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CrossFit to be tied

NEIH 042114_p03_BOOTHDiscussions of throat-slitting ninjas aren’t commonplace in federal court, but such is the nature of a trademark infringement suit in U.S. District Court in Boston that has taken a number of bizarre turns.

The case began ordinarily enough. The CrossFit exercise company sued Donny Mustapha and his Chelmsford Sports Club in June for offering “CrossFit style training” despite not being a licensed CrossFit affiliate.

In July, Daniel G. Booth of Booth Sweet in Cambridge, Mass., filed an answer on behalf of Mustapha that challenged the validity of CrossFit’s trademark on grounds including fair use, “naked” licensing, and the argument that the popular fitness regimen “has become generic as a common descriptive term for a broad category of services.”

Then things got interesting.

In August, an outfit called the CrossFit Rip-off Report took aim at Chelmsford Sports Club on Facebook, stirring up the outrage of dues-paying CrossFit affiliates and encouraging people to give the gym negative online reviews by noting that its “Yelp page doesn’t have any reviews exposing the fact that it’s a rip-off gym. Isn’t that interesting?”

CrossFit’s general counsel even entered the fray himself in response to Facebook users urging the company to take action against Mustapha.

“We are already in a lawsuit against Chelmsford,” Dale F. Saran of Weymouth, Mass., wrote on a discussion thread started by the owner of a Woburn, Mass., CrossFit affiliate. “We’ve batted around the proposed court schedule with their attorney already. … We try to get to all of them, but the wheels of justice grind slowly. I wish I could just send in our team of ninjas in the night to slit a few throats and leave a love note, but that’s not terribly productive (or, strictly speaking, legal).”

In September, U.S. District Court Judge F. Dennis Saylor IV granted CrossFit’s request for a preliminary injunction despite Booth’s argument that the request was barred by the doctrine of unclean hands due to the “social media blitz” and Saran’s Facebook comment.

Mustapha says his gym “was forced out of business from the attacks” online that included dozens of one-star reviews for his business.

Mustapha has since pursued defamation counterclaims in the federal case and alleges that Saran’s Facebook comment violated the Massachusetts Rules of Professional Conduct — but without the help of Booth, who withdrew from the case in November citing Mustapha’s “repeated failure to cooperate with counsel, irreconcilable conflicts over litigation tactics, and tardy payment for services.”

Mustapha is now proceeding pro se. In March, Saylor threw out all but one of his counterclaims, finding that the allegedly defamatory online comments and reviews were “opinion or hyperbole” protected by the First Amendment.

Mustapha’s efforts haven’t been wholly ineffective, however. Based on his subpoena of the domain-name registration service Domains by Proxy, CrossFit was forced to clarify in recent weeks that the CrossFit Rip-off Report was in fact created by a CrossFit employee, social media director Russell Berger; CrossFit previously told the court that it did not own or operate the website.

The fervor with which CrossFit protects its brand is well documented — an Inc. magazine article on the subject last year was titled “Do not cross CrossFit” — but Saran says the company simply is protecting its business and ensuring CrossFit affiliates get what they pay for: the use of a valuable trademark that will be vigorously defended by the parent company.

“Everybody feels entitled to just throw CrossFit onto the schedule of their gym. The problem there is the people who get harmed are the consumers,” says Saran, noting the training CrossFit affiliates must undergo. “As a former affiliate owner myself, I am acutely aware of their sensitivity. I’m trying to protect the investment of 10,000 legitimate people who did it the right way. … If people didn’t steal, I wouldn’t have to be aggressive.”

Saran confirms he wrote the throat-slitting ninja Facebook post, but, while he concedes in hindsight that he might’ve chosen less intemperate remarks, he denies that he violated the Rules of Professional Conduct.

Saran also says he was “surprised” to learn that Berger had created the CrossFit Rip-off Report and that the company has taken action in response to that discovery, but he would not elaborate.

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