but for Uline’s actions. To allow a party to survive summary
judgment on this evidence alone would allow liability “virtually
without limit.” Celex Group, 877 F. Supp. at 1125.

SIT also argues that both Google and Overture were specific
parties with which it would have done business (by “being able to
pursue its lawful comparative advertising campaigns with Google and
Overture”) but for Uline’s actions. Phrased in this way, this
claim is really a reconfiguration of JIT’s tortious interference
with contract claim. Uline is correct that, even taking the facts
in the light most favorable to JIT, there is no evidence that Uline
did anything which disrupted JIT’s contractual relationship with
Google and Overture. Google's editorial policy specifically stated
that, upon a complaint, it would remove trademarked terms from an
advertiser’s advertisements. Overture specifically stated that it
would suspend any advertising where the site to which the
advertising was linked contained false or misleading information.
Based on Uline’s complaints, it suspended JIT’s account. There is
no evidence that Uline’s actions disrupted JIT’s “legitimate”
expectancies concerning its relationship with Google and Overture.”

Therefore, Uline is entitled to summary judgment on this claim.

phere igs also no evidence in the record that the statements
Uline made to Google and Overture were false, and JIT has not
directly argued that these statements were false. It is undisputed
that Uline holds a trademark on the term “Uline,” so Uline was
truthful with Google. For an analysis of why there is no evidence
that the statements Uline made to Overture were false, see Section
VII infra.

20


advertisements, the only question is whether Overture had the
authority under its contract to require JIT’s advertisements and
website to be accurate. Here, even taking the facts in the light
most favorable to JIT, there is no dispute that under the terms of
the contract Overture had the right to take the action it did
against JIT. Overture’s policy specifically states that it
“reserves the right . . .to remove your listings at any time for
any reason.” As an advertiser, JIT agreed that the information
contained on its website would be accurate. Overture received a
complaint that information on the website was inaccurate or
misleading. Overture then sent an email informing JIT that it had
received a complaint about this content, and giving JIT ten days to
appeal, correct the problem, or face suspension of access to its
website from Overture’s website. Nothing in Overture’s email to
JIT said anything about use of the term “Uline” or a violation of
its trademark policy. Instead, the email specifically stated that
JIT’s website contained “false and/or misleading content.” Given
these undisputed facts, JIT cannot show that Overture breached its
agreement with JIT.

Because JIT cannot show that either Overture or Google
breached their agreements with JIT, JIT’s tortious interference

with contract claim must fail.’

Syline also argues that JIT’s claim must fail because
interference with a contract in order to protect one’s trademark
rights protects that interference from a tortious interference
claim. Because I find that JIT cannot show that Overture or Google

14


allegedly defamatory statement is an opinion is a question of law.
Moriarty v. Greene, 247 Ill. Dec. 675, 685, 315 Ill. App. 3d 225
234, 732 N.E.2d 730, 740 (111. App. Ct. 2000) (citing Owen, 100
Ill. Dec. at 786, 113 Til.2d at 279, 497 N.E.2d at 1148). For
these reasons, I need not address whether the statement constitutes
defamation per se, and I grant summary judgment to Uline on this
claim.
vi.

In its letter to Overture complaining about JIT’s
advertisements, Uline stated that JIT’s website contained
misleading comparisons between Uline’s products and its own.
Uline’s letter stated:

Uline carries certified “200 lb test boxes”.

This refers to the bursting strength of the

box. JIT claims 200#/ECT32, which is not an

accurate representation of the product. ECT32

is often cheaper to manufacture and has

different performance characteristics than 200

ib test boxes. Comparing the two as equal

will mislead the consumer.
JiT argues in its reply brief that this statement constitutes
commercial disparagement. In order to succeed on this claim, JIT
must present evidence that this statement amounts to a “false and

demeaning statement{] regarding the quality of [JIT’s] goods and

services.” See Appraisers Coalition v. Appraisal Inst., 845 F.

inadmissible hearsay.

24


or part of any Program.”' Reasons for suspension “may include,
without limitation, if Overture believes that you violated the
Agreement or other policies or guidelines of Overture.”

Overture also has a trademark policy and procedure (entitled
“Raising Trademark Concerns about Precision MatchTM Listings”) that
provides:

Advertisers sometimes bid on search terms that

are the trademarks of others. For bids on

search terms in Overture’s Precision Match

service, Overture requires advertisers to

agree that their search terms, their listing

titles and descriptions, and the content of

their Web sites do not violate the trademark

rights of others.
This policy also states that users may only bid on search terms
that are trademarked by another party if the advertiser presents
content on its website that “refers to the trademark or its owner
or related product in a permissible nominative manner without
creating a likelihood of consumer confusion (for example
comparative advertising, sale of a product bearing the trademark
or commentary, criticism or other permissible information about the
trademark owner... ).” Overture directs customers who “have a
concern that a search term associated with an advertiser’s listing

is an improper use of a term that is a trademark” to provide

certain information “[iJn order to assist Overture in expeditiously

‘This section defines “termination, suspension or
discontinuation” to include “without limitation, removal of your
listings.”


Vv.

JIT’s defamation per se claim centers around a statement that
Brian Uihlein of Uline purportedly made to Bill Raubolt, an
employee of Weyerhaeuser, a company that supplies products to both
Uline and JIT. Raubolt testified that although he could not
remember precisely what Uihlein said, he believes that he said,
“ Well you know, they may have a hard time paying their bills,’ or
something like that.’”"*

To prove its defamation claim stemming from this statement,
JIT must show (1) that Uline made a false statement about JIT; (2)
Uline published that false statement to a third party; and (3) JIT
was damaged as a result. See Republic Tobacco Co. v. N. Atl.
Trading Co., 381 F.3d 717, 726 (7th Cir. 2004) (citing Krasinski v.
United Parcel Serv., Inc., 125 Ill. Dec. 310, 313, 124 Ill. 2d 483,
490, 530 N.E.2d 468, 471 (1988)). If the statement is considered
defamatory per se, it is considered to be so harmful to the
plaintiff that damages are presumed and need not be proven.
Republic Tobacco Co., 381 F.3d at 726 (citing Owen v. Carr, 100
Ill. Dec. 783, 785, 113 TI11.2d 273, 277, 497 N.E.2d 1145, 1147

(1986)). JIT argues that this statement was defamatory per se

BgIPT’s response to Uline’s statement of facts suggests that
Uline also made statements about JIT’s products to Google and
Overture. However, because JIT’s reply to Uline’s motion for
summary judgment only addresses the statements made by Uihlein in
its arguments about JIT’s defamation claim, I will not consider any
other statements in analyzing JIT’s defamation claim.

21


to withdraw these claims voluntarily is too late under Fed. R. Civ.
P. 41(a)(1). These two claims are dismissed.
VIII.
For the foregoing reasons, I grant Uline’s motion for summary

judgment as to all of JIT’s counterclaims.

ENTER ORDER:

Llane 2 Bushle

Elaine E. Bucklo
United States District Judge

Dated: June 2G , 2006

27


an innocent construction.” Republic Tobacco Co., 381 F.3d at 726
(citing Kolegas, 180 Ill. Dec. at 11, 154 Ill. 2d at 312, 607
N.E.2d at 206). Whether a statement is subject to an innocent
construction is for a court to decide. Kolegas, 180 Ill. Dec. at
11, 154 I11.2d at 313, 607 N.E.2d at 207. Taking the facts in the
light most favorable to JIT, Uihlein stated that JIT “may have
trouble” paying its bills. This statement is potentially forward-
looking as to what JIT “may” be able to do in the future. Given
that the facts show the statement was made in the context of a
conversation discussing how JIT was significantly underselling
Uline, it is subject to the innocent construction that any company
significantly underselling a competitor might have financial
difficulties in the future. It is also an opinion as to JIT’s
future financial status, and is therefore not actionable as
defamation since a prediction of future events can neither be true
nor false. See Wilkow v. Forbes, 241 F.3d 552, 555 (7th Cir. 2001

(“[I]£ it is plain that the speaker is expressing a subjective
view, an interpretation, a theory, conjecture, or surmise, rather
than claiming to be in possession of objectively verifiable facts,
the statement is not actionable.”) (quoting Haynes v. Alfred A.

Knopf, Inc., 8 F.3d 1222, 1227 (7th Cir. 1993)).14 Whether an

MA co-worker of Raubolt’s testified that Raubolt “said at one
point that [JIT] were {sic] in financial - financially instable or
they were having some trouble paying their bills, or something to
that tune.” However, the co-worker could not recall specifically
when that statement was made, and the statement is also

23


the standard for summary judgment requires a showing of specific
third parties with whom the plaintiff would have done business.
See, e.g., Republic Tobacco, L.P. v. N. Atl. Trading Co., 254 F.
Supp 2d. 1007, 1012 (N.D. Ill. 2003) (granting summary judgment on
tortious interference claim where the plaintiff “failf[ed] to
provide evidence of any specific customers who terminated or
altered their relationship with [the plaintiff] as a result of any
conduct” by the defendant) (emphasis in original). In Celex Group,
Inc. v. The Executive Gallery, Inc., 877 F, Supp. 1114 (N.D. Ill.
1995), the court granted summary judgment where the plaintiff did
not even “attempt[{] to identify any specific third parties with
whom it had a reasonable business expectancy” but rather relied on
“past and present corporate executive customers” as an
“identifiable class.” Id. at 1125. The court recognized that a
showing of a class of prospective customers might be sufficient to
survive a motion to dismiss, but held that on a motion for summary
judgment a plaintiff “must come forward with its evidence and
identify particular third parties with whom it had a reasonable
expectancy of entering into business.” Id. The court also noted
that requiring the identification of a specific party makes sense
because a party also must show that a particular contractual or

business relationship is contemplated. Id. at 1126 n.19. Were it

expectancy with a specific third party.” Id. at 108, 265 Ill. App.
3d at 994, 639 N.E.2d at 147.

18


statement that Brian Uihlein (“Uihlein”) of Uline purportedly made
to Bill Raubolt (“Raubolt”) of Weyerhaeuser, a company that sold
boxes to both Uline and JIT.® Raubolt testified in his deposition
that he had heard about radio advertisements JIT was running
“attacking Uline” and he asked Uihlein if he was aware of the
advertisements. Brian Uihlein testified that Raubolt may have said
“Who are these guys that - you know, I hear on the radio saying
they’re up to 70 percent less than you?” Uihlein testified that
“maybe” he responded, “‘We don’t even make 70 percent on our
product, so I don’t know how that could happen,’ or something along
those lines.” Raubolt further testified that he could not remember
exactly what Uinlean had said, but that Uihlein said “something
like that, maybe saying that, ‘Well you know, they may have a hard
time paying their bills,’ or something like that.’” Raubolt
testified that he may have discussed this conversation with a few
other Weyerhaeuser employees, but he did not recall what
specifically he may have said to them. After all of these events

had concluded, this litigation commenced.

®In addition to Weyerhaeser, Hrbacek testified that he had
“heard rumors from other vendors” that Uihlein had stated that JIT
“was in trouble.” Hrbacek could not identify which vendors he had
heard this from and could not recall “word-for-word” what the
substance of the rumors was.

10


account representative. Peters testified that he informed the
representative that JIT was using Uline’s name in its
advertisements, and complained about Google’s editorial policies,
which he felt were unfair. He “admonished” the representative that
Google had not allowed Uline to use certain keywords which he felt
were appropriate, but that Google was not strict enough in
investigating inappropriate advertising by Google’s customers which
harmed Uline. Peters testified that he did not threaten to pull
Uline’s business with or initiate a legal proceeding against
Google.

Following Peters’ conversation with Google, a Google
representative sent an email to JIT notifying it that certain of
their advertisements were “suspended” or “disapproved” because “one
or more of [JIT’s] ads or keywords does not meet [Google’s]
guidelines.” The email explained that, “[d]ue to trademark
complaints, we do not allow advertisers to use certain trademarked
terms as ad text for their Google AdWords campaigns.” The email
required JIT to remove the term “Uline” from all of its keywords
and advertisements. Google subsequently removed the word “Uline”
from JIT’s advertisements and keywords, replacing it with “the U”
instead.

Uline also sent a letter to Overture complaining about JIT’s
advertisements on its website. Although this letter did note that

Uline had a trademark for the term “Uline,” the focus of the letter


addressing your concern.” Overture’s policy states that “Overture
will review the advertiser’s listing for compliance with our
relevancy guidelines and, if appropriate, Overture will remove the
advertiser’s listing or the content of the listing’s title or
description will be modified.”’

The parties dispute whether the terms of either the Google or
Overture agreements allow an advertiser to engage in comparative
advertising. This is an issue because, pursuant to these
agreements, JIT submitted online advertisements to both companies
for those companies to run on their websites.’ The text of both
advertisements included the phrase “Save Up to 70% Over ULINE.”
Google and Overture initially accepted this text.

Uline also had agreements with both Google and Overture to use
their advertising services. JIT became concerned about JIT’s
advertisements, and submitted complaints both to Google and
Overture. Jake Peters (“Peters”), the Vice President of Internet

and Advertising for Uline, called and complained to Uline’s Google

2tt is not clear whether this policy is part of Overture’s
“agreement” with its advertisers or simply a stated policy.

3Both Google and Overture allow clients to select certain
search terms that, if entered by a user, will return that client’s
advertisements. Neither party presents statements of fact that
address what, if any, search terms JIT selected to associate with
its advertisements using either service. The text of an email sent
from Google to JIT suggests that at least some of the search terms
JIT selected to use with Google’s service contained the word
“Uline” (including the keywords “boxes uline,” “company uline,”
“packaging uline,” “shipping uline” and “uline corporation”).

6


not for this requirement, “liability under a theory of tortious
interference with prospective business expectancies would be
virtually without limit and impossible to calculate.” Id.

Here, JIT alleges that it had a valid business expectancy of
entering into business relationships with (1) “the class of
consumers seeking to buy packaging materials through the use of the
Google and/or Overture search engine(s) and (2) the reasonable
expectancy of maintaining its existing business relationships with
Google and Overture in the manner in which they existed prior to
Uline’s interference.” With respect to the “class of consumers,”
even examining the evidence in the light most favorable to JIT, JIT
has presented no evidence of specific customers with whom it would
have entered into a business relationship but for Uline’s
complaints to Google and Overture. JIT does present an expert
report that tracks the “click-through rate” (the number of users
who “clicked” on JIT’s advertisements in order to go to JIT’s
website) from JIT’s advertisements with Google and Overture and
determined the relationship between “click-throughs” to JIT’s
website and JIT’s actual and projected sales. The expert concludes
that JIT had significantly more “click-through” sales before its
ads were changed, but it does not identify any specific customers
that would have purchased its products but for Uline’s actions.
This evidence alone, even if true, is not enough to show a specific

customer or customers who would have purchased products from JIT

19


the issue as being one of false advertising within the website
itself.°

As a result of Google and Overture forcing JIT to change its
advertising, JIT contends that it lost customers. JIT has
presented sales numbers which show that following the change in its
advertising there was a decline in web-based orders for its
products. During his deposition the president of JIT, Michael
Hrbacek (“Hrbacek”), testified that he was not aware of any
customer or potential customer “that was thinking about or
contemplating buying materials from JiT-buying products from JIT
who because of Uline’s actions decided not to do so.” In its
response to Uline’s statement of facts, JIT contends that “the
customers it lost are customers seeking to buy packaging materials
through use of the Google and/or Overture search engines.”

JIT also alleged in its amended counterclaims that “Uline has
been spreading rumors about JIT in the industry.” The only
specific “rumor-spreading” of which JIT has presented evidence,

aside from the statements Uline made to Overture and Google, is a

SThe record also includes a partial chain of emails which
followed that original email. It appears that someone from JIT
responded to Overture stating that Uline separately corresponded
with JIT and “provided JIT with only 3 to 6 items that could
legitimately qualify as containing an inaccurate pricing

comparison. JIT did agree with ULINE and made adjustments to
satisfy them.” Overture then responded that “this issue extends
beyond the information in your titles and description. For

example, the mail page of yoru [sic] Web site claims ‘Always save
up to 70% over Uline’ We are still going to need a response to our
original communication.”


Supp. 592, 610 (N.D. Ill. 1994).°5 This claim is different from a
defamation claim because the law of commercial disparagement
“protects property interests” only and not the “interests of
personality” protected by the law of defamation. Allcare, Inc. v.
Bork, 126 Ill. Dec. 406, 411, 176 Ill. App. 3d 993, 1000, 531
N.E.2d 1033, 1038 (ZT11. App. Ct. 1988). For this reason,
complaints about a party’s fraud or dishonesty in conducting its
business are not actionable as commercial disparagement because
they do not directly disparage the quality of its goods or
services. Id. at 410-11, 176 Ill. App. 3d at 1000, 531 N.E.2d at
1037-38 (noting that “in almost every case of defamation of a
business or businessman it could be alleged that the defamation
caused third parties to refrain from dealing with the plaintiff and
thus. . . constitute[] commercial disparagement”).

Here, Uline’s letter clearly suggested that JIT’s claim that
its ECT32 box was equivalent to Uline’s 200# box was inaccurate.

It stated that ECT32 was “cheaper to manufacture and has different

“gI~ has brought a claim both for common law commercial
disparagement and for violation fo the Illinois Deceptive Trade
Practices Act (the “Act”). JIT’s reply motion is confusing because
it simultaneously argues that a genuine issue of material fact
exists regarding its counterclaim for a violation of the Act, 815
Ill. Comp. Stat. Ann. 510/2(a) (8), and also asserts that it will
not pursue its claims under this Act. Since the section of this
Act addressing commercial disparagement is an “embodiment” of the
common law of commercial disparagement, Crinkley v. Dow Jones &
Co., 24 Ill. Dec. 573, 578, 67 Ill. App. 3d 869, 876, 385 N.E.2d
714, 719 (Ill. App. Ct. 1978), and to the extent JIT is still
pursuing this claim, it fails for the same reason that JIT’s common
law commercial disparagement claim would fail.

25


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

ULINE, INC.,
Plaintiff,
ve No. 04 C 1954

JIT PACKAGING, INC.,

Defendant.

MEMORANDUM OPINION AND ORDER

Plaintiff Uline, Inc. (“Uline”) and defendant JIT Packaging,
Inc. (“JIT”) are competitors in the packaging and shipping
materials business. A dispute arose between them concerning a
marketing strategy JIT used to favorably compare its products and
prices to those of Uline. JIT sued Uline in Illinois state court,
and Uline brought claims against JIT in this court alleging JIT
engaged in unfair competition, violated the Illinois Deceptive
Trade Practices Act and the Illinois Consumer Fraud and Deceptive
Business Practices Act, and committed trademark infringement. JIT,
in turn, dismissed its Illinois state court action and brought
counterclaims against Uline before this court that include (1)
tortious interference with contract; (II) tortious interference
with prospective economic advantage; (III) defamation per se; (IV)
commercial disparagement; (Vv) unfair competition; and (VI)

deceptive trade practices and consumer fraud and deceptive business

CT


actions taken by Overture and Google in response to Uline’s
complaints. Thus, there is no dispute for a finder of fact to
resolve. Bennett v. Local Union No. 66, Glass, Molders, Pottery,
Plastics and Allied Workers Int’l Union, AFL-CIO, CLC, 958 F.2d
1429, 1434 (7th Cir. 1992) (“The interpretation of an unambiguous
contract is a question of law, as is the question whether the
contract is unambiguous.”).

Here, Google has a specific policy that states that if, after
receiving a complaint from a trademark owner, Google determines
that “the advertisements at issue are using terms corresponding to
the trademarked term in the advertisement’s content,” Google will
“require the advertiser to remove the trademarked term from the
content of the ad and prevent the advertiser from using the
trademarked term in ad content in the future.” In general,
Google’s policy also states that it “reserve[s] the right to
exercise editorial discretion when it comes to the advertising we
accept on our site, as noted in the advertising terms and
conditions.”

JIT’s only articulated argument regarding how Google breached
its contract is that Google wrongly accepted a complaint from Uline
that did not comply with the policies set forth in Google's

“Trademark Complaint Procedures” document. However, the language

summary judgment, taking the facts in the light most favorable to
JIT, I will assume that these policies govern JIT’s agreements with
Overture and Google.

12


III.

JIT’s first counterclaim against Uline is for common law
tortious interference with contract. Under Illinois law, to
establish this claim JIT must show (1) it had an enforceable
contract; (2) of which Uline was aware; and (3) Uline induced a
third party (nere Google and Overture) to breach that contract; (4
successfully; (5) resulting in damages. Dresser Indus., Inc. v.
Pyrrhus AG, 936 F.2d 921, 934 (7th Cir. 1991) (citing Feldman v.
Allegheny Int’1, Inc., 850 F.2d 1217, 1224 (7th Cir. 1988)). See
also HPI Health Servs., Inc. v. Mt. Vernon Hosp., Inc., 137 Ill.
Dec. 19, 23, 131 Tll. 2d 145, 154-55, 545 N.E.2d 672, 676 (1989)
(internal citations omitted).

Uline argues that, even taking the facts in the light most
favorable to JIT, JIT cannot show that Google and Overture breached
their contracts with JIT. JIT argues that there is a genuine issue
of material fact whether Google breached its agreement by not
following its own trademark complaint procedure and editorial
guidelines, and whether Overture breached its agreement with JIT by
not following its trademark policies and complaint procedures
However, the parties appear to agree on the substance of the

agreements between Google and Overture,’ and on the specific

7yline does contest whether the specific versions of Overture
and Google’s policies and guidelines as presented by JIT were the
same versions in place at the time JIT entered into agreements with
these companies, but still makes its arguments based on the
versions that JIT has presented. For purposes of this motion for

11


was on the perceived “false and misleading” character of JIT’s
advertisements with Overture. The letter stated that JIT “makes
the claim ‘save up to 70% over Uline.’ Many of these comparisons
are inaccurate or misleading. Those deemed misleading are due to
differences in product quality/material composition.” The letter
included a paragraph explaining why, in Uline’s view, a comparison
on JIT’s website of one of its box types and one of Uline’s was
inaccurate. It also contained an example, in Uline’s opinion, of
how JIT’s “Save up to 70% over Uline” claim was inaccurate at least
with respect to the prices listed on JIT’s website for certain
types of boxes and a type of tape.‘

As with Google, Peters testified that Uline did not threaten
to stop its business with or to take legal action against Overture.
Following this letter, Overture sent an email to JIT stating that
Overture “received notice that material available through your
website . . . contains false and/or misleading content.” The
letter gave JIT ten days to contest this claim or notify Overture
that it had removed the content at issue from its website. JIT
subsequently removed the word “Uline” from its advertisements but

Overture informed JIT that this was not sufficient; Overture viewed

‘prior to this letter, Peters also sent an email to an
Overture employee that made substantially the same allegations as
those in Uline’s letter, though that email also included a
statement that Uline was considering a lawsuit against JIT related
to the statements on JIT’s website.

8


because it consists of “words that prejudice a party, or impute
lack of ability, in his or her trade, profession, or business,” one
of the categories of statements that is defamatory per se under
Illinois law. See Kolegas v. Heftel Broad. Corp., 180 Ill. Dec.
307, 312, 154 Ill. 2d 1, 10, 607 N.E.2a 201, 206 (1992) (internal
citations omitted).

Uline argues that, to meet the first element of this test, JIT
must present evidence of what specific statement was made to the
third party. However, Illinois courts have held that a plaintiff
must only prove “the words alleged in the declaration, or enough of
them to amount to a charge of the particular offense alleged to
have been imputed.” Medow v. Flavin, 270 Ill. Dec. 174, 184, 336
tll. App. 3d 20, 30, 782 N.E.2d 733, 742 (Ill. App. Ct. 2003)
(quoting Ranson v. McCurley, 140 Ill. 626, 635-36, 31 N.E. 119, 121
(1892)). Here, JIT generally alleged in its complaint (as allowed
by the liberal federal notice pleadings standards) that “Uline has
stated to third parties that JIT is in financial trouble.” It is
possible from the portion of Uihlein’s statement to Raubolt that
Raubolt remembers that a finder of fact could conclude that Uihlein
stated that JIT was in or was about to be in financial trouble.

Whether or not a jury could conclude that this statement had
been made, however, it is clear that this statement is either an
opinion or is subject to an innocent construction. Under Illinois

law, a statement is not defamatory if it is “reasonably capable of

22


That policy also sets forth a procedure for trademark owners to
follow if they “have an objection to an advertiser’s use of a term
corresponding to your trademark in ad content that is consistent
with the foregoing.” The policy directs that such trademark owners
“please provide the following information in a signed letter on
company stationary” and sets forth certain information a trademark
owner should provide.

JIT's agreement with Overture is governed by Overture’s
‘Advertiser Master Services Terms and Conditions,” (“advertiser
terms”) and “Program Terms.” The advertiser terms include a
provision concerning Overture’s acceptance of proposed “Sponsored
Listings” that states:

Overture reserves the right to truncate, edit,
refuse, reject or remove any listing at its

discretion at any time. Overture does not
guarantee that your listings will be placed in or
available through {Overture’s websites], and

Overture reserves the right not to place your
listings and to stop placing or to remove your
listings at any time for any reason. Final
decision as to inclusion, relevancy, placement and
the like will be at Overture’s sole discretion.
The advertiser terms also include a section entitled “Your Site”
that provides that “You” [the advertiser] represent, warrant and
covenant that: (i) all information you provide in connection with
the Agreement and on your Web site is, and will be updated to
remain, current and accurate.” This is followed later by a

“Termination” section specified that “Overture may, in its sole

discretion, . . . discontinue or suspend your participation in all


Iv.

JIT has also brought a claim for tortious interference with
prospective economic advantage, arguing that Uline’s complaints to
Google and Overture led to the loss of “consumers who seek to buy
packaging products through the use” of Google and Overture’s
services. To establish this cause of action JIT must be able to
show 1) it had a reasonable expectation of entering into a valid
business relationship; (2) Uline knew of JIT’s expectancy; (3)
Uline purposefully interfered to prevent JIT’s legitimate
expectancy from being fulfilled; and (4) JIT suffered damages
resulting from such interference. See Burrell v. City of Mattoon,
378 F.3d 642, 652 (7th Cir. 2004) (citing Delloma v. Consolidation
Coal Co., 996 F.2d 168, 170-71 (7th Cir. 1993); Fellhauer v. City
of Geneva, 142 Ill. 2d 495, 511, 154 Ill. Dec. 649, 657, 568 N.E.2d
870, 878 (1991); Dowd & Dowd, Ltd. v. Gleason, 181 Ill. 2d 460
482, 230 Ill. Dec. 229, 241, 693 N.E.2d 358, 370 (1998)).

Uline argues that this claim cannot survive summary judgment
because JIT must identify specific potential customers “with whom
it was contemplating entering into a business relationship, but
decided not to do so” or that Uline caused specific JIT customers
to stop doing business with JIT. JIT responds that it need only

identify a “class of prospective customers” to meet this element of

breached their contracts with JIT, I need not address this
argument.

15


summary judgment on a tortious interference claim.*° At least one
Illinois appellate court has held, however, that to survive summary
judgment a plaintiff must identify a specific third party with whom
the plaintiff would have done business but for the interference of
the defendant. See Assoc. Underwriters of Am. Agency, Inc. v.
McCarthy, 292 Ill. Dec. 724, 733, 356 Ill. App. 3d 1010, 1020, 836
N.E.2d 1160, 1169 (Ill. App. Ct. 2005) (“A plaintiff states a cause
of action only if he alleges a business expectancy with a specific
third party as well as action by the defendant directed toward that

qt

third party.”). Other district courts have also determined that

Tn ruling on Uline’s motion to dismiss JIT’s amended
counterclaims, I relied on Cook v. Winfrey, 141 F.3d 322 (7th Cir.
1998) in which the Seventh Circuit held that for a tortious
interference with prospective economic advantage claim to survive
a motion to dismiss, a party need not specifically identify a third
party with whom it would have had a potential relationship. Id. at
328. The Seventh Circuit further stated in its opinion in Cook, in
dicta, that a more general statement that the plaintiff had a valid
business expectancy with an unspecified third party would allow the
plaintiff to later prove a set of facts “including the identity of
the parties or class of parties that would entitle him to relief.”
Id. The cases cited by the defendant and referenced by the Seventh
Circuit in Cook in support of a “class of parties” satisfying the
test for a tortious interference claim were cases decided on motion
to dismiss. See id. (citing River Park, Inc. v. City of Highland
Park, 217 Ill. Dec. 410, 418, 281 Ill. App. 3d 154, 166, 667 N.E.2d
499, 507 (Ill. App. Ct. 1996), Parkway Bank & Trust Co., 2 Ill.
Dec, at 237-38, 43 Ill. App. 3d at 403, 357 N.E.2d at 214-15). The
Seventh Circuit noted in Cook that the argument between the parties
about the appropriate standard “strays rather far afield from the
minimal requirements of federal notice pleading.” Cook, 141 F.3d
at 328.

Upthis opinion cites Schuler v. Abbot Labs., 203 Iil. Dec. 105,
265 Ill. App. 3d 991, 639 N.B.2d 144 (Ill. App. Ct. 1993), in which
the court determined that to survive a motion to dismiss in
Illinois state court a party needed to allege “a business

17


As part of these agreements, JIT agreed to certain terms and
conditions included in various documents. JIT’s agreement with
Google included terms set forth in Google’s “Editorial Guidelines
for Online Advertising” (“editorial guidelines”), Trademark Policy,
and Trademark Complaint Procedure. Google's editorial guidelines
with respect to “Ad Content” state:

As a business, Google must make decisions
about where we draw the line in regards to the
advertising we accept. We, therefore, may not
accept ads or keywords containing or relating
to certain products or services. We reserve
the right to exercise editorial discretion
when it comes to the advertising we accept on
our site, as noted in our advertising terms
and conditions.

Google’s editorial guidelines also direct advertisers that “(i]f
your ad text contains comparative language regarding competitors,
support for this claim must be displayed” on the website to which
the advertisement directs customers.

The “Trademark Complaint Procedure” that Google has adopted
specifically states, with respect to trademark complaints for
United States trademarks:

When we receive a complaint from a trademark
owner, we will only investigate whether the
advertisements at issue are using terms
corresponding to the trademarked term in an
advertisement’s content. If they are, we will
require the advertiser to remove the
trademarked term from the content of the ad

and will prevent the advertiser from using the
trademarked term in ad content in the future.


performance characteristics than 200 lb test boxes.” Uline’s
statement that JIT’s advertisements were misleading is not
actionable as “commercial disparagement” because the allegation
that JIT’s claims were misleading is not, standing alone, a
disparagement of JIT’s goods. Likewise, a statement by Uline that
the ECT32 box was “cheaper to manufacture” and “different” from the
200 lb box is not disparaging of the ECT32 box ~ it simply states
that the box is different from a 200 lb test box. Uline’s motion
for summary judgment on this claim is granted.’®
VII.

JIT has also brought claims for unfair competition under
common law and the Lanham Act, 15 U.S.C.A. § 1125(a) (Count V), and
for violations of the Illinois Deceptive Trade Practices Act, 815
Ill. Comp. Stat. §§ 510/1, et seq. and the Illinois Consumer Fraud
and Deceptive Business Practices Act, 815 T1ll. Comp. Stat. $§§
505/1, et seq (Count VI). In its response to Uline’s motion for
summary judgment, JIT attempts to withdraw these claims and states

that it will not pursue them. Uline is correct that JIT’s attempt

Even assuming this statement were considered “disparaging,”
JIT has provided no admissible evidence in the record from which a
finder of fact could conclude this statement was false. JIT relies
on very limited selections of deposition testimony of several
witnesses who actually affirm that the testing procedures for the
boxes are different and that ECT32 boxes are cheaper, even if some
segments of the box industry consider the boxes to be similar. The
printouts from various box manufacturer websites which JIT argues
show that the boxes are identical or substantially similar are
inadmissible hearsay.

26


practices. Uline seeks summary judgment on these counterclaims.
I grant that motion.
I.

Summary judgment is appropriate where the record shows that
there is no genuine issue of material fact and that the moving
party is entitled to judgment as a matter of law. Lexington Ins.
Co. v. Rugg & Knopp, 165 F.3d 1087, 1090 (7th Cir. 1999); Feo. R.
Civ. P. 56(c). I must construe all facts in the light most
favorable to the non-moving party and draw all reasonable and
justifiable inferences in favor of that party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986).

It.

The undisputed facts in this case are as follows: In February
of 2004, JIT entered into agreements with Google, Inc. (“Google”
and Overture Services, Inc. (“Overture”) to use their online
advertising services. The parties both characterize these
agreements as “contracts.” Both Google and Overture offer a
service in which their customers may arrange for their
advertisements to appear on Google and/or Overture’s websites in
response to a user’s search query (for example, a user of Google’s
website who enters a search for “books” might be directed to a
webpage listing advertisements for booksellers). For Overture,
these advertisements are called “Sponsored Listings”; Google calls

its advertising program “Adwords.”


of the complaint procedures merely directs trademark owners to
“please provide the following information” in a certain format. It
does not state that it will only accept complaints that comply with
that format. It does not specifically allow for any input on its
trademark decisions from the advertiser. And it unequivocally
states that it will remove any terms from advertisements that it
determines are trademarked.* Google did not breach its contract
either by accepting Uline’s oral complaint or by requiring JIT to
remove the word “Uline” from the content of its advertisements.
The same is true with respect to Overture. After Uline
complained that JIT’s advertisements and website contained false
and misleading information, Overture gave JIT ten days to remove
that content from its website or contest the complaint. The letter
Overture sent JIT did not reference a potential trademark
violation, so those portions of Overture’s policies relating to
trademark are not relevant here. Since there is no evidence that
Overture’s real concern was anything other than what was stated in
its letter to JIT, and JIT does not argue that this letter was a

pretext for any other concern Overture had with JIT’s

®JIT contends that Google’s policies allow for comparative
advertising because of the language in its editorial guidelines
concerning comparative claims. The comparative advertising policy
and the trademark policy are easily reconciled with one another,
however. An advertiser may make legitimate comparative claims
about its competition in an advertisement without using trademarked
terms. To comply with both Google policies, an advertisement could
not use the language “save up to 70% over Uline” but could use the
language “save up to 70% over the competition.”

13


the test. In support of this argument, JIT cites F:A J. Kikson v.
Underwriters Labs., No. 02 C 8265, 2005 WL 736651 (N.D. Ill. March
31, 2005). In that case, the court held that the plaintiffs’
tortious interference with prospective economic advantage claim
could survive summary judgment where the record showed that the
plaintiffs had a business expectancy “with an identifiable class of
prospective customers of chimney lining and repair products in the
United States.” Id. at *9. That decision in turn cited the
decision of the appellate court in Parkway Bank and Trust Co. v.
City of Darien, 2 Ill. Dec. 234, 43 Ill. App. 3d 400, 357 N.E.2d
211 (ll. App. Ct. 1976). In that case, the appellate court
affirmed the dismissal of a tortious interference with prospective
economic advantage claim brought where the defendant re-zoned land
owned by the plaintiff. The appellate court stated that a tortious
interference claim, under Illinois state pleading standards,
requires an allegation that the defendant interfered with a
pusiness relationship between plaintiff and “specific third parties
or any clearly identifiable group of third parties contemplating
prospective contractual arrangements with the plaintiff.” Id. at
237-38, 43 Ill. App. 3d at 403, 357 N.E.2d 214-15.

I could find no Seventh Circuit or Illinois Supreme Court

precedent addressing what a party must show in order to survive

16