrase “If These Walls Could Talk” in each respective title, and characters with

shared characteristics, such as being an atheist or a single mother whose children have

loyalty issues. , at *8. The court held that the plaintiffs failed to plead

substantial similarities between the disputed materials, reasoning in part that:

Copyright protects those elements of a work that possess originality,

with originality requiring that the elements be independently created and

possess at least some minimal degree of creativity. Moreover, it is only the

form of an author’s expression that is protectable, not the facts or ideas

being expressed. When an idea is capable of very few expressions, the idea

and its expression merge and the expression may not be copyrighted.”

(internal quotation marks omitted).

MFB correctly observes that is distinguishable because that case

turned on creative plot devices, whereas this case concerns predominately scientific

descriptions associated with fertility products. However, ’s distinction

between facts and ideas encapsulates the “delicate equilibrium” copyright law seeks to

strike between affording protection to authors as an incentive to create and appropriately

limiting the extent of that protection to avoid the effects of monopolistic stagnation.

, 889 F. Supp. at 346 (quoting

, 982 F.2d 693, 696 (2d Cir. 1992)). In maintenance of this delicate equilibrium, “the

Copyright Act does not protect general ideas, but only the particular of an

idea.” , 722 F.3d 1089, 1094 (7th Cir. 2013) (emphasis added). The

court maintained that equilibrium by dismissing the plaintiff’s complaint,

as the infringement claim concerned “commonplace themes [] too general to be

protected,” and thus were insufficiently creative. 2018 WL 4467147, at *8.

This equilibrium was again maintained in

, a case that is directly applicable to the alleged infringement here. The plaintiff

– an automative parts and supplies manufacturer – alleged that the defendant infringed

on its copyright for materials related to its competing carburetor and choke cleaner. 2017

WL 4954698, at *1 (N.D. Ind. Oct. 30, 2017). The plaintiff took issue with the

defendant’s carburetor image included on its packaging, its “nearly identical” shape and

name (both products were called the “Carb & Choke Cleaner”), as well as the instructions

and warnings sold alongside defendant’s products. 2017 WL 4954698, at *4, *7. This

included the defendant’s instructions to: “Remove air filter and spray exterior and interior

of carburetor. While engine is idling spray short bursts inside carburetor intake. Also ( )

can be used as general-purpose degreaser when working with varnished parts of engine.”

, at *10. These instructions allegedly infringed on the plaintiff’s instructions, which

read: “Remove the air filter and spray exterior carburetor linkage. To remove gum and

varnish from the throttle plate, spray short bursts into the carburetor bowl while the

engine is idling.”

Although the court found that the plaintiff had a valid copyright on the instructions

and warning label, there was insufficient similarity because the plaintiff had “no monopoly

on the method of cleaning a carburetor.” , at *10. This was “especially” true when “the

words and phrases are necessary to describe an unprotected process.” , citing

, 79 Fed. App’x. 904, 906-07 (7th Cir. 2003). Any copying failed

to constitute infringement because “[o]nly a small portion of the Defendants' text is

verbatim, and that portion of the text is necessary to communicate the required warnings

and describe to the consumer how to use the product, a process on which ABRO does

not hold a monopoly.” , at *11.

A review of MFB’s complaint reveals that there is also no verbatim copying here.

In addition to the photos MFB provided in its Amended Complaint pictured in Section I,

MFB claims Action Care infringed on its intellectual properties because:

• “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.”

(Compl. ¶¶ 57-60, 62)

As in , “[t]here is nothing unique about placing the name of the company

and the name of a product at the top of a product's packaging with a descriptive image

below that text and with instructions and legally mandated warnings wrapped around the

remainder of a product's packaging.” 2017 WL 4954698, at *7. 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. 21 C.F.R. §

809.10. Those requirements mandate in vitro product labels to include the product’s name

and intended use(s), a statement of warnings or precautions, as well as “[i]nstructions

for a simple method by which the user can reasonably determine that the product meets

its appropriate standards.” For reagents (i.e., a substance or mixture for use in

chemical analysis) like MFB’s PROOV and Defendant’s OvuProof, the label must also

include “a declaration of the established name (common or usual name), if any, and

quantity, proportion or concentration of each reactive ingredient.” 21 C.F.R. §

809.10(a)(3). In , the Supreme Court noted that the originality

requirement for copyright protection may not be met when disclosures are made to

adhere to legislation. 499 U.S. at 363 (“one could plausibly conclude that this selection

was dictated by state law, not by” the plaintiff’s original creativity). This functional,

regulated language is precisely the “expression” that MFB improperly claims intellectual

property over.

To the extent that Action Care has directly copied from MFB, its copying is 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” when selling its

vaccinations. As MFB does not otherwise allege any facts indicating that Action Care

copied its Copyrighted Works verbatim or near-verbatim, MFB has failed to state a claim

for copyright infringement. The claim is DISMISSED.

IV. PLAINTIFF’S MOTION TO DISMISS

A. Misrepresentation

The legal standard for a motion to dismiss a counterclaim is the same as for a

motion to dismiss a complaint. , 250

F.3d 570, 574 (7th Cir.2001). Count One of Action Care’s counterclaims alleges that MFB

violated 17 U.S.C. § 512(f) by knowingly and materially misrepresenting that the content

contained on the Action Care Amazon Product Listing Page infringed upon MFB’s

Copyrighted Works in its June 2, 2023, DMCA notice to Amazon marketplace. A copyright

owner who submits a takedown notice to a service provider must include a statement,

under penalty of perjury, that it has “a good faith belief that use of the material in the

manner complained of is not authorized by the copyright owner.” 17 § 512(c)(3)(A)(v)–

(vi); , 437 F. Supp. 3d 382 (S.D.N.Y. 2020).

As Action Care notes, Section 512(f)’s case law is sparse on the district court level

in the Seventh Circuit. , 2022 WL 742429, at *4 (“There is

limited case law in the Seventh Circuit interpreting a cause of action based on 17 U.S.C.

§ 512(f).”). In fact, almost no circuit-level cases exist regarding Section 512(f)’s

knowledge requirement, with the Ninth Circuit again being the only one to have ruled on

it. , 815 F.3d 1145 (9th Cir. 2015),

, 582 U.S. 914 (2017); , 391 F.3d

1000 (9th Cir. 2004). In its recent decision, the Ninth Circuit

held that Section 512(f) also requires that a DMCA notice submitter like MFB must also

proactively consider the potential that similarities in materials are unprotectable. 815 F.3d

at 1153-54. Following the Ninth Circuit’s lead, courts in this Circuit require plaintiffs to

show “actual knowledge,” i.e., that the defendants knew that they were making a material

misrepresentation in a DMCA takedown notice. , 2022 WL

742429, at *4.

MFB errantly relies on to convince the Court that Action Care’s

allegations fail to sufficiently show knowing misrepresentation under § 512(f). 437 F.

Supp. 382. In , Defendant Carl Benjamin – a YouTube content creator committed

to anti-ideological and anti-identitarian content – posted a video titled

, made exclusively of clips from plaintiff Akilah Hughes’s video

. at 387. Hughes’s 9-minute and 50 seconds video chronicled and

reflected on her experience during the 2016 presidential election, attending then-

candidate Hillary Clinton’s election party. . Benjamin’s video ran for 1-minute and 58

seconds, solely containing clips from Hughes’s video. at 388. Hughes then submitted

a DMCA takedown notice. In his DMCA counter notification, Benjamin claimed that his

video was not infringing because it was “entirely transformative” and “intended for

parody.” Based on Benjamin’s counter notification, Hughes sued for misrepresentation

under § 512(f), arguing that the video was not, in fact, transformative. The

court dismissed Hughes’s 512(f) misrepresentation claim because whether the video was

“transformative” was factually true, so any suggestion Benjamin’s misrepresentation was

“implausible” as a matter of law. at 395 (“it is self-evident that a statement cannot be

a ‘misrepresentation’ for purposes of 17 U.S.C. § 512(f) if it is factually accurate.”)

(internal quotation marks omitted).

Here, MFB likens its notification to Benjamin’s, and Action Care’s 512(f)

misrepresentation claim to Hughes’s. This differs from Action Care’s allegations because

MFB’s DMCA notification represents that Action Care copied “all” of MFB’s Copyrighted

Works. (Countercl. ¶ 26). The word “all” means 100 percent, or verbatim.

, 872 F.2d 208, 213 (7th Cir. 1989). Recalling this Court’s

finding above that MFB has failed to state a claim for copyright infringement because

Action Care’s OvuProof materials were not verbatim copies of MFB’s Copyrighted Works,

the fact that Action Care copied “all” of MFB’s materials is false as a matter of law,

rendering Action Care’s allegations significantly more plausible than the claimant.

Moreover, as the Ninth Circuit’s more recent decision has indicated, the

knowledge requirement of Section 512(f) can be met not only through a showing of actual

knowledge, but also through a showing of willful blindness. 815 F.3d at 1155;

, 563 U.S. 754, 766–70 (2011) (clarifying that a

statutory knowledge requirement may be satisfied not only by proof that the defendant

had actual knowledge of the relevant facts, but also by evidence of the defendant’s willful

blindness). A person is willfully blind to a fact if the person (1) “subjectively believe[s]

that there is a high probability that [the] fact exists” and (2) “take[s] deliberate actions

to avoid learning of that fact.” , 563 U.S. at 769. Willful blindness is legal

equivalent to actual knowledge because a defendant “who takes deliberate actions to

avoid confirming a high probability of wrongdoing” is as culpable as one who acts with

actual knowledge and “can almost be said to have actually known the critical facts.”

Therefore, in addition to actual knowledge of a misrepresentation, a DMCA notice

submitter like MFB violates Section 512(f) if the submitter chooses not to “confirm a high

probability” that material is not infringing.

Various types of behavior can meet this standard. Of note, “‘ostrich-like’ business

practices amount to willful blindness.” , 249 F. App’x 476, 479

(7th Cir. 2007). “Conscious avoidance of information is a form of knowledge,” and

qualifies as ostrich behavior. , 569 F.3d 677, 680 (7th Cir. 2009). If a party

fails to inquire into relevant circumstances due to a fear “of what the inquiry would yield,”

this also amounts to willful blindness. , 875 F.2d 584, 590 (7th

Cir. 1989).

Although involved a motion for summary judgment, that decision is

nevertheless instructive with respect to the issue presently before the Court.

supports the conclusion that whether 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. 815 F.3d at 1154;

, 2021 WL 916307 (C.D. Cal. Mar. 10, 2021) (denying dismissal under 512(f) where

plaintiff alleged that the defendant’s DMCA notification misrepresented that plaintiff

copied intellectual properties “verbatim” without alleging additional facts). “Because the

DMCA requires consideration of fair use prior to sending a takedown notification, a jury

must determine whether [MFB’s] actions were sufficient to form a subjective good faith

belief about the video's fair use or lack thereof.” , 815 F.3d at 1154.

Applying this logic, a DMCA notice submitter like MFB must proactively consider the

potential that similarities in materials are unprotectable. Failure to do so can form the

basis of a finding of willful blindness and, therefore, knowledge for purposes of Section

512(f). Action Care alleged that MFB’s takedown notice misrepresented that it maintained

a subjective good-faith belief that Action Care copied “all” of MFB’s wording because there

is no genuine indication (see ) that Action Care copied MFB beyond what was

medically and legally necessary. (Countercl. ¶¶ 13, 24.). Given the discrepancy between

“all” and, apparently, no copying (see ), there is a triable issue as to whether the

MFB formed a subjective good faith belief that Action Care’s sale of its OvoProof was

infringing, or if instead MFB were willfully blind to the fact that Action Care was not

infringing in violation of 512(f). , 815 F.3d at 1151. Thus, Action Care has sufficiently

alleged that MFB had the requisite level of knowledge when MFB submitted the DMCA

Takedown Notice.

B. Defamation

Counts Two and Three of Action Care’s counterclaims allege that MFB committed

defamation and defamation . MFB requests that the Court dismiss Action

Care’s counterclaim for defamation because the alleged statements were made in

anticipation of litigation and are capable of innocent construction. Neither of these

arguments justify dismissal.

MFB first points to , which held that DMCA

takedown notices submitted to Amazon are “absolutely privileged” because the notice

and takedown period may result in litigation if either party disagrees with Amazon’s

assessment. 2022 WL 742429, at *3. But the order dismissing plaintiff’s claims

regarded defendants who were attorneys. The Court did not see any problem with

awarding default judgment for all The Sunny Factory’s alleged claims (including for

defamation and defamation ) against the non-attorney (noting that default

judgment was granted against Fuxi). , 21-CV-3648, Dkt. 21, at *2

(Feb. 16, 2022) (final judgment order against defaulting defendant). Notably, in its order

awarding default judgment against the non-attorney defendant, the Court included a

mandate enjoining the non-attorney defendant from:

Knowingly making false, frivolous, and defamatory claims in, on or to

the online marketplace Amazon.com (“Amazon”) by falsely claiming that

Plaintiff markets or sells candles on Amazon.com that infringe on Defaulting

Defendant’s intellectual property rights in violation of the processes laid out

by the Digital Millennium Copyright Act.

( )

MFB is neither an attorney nor a law firm. Further, Action Care does not allege

that MFB’s DMCA Takedown Notice was submitted by an attorney. While Action Care

notes that Jeffrey Schell, an intellectual property attorney, is part of MFB’s management,

Action Care does not allege that Schell was the one who submitted the DMCA Takedown

Notice. ( Countercl. ¶¶12, 46.) Dismissal under is unwarranted.

MFB’s second contention that its DMCA notice could be innocently construed also

fails to justify dismissal. While the innocent construction doctrine may serve as a defense

in defamation actions, it does not help MFB here. “In considering allegedly defamatory

statements under the innocent construction rule, courts must interpret the words ‘as they

appeared to have been used and according to the idea they intended to convey to the

reasonable reader.’” , 553 F.3d 527, 533

(7th Cir. 2009) (quoting , 174 Ill. 2d 77, 93 (Ill. 1996)).

The Court is not obligated to engage in mental gymnastics to find the most innocent

possible message. , 553 F.3d at 533 (“The rule does not require courts

to strain to find an unnatural innocent meaning for a statement when a defamatory

meaning is far more reasonable.”) (internal quotation marks omitted). Courts are not

obligated to be naïve. “When a defamatory meaning was clearly intended and

conveyed, Illinois courts will not strain to interpret allegedly defamatory words in their

mildest and most inoffensive sense in order to hold them nonlibellous under the innocent

construction rule.” (cleaned up).

MFB latches on to MFB’s use of the pronoun “They” (as opposed to “Action Care” or

some other specific name) to identify the party who “found a cheap Chinese manufacturer

to copy our tests then used all of our wording on the product page and product inserts.”

(Def’s Mot. to Dismiss at 12.) MFB cites to in support of

MFB’s position. 2022 WL 874625 (N.D. Ill. Mar. 24, 2022). The main difference between

and the instant case is that the communications with Amazon in

specified multiple people who had engaged in violations. Thus, the

statements at issue were deemed innocent because it was unclear if it was the plaintiff

that was being identified in the allegedly libelous statement. , 2022 WL 874625, at *10

(“the innocent construction rule requires the Court to read this statement as referring to

the Lius rather than to the plaintiff, Milo.”).

Here, the DMCA Takedown Notice does not mention any party by name. It does,

however, make it clear that the pronoun “They” refers to the same person as the one

who “used all of our wording on the product page and product inserts.” Unlike the

defendant in (who did not initiate that particular litigation), MFB made it abundantly

clear whom it had identified in the DMCA Takedown Notice by instituting this suit against

solely Action Care. MFB had identified Action Care as the sole alleged infringer of MFB’s

rights. The only reasonable interpretation of the word “They” in the DMCA Takedown

Notice is in relation to the owner of the Amazon listing that was the subject of MFB’s

takedown notice and ensuing litigation – Action Care. Hence, Action Care alleged

sufficient facts to sustain its claim for defamation .

MFB attacks Action Care’s claims for defamation by arguing Action Care

fails to identify any special damages. Unlike defamation , where harm to the plaintiff

is presumed, defamation requires the plaintiff to identify special damages

caused by the unprivileged false statement. , 174

Ill.2d 77, 103 (Ill. 1996). The Seventh Circuit has clarified that “it is enough to identify a

concrete loss” to satisfy requirements of defamation claims.

, 734 F.3d 610, 614 (7th Cir. 2013). It is sufficient to identify “specific

business opportunities that had been available to [plaintiff] earlier but that, following the

defendants’ statements, were available no more.”

MFB’s statements caused Amazon to deactivate Action Care’s listing, which in turn

“resulted in Action Care’s inability to distribute Action Care’s Products through Amazon.”

(Countercl. ¶ 17.) Under the Seventh Circuit’s standard, that is sufficient by itself, but

Action Care also alleges additional concrete losses. For instance, in the immediate

aftermath of the deactivation of Action Care’s listing on Amazon, “at least 174 units of

Action Care’s products [were] stranded or lost.” ( ¶ 18.). Hence, Action Care pleads

sufficient injury for purposes of a defamation claim in the period between the

initial removal of the listing and the brief reinstatement.

C. Tortious Interference

MFB attempts to dismiss Action Care’s counterclaim for tortious interference based

on Action Care’s alleged failure to identify how MFB engaged in an intentional and

unjustified interference with Action Care’s economic advantage. (Def’s Mot. to Dismiss at

9.) MFB correctly names the four elements of a tortious interference claim under Illinois

law, of which the existence of an intentional and unjustified interference is just one sub-

element. , 497 F. Supp. 3d 319, 337 (N.D. Ill.

2020) (citing , 806 F.3d 967, 971 (7th Cir. 2015). The Court

therefore construes MFB’s silence with respect to the other elements as conceding that

Action Care has sufficiently pleaded those other elements.

The Seventh Circuit has explicitly acknowledged that an attempt to prevent

product distribution by contacting a third party and asserting meritless copyright claims

leads to exposure for tortious interference. , 755

F.3d 496, 499 (7th Cir. 2014). In , the Conan Doyle estate attempted to stop a

writer’s use of public domain content. The estate sought to prevent distribution of

Klinger’s book “by asking Amazon and other big book retailers not to carry it.” The

Seventh Circuit determined that “Klinger could have sued the estate for having committed

tortious interference with advantageous business relations by intimidating his publisher.”

In a subsequent order awarding attorneys’ fees to Klinger, the Seventh Circuit noted

that “the estate was playing with fire in asking Amazon and other booksellers to cooperate

with it in enforcing its nonexistent copyright claims against Klinger.” 761 F.3d 789, 792

(7th Cir. 2014). The court equated the Doyle estate’s actions to an attempt to cause a

boycott of Klinger’s products by enlisting Klinger’s “suppliers of essential distribution

services.”

Here, MFB also communicated with Amazon – a supplier of essential distribution

services for Action Care. (Countercl. ¶¶ 10–12.) The underlying implication with any

DMCA takedown notice is that if the online service provider (OSP) like Amazon does not

comply with the takedown notice, the OSP will expose itself to a lawsuit.

, 334 F.3d 643, 655 (7th Cir. 2003) (“The common element of [the

DMCA’s] safe harbors is that the service provider must do what it can reasonably be asked

to do to prevent the use of its service by ‘repeat infringers.’”). As a result, the submission

of the allegedly bogus DMCA Takedown Notice effectively operated as a threat to sue

Amazon if Amazon failed to acquiesce to MFB’s demand to prevent OvuProof’s listing. As

discussed, MFB’s copyright infringement claim fails because there is no substantial

similarity as a matter of law with respect to the protectable elements contained in MFB’s

work. Unprotectable elements in a work are available for use by any party and are the

equivalent of the public domain materials at issue in . 761 F.3d 789;

, 2022 WL 1134851, at *4 (D.N.J. Apr. 18, 2022) (“The

Court agrees . . . that factual disputes regarding the validity of Plaintiffs’ complaints to

Amazon are inappropriate for resolution at the pleadings stage.”) A reasonable inference

can be made that MFB’s DMCA “threat” was unjustified sufficient to state a claim for

tortious interference.

As for the intentionality of MFB’s conduct, MFB wanted to cause the immediate

removal of Action Care’s Amazon product listing. By abusing the takedown process – that

is, filing a DMCA notice without a good faith belief that Action Care infringed on MFB’s

Copyrighted Works – MFB exposed its intent. Construing the facts in a light most favorable

to Action Care, MFB’s motion relating to Action Care’s tortious interference counterclaim

must be denied. A claim has been stated.

D. Trademark Cancellation

Finally, Count V of Action Care’s counterclaims for Cancellation should be dismissed

for failure to state a claim. If, as here, the disputed mark (MFB’s PROOV mark) has been

registered for 5 years or fewer, any grounds may be stated for cancellation, including

traditional arguments such as likelihood of confusion, false identification, or that the mark

is merely descriptive. 15 U.S.C § 1064(1); ,

2017 WL 4785792 (S.D. Ill. Oct. 20, 2017).

Action Care has failed to allege that a likelihood of confusion exists between MFB’s

registered trademark PROOV, and Action Care’s “OVUPROOF” product name. To the

contrary, Action Care has asserted there is no likelihood of confusion between the marks

at issue: “MFB’s trademark infringement claim fails because the PROOV mark and the

OVUPROOF mark differ in the numbers of syllables, spellings, and overall impressions,

such that there is no likelihood of consumer confusion.” (Countercl. ¶ 19). Action Care’s

assertion of no likelihood of confusion therefore contradicts its pleading that the

registration of the PROOV trademark “is causing irreparable harm to Action Care.”

(Countercl. ¶ 62). Thus, Action Care has not pleaded facts to confer standing. Action

Care’s Counterclaim for Cancellation is dismissed.

V. CONCLUSION

For the reasons stated above, Defendant’s Motion to Dismiss is fully GRANTED (Dkt.

No. 10), Plaintiff’s Motion to Dismiss partially GRANTED (Dkt. No. 31). Plaintiff's Motion

to Amend is DENIED as moot (Dkt. No. 22).

IT IS SO ORDERED.

Harry D. Leinenweber, Judge

United States District Court

Dated: 4/22/2024

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