Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc.
653 F.3d 241
| 3rd Cir. | 2011Background
- Pernod sues Bacardi under Lanham Act § 43(a)(1)(B) alleging Bacardi's Havana Club label falsely designates geographic origin.
- Havana Club brand has Cuban origin history; embargo and OFAC controls affected Cuban trademark transfers and ownership.
- Bacardi began selling Havana Club rum in Puerto Rico/US with Puerto Rican origin statements on label while origin history ties to Cuba and Arechabala family recipe.
- District Court found no false statement since label touted Puerto Rico origin and Cuban heritage was not misrepresented in context.
- Pernod introduced consumer survey evidence showing some consumers believed Cuba origin; district court rejected survey as irrelevant to language not being false or misleading.
- Third Circuit affirmed, holding the label, taken as a whole, could not mislead reasonable consumers about geographic origin; survey evidence not required.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Havana Club label constitutes false advertising about origin | Pernod argues label implies Cuban origin | Bacardi contends label truthfully discloses Puerto Rico origin in context | No false advertising; label not misleading |
| Role of consumer surveys in determining meaning of unambiguous statements | Survey required for meaning of origin claim | Meaning can be ascertained from the label itself; surveys not always needed | Surveys not required; language taken in context governs |
| What 'geographic origin' means in § 43(a)(1)(B) when analyzing a whole advertisement | Geographic origin could include heritage/history | Origin relates to place of manufacture; not broad heritage | Geographic origin limited to context; still not misleading here |
Key Cases Cited
- Mead Johnson & Co. v. Abbott Labs., 201 F.3d 883 (7th Cir. 2000) (survey evidence not used to set meaning of unambiguous claims)
- Mead Johnson v. Abbott Labs. (amended citation cited within opinion), 209 F.3d 883 (7th Cir. 2000) (Mead Johnson principle on survey irrelevance for clear terms)
- Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578 (3d Cir. 2002) (unambiguous statements may rely on literal falsity or deception)
- Rhone-Poulenc Rorer, Inc. v. Rhone-Poulenc, 19 F.3d 129 (3d Cir. 1994) (necessity of showing actual deception or likely deception via survey)
- Forschner Grp., Inc. v. Arrow Trading Co., 30 F.3d 348 (3d Cir. 1994) (contextual analysis of entire advertisement for meaning)
- Am. Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387 (8th Cir. 2004) (analyzing overall packaging to determine deception and not just claims)