FN1 Although Papa John's did not object to the submission of the issue of Lanham Act liability to the jury via special
interrogatories, it did object to the district court's refusal to submit special interrogatories on the essential elements of
materiality and injury. Specifically, Papa John's submitted the following proposed jury interrogatories: (1) "Do you find that
any false or misleading description or representation of fact in Papa John's Slogan `Better Ingredients. Better Pizza.' are
material in that they are likely to influence the purchasing decisions of prospective purchasers of pizza?" (emphasis added);
and (2) "Do you find that any facts or misleading descriptions or representations of fact in Papa John's Slogan `Better Ingredients.
Better Pizza.' are likely to cause injury or damage to Pizza Hut in terms of declining sales or loss of good will?" The district
court, without issuing written reasons, denied Papa John's request for special jury interrogatories on these two elements of Pizza
Hut's prima facie case. (back)
FN2 Specifically, the jury answered "Yes" to each of the following interrogatories: (1) Did you find that Papa John's
"Better Ingredients. Better Pizza" slogan is false or misleading, and was a false or misleading description or representation of fact
which deceived or was likely to deceive a substantial number of the consumers to whom the slogan was directed; (2) Did you find that
Papa John's "sauce" claims are false or misleading, and was a false or misleading description or representation of fact which deceived
or was likely to deceive a substantial number of the consumers to whom the slogan was directed; and (3) Did you find that Papa John's
"dough" claims are false or misleading, and was a false or misleading description or representation of fact which deceived or
was likely to deceive a substantial number of the consumers to whom the slogan was directed? Although the jury was specifically asked
whether the advertisements were likely to deceive consumers, the interrogatories failed to ask whether the deception created by
these advertisements was material to the consumers to which the ads were directed--that is, whether consumers actually relied on the
misrepresentations in making purchasing decisions. (back)
FN3 Specifically, the jury answered "No" to the following interrogatories: (1) Did you find that Papa John's "taste test"
commercials are a false or misleading description or representation of fact which deceived or was likely to deceive a substantial
number of the consumers to whom the slogan was directed; and (2) Did you find that Papa John's "ingredients" claims are false or
misleading? The "ingredients" ads found not to be false or misleading did not include any of the "sauce" or "dough" ads. (back)
FN4 Pizza Hut has not sought to appeal the jury's verdict regarding its advertising.(back)
FN5 When construing the allegedly false or misleading statement to determine if it is actionable under section 43(a), the
statement must be viewed in the light of the overall context in which it appears. See Avis, 782 F.2d at 385; Southland, 108 F.3d
at 1139. "Fundamental to any task of interpretation is the principle that text must yield to context." Avis, 782 F.2d at
385. Context will often help to determine whether the statement at issue is so overblown and exaggerated that no reasonable consumer
would likely rely upon it. As the court in Federal Express Corporation v. United States Postal Services, 40 F.Supp. 2d 943
(W.D. Tenn. 1999), noted:
On its face, [the statement at issue] does not seem to be the type of vague, general exaggeration which no
reasonable person would rely upon in making a purchasing decision. Nevertheless, the determination of whether an
advertising statement should be deemed puffery is driven by the context in which the statement is made. Where the
context of an advertising statement may lend greater specificity to an otherwise vague representation, the
court should not succumb to the temptation to hastily rule a phrase to be unactionable under the Lanham Act.
Id. at 956. (back)
FN6 In the same vein, the Second Circuit has observed that "statements of opinion are generally not the basis for Lanham Act
liability." Groden v. Random House, 61 F.3d 1045, 1051 (2d Cir. 1995). When a statement is "obviously a statement of opinion," it
cannot "reasonably be seen as stating or implying provable facts." Id. "The Lanham Act does not prohibit false statements generally.
It prohibits only false or misleading description or false or misleading representations of fact made about one's own or
another's goods or services." Id. at 1052. (back)
FN& McCarty on Trademarks goes on to state: "[V]ague advertising claims that one's product is `better' than that of competitors' can
be dismissed as mere puffing that is not actionable as false advertising." 4 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 27:38 (4th ed. 1997). (back)
FN8 It should be noted that Pizza Hut uses the slogan "The Best Pizza Under One Roof." Similarly, other nationwide pizza chains
employ slogans touting their pizza as the "best": (1) Domino's Pizza uses the slogan "Nobody Delivers Better."; (2) Danato's uses
the slogan "Best Pizza on the Block."; (3) Mr. Gatti's uses the slogan "Best Pizza in Town: Honest!; and (4) Pizza Inn uses the
slogans "Best Pizza Ever." and "The Best Tasting Pizza." (back)
FN9 In its memorandum opinion addressing Papa John's post-verdict Rule 50 motion, the court stated:
Although Papa John's started in May 1995 with a slogan which was essentially ambiguous and self-laudatory,
consistent with the legal definition of non-actionable puffery, Papa John's deliberately and intentionally
exploited its slogan as a centerpiece of its subsequent advertising campaign after May 1997 which falsely
portrayed Papa Johns's tomato sauce and pizza dough as being superior to the sauce and dough components used in
Pizza Hut's pizza products. When the "Better Ingredients. Better Pizza." slogan is considered in
light of the entirety of Papa John's post-May 1997 advertising which violated the provisions of the Lanham
Act and in the context in which it was juxtaposed with the false and misleading statements contained in Papa
John's print and broadcast media advertising, the slogan itself became tainted to the extent that its continued use should be enjoined.
(back)
FN10 The testimony of Pizza Hut's expert, Dr. Faubion, established that although consumers stated a preference for fresh dough rather
than frozen dough, when taste tests were conducted, respondents were unable to distinguish between pizza made on fresh as opposed
to frozen dough. (back)
FN11 The judgment of the district court enjoining the future use by Papa John's of the slogan "Better Ingredients. Better Pizza."
did not simply bar Papa John's use of the slogan in future ads comparing its sauce and dough with that of its competitors.
Rather, the injunction permanently enjoined any future use of the slogan "in association with the sale, promotion and/or
identification of pizza products sold under the Papa John's name." Further, the injunction precluded Papa John's from using the
"adjective `better' to modify the terms `ingredients' and/or `pizza.'" While it is clear that the jury did not make any finding
to support such a broad injunction, and Pizza Hut offered no survey evidence indicating how potential consumers viewed the slogan, the
district court concluded that the evidence established that Papa John's deliberately and intentionally exploited its
slogan as a centerpiece of its subsequent advertising campaign after May 1997 which falsely portrayed Papa
John's tomato sauce and pizza dough as being superior to the sauce and dough components used in Pizza Hut's
products. . . . [Thus,] the slogan itself became tainted to the extent that its continued use should be enjoined.
Our review of the record convinces us that there is simply no evidence to support the district court's conclusion that the slogan
was irreparably tainted as a result of its use in the misleading comparison sauce and dough ads. At issue in this case were some
249 print ads and 29 television commercials. After a thorough review of the record, we liberally construe eight print ads to be
sauce ads, six print ads to be dough ads, and six print ads to be both sauce and dough ads. Further, we liberally construe nine
television commercials to be sauce ads and two television commercials to be dough ads. Consequently, out of a total of 278
print and television ads, the slogan appeared in only 31 ads that could be liberally construed to be misleading sauce or dough ads.
We find simply no evidence, survey or otherwise, to support the district court's conclusion that the advertisements that the
jury found misleading--ads that constituted only a small fraction of Papa John's use of the slogan--somehow had become encoded in the
minds of consumers such that the mention of the slogan reflectively brought to mind the misleading statements conveyed by the sauce and
dough ads. Thus, based on the record before us, Pizza Hut has failed to offer sufficient evidence to support the district court's
conclusion that the slogan had become forever "tainted" by its use as the tag line in the handful of misleading comparison ads.
(back)
FN12 Since Pizza Hut sought only equitable relief and no monetary damages, it was required to offer evidence sufficient to establish
that the claims made by Papa John's had the "tendency to deceive consumers," rather than evidence indicating that the claims made by
Papa John's actually deceived consumers. American Council, 185 F.3d at 606; see also Balance Dynamics, 204 F.3d at 690
(emphasis added). (back)
FN13 In Johnson & Johnson v. Smithkline Beecham Corp., 960 F.2d 294 (2d Cir. 1992), the Second Circuit discussed this requirement
in some detail:
Where, as here, a plaintiff's theory of recovery is premised upon a claim of implied falsehood, a plaintiff
must demonstrate, by extrinsic evidence, that the challenged commercials tend to mislead or confuse
consumers. It is not for the judge to determine, based solely upon his or her own intuitive reaction whether the
advertisement is deceptive. Rather, as we have reiterated in the past, `the question in such cases is--
what does the person to whom the advertisement is addressed find to be the message?' That is, what does
the public perceive the message to be.
The answer to this question is pivotal because, where the advertisement is literally true, it is often
the only measure by which a court can determine whether a commercial's net communicative effect is misleading.
Thus, the success of a plaintiff's implied falsity claim usually turns on the persuasiveness of a consumer survey.
Id. at 287-98.(back)
FN14 Pizza Hut has not sought review on appeal of the district court's ruling that the results of the box survey were
inadmissible. (back)
FN15 It is unnecessary to reach the issue of whether the district court committed reversible error when it refused to submit Papa
John's proposed special jury interrogatories on the essential Lanham Act elements of materiality and injury. See supra note 2.
However, given our clear precedent that once a case is submitted to the jury via special interrogatories, "the judge must submit all
material issues raised by the pleadings and the evidence," the correctness of the district court's refusal to submit instructions
on these two essential issues is doubtful. Simien v. S.S. Kresge Co., 566 F.2d 551, (5th Cir. 1978); see also Huddleston v. Herman
& MacLean, 640 F.2d 534 (5th Cir. 1981), aff'd in part and rev'd in part on other grounds, 459 U.S. 375 (1983); Nance v. Gulf Oil
Corp., 817 F.2d 1176, 1180-81 (5th Cir. 1987); 9A Wright and Miller, Federal Practice and Procedure § 2506 173-79 (1995)(stating
that "all material factual issues should be covered by the questions submitted to enable a verdict to be rendered on the
entire dispute on the basis of the jury's response"). (back)