Double vision: revised ad still false, not contemptuous

Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 2006 WL 2128785 (S.D.N.Y.)

J&J sued CIBA over promotional materials for CIBA’s launch of its O2OPTIX contact lenses. J&J received a permanent injunction against certain claims of oxygen transmissibility and consumer preference, and sought to have CIBA held in contempt for violating that injunction.

The original order enjoined CIBA from stating, on the basis of its consumer preference study, that 75% of the participants in that study preferred O2Optix over Acuvue Advance. So CIBA claimed, based on that study, that “75% of lens wearers selected O2Optix over Acuvue Advance,” and added an asterisk explaining that 33% of the patients who selected O2Optix and 40% of the patients who selected Acuvue Advance chose a favorite at random. After J&J squawked, the court issued a further order clarifying and enforcing the first order, prohibiting any claim using the word “selection” or like words. (Seriously, CIBA, who thought that the revised ads were okay? The court used the word “selected” in its own description of the study, but the court was paying much more attention to nice details than consumers can be expected to do.) Despite the violation, the court refused to find CIBA guilty of contempt because CIBA was trying to comply with the order.

The rest of the opinion refuses CIBA’s motion for partial summary judgment dismissing J&J’s accounting and attorneys’ fee demands. In the Second Circuit, attorneys’ fees are only awarded if there is bad faith or fraud. Likewise, the Second Circuit allows an accounting of defendant’s profits only upon a showing of bad faith as well as a “general right to damages.” A footnote points out that the 1999 amendment of the Lanham Act authorizing recovery of profits raises a question as to the continuing viability of Second Circuit precedent requiring willfulness, since the amendment specified a willfulness requirement for profits in cases of dilution, but did not change the language of the provision governing §1125(a). Even accepting that bad faith is required, fact issues remained.

Another ruling of note was that the court declined to exclude a survey by CIBA’s expert purporting to show that the false advertising didn’t harm Acuvue Advance’s reputation among the eye care professionals to whom the ads were disseminated. The ads went out in fall 2004 and the survey was in June 2005 and relied on the subjects’ memories of the ads. The court concluded that the survey was not as probative as a contemporaneous survey, but might still assist the fact-finder on the issue of causation.