October 9 marks the 100th anniversary of Louis Brandeis’ first session as a justice of the Supreme Court of the United States (October 9, 1916 was the second Monday in October – in 1917, the Court began meeting on the first Monday). This occasion is worthy of remembrance not only because of the historical importance of the man himself, but also because Brandeis was the first Jewish jurist (or non-Christian of any creed) to ascend to the high court,… More
Category Archives: False Advertising
This post first appeared in Law360 as “10 Considerations When Advertising On Social Media,” published on September 21, 2016.
Most modern advertising campaigns include social media components. In fact, it is not uncommon today to see products advertised exclusively on social media. For the most part, the same rules that govern traditional advertising also govern commercial speech on social media.… More
I May Not Be Able To Pronounce Acai But I Know It Doesn’t Burn Fat Cells: 5 Recent Over-the-Top Weight Loss Advertising Claims And How The Federal Trade Commission Responded
Some say “ah-sigh;” I say “ah-kai;” but apparently the proper pronunciation of “acai” — the so-called super berry — is actually “ah-sigh-ee.” Who knew? Acai berries are native to the Amazon rainforest and have been hailed by marketers as offering a slew of health benefits, including massive weight loss. Unfortunately, according to various consumer advocacy groups like the Center for Science in the Public Interest,… More
It has been about a year since we published Harry Potter Lawsuits and Where to Find Them, my attempt at a comprehensive review of Harry Potter-related litigation. Why update the article now? Two reasons. First: The long-awaited book version of Harry Potter and the Cursed Child hits the shelves on July 31, 2016.… More
This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More
When Is Internet Speech Protected Petitioning Activity? Federal Court Grants Anti-SLAPP Motion In FIRE CIDER Trademark Suit
On May 12, 2016, the District of Massachusetts held that that an online campaign in support of the cancellation of a registered trademark (FIRE CIDER) was protected petitioning activity, even though the campaign was organized and supported by the trademark owner’s competitors. Because the campaign activity was protected, the Court granted the competitors’ anti-SLAPP special motion to dismiss certain claims. The case, Shire City Herbals v.… More
Continuing its trend of scrutinizing claims touting improved cognitive function, the Federal Trade Commission recently announced a settlement with LearningRx Franchise Corp. (“LFC”), the developer and franchisor of a chain of “LearningRx centers” providing one-on-one cognitive training to consumers. The FTC’s settlement with LFC comes in the wake of several other high-profile FTC actions involving cognition claims, including a $2 million settlement with Lumos Labs,… More
First Circuit Affirms FTC Social Media Order: Jerk.com Users Jerked Around By Material Misrepresentations
In Fanning v. Federal Trade Commission, the First Circuit affirmed a summary decision of the Federal Trade Commission (FTC), which found that Jerk LLC, the operator of Jerk.com, materially misrepresented both the source of its content and the nature of its membership benefits, in violation of the Federal Trade Commission Act. However, the Court also curtailed certain monitoring provisions ordered by the FTC,… More
For the last two years, we have published the Trademark Year in Wine and Beer, a catalogue of each year’s trademark disputes in the alcoholic beverage industry. That is why we were extra excited on April 21, 2016 when the California Secretary of State announced the release of nearly 4,000 digitized trademark applications filed between 1861 and 1900.… More
Beyoncé Giselle Knowles-Carter, known to most as simply Beyoncé, and as “Bey” to those who like to pretend they know her, is about as famous as one can be. She transitioned from the acclaimed group “Destiny’s Child” to become one of the biggest pop stars in the world. Number one hits, Grammy Awards, sold-out tours, and even a reasonably successful film career are firmly under her fashionable belt.… More
William Shakespeare breathed his last on April 23rd, 1616, so this April 23rd marks 400 years since his death. It is also, supposedly, his 452nd birthday. Putting aside the oft-silly conspiracy theories and multitudinous alternate spellings of his name, many details of Shakesper’s life are clearly documented in contemporary sources. No one is sure, however, exactly what he was up to in the 1580s.… More
The Food and Drug Administration (FDA) has finalized guidance for industry describing the agency’s evaluation process for proposed proprietary names for drug and biological products. The guidance applies to all prescription and nonprescription drug products, innovator and generic drug products, and biological products. Drug products that may be legally marketed without an approved application are excluded (e.g., OTC drugs legally marketed under a tentative or final monograph). … More
Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”
When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are,… More
Corporate Defendants Find a Safe Harbor from Unfair Competition Claims in California Transparency Litigation
A District Court judge in California has dismissed a complaint against Nestlé USA Inc. and Nestlé Purina Petcare Co. (together “Nestlé”) which argued that the company was obligated to inform consumers that seafood in its catfood products may have been sourced from forced labor. Plaintiffs alleged violations of the California Unfair Competition Law, the Legal Remedies Act, and the California False Advertising Law.
Haven’t seen the new Star Wars movie yet? The pop culture zeitgeist recommends that you binge-watch all six of the prior Star Wars movies before going to see Episode VII, The Force Awakens and, according to the Washington Post, there is some controversy about the proper binge-watching order. Should you watch them in narrative order (I through VI) or in film release date order (IV-VI and then I-III)? … More
Trademark and Copyright Law Blog Welcomes Natasha Reed as Author and Counsel in Foley Hoag’s New York Practice
We are delighted to welcome Natasha Reed as counsel in Foley Hoag’s Intellectual Property Department and — more importantly for present purposes — as our newest blogger. She’ll join Peter Sullivan in our New York City Office and on the author column of the blog.
Natasha has helped owners of some of the world’s most recognized brands in the luxury goods,… More
It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation, Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get the Trademark and Copyright Law Blog into the holiday spirit,… More
Just in time for the holiday season, we present our second annual Trademark Year in Wine and Beer. Whether you are planning a holiday party or just having some friends over, you are probably in the market for some liquid holiday cheer. Sure, you could make your beverage purchases based only on taste or price, but instead why not mix it up this year and pick a drink that was the subject of a recent notable trademark dispute?… More
What if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution,… More
Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival,… More
In its recent decision in Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., a case involving claims for breach of contract and trademark infringement, the U.S. Court of Appeals for the First Circuit affirmed a preliminary injunction based upon the contract claims, but vacated the portion of the order requiring trademark attribution. In an opinion authored by retired Supreme Court Justice David Souter,… More
Consider this: You are shopping online and you type in the name of a brand of wristwatch. Perhaps you wanted to purchase that exact brand of watch, or perhaps you were looking for a selection of watches that included the brand but also watches similar to it. You click onto a retailer and type in the brand, and you receive “results” for your search. In the list of results there appears other watch brands,… More
On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression,… More
And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation
The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves,… More
The Better Business Bureau announced last Thursday that it has amended its Code of Advertising to address the new and evolving ways in which advertisers reach consumers through technology. The Better Business Bureau is the administrative parent of the advertising industry’s self-regulatory bodies, including the National Advertising Division.
As advertisers market to consumers who spend more time looking at smart phones and computer screens than television screens and magazines (the traditional media of mass-market advertising),… More
The Beastie Boys can look back on 2014 as a year of good copyright outcomes. The preceding years had seen their music used without authorization in two promotional videos, by Goldieblox and Monster Energy, despite the surviving members’ commitment to honor the wishes of Adam Yauch, known as MCA, that Beastie Boys music not be used in commercial advertisements.… More
Heading into this year’s Super Bowl party season, there are two things every lawyer should be concerned about. First, why can’t your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven’t been following? We can’t help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation,… More
Advertiser Jumps the Gun With Brochure Touting Tests; Fifth Circuit Brushes Off First Amendment Challenge to Lanham Act Claims
Like claims for defamation or commercial disparagement, Lanham Act claims are viable only if they involve statements of fact, rather than opinion. But what happens if an advertising statement concerns an issue that is a matter of scientific debate? Does that make the statement an opinion, and therefore non-actionable? The answer, of course, is “it depends” — as illustrated by a recent Fifth Circuit case, and how it distinguished itself from a Second Circuit case with a different outcome.… More
The Massachusetts Supreme Judicial Court (SJC) has upheld the conviction of an Andover couple for violation of the Commonwealth’s criminal harassment statute by, among other things, posting fake ads on Craigslist. In brushing aside the couple’s challenges to the statute, the Court emphatically held that the First Amendment does not provide a defense to allegations of criminal harassment simply because the defendant uses words to carry out the harassment. … More
If you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case,… More
Use of Porn Star Images in “Romance Fraud” Dating Profiles Fails to Support Trademark and False Advertising Claims
The plaintiff in Avalos v. IAC/Interactive Corp. called it “one of the biggest conspiracies ever executed on the internet” — the unauthorized use of images of adult film stars in fake online dating profiles. But in an opinion issued October 30, 2014, Judge Jesse Furman of the Southern District of New York held that trademark law was not the right way to go about solving this problem.… More
For those few of you who don’t know already, Yelp! (“Yelp”) is a wildly popular website where people can share their reviews, opinions, experiences, and ratings of businesses across the country. This service is invaluable when investigating new restaurants, dog walkers, dry cleaners, etc. However, it is important to take the reviews with a grain of salt because, no matter how great a store is,… More
Appearances Aside, “Something More” Still Needed for Trademark Infringement Liability in Keyword Advertising Cases
Search engine optimization is a vital issue for brand owners. When a potential customer searches online for Company A, a well-known brand, Company A naturally wants its own website to be as high in the search results as possible and, ideally, at the top of the list.
But Company A is not alone. Its competitor, Company B, wants to show up in the search results as well. … More
The National Advertising Division is holding its annual conference this week in New York, and Foley Hoag is in attendance for what many consider to be the leading conference of its kind. Day One saw an impressive line-up of panelists and speakers, beginning with an address by Federal Trade Commission Chairwoman Edith Ramirez, who outlined areas of particular focus over the coming year: weight loss claims, cognitive benefit claims,… More
How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss
Despite celebrity endorsements from the likes of Dennis Miller and Alan Thicke, all that glitters isn’t gold when it comes to the marketing of precious metal investments. In March 2014, American Bullion, Inc., which is in the business of encouraging individuals to convert their retirement savings to gold and silver, brought suit against its competitor, Regal Assets, LLC, in the Central District of California, alleging a host of unsavory internet marketing practices. … More
If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail. Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to the waterfront. Then hop on a Harbor Island ferry and get off at Spectacle Island, where a piece of a vintage White Tower Hamburger plate recently washed up on the beach.… More
The Supreme Court issued a unanimous decision last week in Pom Wonderful LLC v. Coca-Cola Co., a case pitting the false advertising provisions of the Lanham Act against the beverage labeling standards of the federal Food Drug & Cosmetics Act (FDCA). Pom Wonderful, maker of 100% pomegranate juice and other pomegranate-based products, brought false advertising claims against Coca-Cola, accusing its Minute Maid Pomegranate Blueberry drink of misleading consumers into believing they were drinking more pomegranate and blueberry juice than they in fact were. … More
Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By Petitioner
In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States, but only in Mexico. The case illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in egregious cases,… More
After a week at the International Trademark Association Annual (INTA) Annual Meeting in Hong Kong, and another spent exploring the city and its surrounds, it’s nice to be heading back to the comparatively quaint major city we call home. But as I fly through Siberian airspace, over the North Pole, and through Canada en route to Beantown, I have a few parting thoughts.
The Gateway to Everything
As the Gateway to Asia,… More
In its recent decision in Sussman-Automatic v. Spa World, the Eastern District of New York dismissed a plaintiff’s trademark infringement claims, while allowing its claims for false advertising based on the same conduct to survive. The decision explores the boundaries between a false advertising “bait-and-switch” scheme and the “initial interest confusion” theory in Lanham Act cases.
The Mr. Steam Bait-and-Switch
The plaintiff,… More
Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA
In a lawsuit recently filed in the Southern District of Florida, Global Beverage Enterprises, Inc. (“Global”), the manufacturer of specialty carbonated beverages like Mr. Q. Cumber Sparkling Cucumber Beverage, brought Lanham Act claims against CytoSport, Inc., alleging false advertising of CytoSport’s popular Muscle Milk line of beverages. The basis of the claim is that the Muscle Milk beverages contain no milk and, therefore, the product name is false and misleading. … More
On April 30, 2014, the plaintiffs in Bezdek v. Vibram, a class action in the District of Massachusetts, filed for court approval of a class wide settlement. The case had been brought against Vibram, the Italian manufacturer of “five finger” minimalist footwear, by consumers who alleged that the company committed false advertising when promoting health benefits of its product for which there was allegedly no scientific support.… More
This Porridge is Just Right: Supreme Court Adopts “Zones of Interest” Standing in False Advertising Cases
When we last posted about Lexmark v. Static Control, we expected that the Supreme Court would endorse one of the circuit court tests to determine whether Static Control, the maker of a chip that facilitates printer cartridge remanufacturing, had standing to bring a false advertising claim against Lexmark, a company that makes printers and printer cartridges but is not strictly a competitor of Static Control.… More
Social media has become a powerful marketing tool, allowing celebrities to develop their brands and images with the help of Facebook updates or Tweets that can reach millions of fans at the same time. Given the importance of social media as a brand-building medium, how should the law treat “fan accounts,” which are created by fans using a celebrity’s name? What protection does the law provide to celebrities trying to control usage of their personae and brands on social media platforms?… More
Today’s consumers depend on “crowd-sourced” review websites like Angie’s List and Yelp, which permit users to post and read reviews of goods and services. Businesses feel a corresponding pressure to encourage favorable reviews on such websites. But what happens when the website intervenes to regulate the reviews it hosts, perhaps (for example) by deleting reviews that appear phony or suspicious? Can a business sue the website for deleting reviews that would otherwise reflect positively on its goods or services?… More
A recent opinion from the Western District of Virginia sets forth a useful framework for analyzing a variety of Lanham Act claims based on false commercial speech uttered in social media.
A recent decision resolving an advertising dispute between Campbell Soup Company and Tropicana Products, Inc. reinforced what we know to be empirically true: simply claiming to be the “best” really doesn’t mean much at all. See Tropicana Products, Inc., NAD Case Report No. 5610 (July 3, 2013). It’s usually just hyperbole, a tool in the advertiser’s toolbox too vague to put a competitor at a disadvantage,… More
The Supreme Court has recently agreed to hear argument in Lexmark v. Static Control that will strike at the very heart of false advertising jurisprudence by asking who is allowed to bring false advertising claims. The Lanham Act states that such claims may be brought “by any person who believes that he or she is or is likely to be damaged by” an alleged misrepresentation “in commercial advertising or promotion.” Courts have varied in interpreting that language to determine exactly who is an appropriate plaintiff.… More
Dot Com Disclosures 2.0: FTC Updates Online Disclosure Guidelines to Address Changes in Digital Advertising
Nearly thirteen years after issuing guidelines governing online advertising, the Federal Trade Commission (“FTC”) recently updated its so-called Dot Com Disclosures to take account of the many changes to the online world that have occurred over those intervening years. Whereas most digital advertising thirteen years ago was popping up or scrolling across our computer screens, today’s digital advertising is far more integrated into our online culture—whether as email offers to invitation-only flash sales (“50% off;… More
Amazon has recorded another success in its battle with Apple over use of the term APP STORE. The U.S. District Court in California has granted Amazon’s motion for summary judgment on Apple’s claim of false advertising arising from Amazon’s use of the term APP STORE (or APPSTORE in practice) in connection with Amazon’s online store selling applications for Android devices and the Kindle Fire.
As is well known,… More
“Raw” Row: NAD Declines Recommending Discontinuance of IN THE RAW Product Claim for Stevia Sweetener
Cargill Health & Nutrition, the maker of TRUVIA sweeteners, recently brought a false advertising challenge against its competitor Cumberland Packing Corp. over Cumberland’s use of the product name STEVIA IN THE RAW. See Cumberland Packing Corp., NAD Case Report No. 5525 (November 29, 2012). Cargill brought the challenge before the National Advertising Division, a self-regulatory program administered by the Better Business Bureau. … More
In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons.… More
The Federal Trade Commission released its much anticipated “Green Guides” earlier this month. As discussed here, on Foley Hoag’s Law & the Environment blog, the guides seek to rein in the use of specious environmental marketing claims by ensuring that marketers have competent and reliable scientific evidence to back up express and implied environmental claims.… More
The Federal Trade Commission recently finalized changes to its investigative procedures. The changes are intended to streamline a process that has, in recent years, become increasingly lengthy and unwieldy. The driving force behind the changes, which will become effective November 9, 2012, is the ever-increasing pace of technology, in particular its effect on the amount of electronic data that a respondent must comb through when it finds itself the target of a Commission investigation.… More
A federal district court in Massachusetts was recently sucked into a false advertising dispute between manufacturers of competing vacuums and steam cleaners over alleged violations of Section 43(a) of the Lanham Act. The plaintiff, Euro-Pro Operating LLC (“Euro-Pro”), which manufactures the popular “Shark” steam mop and “Shark Navigator” vacuum, filed suit against the defendant, TTI Floor Care North America (“TTI”), alleging false advertising and unfair competition in connection with certain superiority claims made in infomercials for TTI’s “TwinTank” steam mop and “WindTunnel” vacuum cleaner.… More
*75% is only the author’s opinion. Actual likelihood may vary.
In the midst of one of the most brutal heat waves in recent history, the FTC has published a research study taking window manufacturers to task for, among other things, making aggressive “up to” claims regarding savings on air conditioning bills. (In case you were one of the millions sweltering without power, here is one of the ads that the FTC focused on in its report.)
According to the FTC,… More
Spring Cleaning: FTC Announces Settlement with Oreck Corporation Regarding Vacuum Cleaner and Air Purifier Claims
The Federal Trade Commission has been busy. On the heels of its $40 million settlement with Skechers, one of the largest of its kind, the Commission yesterday announced that it has settled with Oreck Corporation regarding allegedly unsubstantiated claims that the company made regarding its Halo vacuum cleaner and ProShield Plus portable air purifier. Oreck has agreed to pay $750,000, which will be disbursed to affected consumers via $25 refund checks,… More
Shape-up or Ship-out: FTC Sends Tough Message to Marketers of Toning Shoes But Fails to Clarify Murky Standard
After much hype on Twitter regarding an action against a “major marketer of consumer goods,” the Federal Trade Commission today announced that it has settled with Skechers USA, Inc. over allegedly deceptive claims that the company made concerning its Shape-ups and other “toning shoes.” The settlement was part of a broader agreement resolving a multi-state investigation led by Attorneys General in Ohio and Tennessee and comes roughly eight months after a similar FTC action against Reebok.… More
Frank Fazio, a disgruntled iPhone 4S user from New York, recently filed a federal class action lawsuit against Apple in California, alleging that the Siri feature of the iPhone 4S does not work as advertised. For those of you who still use pay phones, Siri is a virtual assistant that uses voice recognition to answer questions and perform tasks that would otherwise require typing, such as making calls, sending text messages, scheduling meetings, and getting directions. Mr. Fazio alleges that he purchased an iPhone 4S in November 2011 based on representations made by Apple regarding the Siri feature but began noticing problems right away.
On September 28, the FTC announced that Reebok has agreed to pay $25 million to settle a lawsuit alleging that Reebok’s EasyTone shoes were advertised in a deceptive manner. According to the FTC’s press release, the funds will be made available for consumer refunds either directly from the FTC or through a court-approved class action lawsuit.
False advertising is an expensive business model. In a recent case involving infomercials for coral calcium supplements which allegedly cure cancer (among other things), the First Circuit affirmed an order requiring the defendants to disgorge nearly $50 million in gross revenues — not just profits — on the ground that the “consumer loss” was an appropriate measure of damages.
But false advertising can be expensive for plaintiffs,… More
In what would appear to be the final chapter of the battle between online giant eBay and luxury jeweler Tiffany, a Southern District of New York judge has bounced Tiffany’s false advertising claim, the only claim remaining following a Second Circuit decision earlier this year.
On remand, the district court focused on whether eBay’s advertisements about the availability of Tiffany merchandise on its site misled or confused customers since at least some purportedly Tiffany products were counterfeit.… More