PATROLLING ADVERTISING
FRONTIERS: FIGHTING AND
DEFENDING CLAIMS IN RECENT
ADVERTISING CASES
Private Challenges
Ronnie London, Esq.
Lanham Act
Burck v. Mars Inc., 571 F.Supp.2d 446 (S.D.N.Y. 2008)
Lanham Act
Burck v. Mars Inc., 571 F.Supp.2d 446 (S.D.N.Y. 2008)
(“The Naked Cowboy versus the Blue M & M”)
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NYC street entertainer alleged candy manufacturer and advertising agency
violated right to privacy under New York law and infringed trademark under
the Lanham Act
Right to Privacy action dismissed because manufacturer’s creation and
display of a cartoon character dressed in street entertainer’s signature
costume did not amount to use of entertainer’s “portrait or picture” as
required to establish a violation of New York right of publicity statute
Allegation that an animated cartoon created by defendant featuring a blue
‘M&M’ dressed exactly like Naked Cowboy was sufficient to state a claim for
false endorsement under the Lanham Act
Court would not strike parody, fair use and First Amendment affirmative
defenses raised by manufacturer; parties ultimately settled
Lanham Act
Board of Supervisors for La. State Univ. Agric. & Mech. Coll.
v. Smack Apparel Co., 550 F. 3d 465 (5th Cir. 2008)
Lanham Act
Board of Supervisors for La. State Univ. Agric. & Mech. Coll.
v. Smack Apparel Co., 550 F. 3d 465 (5th Cir. 2008)
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LSU, Okla. U., OSU, USC & Collegiate Licensing Co. sued sportswear
manufacturer alleging violation of Lanham Act through infringing schools’
trademarks by selling t-shirts with their color schemes, logos and designs
District & Circuit Courts held for universities on infringement, despite nonregistration of marks, because colors, plus other identifying indicia, were
protectable and had acquired secondary meaning under traditional test
Universities’ use of the marks satisfied non-functionality test
Lanham Act
North Am. Med. Corp. v. Axiom Worldwide, Inc.
522 F.3d 1211 (11th Cir. 2008)
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Suit for false advertising and trademark infringement over Axiom’s use of
two federally registered NAM marks for traction devices (for treating back
pain) as metatags to influence Internet search engine results
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Searches for NAM “IDD Therapy” and “Accu-Spina” marks returned Defendant’s
website as second result, which provided a brief description of Axiom’s website
that listed and highlighted Plaintiff’s marks
District court preliminarily enjoined use of plaintiff’s marks within metatags
because they created a likelihood of confusion
11th Cir.: Metatag use of NAM marks to promote and advertise Axiom
products was “use in commerce” in connection with advertising goods, and
district court did not clearly err in finding a likelihood of confusion
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Distinguished 1-800 Contacts because Second Circuit found defendant used the
plaintiff’s website address or URL, not its exact marks, while display of Axiom’s
website in search results also yielded description that included NAM’s marks
 Also called 1-800 Contacts “use” analysis “questionable”
Class Actions
Jamster Mktg. Litig., 2008 WL 4858506 (S.D. Cal. 2008)
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In suit for wrongful placement of charges on wireless bills for mobile content
via ads by Jamster, defendant T-Mobile moved as to certain Md., Miss. & Ill.
plaintiffs to compel arbitration, which acted as class action waiver as well
Class action waivers are unconscionable/unenforceable under Cal. law, while
Md., Miss., & Ill. routinely enforce such waivers
T-Mobile service agreement had choice of law provision specifying law for
state of subscriber’s billing address in T-Mobile records
Court applied choice of law provision for each state and held that Md., Miss. &
Ill. law, rather than Cal. law, applied and that in each state waiver provision
was enforceable
Class Actions
Mazur v. eBay, Inc., & Hot Jewelry Auctions.com, 2008 WL
618988 (N.D. Cal. 2008)
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Plaintiff alleged harm in HJA live auction, in which eBay enabled its users to
participate, from “shill bidding” despite eBay T&Cs prohibiting the practice on
all auctions operated through its site
eBay sought immunity under CDA § 230
 HJA sought to compel arbitration under HJA T&Cs that eBay required it to post and
users had to accept in order to participate in live auction
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Court granted § 230 immunity to the extent plaintiff sought to hold eBay liable
for information provided by HJA, but not for eBay’s own statements regarding
safety, circumstances and caliber of live auctions operated through eBay site
Class Actions
Mazur v. eBay, Inc./Hot Jewelry Auctions.com (cont’d)
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Applying California law, arbitration provision in HJA T&Cs were both
procedurally and substantively unconscionable
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Procedural unconscionability: found both “oppression” and “surprise”
 T&Cs were contract of adhesion, drafted by HJA with no opportunity for negotiation
 Presented as “impenetrable text” in format allowing only a few lines of block text at a time
to be visible, with no paragraph, section or heading breaks (and printed out in the same
kind of “single-spaced, massive block of text”)
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Substantively unconscionable due to limited procedures, including apparent
inability to discover key facts, and individual damages likely to be small so only
effective way to litigate would be as a class, but limited procedures were de facto
bar (triggering Cal. rule unconscionability/unenforceability of class action waivers)
Class Actions
Goddard v. Google, Inc., 2008 WL 5245490 (N.D. Cal. 2008)
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Claiming she and similarly situated class were injured by clicking web-based ads from
allegedly fraudulent mobile service subscription providers (offering ringtones, sports
scores, etc.), Goddard sued Google for receiving funds from fraudulent ads
Court dismissed all claims under “robust” immunity for providers of interactive computer
services, who only publish but do not create online content, i.e., are not “information
content providers,” under CDA § 230
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Relying on Fair Housing Council v. Roomates.com, held that “providing third parties with
neutral tools to create web content is squarely within the protections of § 230 … even if a
service provider knows that third parties are using [the] tools to create illegal content,” and “the
fact that a website elicits online content for profit is immaterial; the only relevant inquiry is
whether the interactive service provider ‘creates’ or ‘develops’ th[e] content”
§ 230 thus provided immunity for California Unfair Competition Law claim, as well as contract
and negligence claims attempting to invoke third-party beneficiary status for contracts between
Google and advertisers
“[A]iding and abetting claims,” which even plaintiffs admitted would hold Google liable for
advertisers’ content, “are simply inconsistent with § 230”
Class Actions
Williams v. Gerber Prods. Co., 552 F.3d 934 (9th Cir. 2008)
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Class action challenging as deceptive features on packaging of “Fruit Juice Snacks” in
Gerber’s “Graduates for Toddlers” line:
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Use of “Fruit Juice” juxtaposed with images of oranges, peaches, strawberries and cherries, because
product has no fruit juice from any fruits pictured but rather only white grape juice from concentrate
Description (on side panel) as made “with real fruit juice and other all natural ingredients” even though
corn syrup and sugar were most prominent ingredients
Description of product as “one of a variety of nutritious Gerber Graduates foods and juices”
Labeling as a “snack” rather than “candy,” “sweet,” or “treat”
Type-size requirements for phrase “naturally flavored”
Reversed grant of motion to dismiss on grounds plaintiffs alleged facts sufficient for
claim that reasonable consumers would be deceived
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Claims under Cal. Unfair Competition Law and Cal. Consumer Legal Remedies Act governed by
reasonable consumer test that prohibits not only “falsity” but also true ads that actually mislead or
have capacity, likelihood or tendency to deceive
District court relied on its own review of packaging, whereas California courts hold deception under
UCL and CLRA is a fact question not generally not decidable on motion to dismiss
While claim of being “nutritious” standing alone could be puffery, since nutritiousness difficult to
measure, contributed here to deceptive context as a whole
Accurate, FDA-prescribed ingredient list did not remedy potential deception
NAD Highlights - 2008
 Green Claims
 Testimonials/Endorsements
 Dietary Supplements
 Non-Traditional Media/Viral Videos/Online Travel
 Other Selected Cases
NAD Green Claims
 Green marketing standard is well-established
 “Competent and reliable evidence” in green marketing
means “scientific evidence” backed by tests and research
 Types of claims range from general environmental
benefit, to claims of being “natural,” “bio-based,” and/or
“biodegradable”
NAD Green Claims
Clorox “Green Works” Product Line
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Claim: Various iterations of Clorox claims that its “Green Works” cleaners
worked “just as well as“ or “as well as or better than” and/or “cuts greasy mess”
or “cuts grease, grime and dirt” “as well as” “traditional” or “conventional”
cleaners and/or “leading spray” (but during proceeding modified to discontinue
“better than” claims)
S.C. Johnson & Son, maker of fantastik, challenged Clorox claims, submitting
comparative testing that showed Green Works did not perform as well on the
“toughest grease” and did not disinfect, unlike “many traditional cleaners”
Held: Clorox testing provided a reasonable basis for claims Green Works line
were comparable to traditional products for most soils for which they are intended
 However, statement was a “broad and unqualified parity claim” that “requires broad
support,” and since Green Works did not clean “tough grease” as well as some
other products, evidence did not support Clorox’s “unqualified parity claim”
 NAD also found consumers would reasonably think Green Works had “disinfectant
properties,” based on Clorox’s advertisements
NAD recommended Clorox discontinue its claims or modify them to state a “more
qualified message”
NAD Green Claims
PolyGreen Plastic Bags
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Broad, unqualified claims of environmental benefit must be supported by
competent and reliable evidence
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NAD recommended discontinuance of biodegradability claims as not
adequately substantiated by competent and reliable evidence
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GP Plastics made print and online claims that its PolyGreen bags are “100% oxobiodegradable,” that they are “disposable through ordinary channels” and “go from front
lawn, to waste bins to the landfill,” as well as other general environmental claims, and
claims of being “completely recyclable”
Challenged by competitor Mexico Plastics/dba Continental Products (plastic bags for
delivery of newspapers) under FTC Environmental Marketing Guides
Though advertiser may tout elements of its product that are desirable (and that can be
supported by competent and reliable evidence), a single environmental benefit or
attribute is not the proper basis for an advertiser to refer to a product as “green” or
“environmentally friendly” without consideration of the broad environmental impact of
the product as a whole
NAD recommended discontinuance of “recyclable” claims because there
was no testing and no evidence of recyclability
G.P. appealed to NARB, but later withdrew appeal and indicated it would
consider NAD’s recommendations in future ads and make modifications
NAD Green Claims
Nestle Purina Pet Promise Dog & Cat Food
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NAD found that advertiser Nestle Purina provided
a reasonable basis for its “natural” and “pure”
advertising claims and for claims that its product
used “chicken or beef sourced from U.S. family
farmers and ranchers committed to eco-friendly
practices and the humane treatment of farm
animals”
NAD Green Claims
Nestle Purina Pet Promise Dog & Cat Food (cont’d)
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NAD examined ads as part of its ongoing monitoring and requested
substantiation for “eco-friendly practices” claim and:
“We promise only pure and natural ingredients – made without animal byproducts,
rendered meat or chicken meals or anything artificial”
 “Our most plentiful ingredient is a pure protein source like naturally raised chicken
or beef”
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AAFCO (Association of American Feed Control Officials) standards for what
constituted “natural” animal feed and Nestle Purina’s own animal processing
standards for evidence provided sufficient substantiation for the claims
NAD specifically noted that “eco-friendly” advertising claims “send an
attractive message to consumers who, in increasing numbers, are concerned
about the impact their purchasing decisions may have on the environment”
NAD Testimonials/Endorsements
Neutrogena – Various Hair, Face & Skin Products
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Unilever challenged Neutrogena’s claims that its various
products were “#1 Dermatologist Recommended” and
that each product was “one more reason why
Neutrogena is recommended most by dermatologists”
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Unilever argued claims implied each product was most
recommended in its specific category and thus required
“well-conducted physician surveys”
Neutrogena responded that its claims referred to brand,
rather than specific product, and that it surveyed
dermatologists every 3 months to ensure accuracy
Given absence of evidence on the point, NAD
“stepped into consumers’ shoes” and decided phrase
“#1 Dermatologist Recommended” could be reasonably interpreted to refer
to individual product categories, rather than overall brand
NAD Testimonials/Endorsements
Neutrogena – Various Hair, Face & Skin Products
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NAD recommended Neutrogena remove the claim on products in categories in
which Neutrogena is not the #1 brand (as to which NAD found Neutrogena’s
surveys adequately proved many of its products were most often
recommended in their categories)
NAD also determined Neutrogena had established no basis
or specific reason for dermatologists’ recommendations and
advised it to discontinue the “One more reason . . .” claim
Similar “No wonder …” claim, especially with Neutrogena’s
voluntary addition of word “brand” to claim, was colloquial and unlikely to be
misinterpreted as an objective reason for brand recommendation
NAD Testimonials/Endorsements
FRS Energy Products
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NAD found FRS Company provided a “reasonable
basis” for claims that the FRS product “boosts energy”
and “increases focus,” but claim that FRS energy
“enhances metabolism” was not supported with sufficient
evidence
NAD recognized that clinical testing on product
itself is the gold standard for supporting ad claims
Lance Armstrong Endorsement – NAD reviewed the reasonable
takeaway from the advertising and found an implied claim; NAD
recommended that the FRS Company clarify in its advertising
that Lance Armstrong is endorsing the product not as Lance
Armstrong the professional cyclist, but as Lance Armstrong,
a current celebrity
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When an endorser is commonly known to the public as an expert and is endorsing a
product as a celebrity, the advertising must make it clear that he or she is endorsing as a
celebrity
NAD Testimonials/Endorsements
Nutro Natural Choice Complete Care Dry Cat Food
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Hill’s Pet Nutrition challenged Nutro’s “Veterinarian
Recommended” packaging and POP claim; NAD
sought substantiation for “Everything Your Cat
Needs in One Bag”
“Veterinarian Recommended,” like “Doctor Recommended,”
carries great weight with consumers, conveys powerful
message, and consequently requires highly reliable
supporting evidence
NAD concluded evidence was insufficiently reliable
to provide reasonable basis for the advertiser’s
online/point of purchase material/packaging “Veterinarian Recommended”
claims and recommended that they be discontinued
However, NAD concluded advertiser provided a reasonable basis for its claim
“Everything Your Cat Needs in One Bag”
NAD Dietary Supplements
Gabatrol
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NAD requested substantiation for print, Internet and labeling claims for
Gabatrol dietary supplement sold by Pure Life, LLC, including:
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“Get Quick Relief from Stress, Anxiety and Depression – Guaranteed”
“Enhance ambition, motivation, and libido”
“Gabatrol is the only 100% all natural product that effectively gives you fast relief
from the feelings of STRESS, ANXIETY, and DEPRESSION”
NAD determined advertiser’s performance, speed-of-action and
exclusivity claims were unsupported and requested modification,
since product had not been tested in the aggregate – only
ingredients had been tested individually – and such limited testing
had been performed on animals, not humans
NAD also recommended clear disclosure that the claims were
based on limited animal studies
NAD Dietary Supplements
Thyodine
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Counsel for Responsible Nutrition challenged The Green Willow Tree’s print
and online claims that Thyodine offers “superb” thyroid support, promises to
stimulate underactive thyroid glands (hypothyroidism), and claim that “many
prefer [Thyodine] to synthetic thyroid medications” on grounds they conveyed
impression that Thyodine could be used to treat hypothyroidism
NAD Dietary Supplements
Thyodine (cont’d)
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Held: Phrase “superb thyroid support” was acceptable based on the
products’ ingredients to the extent they support thyroid health, but claims go
further than general thyroid health
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Messages suggesting dietary supplement can serve as
replacement for prescription medications are potentially
dangerous and must be supported by clear and convincing
evidence
 Product performance claims cannot be substantiated by
anecdotal evidence such as consumer testimonials in the
absence of competent and reliable scientific evidence
 Claims based on generally accepted benefits of ingredients
only, not product itself, must be clearly stated as such and
cannot suggest or imply that the product has been tested or
proven beyond the claimed benefits
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NAD recommended discontinuing consumer testimonials and
also found advertised message to be a dangerous claim that encouraged the
use of Thyodine as alternative to prescription medication
NAD Dietary Supplements
Cinnergen
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eFoodSafety.com made numerous online claims about
its “Cinnergen” dietary supplement, including that it was:
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“Clinically proven” to control blood sugar
A “Natural Part of a Diabetics’ [sic] Diet!!!”
“Guaranteed to Control Blood Sugar Levels”
“Insulin work more efficiently!”
“Doctor Recommended”
Health-related claims must be supported by “competent and reliable scientific
evidence”; the nature and extent of claims should mirror the “precision and
specificity of the data” relied upon
NAD found Cinnergen claims were “product performance claims” that could
not be sufficiently supported by ingredient studies
Claims of “doctor recommended” must be supported by “well-conducted
physician surveys”; the testimony of one doctor is not sufficient
eFoodSafety’s advertising improperly (and dangerously) implied that
Cinnergen was a substitute for insulin
NAD Dietary Supplements
SlimShots
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NAD challenged IdeaVillage Products' print and
online claims for its liquid appetite suppressant to
the effect:
“Eat up to 30% less every day without feeling hungry”
“Works by triggering your body’s natural appetite suppression mechanism … so you
feel full”
 “Unlike other products … all-natural active ingredients … won’t cause jitters or
embarrassing side effects”
 “Demonstrated to work in 4 published clinical studies”
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NAD found published studies substantiated claims that key SLIMShots
ingredient, the fat emulsion FABULESS, can reduce appetite by up to 30%,
but recommended removal of the phrase “every day”
Studies on key ingredient may support claims for the product itself, when the
product is essentially no more than that key ingredient
NAD Dietary Supplements
BioSil
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Natrol, Inc. advertised that BioSil promotes
health of women’s skin, hair, nails and bones,
citing various studies in support
NAD found:
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Published, randomized, double-blind study with
large number of participants that found
statistically significant improvement in hair
strength and thickness substantiated claim that product created thicker, stronger
hair
 Ample substantiation for claim that the product was “safe” because none of the
studies found any side effects
 However, Natrol should discontinue general and unqualified claim that product
reduces fine lines and wrinkles by 19% as testing was on forearm not face, and
there is no evidence results would be same had testing been on face
NAD Non-Traditional Media/Viral
Videos/Online Travel
Cardo Systems
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Viral video on YouTube used cell phones to pop popcorn kernels:
NAD Non-Traditional Media/Viral
Videos/Online Travel
Cardo Systems (cont’d)
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NAD held: viral video ad claims are subject to the same
standards of truth and accuracy as ads in traditional media
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Although video was fanciful and perhaps implausible, to the extent
it could be reasonably be construed as communicating information about the
safety/use of cell phones without headsets, an advertiser would be required to
substantiate it with competent and reliable evidence
 Plan to treat as only “buzz” ad to generate hits, and follow up with marketing message
about Cardo’s Bluetooth headset, did not absolve advertiser from substantiation obligation
for objectively provable (or disprovable) claims
 Because advertisers also must avoid material omissions that may mislead, NAD noted
issue also was raised by failure to disclose that video was part of commercial message,
given duty of advertisers making claims to do so in a clear and unambiguous format that
allows consumers to understand that what is communicated is advertising
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But NAD concluded here that claims fell outside its jurisdiction given timing of
discontinuance of video before commencement of NAD’s monitoring inquiry, and
did not rule on the merits
NAD Non-Traditional Media/Viral
Videos/Online Travel
Priceline.com
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Expedia challenged Priceline.com claim
in TV and online ads that it does not
charge booking fees for airline
reservations, when in fact “no booking fee” applies only to published price flights and
not Name Your Own Price bookings
NAD held that, because Priceline.com offers two distinctly different services, any
advertising feature that applies to only one must be clearly limited to that service
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Main message conveyed throughout commercial cannot be negated by a disclaimer, as
Priceline.com attempted with bottom-of-screen text at end of ad
In response to the challenge, Priceline.com modified web, MySpace and TV spots to
clarify that “no booking fees” claim applied only to published price flights on
Priceline.com, not to Name Your Own Price bookings
NAD was satisfied with Priceline.com’s modifications to website and MySpace page,
especially since the two different booking services are clearly separated online, but
found Priceline.com’s TV ad still misleading
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Recommended avoiding consumer confusion by setting up commercial to make clearer it is
about published price service and that “no booking” applies only to that service
Other NAD Cases
Ultraviolet “UV-ST” Vacuum
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Competitor Bissell challenged numerous Halo’s express and implied healthrelated and superiority claims in print, product packaging, and Internet
(including YouTube) advertising:
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uses ‘Germicidal Light, also known as UV-C light
safely kills dust mites, fleas, mold, bacteria, and viruses
“Powerful. Instant”
“World’s Only Germ-Killing Vacuum”
has a germicidal ultraviolet light chamber that kills germs,
viruses, dust mites, and other parasites on contact
Other NAD Cases
Ultraviolet “UV-ST” Vacuum (cont’d)
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Held: Given absence of comparative testing, NAD
recommended Halo discontinue superiority claims,
as performance claims based on technological
innovations must reflect scope of product testing
Halo should expressly qualify “germ killing” claims by explaining UV-C light had
ability to kill certain bacteria and allergens (dust mite eggs and flea larvae) on
surface of carpeting if they were exposed to the light for sufficient time, but avoid
communicating unsupported message that vacuum could instantly kill germs and
dust mites embedded in carpet, could reduce or eliminate incidence of allergies, or
provide any health benefit
 Recommended discontinuance of allergist’s endorsement & consumer testimonial
 After Halo indicated it would take NAD recommendation into consideration, NAD
found steps taken to comply with decision were “grossly inadequate” and referred
Halo to FTC for possible enforcement action – however …
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Other NAD Cases
Other NAD Cases
Castrol GTX Motor Oil
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Pennzoil-Quaker State challenged BP America, Inc.
TV, website, and brochure claims for Castrol
GTX motor oil that “Engine sludge can strike
anyone. So get Castrol GTX. It’s superior sludge protection,
57% better than the leading 5W-30. Tests prove it." with on-screen super
stating “In M271 Sludge Test”
As to “57% better” claims, NAD recommended:
 Castrol should discontinue in TV ads because it is a medium not ideally
suited for the type of extensive and detailed explanation required to
sufficiently modify the claim
 For online claims and technical bulletin more suited to nuanced and
elaborated claims, Castrol should either discontinue its “57% better”
claim or modify to expressly limit superiority claim to oil’s performance in
certain European Mercedes-Benz vehicles, as measured by a European
automaker’s proprietary testing
Other NAD Cases
Verizon FiOS
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CSC Holdings, Inc. (i.e., Cablevision)
challenged Verizon claims for FiOS regarding
superior sound and picture quality claims
NAD found some claims were substantiated
but recommended modification or discontinuance, as unsupported by
evidence, of claims that “Channels came on quicker,” “colors were more
vivid” and “People think High Definition is High Definition, but it’s not”
With respect to “no pixilation” claim, NAD recommended Verizon modify to
more accurately reflect findings of its study, i.e., “less pixilation”
As to FiOS subscriber’s statement “I was blown away,” NAD found claim, in
context presented, was puffery, not objectively provable
NAD recommended that “Pure Uncompressed High Definition” claim be used
in a monadic context
Other NAD Cases
Hunt’s Tomato Sauce
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Stanislaus Food Products, Inc., maker of al Dente
Premium Food Sauce, challenged ConAgra Foods
claims that Hunt’s Tomato Sauce’s “signature recipe
is always … packed full of Hunt’s 100% natural
vine-ripened tomatoes” and is “made from all-natural,
vine-ripened tomatoes, with salt, spices and natural
flavors for seasoning” in conjunction with pictures on can
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Stanislaus argued ConAgra’s ad was implied claim that Hunt’s tomato sauce
contains fresh tomatoes that have not been thermally processed
Held: “Hunt’s Tomato Sauce is made from all-natural, vine-ripened tomatoes”
was accurate and not likely to be understood to mean that the final tomato
sauce product was made directly from fresh unprocessed tomatoes
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However, “Packed full of Hunt’s 100% natural vine-ripened tomatoes” claim implied
finished product was made directly from fresh unprocessed tomatoes and
recommended that it be discontinued