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Ask lawyers about the federal Lanham Act, and most wouldrecognize it as the statute that protects trademarks. But businesses thatadvertise — and especially lawyers who represent those businesses — are alsofamiliar with � 43(a) of that act, which is the short but broadly phrasedprovision permitting business competitors to sue one another for falseadvertising, among other things. Although the jurisprudence of � 43(a)developed in a haphazard way, litigants in recent years have benefited fromattempts some courts have made to bring order to the case law chaos. Congress originally enacted the Lanham Act, including �43(a) (which is codified at 15 U.S.C. 1125(a)), in 1946 and amended it in 1988,but in both instances provided scant guidance on how courts should construe �43(a). This provision prohibits any use of a false or misleading description orrepresentation in commercial advertising or promotion that “misrepresentsthe nature, characteristics, qualities, or geographic origin of … goods,services, or commercial activities.” Courts have formulated the followingelements for a claim under � 43(a): – The defendant must have made a false or misleadingstatement of fact in advertising. – That statement must have actually deceived or had thecapacity to deceive a substantial segment of the audience. – The deception must have been material, in that it waslikely to influence the purchasing decision. – The defendant must have caused its goods to enterinterstate commerce. – The plaintiff must have been or is likely to be injured asa result. United Industries Corp. v. Clorox Co., 140 F.3d 1175, 1180(8th Cir. 1998). To obtain monetary damages — as opposed to simplyinjunctive relief — a Lanham Act plaintiff must also demonstrate actualconsumer reliance on the false advertisement and a resulting economic impact onits own business. Finally, although � 43(a) appears to be aimed at protectingconsumers, the Lanham Act provides no cause of action to consumers, only tobusiness competitors. Barrus v. Sylvania, 55 F.3d 468, 470 (9th Cir.1995); Serbin v. Ziebart Int’l Corp., 11 F.3d 1163, 1169-70 (3d Cir.1993). CATEGORIES OF FALSITY Categorization of the challenged advertising claims is thecritical pivot in any � 43(a) action and is frequently result determinative.Courts place false or misleading advertisements into three categories: impliedfalsity, literal falsity and “mere puffery.” Liability under theLanham Act arises out of only the first two categories, as mere puffery is notactionable. United Industries, 140 F.3d at 1180 (defining puffery as”exaggerated advertising, blustering, and boasting upon which noreasonable buyer would rely and is not actionable under 43(a)”). On theother extreme, if plaintiffs can prove an advertising claim was literallyfalse, their burden is lightened considerably because courts will presume theelement of deception. Implied false advertising claims are those that areliterally true, but that imply another message which is false. For example, ina Lanham Act suit between two shaving products companies, the defendant advertisedthat the moisturizing strip on its shaving razor was “six timessmoother” than its competitors’ strips, while showing a man rubbing hishand down his face. Gillette Co. v. Wilkinson Sword Inc., No.89-CV-3586, 1991 U.S. Dist. Lexis 21006, at *6 (S.D.N.Y. Jan. 9, 1991). Thecourt rejected the defendant’s argument that “six times smoother”implied that only the moisturizing strip on the razor’s head was smoother,which may have been literally true. Instead, the court found the “sixtimes smoother” advertising claim implied the consumer would receive asmoother shave from the defendant’s razor as a whole, a claim that was false. For these types of impliedly false advertising claims,plaintiffs must affirmatively prove the false implication of the challengedadvertisement and that the message has a tendency to mislead, confuse ordeceive the public. In most cases, that can be done only through atime-consuming and expensive consumer survey, whose results are ofteninconclusive. Am. Council of Certified Podiatric Physicians & Surgeonsv. Am. Bd. of Podiatric Surgery Inc., 185 F.3d 606, 616 (6th Cir. 1999); Johnson& Johnson-Merck Consumer Pharms. Co. v. Rhone-Poulenc Rorer Pharms. Inc.,19 F.3d 125, 129-30 (3d Cir. 1994); Coca-Cola Co. v. Tropicana Prods. Inc.,690 F.2d 312, 317 (2d Cir. 1982). Proving implied falsity is thus a tall orderfor plaintiffs in most cases. As a result, most plaintiffs prefer the court to categorizethe challenged advertisements as literally false because the element of deceptionis presumed and no costly consumer survey is required. A characterization of anadvertising claim as literally false does not, however, sound the death knellfor Lanham Act defendants. Courts have further divided literally falseadvertising claims into two categories: “tests prove” orestablishment claims because the advertisement cites a study or test that”establishes” the claim, and “bald” assertion ornon-establishment claims. A good example of a tests-prove claim is found in CastrolInc. v. Quaker State Corp., 977 F.2d 57, 59 (2d Cir. 1992), in which thecourt examined the advertisement that “tests prove Quaker State 10W-30[motor oil] protects better than any other leading 10W motor oil.” Incontrast, the advertising claim describing the defendant’s product as “thestrongest antacid there is” was treated as a bald claim in Johnson& Johnson-Merck, 19 F.3d at 129. In the early analysis of literally false advertising underthe Lanham Act, courts did not explicitly distinguish between tests-prove andbald claims. It was not until the mid-1990s that courts, like the 7th U.S.Circuit Court of Appeals in BASF Corp. v. Old World Trading Co., 41 F.3d1081 (7th Cir. 1994), began reconciling the seemingly conflicting decisions onthe proof necessary to show that an advertising claim is false. The reconciliation rests on the type of advertising claimmade. If the claim is an express tests-prove claim, then the plaintiff mustshow the tests or surveys relied on are unreliable or do not in fact supportthe advertising claim. But when there is a bald or nonestablishment claim,which does not expressly rest on a test or study, then the Lanham Act plaintiffmust show the claim is actually false and cannot merely attack any tests orpeer-reviewed studies that support the claim. In essence, the plaintiff mustgenerate affirmative proof that the statement is literally false, rather thansimply take potshots at the defendant’s tests or studies on which theadvertisement does not expressly rely. Reflecting on these differing standards, one courtrecognized “that proving the falsity of a fact asserted in an advertisingclaim may well be more difficult than merely proving that a test asserted tovalidate the claim is not sufficiently reliable to do so.” C.B. FleetCo. v. Smith-Kline Beecham Consumer Healthcare L.P., 131 F.3d 430, 439 (4thCir. 1997). The difference in standards reflects the concern courts have thatconsumers will place greater trust in advertising claims that assert they aresupported by scientific studies. Accordingly, plaintiffs will typically want the challengedadvertisements to be characterized as tests-prove claims, while defendants willwant them characterized as bald claims. As is true with much of the muddled jurisprudence of � 43(a)of the Lanham Act, courts have not provided clear guidelines to determinewhether an advertising claim is a tests-prove or a bald claim. Some cases haveconstrued the definition of tests-prove claims broadly to includeadvertisements that “explicitly or implicitly” represent that testsor studies prove the claim made. BASF, 41 F.3d at 1081; Castrol,977 F.2d at 63. Some courts find a tests-prove claim is made when theadvertising contains a graph or diagram, in addition to express claims of”tests prove” or “studies show.” See Southland Sod Farmsv. Stover Seed Co., 108 F.3d 1134, 1144 (9th Cir. 1997); Glaxo WarnerLambert OTC G.P. v. Johnson & Johnson-Merck Consumer Pharms. Co., 935F. Supp. 327, 329 (S.D.N.Y. 1996). In another twist, one court required theplaintiff to demonstrate that the advertising claims conveyed the impliedmessage that tests or studies support the claims before challenging theadvertisements as tests-prove claims. See L&F Products Inc. v. Procter& Gamble Co., 845 F. Supp. 984, 1000 (S.D.N.Y. 1994). But not all courts have defined tests-prove claims sobroadly as to include implicit, as well as explicit, claims that theadvertisement is supported by tests or studies. Tacit in some earlier decisionswas the requirement that the tests-prove claim be express. See Sandoz Pharm.v. Richardson-Vicks Inc., 902 F.2d 222, 223 (3d Cir. 1990) (evaluating aclaim that cough syrup starts to work the instant it is swallowed as baldclaim); Johnson & Johnson-Merck, 19 F.3d at 129. Later decisions have made an express reference to testing aprerequisite: “When challenging a claim of superiority that does not makeexpress reference to testing, a plaintiff must prove that the defendant’s claimof superiority is actually false, not simply unproven or unsubstantiated.” United Industries, 140 F. 3d at 1182 (evaluating as a tests-prove claiman advertisement regarding the efficacy of a roach trap that was advertised as”based on lab tests”); see also EFCO Corp. v. Symons Corp.,219 F.3d 734, 740 (8th Cir. 2000). The lengthiest discussion of this issue comes from the 4thCircuit in C.B. Fleet Co. v. SmithKline Beecham Consumer Healthcare L.P.,131 F.3d at 439. There, the court was considering the defendant’s claim thatits product was “Now Designed for Better Cleansing” and that itcleaned better than the plaintiff’s product. In affirming the judgmentdismissing the action, the court decided that the task of determining whetheran advertising claim implicitly asserts it is test-validated is a question offact. The advertising in front of the court “contained no expressassertion of test validation nor [was] there any language in the text thatimplie[d] it,” and the 4th Circuit found the trial court need not lookfurther than the advertisement itself in making the determination. The appellate court affirmed the lower court’s finding thatthe defendant’s advertising made no tests-prove claim: “The fact that itwas later revealed in litigation that the claim was test-based does not alterthis. The relevant question for determining the required proof is whether theadvertisement made an assertion of test-validation to the consumer public. Ifit was not asserted in the advertised claim, it was not made part of the claimbeing challenged as false. If it is later revealed, through discovery or otherwise,that the claim was test-based, the claimant obviously may challenge the test’sreliability in attempting to prove false the advertised fact, but falsityremains the required object of proof.” Id. The plaintiff wastherefore required to prove affirmatively the actual falsity of the defendant’sadvertising claims. In sum, while liability under � 43(a) was expanding for manyyears, the recent trend is to constrict the provision’s scope, typically bycategorizing the advertisements. First, characterizing advertising claims asimpliedly false requires the plaintiff to demonstrate, through a survey, thatconsumers received the implied message in the advertisement and that they weredeceived. Second, in cases concerning literally false advertising claims,courts have shown increased willingness to classify claims as bald assertions,thereby raising the plaintiff’s burden of proof. Therefore, the key for any �43(a) party is to convince the court to place the challenged advertisements inthe right category. William H. Manning is a partner at Minneapolis’ Robins,Kaplan, Miller & Ciresi, www.rkmc.com. Jennifer L. McKenna is an associate in the firm’sLos Angeles office. They both practice in the areas of intellectual propertyand business litigation.

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