United States District Court, W.D. Michigan, Southern Division
A.L.S. ENTERPRISES, INC., Plaintiff,
ROBINSON OUTDOOR PRODUCTS, LLC, Defendant.
OPINION REGARDING PLAINTIFF'S AND DEFENDANT'S
J. QUIST UNITED STATES DISTRICT JUDGE
A.L.S. Enterprises, Inc. (ALS), sued Defendant, Robinson
Outdoor Products, LLC (Robinson), for false advertising in
violation of § 43(a) of the Lanham Act, 15 U.S.C. §
1125(a), alleging that Robinson made false or misleading
statements of fact regarding Robinson's Trinity
scent-control hunting clothing. The parties tried the case to
a jury from May 10, 2016, through May 19, 2016. At the
conclusion, the jury returned a verdict for ALS, finding that
ALS had proved its false advertising claims as to the three
advertising statements at issue. The jury awarded ALS $1.3
million in lost profits plus $2 million in damage control
costs, and found that ALS is entitled to disgorgement of
Robinson's profits in the amount of $500, 000. Finally,
the jury said that Robinson acted willfully. (ECF No. 209.)
has filed a combined motion for: (1) judgment as a matter of
law pursuant to Federal Rule of Civil Procedure 50; (2) an
equitable adjustment of the jury award pursuant to 15 U.S.C.
§ 1117(a); and/or (3) a new trial pursuant to Federal
Rule of Civil Procedure 59. ALS has filed the following
motions: (1) motion for preliminary injunction; (2) motion
for enhanced damages; and (3) motion for attorney's fees
and prejudgment interest. The motions are fully briefed and
ready for decision.
reasons set forth below, the Court will grant Robinson's
motion for judgment as a matter of law and, alternatively,
grant Robinson's motion for a new trial. In addition, the
Court will grant ALS's motion for a permanent injunction
but will deny ALS's motions for enhanced damages and
attorney's fees and prejudgment interest.
Robinson are competitors in the scent-control hunting
products market. Both companies sell scent-control clothing
designed to mask human scent or odor from animals, and market
their products primarily to bow hunters. ALS markets its
products under the Scent-Lok brand name, and Robinson markets
its products under the ScentBlocker brand name. ALS and
Robinson share many of the same retail customers, including
so-called big-box retailers Cabela's, Gander Mountain,
and Dick's Sporting Goods.
owns a patent that relates to carbon-based scent-control
hunting clothing, pursuant to which ALS makes and sells
carbon hunting clothing. ALS licensed its carbon technology
to Robinson from 1997 until late 2012, during which time both
parties sold carbon scent-control clothing.
or 2012, Robinson began to investigate using synthetic
polymers as an alternative to carbon for an adsorbent.
Robinson eventually settled on a product called Macronet and
terminated its license with ALS, electing to focus solely on
clothing containing its Macronet technology, which Robinson
named “Trinity.” In August 2012, Robinson
retained Dr. Roger Pearson of Aspen Research Corporation to
perform a static adsorption test using the same size pieces
of fabric containing four different adsorptive technologies:
Macronet (Trinity); Robinson's Cold Fusion carbon
product; ALS's carbon product; and Zeolite-a material
used in Under Armour scent-control clothing. Using butyric
acid to mimic human scent, Dr. Pearson designed the test to
measure the uptake of butyric acid in each fabric sample over
various time intervals that concluded at 144 hours. Dr.
Pearson reported the raw data from his test in report A47053.
(PX 142B.) Based on the data from A47053, Robinson
performed an additional calculation designed to further
compare the technologies and isolate for the adsorbent by
dividing the amount of butyric acid adsorbed by the weight of
each different fabric sample. (DX 50.)
Trinity product that Robinson ultimately commercialized
contained significantly less Macronet than the Trinity fabric
sample Aspen tested in A47053. Whereas the Trinity fabric
tested in A47053 had a Macronet loading of 40 grams per
square meter, the Macronet loading on the commercialized
Trinity fabric was 6.25 grams-one-sixth of the loading used
in A47053. (ECF No. 233 at PageID.2055-56.)
fall of 2012 and continuing through 2014, Robinson pitched
its Trinity products to Cabela's, Gander Mountain, and
Dick's in various presentations. The materials that
Robinson presented to these retailers included the following
statements or claims: (1) 1 ScentBlocker Jacket with Trinity
has the scent adsorbing capacity of 3 Scent-Lok jackets with
carbon alloy and 8 Under Armour jackets with Zeolite (the
8-3-1 claim); (2) activated carbon technology has 44% of the
odor adsorption capacity of the Trinity technology (the
100-44 claim); and (3) Trinity technology adsorbs up to 40%
more odor than carbon and up to 200% more than Zeolite (the
40/200 claim). (See, e.g., PX 150, 159B,
165B.) The same materials also said that Trinity technology
allowed for lighter loading of the adsorbent, making possible
lighter fabrics and designs with adequate adsorption.
(See, e.g., PX 150, 159B.) The 8-3-1 and
100-44 claims were made only to Cabela's, Gander
Mountain, and Dick's, while the 40/200 claim was made to
all of Robinson's retail customers and to consumers.
March 2014, Robinson engaged Aspen to perform another test
using the same methodology employed in test A47053, but this
time using commercialized Robinson Trinity and ALS carbon
products. (ECF No. 240 at PageID.2424-25, 2620.) Robinson
ordered the test to determine the validity of ALS's
national ad campaign stating that Scent-Lok products were 16
times more effective than ScentBlocker products.
(Id. at PageID.2495.) The results of the test,
identified as A48444, showed that ALS's and
Robinson's products performed at about the same level.
(Id. at PageID.2629.)
Motion for Judgment as a Matter of Law
argues that it is entitled to judgment as a matter of law
because ALS failed to present sufficient evidence to
establish the requisite elements of its false advertising
claim as to each of the asserted advertising claims.
confronted with a motion for judgment as a matter of law must
decide “whether there is sufficient evidence to raise a
question of fact for the jury.” Warkentien v.
Vondracek, 633 F.2d 1, 6 (6th Cir. 1980). The inquiry
for resolving a Rule 50 motion is essentially the same as
that for resolving a Rule 56 motion for summary judgment.
White v. Burlington N. & Santa Fe Ry Co., 364
F.3d 789, 794 (6th Cir. 2004) (citing Reeves v. Sanderson
Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct.
2097, 2110 (2000)). The Sixth Circuit describes the district
court's analysis as follows:
In determining whether the evidence is sufficient, the trial
court may neither weigh the evidence, pass on the credibility
of witnesses, nor substitute its judgment for that of the
jury. Rather the evidence must be viewed in the light most
favorable to the party against whom the motion is made,
drawing from that evidence all reasonable inferences in his
favor. If, after thus viewing the evidence, the trial court
is of the opinion that it points so strongly in favor of the
movant that reasonable minds could not come to a different
conclusion, then the motion should be granted.
Ratliff v. Wellington Exempted Vill. Schs. Bd. of
Educ., 820 F.2d 792, 795 (6th Cir. 1987) (citations
prove a claim of false advertising under the Lanham Act, a
plaintiff must establish that
1) the defendant has made false or misleading statements of
fact concerning his own product or another's; 2) the
statement actually or tends to deceive a substantial portion
of the intended audience; 3) the statement is material in
that it will likely influence the deceived consumer's
purchasing decisions; 4) the advertisements were introduced
into interstate commerce; and 5) there is some causal link
between the challenged statements and harm to the plaintiff.
Am. Council of Certified Podiatric Physicians &
Surgeons v. Am Bd. of Podiatric Surgery, Inc., 185 F.3d
606, 613 (6th Cir. 1999). Where, as here, several statements
are at issue, a court must assess each statement
independently. Johnson & Johnson Vision Care, Inc. v.
1-800 Contacts, Inc., 299 F.3d 1242, 1247-48 (11th Cir.
2002). As for the first element, a plaintiff who seeks an
award of damages may prove either that the statement
“is literally false or that it is true yet misleading
or confusing.” American Council, 185 F.3d at
614. If a statement is literally false, deception is
presumed, i.e., the plaintiff need not introduce
evidence that consumers perceived the statement in a
misleading manner. Id.; see also Innovation
Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 735 (6th
Cir. 2012) (noting that “where statements are literally
false, a violation may be established without evidence that
the statements actually misled consumers”). If a
statement is ambiguous or true but misleading, the plaintiff
must present proof of actual deception. American
Council, 614 F.3d at 614.
statement can be literally false either explicitly or by
“necessary implication.” Innovation
Ventures, 694 F.3d at 735-36 (quoting Novartis
Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer
Pharm. Co., 290 F.3d 578, 586-87 (3d Cir. 2002)). The
“necessary implication” doctrine encompasses the
so-called “establishment claim, ” which permits a
plaintiff to prove literal falsity based on product testing.
See FLIR Sys., Inc. v. Sierra Media, Inc., 903
F.Supp.2d 1120, 1129 (D. Or. 2012) (describing establishment
claims as a “subspecies of the false by necessary
implication doctrine”). When an establishment claim is
at issue, a plaintiff may prove literal falsity “by
demonstrating that the tests were not sufficiently reliable
to permit a conclusion that the product is superior, ”
or by showing that “the tests, even if reliable, do not
establish the proposition asserted by the defendant.”
Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 63
(2d Cir. 1992). When a plaintiff seeks to prove literal
falsity through an establishment claim, the defendant must
identify the tests that support its advertising statement.
8-3-1 and 100-44 Claims
admits that the 8-3-1 and 44-100 claims were literally false.
(ECF No. 225 at PageID.1761-63.) Therefore, while ALS was
thus not required to present evidence that these statements
actually deceived the retailers, it was still required to
show both that these statements were material to the
retailers' purchasing decisions and that there was a
causal link between these statements and some harm. ALS
failed to do so for both elements. First, as to materiality,
while both statements could influence a purchasing decision
because they suggest that Trinity adsorbed more odor than
activated carbon technology, both statements were always
presented together to the retailers, who were sophisticated
buyers, and oftentimes appeared in materials near the 40/200
claim. Given that these statements were mathematically at
odds with one another, it is implausible (without testimony
from the retailers) that sophisticated and knowledge retail
buyers would have relied on either statement. As for harm, ALS
failed to offer any evidence sufficiently linking these
statements to any retailer's purchasing
The 40/200 Claim
contrast to the 8-3-1 and 100-44 claims, the 40/200
advertising claim was made to both retailers and consumers.
Because ALS proceeded on the theory that the 40/200 claim was
an establishment claim, a substantial portion of the evidence
at trial focused on whether the tests supporting this claim
were reliable and, in fact, supported the claim.
The Evidence Established That the Claim ...