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ALPO Petfoods, Inc. v. Ralston Purina Co.

United States Court of Appeals for the District of Columbia Circuit

April 13, 1990, Argued ; September 7, 1990, Decided

Nos. 89-7181, 89-7264


 [***1082]   [*960]  THOMAS, Circuit Judge

In this case, Ralston Purina Co. and ALPO Petfoods, Inc., two of the leading dog food producers in the United States, have sued each other under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982) (amended 1988), 1 alleging false advertising. ALPO asserts that Ralston has violated section 43(a) by claiming that its Puppy Chow products can lessen the severity of canine hip dysplasia (CHD), a crippling joint condition. Ralston, for its part, attacks ALPO's claims that ALPO Puppy Food contains "the formula preferred by responding vets two to one over the leading puppy food."

 [**2]   [*961]  After a sixty-one-day bench trial, the district court decided that Ralston's CHD-related advertising and ALPO's veterinarian preference advertising both violated section 43(a).  ALPO Petfoods, Inc. v. Ralston Purina Co., 720 F. Supp. 194, 209-11 (D.D.C. 1989). The court permanently enjoined both companies from making "advertising or other related claims" similar to those held false, and ordered both parties to disseminate corrective statements.  Id. at 216-17. Applying section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a) (1982 & Supp. V 1987) (amended 1988), the court also awarded ALPO $ 10.4 million (plus costs and attorneys' fees). The court reached this figure by determining the amount that Ralston spent on its CHD-related advertising, using that amount as a measure of Ralston's benefit from the advertising, and then doubling the amount to capture the full harm that the advertising caused ALPO. ALPO, 720 F. Supp. at 215 (citing U-Haul Int'l, Inc. v. Jartran, Inc., 793 F.2d 1034, 1037 (9th Cir. 1986)). Ralston, in contrast, was awarded only its costs and attorneys' fees.  [**3]  Id. at 215, 216.

Ralston appeals the district court's judgment, focusing on the court's determination that the CHD-related advertising claims were false, as well as the court's monetary award to ALPO, its refusal to award similar relief to Ralston, and its broad and expansively implemented injunction. 2 Convinced that the court properly applied section 43(a) and found facts that are not clearly erroneous, we affirm the court's conclusion that both Ralston and ALPO have violated section 43(a). On several issues concerning remedies, however, we vacate and remand. The monetary award to ALPO is an award of Ralston's profits, rather than ALPO's actual damages, yet we do not see in Ralston's conduct the willful, targeted wrongdoing, which an award of profits requires. See Foxtrap [***1083]  , Inc. v. Foxtrap, Inc., 217 U.S. App. D.C. 130, 671 F.2d 636, 641-42 (D.C. Cir. 1982) (per curiam). ALPO is entitled to its actual damages, however, and we try below to clarify what an award of actual damages under section 35(a) can include. Because ALPO, too, has violated section 43(a), Ralston is entitled to any actual damages that it can prove; in a case involving a meritorious claim [**4]  and a meritorious counterclaim, section 35(a) does not authorize a court to compensate only the party considered less blameworthy. Attorneys' fees, in contrast, are available under section 35(a) only "in exceptional cases," which this court has defined as cases involving willful or bad-faith conduct. Lanham Act § 35(a), 15 U.S.C. § 1117(a); see Reader's Digest Ass'n. v. Conservative Digest, Inc., 261 U.S. App. D.C. 312, 821 F.2d 800, 808 (D.C. Cir. 1987). This case does not fall into that category, so we reverse the district court's decision to grant attorneys' fees. Finally, we instruct the district court to enter an injunction more closely tailored to the harm posed by any repeat of Ralston's false advertising.

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913 F.2d 958 *; 1990 U.S. App. LEXIS 15700 **; 16 U.S.P.Q.2D (BNA) 1081 ***; 286 U.S. App. D.C. 192; 1993-2 Trade Cas. (CCH) P70,461

ALPO Petfoods, Inc., Appellee, v. Ralston Purina Company, Appellant

Prior History:  [**1]   Appeals from the United States District Court for the District of Columbia (Civil Action No. 86-2728)


advertising, profits, Puppy, district court, infringement, injunction, damages, willfulness, food, false advertising, attorney's fees, bad faith, Lanham Act, awards, monetary relief, actual damage, dog, hip joint, courts, sales, trademark, competitors, cases, court's decision, veterinarian, remedies, clearly erroneous, false-advertising, consumers, deceptive

Business & Corporate Compliance, Federal Unfair Competition Law, False Advertising, Elements of False Advertising, Trademark Law, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, General Overview, Antitrust & Trade Law, Consumer Protection, Unfair Competition, False Designation of Origin, Elements of False Designation of Origin, Lanham Act, Governments, Legislation, Effect & Operation, Prospective Operation, Retrospective Operation, Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Trials, Bench Trials, Evidence, Types of Evidence, Testimony, Remedies, Injunctions, Permanent Injunctions, Criminal Law & Procedure, Acts & Mental States, Mens Rea, Specific Intent, Willfulness, Sanctions, Misconduct & Unethical Behavior, Discovery & Disclosure, Discovery, Misconduct During Discovery, Palming Off, Causes of Action Involving Trademarks, Infringement Actions, Abuse of Discretion, Damages, Types of Damages, Profits, Punitive Damages, Conveyances, Clayton Act, Defenses, Defenses, Demurrers & Objections, Affirmative Defenses, Unclean Hands, Remedies, Private Actions, Costs & Attorney Fees, Clayton Act, Causes of Action, Reviewability of Lower Court Decisions, Preservation for Review, Grounds for Injunctions