Jim Stoppani SUED by Bodybuilding.com, Case Now Settled!

MAJOR UPDATE: This lawsuit was settled at the end of May 2017, and Jim Stoppani is coming back to Bodybuilding.com to produce content — although it seems like JYM products will remain available at Amazon and GNC. We’ll update with more details when available.

If you thought the ongoing Jim Stoppani Scandal couldn’t get any crazier, then think again.

On June 22, 2016, Bodybuilding.com filed a lawsuit against Jim Stoppani and PhD Fitness LLC! While this has nothing to do with the aforementioned scandal involving PRO Jym, NutraBio, and other companies affected by Stoppani’s recent claims on YouTube, the timing is rather interesting.

Three updated videos to watch:

Don’t feel like reading legal documents? We’re covering this case here and on YouTube!

1. Watch Mike’s discussion with what we know as of September 21, 2016:
   

   

2. Mike brings IP Attorney Nick Gingo in to discuss his take on the case:
   

   

   Audio Version:

   Podcast: Play in new window | Download (Duration: 55:44 — 37.8MB)
3. Major update in March 2017 – Stoppani gets a big win in that the judge DENIES Bodybuilding.com’s motion to dismiss – he’s at least willing to hear out Stoppani’s side of the story!

   Mike brings Nick back to talk about these updates:

   

   

   Click Here to read the judge’s response on Bodybuilding.com’s motion to dismiss — this case is going to continue! You can read thge original motion here.

   Also interesting around this time: Bodybuilding.com’s CEO for the past year left in February 2017. As of April, no permanent CEO had been named.

UPDATED September 19, 2016: JYM is now being sold in GNC, so many are asking what’s going on. Click here to skip to the 2016-Q3 update — in short, it looks like this is heading to court and business is moving forward for all parties until then.

UPDATED September 20, 2016: Bodybuilding.com has released a statement regarding the matter, and Jim posted a video as well.

UPDATED September 22, 2016: The case has been amended and Bodybuilding.com is now suing GNC as well as Stoppani!

What happened?

According to the complaint filed by Bodybuilding.com, which are allegations and have not been proven in a court of law, the scenario has played out like this:

• 

  Jim Stoppani and PhD Fitness own “JYM Supplement Science” trademark on the nearly useless Supplemental Register, but what about “JYM”??? Up to the courts and arbitrators to decide now…

  Around March 2013, Bodybuilding.com claims to have created the mark “JYM” for use in connection with supplements bearing that name. Note, however, neither party formally trademarked the name at that time.
• On May 17, 2013, Bodybuilding.com and Jim Stoppani entered an agreement over the development, marketing, and sale of products bearing the JYM mark. Stoppani would endorse it with his name and likeness, and Bodybuilding.com would pay PhD Fitness a flat-fee royalty for each sale of a JYM-branded product.
• Shortly thereafter, Bodybuilding.com began promoting and selling products with the JYM mark on the labeling and marketing.
• Bodybuilding.com’s then alleges that Stoppani himself commented that “I had not even seen the JYM logo or even the concept that [Bodybuilding.com] had sketched out, but all I heard all day from [a fellow PhD Fitness representative] was how brilliant the concept was that [Bodybuilding.com] had come up with.” around July, 2013.
• Based upon the above points, Bodybuilding.com claims that they own the trademark rights in the JYM mark
• The agreement in the second bullet point expired May 17, 2016, with a few surviving terms (not disclosed in the complaint filed).
• On April 19, 2016, PhD Fitness sent a letter to Bodybuilding.com disputing ownership of the JYM mark, stating that PhD Fitness owns it. They claim that Bodybuilding.com’s right also terminates on May 17, 2016. We do not have this letter and cannot verify it!
• Bodybuilding.com is now taking it to the courts, seeking a declaratory judgement that they are the rightful owners of the “JYM” mark. “An immediate, real, and justiciable controversy exists” between both parties that must get settled.

Both sides reached for comment

NutraIngredients was able to reach both parties for comment:^[1]

Liberty Media, the company that owns most of Bodybuilding.com, stated,

“Bodybuilding.com recently filed a lawsuit against PhD Fitness, LLC and Jim Stoppani with regard to use of the JYM trademark. Bodybuilding.com’s relationship with Jim Stoppani evolved over many years into a formal business partnership, which included developing and jointly promoting the JYM brand, sold exclusively by Bodybuilding.com for the past three years.”

“While we do not comment on pending litigation, it is our hope that we can continue this mutually beneficial relationship going forward. In the interim, JYM products will continue to be available on the Bodybuilding.com website.”

— Bodybuilding.com / Liberty Media^[1]

Stoppani, on the other hand, stated on the phone with NutraIngredients,

“It’s very unfortunate that Bodybuilding.com has taken this stance on the trademarks and brand. Given my background in the industry, as a scientist, expert and consultant it’s ludicrous to say that I did not formulate my own products.”

“I had a great relationship with Bodybuilding.com and hope to continue to work with them, but the plan was always to make the products available to as many people as possible and go to GNC, Amazon and others [once the development agreement expired on May 17, 2016].”

“These products championed non-proprietary blends based on real research. They’re my formulations, and my IP.”

“JYM Supplement Science is not a brand,” he added. “It’s an extension of what I do, who I am, what I teach. The brand is me.”

— Jim Stoppani, PhD Fitness^[1]

So who owns JYM!??!

The way we currently see it, JYM is not a “brand” in the formal sense — as in, it is not a company or government-recognized entity.

JYM is a ‘mark’, one that Bodybuilding.com claims they began using for themselves, yet didn’t officially trademark when they started promoting it.

So the question for the courts is, who owns the “JYM” mark!?

Due to prior use, an argument could be made that Bodybuilding.com created it, unless Stoppani has proof (such as in some old email) that he created it first.

However, PhD Fitness did attempt to trademark “JYM”,^[2] and Bodybuilding.com either chose not to object, or didn’t catch it happening — but either way — it was refused.

Also note that Jim Stoppani and PhD Fitness earlier trademarked “JYM Supplement Science”, but that is not what’s at hand here and that’s only in the Supplemental Register (see next section). This is about “JYM” and the logo you see on those tubs.

Supplemental Registerr Updates

Updated September 21, 2016: Some new evidence has come to light!

It turns out that on December 20, 2013, PhD Fitness attempted to register “JYM Supplement Science”.^[3] This is earlier than any other date we had seen, but still not prior to the Bodybuilding.com agreement.

HOWEVER, that application was denied on April 7, 2014. The examining attorney at the US Patent and Trademark Office stated it was “merely descriptive”, and that “Since each word in applicant’s mark is descriptive or generic, registration is refused under Trademark Act Section 2(e)(1).”.^[4]

It was then amended and accepted,^[5] but only in the Supplemental Register, which is not nearly as useful as the Principal Register.

Also note that other parties have no recourse to oppose Supplemental Registration other than to seek its cancellation after the fact, which they’ll likely attempt to do if this doesn’t settle. That could be why PhD used the Supplemental Register, but we aren’t sure about that.

The evidence was the enemy

But… guess what PhD had to use as evidence to show that it was already used in commerce? Bodybuilding.com’s own product page!!

This all could be bad news for Jim, but the #JYMArmy may appreciate the fact that he was indeed attempting to trademark it earlier than we thought.

Lessons learned

Trademark your brand names and product names, everyone! Especially when entering joint partnerships with other people and companies!

Even if Bodybuilding.com is right, and they had first use, this probably could have been avoided had they paid the $250-750 and just trademarked it right away. As small business owners, we sometimes let this get away from us, thinking that owning the domain or prior-use is good enough (which it often is).

Large companies like Bodybuilding.com don’t have that excuse, and now everyone’s going to be spending a ton in legal fees and unnecessary drag-through-the-mud drama.

The revenue numbers were huge

Simply put, the numbers were not small (roughly $90 million in revenue in three years), demonstrating that this case is the real deal.

Jim’s Formulations and IP?!

Jim may have also opened another can of worms here. By going on the record stating that he formulated the products, he may be starting more disputes, as there are currently questions regarding the extreme similarities between Bodybuilding.com’s Protogen formula (which has been around since 2012, possibly earlier) vs. Pro JYM, as discussed at the end of our Jim Stoppani Scandal article.

Bodybuilding.com States Who Really Formulated Pre-JYM

(Updated on October 4, 2016)

In a sworn affidavit, a Bodybuilding.com employee has stated that Jim Stoppani did approach their team with a pre workout supplement before they began working together, it was an awful formula that smelled and tasted offensive, was underdosed, and did not mix well. He states that he then changed nearly every ingredient, adding and removing a few others.

You can read about it in our post titled Meet the Man Who REALLY Formulated Pre-JYM

Suspicious Timing

Now here’s what’s even crazier. If you timestamp the termination dates of those agreements with the dates of Jim’s questionable videos that led to the Jim Stoppani Scandal article… as well as the filing date of this lawsuit… you’ll notice that a lot of this all happened around the same timeframe.

It’s probably just a coincidence, but this is all just too weird.

This feels like the star quarterback and prom queen power couple in high school are breaking up in dramatic fashion, and it’s sending shockwaves to the rest of the social circle. Meanwhile, all of the smart money is off going to college and elsewhere anyway (ie, to Amazon). What a year.

Fall 2016 Updates: Court Dates are SET!

Added September 19, 2016:

JYM is now being sold in GNC, so many of you asked what is going on, and if this case had settled. The answer is NO, this case has not settled. Quite the opposite, in fact.

We jumped on PACER and found the judge’s SCHEDULING ORDER from August 24, 2016:

So the judge is ordering Bodybuilding.com to disclose their expert witnesses by March 15, 2017, JYM to disclose theirs on April 15, 2017, and then all rebuttal experts by May 1, 2017.

A jury trial is then set for January 16, 2018 in Boise, Idaho. Yes, the justice system takes that long.

But JYM is in GNC now?!

Typically, you don’t let court cases stop the course of business. It is of our non-lawyer opinion that GNC is doing their thing, and if Jim Stoppani / JYM Supplement Science loses this court case, that will just add to the his damages owed to Bodybuilding.com.

Point being? There is a lot riding on this, and JYM seems to have gone all in. This is huge, it’s rumored to have gotten ugly, and it doesn’t sound like it’s going to end amicably. Not one bit.

Bodybuilding.com CEO Releases a Statement

On September 20, 2016, Bodybuilding.com released this statement, which they later updated on September 22 to reflect their lawsuit against GNC.

The general gist is that the JYM products at the “other retailer” (presumably at GNC) are unauthorized and manufactured without Bodybuilding’s permission, and Bodybuilding is now considering further lawsuits against GNC and any GNC franchise who carries these “new JYM” products.

The two paragraphs of most importance are,

The JYM products available on Bodybuilding.com are genuine, safe, FDA compliant, and have the same high quality standards since we launched the brand three years ago. JYM products being sold by other retailers were not authorized by Bodybuilding.com and are being sold without our permission.

Bodybuilding.com’s policy is to not comment on pending litigation, but we will vigorously enforce our trademarks and intellectual property rights. That said, I can emphasize this: Bodybuilding.com has sued the former celebrity endorser and the retailer, and is evaluating its legal options with respect to the retailer’s individual franchisees and any other retailer who tries to sell JYM products without our express written permission.

— Richard Jalichandra & The Bodybuilding.com Team [emphasis ours]

Jim Stoppani’s Response

Jim weighed in as well, with a video posted to Facebook and Youtube:

So Who Owns JYM? This Email Evidence May Make the Case

In the quest to see who really controls the JYM mark – which is the basis of the above lawsuit – we recently unearthed a sworn affidavit, stating that Jim Stoppani was not the real formulator of Pre-JYM nor Pro-JYM. Iinstead, the JYM products were formulated by a Bodybuilding.com employee.

Members of Stoppani’s #JYMArmy fan club had mixed reactions — Jim did come to Bodybuilding.com with his own pre workout formula, but that was not the product actually created and sold as Pre-JYM. On the other hand, it’s nearly indisputable that Pro JYM was just a slightly-modified version of Bodybuilding.com’s PROTOGEN formula.

This revelation cast serious doubt on Jim Stoppani’s statements throughout the scandal earlier this year, where he repeatedly stated that he formulated these products.

Lying on YouTube doesn’t look good, but it also doesn’t make a trademark case

But does that matter? Do the courts care about lies on YouTube? Do they even care who formulated the products?

Possibly not. Plus, as we discussed at the end of the Pre-JYM Formulation blog post, it’s possible (yet unlikely) that the proclaimed formulator lied.

So we need more. This is where our next piece of evidence comes in:

Formulator may not matter… but what about the original creator?

Although the formulator of the products likely won’t break the case in determining who really owns and controls “JYM”, the actual creator and first user of the brand certainly should.

So this is where we present to you the sworn affidavit of John Hardesty, the creator of the JYM logo.

There’s plenty of good stuff in the above PDF, but let’s cut to the chase and get to the good stuff:

The email thread that may clinch the JYM Ownership Case

Below are the images, copied Hardesty’s affidavit:

Exhibit A: Email from Jim Stoppani to Bodybuilding.com Team, Feb 2013

From: Jimstoppani Sent: Monday, February 18, 2013 3:32 PM To: John Hardesty Cc: Brian Rand; Mike Mcerlane; Laya Subject: Re: Follow-Up

Good timing! I was just putting an email together to you guys that basically said this:

John and Brian – let us know when you guys are free to hop on a call with Mike McErlane, Laya and myself. We’re all in agreement that this is a more exciting and better opportunity than our original business model and are really looking forward to moving in this new direction with bb.com on the supplement line. The three of us will be available whenever you guys have the time. Let us know.

Thanks again!

Jim

[Emphasis ours.] Not exactly a silver bullet, though.

Moving forward, the contract with JYM was then signed in May of 2013. Products were finalized and went to manufacturing, and after the first Pre-JYM shipment, the following celebratory emails were sent:

Exhibit B: Email exchange between Jim’s Team and Bodybuilding.com’s Team, July 2013

Note that email threads like this go backward, meaning the oldest/first emails are at the bottom:

So let’s type that out, with emphasis ours in bold:

1. Sent from John Hardesty (Bodybuilding.com) on Tuesday, July 9, 2013 at 7:42PM:

   John emails everyone with the subject “It’s Official – PRE JYM shipped Today!” simply (and correctly) stating:

   This is going to be epic.

2. Reply from Jim Stoppani on Tuesday, July 9 at 8:21PM:

   Thanks John! As Mike said, you and Brian really get credit for spearheading this and being involved on so many levels to not only make this happen, but make it a success. That’s something that Mike and I don’t take lightly and won’t forget.

   It’s about to get real!

   In this email, and the entire email thread, Mike is in reference to Mike McErlane, Jim’s business partner and the co-owner of PhD Fitness.

3. Reply from Mike McErlane on Tuesday, July 9 at 8:30PM:

   I remember when John turned his computer around when we were in his office and said, “I worked on a little something last night and wanted to get your thoughts.” that was the moment JYM came to life.

4. Reply from Jim Stoppani on Tuesday, July 9 at 9:34PM:

   Yeah, I was shooting Shortcut To Shred, so I had not even seen the JYM logo or even the concept that John had sketched out, but all I heard all day from Mike was how brilliant the concept was that John had come up with.

   The rest is history.

We’re not lawyers here, but if this isn’t a slam dunk on the creation and first use of a mark, then we’re not really sure what is. All assuming, of course, that these emails are valid – and that can easily be verified by the email providers.

John Hardesty leaves a comment

I spoke with John Hardesty to discuss the situation. Out of everyone I’ve discussed this case with, John was easily the most level-headed and clear-minded individual there is. He left this quote via email:

“Creating the JYM brand and mark is something I’m very proud of. Together, the teams at Bodybuilding.com, and Jim Stoppani, changed the definition of what it means to deliver a total system of great products and content to support users in every aspect of their fitness life. The landscape of sports nutrition has been positively changed due to that groundwork that was set in this partnership.”

— John Hardesty, ex-Vice President of Digital Publishing at Bodybuilding.com

Reflecting on the past few years

JYM was truly lightning in a bottle. Hell, it still is lightning in a bottle, three years later! But it was also a team project, and a team success.

Why it had to come to an end in this fashion is simply mind-boggling. And why GNC decided to step into this mess is doubly so. Maybe they have some evidence we don’t know about. Or maybe… they just don’t care.

All we can say is that it won’t be the first time ego and greed have toppled empires… and it certainly won’t be the last.

History indeed, Jim.