The parties do not dispute that a one-year limitations period applies to UGSI's trade libel claim under Illinois law. See 735 ILCS 5/13-201 (one-year limitations period for libel); Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075, 1078 (N.D. Ill. 2001) (applying the libel limitations period to trade libel). California courts dispute whether the statute of limitations for trade libel is one or two years.
Similarly, false or misleading statements communicated to a customer in the context of negotiating a transaction is not actionable under the Lanham Act because it is neither advertising or promotion. Johnson Controls, Inc., v. Exide Corp., 152 F. Supp. 2d 1075, 1081-82 (N.D. Ill. 2001) (Shadur, J.) In this case, the Court finds that Segerdahl's statements made within its Master Supply Agreements are outside of the scope of "commercial advertising or promotion" and thus not actionable under the Lanham Act.
See Seven-Up, 86 F.3d at 1385. Defendant Racor's reliance on Johnson Controls v. Exide Corp., 152 F.Supp.2d 1075 (N.D. Ill. 2001), is unavailing. In Johnson Controls, the parties both bid on a contract to supply automotive batteries to Sears.
Several courts in this District have applied the ICFA's three-year limitations period to Lanham Act claims. See Sarkis' Cafe, Inc. v. Sarks in the Park, LLC, No. 12 C 9686, 2013 WL 6632741, at *3 (N.D. Ill. Dec. 16, 2013); Ford v. Levy, No. 04 C 8356, 2006 WL 8461525, at *1-2 (N.D. Ill. Apr. 10, 2006); Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075, 1079 (N.D. Ill. 2001); see also Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 793-94 (7th Cir. 2002) (noting without comment that the district court applied the ICFA's statute of limitations period to the plaintiff's Lanham Act claims). This Court agrees that Illinois's most analogous statute is the ICFA.
In Johnson Controls, Inc. v. Exide Corp., the district court held that "misrepresentations made to a single customer in the context of negotiating a transaction cannot constitute 'advertising' or 'promotion' in the statutory sense." 152 F. Supp. 2d 1075, 1082-82 (N.D. Ill. 2001). As Plaintiffs have pled and conceive their case, though, that is not what happened in this case.
"Because the Lanham Act does not itself contain an explicit statute of limitations, federal courts refer to analogous state statutes of limitations in applying the corresponding presumption of laches in asserting a Lanham Act claim." Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075, 1079 (N.D. Ill. 2001) (citing Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 821 (7th Cir. 1999)). The courts in this circuit have held that the most analogous Illinois limitation period is the three-year-statute of limitations found in ICFA.
While the representations need not be made in a "classic advertising campaign," but may consist instead of more informal types of "promotion," the representations (4) must be disseminated sufficiently to the relevant purchasing public to constitute "advertising" or "promotion" within that industry.Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075, 1081 (N.D. Ill. 2001). "When deciding if speech is commercial, appropriate considerations include whether: (1) the speech is an advertisement; (2) the speech refers to a specific product; and (3) the speaker has an economic motivation for the speech." United States v. Benson, 561 F.3d 718, 725 (7th Cir. 2009) (citing Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 66-67 (1983)).
Id. (citing Solers, Inc. v. Hartford Cas. Ins. Co., 36 F. App'x 740, 743 (4th Cir. 2002); Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075, 1081-82 (N.D. Ill. 2001); C=Holdings B.V. v. Asiarim Corp., 992 F. Supp. 2d 223, 243 (S.D.N.Y. 2013)). Par, citing Neuros Co. v. KTurbo, Inc., 698 F.3d 514, 522 (7th Cir. 2012) and Lidochem, Inc. v. Stoller Enters., Inc., 500 F. App'x 373, 381 (6th Cir. 2012), responds only that misrepresentations to "specialized . . . purchasers" may qualify as "advertising" or "promotion," despite the fact that they are not disseminated to the public at large.
Numerous district courts have concluded that purely private communications and other messages that are not publicly disseminated are not “advertising” or “promotion” as contemplated by Section 1125(a)(1)(B). See, e.g., Nw. Strategies, Inc. v. Buck Med. Servs., 927 F.Supp. 1343, 1346 (W.D.Wash.1996) (rejecting claim when false statement in bid proposal was “not disseminated in interstate commerce”); H & R Indus., Inc. v. Kirshner, 899 F.Supp. 995, 1005 (E.D.N.Y.1995) (holding advertisement must be “disseminated sufficiently to the relevant purchasing public”); Garland Co. v. Ecology Roof Sys. Corp., 895 F.Supp. 274, 279 (D.Kan.1995) (concluding that “ ‘commercial advertising or promotion’ involves a notion of public dissemination”); see also Johnson Controls, Inc. v. Exide Corp., 152 F.Supp.2d 1075, 1081–82 (N.D.Ill.2001) (“Numerous courts have held ... that misrepresentations made to a single customer in the context of negotiating a transaction cannot constitute ‘advertising’ or ‘promotion’ in the statutory sense.”) (citing Garland, 895 F.Supp. at 279). The court finds these decisions persuasive and entirely consistent with the express language of the Lanham Act.
GPN also cites three cases from district courts within the Seventh Circuit to argue that its Lanham Act claim is legally sufficient. One of them, Johnson Controls, Inc. v. Exide Corp., 152 F. Supp. 2d 1075 (N.D. Ill. 2001), predates First Health and thus does not reflect how courts should apply First Health and ISI Int'l. In another, Chicago Consulting Actuaries, LLC v. Scrol, No. 05 C 1320, 2005 WL 819555 (N.D. Ill. Apr. 6, 2005), the court concluded that "personal sales calls" and "person-to-person promotional encounters" were not commercial advertising and promotion.