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8/8/2019 Havana Club Amicus Brief - FINAL
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No. 10-2354
IN THE
United States Court of Appeals
for the Third Circuit
PERNOD RICARD USA, LLC,
Plaintiff-Appellant,
v.
BACARDI U.S.A., INC.,
Defendant-Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BRIEF OF COUNCIL OF AMERICAN SURVEY RESEARCH
ORGANIZATIONS, INC. AND AMERICAN ASSOCIATION FOR
PUBLIC OPINION RESEARCH AS AMICI CURIAE
Duane L. BerlinLEV & BERLIN, P.C.
200 Connecticut Avenue, 5th Floor
Norwalk, CT 06854
Telephone: (203) 838-8500
Facsimile: (203) 854-1652
Of Counsel
September 21, 2010
Richard J. LeightonScott M. Abeles
KELLER AND HECKMAN LLP
1001 G Street, NW, Ste 500W
Washington, DC 20001
Telephone: (202) 434-4100
Facsimile: (202) 434-4646
Leyla Mujkic
KELLER AND HECKMAN LLP3 Embarcadero Center, Ste 450
San Francisco, CA 94111
Telephone: (415) 948-2800
Facsimile: (415) 948-2808
Attorneys for Amici Curiae
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i
TABLE OF CONTENTS
TABLE OF AUTHORITIES........................................................................ii
INDENTITIES, INTERESTS, AND SOURCE OF AUTHORITY ........... 1
INTRODUCTION AND SUMMARY OF ARGUMENT ............................ 3
ARGUMENT ................................................................................................ 7
I. Decades of Jurisprudence Have Demonstrated the Utilityand Necessity of Perception Survey Evidence.................................. 7
A. The Lanham Acts Structure and Purpose Renders
Perception Survey Evidence Uniquely Helpful to theTrier of Fact............................................................................... 9
B. Given Its Probative Nature, Consideration of
Perception Survey Evidence Has Become WovenInto the Fabric of Lanham Act Law. ..................................... 14
C. Courts Have Limited Litigants Ability to Offer
Consumer Survey Evidence Only in Cases in WhichSuch Evidence Would Not Impact Liability.......................... 16
II. The District Courts Decision Is Wrong as a Matter ofSettled Law and Public Policy. ........................................................ 21
A. The District Courts Decision Contradicts ThisCircuits Precedents and Misapplies Others. ....................... 22
B. Limitations of Proof on the Ability to Establish the
Deceptiveness of True Statements Undercut the
Lanham Acts Competition and Consumer
Protection Goals. ..................................................................... 27
CONCLUSION........................................................................................... 32
CERTIFICATIONS .................................................................................... 33
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ii
TABLE OF AUTHORITIES
Cases
Abbott Labs v. Mead Johnson & Co., 971 F.2d 6 (7th Cir. 1992) ............21
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 786 F. Supp. 182
(E.D.N.Y.).......................................................................................... 14
Castrol Inc. v. Pennzoil Company and Pennzoil Products
Company, 987 F.2d 939 (3d Cir. 1993)............................................ 19
Charles Jaquin Et Cie, Inc. v. Destileria Serralles, Inc., 921 F.2d
467 (3d Cir. 1990) .............................................................................13
Clorox Co. P.R. v. Procter & Gamble Comml Co., 228 F.3d 24
(1st Cir. 2000) .................................................................21, 23, 25, 27
E.S. Originals, Inc. v. Stride Rite Corp., 656 F. Supp. 484
(S.D.N.Y 1987) .................................................................................. 15
Gillette Co. v. Wilkinson Sword, Inc. 795 F.Supp. 662 (S.D.N.Y.
1992) .................................................................................................. 30
H.N. Heusner & Son v. Federal Trade Commission, 106 F.2d 596
(3d Cir. 1939) ....................................................................................29IQ Prods. Co. v. Pennzoil Prods. Co., 305 F.3d 368 (5th Cir. 2002) ....... 23
Johnson & Johnson v. Smithkline Beecham Corp., 960 F.2d 294
(2d Cir. 1992) ....................................................................................13
Johnson & Johnson-Merck Consumer Pharm. Co. v. Rhone-
Poulenc Rorer Pharms., Inc., 19 F.3d 125
(3d Cir. 1994) ........................................................................20, 21, 23
McNeill-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544
(2d Cir. 1991) ........................................................................20, 21, 23
Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883
(7th Cir. 2000).............................................................................24, 25
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iii
Mead Johnson & Co. v. Abbott Laboratories, 209 F.3d 1032
(7th Cir. 2000).......................................................................25, 26, 27
Novartis Consumer Health v. Johnson & Johnson-Merck
Consumer Pharm., 290 F.3d 578 (3d Cir. 2002).................20, 21, 23
Pernod Ricard USA LLC v. Bacardi USA, Inc., No. 06-505-SLR,
2010 WL 1348241 (D. Del. Apr. 6, 2010) ........................4, 22, 23, 24
Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc., 902 F.2d
222 (3d Cir. 1990) .............................................................................21
Scotch Whisky Association v. Consolidated Distilled Products, 210
U.S.P.Q. (BNA) 639 (N.D. Ill. 1981)..........................................29, 30
Security Center, Ltd. v. First Nat. Secur. Centers 750 F2d 1295(5th Cir. 1985)................................................................................... 15
Triangle Publications, Inc. v. Rohrlich, 167 F.2d 969
(2d Cir. 1948) ....................................................................................11
Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670
(S.D.N.Y. 1963) ................................................................................. 14
Statutes
15 U.S.C. 1125(a) .............................................................................passim
Other Authorities
Barksdale, The Use of Survey Research Findings as Legal
Evidence 141 (Printers Ink Books 1957) ..........................................9
Diamond, Reference Guide on Survey Research, in ReferenceManual on Scientific Evidence, 869 PLI/Pat 329
(2000) ....................................................................................... 7, 11, 18
Edman, Lies, Damn Lies, and Misleading Advertising: the Role of
Consumer Surveys in the Wake of Mead Johnson v. Abbott
Labs, 43 Wm. & Mary L. Rev 417 (2001).................................. 15, 25
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iv
Jacoby, et al., Survey Evidence in Deceptive Advertising Cases
Under the Lanham Act: An Historical View of Comments
From the Bench, 1148 PLI/Corp 231 (1999) ............................. 10, 11
Keller, et al, Surveys in False Advertising Cases, 624 PLI/Pat 351
(1992) ........................................................................................... 14, 16
Kirkpatrick, Likelihood of Confusion in Trademark Law, 617
PLI/Pat 83 (2006)......................................................................... fn 13
Leighton, Using Daubert Kumho Gatekeeping to Admit and
Exclude Surveys in Lanham Act Advertising and Trademark
Cases, 92 Trademark Rep. 743 (2005) .............................................. 9
Leighton, Making Puffery Determinations in Lanham Act False
Advertising Cases: Surveys, Dictionaries, Judicial Edicts &Materiality Tests, 95 Trademark Rep. 615 (2005)..........................25
Lipton, Trademark Litigation: A New Look at the Use of Social
Science Evidence, 29 Ariz. L. Rev. 639 (1987) ................................ 16
Manta, In Search of Validity: A New Model for the Content and
Procedural Treatment ofTrademark Infringement Surveys,
24 Cardozo Arts & Ent. L. J. 1027 (2007)....................................... 16
Manual for Complex Litigation, (Fourth) 11.493 (2004) ...................... 18
McCarthy on Trademarks and Unfair Competition (2010) ............passim
Rappeport, Litigation Surveys--Social Science As Evidence, 92
Trademark Rep. 957 (2002) .................................................10, 12, 17
The Will to Believe, An Address to the Philosophical Clubs of Yale
and Brown Universities, New World (1896) ...................................18
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IDENTITIES, INTERESTS, AND SOURCE OF AUTHORITY TO
FILE OF AMICI CURIAE
The Council of American Survey Research Organizations, Inc.
(CASRO) is a not-for-profit trade association representing over three
hundred (300) United States survey research companies engaged in
professional survey research regarding a wide variety of technical,
scientific, economic, and other public and private issues. CASROs
members are in the aggregate responsible for the overwhelming
majority of the survey research conducted each year in the United
States.
The American Association for Public Opinion Research (AAPOR)
is a leading professional organization of public opinion and survey
research professionals in the United States, consisting of seven (7)
chapters, with members from academia, media, government, the non-
profit sector and private industry. AAPORs members embrace the
principle that public opinion research performs a service that is
essential to a healthy democracy, by providing information that is
crucial to informed policymaking and giving voice to the nations beliefs,
attitudes and desires.
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As leading representatives of the United States survey and public
opinion research industry, CASRO and AAPOR have direct and unique
interests in articulating the importance of survey data in false
advertising cases under the Lanham Act, 15 U.S.C. 1125(a). In
particular, members of each organization frequently are called upon to
conduct surveys to determine perceptions of challenged advertising by
the intended audience and to provide expert opinion in Lanham Act
cases. For decades, courts have welcomed, and in many cases required
(impliedly or expressly), such evidence and opinion in order to aid
judges and juries in determining whether a given advertisement
violates the law.
This memorandum is submitted by CASRO and AAPOR pursuant
to Federal Rule of Appellate Procedure 29 to describe the critical and
necessary role of survey evidence in Lanham Act cases; the manner in
which such evidence benefits competition, consumers, and decision
makers; and the reasons why the lower courts decision, if upheld,
would be injurious to competition, consumers, courts, and the positive
development of the law.
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INTRODUCTION AND SUMMARY OF ARGUMENT
For many years, litigants in Lanham Act false advertisement
cases have offered evidence, in the form of audience (usually, but not
always, consumer) perception studies, in support of their positions that
a given advertisement is (or is not) misleading. Properly constructed,
executed, and interpreted advertising perception survey evidence is
well-accepted, and almost universally embraced as helpful if not
required to show fact-finders how an advertisements audience has
perceived, or is likely to perceive, an advertising message. Such
evidence is also efficient, because it integrates a substantial amount of
information that can be presented through an expert witness (rather
than a parade of witnesses from the intended audience), with the
results and any limitations carefully explained by an expert in the
science of surveying. Such evidence then, in the main, assists courts in
arriving at correct decisions at a lower cost than other evidence.
CASRO and AAPOR appear in this litigation as amici curiae and
support appellant Pernod Ricard USA, LLCs (Pernod) position that
the lower court erred in refusing to consider survey evidence Pernod
offered in support of its deceptive advertising claim. The lower court
refused to consider evidence that use of the name Havana Club on
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defendants packaging misled, or likely would mislead, consumers into
believing that the rum originated in Cuba. The court believed that it
was appropriate to set aside this evidence because [a]n ad that is
truthful on its face cannot be proven to be misleading by surveying
consumers. Pernod Ricard USA LLC v. Bacardi USA, Inc., No. 06-505-
SLR, 2010 WL 1348241, at * 8 (D. Del. Apr. 6, 2010).
The lower court was mistaken. As set forth below, the text and
purpose of the Lanham Acts false advertising provisions make audience
perception studies uniquely helpful in shedding light on an
advertisements impact. See Section I.A. Given its benefits, the use and
consideration of such evidence has become woven into the fabric of
Lanham Act jurisprudence, so much so that the failure to offer survey
evidence has frequently been held to be a fatal flaw. See Section I.B. In
the course of more than 50 years of experience with Lanham Act claims,
courts have made clear that only when an advertisement is judged
literally false or, in some courts, false by necessary implication, is
such survey evidence not appropriate, and then only because it is not
necessary to prove a violation. See Section I.C. At the same time,
courts have made clear that literally true statements may be
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challenged through survey evidence, as such statements, in context,
may still mislead. See id.
Application of these background principles to this case
demonstrates that the lower court erred by refusing to consider survey
evidence of consumer deception. This Court, and sister circuits, have
repeatedly held that an advertising statement that is truthful on its
face can be challenged under the Lanham Act as misleading, often by
use of a survey demonstrating how target audience members interpret
the advertisement. The lower court erred by ignoring this precedent.
See Section II.A.
The lower court compounded its error by extending a questionable
decision of the Seventh Circuit to the facts of this case, while ignoring
that Circuits amendment of the decision, which omitted language the
court below relied upon. The unamended Seventh Circuit decision
purports to hold that perception survey evidence may not be used to
determine the meaning of words in challenged advertising; a dictionary
should instead be used by the court for this purpose. The amended
decision walks away from that strict position. As we explain below,
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that Seventh Circuit pre-amendment decision, regardless of any
intrinsic worth, is inapplicable to the facts here. See Section II.B.
More significantly, extension of that Seventh Circuit pre-
amendment decision to the facts here would mark an unfortunate sea-
change in the law, preventing the offer of survey evidence of deception
when challenging advertising claims that may be true in an intellectual
vacuum, but misleading in the real world. See id. The decision below
should be reversed.1
1 Use of the term advertising here is meant to include commercial
advertising and promotions in interstate commerce. In most Lanham
Act false advertising cases, potential purchasers of the product or
service at retail are the intended audience for the challenged
advertisement. Hence, courts often denominate perception surveys
offered in such cases as consumer perception surveys or, simplyconsumer surveys. In some false advertising cases, the intended
audience may be purchase influencers (e.g.. physicians who recommend
drugs), commercial purchasers (e.g.. those who buy at retail), or other
non-retail consumers.
Generally, the terms perception survey evidence, and perception
studies are used here to mean the process of systematically obtaining
responses from a representative sample of a defined universe of people
who are the intended audience of a challenged advertisement (e.g.,
potential purchasers of an advertised product or service) to a stimulus(e.g., the challenged advertisement) about those respondents mental or
sensory observations, beliefs, thoughts, motivations or actions,
including influences on any of those, for the purpose of obtaining data
about the stimulus that may be extrapolated to the whole universe.
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ARGUMENT
I. Decades of Jurisprudence Have Demonstrated the Utility
and Necessity of Perception Survey Evidence.
Whether they measure policy preferences of the body politic, taste
preferences of would-be shoppers, talent of would-be idols, or
something else, surveys are ubiquitous in modern American society. As
the survey method provides an economical and systematic way to
gather information about a large number of individuals or social units,
surveys have a particularly important role to play in civil litigation and
a rational economy. Diamond, Reference Guide on Survey Research, in
Reference Manual on Scientific Evidence, 869 PLI/Pat 329, 335 (2000).
Surveys have served as evidence in cases for decades, and continue to
be offered in support of, among other areas, legal theories spanning
antitrust, employment law, mass torts, civil and criminal procedure,
and damage calculations.
No area of the law has proven more fertile for the use of survey
evidence than challenges brought under the trademark infringement
and false advertising provisions of the Lanham Act. Because such
challenges concern whether potential purchasers of a given product or
service, purchase influencers, or other material target audience
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members are likely to be confused or misled, perception studies are
more effective than any feasible substitute in answering the core
question such cases pose: at the time the intended audience member
perceived the message in question, how did she understand it?
Given its probative nature, courts typically have welcomed,
encouraged, and even required perception survey evidence in Lanham
Act cases. At the same time, courts have been careful not to restrict
narrowly the admission and use of such evidence. This is as it should
be. The science of surveying has developed along with the Lanham Act
surveying experts have become better at explaining their surveys and
results, and courts have become better at understanding and applying
those results. Denying litigants the right to offer such facially valid
evidence of deception as a matter of law where a challenged claim is
found to be literally true undermines the consumer competition
protection goals that the law seeks to foster. 2
2 Amici recognize that, as with other forms of evidence, perception
survey evidence can be flawed in its construction, execution, or
interpretation. How courts treat such evidence, when flawed, is not at
issue here. This brief addresses the instances in which courts should
and should not consider such evidence in the first case, not the role of
such evidence if considered and found wanting.
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A. The Lanham Acts Structure and Purpose Renders
Perception Survey Evidence Uniquely Helpful to the
Trier of Fact.
Use of survey evidence to prove trademark violations predates the
Lanham Act by many years. See Leighton, Using Daubert Kumho
Gatekeeping to Admit and Exclude Surveys in Lanham Act Advertising
and Trademark Cases, 92 Trademark Rep. 743, 756-57 (2005)
([a]pplication of the rudiments of surveying in trademark disputes
was discussed as early as 1910 by one of the noted trademark
attorneys of the time) (citing Hiram C. Barksdale, The Use of Survey
Research Findings as Legal Evidence 141 (Printers Ink Books 1957)).
In 1911, the United States Trademark Association (now the
International Trademark Association) published a speech by its
Secretary in which he looked to experimental psychology to supply the
knowledge needed to address significant proof of fact issues in
trademark infringement cases. Id. Rough versions of the types of
surveys being proffered to courts in advertising and trademark cases
today began to appear in the 1920s. Id. (citing cases).
Enacted in 1946 and significantly revised in 1988, the Lanham
Acts structure and substance impliedly recognizes the need for, and
benefits deriving from, perception survey evidence in litigation arising
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under it. The Act today authorizes a party to sue a competitor that, in
connection with the sale of goods or services, uses a false or misleading
description of fact, or false or misleading representation of fact which
in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
persons goods, services, or commercial activities. See 15 U.S.C.
1125(a) (Section 43(a)). Because these provisions raise key questions
regarding the consumers state of mind, see Jacoby, et al., Survey
Evidence in Deceptive Advertising Cases Under the Lanham Act: An
Historical View of Comments From the Bench, 1148 PLI/Corp 231, 233
(1999), a key piece of required evidence in most Lanham Act litigation
is data on the perceptions of a cross-section of appropriate people.
Rappeport, Litigation Surveys--Social Science As Evidence, 92
Trademark Rep. 957, 959 (2002) (emphasis removed).
An early test of the law spawned one of the classic statements on
the utility of survey evidence in Lanham Act actions. Given the identity
of the owner of the allegedly infringed trademark (the girls magazine
Seventeen), and the allegedly infringing product (girdles labeled Miss
Seventeen), Judge Jerome Frank explained that, in the absence of
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survey evidence providing the reactions of numerous girls and women,
the trial courts analysis was no better than a guess, as neither the
trial judge nor any member of this court is (or resembles) a teen-age girl
or the mother or sister of such a girl. Triangle Publications, Inc. v.
Rohrlich, 167 F.2d 969, 974, 976-77 (2d Cir. 1948) (Frank, J.,
dissenting) (cited in Diamond, supra, and Jacoby, supra).
To be sure, Judges frequently are called upon to render opinions
in cases involving matters with which they lack familiarity. But
perception studies serve interests beyond mere exposure to audience
members assessments of a given product or service. Courts conceivably
could receive directly such evidence of the implications made by a
challenged advertisement from individual members of that ads
audience. Obtaining a statistically significant number of representative
individual witnesses, however, would be hopelessly impracticable.
Moreover, the Lanham Act is concerned with whether a
significant portion of the entire universe of potential buyers of a given
product or service (or other intended audience) is likely to be misled. As
a commentator and survey expert has explained in the context of a
disputed trademark:
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[T]he Lanham Act does not look to whether one individual
is confused or misled, but rather to whether there is a
likelihood that a significant fraction of the (an) appropriate
public will be confused. The essential issue of whether or
not there is a likelihood of confusion in Lanham Act cases is:How will a cross-section of people perceive competing
trademarks and/or advertising?
Rappeport, Litigation Surveys, supra, at 958 (citation omitted).
Survey evidence also has the benefit of measuring consumer
perceptions under conditions intended to mimic those faced by a
consumer at the time the Lanham Act is intended to protect them ; that
is, at the time purchase decisions can be formed. Once again,
[A] typical false advertising claim states that a cross-
section of prospective consumers is or will be misled when
they initially encounter the advertising in the real world.
This need demands that the witnesses must be nave in
the sense that they react as they would at first contact in
real life. The basic value of a survey is that it scientificallyapproximates the mental associations and reactions of
prospective purchasers with the goal of clarifying how the
target population will perceive the advertisements.
There is no other way of developing this kind of evidence.
Id. at 958 (emphasis in original, citations omitted).
Thus, even were it feasible to persuade an adequate subsection of
a challenged advertisements intended audience to appear and testify
live in court, the testimony gleaned would be less probative than that
obtained via a valid perception survey. It also would be less direct.
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That is, survey evidence, while circumstantial in one sense, is direct in
the sense that matters most: how the potentially affected public
perceives a given advertisement in the setting in which the public is
intended to view it. See e.g., Johnson & Johnson v. Smithkline
Beecham Corp., 960 F.2d 294, 297-98 (2d Cir. 1992). As the leading
treatise author on Lanham Act false advertising and trademark law put
it, surveys are the most direct method of demonstrating secondary
meaning and likelihood of confusion. 5 McCarthy on Trademarks and
Unfair Competition 32:195 (citing Charles Jaquin Et Cie, Inc. v.
Destileria Serralles, Inc., 921 F.2d 467, 476 (3d Cir. 1990)). 3
Perhaps most significantly, given the nature of the offenses
targeted by the law, perception studies enable effective enforcement of
the Lanham Act, and thereby advance its goals. As one court noted,
proof of actual confusion (e.g., identifying enough individual
consumers who were misled into purchasing) in Lanham Act cases, is
3
See also Kirkpatrick, Likelihood of Confusion in Trademark Law,617 PLI/Pat 83, 87 (2006) (The court is not concerned with mere
theoretical possibilities of deception but with the practicalities of
the commercial world... The realities of the marketplace control
because that is where confusion of prospective purchasers would or
would not occur. The publics perspective controls, not the courts.).
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almost impossible to obtain See Bristol-Myers Squibb Co. v. McNeil-
P.P.C., Inc., 786 F. Supp. 182, 201 (E.D.N.Y.). Consumers actually
deceived by an advertisement do not usually contact the advertisers
competition to complain. See Keller, et al, Surveys in False Advertising
Cases, 624 PLI/Pat 351, 359 (1992). As a practical matter, the offering
of a survey measuring potential deception, with a request to enjoin the
offending advertisement, is often the only way to demonstrate
likelihood of harm, and prevent further harm. See id. Moreover, the
resources of the judiciary and of litigants are far better preserved
through the use of a perception survey than through any other
approach. See Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670,
683-84 (S.D.N.Y. 1963) (with the state of mind of 115,000,000 smokers
at issue, the practical alternatives to a scientific survey calling all
smokers as witnesses, calling a subset, or having experts testify as to
the state of the public mind do not produce equally probative
evidence).
B. Given Its Probative Nature, Consideration of
Perception Survey Evidence Has Become Woven Into
the Fabric of Lanham Act Law.
No provision of the Lanham Act expressly requires that a plaintiff
support its case-in-chief with survey evidence, or that a defendant meet
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such evidence with a survey of its own. Nonetheless, consistent with
Congresss directive to courts to guide the Lanham Acts development in
furtherance of its goals, and with the fact that survey evidence aids in
such furtherance, courts strongly have encouraged, if not required, the
introduction of survey evidence. See e.g., Security Center, Ltd. v. First
Nat. Secur. Centers 750 F2d 1295 (5th Cir. 1985) (lack of survey
evidence was an insurmountable hindrance to meeting the requisite
standard of proof); see also E.S. Originals, Inc. v. Stride Rite Corp., 656
F. Supp. 484 (S.D.N.Y 1987).
As commentators have observed, in a false advertising case proof
of consumer deception almost always comes in the form of consumer
surveys. Edman, Lies, Damn Lies, and Misleading Advertising: the
Role of Consumer Surveys in the Wake of Mead Johnson v. Abbott Labs,
43 Wm. & Mary L. Rev 417, 428, (2001) (citing cases); McCarthy,
supra, 32:195 at 32-332.2 (while there is no flat rule that a survey
must be introduced in Lanham Act cases, an increasing number of
opinions expressly rely upon survey evidence to substantiate the
decision.). Surveys are virtually required in false advertising cases.
Keller, Surveys, supra, at 357. In general, Lanham Act courts have
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come to expect that a survey will be introduced to aid the court in
determining customers state of mind, and the absence of survey
evidence may suggest a litigant is less than deadly serious about its
case. McCarthy, supra, at 32:195 (cited in Manta, In Search of
Validity: A New Model for the Content and Procedural Treatment of
Trademark Infringement Surveys, 24 Cardozo Arts & Ent. L. J. 1027,
1037 (2007)).
Any judicial rule prohibiting litigants from using the main tool
[available] to measure the mental state of some segment of the
consuming public should therefore be narrow and well-considered. See
Manta, In Search of Validity, supra, at 1032 (quoting Lipton,
Trademark Litigation: A New Look at the Use of Social Science
Evidence, 29 Ariz. L. Rev. 639, 642 (1987)). Were it otherwise,
competitors could be foreclosed from supporting otherwise rightful
claims of misleading advertising, increasing the number of deceptive
advertisements and concomitant harm.
C. Courts Have Limited Litigants Ability to Offer
Consumer Survey Evidence Only in Cases in Which
Such Evidence Would Not Impact Liability.
Surveyors and surveying organizations acknowledge that there
are limitations to surveys as evidence. Lanham Act surveys, like other
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surveys, are, at best, imperfect instruments for measuring human
perceptions. Rappeport, Litigation Surveys, supra, at 961; see also id.
(setting forth typical constraints on surveys that may render them
imperfect). As McCarthy explains, [s]urvey results cannot be reduced
to a figure of unimpeachable accuracy, but at best are an
approximation. McCarthy, supra, at 32:186.
Human errors, too, can sometimes mar a surveys results. To
reduce such instances, survey organizations, including the amici, have
crafted and improved standards over many years to guide survey
proponents, increase survey reliability, and reduce the potential for
error. For example, CASRO has published a Code of Standards and
Ethics for Survey Research available at
www.casro.org/codeofstandards.cfm. AAPOR maintains Best Practices
for Survey and Public Opinion Research and a Code of Professional
Ethics and Practices, available at www.aapor.org/ethics/best.
Likewise, to help guard against errors in judicial review of
surveys, the Manual for Complex Litigation has contained factors for
courts to review when assessing the reliability of survey evidence. See
Manual for Complex Litigation, (Fourth) 11.493 (2004) (setting forth
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seven factors to consider regarding survey evidence). There also is a
detailed chapter in the Federal Judicial Centers peer-reviewed
Reference Manual on Scientific Evidence. See Diamond, Reference
Guide, supra, at 229, et seq.
Acknowledging the limitations of this evidence, however, does not
lead logically to a conclusion that it should be excluded as a class. The
universal truism was articulated by William James many years ago:
[o]bjective evidence and certitude are doubtless very fine ideals to play
with, but where on this moonlit and dream-visited planet are they
found? The Will to Believe, An Address to the Philosophical Clubs of
Yale and Brown Universities, New World (1896). The question is not
whether survey evidence is perfect, but whether it is helpful. Taken as
such, there should be, and there are, very few instances in which a
court should decline to consider such clarifying evidence as a class. 4
4
Daubert motions, cross-examination, and the fact-finders weighingprocess may be used when considering particular surveys with
questionable methodology or conclusions. But we are concerned here
with the circumstances in which survey evidence ought not be
considered at all, not with whether any particular survey constitutes
reliable evidence.
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Those instances derive from the text of the Lanham Act itself,
which precludes false representations on the one hand, and
misleading ones on the other. See 15 U.S.C. 1125(a)(1). Given this
dichotomy, a plaintiff can meet its burden by showing either that an
advertisement is (1) false on its face (or false by necessary implication
in some courts); or (2) literally true, but ... likely to mislead and
confuse consumers. See Castrol Inc. v. Pennzoil Company and Pennzoil
Products Company, 987 F.2d 939 (3d Cir. 1993). Thus, a Lanham Act
plaintiff claiming false advertising must prove either literal falsity or
consumer confusion, but not both. Id. at 943 (original emphasis).
If a plaintiff establishes that a challenged claim is false, courts
may grant relief without considering whether the buying public is
actually misled. See Johnson & Johnson-Merck Consumer Pharm. Co.
v. Rhone-Poulenc Rorer Pharms., Inc., 19 F.3d 125, 129 (3d Cir. 1994);
Novartis Consumer Health v. Johnson & Johnson-Merck Consumer
Pharm., 290 F.3d 578, 586-87 (3d Cir. 2002). Courts reason that, when
an advertiser makes an objective claim (e.g., that a given product is
sugar free), and a competitor offers verifiable evidence to the contrary
(e.g., the product contains sugar), there is no need for a consumer
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perception study to support a conclusion that the advertiser has made a
false representation of fact. That aspect of a Lanham Act violation
functions instead as a per se prohibition; evidence of whether consumers
fell for the false representation is not necessary to form the judicial
conclusion. See McNeill-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938
F.2d 1544, 1549 (2d Cir. 1991) (where an advertisement is shown to be
literally false, the court may enjoin it without reference to consumer
deception).
On the other hand, where the advertisements are not literally
false, plaintiff bears the burden of proving actual deception by a
preponderance of the evidence. Hence, it cannot obtain relief by
arguing how consumers could react; it must show how consumers
actually do react. Sandoz Pharmaceuticals Corp. v. Richardson-Vicks,
Inc., 902 F.2d 222, 228-229 (3d Cir. 1990) (original emphasis). Such
evidence is typically adduced through the offer of a consumer survey.
See, e.g., Novartis, 290 F.3d at 590-91; Rhone-Poulenc Rorer, 19 F.3d at
129-30. Other circuits agree with the standard applied by this Court.
See, e.g., Clorox Co. P.R. v. Procter & Gamble Comml Co., 228 F.3d 24,
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33 (1st Cir. 2000); Abbott Labs v. Mead Johnson & Co., 971 F.2d 6, 13
(7th Cir. 1992); McNeil, 938 F.2d at 1548-49.
Here, Pernod sought to demonstrate through a perception survey
how potential purchasers actually do react when they see a bottle of
Havana Club rum. The lower court refused to consider the survey. The
questions for this Court are whether the lower court adequately
distinguished this case from those that consider settled the
understanding that literally true advertisements can be shown to be
misleading through survey evidence, and if not, whether that
understanding should be revisited. As set forth in the following
sections, the answer to both questions should be No.
II. The District Courts Decision Is Wrong as a Matter ofSettled Law and Public Policy.
The lower courts decision strays from well-established precedent
and upsets policy considerations at the heart of Lanham Act
jurisprudence. The court went astray by failing to apply this Courts
settled understanding that consumer survey evidence is appropriately
offered to establish that a literally true message can deceive, and by
misapplying an errant decision from the Seventh Circuit purporting to
hold otherwise. In doing so, the lower courts decision, if not reversed,
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risks undermining the competition and consumer protection goals the
Act seeks to advance.
A. The District Courts Decision Contradicts ThisCircuits Precedents and Misapplies Others.
Plaintiff Pernod alleged that Bacardi U.S.A., Inc. (defendant or
Bacardi) made false and misleading representations concerning the
geographic origin of its Havana Club-branded rum in violation of the
Lanham Act. See Pernod Ricard, 2010 WL 1348241, at *1. In an effort
to meet its burden of proof, Pernod offered expert testimony regarding a
survey conducted by that expert. See id. at *5. That survey tested,
basically, whether the name Havana Club misleads potential
purchasers into believing that the product was manufactured in Cuba, a
country with a reputation for producing quality rum. See id.
Offering such a survey was consistent with a long line of cases in
this Circuit and others permitting and generally encouraging the
offer of such evidence. See, e.g., Novartis, 290 F.3d at 590-91; Rhone-
Poulenc Rorer, 19 F.3d at 129-30; Clorox, 228 F.3d at 33; McNeil-
P.C.C., 938 F.2d 1544, 1548-49; IQ Prods. Co. v. Pennzoil Prods. Co.,
305 F.3d 368, 375 (5th Cir. 2002).
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Pernods survey purported to show that Bacardis use of the
name Havana Club misled more than 20% of rum consumers into
believing that the product was made in Cuba, or confused the same
consumers as to whether the rum is made in Cuba or elsewhere.
Perond Ricard, 2010 WL 1348241, at *5; see also Appellants Statement
Of The Case (describing structure of survey and its results in detail).
This Court previously has found that perception study results at similar
levels can support a claim for false or misleading advertising. See
Novartis, 290 F.2d at 594. Thus, the findings of the expert here could
have, if accepted, supported Pernods contention that use of the
Havana Club name was misleading.
The district court, however, disregarded the survey in its entirety.
Observing that the Havana Club bottle contained a truthful
disclosure that the product was Puerto Rican Rum and crafted in
Puerto Rico, the district court foreclosed consideration of Pernods
survey as a matter of law. Pernod Ricard, 2010 WL 1348241, at *8. It
stated instead that an ad that is truthful on its face cannot be proven
to be misleading by surveying consumers. Id. at *8. Because [t]he
Havana Club label clearly and truthfully provides the origin of
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defendants rum, the court explained, it was not deceptive, regardless
of the results of Pernods survey. See id.
The lower court purported to derive this standard from the
Seventh Circuits decision in Mead Johnson & Co. v. Abbott
Laboratories, 201 F.3d 883, 886 (7th Cir. 2000), and from discussion of
that case in Professor McCarthys treatise. Mead Johnson addressed
whether a label was misleading in claiming its product was the 1st
Choice of Doctors. See id. at 883. The plaintiff sought to offer survey
evidence indicating that a significant percentage of consumers
perceived 1st choice to mean a majority, rather than a plurality, of
doctors recommended defendants formula. Declining to entertain this
evidence, the Seventh Circuit, in the pre-amendment decision relied on
below, noted that the claim was, with respect to the definitions in one of
its dictionaries, direct, clear and true, thus not misleading: [w]hen the
absolute level of preference for the leading product is high, and the
difference in support from the medical profession substantial, it is all
but impossible to call the claim of first choice misleading. Id. at 884.
Notably, that Mead Johnson decision has been subject to
controversy since its release. Several months after its issuance, the
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Seventh Circuit, per curiam, amended the decision in important ways.
See 209 F.3d 1032 (7th Cir. 2000) (amending opinion). Other courts
have distinguished or declined to follow it numerous times, e.g., Clorox,
228 F.3d at 37 (distinguishing opinion), and it has been the subject of
substantial scholarly commentary, pro and con. Compare Leighton,
Making Puffery Determinations in Lanham Act False Advertising Cases:
Surveys, Dictionaries, Judicial Edicts & Materiality Tests, 95
Trademark Rep. 615, 626-31 (2005) with Edman, Lies, supra, at 433-37.
More significantly, the amended decision which the court below
did not cite sheds significant light on the limits of the original one.
The Seventh Circuit modified precisely the paragraph on which the
district court relied, affirming years of precedent that [a] statement is
misleading when, although literally true, it implies something that is
false. See Mead Johnson, 209 F.3d at 1034. The amended decision
deleted a line a misunderstood statement is not the same as one
designed to mislead that the lower court here cited favorably. That
deleted statement, as discussed further below, poses significant risks to
Lanham Act enforcement if not rightly cabined. The amended decision
further explained that:
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Our fundamental conclusion is that a producer cannot make
a factual issue just by conducting surveys about how science
is done (or, worse, about how surveys should be conducted).
The sort of survey evidence Mead Johnson gathered would
not support a conclusion by a reasonable person thatAbbotts claim either was false or implied a falsehood.
Id. at 1034.
Taken together, the revisions do not suggest, as the court below
inferred, that survey evidence may not be offered to refute a literally
true, verifiable statement. Rather, a statement, although literally
true, can be proven to be misleading, so long as the sort of survey
evidence offered is pegged to that question, and not to the question of
how science is done or how surveys should be conducted. Id.
Likewise, the McCarthy treatise cites Mead Johnson for the
proposition that [a]n advertising claim which is truthful and is clear on
its face cannot be proven to be misleading by surveying consumers to
probe for their possible misunderstandings of factual claims.
McCarthy, supra, at 27:53 (emphasis added). It bears emphasis that
one claim 1st Choice of Doctors standing alone, was the focus of the
Mead Johnson decisions. In light of this distinction, the First Circuit,
construing Mead Johnson, declined to apply it to a case involving a tag
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line that was an integral part of a television commercial with
substantial text and images. Clorox, 228 F.3d at 38.
This case involves neither a stand-alone claim nor, based on the
record, a survey that fails to meaningfully measure the deceptiveness of
that claim. Pernod apparently sought to establish, through consumer
survey evidence, that the presence of the unclear words Havana Club
rendered the advertisement as a whole deceptive despite the presence of
the literally true phrase Puerto Rican Rum. Unlike First Choice,
Havana Club, as applied to Bacardis Rum, does not have a clear and
unambiguous meaning. Thus, whatever Mead Johnsons status in light
of this Courts precedents, it does not apply here, and should not have
been invoked to bar Pernods consumer survey evidence.
B. Limitations of Proof on the Ability to Establish the
Deceptiveness of True Statements Undercut the
Lanham Acts Competition and Consumer Protection
Goals.
The problems with the district courts opinion do not end with its
holding or methodology. Instead, the decision invites false advertising
under the rubric of truth and cuts at the core of the Lanham Act.
Put another way, the decision of the district court disregards the
fact that surveys have become a necessary aspect of Lanham Act cases
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precisely because disputed claims that are literally true can be, and
often are, misleading. The classic example is from P.T. Barnum.
Barnums American Museum was so popular that visitors would spend
their entire days there, cutting into Barnums profits. In an effort to
bring in more money, customers were shown a prominent and
philologically correct sign This Way to the Egress soon after
entering Barnums museum of freaks and curiosities. The sign misled
those unaware that egress was a fancy word for exit, causing many
to go through a self-locking door and end up out on the street. They had
to pay another quarter to reenter and finish their tour. See, e.g., the
Ringling Brothers and Barnum & Bailey website:
http://www.ringling.com/explore/history/ptbarnum_1.aspx.
The cases reveal no end of clever uses of truthful, but still
misleading, claims by advertisers. For example, this Court found that,
even coupled with an appropriate qualification, i.e., legend: Notice.
These Cigars are made in the United States and only of United States
tobacco, the use of the name Havana Smokers by a U.S. tobacco
company was improper. See H.N. Heusner & Son v. Federal Trade
Commission, 106 F.2d 596, 597 (3d Cir. 1939) (the implication of the
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word Havana is totally false. The purchaser can be guided by either
label or legend, but not by both.). In Scotch Whisky Association v.
Consolidated Distilled Products, 210 U.S.P.Q. (BNA) 639 (N.D. Ill.
1981), the court allowed the plaintiff to present survey evidence
showing that the name Loch-A-Moor, for an after-dinner liqueur,
deceived 32.7% of consumers into thinking that the product was made
in Scotland. Id. at 641-42. Though the label expressly stated that the
product was made in the United States, the court enjoined the use of
the name based on survey results showing that a substantial number of
consumers were deceived. Id.
Likewise, in Gillette Co. v. Wilkinson Sword, Inc. 795 F.Supp. 662
(S.D.N.Y. 1992) (vacated on issue of damages only by Gillette Company
v. Wilkinson Sword, Inc. No. 89 Civ. 3586(KMW), 1992 WL 120000396
(S.D.N.Y. Oct. 28, 1992)), the defendant advertised that the
moisturizing strip on its shaving razor was six times smoother than
its competitors strips, while showing a man rubbing his hand down his
face. While this may have been literally true, the court rejected
defendants argument that six times smoother implied only the
moisturizing strip on the razors head was smoother. Instead, the court
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found that the claim falsely implied that the consumer would receive a
smoother shave from defendants razor as a whole.
Decisions such as the one below, and arguably the unamended
opinion in Mead Johnson, if not arrested, risk undermining the effective
regulation of deceptive advertisements through the actions of
competitors, leaving such activities to regulatory agencies or consumers
under other statutes. These entities often do not have the resources or
inclination to prosecute actions involving such claims.
Finally, special pause is warranted in light of the lower courts
resurrection of Mead Johnsons deleted and dead notation that a
misunderstood statement is not the same as one designed to mislead.
It is true that the Lanham Act will not protect against claims to the
general public that are misunderstood by only a few individuals. But it
does indeed protect against claims that deceive a substantial portion of
their audience into misunderstanding the nature of the advertisers
product or service or those of the advertisers competitors.
In fact, a primary purpose of the Act is to protect consumers when
they misunderstand statements, where such confusion is caused by a
misleading claim. As the Second Circuit has explained, [w]ere it
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otherwise, clever use of innuendo, indirect intimations, and ambiguous
suggestions could shield the advertisement from scrutiny precisely
when protection against such sophisticated deception is most needed.
American Home Prods., 577 F.2d at 165. It cannot be the case that
consumers and competitors will be better off if literally true but
allegedly materially misleading statements are sanctioned by the courts
through the suppression of evidence that does not support a judges
personal inference.
CONCLUSION
Because the decision below poses significant risks to consumers
and competition and to the proper development of the law, amici
respectfully urge this Court to reverse it.
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Respectfully submitted,
/s/ Richard J. Leighton
Duane L. Berlin
LEV & BERLIN, P.C.
200 Connecticut Avenue
5th Floor
Norwalk, CT 06854
Telephone: (203) 838-8500
Facsimile: (203) 854-1652
Of Counsel
September 21, 2010
Richard J. Leighton
Scott M. Abeles
KELLER AND HECKMAN LLP
1001 G Street, NW, Suite 500W
Washington, DC 20001
Telephone: (202) 434-4100
Facsimile: (202) 434-4646
Leyla MujkicKELLER AND HECKMAN LLP
3 Embarcadero Center, Suite
450
San Francisco, CA 94111
Telephone: (415) 948-2800
Facsimile: (415) 948-2808
Attorneys for Amici Curiae
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CERTIFICATIONS
The undersigned, a member of the Bar of this Court, hereby
certifies as follows:
1. Richard J. Leighton and Scott M. Abeles are members of the Bar
of this Court.
2. This brief complies with the type-volume limitations of Fed. R.
App. P. 32(a)(7)(B) and 29(d) because this brief contains 6,126 words,
excluding the parts of the brief exempted by Fed. R. App. P.
32(a)(7)(B)(iii).
3. Service on opposing counsel is being made electronically through
CM/ECF. Ten paper copies of the brief have been sent by FedEx to the
Clerks office on the same day as this brief is being filed electronically.
4. The text of the electronic brief and the paper copies is identical.
5. A virus-detection program was run on the electronic brief, and no
virus was detected. The program used was ESET NOD32 Antivirus 4,
program version 4.2.58.3, scan engine version 1285, virus definitions
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Dated: September 21, 2010
/ / Ri h d J L i ht