Federal Circuit IP

Crocs v. Dawgs

By Lawrence R. Furan Published October 16, 2024

Case No. 22-2160, Precedential, (Fed. Cir. Oct. 3, 2024)

Reyna, Cunningham, Albright

Facts/Background:

  • Crocs sued Dawgs for patent infringement.
  • Dawgs counterclaimed for false advertising under § 43(a) of the Lanham Act.
    • Crocs falsely described its “Croslite” material as “patented.”
    • Dawgs alleges that this was an attempt to mislead customers to believe that Crocs are made of a material that is different than any other footwear.
  • Dawgs lost on summary judgment for both §§ 43(a)(A) and (B). Dawgs appealed on B: “misrepresents the nature characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.”

Issue: is misrepresenting a composition as “patented” actionable under § 43(a)(1)(B) of the Lanham Act?

Holding:  yes, when it relates to the nature, characteristics, or qualities of one’s own products and the products of one’s competitors.

Analysis:

  • The district court concluded that the terms “patented,” “proprietary,” and “exclusive” were claims of “inventorship,” which relate to false designation of authorship rather than a false advertising claim under § 43(a) of the Lanham Act, citing Dastar and Baden.
    • Dastar: plagiarism and pirating of a World War II television series
    • Baden: Molten USA, Inc. advertised basketballs as “innovative,” but did not mislead customers into believing that Molten was the originator of this technology.
      • More analogous, but still hinges on the concept of authorship/inventorship.
    • At least one circuit court has suggested that some false authorship claims could fall under § 43(a)(1)(B)’s prohibition on false advertising.
  • There is a fine difference here from Baden: the court believed that Crocs was using the claim that their material is “patented” to make specific claims about its properties, rather than its inventorship.

Takeaways:

  • Section 43(a)(1)(B) can be used where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product.