Interview: Larry Weinstein of Proskauer

Larry Weinstein of Proskauer Rose LLP kindly answered my interview questions, which I have edited to add a few links and a picture. Here is his brief biographical statement:

I am a senior intellectual property litigation partner at Proskauer Rose LLP in New York City, and co-chair of Proskauer’s Trademark and False Advertising practice group. I am a 1978 graduate of NYU School of Law, where I was Articles Editor of the NYU Law Review, Order of the Coif and a John Norton Pomeroy scholar. After a judicial clerkship with Judge James Hunter of the U.S. Court of Appeals for the Third Circuit, I began private practice in 1979, and was a partner at two New York City law firms before joining Proskauer Rose in 1999.

Q: How did you get into advertising litigation?

In the late 1980’s, I began doing trademark litigation for SC Johnson & Son, a large consumer products company in Wisconsin. After a few successful cases, they gave me a false advertising case, and then another and another. My work with that client led to false advertising cases with other clients, and by the mid-1990’s, I found myself spending most of my time litigating and counseling clients in the area of false advertising. That has continued to be the case ever since. I find this area of the law fascinating, so much so that I am one of the very few people around who pay close attention to commercials on days other than Super Bowl Sunday.

Q: Tell us about a favorite advertising case (or cases) you litigated.

I don’t really have a favorite case. For whatever reason, my current cases are always my favorites. If I really had to pick one, and this would be a close call, it would be the “Goldfish” false advertising case several years ago in the Southern District of New York and the Second Circuit. In that case, SC Johnson, the manufacturer of ZIPLOC food storage bags, brought a Lanham Act false advertising suit against its archrival Clorox, the maker of GLAD food storage bags, arising out of Clorox advertising featuring a talking Goldfish that portrayed the Ziploc bags as leaking a sieve. SC Johnson did not find the ads the least bit funny. We succeeded in getting the first ad enjoined after trial, and then won summary judgment enjoining a second ad. On appeal, the Second Circuit affirmed. The case ranks high on my list because we defeated a very good adversary, the case involved some fascinating legal issues, including the so-called “necessary implication” doctrine and whether visual images can be literally false, and because the Second Circuit (and other circuit courts) continue to cite that case, which turned out to be an important one in Lanham Act false advertising jurisprudence.

(Picture by colodio.)

Q: What are some hot legal issues in the courts? What emerging trends in advertising law should advertisers be watching?

In the Lanham Act area, there are several. One involves differences among the circuit courts concerning who has standing to sue under the statute. It is clear that consumers do not have standing, but some appellate courts limit standing to direct competitors, and others, including the First and Second Circuits, extend standing to non-competitors that suffered a business injury caused by the false advertising. And recently, the Eleventh Circuit held that a Burger King franchisee that was a direct competitor of McDonald’s lacked standing to sue McDonald’s for false advertising. That decision, which I was not involved in but have written about, was wrongly decided in my view. One of these days, the right case is going to cause the Supreme Court to grant cert. to decide this issue.

Another interesting issue which the courts have not yet fully dealt with involves statistical significance, particularly what statistical results do and do not enable an advertiser to claim parity.

Third, the necessary implication doctrine is being overextended by some courts to find literally false advertisements that are actually quite ambiguous. That is not a good development in Lanham Act law.

Finally, outside of the Lanham Act, there has been a steady proliferation of state law-based consumer class action false advertising suits. This could turn out to be a revolutionary development, and creates all sorts of different risks and costs for advertisers that has begun to affect how corporate legal advisers assess advertising copy.

Q: Courts have imposed a materiality requirement in Lanham Act false advertising cases, and some have even required specific evidence that a false statement is material – e.g., Pizza Hut Inc. v. Papa John's Int'l, 227 F.3d 489 (5th Cir. 2000). Should trademark law take a cue from false advertising law and require some showing of materiality, for example in source/sponsorship cases?

It’s an interesting question, but I wonder whether the absence of a formal materiality requirement in trademark cases is really a significant problem. Source or sponsorship confusion is typically demonstrated by consumer surveys, and where the confusion is reflected in answers to open ended questions, the importance of the confusion to the survey participant’s assessment of the marks in question is often apparent. It is true, I suppose, that this is not the case where the confusion is demonstrated by close-ended questions. However, the biggest problem with judicial reliance on close ended questions in this context is not materiality, but rather the fact that these questions are so leading. In other words, in my opinion, these questions do not provide an accurate reflection of the extent of consumer confusion at all, much less the extent of confusion likely to affect purchasing decisions.

Q: What is your advice for a law student who wants to practice in the field? Given that most schools don’t teach advertising law, what are the best courses to take?

I can answer the first question easily enough; the second question is tougher. Taking the latter first, a trademark or Lanham Act course would be the best substitute for a course on advertising law. Come to think of it, I wouldn’t mind teaching an advertising course if someone out there wants to offer one. As to the first question, the best advice is to find out through the law firm interviewing process which firms regularly practice in this field, and I emphasize the word regularly here. In fact, surprisingly few firms do. Of those few, New York City has the most, with the remainder primarily in D.C. and Chicago. If a student has the chance to interview with those firms, they should be upfront about their interest, and ask how easy it is to get slotted into this area. If any readers would like more detailed information about how to break into the field, they should email me at lweinstein (at) proskauer.com.

From RT: Thanks again to Larry; I hope to continue this as an occasional series, so reader suggestions are welcome!