CrossFit, Inc., the high-intensity fitness company with a reputation for diligently protecting its trademarks, has been pursuing a seemingly routine infringement action against a Chelmsford, MA gym for nearly a year. Recently, however, the case took an unexpected turn when a CrossFit executive was revealed as the voice behind the CrossFit Ripoff Report (the “Ripoff Report”), a website devoted to identifying—and advising its readers to avoid—gyms that advertise CrossFit training but are not licensed CrossFit affiliates.
In June 2013, CrossFit sued Donny Mustapha, owner of the Chelmsford Sports Club, for infringing on its trademark by offering “CrossFit style training.” CrossFit contended that Mustapha was not a licensed, dues-paying CrossFit affiliate. In response, Mustapha argued that CrossFit had abandoned its trademark by failing to police its use by third parties and by engaging in naked licensing. Mustapha also counterclaimed that certain negative online comments about his gym posted by CrossFit members and encouraged by the Ripoff Report were defamatory.
Initially, CrossFit denied any relationship to the Ripoff Report and sought dismissal of Mustapha’s defamation counterclaims. The court has since rejected all but one of the counterclaims on First Amendment grounds, but not before Mustapha was able to prove, based on a subpoena of the website’s domain name information, that the Ripoff Report was in fact created and published by CrossFit’s social media director. In a recent interview, CrossFit’s general counsel said he was “surprised” to learn of the executive’s involvement.
From a trademark law perspective, regardless of whether the Ripoff Report was created independently by an employee or was authorized by CrossFit itself, the website is a useful way for CrossFit to monitor and raise awareness of infringing use of its trademark. Federal trademark law requires trademark owners to take affirmative steps to enforce their marks to prevent abandonment of trademark rights. As an infringement watchdog, the Ripoff Report helps CrossFit defend against claims that CrossFit abandoned its mark, or that the mark has become generic—a fate that has befallen a number of well-known trademarks over the years, including ASPIRIN and THERMOS, and, more recently, PILATES.
From a marketing perspective, the effects of the Ripoff Report are less clear. CrossFit may have viewed the Ripoff Report as a dynamic guerilla marketing effort—a supposedly fan-created alternative to the company’s existing IP infringement reporting system. The Ripoff Report claims it was “created by the CrossFit community, for the CrossFit community.” Such sites can help build brand awareness, foster a sense of community around the brand, and help deter potential counterfeiters and grey marketeers. Once it was revealed to be part of an astroturfing advocacy campaign created by CrossFit itself, however, the credibility of the site’s image of a grassroots community united to protect the CrossFit brand was undermined. Moreover, one has to question whether better control and monitoring of content on the Ripoff Report website could have avoided the defamation counterclaim the company is now facing, and all the costs and headaches that may arise from that litigation.
Trademark owners who are interested in using websites, blogs, and other social media to protect and develop their brands need to make sure that the message is controlled by the company, and not its employees. Although the question of whether the CrossFit employee who was operating the website was authorized by CrossFit to do so may have legal ramifications in court, in the marketplace it falls to CrossFit to clean up the mess left behind.
The case is CrossFit, Inc. v. Mustapha, case number 13-11498-FDS, in the U.S. District Court for the District of Massachusetts.