Name of Assigned Judge Sitting Judge if Other or Magistrate Judge Rebecca R. Pallmeyer than Assigned Judge
Written Opinion. Defendant's motion to dismiss (52) is granted in part and denied in part. Counts I and II are dismissed. Counts III, IV, and V survive this motion. Defendants are directed to file their answer to those counts within 21 days. Status conference is set for October 26, 2012, at 9:30 a.m. Parties are directed to meet prior to the status to discuss a possible settlement. (For further details see minute order.)
O[ For further details see text below.] Notices mailed by Judicial staff.
Plaintiff Invent Worldwide Consulting, LLC, alleges that Defendant, AbsolutelyNew, Inc., posted false and defamatory statements concerning Plaintiff on Defendant's website. Defendant moves to dismiss the five-count complaint. For the reasons described here, the motion is granted in part and denied in part.
Plaintiff Invent Worldwide Consulting, LLC, is in the business of "consulting with inventors of ideas to assist them in obtaining legal protection for their idea, and to locate manufacturers and retailers who may be interested in the new product." (Complaint , ¶ 2.) Defendant Absolutely New, Inc., a California corporation, is engaged in a similar business (Complaint ¶ 6) and operated a website, www.SellMyInventionIdea.com., on which it posted disparaging and allegedly false information concerning Plaintiff's business. Specifically, the website included a copy of Plaintiff's trademark, followed by this language suggesting that the testimonials that appear on Plaintiff's website are phony:
This company has been in business for only 7 months, but the testimonials on their website are from customers that have been satisfied with them for over 3 years in some cases. Obviously these are fake testimonials. This company is lying to misrepresent their potential clients, they're not certified by the BBB or the United Inventors Association. Invent Worldwide Consulting has scam and fraud written all over it! Here is the link to their "testimonials." http://inventworldwide.com/testimonials.html (Complaint, ¶ 41; Exhibit D.) After Plaintiff complained, Defendant removed Plaintiff's logo from its website, but added the following language:
We cannot post up the testimonials that are clearly fake because of a copyright complaint from his company. Obviously they're not happy with this website exposing their shady business practices and protecting inventors from scams. (Complaint, ¶ 39; Exhibit G.) Plaintiff alleges, in addition, that a google search for its own name, "Invent Worldwide Consulting" can take the user to the SellMyInventionIdea site with its false and disparaging comments about Plaintiff's services; Plaintiff believes that Defendant engineered this result by using Plaintiff's trademark in the source code for Defendant's own website. (Complaint ¶ 38.) One of Plaintiff's clients, an inventor, reported that a representative of Defendant spoke to the client by telephone and told the client that Plaintiff was a "scam" and a "clearinghouse," reducing the client to tears. (Complaint, ¶¶ 52, 53.)
Plaintiff alleges Defendant's conduct supports five claims: copyright infringement (Count I); trademark infringement (Count II); unfair and deceptive business practices in violation of the Lanham Act (Count III); a violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (Count IV); and "trade defamation" (Count V). Defendant moves to dismiss all five of these counts pursuant to FED. R. CIV. P. 12(b)(6). The court addresses each claim briefly.
The copyright claim requires little discussion. To state a claim for direct copyright infringement, a plaintiff must allege facts setting forth (1) ownership of a valid copyright in a work and (2) the copying of elements of the work that are original. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., (1991). Plaintiff in this case has not identified any copyrighted work, nor has Plaintiff alleged copying of any original elements of any copyrighted material. Indeed, as Defendant points out (Defendants' Reply Memorandum  at 2), Plaintiff's response to the motion to dismiss made no mention of the copyright infringement count. That claim (Count I) is dismissed.
Plaintiff has alleged a protectable trademark, but the court concludes the allegations are nevertheless insufficient to support a trademark infringement claim. To prevail on such a claim under the Lanham Act, 15 U.S.C. § 1125(a) or at common law, a plaintiff must demonstrate that it has a protectable trademark and that the defendant's use of the mark is likely to cause confusion among consumers. Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 811 (7th Cir. 2002); Jim Mullen Charitable Foundation v. World Ability Federation, NFP, 395 Ill. App.3d 746, 753, 917 N.E.2d 1098, 1104 (1st Dist. 2009). Plaintiff and Defendant AbsolutelyNew are competitors. Plaintiff here has alleged that Defendants AbsolutelyNew and its principal, Defendant Jose Costello, have made false and disparaging statements concerning the nature and quality of the services provided by Plaintiff. Nothing about these allegations supports the ...