Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc.

                               PRECEDENTIAL
       UNITED STATES COURT OF APPEALS
            FOR THE THIRD CIRCUIT
                 _____________

                     No. 10-2354
                    _____________

            PERNOD RICARD USA, LLC,

                                       Appellant

                           v.

                BACARDI U.S.A., INC.
                  _______________

     On Appeal from the United States District Court
              for the District of Delaware
                   (D.C. No. 06-cv-505)
         District Judge: Hon. Sue L. Robinson
                    _______________

                        Argued
                    February 9, 2011

Before: JORDAN, GREENAWAY, JR., and WEIS, Circuit
                    Judges.

                (Filed: August 4, 2011)
                   _______________
David H. Bernstein [ARGUED]
Carl J. Micarelli
Debevoise & Plimpton
919 Third Avenue – 41st Fl.
New York, NY 10022

Jack B. Blumenfeld
Rodger D. Smith, II
Morris, Nichols, Arsht & Tunnell
1201 N. Market Street
Wilmington, DE 19801

Eric R. Hubbard
Margaret C. Lu
Vincent N. Palladino
Ropes & Gray
1211 Avenue of the Americas
New York, NY 10036
      Counsel for Appellant

Anne S. Gaza
William J. Wade
Richards, Layton & Finger
920 N. King Street
Wilmington, DE 19801

William R. Golden, Jr. [ARGUED]
Matthew D. Marcotte
Kelley, Drye & Warren
101 Park Avenue
New York, NY 10178
      Counsel for Appellee




                              2
Richard J. Leighton
Scott M. Abeles
Keller and Heckman LLP
1001 G Street, NW – Ste. 500 West
Washington, DC 20001

Leyla Mujkic
Keller and Heckman LLP
3 Embarcadero Center – Ste. 450
San Francisco, CA 94111

Duane L. Berlin
Lev & Berlin, P.C.
200 Connecticut Avenue – 5th Fl.
Norwalk, CT 06854
     Counsel for Amicus Appellants
                   _______________

                 OPINION OF THE COURT
                     _______________

JORDAN, Circuit Judge.

        Pernod Ricard USA, LLC (“Pernod”) appeals the
decision of the United States District Court for the District of
Delaware that the label of “Havana Club” brand rum, a rum
sold in the United States by Bacardi U.S.A., Inc. (“Bacardi”),
is not a false advertisement of the rum’s geographic origin
under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(B). Because we agree with the District Court
that no reasonable interpretation of the label as a whole could
lead to the conclusion that it is false or misleading, we will
affirm.




                               3
I.    Background

      A.     The Original Havana Club Rum and Its
             Trademark

        This case is the latest battle in a lengthy war between
Pernod and Bacardi, two multinational distilleries, over the
use of the words “Havana Club” to sell rum in the United
States. Though the convoluted history of the conflict has
been recounted at length elsewhere, a portion of it requires
retelling. 1

       Before the start of the Cuban Revolution, the
Arechabala family produced “Havana Club” brand rum in
Cuba, sold it locally, and exported it for sale in the United
States. In 1960, following the Communist revolution in
Cuba, the Cuban government expropriated the Arechabalas’
business without compensation. Three years later, the United
States began to enforce a trade embargo against Cuba. The
embargo, which continues to this day, generally prevents the

      1
        A more detailed history is provided in Havana Club
Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000);
Empresa Cubana Exportadora de Alimentos y Productos
Varios v. United States Dept. of Treasury, 606 F. Supp. 2d 59
(D.D.C. 2009) (“Empresa Cubana”); Havana Club Holding,
S.A. v. Galleon, S.A., 62 F. Supp. 2d 1085 (S.D.N.Y. 1999);
Havana Club Holding, S.A. v. Galleon, S.A., 1998 WL
150983 (S.D.N.Y. Mar. 31, 1998); Havana Club Holding,
S.A. v. Galleon, S.A., 961 F. Supp. 498 (S.D.N.Y. 1997);
Havana Club Holding, S.A. v. Galleon, S.A., 974 F. Supp. 302
(S.D.N.Y. 1997).




                              4
importation of Cuban goods and is administered by the Office
of Foreign Assets Control (“OFAC”). Despite the embargo,
the Cuban government in 1976, through a government-owned
company called “Cubaexport,” 2 managed to register with the
United States Patent and Trademark Office (“USPTO”) the
words “Havana Club” as a trademark for use in connection
with rum. In 1994, through a series of transfers, the Cuban
government assigned its claimed interests in the Arechabala
family’s old business to a joint venture (the “JV”), of which
Pernod Ricard, S.A., Pernod’s parent corporation, is a
member. 3 That transfer included the USPTO registration for
the “Havana Club” mark, and, in 1995, OFAC specifically
approved the transfer of the trademark to the JV. However, in
1997, OFAC retroactively revoked its permission for that
transfer. The mark then remained registered to Cubaexport
until July 2006, when the registration expired after OFAC
denied permission for renewal of the mark.




      2
       The formal name of the enterprise is “Empresa
Cubana Exportadora De Alimentos y Productos Varios.”
(App. at 8.)
      3
        Through the JV, rum branded as “Havana Club” is
sold outside the United States. Because of the trade embargo,
Cuban-made rum cannot be sold in the United States.
However, United States citizens traveling to Cuba are
permitted to return with a limited amount of Cuban goods,
including Havana Club rum made under the auspices of the
JV. It has been said that “Havana Club rum and cigars are the
most popular items brought back.” Havana Club Holding,
S.A. v. Galleon S.A., 203 F.3d 116, 121 (2d Cir. 2000).




                             5
      B.     Bacardi’s Sales of Havana Club Brand Rum

        In 1994, Bacardi filed a federal trademark application
for use of the “Havana Club” mark on rum in the United
States, 4 and, for a short time in 1995, Bacardi imported from
the Bahamas and sold in this country a nominal amount of
rum labeled with that mark. Soon after those limited sales,
the JV filed suit in the United States District Court for the
Southern District of New York to enjoin Bacardi’s use of the
“Havana Club” trademark. While that action was pending,
Bacardi purchased from the Arechabala family any remaining
rights they might have had to the “Havana Club” mark and
the related goodwill of the business, along with any rum
business assets the family owned. Later, following OFAC’s
revocation of permission for the transfer of the “Havana
Club” mark to the JV in 1997, the JV’s case against Bacardi
was dismissed. See Havana Club Holding, S.A. v. Galleon
S.A., 203 F.3d 116, 121, 135 (2d Cir. 2000).


      4
        That application is still pending before the USPTO.
United States Trademark Application Serial No. 74,572,667
(filed Sept. 12, 1994). Bacardi also filed applications for use
of the marks “Havana Select,” “Habana Clasico,” “Old
Havana,” “Havana Primo,” and “Havana Clipper,” in
connection with the sale of rum. Registration of those marks
was denied, and the Trademark Trial and Appeal Board
(“TTAB”) affirmed those denials in 1997 on the basis that the
marks were “primarily geographically deceptively
misdescriptive … because purchasers’ belief that the rum
products … originate in HAVANA, Cuba, is a mistaken
belief.” In re Bacardi & Co. Ltd., 48 U.S.P.Q. 2d 1031, 1035
(T.T.A.B. 1997).




                              6
       In August 2006, just days after Cubaexport’s federal
trademark registration of “Havana Club” expired, Bacardi
began selling rum in Florida using “Havana Club” as the
brand name. The rum was distilled in Puerto Rico and was
made using the Arechabala family recipe. 5 Bacardi took three
years to develop the product, due to regulatory and
production requirements, and, according to a member of the
Arechabala family, it turned out to be “almost identical” to
the original Havana Club rum made by the family in Cuba.
The bottle in which Bacardi’s rum was sold appears below.




      5
        Before those sales commenced, Bacardi submitted the
label for the rum to the Department of the Treasury’s Alcohol
and Tobacco Tax and Trade Bureau (“T&TB”). The T&TB
must approve labeling of alcoholic beverage bottles and is
tasked with preventing misleading statements on alcoholic
beverage labels. 27 U.S.C. § 205. The T&TB ultimately
approved Bacardi’s Havana Club rum label in April 2008.




                             7
      On the front of the bottle, the phrase “Havana Club™”
appears in large stylized letters, followed by the word
“BRAND” in much smaller letters. Below that, in letters of
prominent though slightly smaller size than those in the brand
name and in a different font, the words “PUERTO RICAN




                              8
RUM” appear. Beneath that, in smaller letters and different
color ink, the label says “HAVANA CLUB™ RUM.” The
words “Havana Club™” are also repeated several times
around the neck of the bottle. The back of the bottle includes
a statement in clearly legible type that reads as follows:

       Havana Club™ Rum is a premium rum distilled
       and crafted in Puerto Rico using the original
       Arechabala family recipe. Developed in Cuba
       circa 1930, this finely crafted spirit uses black
       strap molasses, a slow fermentation process,
       five times distillation and white oak mellowing
       to create a velvet smoothness that is clean and
       round to the palate.

The words “HAVANA CLUB™ RUM” and the web address
“www.havanaclubus.com” also appear on the back of the
bottle above a government-mandated health warning, which
is followed by a toll-free number containing the letters
HAVANA and, in small print, the phrases “Produced by
Havana Club, U.S.A., San Juan, P.R.” and “Havana Club is a
trademark.”

       C.     The Instant Case

       In 2006, shortly after Bacardi began its sales of the
Havana Club rum made in Puerto Rico, Pernod filed this false
advertising suit under Section 43(a)(1)(B) of the Lanham Act,
asserting that the labeling of Bacardi’s bottle, particularly the
use of the words “Havana Club,” misleads consumers to
believe that the rum is produced in Cuba. At the conclusion
of a three-day bench trial, in which Pernod presented
unrebutted survey evidence that approximately eighteen




                               9
percent of consumers who looked at the Havana Club rum
bottle were left thinking that the rum was made in Cuba or
from Cuban ingredients, 6 the District Court ruled in favor of
Bacardi. The Court found that the Havana Club brand name
reflected the Cuban heritage of the rum’s recipe. According
to the Court, Bacardi “has a First Amendment right to
accurately portray where its product was historically made
and, therefore, plaintiff cannot demonstrate that defendant’s
use of ‘Havana Club’ violates … the Lanham Act.” (App. at
26.) The District Court also said that, because the “Havana
Club label clearly and truthfully provides the origin of
[Bacardi]’s rum, and is not deceptive” (App. at 23), there was
no need “to analyze actual (or likely) consumer deception”
(App. at 27). The District Court thus bypassed Pernod’s
survey evidence, holding that “[a] court is permitted to find,
as a matter of law, that no reasonable consumer could be
misled by the challenged advertising.” (App. at 23 n.19.)

      Pernod timely appealed the District Court’s decision
on the sole ground that the Court erroneously failed to
consider the survey evidence presented by Pernod.




      6
        Pernod’s expert said that his analytical approach
included understanding “the percentage of respondents stating
that the product was made in either Havana or Cuba and/or
that the product’s ingredients came from Cuba. These
respondents were classified as ‘misled.’” (App. at 930.)




                             10
II.    Discussion 7

         It appears that this false advertising dispute is a proxy
for the real fight the parties want to have, which is over the
right to the exclusive use of “Havana Club” as a trademark.
Under the peculiar circumstances of the Cuban trade embargo
and the attendant denial of an opportunity to register and
protect “Havana Club” as a mark for rum in the United States,
Pernod has turned to the false advertising provision of the
Lanham Act, § 43(a)(1)(B). 8 Section 43(a)(1)(B) provides in
pertinent part:

       (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,

       7
        The District Court had jurisdiction over this action
based upon 28 U.S.C. § 1331. We exercise jurisdiction
pursuant to 28 U.S.C. § 1291. We review the District Court’s
findings of fact for clear error and its conclusions of law de
novo. Hooven v. Exxon Mobil Corp., 465 F.3d 566, 572 (3d
Cir. 2006).
       8
        This is not the first time the false advertising
provision of the Lanham Act has been asked to stand in for a
trademark action during the course of the battle over the
“Havana Club” mark. In litigation before the United States
District Court for the Southern District of New York and the
United States Court of Appeals for the Second Circuit, a
corporation formed by the JV, Havana Club International,
S.A., was pressing a false advertising claim but was held to
lack standing because it sold no rum in the United States. See
Havana Club Holding, S.A., 203 F.3d at 119, 130-33.




                               11
      or any false designation of origin, false or
      misleading description of fact, or false or
      misleading representation of fact, which –

             …

             (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.

15 U.S.C. § 1125.

     To establish a false advertising claim under the
Lanham Act, a plaintiff must prove:

      1) that the defendant has made false or
      misleading statements as to his own product [or
      another’s]; 2) that there is actual deception or at
      least a tendency to deceive a substantial portion
      of the intended audience; 3) that the deception
      is material in that it is likely to influence
      purchasing decisions; 4) that the advertised
      goods traveled in interstate commerce; and 5)
      that there is a likelihood of injury to the plaintiff
      in terms of declining sales, loss of good will,
      etc.




                               12
Warner-Lambert v. Breathasure, 204 F.3d 87, 91-92 (3d Cir.
2000) (citing Johnson & Johnson-Merck Consumer Pharm.
Co. v. Rhone-Poulenc Rorer Pharm., Inc., 19 F.3d 125, 129
(3d Cir. 1994)). As to the second element, actual deception
or a tendency to deceive is presumed if a plaintiff proves that
an advertisement is unambiguous and literally false. Novartis
Consumer Health, Inc. v. Johnson & Johnson-Merck
Consumer Pharm. Co., 290 F.3d 578, 586 (3d Cir. 2002). If
the message conveyed by an advertisement is literally true or
ambiguous, however, the plaintiff must prove actual
deception or a tendency to deceive, and it may do so with a
properly conducted consumer survey. Id. at 586, 588-90;
Rhone-Poulenc Rorer, 19 F.3d at 129-31.

        Pernod submitted a consumer survey at the trial and
asserts that the District Court was required to consider it
when determining if Bacardi’s “Havana Club” label
amounted to a misleading statement of geographic origin.
According to Pernod, “[r]esolution of the ‘pivotal legal
question’ of whether an advertisement, like Bacardi USA’s
label, implies an inaccurate message to a sufficient number of
consumers ‘virtually demands survey research because it
centers on consumer perception and memory.’” (Appellant’s
Op’g Br. at 30 (quoting Fed. Judicial Ctr., Reference Manual
on Scientific Evidence 235 (2d ed. 2000).) Bacardi responds,
in line with the District Court’s reasoning, that the initial step
in analyzing a statement challenged as false advertising is to
“‘determine[] what message is conveyed.’” (Appellee’s
Ans’g Br. at 18 (quoting United States Healthcare, Inc. v.
Blue Cross of Greater Phila., 898 F.2d 914, 921 (3d Cir.
1990)).) And, Bacardi emphasizes, our precedent provides
that “‘[s]ometimes this determination may be made from the




                               13
advertisement on its face.’”        Id. (quoting United States
Healthcare, 898 F.2d at 922).

       To address the competing arguments before us, we
must first consider the District Court’s reasoning in greater
detail. The Court admitted Pernod’s survey evidence but
decided at step one of the analytical process that no false or
misleading statement was made, so no survey evidence was
needed. Indeed, the Court questioned whether “Havana
Club” is even an actionable statement under § 43(a)(1)(B)
because “[i]t is not self-evident that … [it is] a statement[] of
fact capable of being proven false.” (App. at 17 (internal
quotation marks and citation omitted).) “Havana Club” is,
said the Court, “not the same as ‘Made in Havana’ or even
‘Havana Rum,’ such as would impart a specific, verifiable
claim.” (Id.) But, assuming for the sake of analysis that the
words “Havana Club” do constitute an actionable statement,
the Court turned to what it saw as the “unique question”
presented by this case, namely, “is ‘geographic origin’ more
akin to ‘heritage’ or to the ‘source of production’?” (Id. at
18.)

        After considering the development of the right of
action arising from a “false designation of origin” and
exploring the meaning of “origin,” the District Court
discounted the relevance of the precedents it had just
reviewed. It drew a distinction between § 43(a)(1)(A), which
is the subsection of § 43(a) that is focused on trademarks and,
more generally, unfair competition, and § 43(a)(1)(B), which
is the subsection at issue here and addresses false advertising.
Section 43(a)(1)(A) forbids, among other things, false or
misleading representations that may deceive consumers about
the “origin” of goods or services, while § 43(a)(1)(B) forbids




                               14
false or misleading representations as to the “geographic
origin” of goods and services. In light of the addition of the
modifier “geographic” to the word “origin” in § 43(a)(1)(B),
the District Court considered authority regarding
§ 43(a)(1)(A) to be “not particularly instructive on the
meaning of ‘geographical origin’ as used in § 43(a)(1)(B).”
(App. at 21.)

        The Court acknowledged that the Supreme Court has
held in a § 43(a)(1)(A) case that “origin” refers to “the
producer of the tangible goods that are offered for sale, and
not the author of any idea, concept, or communication
embodied in those goods.” Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23, 37 (2003).
“[A]pplying that focus to the interpretation of ‘geographical
origin,’” the District Court said, “would implicate the place of
manufacture, rather than the source of that product’s recipe or
its heritage.” (App. at 21.) Nevertheless, relying on a
decision of the Trademark Trial and Appeal Board (“TTAB”),
an administrative tribunal in the USPTO, the Court
considered it “plausible” that the term “geographic origin” in
the false advertising context may be broad enough to embody
a product’s heritage, including its history and recipe. (Id.
(citing Corporacion Habanos, S.A. v. Anncas, Inc., 88
U.S.P.Q. 2d 1785, 1791 (T.T.A.B. 2008) (“a product may be
found to originate from a place, even though the product is
manufactured elsewhere”)).) But, according to the reasoning
of the District Court, regardless of whether one considered
geographic origin as simply a question of where something is
made or, instead, took the broader “heritage” approach to the
question of geographic origin, Pernod’s claim failed, and it
did so for reasons that made survey evidence irrelevant.




                              15
        As to the place of manufacture, the Court was
persuaded that “[t]he Havana Club label clearly and truthfully
provides the origin of defendant’s rum, and is not deceptive.”
(App. at 23.) The label proclaims the contents of the bottle to
be “Puerto Rican Rum” and specifically says the rum is
“distilled and crafted in Puerto Rico[.]” (App. at 12.) The
District Court saw no room for deception in that. 9 Quoting
the decision of the United States Court of Appeals for the
Seventh Circuit in Mead Johnson & Co. v. Abbott Labs., 201
F.3d 883, 886 (7th Cir. 2000), amended on denial of reh’g,
209 F.3d 1032 (7th Cir. 2000) (per curium), 10 the District
Court said, “survey research does not determine the meaning
of words or ‘set the standard to which objectively verifiable
claims must be held.’” (App. at 23.)

        Turning to the question of heritage, the Court declared
that “Havana Club rum has a Cuban heritage and, therefore,
depicting such a heritage is not deceptive.” (App. at 24.)
Under this broader interpretation of the term “geographic
origin,” Pernod’s survey evidence was necessarily irrelevant,
in the Court’s view, because Bacardi should have a First
Amendment right “to accurately portray where its rum was
historically made – as opposed to claiming that the product is
still made there.” (Id. at 25.) The Court found it particularly

      9
        The Court found it persuasive that “the federal agency
charged with monitoring consumer deception in labeling”
alcohol, the TTB, approved Bacardi’s use of the “Havana
Club” label. (App. at 23.)
      10
         The District Court relied upon the unamended
opinion but cited portions of the opinion that were untouched
by the later amendments.




                              16
important that Bacardi’s Havana Club rum is based on the
Arechabala family’s original Havana Club recipe.

       While we may not agree with every aspect of the
foregoing analysis, 11 we are persuaded that the District
Court’s carefully reasoned opinion reaches the right result on
the particular facts of this case. More specifically, we
conclude, as did the District Court, that the Havana Club
label, taken as a whole, could not mislead any reasonable
consumer about where Bacardi’s rum is made, which means
that survey evidence has no helpful part to play on the

      11
         We question whether the District Court should have
endeavored to use the modifier “geographic” to expand the
meaning of “origin” into the realm of history, heritage, and
culture. See Dastar, 539 U.S. at 38 (stating that a claim for
false advertising relating to the authenticity of a good would
fall under the “‘misrepresents the nature, characteristics [or]
qualities’ provision of § 43(a)(1)(B)”). As the Court itself
observed, applying the Supreme Court’s interpretation of the
word “origin” from Dastar may lead more naturally to an
understanding of “geographic origin” as implicating the place
of a product’s manufacture, not a broad inquiry into the
product’s background, see id. at 29-32, 37 (clarifying that the
term “origin” as used in § 43(a)(1)(A) encompasses both the
geographic location in which the “tangible product sold in the
marketplace” was produced and the “producer of the tangible
goods that are offered for sale” but does not incorporate “the
author of any idea, concept, or communication embodied in
those goods”). However, whether “origin” acquires a broader
rather than a narrower meaning when the adjective
“geographic” is placed before it is not something we need to
decide now.




                              17
question of what       the   label   communicates    regarding
geographic origin.

       The central conceptual problem before us is whether
language can be clear enough that its meaning is beyond
reasonable dispute. Pernod is of course correct that the issue
in false advertising cases is “whether an advertisement, like
[Bacardi’s] label, implies an inaccurate message … .”
(Appellant’s Op’g Br. at 30.) That is somewhat of a
tautology, but Pernod’s choice of the word “implies” is apt
because it rightly indicates that the words themselves have
meaning beyond the subjective inferences of any individual
reader or listener. Words, malleable though they may be over
time, must still, of necessity, be repositories of commonly
accepted meaning at any given point in time. Were it
otherwise, ordinary discourse would be impossible.

        While they lack the precision of numbers, words must,
as nearly as possible, be accorded an objectively reasonable
meaning if law is to have any fair claim as an instrument of
justice. Proof of that is found throughout the law. See, e.g.,
Wilson v. Quadramed Corp., 225 F.3d 350, 354-55 (3d Cir.
2000) (holding that we read the Federal Debt Collection
Practices Act to protect the “least sophisticated consumer,”
which includes the “gullible as well as the shrewd,” because
the Act is a consumer protection law, but we “preserv[e] a
quotient of reasonableness and presum[e] a basic level of
understanding and willingness to read with care” (quoting
United States v. Nat’l Fin. Servs., Inc., 98 F.3d 131, 136 (4th
Cir. 1996)) (internal quotation marks omitted)); Victor v.
Nebraska, 511 U.S. 1, 29 (1994) (“When reviewing a jury
instruction that defines ‘reasonable doubt,’ it is necessary to
consider the instruction as a whole and to give the words their




                              18
common and ordinary meaning.” (citing Estelle v. McGuire,
502 U.S. 62, 72 (1991))); Old Colony R.R. v. Comm’r, 284
U.S. 552, 560 (1932) (in interpreting statutory language, “the
plain, obvious and rational meaning of a statute is always to
be preferred to any curious, narrow, hidden sense”) (internal
quotation marks omitted); Karedes v. Ackerley Grp., Inc., 423
F.3d 107, 113-14 (2d Cir. 2005) (“[C]ourts must give the
disputed language a fair reading in the context of the
publication as a whole. Challenged statements are not to be
read in isolation, but must be perused as the average reader
would against the whole apparent scope and intent of the
writing” and that “[i]t is the meaning reasonably attributable
to the intended reader that controls.” (emphasis added and
removed)); Hatfill v. New York Times Co., 416 F.3d 320, 333
(4th Cir. 2005) (applying a “reasonable reader” standard
under Virginia law to a motion to dismiss a defamation
claim); Temme v. Bemis Co., 622 F.3d 730, 734 (7th Cir.
2010) (“A contract’s meaning is a matter of law; where there
is no contractual ambiguity, there is no need for extrinsic
evidence and no factual dispute that precludes summary
judgment. When interpreting contracts, terms are given their
‘ordinary and popular’ meaning … .” (internal citations
omitted)); United Paperworkers Int’l Union v. Misco, Inc.,
484 U.S. 29, 36-38 (1987) (arbitrator applying collective
bargaining agreement cannot ignore the plain language of the
contract).

       While most of these examples are from areas of law
that do not require, as does the law of false advertising, a
studied effort to understand what words mean from the
perspective of members of the consuming public, they do
show that there is and must be a point at which language is
used plainly enough that the question ceases to be “what does




                             19
this mean” and becomes instead “now that it is clear what this
means, what is the legal consequence.”

       The Mead Johnson decision demonstrates the
principle. In that case, the Seventh Circuit considered
whether the phrase “1st Choice of Doctors” could be
misleading. The court acknowledged that, in the context of a
false advertising case, “whether a claim is ‘false’ or
‘misleading’ is an issue of fact rather than law[,]” but it went
on to say that “[t]he sort of survey evidence Mead Johnson
gathered would not support a conclusion by a reasonable
person that Abbott’s claim was false or implied a falsehood.”
Mead Johnson, 209 F.3d at 1034 (reciting language added to
201 F.3d 883, 886-87). Recognizing that there is a baseline
meaning to some words that put them beyond any credible
claim of misunderstanding, the Seventh Circuit said, “never
before has survey research been used to determine the
meaning of words, or to set the standard to which objectively
verifiable claims must be held.” Mead Johnson, 201 F.3d at
886.

       Though the Mead Johnson opinion is not without its
detractors, see Rebecca Tushnet, Running the Gamut from A
to B: Federal Trademark and False Advertising Law, 159 U.
PA. L. REV. 1305, 1319 n.54 (2011) (hereafter “Tushnet”), we
agree with its general proposition that there are circumstances
under which the meaning of a factually accurate and facially
unambiguous statement is not open to attack through a
consumer survey. In other words, there may be cases, and
this is one, in which a court can properly say that no
reasonable person could be misled by the advertisement in




                              20
question. 12 Cf. Mead Johnson, 201 F.3d at 884 (survey
evidence is inappropriate when “it is all but impossible to call
the [advertising] claim [at issue] misleading”).

       Here, there is a factually accurate, unambiguous
statement of the geographic origin of Havana Club rum. The
label clearly states on the front that the liquor is “Puerto
Rican Rum” and, on the back, that it is “distilled and crafted
in Puerto Rico.” No reasonable consumer could be misled by
those statements, and the rest of the label does not put those
statements in doubt. 13 Pernod counters, however, that the

       12
         It has been said in recent, thoughtful, academic
commentary that, in a false advertising case, consumer survey
evidence should not be necessary to demonstrate consumer
confusion if that confusion would be clear, i.e., “when other
factors strongly favor a finding of likely confusion.” Tushnet
at 1339 (noting that “[w]hen a consumer is likely to receive a
false message, a court should be able to act even without a
survey in hand”). While the parallel is not perfect, it is
similarly appropriate to conclude that a consumer survey
should not be necessary or dispositive when it is plain from
an advertisement that rational confusion is not possible. A
logical conclusion, and one we reach here, is that if “[c]ourts
should be more willing to use common sense in finding
deceptiveness,” id. at 1343, they should likewise be prepared
to use common sense to conclude that an advertisement, when
taken as a whole, could not mislead a rational consumer.
       13
         We do not, nor need we, address the situation in
which the statement of the geographic origin in an
advertisement is contained in fine print. The portions of the
label that put the meaning of the advertisement beyond
reasonable dispute here are plainly legible. Moreover, the




                              21
words “Havana Club” are misleading as to the geographic
origin of the rum. If we were dealing with those words in
isolation, we might agree. There are administrative decisions
that do. 14 See Corporacion Habanos, 88 U.S.P.Q. 2d at
1791 (holding that the trademark “Havana Club” was
primarily geographically deceptively misdescriptive when
used on cigars not produced in Cuba); In re Bacardi, 48
U.S.P.Q. 2d at 1034-35 (affirming denial of registration to
Bacardi for use of the trademarks “Havana Select,” “Habana
Clasico,” “Old Havana,” “Havana Primo,” and “Havana
Clipper,” in connection with the sale of rum because the
marks were “primarily geographically deceptively
misdescriptive … because purchasers’ belief that the rum
products … originate in HAVANA, Cuba, is a mistaken
belief”).




phrase “Puerto Rican Rum” is particularly prominent on the
front of the bottle.
      14
         The challenged phrase is not a patently unambiguous
false statement of geographic origin like “Cuban Rum,”
“Havana Rum,” or “Rum of Havana.” Such was the case in
H.N. Heusner & Son v. Federal Trade Commission, 106 F.2d
596 (3d Cir. 1939), and El Moro Cigar Co. v. Federal Trade
Commission, 107 F.2d 429 (4th Cir. 1939). See also Heusner,
106 F.2d at 597-98 (affirming a decision by the Federal Trade
Commission to bar the use of the “totally false” brand name
“Havana Smokers” on cigars made in the United States with
United States tobacco); El Moro, 107 F.2d at 430-32
(affirming FTC order barring the use of “Havana Counts” for
falsely implying that cigars were of Cuban origin).




                             22
       But, as we have already emphasized, we are not
dealing with those words in isolation. This is not a trademark
case, and certainly not one addressing trademark registration,
no matter how much Pernod may wish it were. We are
obligated in this false advertising case under § 43(a)(1)(B) to
look at the words “Havana Club” in the context of the entire
accused advertisement, the label of the rum. 15 See, e.g., Am.
Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387, 392-
93 (8th Cir. 2004) (considering the phrase “America’s
Favorite Pasta” in context of the product’s whole packaging);
Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 946 (3d Cir. 1993)
(holding that it is appropriate to “analyze the message
conveyed in full context”); Forschner Grp., Inc. v. Arrow
Trading Co., 30 F.3d 348, 355 (holding that the whole
challenged advertisement must be considered); Sandoz
Pharm. Corp. v. Richardson-Vicks, Inc., 735 F. Supp. 597,
600 (D. Del. 1989), aff’d, 902 F.2d 222 (3d Cir. 1990)
(same); cf. Scotch Whiskey Ass’n v. Consol. Distilled Prods.,
Inc., 210 U.S.P.Q. 639, 642-45 (N.D. Ill. 1981) (considering
the phrase “LOCH-A-MOOR” in context of the whole bottle
of whiskey on which it was used). And viewed in that
context, any thought a consumer might have that the words
“Havana Club” indicate the geographic origin of the rum
must certainly be dispelled by the plain and explicit
statements of geographic origin on the label.




       15
         Pernod evidently concedes, as it must, that
considering the whole Bacardi rum bottle is appropriate here,
as the survey it conducted considered the whole Bacardi rum
bottle.




                              23
       Put another way, even if the words “Havana Club,”
taken in isolation, may be understood as indicating a
product’s geographic origin in Havana, Cuba, those same
words cannot mislead a reasonable consumer who is told in
no uncertain terms that “Havana Club” is a brand of rum
made in Puerto Rico. Cf. Am. Italian Pasta, 371 F.3d at 392-
93 (holding that the phrase “America’s Favorite Pasta” in
context of the product’s whole packaging was not an
actionable statement under § 43(a)(1)(B)); Mead Johnson,
209 F.3d at 1034 (adding language to 201 F.3d 883) (holding
a reasonable person would not interpret the phrase “1st Choice
of Doctors” to be false or imply a falsehood even in light of
survey evidence to the contrary); Forschner, 30 F.3d at 352,
354-56 (holding that the phrase “Swiss Army knife” when
used in conjunction with the statement “Made in China” to
describe a multifunction knife was not a false advertisement
under § 43(a)(1)(B) as a matter of law because it did not
“lend[] itself to being construed as a statement of geographic
origin” even though “roughly 40% of the relevant public
believe[d] [mistakenly] that a Swiss Army knife is
manufactured in Switzerland”); Hamilton-Brown Shoe Co. v.
Wolf Bros. & Co., 240 U.S. 251, 256-57 (1916) (holding that,
as a matter of law, a trademark used on shoes, “The American
Girl,” was not a “geographical or descriptive term”).

        Under these circumstances, a district court can
properly disregard survey evidence as immaterial, because, by
definition, § 43(a)(1) does not forbid language that reasonable
people would have to acknowledge is not false or
misleading. 16 Cf. 15 U.S.C. § 1125(a)(1) (Lanham Act

      16
        This is not an assertion that literally truthful claims
cannot be misleading and therefore cannot be actionable. See




                              24
Novartis, 290 F.3d at 586, 588-90; Rhone-Poulenc Rorer, 19
F.3d at 129-31; cf. Tushnet, at 1319-20 (citing Mead Johnson
for the proposition that “[f]alse advertising doctrine has …
occasionally flirted with the idea that truthful claims simply
can’t be misleading”). It is rather an acknowledgement that
false advertising claims occupy no special niche separating
them from the standard rule that, once something – for
example the meaning of text – is beyond reasonable dispute,
there is no longer a question of fact; there is only the question
of how the law applies to established fact. That conclusion is
consistent with our holdings that what matters in false
advertising cases is “the message that is conveyed to
consumers.” Rhone-Poulenc Rorer, 19 F.3d at 129. As we
have held, “[t]he probative value of a consumer survey is a
highly fact-specific determination and a court may place such
weight on survey evidence as it deems appropriate.” Id. at
134 (internal quotation marks omitted). A consumer survey
does not trump the district court’s role as arbiter of the
reliability and trustworthiness of expert and hearsay evidence
based upon statements of consumers reacting to an
advertisement. Judge Lasker, who coined the now widely-
accepted proposition that “the court’s reaction [to an
advertisement] is at best not determinative and at worst
irrelevant” in American Brands, Inc. v. R.J. Reynolds
Tobacco Co., 413 F.Supp. 1352, 1356-57 (S.D.N.Y. 1976),
observed that:
       [W]here, as here, the issue is whether true
       statements are misleading or deceptive despite
       their truthfulness, … [t]hough the court’s own
       reaction to the advertisements is not
       determinative, as finder of fact it is obliged to
       judge for itself whether the evidence of record




                               25
§ 43(a)(1), forbidding “any false designation of origin, false
or misleading description of fact, or false or misleading
representation of fact”). A contrary holding would not only
be out of keeping with the language of § 43(a)(1), it would
undermine the purpose of subsection (a)(1)(B) by subjecting
advertisers to a level of risk at odds with consumer
protection. 17 Cf. Mead Johnson, 201 F.3d at 886 (drawing a

        establishes that others are likely to be misled or
        confused. In doing so, the court must, of
        course, rely on its own experience and
        understanding of human nature in drawing
        reasonable inferences about the reactions of
        consumers to the challenged advertising.
        McNeilab, Inc. v. Am. Home Prods. Corp., 501 F.
Supp. 517, 525 (S.D.N.Y. 1980). We would add that, when
the meaning of words is beyond all reasonable dispute, there
is no issue of fact on the question of meaning.
      17
         The conclusion that advertising text can be clear
enough that it simply cannot be challenged as misleading is
also consistent with numerous cases holding that puffery can
be so obviously exaggerated that even credulous consumers
cannot be misled. See, e.g., Am. Italian Pasta, 371 F.3d at
389-90, 392-93 (holding that puffery, including “exaggerated
statements of bluster or boast upon which no reasonable
consumer would rely” are non-actionable statements under
§ 43(a)(1)(B)); United States Healthcare, 898 F.2d at 922
(“Mere puffing, advertising that is not deceptive for no one
would rely on its exaggerated claims, is not actionable under
§ 43(a).” (internal quotation marks and citations omitted));
Marriott Corp. v. Ramada Inc., 826 F. Supp. 726, 728
(S.D.N.Y. 1993) (dismissing false advertising claim because
ad was an obvious parody and one that no “reasonable person




                             26
distinction between misleading statements and statements
which may be subject to misunderstanding: “Section 43(a)(1)
forbids misleading as well as false claims, but interpreting
‘misleading’ to include factual propositions that are
susceptible to misunderstanding would make consumers as a
whole worse off by suppressing truthful statements that will
help many of them find superior products.”).

        We hasten to add that cases like the present one should
be rare, for one hopes that a case with truly plain language
will seldom seem worth the time and expense of contesting in
court. That this particular case, and related ones, have been
litigated so intensely is due, it seems, to the unusual political
baggage and branding potential involved. A word of caution
is nevertheless in order, so that our holding today is not taken
as license to lightly disregard survey evidence about
consumer reactions to challenged advertisements. Before a
defendant or a district judge decides that an advertisement
could not mislead a reasonable person, serious care must be
exercised to avoid the temptation of thinking, “my way of
seeing this is naturally the only reasonable way.” Thoughtful
reflection on potential ambiguities in an advertisement, which
can be revealed by surveys and will certainly be pointed out
by plaintiffs, will regularly make it the wisest course to
consider survey evidence. 18

would be misled – even absent the disclaimer – into
believing”); cf. Reilly v. Pinkus, 338 U.S. 269, 274 (1949)
(stating that puffery in advertisements goes too far if
“credulous persons” rely on it as a material representation of
fact).
       18
        Again, a district court’s decision to disregard survey
evidence is reviewable de novo, since it is founded on a legal




                               27
conclusion based on underlying facts, that is that no
reasonable consumer would be misled by an advertisement.
Here, that the bottle contains, as the District Court found, an
unambiguous, prominent statement of origin and another
statement which, when taken in isolation, could be seen as an
ambiguous reference to a geographic locale are points of fact.
Application of those facts to the ultimate question of whether
a reasonable consumer would be confused is a matter of law
and, thus, requires no consideration of survey evidence. That
rule is consistent with other areas of the law concerning
issues of mixed questions of law and fact when a district court
plays no unique role in determining the underlying facts. See,
e.g., Ornelas v. United States, 517 U.S. 690, 697 (1996)
(holding that the “ultimate determinations of reasonable
suspicion and probable cause” are subject to de novo review);
Salve Regina Coll. v. Russell, 499 U.S. 225, 231 (1991)
(“Independent appellate review of legal issues best serves the
dual goals of doctrinal coherence and economy of judicial
administration.”); Harte-Hanks Commc’ns, Inc. v.
Connaughton, 491 U.S. 657, 685-686 (1989) (holding that
“[t]he question whether the evidence in the record in a
defamation case is sufficient to support a finding of actual
malice is a question of law” which requires a “case-by-case
adjudication” even though it involves some factual inquiries);
cf. Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 401-02
(holding that deferential review is appropriate when “the
district court is better situated than the court of appeals to
marshal the pertinent facts and apply [] fact-dependent legal
standard[s]” which rely on such determinations by district
courts such as those “[i]ssues involving credibility”); see also
Microsoft Corp. v. i4i Ltd. P’ship, --- S.Ct. ----, 2011 WL
2224428, *12 (June 9, 2011) (Breyer, J., concurring)




                              28
        Finally, we emphasize once more that our conclusion
in this case says nothing of whether the words “Havana Club”
are eligible for registration as a trademark. The word
“Havana” carries a long legal history in trademark cases. See
Corporacion Habanos, 88 U.S.P.Q. 2d at 1791 (holding that
the trademark “Havana Club” was primarily geographically
deceptively misdescriptive when used on cigars not produced
in Cuba); In re Bacardi., 48 U.S.P.Q. 2d at 1035 (affirming
denial of registration to Bacardi for use of the trademarks
“Havana Select,” “Habana Clasico,” “Old Havana,” “Havana
Primo,” and “Havana Clipper,” in connection with the sale of
rum because the marks were “primarily geographically
deceptively misdescriptive … because purchasers’ belief that
the rum products … originate in HAVANA, Cuba, is a
mistaken belief”).        Agency decisions regarding the
registration of trademarks look at the words of the mark in
isolation and do not consider them in the context of a whole
advertisement in which they are used.                     See
In re Budge Mfg. Co., Inc., 857 F.2d 773, 776 (Fed. Cir.
1988) (holding with respect to a clarifying statement made in
advertising which the trademark applicant argued negated the
misleading nature of the mark, “This argument is beside the

(discussing how the “ultimate question of patent validity turns
on the correct answers to legal questions” which depends on
“how the law applies to facts as given”); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 250 (1986) (holding that the
question regarding disposition of a case by summary
judgment as a matter of law is whether “there are any genuine
factual issues that properly can be resolved only by a finder of
fact because they may reasonably be resolved in favor of
either party”).




                              29
issue. It is the word of the mark, not the statement of an
advertising circular which appellant seeks to register....”
(quoting In re Bonide Chemical Co., 46 F.2d 705, 708
(C.C.P.A. 1931))). Hence, such decisions do not address the
circumstances we have dealt with here, nor does our decision
turn on the issues determinative in a registration case. 19


       19
         Similarly, the other cases to which Pernod points are
inapposite because their facts are clearly distinguishable. See,
e.g., Scotch Whiskey Ass’n, 210 U.S.P.Q. at 641-45 (enjoining
the sale of “LOCH-A-MOOR” whiskey under the Lanham
Act because of the false implication that the origin of the
whisky was Scotland, even though the whiskey was “made
with 100 percent imported Scotch whiskies,” when the
whiskey’s label disclosed in “small print that Loch-A-Moor is
a domestic product”); Black Hills Jewelry Mfg. Co. v. Gold
Rush, Inc., 633 F.2d 746, 752-53 (8th Cir. 1980) (affirming
injunction under the Lanham Act to prevent the use of “Black
Hills” on jewelry not manufactured in South Dakota’s Black
Hills region); Scotch Whiskey Ass’n v. Barton Distilling Co.,
338 F. Supp. 595, 598-99 (N.D. Ill. 1971), aff’d and rev’d in
part, 489 F.2d 809 (7th Cir. 1973) (holding that a label using
the phrase “Blended Scotch Whiskey” to identify a whiskey
that included spirits not produced in Scotland was a false
designation of geographic origin under the Lanham Act);
Grand Rapids Furniture Co. v. FTC, 134 F.2d 332 (3d Cir.
1943) (affirming Federal Trade Commission (“FTC”) order
barring the use of “Grand Rapids” for falsely implying that
the furniture was made in Grand Rapids, Michigan). None of
those cases dealt, as we do here, with a challenge to a
statement in an advertisement that could be seen as
ambiguously referencing the geographic origin of a product if




                              30
III.   Conclusion

        Because the phrase “Havana Club” is not a misleading
statement of geographic origin under § 43(a)(1)(B) of the
Lanham Act when considered in the context of Bacardi’s rum
label, the District Court was not required to consider Pernod’s
survey evidence. We will therefore affirm the judgment of
the District Court. 20




read in isolation but could not be so seen if the phrase is taken
in the context of the whole advertisement.
       20
          Given our holding that the Bacardi label does not
violate the false advertising provision of the Lanham Act, we
do not address the District Court’s comments regarding
whether First Amendment rights allowed Bacardi to use the
phrase “Havana Club.” Furthermore, our holding would not,
in theory, foreclose any action against Bacardi under
§ 43(a)(1)(A) of the Lanham Act premised on Bacardi’s
infringement of a hypothetical unregistered trademark of
“Havana Club.” See Forschner, 30 F.3d at 352. Unlike the
plaintiffs in Forschner, however, Pernod does not sell a
product in the United States labeled with the challenged
phrase and brought its claim solely under § 43(a)(1)(B) of the
Lanham Act.




                               31