The alleged infringer of the “CrossFit” trademark may have gotten winded after reading a recent order from Judge Saylor.  In that case, Plaintiff CrossFit alleged that Donald Mustapha—who appeared pro se—infringed its trademark by offering exercise programs under the “CrossFit” name.  In response to the complaint, Mustapha filed so-called “counterclaims” against various third parties, which were dismissed for unspecified reasons early in the litigation.  However, the Court granted Mustapha leave to file a third-party complaint against one individual, Ronnie Briere.  Mustapha attempted to do so, filing a new “counterclaim” against Briere (a non-party) alleging breach of contract, defamation, and violations of Mass. Gen. Laws ch. 93A.  According to the “counterclaim,” Briere breached an agreement to obtain CrossFit certification and teach classes at Mustapha’s Chelmsford sports facility, and falsely represented himself as CrossFit certified on Mustapha’s Facebook page.

Briere then filed a motion for judgment on the pleadings, contending that Mustapha’s impleader attempt was improper under FED. R. CIV. P. 14, which governs how a defendant may join a third party—“who is or may be liable . . . for all or part of the claim”—to the lawsuit.  Shortly after Briere filed the motion, Mustapha filed a motion to amend his “counterclaims” against Briere to add a charge of contributory trademark infringement, alleging that “much of the complaint against Defendants is the result of [Briere’s] actions.”

Judge Saylor first tackled Briere’s motion for judgment on the pleadings.  As a preliminary matter, the Court noted that Mustapha’s “counterclaim” should have been styled as a third-party complaint, because Briere was not a party to the suit.  The bigger problem for Mustapha, however, was that his allegations against Briere had nothing to do with CrossFit’s claims against him.  The Court found that, absent allegations that are “derived from” the original complaint, a third-party may not be added to a suit under Rule 14.  Thus, the Court dismissed Mustapha’s “counterclaim.”
Mustapha’s motion to amend fared no better, despite the fact that his contributory trademark infringement allegations were derived from CrossFit’s complaint against him.  According to the Court, the motion was futile because there is no cause of action for “contributory trademark infringement” under the Lanham Act.
It was a total loss for Mustapha, and, if nothing else, the decision highlights the importance of obtaining counsel when faced with an intellectual property suit.