By: Thomas M. Williams

Paperback

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Section 43 of the Lanham Act is an invaluable tool for intellectual property and commercial litigators. It includes causes of action for trademark infringement-type "passing off" claims, false advertising, trademark dilution, and domain-name cyberpiracy. It is the cornerstone for civil litigants seeking redress for competition-related torts in federal courts. However, Section 43(a) is not a general catch-all for commercial grievances, and is arguably the most misinterpreted and misapplied subsection in the Lanham Act, despite having an extensive body of case law delineating specific causes of action and proofs. Practitioners are well-advised to grasp its nuances before proceeding under the banner of "unfair competition."

In False Advertising and the Lanham Act: Litigating Section 43(a)(1)(B), Thomas Williams addresses false advertising claims under Section 43(a)(1)(B) of the Lanham Act. The book covers established precedent and Section 43(a) false advertising case law, including key decisions where courts have developed essential analytical tools to flesh out sparse statutory language.

The book is organized by topic. Chapter One describes actionable claims under Section 43(a)(1)(B), and includes an analysis of the Supreme Court's Dastar opinion, which sets important boundaries for Section 43(a) claims. Chapter Two identifies various tests for Section 43(a)(1)(B) standing, including the circuit split on whether antitrust-based standing rules are applicable to false advertising claims. Chapter Three analyzes each of the requisite Skil factors for establishing a false advertising claim. Chapter Four addresses Section 43(a)(1)(B) pleadings, including the impact of the Supreme Court's Twombly and Iqbal decisions on notice pleading rules. Chapter Five examines defenses to false advertising claims. Chapter Six reviews injunctive relief requirements and Chapter Seven outlines monetary relief available to prevailing parties.

"As an in-house counsel responsible for advising a widely dispersed, highly competitive business, I know that it's critical to understand the defensive and offensive applications of the Lanham Act, particularly as it relates to false advertising. Thomas Williams offers a comprehensive yet practical and engaging summary of the current parameters of Lanham Act false advertising claims. False Advertising and the Lanham Act is a 'must read' for every general counsel or in-house attorney who wants to reduce risk and protect assets."
--David J. Adams, Deputy General Counsel, Vice President, Regulatory Affairs, Kaplan, Inc.

"Tom Williams has created an exhaustive analysis of false advertising claims under the Lanham Act. Well written and insightful, this treatise thoroughly and thoughtfully summarizes Section 43(a)(1)(B), including the key court decisions essential to its interpretation. False Advertising and the Lanham Act is an invaluable desk reference for the commercial litigator, and a must for every intellectual property counselor's library."
--Peter J. Albert, Associate General Counsel, The Progressive Group of Insurance Companies

"Tom Williams' book, False Advertising and the Lanham Act, is written in a clear, logical manner and provides useful and thorough information about the court decisions that have developed the law in this area. It is a pleasure to read and will be a helpful tool for practitioners facing questions about positioning claims or defenses in false advertising conflicts."
--Nancy Lee Carter, Senior Counsel - Trademark and Copyright, Kimberly-Clark Corporation, 1984 - 2012

"False Advertising and the Lanham Act is a practical guide to this area of law, and will be a helpful tool to practitioners, both in-house and in private practice. It is clearly written, easy to read, and comprehensive-a necessary addition to a well-rounded reference set."
--Annaliese Fleming, The Trademark Reporter

Introduction

Chapter One: False Advertising Under Section 43(a)

I. Actionable Categories A. "Nature, Characteristics, Qualities, or Geographic Origin" B. "Goods, Services, or Commercial Activities"

II. "False Advertising" Does Not Include "Passing Off"

III. Dastar and Its Progeny

Chapter Two: Standing Under Section 43(a)(1)(B)

I. No Consumer Standing

II. Commercial Entities' Standing to Sue A. The "Competitors Only" Jurisdictions 1. Strict Application 2. "When" and "Where" of Competition May be Dispositive B. The Second Circuit's "Reasonable Interests" Test C. The Antitrust-Based Approach

III. Organizations and Trade Groups

IV. Focus on the Defendant

V. Conclusions Regarding Standing

Chapter Three: The "Skil Test": Prima Facie Elements of a Section 43(a) False Advertising Claim

I. Establishing a False Advertising Claim Under Section 43(a): The "Skil Test" A. Skil Factor 1: False Statement 1. Literal Falsity a. Establishment Claims b. Independent or Non-Establishment Claims c. False by Necessary Implication 2. Misleading Claims B. Skil Factor 2: Actual Deception or Tendency to Deceive 1. Using Surveys and Experts 2. Direct Evidence of Actual Consumer Deception 3. Exceptions to the "Extrinsic Evidence" Requirement C. Skil Factor 3: Material Deception D. Skil Factor 4: In Commerce E. Skil Factor 5: Plaintiff's Injury

II. "Bad Faith" Required for False Advertising Claims Involving Patents Chapter Four: Pleadings

I. Pleadings in Section 43(a) False Advertising Cases A. Rule 8 and Iqbal/Twombly B. Iqbal/Twombly and Section 43(a) False Advertising Claims C. Rule 9(b) D. Other Judicial Observations Regarding Pleading Requirements for Section 43(a) False Advertising Claims

Chapter Five: Defenses

I. Defenses to Section 43(a) False Advertising Claims A. Truth B. Puffery C. Mootness D. Equitable Defenses 1. Laches 2. Unclean Hands E. Communications Decency Act F. First Amendment G. Statute of Limitations H. Preemption and Compliance with Statutes and Regulations

Chapter Six: Injunctive Relief

I. Permanent Injunctions A. eBay Factor 1: Irreparable Injury B. eBay Factor 2: Inadequate Remedies at Law C. eBay Factor 3: Balance of Hardships D. eBay Factor 4: Public Interest

II. Preliminary Injunctions A. Winter Factor 1: Likelihood of Success B. Winter Factor 2: Irreparable Harm 1. Courts Analyzing eBay/Winter and Irreparable Harm 2. Proving Irreparable Harm Without a Presumption 3. Conclusions Regarding Irreparable Harm C. Winter Factor 3: Balance of Harms D. Winter Factor 4: Public Interest

III. Scope of Injunction

Chapter Seven: Monetary Relief

I. Monetary Relief Under the Lanham Act A. Defendant's Profits B. Plaintiff's Damages 1. Corrective Advertising as Damages 2. Enhancement of Damages C. Costs of the Action D. Attorney's Fees E. Prejudgment Interest F. No Punitive Damages

Table of Cases

Index

ISBN: 9780199772582
ISBN-10: 0199772584
Audience: Professional
Format: Paperback
Language: English
Number Of Pages: 160
Published: 7th June 2012
Dimensions (cm): 23.4 x 15.7  x 1.0
Weight (kg): 0.304