American Home Products Corp. v. Johnson & Johnson

• Decision Date: 01 May 1978
• Docket Number: D,Nos. 645,847,s. 645
• Citation: 198 U.S.P.Q. 132,577 F.2d 160
• Parties: AMERICAN HOME PRODUCTS CORP., Plaintiff-Appellant-Cross-Appellee, v. JOHNSON & JOHNSON, Defendant-Appellee, and McNeil Laboratories, Inc., Defendant-Appellee-Cross-Appellant. ockets 77-7503, 77-7527.
• Court: U.S. Court of Appeals — Second Circuit

Page 160

577 F.2d 160

198 U.S.P.Q. 132

AMERICAN HOME PRODUCTS CORP., Plaintiff-Appellant-Cross-Appellee, v. JOHNSON & JOHNSON, Defendant-Appellee, and McNeil Laboratories, Inc., Defendant-Appellee-Cross-Appellant.

Nos. 645, 847, Dockets 77-7503, 77-7527.

United States Court of Appeals, Second Circuit.

Argued March 8, 1978.

Decided May 1, 1978.

Michael J. Sweedler, New York City (Morris Relson, S. Peter Ludwig, Darby & Darby, P. C., William C. Woods, Carol Farhi, New York City, of counsel), for plaintiff-appellant-cross-appellee.

David F. Dobbins, New York City (George S. Frazza, Catherine R. Nathan, Gene M. Bauer, Patterson, Belknap, Webb & Tyler, New York City, of counsel), for defendant-appellee-cross-appellant.

Before LUMBARD and OAKES, Circuit Judges, and WYZANSKI, District judge. ^*

OAKES, Circuit Judge:

Comparative advertising in which the competing product is explicitly named is a relatively new weapon in the Madison Avenue arsenal. ¹ These cross-appeals by two of the leading manufacturers of analgesics pain relief tablets raise questions regarding the permissible boundaries of this novel approach to consumer persuasion. The parties appeal from an order of the United States District Court for the Southern District of New York, Charles E. Stewart, Judge, enjoining the use in television and printed advertising of certain product superiority claims of "Anacin" over "Tylenol." American Home Products Corp. v. Johnson & Johnson, 436 F.Supp. 785 (S.D.N.Y.1977). The order was issued in an action for a declaratory judgment initiated by appellant American Home Products Corp. (AHP), the manufacturer of Anacin, against McNeil Laboratories, Inc., the manufacturer of Tylenol, and its parent corporation, Johnson & Johnson (collectively McNeil), seeking a ruling that the advertising is not false. McNeil counterclaimed, alleging, inter alia, that the advertisements were false and misleading under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The district court found that the advertising violated Section 43(a), and accordingly the judgment enjoined AHP from representing that Anacin provides superior analgesia to Tylenol "in the context of a representation as to any anti-inflammatory property of Anacin. . . ."

AHP argues on appeal that (1) even on the basis of the district court's findings, there is no ground for relief under Section 43(a); (2) the findings are clearly erroneous in concluding that (a) the Anacin advertising claims greater pain relief (Claims One and Two); (b) the disputed claim of superiority in reducing pain from inflammatory conditions (Claim Two) is false; and (c) the anti-inflammatory claim for the conditions listed in the advertising (Claim Three) is unsubstantiated; and (3) the terms of the injunction are too indefinite to comply with Fed.R.Civ.P. 65(d). ² McNeil appeals from the district court's refusal to enjoin those portions of the Anacin advertising which, McNeil asserts, present misleading claims of Anacin's faster onset of analgesia and harmlessness to the stomach. Since we are of the view that Judge Stewart's order is based upon sound legal principles, that his findings are not clearly erroneous, and that the injunction as framed is proper in scope and specificity, we affirm.

I. THE FACTS

AHP's product, Anacin, is a compound of aspirin (ASA), its analgesic component, and caffeine. McNeil's product, Tylenol, affords analgesia through the ingredient acetaminophen (APAP). Anacin advertises more heavily than the other leading aspirin brands. It took over the Number One pain reliever spot from another aspirin-based product, Bayer Aspirin, a few years ago. Since the summer of 1976, however, Tylenol has replaced Anacin as the largest selling over-the-counter (OTC) internal analgesic product. Anacin remains the largest selling aspirin-based analgesic.

The lawsuit arose out of two Anacin advertisements initiated shortly after Tylenol became market leader. The first is a thirty-second television commercial initially aired by CBS in late November, 1976, and by NBC in early December, 1976. It commences with the phrase: "Your body knows the difference between these pain relievers . . . and Adult Strength Anacin," and asserts its superiority to Datril, Tylenol and Extra-Strength Tylenol. ³ The second advertisement was introduced in national magazines in late January, 1977. It carries a similar theme, stating that "Anacin can reduce inflammation that comes with most pain," "Tylenol cannot." ⁴

The controversy began when McNeil protested the television commercial to the networks and the magazine advertisement to the print media on the ground that they were deceptive and misleading. ⁵ McNeil also complained to the National Advertising Division of the Better Business Bureau. These protests were, for the most part, unsuccessful. CBS, NBC and the print media, continued to carry the two advertisements without alteration. ⁶ As a result of the protests, AHP filed a declaratory judgment action under 28 U.S.C. § 2201 and sought to enjoin McNeil from interfering with the dissemination of the commercial and the printed advertisement. McNeil counterclaimed under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), ⁷ urging that the following claims contained in AHP's advertisements were false: (A) that Anacin is a superior analgesic to Tylenol, (B) that Anacin is an efficacious anti-inflammatory drug for the conditions listed in the advertisements, ⁸ (C) that Anacin provides faster relief than Tylenol, and (D) that Anacin does not harm the stomach. It sought declaratory relief and an injunction prohibiting AHP from continuing to make false claims which disparaged Tylenol.

After denying McNeil's motion for a preliminary injunction, Judge Stewart held an expedited trial on the merits. Principally on the basis of consumer reaction surveys, he concluded that the advertisements made the following representations: (1) the television commercial represented that "Anacin is a superior analgesic generally, and not only with reference to particular conditions such as those enumerated in the ad (see note 3 supra ) or to Anacin's alleged ability to reduce inflammation," id. at 796 (Claim One); (2) the print advertisement claimed that "Anacin is a superior analgesic for certain kinds of pain because Anacin can reduce inflammation," id. (Claim Two); and (3) both advertisements represented that Anacin reduces inflammation associated with the conditions specified in the advertisements. Id. (Claim Three). ⁹ The district court then concluded that the preponderance of the evidence indicated that Claims One and Two that Anacin is a superior analgesic in general to Tylenol and a superior analgesic for conditions which have an inflammatory component were false. Id. at 801-03. The court further held that it could not be determined on the basis of the evidence presented whether OTC dosages of Anacin reduce inflammation to a clinically significant extent in the conditions specified by the advertisements. Thus, Judge Stewart could not reach a definitive conclusion on the truth or falsity of the third claim. Id. at 801, 803. Nevertheless, he determined that because the three claims are "integral and inseparable," id. at 803, "the advertisements as a whole make false representations for Anacin and falsely disparages (sic) Tylenol in violation of the Lanham Act." Id. at 803. Accordingly, he held that McNeil was entitled to an injunction against AHP, given the "substantial evidence that consumers have been and will continue to be deceived as to the relative efficacy of the two products and that this deception is injuring, and will continue to injure, Tylenol's reputation among consumers." Id. The injunction prohibits AHP from publishing or inducing television, radio or print media to publish

any advertisement or promotional material which contains, in the context of a representation as to any anti-inflammatory property of Anacin or aspirin sold by AHP, any representation that at over-the-counter levels Anacin or aspirin provides superior analgesia to acetaminophen including Tylenol either (1) generally, or (2) for conditions which are associated with inflammation or have inflammatory components, or (3) because Anacin or aspirin reduces inflammation. . . .

II. THE PRINCIPAL APPEAL

A. Whether Relief May be Afforded under Section 43(a) on the Basis of the District Court's Findings.

AHP's first contention is based on the following premises. The advertisements contain no express claim for greater analgesia; they merely assert Anacin's superiority to Tylenol in reducing inflammation, a claim which the district court found not to be false. AHP further assumes that the anti-inflammatory claim was held to be true and is in fact unambiguous. The argument is that a truthful and unambiguous product claim cannot be barred under Section 43(a) even though consumers mistakenly perceive a different and incorrect meaning. Thus, appellants urge, the court erred in finding a violation of Section 43(a) by not relying on express claims of superior pain relief, but by interpreting consumer reaction tests one of which, incidentally, was introduced by AHP and the other of which was not objected to by AHP as indicating that consumers derive a message of greater pain relief from the explicit "truthful" claim.

Whatever abstract validity AHP's argument may have, an issue we need not decide, it is clear that in this case the language of the advertisements is not unambiguous. The "truthfulness" of the claims, therefore, cannot be established until the ambiguity is resolved. Moreover, Judge Stewart expressly refused to characterize the anti-inflammatory claims as truthful. ¹⁰ But even assuming the literal truthfulness of the anti-inflammatory claims, appellant's position is no stronger because of the ambiguity of the total message which, as the district court found, conveys additional claims (Claims One and Two). ¹¹

That Section 43(a) of the Lanham...