Proskauer on Advertising Law
Proskauer on Advertising Law

No Scrubs Permitted: Eleventh Circuit Affirms Blog Post Is Not Advertising Actionable Under Lanham Act

In an interesting recent opinion, the Eleventh Circuit held that a doctor’s blog post criticizing another doctor and his clinical practice could not form the basis of a Lanham Act claim because the blog posts were not commercial advertising or promotion. This case thus involves a rare circumstance in which a communication did not qualify as “commercial speech” under the Lanham Act even though it was disseminated on a website that generated revenue from ads or subscriptions. The case is Edward Lewis Tobinick, MD v. Novella, 848 F.3d 935 (11th Cir. 2017).

Dr. Edward Tobinick, a medical doctor who practices dermatology and internal medicine in California and Florida, sued Dr. Steven Novella, a neurologist based in Connecticut. Dr. Tobinick uses the drug Etanercept to treat strokes and Alzheimer’s disease, even though the drug has not been approved by the FDA for this purpose. Dr. Novella is an executive editor of the Science-Based Medicine (“SBM”) blog, which examines issues related to science and medicine and is operated by the New England Skeptical Society, a non-profit entity.

In May 2013, Dr. Novella published an article on the SBM blog criticizing Dr. Tobinick’s clinic, asserting that it had the typical characteristics of “quack clinics” or “dubious health clinics” and questioning the plausibility of the evidence supporting Dr. Tobinick’s allegedly effective off-label use of Etanercept. Dr. Novella also quoted a portion of a Los Angeles Times article which reported that Dr. Tobinick’s claims about the efficacy of his treatments led to an investigation by the Medical Board of California. The Board had placed Dr. Tobinick on probation for unprofessional conduct and mandated that he take classes in prescribing practices and ethics. Dr. Tobinick sued, claiming that the blog posts were false advertising directed at Dr. Tobinick’s clinical practices in violation of § 43(a) of the Lanham Act. Thereafter, Dr. Novella published a second blog post titled “Another Lawsuit to Suppress Legitimate Criticism – This Time SBM,” reiterating his original criticisms of Dr. Tobinick and setting forth details about the Medical Board’s investigation. Dr. Tobinick then amended his complaint to add allegations related to the second blog post.

In October 2015, a district judge in the Southern District of Florida held that Dr. Novella’s blog posts did not constitute advertising under the Lanham Act because they were not acts of commercial speech or promotion, and granted summary judgment in favor of Dr. Novella. The Eleventh Circuit affirmed, holding that in order to be the subject of a false advertising claim, the statements at issue must be in the context of proposing a commercial transaction that includes, among other things, commercial speech. The court pointed out that the “core notion” of commercial speech extends to speech that proposes a commercial transaction, and looked to three non-dispositive factors to guide its determination: (1) whether the material was “conceded to be advertisements,” (2) whether it contained a “reference to a specific product”; and (3) whether the speaker “has an economic motivation” for distributing the material.

The court held that Dr. Novella’s articles did not propose a commercial transaction, and thus did not fall within the core notion of commercial speech. In fact, the articles instead resembled non-commercial speech, since they had a primarily educational purpose. Moreover, the articles were not conceded to be advertisements, did not reference the author’s own practice except briefly for context, and did not demonstrate economic motivations sufficient to transform them into commercial speech.

On the last point, the court noted that placement of the articles next to revenue-generating ads or on a subscription-based website did not establish economic motivation for the informative articles. Even if Dr. Novella received some profit from his publications, the articles themselves did not become commercial speech simply because extraneous advertisements and subscription links may generate revenue. A contrary holding would imply that newspaper editorials and scholarly publications on any website that generates advertising revenue may be commercial speech. While the court’s treatment of what constitutes advertising could be a tough pill for Dr. Tobinick to swallow, it may be just what the doctor ordered.

***

Want to talk advertising? We welcome your questions, ideas, and thoughts on our posts. Email or call us at lweinstein@proskauer.com /212-969-3240 or akaplan@proskauer.com /212-969-3671. We are editors of Proskauer on Advertising Law and partners in Proskauer’s False Advertising & Trademark practice.

Elsevier Wins Summary Judgment Over Use of 3-D Medical Animations in Copyright Case

Although this blog typically focuses on legal developments in marketing and false advertising, its authors and editors are of course active legal practitioners in related areas of IP and other creative industries. Proskauer recently received a favorable summary judgment decision for the defendant, its client Elsevier, Inc., a leading publisher in the fields of science, health and nursing, in a copyright infringement case involving 500+ 3-D medical animations, in which plaintiff sought over $80 million dollars in statutory damages. Archie MD, Inc. v. Elsevier, Inc., No. 16-cv-6614 (JSR), 2017 U.S. Dist. LEXIS 37141 (S.D.N.Y. Mar. 13, 2017).

From 2005 to 2015, Plaintiff Archie MD, Inc. licensed a catalog of 3-D medical animations to Elsevier for use in Elsevier’s online learning management system, known as Evolve. As a free supplement to its nursing textbooks, Elsevier provides its customers access to digital content through Evolve.  Each textbook has a companion website on Evolve that provides supplemental content, including 3-D medical animations.  In 2015, Elsevier opted not to renew the license agreement with Archie, though continued to make available many of the animations using what it believed to be its post-termination rights.  Elsevier also created its own 3-D animations to use on Evolve.

In response, Archie sued, bringing claims of copyright infringement, breach of contract and violation of the Defend Trade Secrets Act. Archie alleged two subsets of copyright infringement claims, alleging that Elsevier (i) continued to use 500+ Archie animations on Evolve after termination of the license agreement without authorization and (ii) copied more than 50 Archie animations in developing its own, thus creating unauthorized derivative works.

After both parties filed dueling motions for summary judgment, Judge Jed Rakoff of the Southern District of New York denied Archie’s motion in its entirety and found for Elsevier on all counts. Judge Rakoff held that Elsevier utilized Archie’s animations within its post-termination rights, Archie’s animations were not trade secrets and, for all but one of the allegedly copied animations, no reasonable jury could find the animations substantially similar.

Specifically, Judge Rakoff denied Archie’s claims based on unauthorized continued use of its animations after termination of the license agreement. The court found that the license agreement permitted Elsevier to continue to use the Archie animations under certain conditions and that there was no evidence Elsevier had not complied with those conditions.

Similarly, Judge Rakoff dismissed all but one of Archie’s 50+ copyright claims alleging that Elsevier impermissibly copied Archie’s animations in creating its own on similar or the same subjects. Under the merger doctrine, the Court found that many of the alleged similarities between the animations were depictions of non-copyrightable medical concepts and anatomy. The Court also found that many of Archie’s allegations of similarity—such as allegedly similar camera angles and monochromatic backgrounds—were not original to Archie to begin with or were unprotectable ideas.  Finally, the Court recognized that the overall concept and feel between the animations was “markedly different” because Elsevier’s animations were brighter with more vibrant colors, and contained more lifelike human figures. As a result, Judge Rakoff dismissed all of Archie’s 50+ derivative work allegations, with the exception of one.  Since Elsevier challenged the validity of that lone animation’s copyright registration, Judge Rakoff stayed the litigation as to that animation pending a validity opinion from the Copyright Office under the PRO IP Act.

Judge Rakoff also dismissed all breach of contract claims alleged against Elsevier, finding they either were duplicative of the copyright infringement claim, and thus preempted or, where based on the disclosure of confidential information of Archie, unsupported by any evidence. Lastly, the Court dismissed Archie’s Defend Trade Secrets Act claim, finding that the Archie animations were not trade secrets because Archie did not take reasonable measures to keep the animations secret and the animations were ultimately distributed to consumers.

***

Want to talk advertising? We welcome your questions, ideas, and thoughts on our posts. Email or call us at lweinstein@proskauer.com /212-969-3240 or akaplan@proskauer.com /212-969-3671. We are editors of Proskauer on Advertising Law and partners in Proskauer’s False Advertising & Trademark practice.

 

 

Proskauer’s Larry Weinstein at 2017 ANA Advertising Law & Public Policy Conference

On March 28 and 29, the Association of National Advertisers hosted its thirteenth annual Advertising Law & Public Policy Conference at the Ritz-Carlton in Washington, DC. Proskauer was a sponsor of the conference, and Proskauer’s Larry Weinstein participated on the “Tweeting with Words” panel, in which the panel fielded a wide-range of questions live-tweeted from attendees.  Larry also spoke on disgorgement of profits in Lanham Act false advertising cases in a pre-conference meeting of the ANA Legal Affairs Committee held on March 27 at Reed Smith’s Washington, DC office. More information on the conference may be found here.

***

Want to talk advertising? We welcome your questions, ideas, and thoughts on our posts. Email or call us at lweinstein@proskauer.com /212-969-3240 or akaplan@proskauer.com /212-969-3671. We are editors of Proskauer on Advertising Law and partners in Proskauer’s False Advertising & Trademark practice.

Made-in-the-U.S.A. Complaint Does Not Make the Cut

In a case decided in December that flew beneath our radar, a judge in the Southern District of California dismissed without prejudice a proposed class action alleging that Citizens for Humanity falsely labeled its jeans as being made in the USA. Hass v. Citizens of Humanity, LLC, 2016 WL 7097870 (S.D. Cal. Dec. 6, 2016). This month, plaintiff notified the court that another amended complaint would not be filed, and the court has now dismissed the case with prejudice.  On the face of it, this case may not seem especially noteworthy, but the rationale for the court’s decision is emblematic of what may be becoming a long-overdue trend. Continue Reading

FTC and DeVry University Settle False Advertising Claims for $100M

In December 2016, DeVry University agreed to pay $100 million to settle a lawsuit with the Federal Trade Commission (FTC) over allegations stemming from DeVry’s advertising about the employment rates and salaries of its graduates. According to the FTC press release announcing the settlement in FTC v. DeVry Educ. Group in the district court for the Central District of California, DeVry will pay $49.4 million in cash to be distributed to students and $50.6 million towards debt relief programs to cover unpaid student loans and debts. Continue Reading

California Court Issues Surprising Decision in Discount Advertising Case

On December 15, 2016, the California Court of Appeals in Los Angeles came to a surprising summary judgment decision in Sajid Veera et al. v. Banana Republic, LLC.  The court held that plaintiffs who claimed they were misled by 40% off signs raised a triable issue of whether they suffered an injury-in-fact even though they knew that the items they were purchasing were not on sale before purchasing them. Continue Reading

Proskauer’s Larry Weinstein Discusses Implications of Bautista v. Cytosport in Legal NewsLine Article

Last week, this blog covered the slack-fill decision in Bautista v. Cytosport, Inc., 2016 WL 7192109 (S.D.N.Y. Dec. 12, 2016), in which the court dismissed the putative class action complaint for failure to allege non-conclusory facts. Larry Weinstein, co-head of Proskauer’s False Advertising & Trademark practice, was quoted at length in Legal NewsLine discussing the implications of the decision. The article may be read here.

***

Want to talk advertising? We welcome your questions, ideas, and thoughts on our posts. Email or call us at lweinstein@proskauer.com /212-969-3240 or akaplan@proskauer.com /212-969-3671. We are editors of Proskauer on Advertising Law and partners in Proskauer’s False Advertising & Trademark practice.

LexBlog