Section 43(a) in a Vacuum: Cleaning Up

False Advertising in an Unfair

Competition Mess

Massiel Sanchez*

INTRODUCTION

A
dvertising surrounds our everyday life. 1 Companies use
advertising as a form of communication to influence us into
obtaining their product or service.2 Due to the rise of business
competition, in 1946 Congress established a federal cause of action that
allows competing companies to bring trademark and unfair competition
claims under the Lanham Act.3 Designed to protect consumers from
deception,4 unfair competition eventually led companies to file claims for
false advertising.5 Today, after many years of litigation under the new Act,

1*
Juris Doctor, New England Law | Boston (2017). B.S., Florida State University (2013).
See Abey Francis, Role of Advertising in the Present Business World, LINKEDIN (Feb. 20, 2015),
https://perma.cc/TN2M-RUZ6.
2
Definition of ‘Advertisings,’ THE ECONOMIC TIMES, https://perma.cc/FX99-643R (last visited
Sept. 6, 2019).
3
See 15 U.S.C. §§ 1051–1141n (2012); see also Samson Crane Co. v. Union Nat’l Sales, 87 F.
Supp. 218, 222 (D. Mass. 1949) (“[T]he primary purpose of the Act was to eliminate deceitful
practices in interstate commerce involving the misuse of trade-marks . . . it sought to eliminate
other forms of misrepresentations . . . even though they do not involve any use of what can
technically be called a trade-mark.”).
4
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 763 (1992) (“[A]nd the protection of
trademarks . . . serves the same statutory purpose of preventing deception and unfair
competition.”); see also Dolores K. Hanna et al., The United States Trademark Association
Trademark Review Commission Report and Recommendations to USTA President and Board of
Directors, 77 TRADEMARK REP. 375, 426 (1986) (describing the intended reach to be that of false
designation or representation as to the geographical origin of the product).
5
See Coca-Cola Co. v. Procter & Gamble Co., 822 F.2d 28, 31 (6th Cir. 1987) (holding that the
plain meaning of § 43(a) of the Lanham Act allows false advertising claims to be brought
because the statutory language “clearly encompasses a false description or misrepresentation
about the characteristics . . . of a product.”); L’Aiglon Apparel v. Lana Lobell, Inc., 214 F.2d
649, 651 (3d Cir. 1954) (interpreting § 43(a) of the Lanham Act to allow causes of action arising
from false advertising); Courtland L. Reichman & M. Melissa Cannady, False Advertising
Under the Lanham Act, 21 FRANCHISE L.J. 187, 187 (2002) (“False advertising under the Lanham
Act is an increasingly popular cause of action . . .”); see also 5 J. THOMAS MCCARTHY,

1
2 New England Law Review [Vol. 52 | 3
the requirements for bringing a false advertising claim are well settled. 6
First, the company must have standing.7 Second, the company must
demonstrate that an advertising is either literally false, or if literally true, it
is likely to mislead and confuse consumers.8 But how should courts
proceed when an advertising was true and later becomes false? 9 This issue
was presented to the District Court of Massachusetts in SharkNinja v.
Dyson10 in a false advertising claim filed under § 43(a) of the Lanham Act,
where an advertising was literally true and later became literally false. 11
This Comment will argue that when a court is faced with a false
advertising claim concerning an advertising which was literally true at the
time of creation—but was later rendered false because of new products
introduced to the market—the court need not find liability for a defendant
who has already taken steps to remove the advertising campaign. It will
also argue that a court should apply a reasonable standard, rather than
strict liability when a defendant concedes that their advertising is now false
and is in the process of removing the advertising claim from the market, a
finding that is similarly applied in contempt cases. Part I provides an
overview of the Lanham Act, § 43(a) of the Lanham Act, and how false
advertising has been incorporated into the section. Part II reviews the
Court’s opinion and analyzes how the Court reached their conclusion. Part
III scrutinizes the strict liability standard that courts have imposed on false
advertising claims. Part IV explores the application of a reasonableness
standard to false advertising claims where the advertising was true and
became false.

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 27:25 (4th ed. 2014).

6
See, e.g., Two Pesos, Inc., 505 U.S. at 783 n.18 (Stevens, J., concurring) (“Since [§ 43(a)’s]
enactment in 1946, however, it has been widely interpreted as creating, in essence, a federal
law of unfair competition. For example, it has been applied to cases involving . . . actionable
false advertising claims.” (citing the Senate Report, S. REP. NO. 100-515, at 40 (1988))); Pacamor
Bearings, Inc. v. Minebea Co., 918 F. Supp. 491, 497 (D.N.H. 1996) (discussing the history of
court interpretations and how Congressional amendments have construed the current
statute).
7
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128, 140 (2014) (finding
that Congress did not intend for all injured parties to have standing to sue, but instead
concluding that Congress intended for only commercial injury, therefore applying two
principles in determining standing, zone of interests and proximate causality).
8
McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549 (2d Cir. 1991).
9
See Pizza Hut, Inc. v. Papa John’s Int’l, 227 F.3d 489, 495 (5th Cir. 2000) (explaining the usual
steps a plaintiff must take in order to prevail in a false advertising claim).
10
SharkNinja Operating LLC v. Dyson Inc., 200 F.Supp. 3d 281 (D. Mass. 2016).
11
See id. at 284.
2018] Cleaning Up False Advertising 3
I. Background

A. The Lanham Act

The Lanham Act, enacted in 1946, became another way for Congress to
regulate businesses.12 Created, in part, as a reaction to the Supreme Court’s
decision in Erie Railroad v. Tompkins13 to create a federal law for unfair
competition,14 the Lanham Act “provides for a national system of
trademark registration and protects the owner of a federally registered
mark against the use of similar marks if any confusion might result . . . .”15
The Lanham Act is divided in four sections, with the majority of the
sections governing Trademark Law.16 Unfair competition is regulated
under § 43(a).17

B. Section 43(a) of the Lanham Act

1. History

Congress’ initial intent with enacting § 43(a) of the Lanham Act18 was
to create a statutory basis to prohibit false designations of origins. 19 False
designations of origins is also known as “palming off,” and is analyzed

12
Jean Wegman Burns, Confused Jurisprudence: False Advertising Under the Lanham Act, 79 B.U.
L. REV. 807, 811–12 (1999) (discussing how Congress enacted various business regulation laws
in the 1930s and 1940s after the Great Depression).
13
See generally Erie R.R. v. Tompkins, 304 U.S. 64 (1938).
14
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 783 n.18 (1992) (Stevens, J.,
concurring) (“[Section] 43(a) is designed to ‘codify the interpretation it has been given by the
courts . . . .’”); MCCARTHY, supra note 5, § 27:7; Hanna et al., supra note 4, at 376; see also Burns,
supra note 12, at 812–13 (discussing how Congress was prompted to enact a federal act
because of the Supreme Court’s decision in Erie R.R. v. Tompkins, which eliminated the
doctrine of federal common law and left trademark and unfair competition protection for
states to interpret).
15
Lanham Act, BLACK'S LAW DICTIONARY 1011 (Bryan A. Gardner ed., 10th ed. 2014).
16
See 15 U.S.C. §§ 1051–1141n (2012) (dividing the four sections of the Lanham Act as follows:
the Principal Register for Trademarks §§ 1051–1072; the Supplemental Register for
Trademarks §§ 1091–1096; General Provisions §§ 1111–1129; and the Madrid Protocol §§ 1141–
1141n).
17
Karen Dudnikov & Michael Meadors, Unfair Competition, TABBER’S TEMPTATIONS,
https://perma.cc/B9YJ-XR4J (last visited Jan. 3, 2019).
18
15 U.S.C. § 1125 (2012).
19
See Burns, supra note 12, at 815–16 (explaining how advertising was still in its infancy,
appearing mainly in newspapers and radio, when § 43(a) was enacted, indicating that
Congress did not imagine the immense market that advertising would produce, thus causing
Congress to narrowly word the statute); Bruce P. Keller, “It Keeps Going and Going and Going”:
The Expansion of False Advertising Litigation Under the Lanham Act, 59 LAW & CONTEMP. PROBS.
131, 132 (1996) (discussing how Congress’ focus was to have U.S. law conform with other
international convention provisions which the United States was a party to, therefore leading
courts to construe a narrow interpretation of § 43(a)).
4 New England Law Review [Vol. 52 | 3
with different factors than false advertising.20 False designations of origins
applies when a manufacturer appropriates identifying marks of another
and places the marks on his own product. 21 Presently, § 43(a) provides
causes of actions for trade dress and other nontrademark designators; false
representations of unregistered trademarks and service marks; false
designations of origin; and false advertising. 22 Section 43(a) of the Lanham
Act specifies that:
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or
any false designation or origin, false or misleading description of
fact, or false or misleading representation of fact, which—
(a) is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another
person, or
(b) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or her
or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.23

After many years of judicial interpretation from the federal courts, §

43(a) has become one of the main statutes for plaintiffs to file claims of
unfair competition, mostly claims for false advertising.24

2. False Advertising Under § 43(a)

False advertising has been interpreted as a “represent[ation] that goods

or services possessed characteristics that they d[o] not actually have.” 25 The
First Circuit was one of the first courts to interpret § 43(a) narrowly,
holding that the section did not apply to general false advertising claims,
but was instead limited to certain misrepresentations about the goods
20
Alpha Pro Tech v. VWR Int’l. LLC, 984 F. Supp. 2d 425, 453 (E.D. Pa. 2013) (“[A] false
designation of origin claim. . . must allege: (1) that the defendant uses a false designation of
origin; (2) that such use of a false designation of origin occurs in interstate commerce in
connection with goods or services; (3) that such false designation is likely to cause confusion,
mistake or deception as to the origin, sponsorship or approval of the plaintiff’s goods and
services by another person; and (4) that the plaintiff has been or is likely to be damaged.”).
21
See Gen. Pool Corp. v. Hallmark Pool Corp., 259 F. Supp. 383, 385 (N.D. Ill. 1966).
22
See DORIS E. LONG, UNFAIR COMPETITION AND THE LANHAM ACT 12–16 (1993).
23
15 U.S.C. § 1125 (2012).
24
See J. Thomas McCarthy, Lanham Act § 43(a): The Sleeping Giant is Now Wide Awake, 59 LAW &
CONTEMP. PROBS. 45, 45–46 (1996) (discussing how federal courts have transformed § 43(a)
from a narrow reading to an over-expansive interpretation of the statute).
25
Pacamor Bearings, Inc. v. Mineabea Co., 918 F. Supp. 491, 497 (D. N.H. 1996).
2018] Cleaning Up False Advertising 5
themselves.26 Although in the mid-1950s the Third Circuit found that a
plaintiff may bring a false advertising suit under the Lanham Act,27 it was
not until almost thirty years after the Lanham Act was enacted that false
advertising claims began to rise. 28 Over the years, court interpretation has
made § 43(a) one of the most litigated sections of the Lanham Act. 29 This
has led Congress to amend § 43(a) by allowing plaintiffs to assert two types
of unfair competition claims: (1) infringement of unregistered marks,
names and trade dress; and (2) false advertising. 30 There are five elements a
plaintiff must establish to bring a claim of false advertising:
(1) the defendant made a false or misleading description of fact or
representation of fact in a commercial advertisement about his
own or another’s product; (2) the misrepresentation is material, in
that it is likely to influence the purchasing decision; (3) the
misrepresentation actually deceives or has the tendency to
deceive a substantial segment of its audience; (4) the defendant
placed the false or misleading statement in interstate commerce;
and (5) the plaintiff has been or is likely to be injured as a result
of the misrepresentation, either by direct diversion of sales or by
a lessening of goodwill associated with its products.31

Recently, the Supreme Court held that in order to bring a cause of

action for false advertising, “a plaintiff must plead (and ultimately prove)
an injury to a commercial interest in sales or business reputation
proximately caused by the defendant’s misrepresentations.”32 However,
the District Court of Massachusetts faced the newest interpretative

26
See MCCARTHY, supra note 5, § 27:8 (citing Samson Crane Co. v. Union Nat’l Sales, 87 F.
Supp. 218, 222 (D. Mass. 1949)).
27
See L’Aiglon Apparel, Inc. v. Lana Lobell, Inc., 214 F.2d 649, 651 (3d Cir. 1954) (interpreting §
43(a) of the Lanham Act to allow causes of action arising from false advertising).
28
See MCCARTHY, supra note 5, § 27:8; see also Lillian R. Bevier, Competitor Suits for False
Advertising Under Section 43(a) of the Lanham Act: A Puzzle in the Law of Deception, 78 VA. L. REV.
1, 1 (1992) (“[F]alse advertising litigation has increased steadily.”).
29
See Spotless Enters, Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d. 274, 281 (E.D. N.Y. 1999)
(describing the legislative history of § 43(a), explaining that Congress deliberately broadened
the section, and illustrating that Congress expected courts to continue to utilize the Act for
false advertising); see also Burns, supra note 12, at 810 (arguing that courts have inconsistently
interpreted § 43(a)(1)(B) either too narrowly or too expansively, which has led to conflicting
decisions, mainly because judges “latch on to different words in the provision to justify their
decisions”).
30
See MCCARTHY, supra note 5, § 27:9 (describing how Congress codified the types into two
prongs in the amendment of 1989 and further in the amendment of 1992, allowing each claim
to have its own distinct section in the Act).
31
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 310–11 (1st Cir. 2002).
32
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128, 140 (2014) (finding
that Congress did not intend for all injured parties to have standing to sue, but instead
concluding that Congress intended for only commercial injury, therefore applying two
principles in determining standing, zone of interests and proximate causality).
6 New England Law Review [Vol. 52 | 3
challenge in SharkNinja Operating LLC v. Dyson Inc.33

II. Court’s Opinion

A. SharkNinja Operating LLC v. Dyson Inc.

1. Background of Case

SharkNinja Operating LLC (“SharkNinja”) and Dyson Inc. (“Dyson”)

are manufacturing competitors in the household vacuum market. 34 In July
2013, Dyson introduced their “twice the suction of any other vacuum”
(“TTS”) advertising campaign for their DC41 vacuum, and subsequently
added the TTS advertising campaign to their new DC65 vacuum. 35 Dyson’s
TTS advertising campaign appeared in print, television, and internet
advertising, as well as purchase displays in certain retail stores, and on the
packaging for their DC41 and DC65 vacuums. 36 In May 2014, SharkNinja
sent Dyson a letter informing them that in July 2014, SharkNinja would
release a new vacuum which would render Dyson’s TTS advertising
campaign literally false because of the performance capabilities of this new
vacuum.37 In the letter, SharkNinja indicated that testing on the new
vacuum proved that the DC65 “no longer had ‘twice the suction of any
other campaign.’”38 Although the letter did not include any test results,
SharkNinja stated that they expected Dyson to remove the TTS advertising
campaign from the market once the new vacuum was officially released. 39
On July 8, 2014, SharkNinja began selling the new vacuum, the Shark
Powered Lift-Away (“Shark Lift-Away”), on the market. 40 The following
day, SharkNinja sent another letter to Dyson indicating that the new
vacuum was officially on the market. 41 SharkNinja, again, did not include
any test results with the letter, nor did it provide a sample vacuum of the
Shark Lift-Away so that Dyson could conduct its own tests.42
Once SharkNinja released the Shark Lift-Away vacuum, Dyson
purchased three units and sent them for testing.43 The three units were
received at Dyson’s U.S. office on July 22, 2014—two units were then sent
to Dyson’s U.K. office and one to a third-party testing facility. 44 Dyson
33
See generally SharkNinja Operating LLC v. Dyson Inc., 200 F.Supp. 3d 281 (D. Mass 2016).
34
Id. at 282–83
35
Id. at 283.
36
Id.
37
Id.
38
Id.
39
SharkNinja, 200 F. Supp. 3d, at 283-84.
40
Id. at 284.
41
Id.
42
Id.
43
Id.
44
Id.
2018] Cleaning Up False Advertising 7
received the two internal test results in early August 2014 and received the
third-party facility test results in early September 2014. 45 On September 10,
2014, SharkNinja provided Dyson with its own third-party test results. All
four results confirmed that “the Shark Lift-Away had more than half the
suction of the DC65 and the DC41.”46 Dyson conceded, as a factual matter,
that the Shark Lift-Away rendered the TTS advertising campaign literally
false once the vacuum was released on July 8, 2014.47 Thereafter,
SharkNinja filed a complaint against Dyson alleging false and misleading
advertising in violation of § 43(a) of the Lanham Act with respect to their
competing vacuum cleaners.48
The dispute between the parties concerned whether Dyson utilized
reasonable and necessary procedures to remove the TTS advertising
campaign from the market once Dyson received the test results confirming
that the Shark Lift-Away vacuum indeed rendered its TTS advertising
campaign false.49 SharkNinja and Dyson both moved for summary
judgment.50

2. Court’s Analysis

The Court found that SharkNinja was entitled to partial summary

judgment on Count 1—SharkNinja’s claim for false advertising under the
Lanham Act.51 The Court concluded that SharkNinja had “established, as a
matter of law, that Dyson’s TTS claim was ‘material. . . .” 52 The Court
further noted that “[w]hether or not Dyson acted reasonably promptly in
removing its false TTS claim from the market is not relevant to Dyson’s
liability for false advertising under Section 43 of the Lanham Act.”53
In issuing its decision, the Court relied on two cases from the Second
Circuit, Lyons P’ship, L.P. v. D & L Amusement & Entm’t, Inc. 54 and Spotless
Enters. v. Carlisle Plastics, Inc.,55 finding that courts use a strict liability

45
SharkNinja, 200 F. Supp. 3d, at 284.
46
Id.
47
Id.
48
Id. at 283 (addressing filed claims for deceptive trade practices in violation of Mass. Gen.
Laws, ch. 93A and false advertising in violation of Mass. Gen. Laws, ch. 266, § 91).
49
Id. at 284.
50
SharkNinja, 200 F. Supp. 3d, at 286 (SharkNinja moved for partial summary judgment on its
claim for false advertising under the Lanham Act (the ruling that this Comment is focusing
on) and moved for summary judgment on Dyson’s Lanham Act counterclaim; Dyson moved
for summary judgment on a subsidiary issue of whether Dyson’s false advertising was
“willful and knowing”).
51
Id. at 290–91.
52
Id. at 288.
53
Id. at 288 n.6.
54
Lyons P’ship, L.P. v. D & L Amusement & Entm’t., Inc., 702 F. Supp. 2d 104 (E.D.N.Y. 2010).
55
Spotless Enters., Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d 274 (E.D.N.Y. 1999).
8 New England Law Review [Vol. 52 | 3
regime as to whether “good faith” is an essential element of false
advertising claims.56 The Court concluded that “[g]ood faith is simply not a
defense to a false advertising claim under the Lanham Act.”57 The Court
further held that the case law and statute properly establish that when an
advertiser puts a claim in the market, that advertiser bears all the risk of
such claims becoming false.58 Thus, the Court erred in partially granting
SharkNinja’s motion for summary judgement due to the Court’s erroneous
application of a strict liability standard to a case in which the facts indicate
that liability need not be found.59

ANALYSIS

III. The SharkNinja Court Erred When It Applied a Strict Liability

Standard to Advertising That Was True and Later Became False

Under § 43(a), courts apply a strict liability standard to determine if a

defendant is liable for false advertising.60 This standard has been
interpreted and applied in § 43(a) cases due to the statute’s location under
an Act that is mainly focused on Trademark Law. 61 In a usual trademark
infringement case, courts apply a strict liability standard when
determining whether the defendant is liable.62 Courts faced with a

56
SharkNinja, 200 F. Supp. 3d, at 287.
57
Id. (citing Lyons P’ship, L.P. v. D & L Amusement & Entm’t., Inc., 702 F. Supp. 2d 104, 113
(E.D.N.Y. 2010) and Spotless Enters. Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d 274, 278
(E.D.N.Y. 1999)).
58
Id.
59
Id.
60
See Randy Shaheen et al., The Scope of Liability for False Advertising Claims, ALL ABOUT
ADVERT. L. (Oct. 19, 2012), https://perma.cc/7C3F-G7V9 (explaining how liability plays a role
in the advertising market).
61
See POM Wonderful v. Coca-Cola, 573 U.S. 102, 105 (2014) (illustrating Congress’ intent that
all Sections under the Chapter were to be actionable against deceptive and misleading use of
marks); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (explaining that § 43(a)
protects unregistered marks the same way that § 2 protects registered marks); U-Haul Int’l v.
Jartan, Inc., 793 F.2d 1034, 1042 (9th Cir. 1986) (“Not only do we see no significant distinction
between false advertising and other cases under Lanham Act § 43(a) . . .”); Lyons Partnership,
L.P. v. D & L Amusement & Entm’t., Inc., 702 F. Supp. 2d 104, 113 (E.D.N.Y. 2010) (“An unfair
competition claim under the Lanham Act is similar in spirit and substance to the other claims
cognizable under the Act.”).
62
See Taubman Co. v. Webfeats, 319 F.3d 770, 775 (6th Cir. 2003) (“[T]he Lanham Act is a strict
liability statute.”); Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 742 (2d Cir. 1998) (“The
Lanham Act protects the rights of the first user of a trademark.”); see also Nandana Indananda
& Kawin Kanchanapairoj, Application of Strict Liability to Intellectual Property Infringement in
Thailand, 15 IP LITIGATOR 1 (Nov.–Dec. 2009), https://perma.cc/29CP-9LRY (comparing the
application of strict liability to intellectual property infringement in the United States and
Thailand).
2018] Cleaning Up False Advertising 9
trademark infringement claim apply a set of factors. 63 Although courts
have continuously stated that the Lanham Act is a strict liability statute, 64
courts weigh the factors separately, including the intent of the defendant. 65
However, when courts were first faced with false advertising cases, they
applied the “usual” standard that was applied under the Lanham Act for
trademark infringement cases—a strict liability standard.66 But,
unfortunately, courts improperly ignored the notion that advertising was
not, and is still not, the same as a trademark infringement case.67
The SharkNinja Court relied on two Second Circuit cases, Lyons
Partnership, L.P. v. D & L Amusement & Entertainment, Inc. 68 and Spotless
Enterprises v. Carlisle Plastics, Inc.,69 when it applied a strict liability
standard.70 The Court noted that:
[t]he language of the statute is compulsory, and it includes no
exceptions for cases in which a manufacturer undertakes good
faith, commercially reasonable efforts to remove a false claim
from the marketplace upon learning of its falsity. Good faith is
simply not a defense to a false advertising claim under the
Lanham Act.71

Although the Court was correct to assume that good faith is not a
defense under the Lanham Act, the Court was incorrect in relying on the
Second Circuit cases when applying the standard to the facts before it.72

63
See Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 120 (1st Cir. 2006) (“(1) the
similarity of the marks; (2) the similarity of the goods; (3) the relationship between the parties’
channels of trade; (4) the relationship between the parties’ advertising; (5) the classes of
prospective purchasers; (6) evidence of actual confusion; (7) the defendant’s intent in adopting
its mark; and (8) the strength of the plaintiff’s mark.”).
64
Taubman Co., 319 F.3d at 775 (“[T]he Lanham Act is a strict liability statute.”).
65
See AT&T v. Winback & Conserve Program, 42 F.3d 1421, 1442–43 (3d Cir. 1994).
66
See P&G v. Chesebrough-Pond’s Inc., 747 F.2d 114, 119 (2d Cir. 1984) (finding that intent to
deceive is not required); Brandt Consol., Inc. v. Agrimar Corp., 801 F. Supp. 164, 174 (C.D. Ill.
1992) (explaining that bad faith is not an element); see also Burns, supra note 12, at 845
(describing how courts have imposed a strict liability standard on their own, which
sometimes has no connection between the injury and consumer welfare).
67
See Burns, supra note 12, at 840 (“The obvious problem with the strict liability interpretation
of section 43(a) is that it creates the potential of penalizing well-intended advertisers who
have caused little consumer injury.”); see also Bevier, supra note 28, at 48 (“[Courts] rarely
challenge the good faith of plaintiffs. [Courts] do not question the necessity for a strict liability
solution to the false advertising ‘problem . . . .’”).
68
Lyons Partnership, L.P. v. D & L Amusement & Entm’t., Inc., 702 F. Supp. 2d 104 (E.D.N.Y.
2010).
69
Spotless Enters, Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d 274 (E.D.N.Y. 1999).
70
SharkNinja Operating LLC v. Dyson Inc., 200 F. Supp. 3d 281, 287 (D. Mass. 2016).
71
Id.
72
See Spotless, 56 F. Supp. 2d at 277–78. But see AT&T v. Winback & Conserve Program, 42 F.3d
1421, 1442–43 (3d Cir. 1994) (considering the defendant’s intent in adopting the mark as a
factor).
10 New England Law Review [Vol. 52 | 3
In Lyons, the Second Circuit was faced with claims of copyright
infringement and various claims of trademark infringement and unfair
competition.73 Even though the Lyons Court noted that an unfair
competition claim under the Lanham Act does not require proof of an
intent to deceive or bad faith, it was faced with a false designation of origin
claim, where it found that “[a] false designation of origin . . . under the
Lanham Act is similar to a trademark infringement claim except that it
applies to unregistered as well as registered marks.” 74 In fact, a false
designation of origin claim is what Congress intended to prohibit when
enacting § 43(a).75 Therefore, Congress included it under the Lanham Act’s
unfair competition section—for courts to analyze the unfair competition
claims in a similar fashion to a trademark infringement claim, but with an
unregistered mark.76 The SharkNinja Court ignored the difference between
a false designation of origin and a false advertising claim, and therefore
applied the same analysis and standard.77
In Spotless, the court was faced with a patent infringement claim where
the defendant counterclaimed for false advertising. 78 In its analysis, the
Spotless Court concluded that because prior cases have not required that an
element of bad faith be proven, the Lanham Act has created a regime of
strict liability.79 Further, the Spotless Court relied on P&G v. Chesebrough-
Pond’s Inc.,80 in finding that “proof of good faith does not immunize a
defendant.”81 However, the P&G Court found that a plaintiff has the
burden of showing that the advertising is false and misleading, and that
simply because one party’s evidence supporting the truth in advertising is
unpersuasive, this does not automatically entitle the other party to relief. 82
Instead, the issue is one of fact and not law, and therefore a factfinder was
in the best position for judgment. 83 Contrary to P&G, the SharkNinja Court
did not use a factfinder, and instead, the Court granted summary judgment
on a finding of liability against Dyson.84
The Court’s application of a strict liability standard creates precedent
73
Lyons, 702 F. Supp. 2d at 104.
74
Id. at 113.
75
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 777 (1992) (Stevens, J., concurring)
(explaining that the Act was enacted to protect consumers from misrepresentations of
geographic locations).
76
Id. at 776.
77
SharkNinja Operating LLC v. Dyson Inc., 200 F. Supp. 3d 281, 287–88 (D. Mass. 2016).
78
Spotless Enters, Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d 274, 275–76 (E.D.N.Y. 1999).
79
Id. at 277–78.
80
P&G v. Chesebrough-Pond’s Inc., 747 F.2d 114, 114 (2d Cir. 1984).
81
Id. at 119.
82
Id.
83
See id.
84
See SharkNinja Operating LLC v. Dyson Inc., 200 F. Supp. 3d 281, 290–91 (D. Mass. 2016)
(court partially allowed motion for summary judgment).
2018] Cleaning Up False Advertising 11
that does and will affect businesses that are already in a position of
removing a false advertising claim.85 A strict liability standard would also
hinder the market since businesses will be penalized for their unplanned,
and sometimes unimaginable, advertising becoming false. 86 A court should
only find liability for an advertising claim where the parties are in dispute
as to whether the advertising claim is false and misleading. 87 The
SharkNinja Court ignored the fact that SharkNinja commenced the false
advertising suit after Dyson had already initiated the removal of the
advertisement.88 SharkNinja, in their Amended Complaint, conceded that
“Dyson modified its website advertising on September 9, 2014,” 89 contrary
to the original complaint, filed on September 26, 2014, where SharkNinja
alleged that Dyson “still has failed and refuses to remove its literally false
point-of-sale advertising. . . .”90
Although SharkNinja indicated that its counsel sent Dyson various
letters informing Dyson of the Shark-Lift-Away’s release and the future
falsity of Dyson’s TTS advertising campaign, SharkNinja, unfortunately,
did not provide any test results with the letters. 91 In fact, SharkNinja did
not provide Dyson with any test results until mid-September, right before
SharkNinja commenced suit, and therefore Dyson should not have been
punished for SharkNinja’s delay in providing test results that evidenced
the falsity of the advertising claim.92 For these reasons, courts should apply
a different standard when determining whether a defendant is liable for
removing a false advertising claim within a reasonable time.93
85
See Burns, supra note 12, at 840 (“The obvious problem with the strict liability interpretation
of section 43(a) is that it creates the potential of penalizing well-intended advertisers who
have caused little consumer injury.”).
86
Bevier, supra note 28, at 41 (“Strict liability imposes all the costs of misrepresentation on the
advertiser, even . . . for those that emerge from interpretations that could not cost-effectively
have been foreseen or prevented.”).
87
See Do I Have a Lanham Claim Against My Competitor for False Advertising?, BONA L. PC
https://perma.cc/PW5U-QTF3 (last visited Sept. 12, 2019).
88
See Memorandum of Law for Defendants at 15-17, SharkNinja Operating LLC v. Dyson Inc.,
200 F. Supp. 3d 281 (D. Mass. 2016) (No. 14-cv-13720- ABD).
89
First Amended Complaint at 9, SharkNinja Operating LLC v. Dyson Inc., (No. 14-cv-13720-
ABD) 200 F. Supp. 3d 281 (D. Mass. 2016).
90
Complaint at 2, SharkNinja Operating LLC v. Dyson Inc. (No. 14-cv-13720-ABD), 200 F.
Supp. 3d 281 (D. Mass. 2016).
91
SharkNinja Operating LLC v. Dyson Inc., 200 F. Supp. 3d 281, 283-87 (D. Mass. 2016).
92
See Schick Mfg. v. Gillette Co., 372 F. Supp. 2d 273, 282 (D. Conn. 2005) (“In a [false
advertising] case, where a ‘high probability of confusion’ normally gives rise to a presumption
of irreparable harm for the purposes of obtaining a preliminary injunction, that presumption
is ‘inoperative if the plaintiff has delayed either bringing suit . . . .’”); see also Bevier, supra note
28, at 48 (“[Courts] rarely challenge the good faith of plaintiffs. [Courts] do not question the
necessity for a strict liability solution to the false advertising ‘problem . . . .’”).
93
See Sandra Edelman, A Diamond is Forever. What About Your Advertising Claim?, LEXOLOGY
(Oct. 4, 2016), https://perma.cc/2TPX-D72X (describing how the SharkNinja v. Dyson decision
12 New England Law Review [Vol. 52 | 3
IV. Courts Should Apply a Reasonableness Standard to Cases with
Similar Facts to SharkNinja v. Dyson

Advertising, in general, is always at risk of becoming false. 94 Applying

a strict liability standard to cases where a defendant, before suit has
commenced, has initiated a process to remove the false advertising claim
would generate wasteful judicial time, as well as input an enormous cost to
society.95 Other standards are available for a court to implement, for
instance, a deceit or fraud standard,96 or a reasonableness standard.97
Because of the high cost of litigation, and the cost on society, courts should
apply a reasonableness standard when approaching cases that are
practically resolved.98 SharkNinja’s allegations that Dyson did not remove
the false advertising campaign in a reasonable time should not have been
interpreted by the Court to conclude that Dyson is liable for false
advertising under the Lanham Act.99
In SharkNinja, the Court found that the cases that Dyson relied on for
support “do not stand for the proposition that a manufacturer may avoid
liability or damages for false advertising under the Lanham Act if, after
learning that its advertising is false, it takes prompt, commercially
reasonable efforts to remove its false claims from the marketplace.” 100
However, simply because Dyson’s supporting cases did not directly assert
an affirmative defense to SharkNinja’s claims does not mean a court should
reject the approach, since courts are frequently faced with issues of first
impression.101 Dyson’s supporting cases mainly rely on a reasonableness
standard, usually applied in cases regarding compliance with court-issued
injunctions.102

will impact companies in the market by imposing another burden of monitoring the market
more or changing their advertising strategies).
94
Richard Craswell, Interpreting Deceptive Advertising, 65 B.U. L. REV. 657, 696 (1985) (“False
inferences can never be eliminated entirely by any method short of banning all advertising, so
advertising will never be 100% reliable.”); see also Bevier, supra note 28, at 15 (“Distinguishing
[the false inferences] from the truth and punishing them ex post entails substantial error and
enforcement costs for the legal system.”).
95
See Burns, supra note 12, at 845.
96
Bevier, supra note 28, at 39.
97
See Schick Mfg. v. Gillette Co., 372 F. Supp. 2d 273, 282 (D. Conn. 2005) (denying motion for
civil contempt because the court found that the defendant was reasonable in the removal
process even though the defendant did not abide by the thirty-day removal order).
98
See Bevier, supra note 28, at 47 (“Not only do [courts] appear to believe that purging the
marketplace of false inferences is costless, but they lack faith in the discernment and
intelligence of consumers.”).
99
SharkNinja Operating LLC v. Dyson Inc., 200 F. Supp. 3d 281, 288 n.6 (D. Mass. 2016).
100
Id. at 287.
101
First Impression, LEGAL INFO. INST., https://perma.cc/8NA6-EX7N (last visited Sept. 12, 2019).
102
SharkNinja, 200 F. Supp. 3d at 287.
2018] Cleaning Up False Advertising 13
In Schick v. Gillette,103 for example, the court denied Schick’s motion for
civil contempt because the court found that Gillette had taken reasonably
diligent efforts in removing the false advertising even though Gillette had
failed to do so within the thirty-day period the court imposed. 104 Schick is
analogous to SharkNinja in the sense that Dyson was reasonably diligent in
removing the false advertising by implementing a plan to remove the TTS
advertising campaign and create a new advertising campaign, by
designing stickers to cover the TTS advertising campaign on the product
boxes and displays, and by hiring a third-party vendor to go to retail stores
and correct the TTS advertising campaign by covering it or removing it. 105
Further, Dyson stopped broadcasting the TTS advertising campaign in
June 2014 and its circulation in April 2014, both before the Shark-Lift-
Away was even released. 106 Additionally, SharkNinja was not able to prove
that Dyson’s removal was unreasonable by any means. 107 By applying a
strict liability standard, the SharkNinja Court will undoubtedly create
precedent that will alter the future of the advertising market. 108 Most false
advertising cases are not intentional, and the defendants are unaware of
their advertising becoming false.109

CONCLUSION

The District Court of Massachusetts erred in applying a strict liability

standard in SharkNinja when analyzing a false advertising claim under §
43(a) of the Lanham Act that was true and later became false. SharkNinja
did not present any factual issues that needed determination of whether
there was false advertising. Instead, both parties agreed that Dyson’s TTS
advertising campaign became literally false when SharkNinja introduced
their new vacuum to the market in 2014. Even if the Court needed to
determine certain factual issues, a grant of summary judgment is not

103
Ruling Re: Motion for Civil Contempt and Order to Show Cause at 2–3, Schick Mfg. v.
Gillette Co., 372 F. Supp. 2d 273 (D. Conn. 2005) (No. 3-05-cv-174-(JCH)).
104
Id.
105
Memorandum of Law for Defendants at 4, SharkNinja, 200 F. Supp 3d 281.
106
Id. at 5 n.1.
107
Id. at 20.
108
See Bevier, supra note 28, at 31 (“[C]ourts deciding section 43(a) cases seem insensitive both
to the effects of their rules on the kind and amount of information that advertisers will
produce in the future . . . .”); Greg Stohr, Coca-Cola Must Face Pomegranate Drink Suit, Court
Says, BLOOMBERG (June 12, 2014, 2:37 PM), https://perma.cc/PNB9-UPAE (“Lanham Act suits
draw upon [the advertising] market expertise by empowering private parties to sue
competitors to protect their interests on a case-by-case basis,” (citing POM Wonderful v. Coca-
Cola, 134 S. Ct. 2228, 2238 (2014)).
109
Bevier, supra note 28, at 2 (“The ‘false advertising’ with which most of the cases deal turns
out not to be deliberate but rather unintentional misrepresentation.”).
14 New England Law Review [Vol. 52 | 3
appropriate and should have been denied. SharkNinja’s complaint should
have been interpreted by the Court as a complaint similar to a motion for
contempt, alleging that Dyson did not remove the false advertisement in a
reasonable time.
With the Court’s application of a strict liability standard, it has created
precedent of automatic liability for any company that has any type of
advertising in the market. The burden of litigation alone causes companies
to suffer immensely, misusing time and draining rightfully earned
economic resources. Yet, the greatest impact is felt on consumers, whose
tax dollars pay for judicial costs and who are not even harmed by the
matter in litigation to begin with.