author: KEENAN, District Judge:

text:
    The UPJOHN COMPANY, Plaintiff, v. AMERICAN HOME PRODUCTS CORPORATION, and Young & Rubicam, Inc., Defendants.
    No. 84 Civ. 4711 (JFK).
    United States District Court, S.D. New York.
    Nov. 7, 1984.

      Helene D. Jaffe, Robert F. Brodegaard, of Weil, Gotshal & Manges, New York City, for plaintiff The Upjohn Co.
    Steven P. Lockman, Lawrence Stein, of Arnold & Porter, Washington, D.C., Jack C. Auspitz, of Parker, Auspitz, Neeseman & Delehanty, P.C., New York City, for defendant American Home Products Corp.
    Jay E. Gerber, of Davis, Markel, Dwyer & Edwards, New York City, for defendant Young & Rubicam.
   OPINION

KEENAN, District Judge:

FACTS

Plaintiff, The Upjohn Company (“Upjohn”), moves for a preliminary injunction precluding defendants, American Home Products Corporation (“AHP”) and Young & Rubicam, Inc. (“Y & R”), from the continued dissemination of advertising and promotional materials which Upjohn contends make false and misleading claims about AHP’s new over-the-counter (“OTC”) drug, Advil, the main ingredient of which is ibuprofen. AHP manufactures and markets Advil. Y & R, an advertising agency, prepared the television commercials and print advertisements for Advil that are the subject of this controversy. The action is brought under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

The background facts are not in dispute. On May 18, 1984, the Food and Drug Administration (“FDA”) approved New Drug Applications for the over-the-counter (“OTC”) sale of ibuprofen in 200 mg. tablet form under the trademark “Advil” for AHP and “Nuprin” for Upjohn. These products are approved for OTC sale for “temporary relief of minor aches and pains associated with the common cold, headache, toothache, muscular aches, backaches, for the minor pain of arthritis, for the pain of menstrual cramps and for the reduction of fever.” The approved dosages for the products allow up to 400 mg. every four to six hours as necessary. The maximum daily dosage for OTC use is 1200-mg. per day, with a ten-day maximum treatment.

Prior to the OTC approval, ibuprofen had been approved by the FDA only on a prescription basis. Upjohn manufactures and sells this prescription product under the trademark Motrin. Motrin is approved for the treatment of rheumatoid arthritis and osteoarthritis, with varying dosages of up to 2400 mg. per day. Motrin is also approved for the treatment of mild to moderate pain at dosages of 400 mg. every four to six hours as necessary, and for the treatment of primary dysmenorrhea at doses of 400 mg. every four hours as necessary.

Upjohn commenced the action on July 3, 1984 by the service of summons and complaint on the defendants. 'On July 10, Upjohn moved for a temporary restraining order by order to show cause. In response to this motion, AHP acknowledged that the color of its Advil brand ibuprofen tablet depicted in the television commercials aired before July 10, 1984, and in the print ads and promotional material then being run and distributed, could cause confusion with the Motrin tablet. AHP informed the Court that steps were being taken to eliminate this and other potential sources of customer confusion.

Stanley Barshay, President of the Whitehall Laboratories Division (“Whitehall”) of AHP, filed an affidavit dated July 10, 1984 stating at paragraph 17:

At this time, Whitehall has taken the following additional steps to clarify all print and television advertisements:
(a) A new color modified ADVIL tablet physical mock-up for photographic purposes has just been completed on an expedited basis and is being used to re-shoot a new television commercial today, which we believe will more clearly reflect the brown color of the ADVIL tablet____ The audio and visual textual portions of the commercial have been modified ...
(b) The revised television commercial contains the following audio and visual textual changes:
(i) The reference to ADVIL will visually indicate in a super (in words) that ADVIL is “from Whitehall”; and
(ii) The language “ADVIL contains ibuprofen the same medicine as the prescription drug MOTRIN now in nonprescription strength” has been modified to “ADVIL contains a nonprescription strength of ibuprofen, the medicine found in the prescription brand, MOTRIN”;
(iii) The first reference to MOTRIN will visually indicate in a super (in words) “MOTRIN, the product of another company.”
(c) ... This new commercial will replace our first revised ADVIL television commercial ... The new commercial will be aired about Sunday, July 15, or as soon thereafter as the networks can telecast the new commercial.
(d) The revised textual portion of the magazine advertisement ... will be used in conjunction with further revision of the depiction of the color of the ADVIL tablet and will leave no doubt that the tablet color is in the brown family. This change is expected to be completed by about July 31 ...

The Barshay affidavit continued in paragraph 18 as follows:

I have been advised by Young & Rubicana (“Y & R”) of the following activities with respect to the ADVIL magazine print advertising:
(a) Hereinafter any weekly magazine will contain both the revised print copy ... and the modified ADVIL tablet col- or...
(b) No revision of ADVIL print advertising could be made in time to incorporate into any monthly magazine (i.e., a magazine that appears no more frequently than every three weeks) bearing an August 1984 cover date because the magazines will appear on the newsstand by approximately mid-July. No changes were possible because the magazine in which such advertising is scheduled to appear would not accept any changes at this late date.
(c) As reflected in my June 25, 1984 letter to Upjohn ..., we took prompt steps to correct the color appearance of the ADVIL tablet in magazine advertisements. On July 2, the day before this lawsuit was commenced, Y & R contacted all magazines which will have an ADVIL print advertisement in their September issue, to determine if there was still time to effect a color change in the appearance of the ADVIL tablet. The revised ADVIL tablet color artwork was sent out on the same day. I am advised that all but one of these monthly magazines will include the revised ADVIL tablet in their September issue. The one magazine in which we were not able to effect the foregoing change the portion of the September issue including the ADVIL advertisement was already in process of being printed.
(d) The revised text copy in the ADVIL advertising will be sent out no later than July 12, 1984, to all monthly magazines that are scheduled to carry such advertising in the September issue. I am advised that three of the monthly magazines having a September cover date will be unable to include the revised print copy into that issue.
(e) All October monthly magazines will contain both the revised print copy which is set forth in paragraph 17(d) as well as the corrected ADVIL tablet artwork ... (f) In addition to the activities as outlined in the preceding paragraphs (a) through (e), we will further color correct the appearance of the ADVIL tablet art work in other print advertising by promptly reshooting the scene depicting the three tablets. This is being done to minimize the effect of color variability from magazine to magazine.

After viewing the revised advertising materials, Upjohn withdrew its application for a Temporary Restraining Order. AHP seeks, however, to enjoin the claims made in the original Advil advertisements. It also urges that preliminary injunctive relief be granted against the revised television and print ads now being run by defendants on behalf of Advil.

These substituted ads are different from the original ads in several respects:

(1) The newer television commercial shows the Advil pill as brown, rather than orange.
(2) The newer television commercial has an added “super” that Advil is “from Whitehall” and that “MOTRIN,” (is) the product of another company.
(3) The substituted print ads change the color of the pill from orange to brown and indicate that Advil is “ADVANCED MEDICINE FOR PAIN from Whitehall Laboratories.”
(4) A paragraph in the first print ad read as follows:
ADVIL isn’t Tylenol or any other non-aspirin product and it isn’t aspirin. Advil contains ibuprofen, the same medicine that’s in the prescription drug Motrin. But now it’s available in nonprescription strength. It’s been proven effective in relieving many types of pain. It’s so effective that doctors have already prescribed it over 130 million times.

This paragraph has been changed to read:

ADVIL isn’t Tylenol and it isn’t aspirin. Advil contains ibuprofen — the medicine in. the prescription brand Motrin, the product of another company. Now ibuprofen is available in nonprescription strength in Advil. Ibuprofen has been proven so effective in relieving many types of pain that doctors have already prescribed it over 130 million times.
(5) The’ promotional material for the trade, pharmacies and pharmaceutical houses, has been changed so that the pill is no longer shown as orange but now appears brown in the promotional brochures.

The text referred to in the first portion of (4) above ending with the sentence, “It’s so effective that doctors have already prescribed it over 130 million times,” nevertheless appeared in the July 29, 1984 editions of the New York Times and the Kalamazoo (Michigan) Gazette. According to counsel for AHP, these ads were closed by the time that the affidavit was filed. Counsel for AHP admitted that the court should have been told about them in the July 10, 1984 submissions and apologized for the oversight.

The original promotional material which was distributed to the trade is still with pharmacies and pharmaceutical houses (Plaintiff’s Exhibits 30 and 31 with the orange pills) and is not specifically mentioned in the Barshay affidavit as material that will be withdrawn. In this regard AHP offers new promotional material (Defense Exhibits “YY” and “TIL”) which show the pill as brown and one of which contains no reference to Motrin whatsoever. Moreover, AHP represents that they “will not use [the earlier promotional materials] further in any way. We will destroy them.”

As proof of its claims Upjohn commissioned two market surveys. These surveys were conducted by the Custom Studies Division of Simmons Market Research Bureau, a market research organization, under the supervision of Valentine Appel, Ph.D Industrial Psychology, who is President of the Custom Studies Division. These surveys were conducted at shopping malls throughout the country. The first survey conducted was with regard to the original print ad. A second survey was conducted with regard to the revised television ad.

Upjohn seeks a preliminary injunction enjoining defendants, their agents, employees, attorneys and those acting on their behalf or on the behalf of their divisions, subsidiaries or affiliates or in concert with any of them, from printing, publishing, placing, distributing, or taking any other action to disseminate print advertisements, television commercials, point of sale materials, or any promotional materials or advertisements, in any medium and all media, that mention MOTRIN Tablets and/or claim directly or by implication that:
(1) Advil is the same or similar in color to a 400 mg. MOTRIN Tablet;
(2) Advil is manufactured by Upjohn;
(3) Advil is equivalent to or substitutable for MOTRIN Tablets; or
(4) The active ingredient in Advil is MOTRIN Tablets,

and from orally representing to doctors, pharmacists, other health care professionals and direct or indirect purchasers of Advil any of the foregoing messages.

THE EARLY TELEVISION, PRINT AND PROMOTIONAL MATERIAL

Even though the affidavits of Stanley Barshay and statements by AHP’s counsel indicate that none of the first series of advertisements or promotional materials will be further disseminated, the Court feels constrained to enjoin the use of any material in future advertisements or promotional materials from Upjohn which depict the Advil pill as orange or which contain the language contained in the paragraph ending with the sentence, “It’s so effective that doctors have already prescribed it over 130 million times,” and later seen in the New York Times and Kalamazoo Gazette on July 29. Defendants argue that an injunction in this area is barred as moot because AHP has changed the original television commercial and prepared new print ads and promotional materials. See Consumers Union of the United States v. General Signal Corp., 724 F.2d 1044, 1052 n. 11 (2d Cir.1983).

“Before a suit for injunctive relief can be dismissed as moot, the offending conduct must have ceased and the court must find that there is no reasonable ex-peetation that it will resume.” McNeilab, Inc. v. American Home Products Corporation, 501 F.Supp. 517, 523 (S.D.N.Y. 1980); accord Allee v. Medrano, 416 U.S. 802, 810-11, 94 S.Ct. 2191, 2197-98, 40 L.Ed.2d 566 (1974); United States v. Concentrated Phosphate Export Association, 393 U.S. 199, 203, 89 S.Ct. 361, 364, 21 L.Ed.2d 344 (1968). The affidavits submitted by AHP are not adequate assurance that AHP will not resume the “offending conduct.” The July 29 ads ran after the first Barshay affidavit was submitted stating that those ads had been changed. The affidavits do not mention the original promotional materials depicting the tablet as orange. These materials are still in the hands of likely distributors of Advil. AHP has made no attempt to retrieve these materials or to instruct the trade to disregard them. Furthermore, it is doubtful that the affidavits create an enforceable commitment. See McNeilab, Inc., 501 F.Supp. at 523. Even if they did create such a commitment, the affidavits are so narrowly drawn that AHP would be free to use advertising and promotional materials not specifically covered by the affidavits but containing the same offending characteristics. See id.

Standard for Injunctive Relief

A party is entitled to preliminary injunctive relief under the Lanham Act if it can show (a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief. Bell & Howell: Mamiya Co. v. Masel Supply Co., 719 F.2d 42, 45 (2d Cir.1983); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir.1979); American Home Products Corporation v. Johnson Chemical Co., 589 F.2d 103, 106 (2d Cir.1978). Applying this standard, the Court finds that the advertisements and promotional materials that depict the tablet as orange and contain the language in the first paragraph of the original print ad that ends with the sentence, “It’s so effective that doctors have already prescribed it over 130 million times,” are enjoinable.

Irreparable Injury

If Upjohn can demonstrate probable success on the merits of its claim that the advertising and promotional materials violate its rights under the Lanham Act, irreparable harm will result from the continued dissemination of this advertising. America^ Home Products Corporation, 589 F.2cf at 106. The consequences of Lanham Act violations “are by their nature not fully compensable by money damages.” National Lampoon, Inc. v. American Broadcasting Companies, 376 F.Supp. 733, 750 (S.D.N.Y.), aff'd per curiam, 497 F.2d 1343 (2d Cir.1974). The likelihood of customer confusion, impairment of plaintiff’s reputation and good will and probable diversion of customers, combined with the difficulty of proving actual monetary damages arising from Lanham Act injuries, justifies a presumption of irreparable injury once the violation has been established. Friendly Publications v. Handbook Services, 79 Civ. 2758 (Slip Op. October 24, 1979); see Coca-Cola Company v. Tropicana Products, Inc., 690 F.2d 312, 317 (2d Cir.1982) (diversion of customers); Selchow & Righter Company v. McGraw-Hill Book Company, 580 F.2d 25, 27-28 (2d Cir.1978) (likelihood of customer confusion); Gilliam v. American Broadcasting Companies, 538 F.2d 14, 19 (2d Cir.1976) (loss of good will); Estee Lauder, Inc. v. Watsky, 323 F.Supp. 1064, 1067 (S.D.N.Y.1970) (impairment of reputation).

Probable Success on the Merits

As there “is no question that irreparable harm would result from a failure to enjoin if plaintiff ultimately succeeds on the merits,” American Home Products, 589 F.2d at 106, the Court must determine whether plaintiff has shown probable success on the merits of its claim that the advertising and promotional materials violate its rights under the Lanham Act. The Lanham Act prohibits the use of “a false designation of origin, or any false description or representation, including words or symbols tending falsely to describe or represent the same,” in connection with the sale of any goods or services. 15 U.S.C. § 1125(a).

In considering a claim for relief under the Lanham Act, a court must first determine whether the advertising is false on its face. R.J. Reynolds Tobacco Company v. Loew’s Theatres, Inc., 511 F.Supp. 867, 874 (S.D.N.Y.1980). The color of the tablet depicted in the original advertising is false. The Advil tablet is very clearly brown. The tablet depicted in the ads, however, is orange. False visual depictions, as well as false statements, are covered by the Lanham Act. See Tropicana Products, Inc., 690 F.2d at 318. Defendants’ depiction of the tablet as orange, when it is in fact brown, is thus enjoinable as falsely describing the tablet.

The statements contained in the original advertising that plaintiff challenges are literally true. As the Lanham Act encompasses more than literal falsehoods, American Home Products Corp. v. Johnson & Johnson, 577 F.2d 160, 165 (2d Cir.1978), the Court’s inquiry does not end here. The Act also proscribes advertising that has a tendency to mislead, confuse or deceive. American Brands, Inc. v. R.J. Reynolds Tobacco Company, 413 F.Supp. 1352,1357 (S.D.N.Y.1976). To demonstrate that it is entitled to an injunction against statements that are literally true, plaintiff must demonstrate the “likelihood that an appreciable number of ordinary prudent purchasers are likely to be misled” by the statements. Mushroom Makers, Incorporated v. R.G. Barry Corporation, 580 F.2d 44, 47 (2d Cir.1978), cert, denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979); accord McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979). The public’s reaction to the allegedly misleading advertising is the starting point of this analysis. American Brands, Inc., 413 F.Supp. at 1356-57 (citing 1R Callman, Unfair Competition, Trademarks and Monopolies § 19.2(a)(1) at 656 (3d ed. 1967). Plaintiff, therefore, must submit evidence in the form of market research and consumer surveys that demonstrates how the advertising is perceived by consumers and whether it tends to confuse or mislead. See McNeilab, Inc., 501 F.Supp. at 525.

As proof of its claim that statements made and the visual depiction of the tablet in the original television and print ads and promotional material tend to confuse or mislead consumers, Upjohn relies on a survey that it commissioned to test consumer reactions to the print ad. In connection with this survey, Dr. Valentine Appel prepared a questionnaire that was administered to a sample of 107 male and 107 female consumers age 18 or older found in five shopping malls, two in the New York area and one in each of Los Angeles, Chicago and Philadelphia.

The respondents were shown a tear sheet of the print ad, and, while examining it, were asked to describe the main point of the ad. They were then asked to read the paragraph ending with the sentence, “It’s so effective that ____” The ad was removed and the respondents were asked to give the name of the medication that doctors had prescribed. The respondents were then reminded that the ad says that “Advil contains ibuprofen, the same medicine that’s in the prescription drug Motrin. But now it’s available in nonprescription strength.” The respondents were then asked whether Advil is made by the same manufacturer that produces Motrin or whether it is made by a different manufacturer. They were also reminded that the advertisement stated that “Advil contains ibuprofen, the same medicine that’s in the prescription drug Motrin.” Following this reminder, they were asked whether the statement meant that Advil could be substituted for Motrin.

Finally, the ad was shown again to the respondents, who were then shown a Motrin tablet and an Advil tablet pasted, brand name down, to a white cardboard square. The respondent was asked which of the two tablets was portrayed in the picture in the advertisement and then to explain what it was about the tablet chosen that made it look like the one in the ad.

Thirty three per cent of the respondents named Advil as the pain medication that doctors have prescribed over 130 million times. When asked to choose which of the two pills was depicted in the advertisement, seventy six per cent of the respondents chose the Motrin tablet. Seventy one per cent of these respondents stated that their choice was influenced by the color of the tablets. These results suggest that “a not insubstantial number of consumers receive a false [or] misleading impression from” the color of the tablet and the statements made in the ad. See R.J. Reynolds Tobacco Co., 511 F.Supp. at 876 (quoting McNeilab, Inc., 501 F.Supp. at 528).

Defendants argue that the survey suffers from a number of flaws which render the results invalid. First, they assert that the survey does not measure confusion among the relevant group — serious arthritis sufferers. A survey must reflect the beliefs of the purchasers that the plaintiff asserts will be confused. See American Basketball Association v. AMF Voit, Inc., 358 F.Supp. 981, 986 (S.D.N.Y.), aff'd, 487 F.2d 1393 (2d Cir.1973), cert. denied, 416 U.S. 986, 94 S.Ct. 2389, 40 L.Ed.2d 763 (1974). The Court does not find, however, that Upjohn’s allegations are limited to the possibility of confusion among consumers with serious arthritis. Upjohn’s allegations apply to the possibility of confusion among all consumers. The consequences of confusion may be more serious for consumers with serious arthritis, but this does not mean that Upjohn is not damaged by confusion among consumers in general.

The survey does not report every respondent’s answer to each question. The questions concerning the manufacturer of Advil and whether Advil could be substituted for Motrin suggest the answer that the survey was looking for. The answers to these questions, therefore, cannot be relied upon by the Court as demonstrating customer confusion. See Mennen Company v. Gillette Company, 565 F.Supp. 648, 652-53 (S.D.N.Y.1983). The Court finds, however, that the answers to the questions that were not flawed, particularly the question concerning the medication that doctors had prescribed and the question in which the respondents were asked to choose the tablet portrayed in the ad, demonstrate that a “not insubstantial” number of consumers were deceived or misled. See Coca-Cola Co., 690 F.2d at 317.

Furthermore, although the Court’s own reaction to the advertisement is not determinative, it is obliged to judge for itself whether the evidence of record establishes that consumers are likely to be misled or confused. McNeilab, Inc., 501 F.Supp. at 525. As the Court finds that the use of pronouns and antecedents in the paragraph ending with the sentence, “It’s so effective ...” is so confusing as to be almost “grammatically untrue,” it credits the reliable portions of the survey that demonstrate customer confusion.

The Court also notes, although it is not necessary for the purposes of this motion, that there is a public interest in avoiding confusion between Advil and Motrin above and beyond what is presented in the usual infringement case. See Philip Morris Incorporated v. Loew’s Theatres, Inc., 511 F.Supp. 855, 858 (S.D.N.Y.1980); Syntex Laboratories, Inc. v. Norwich Pharmaceutical Company, 315 F.Supp. 45, 53 (S.D.N. Y.1970), aff'd, 437 F.2d 566 (2d Cir.1971). Dr. Alexander M. Schmidt, former Commissioner of the Food and Drug Administration, testified before this Court that the indications for which Motrin and Advil are .approved by the FDA are different. The testimony of Dr. Francis McMahon, clinical professor of pharmacology at Tulane University Medical School, indicated that there is some overlap in the indications for which the two drugs are approved and that some people who take Motrin by prescription can properly take Advil if they take it for 10 days or less. On the basis of this testimony, the Court concludes that, although there may be some overlap in the indications for which these two drugs are approved, confusion as to their substitutability is not in the public interest.

The Court finds that plaintiff has demonstrated irreparable injury and likelihood of success on the merits of its claim that the orange color of the tablet and the challenged claims concerning Advil violate its rights under the Lanham Act. Defendants, therefore, are preliminarily enjoined from depicting the tablet as orange and using the language contained in the paragraph of the print ad ending with the sentence, “It’s so effective that doctors have already prescribed it over 130 million times.”

THE REVISED TELEVISION ADVERTISEMENT

Upjohn also commissioned a market survey with regard to the revised television ad. Another questionnaire was devised by Dr. Appel. This questionnaire was administered to a sample of 121 Motrin users and 217 users of other analgesics, age 18 or older found in 10 shopping malls throughout the country. These malls were located in Atlanta, Baltimore, Boston, Chicago, Detroit, Houston, Los Angeles, Nassau-Suffolk (New York), Philadelphia and Washington, D.C.

After they were screened for eligibility, the respondents were shown the revised Advil television commercial. They then were asked to relate everything they had seen and heard in the commercial. They were also asked to name the ingredient which, according to the commercial, was found in Advil.

The respondents were asked to name all the drugs they could recall being mentioned in the commercial they had just viewed. If a respondent did not identify aspirin, Tylenol or Motrin in response to this question, he was asked if he recalled the commercial saying anything about whichever of the three drugs mentioned in the ad — aspirin, Tylenol or Motrin — the respondent had not identified. If the respondent then remembered any of the three drugs, he was asked to recollect what the commercial said about each of them and whether, based on the commercial, he agreed that people taking each of these drugs could now take Advil instead. Each respondent was then asked whether the company that makes Advil was the same company that produces Motrin or whether Advil was made by another company or whether the respondent did not know. The order of this question was varied.

The commercial was shown again to the respondents, who were asked to pay special attention to the pictures of the Advil tablet. The respondents were then shown a Motrin tablet and an Advil tablet pasted to a white cardboard square, brand names down, and asked which tablet was portrayed in' the commercial.

When asked what the ingredient was in Advil, twenty nine per cent of the Motrin users and eighteen per cent of the non-Motrin users responded “Motrin.” When reminded of the three drugs mentioned in the commercial and asked whether they agreed or disagreed that someone taking each one could now take Advil instead, seventy four per cent of Motrin users that recalled that Motrin was mentioned in the commercial agreed; sixty seven per cent of such non-Motrin users agreed. Of the Motrin users taking significant daily dosages of Motrin that recalled Motrin was mentioned in the commercial, seventy nine per cent agreed that people taking Motrin can now take Advil instead. When asked to identify which tablet was the one portrayed in the revised commercial, thirty per cent of the Motrin users and thirty nine per cent of the non-Motrin users selected the Motrin tablet. The most frequently given reason for selecting the Motrin tablet was the color; the second was size.

Only six per cent.of the Motrin users and four per cent of the non-Motrin users recalled either or both of the supers intended to convey that Advil is not manufactured by the same company that makes Motrin. When asked directly whether Advil was made by the same company, fifty five per cent of the Motrin users and seventy one per cent of the non-Motrin users said they did not know and fourteen per cent of the Motrin users and fifteen per cent of the non-Motrin users said that Advil was made by the same company that makes Motrin.

These results suggest that the commercial is misleading or confusing to consumers. The Court finds, however, that the results are unreliable. Therefore, they do not establish probable success on the merits of plaintiffs claim that the advertising has a tendency to mislead consumers.

In tabulating the responses to the question, “What is the main ingredient of Advil?” Dr. Appel included in the percentage of respondents answering “Motrin,” those respondents whose answers to other questions suggested that they were using the term generically and not to mean Motrin brand tablets. Only six of the thirty five Motrin users who thought Motrin was the main ingredient in Advil thought that Motrin and Advil were made by the same manufacturer. Some of the respondents who answered “Motrin” in response to the ingredient question stated that the commercial indicated that Advil contained the same ingredient as Motrin in response to open ended questions. These answers, demonstrating an awareness that Motrin-brand tablets are not the principle ingredient in Advil, suggest that the respondents were using the term “Motrin” in response to the ingredient question generically to identify the drug contained in Advil and not to identify the source of the ingredient in Advil. No efforts were made to clarify respondents’ answers to the ingredient question despite the fact that apparently contradictory answers were given to other questions. As the survey does not adequately explain and probe the meaning of the responses to the ingredient question on the relevant issues, the Court does not credit the responses to the ingredient question as evidence of customer confusion as to the content and source of Advil. See E.I. DuPont de Nemours and Company v. Yoshida International, Inc., 393 F.Supp. 502, 525-27 (E.D.N.Y.1975).

The responses to the question whether the ad stated that people could now take Advil instead of Motrin are also of questionable value in evaluating consumer confusion. Respondents were asked whether, based on the commercial, they agreed or disagreed that people taking Motrin could now take Advil instead. It is unclear what an “agree” answer to this question means. As defendants’ expert, Walter McCullough, President of Monroe Mendelsohn Research, stated, the question is unspecific as to time, place and circumstances. It is unclear whether an agree answer means that the respondent believes that the commercial stated that “all people, some people [or] certain people” can take Advil rather than Motrin. It is also unclear whether an agree answer means that the respondent believes that Advil can be taken under all circumstances instead of Motrin or only under certain circumstances.

These distinctions are important. Dr. Appel admitted on cross examination that the respondents might have interpreted the question as asking whether Advil could be taken instead of Motrin for pain relief. The testimony and evidence submitted indicate that both products are approved for treating pain. Similarly, both products are indicated for some form of dysmenorrhea. Thus under certain circumstances, one product could be taken instead of the other, particularly if the consumer’s physician believes that smaller doses of ibuprofen are appropriate. An “agree” answer might reflect the respondent’s belief that some people under certain circumstances can take Advil instead of Motrin. As this belief would be correct, the agree answer would not reflect any confusion on behalf of the respondent. As there is no way in which the Court can evaluate what each “agree” answer meant, the Court cannot credit the number of “agree” answers as demonstrating that the advertisement has a tendency to mislead consumers into believing that one product can be substituted for another. This is particularly true in light of the fact that only two per cent of the respondents stated that the commercial claimed that Advil could be substituted for Motrin in answer to an open ended question as to what the commercial said about Advil.

The Court also notes that the reliability of the answers to the question whether Advil could be taken instead of Motrin is further impaired by the failure to inform respondents that they need not have an opinion on this issue. When the potential answers to this question were read to respondents a “don’t know” alternative was not included. Mr. McCullough testified, and Dr. Appel admitted, that the failure to include a “don’t know” alternative increases the likelihood that the respondent will guess which of the alternatives provided is correct.

Furthermore, the percentage figures submitted by Dr. Appel are misleading. Dr. Appel’s evaluation of the responses to this question is based on only those respondents who remembered that Motrin was mentioned in the ad. Thus he omitted from his evaluation almost one third of the total respondents. Surely, these respondents were not confused. They did not even remember that Motrin had been mentioned in the advertisement.

The Court finds that data gathered in response to the question whether Advil was made by the same manufacturer as Motrin or by a different manufacturer also fails to demonstrate that the ad has a tendency to mislead consumers. The figures presented by plaintiff reflect the responses of respondents who did not even recall that Motrin had been mentioned. It is likely that these respondents who did not remember a reference to Motrin in the ad were guessing when they said that the ad claimed that Advil was made by the same manufacturer as Motrin. On cross examination Dr. Appel admitted that the respondents who did not remember Motrin should not have been asked this question as there was a substantial likelihood that their answers would be guesses.

Furthermore, the question is biased. The form of the question suggests the answer the survey is seeking. That answer was the most specific alternative and referred back to a brand name mentioned in the ad and a number of times previously in the survey. No names were included in the other alternative answers. As Mr. McCullough testified, at the point in the survey when this question was asked, it was quite clear that the study was concerned with Motrin and the respondents were conditioned to think in terms of brand names. Respondents, aware now that the survey was concerned with Motrin, may have assumed that the answer containing the term Motrin was the right answer. The other alternative, “a different company” is vague and, in Mr. McCullough’s words, appears to the respondent as a “cop out.”

The Court is aware that Judge Lasker in McNeilab Inc., 501 F.Supp. at 528, rejected criticisms of a survey that were based on the contention that specific questions were biased. Judge Lasker, however, did not have evidence before him derived from the survey itself that supported the conclusion that the bias in the specific question influenced the answers to that question. When respondents were asked what the commercial said about Advil, only two per cent of them stated that Advil was made by the same manufacturer. Thus, absent the question suggesting the desired answer, it did not occur to most of the respondents that the commercial stated that the two products were made by the same manufacturer.

To substantiate its claim that the revised advertising is misleading, plaintiff must introduce tests and other proof acceptable to the Court. See American Brands, Inc., 413 F.Supp. at 1357. As the Court finds that overall the survey is unreliable, plaintiff has failed to demonstrate that the revised television advertisement or the print ads and promotional materials with similar characteristics have a tendency to mislead consumers. Plaintiff has the burden of establishing probable success on the merits of its claim that the revised advertising tends to confuse or mislead consumers. See Proctor & Gamble Co. v. Chesebrough-Pond’s, 747 F.2d 114, 119 (1984); Mermen Co., 565 F.Supp. at 654-55. As plaintiff has failed to meet this burden, relief must be denied with regard to this advertising.

The Court is troubled by the responses to the question in the survey asking respondents to choose the tablet depicted in the ad. It does not feel, however, that a further injunction against defendants’ use of color in their advertising is appropriate. The Court has enjoined the defendants from depicting the tablet as orange. In the Court’s judgment, the color of the mock up used to make the revised television commercial is brown, and appears brown in the commercial. Defendant, however, cannot control the color adjustment on every potential viewer’s television set. Defendant is directed, however, that under the injunction the brown mock up is not to be filmed or photographed in a manner that gives it an orange cast.

Furthermore, other than requiring defendants to change the color of the Advil tablet itself, the only further relief that would reduce potential confusion would be to enjoin defendants from mentioning Motrin in their advertising. Defendants argue that the term Motrin has informational value and, therefore, its use cannot be enjoined under the Lanham Act, as the Act does not compel competitors to resort to the second best means of communication. G.D. Searle & Co. v. Hudson Pharmaceutical Corporation, 715 F.2d 837, 842 n. 12 (3d Cir.1983). More accurately, reference to a trademark cannot be enjoined if its use is informational and not likely to cause confusion as to the product’s source or qualities. Sutton Cosmetics, Inc. v. Lander Co., Inc., 455 F.2d 285, 288 (2d Cir. 1972); Cuisinarts, Inc. v. Robot-Coupe International Corporation, 580 F.Supp. 634, 637 (S.D.N.Y.1984). Plaintiff contends, however, that its trademark, Motrin, cannot be used as a generic shorthand for ibuprofen because such use dilutes the mark. The Court finds that although the ads refer to Motrin for its informational value, they do not use it as a generic shorthand. The television ad says, “Advil contains a nonprescription strength of ibuprofen, the medicine found in the prescription brand, Motrin.” This is a comparative reference that aids the consumer in identifying ibuprofen, not a generic shorthand. Use of the trademark in this manner is permissible. Polyglycoat Corporation v. Environmental Chemicals, Inc., 509 F.Supp. 36, 40 (S.D.N.Y.1980).

Furthermore, the revised advertisements themselves contain disclaimers indicating that Motrin is made by another manufacturer. Such disclaimers are preferred to an absolute prohibition of the potentially misleading reference as a means of alleviating customer confusion. Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 130, 67 S.Ct. 1136, 1139, 91 L.Ed. 1386 (1947); Consumers Union, 724 F.2d at 1053; see In re R.M.J., 455 U.S. 191, 203, 102 S.Ct. 929, 937, 71 L.Ed.2d 64 (1982). To enjoin language where there is a reasonable possibility that a disclaimer would suffice would violate first amendment. Consumers Union, 724 F.2d at 1053. The Court finds that, although on open ended recall only a small percentage of the respondents actually remembered the supers stating that Advil and Motrin were made by different companies, in response to the same open ended question even fewer respondents thought that Advil and Motrin were made by the same manufacturer. The Court, therefore, finds that there is a reasonable possibility that the message conveyed in the super is sufficient to counteract any misleading effect of mention of Motrin in the television ad.

The Court denies plaintiffs motion to the extent that it applies to the revised advertising and promotional materials and that it is based on the second survey, and grants plaintiff’s motion to the extent that it seeks an injunction against depiction of the tablet as orange and use of the confusing language in the paragraph ending with the sentence, “It’s so effective that doctors have already prescribed it over 130 million times.”

SO ORDERED.

      . It should be noted that the brown pill mockup in the second television commercial still can assume an orange hue if the color controls on the television set are turned to make it so. When this happens, the other colors on the set go off-shade also, however. There is no question that objectively the object shown as the pill (Defendant’s Exhibit WW) in the newer commercial is brown.

      . The Court does not base the injunction on this finding, however. "An action under the Lanham Act ... is not the proper legal vehicle in which to vindicate the public’s interest in health and safety.” American Home Products v. Johnson & Johnson, 436 F.Supp. 785, 797-98 (S.D.N.Y.1977), aff'd, 577 F.2d 160 (2d Cir.1978).

      . Motrin is mentioned in the advertisement once, as are Tylenol and ibuprofen. Aspirin is mentioned four times and Advil five -times. In the survey questions, however, Motrin is mentioned at least three times before this question is asked.

      . The informational value of comparing the new OTC ibuprofen to Motrin is evidenced by non-advertising information released to the public. The Department of Health and Human Services in reporting approval of OTC sale of ibuprofen identified ibuprofen by stating that it had previously been available in larger doses under the brand names Motrin and Rufen. In a press release, reporting developments with respect to its application for approval of OTC ibuprofen, plaintiff stated that it had been marketing ibuprofen in a stronger form under the trade name Motrin.

      . The Court does not rely on the biased directed question concerning the source of Motrin in this regard. The only figures that the Court has with regard to recall of the supers is derived from responses to the open ended question. The Court has, thus, compared the figures with regard to recall of the supers with the figures with regard to the manufacturer of Advil that have been derived from the responses to the open ended question. The responses to the directed question would be more relevant if they could be compared to responses to directed questions concerning the supers.


source: Caselaw Access Project

author: H.F. GARCIA, District Judge.

license: Public Domain

text:
    Luis B. CANTU and wife Amelia Chavez Cantu, Plaintiffs, v. Jeffrey L. STIEF, Individually and d/b/a Southwest Energy, Defendant.
    No. SA-84-CA-1050.
    United States District Court, W.D. Texas, San Antonio Division.
    Nov. 7, 1984.
    Benjamin F. Walker, San Antonio, Tex., for plaintiffs.
    Marvin L. Cook of the law firm of Tracy & Cook, San Antonio, Tex., for defendant.
   ORDER

H.F. GARCIA, District Judge.

On this day came on to be considered defendant’s motion for summary judgment, and plaintiffs’ response thereto. This is a Truth-in-Lending Act case brought by plaintiffs for damages and penalties and for rescission of a consumer credit transaction and cancellation of a security interest on their home. The Court, having considered the pleadings, evidence and argument of counsel, is of the opinion the motion should be granted.

On or about January 12, 1984, plaintiffs and defendant entered into a contract whereby defendant was to make certain improvements to plaintiffs’ home for a contract price of $8,000.00; a security interest in plaintiffs’ home was created. Subsequently, during the performance of the contract, various disputes arose between the parties resulting in discontinuance of work. By document dated April 16, 1984, plaintiffs sought to cancel the contract pursuant to Title 15 U.S.C. Section 1635. Defendant rejected the rescission effort and this lawsuit ensued.

Section 1635 provides an obligor with a right to rescind within three days a consumer credit transaction in which a security interest is retained in his or her home. The right to rescind extends to midnight of the third business day following the consummation of the transaction or the delivery of the information and rescission forms required under section 1635 together with a statement containing the required material disclosures. It is plaintiffs’ position that an omission in the “Notice of Right to Cancel” extended the time within which they could exercise their option to rescind. Specifically, plaintiffs argue that the notice fails to identify the transaction as required by Title 12 C.F.R. Section 226.23(b). Section 226.23(b) also demands five disclosures which defendant’s notice undisputably contains. The blank at the top of the form for identification of the transaction is empty.

Section 226.23 supplanted section 226.-9(b) which contained the necessary rescission form. The identifying information required by section 226.9(b) was the name and business address of the creditor, the date of consummation of the transaction and the latest date for rescission. A specific form is not required under section 226.23, but model forms are included in the regulations. The rescission model form appears in appendix H-8 of part 226 of the regulations. The rescission form supplied to and signed by plaintiffs is word-for-word the same as the model form. The only identifying information required by the model form is the date of the transaction, the creditor’s name and business address, the date for rescission, the customer’s signature and the current date. All of this information appears on plaintiffs’ rescission notice. Title 15 U.S.C. Section 1604(b) provides that the Federal Reserve Board shall publish model disclosure forms to facilitate compliance with the disclosure requirements. While a creditor need not use the model forms, he shall be deemed to be in compliance with the disclosure provisions if he does.

Defendant did use the proper rescission form, containing all of the required information and disclosures. As a matter of law, he has complied with section 1635 of the statutes and section 226.23 of the regulations. Plaintiffs’ argument is additionally foreclosed by the Official Staff Interpretations found at Supplement 1 to part 226 of the regulations. In the discussion of section 226.23(b), it is specifically stated that the requirement that the transaction be identified may be met by providing the date of the transaction. This was included on the rescission form given to plaintiffs. The rescission form fully met all of the pertinent disclosure requirements. Plaintiffs’ attempt to rescind the transaction three months after its consummation and receipt of the rescission notice is ineffective. Defendant is entitled to judgment as a matter of law.

It is therefore, ORDERED that defendant’s motion for summary judgment be, and it hereby is, GRANTED.


author: GESELL, District Judge.

text:
    AMERICAN POSTAL WORKERS UNION, AFL-CIO, et al., Plaintiffs, v. UNITED STATES POSTAL SERVICE, Defendant.
    Civ. A. No. 84-909.
    United States District Court, District of Columbia.
    Nov. 8, 1984.

      Darryl J. Anderson, Anton Hajjar, Washington, D.C., for plaintiffs.
    Mitchell R. Berger, Asst. U.S. Atty., Washington, D.C., for defendant.
   MEMORANDUM

GESELL, District Judge.

This action was brought by a discharged postal worker, Joseph Gordon, and his union seeking reinstatement, back pay and other relief on grounds that the discharge violated the contract between the union and the Postal Service and also violated the First Amendment rights of Gordon and his union. The ease is before the Court on defendant’s second motion for summary judgment and plaintiff’s cross-motion for partial summary judgment, which have been fully briefed by the parties.

In disposing of defendant’s first motion for summary judgment, the Court granted judgment for the defendant on plaintiffs’ claim of a contract violation but denied summary judgment on plaintiffs’ constitutional claim, stating it appeared to the Court “that a number of material facts remain in dispute, including (i) whether the firing was based on speech or on underlying conduct described in the speech, (ii) whether the government was actually harmed by the speech, and (iii) whether plaintiff Gordon knew or should have known that the speech would harm the government.” (Order of September 7, 1984 at 1-2.) Defendant then proposed to assume for the purposes of summary judgment that the discharge was based on speech, not the underlying conduct, and accordingly to seek summary judgment on the remaining issues, identified as (ii) and (iii) above. It was understood that if defendant lost again on summary judgment, and if plaintiff won its own summary judgment motion on those issues, the only remaining issue would be whether Gordon’s speech was a substantial or motivating factor in the discharge decision. See Mt. Healthy City Bd. of Educ. v. Doyle, 429 U.S. 274, 287, 97 S.Ct. 568, 576, 50 L.Ed.2d 471 (1977). Plaintiffs agreed to this procedure, and subsequently filed a cross-motion for partial summary judgment. Thus these motions focus on whether Gordon’s speech was protected by the First Amendment, and if so, whether his employer’s interests outweigh his right to free expression because of the harmful effects of his speech.

I. The Background

Joseph V. Gordon was an employee of the Postal Service for IIV2 years in Royal Oak, Mich., until he was fired on July 7, 1982. While an employee, he received several commendations and monetary awards from the Postal Service, including an award for heroism in 1981 for putting out a dangerous fire that resulted from a collision between a car and a mail truck. Gordon was a steward in Area Local 480-481 of his union and was editor of the local’s newspaper, The 480-481 Communicator, for which he wrote a regular column.

His column in the May 1983 issue was entitled “Workers of the World Unite____” The column’s theme was the need to persuade non-members to join the union by “tactful intelligent” efforts rather than by “strong arm” tactics. After suggesting various benefits of joining the union that could be brought up in conversation with non-members, the column stated:

I was motivated to write this article at this time by a recent discovery that I made at work. While working third class letters a few weeks ago I came across a bundle of letters that were being sent from Congressman Phillip Crane, a Republican from Illinois, the return address simply stated: Congressman Phillip Crane, National Right to Work Committee. Well, naturally I was curious just what the Congressman was trying to communicate under such a dubious association with the right to work committee. My curiosity did not have long to wait because one of the letters was not sealed and the contents fell out as I was sorting the mail. I could not help but seeing just what was inside. I was amazed to find that the Congressman was sending out petitions asking for help in an attempt to organize a legislative effort to support a bill that would restrict Labor Unions from organizing workers through what he called strong arm tactics.

The column went on to conclude that “[i]t has been painfully evident that we have many enemies in Congress and we can ill afford to have them attempt to organize efforts to further reduce our ability to improve our working conditions____ Ask your stewards who the non-members are in your office and make a tactful intelligent effort to sign them up, but don’t use ‘strongarm’ tactics, it might upset Phillip Crane.”

The newspaper has a circulation of about 2,100. It is sent to members and retired members of Local 480-481 and to the offices of other postal union locals.

After the column came to the attention of Postal Service officials, Gordon was questioned by supervisor Charlene Bonds, on the night of May 26, 1983 after he arrived for the shift starting at midnight. She told him that he had violated two Postal Service regulations by reading the piece of mail and disclosing its contents, and that he could be discharged. He told her that he had made up the story about reading the mail on the job as a “dramatization.” He also said he did not know that reading third-class mail meant for publicity was a violation, although he did know that reading personal mail was a violation. She asked him to make a written statement, which he did before returning to his work station. In the statement, he said in part

I was made aware of the [Crane] petition by a friend who was asked to sign it. He later in turn asked me about a right of Congressmen to use the privilege] of the free mail to distribute such material. I didn’t think it was right for postal workers to have to handle such mail and fabricated the story about finding the “Crane” mail myself. I did not see, personally, the petition but I bel[ie]ve it existed. The irony that I was trying to stress as a representative of the labor movement and especially the American Postal Workers Union, is that there are rich people in this country that want to get richer off the labor force.

Immediately after he got off work that shift, Gordon wrote a retraction that was published in the next month’s issue of The 480-481 Communicator. The retraction referred to the described incident as “a fabrication for dramatization” and added, “I attempted to show the irony of the labor force (APWU) handling mail such as this, it was a mistake. It is illegal to disclose the contents of mail even if the mail is meant for further distribution.”

The day after his meeting with the supervisor, the Postal Service informed Gordon by a “Notice of Removal” that he was to be removed from the Postal Service on July 7, 1983. The notice described his May 1983 column and said:

You have violated Part 115 of the Domestic Mail Manual, specifically Part[s] 115.2 and 115.5 which prohibits the reading, divulging, or disclosing of the contents of mail. Such reading and publication of the contents is also considered unacceptable and a violation of Part [661.53] of the Employee and Labor Relations Manual.

Gordon and his local union grieved the dismissal. The final decision on the grievance stated that Gordon’s “action in the instant grievance violated the integrity of the mail service and part 115.5 of the DMM. Accordingly, just cause was established and this grievance is denied.”

Article 16 of the collective bargaining agreement between the union and the Postal Service provides in pertinent part:

No employee may be disciplined or discharged except for just cause such as, but not limited to, insubordination, pilferage, intoxication (drugs or alcohol), incompetence, failure to perform work as requested, violation of the terms of this Agreement, or failure to observe safety rules and regulations.

The union sought arbitration of the grievance. A hearing was held on October 12, 1983. The arbitrator upheld the firing by an opinion dated December 23, 1983. The opinion did not decide the factual dispute about whether Gordon had read and disclosed the contents of mail that he saw on the job, but said that true or not, the column had’ the effect of eroding public confidence in the sanctity of the mails. The collective bargaining agreement between the union and the Postal Service provides that “[a]ll decisions of an arbitrator will be final and binding.”

This action was filed on March 22, 1984. Count One was the contract claim alleging that the discharge of Gordon “was not for ‘just cause,’ and was in violation of the collective bargaining agreement,” and that the arbitrator’s decision was “contrary to law and fact, beyond his authority, and not based on the collective bargaining agreement.” As previously noted, on September 7, 1984, the Court dismissed the contract claim, stating that “the arbitration award was sufficiently based on the arbitrator’s understanding of the contract that the award did not step beyond the arbitrator’s authority. See United Steelworkers v. Enterprise Wheel & Car Corp., 363 U.S. 593, 598 [80 S.Ct. 1358, 1361, 4 L.Ed.2d 1424] (1960).” (Order of September 7, 1984 at 1.)

Count Two alleged that the discharge violated the rights to free speech and free press of Gordon, the union, the union’s members and postal workers in general.

II. The Constitutional Claim

Because an arbitrator’s authority derives solely from the contract and his expertise is confined to interpreting that contract, an arbitration decision against an employee does not bar an employee from bringing a separate judicial action alleging violation of statutory or constitutional rights arising from the same facts that brought about the contract dispute. Alexander v. Gardner-Denver Co., 415 U.S. 36, 56-60, 94 S.Ct. 1011, 1023-1025, 39 L.Ed.2d 147 (1974). See also Barrentine v. Arkansas-Best Freight System, 450 U.S. 728, 745-46, 101 S.Ct. 1437, 1447-48, 67 L.Ed.2d 641 (1981). Similarly, an arbitrator’s findings of fact against an employee cannot be given preclusive res judicata or collateral estoppel effect in a judicial proceeding to enforce First Amendment rights. MoDonald v. City of West Branch, — U.S. —, 104 S.Ct. 1799, 1804, 80 L.Ed.2d 302 (1984).

The arbitrator held the discharge appropriate even if based entirely on Gordon’s newspaper column and not on the underlying conduct apparently revealed by the column. This decision is not entitled to any weight in adjudicating the present constitutional claim.

In deciding whether governmental action infringes on a public employee’s constitutionally protected right of free expression, the court must “seek ‘a balance between the interests of the [employee], as a citizen, in commenting upon matters of public concern and the interest of the State, as an employer, in promoting the efficiency of the public services it performs through its employees.’ ” Connick v. Myers, 461 U.S. 138, 103 S.Ct. 1684, 1687, 75 L.Ed.2d 708 (1983) (quoting Pickering v. Board of Educ., 391 U.S. 563, 568, 88 S.Ct. 1731, 1734, 20 L.Ed.2d 811 (1968)).

The employee has the initial burden of proof in such cases of showing that his conduct was constitutionally protected. If the employee can show that the speech “toueh[ed] upon a matter of public concern,” Connick v. Myers, 103 S.Ct. at 1690, the burden then shifts to the employer to demonstrate that its interest “in the effective and efficient fulfillment of its responsibilities to the public,” Connick, 103 S.Ct. at 1692, outweighs the employee’s interest in discussing matters of public concern and the public’s interest in listening to such discussion. See Connick, 103 S.Ct. at 1687, 1692-93; Pickering, 391 U.S. at 568, 571-72, 88 S.Ct. at 1736-37.

A. Protected Speech

A public employee’s speech is constitutionally protected only if it can be “fairly characterized as constituting speech on a matter of public concern.” Connick v. Myers, 103 S.Ct. at 1689. This is determined “by the content, form, and context of a given statement, as revealed by the whole record.” Id. at 1690.

Gordon’s published column, including the statement about the Crane letter, clearly constitutes speech on a matter of public concern, and the Court so holds. The column concerns not only strategies for increasing union membership, itself protected by statute, but also touches on the much-discussed issue of how unions should respond to the right-to-work movement. The right-to-work issue is particularly relevant for postal workers because postal employees are protected by statute from having to join any union. See 39 U.S.C. § 1209(c).

The labor movement orientation of Gordon’s column is set at the outset in the column’s title, borrowed from Karl Marx, and is developed most clearly in the discussion of the. Crane letter. In this context, the statement about finding and reading the Crane letter while sorting third-class mail clearly represents an attempt to underscore the column’s theme that non-union workers should be persuaded that their common interest lies with their fellow workers and not the right-to-work movement. The column carries on a long tradition of union writers appealing for worker solidarity.

Gordon’s column is in sharp contrast to the speech that the Court in Connick found unprotected in most respects because it basically concerned internal office politics. See Connick, 103 S.Ct. at 1691. The Court there expressly did not hold that all speech concerning labor matters was not of public concern. See id. at 1691 n. 8. Rather, it simply properly rejected the effort to attach a broader meaning to statements of purely personal interest. See, e.g., Murray v. Gardner, 741 F.2d 434, 438 (D.C.Cir.1984); Foster v. Ripley, 645 F.2d 1142, 1148 (D.C.Cir.1981). In this case, Gordon’s personal interest in his statement, if any, is remote and does not detract from the statement’s presentation of matters of public concerns.

In asserting that Gordon’s speech deserves little if any constitutional protection, the Postal Service focuses on Gordon’s assertion that he never opened the mail but only said he did to dramatize his theme about the right-to-work movement. The Postal Service thus repeatedly characterizes Gordon’s speech as a “knowing lie” or a “knowingly false statement of fact.” The defendant then emphasizes that libel law does not protect knowingly or recklessly false statements, and asserts the same lack of protection should be found here.

The Court must reject this invitation to read the reference to the Crane letter, wrested from context, as a mere statement that a postal employee has read a piece of mail on duty. As noted above, the Court’s duty in considering the constitutional issue is to judge the statement in its entire context based on the full record.

It would be pernicious to withhold constitutional protection for public employee speech whenever the statement can be found to be knowingly false. This would allow a speaker to be punished for a statement that amounted to no more than a harmless fiction or an apocryphal story that illustrated his theme but was not literally true. Such fictions are stock-in-trade for politicians and others speaking on issues of public concern. Absent harm in a real sense, such parables can hardly even be called lies or knowing falsehoods. Obviously the injurious nature of the statement to the employer must also be considered.

In Pickering, the Supreme Court indicated that an employee could be fired for injurious false statements that were knowingly or recklessly made. 391 U.S. at 574, 88 S.Ct. at 1737. But the Court expressly left open the question “whether a statement that was knowingly or recklessly false would, if it were neither shown nor could reasonably be presumed to have had any harmful effects, still be protected by the First Amendment.” Id. at 574 n. 6, 88 S.Ct. at 1738 n. 6. The present case requires the Court to confront that question. Otherwise protected speech cannot lose its constitutional protection solely by virtue of containing a knowingly or recklessly false statement, absent a showing of the harmful nature of the speech.

B. The Government’s Interest

Accordingly, the Court must consider whether there has been such a showing of harm in this instance that “the government’s interest in the effective and efficient fulfillment of its responsibilities to the public,” Connick, 103 S.Ct. at 1692, outweighs the employee’s interest in free speech and thus justifies Gordon’s discharge.

This balancing of the employee’s interest in speech and the employer’s interest in its responsibilities to the public will vary depending on a number of factors, including the nature of the employee’s expression and how substantially it involves matters of public concern. Connick, 103 S.Ct. at 1692-93. Other factors include whether the speech occurred on an employee’s own time and in non-work areas of the workplace, id. at 1693 n. 13, whether the nature of the work requires close working relationships easily upset by defiant employee speech, id. at 1692, whether the speech concerned the employee’s own employment, id. at 1693, and whether the speech violated announced office policy, id. at 1693.

The government argues that even if there is some protection for what it characterizes as “knowingly false” speech, it needs to make “only the most minimal showing of injury” to defeat the constitutional protection. It relies on the same argument made and rejected above. The extent of harm caused by an employee’s speech is a separate objective inquiry that does not turn on the speaker’s subjective state of mind. A showing of state of mind cannot substitute for the showing of injury.

While there are cases where the harmful nature of speech is so apparent that no evidentiary inquiry need be made into actual disruption of the employer’s “responsibilities to the public,” there are other cases of less obvious harm where the employer must show actual, not merely presumed, disruption of its ability effectively and efficiently to fulfill its responsibilities. Compare McGehee v. Casey, 718 F.2d 1137, 1148-49 (D.C.Cir.1983) (CIA need not show actual harm from publication of classified documents but still must “justify censorship with reasonable specificity” to court) with Tygrett v. Barry, 627 F.2d 1279, 1285 (D.C.Cir.1980) (government must show actual harm from employee speech, not just “reasonable inference”). See also Hanson v. Hoffman, 628 F.2d 42, 49-50 (D.C.Cir. 1980) (discussing employee speech cases where summary judgment found inappropriate due to inadequately developed facts . relating to harm to government’s interests). In Connick v. Myers, the Supreme Court deferred to the judgment of the employee’s supervisors that the speech at issue had disrupted an office where close working relationships were essential to the office’s smooth functioning. 103 S.Ct. at 1692 & n. 11. In that case, the speech focused only minimally on matters of public concern. Accordingly the Court stated, “We caution that a stronger showing may be necessary if the employee’s speech more substantially involved matters of public concern.” Id. at 1692-93.

This is a. case where the Court has concluded that a stronger showing, involving more than just a presumption of harm, is necessary. The speech did concern a matter of substantial public concern. It was written off-duty and off-premises and publicized through a limited-distribution newspaper. Other factors deemed relevant by the Court in Connick are present here. This was not a workplace like that in Con-nick where a close working relationship between supervisors and employees was essential to proper functioning. Nor was the objectionable portion of Gordon’s speech, once retracted and explained, substantially likely to impair Gordon’s longstanding satisfactory relationship with his supervisors.

The evidence that the Postal Service has chosen to present on the harm caused by Gordon’s speech is contained in an affidavit by its chief postal inspector, Kenneth H. Fletcher. That affidavit shows no awareness of the particular facts of this case. It emphasizes that “[t]he Postal Service places the highest priority on maintaining the public’s confidence in the integrity of the mails,” Affidavit at ¶ 12, and that “[i]t is crucial that the public have confidence that the Postal Service will deliver all types of communications ... without bias or favoritism for or against any person, group, political party or organization or its members,” id. at ¶ 17. The Court fully accepts the dedication of the Postal Service to these propositions and the importance of maintaining the security of all classes of mail. But the affidavit contains no evidence that Gordon’s speech harmed public confidence in the Postal Service. There is no evidence that Gordon’s speech was publicized outside a small segment of the Postal Service and its union, and there is no evidence that any member of the public complained or otherwise brought the matter to the Service’s attention.

Even if the Postal Service were required to show only presumed, not actual, harm to its public image, the Court would hesitate to find that such harm reasonably could be presumed on these facts. If Gordon had discussed opening and reading a piece of first-class mail, whose privacy is sacrosanct, harm to the public perception of mail privacy might be more easily presumed. Third-class mail, which is generally meant for the widest possible public dissemination of advertising and other “junk” mail, should not be subject to such an automatic presumption. The case also might be different if Gordon’s statement had been broadcast outside the Postal Service and the union membership.

The Postal Service affidavit identifies a second type of harm, stating that “[a]ny action on the part of a postal employee — especially an employee with influence among his co-workers — which would tend to lessen the resolve of his fellow employees to safeguard the mails seriously detracts from this effort.” Id. at 117. This generalized conclusion, however, is again not brought home to this case. No facts are presented as to whether Gordon’s co-workers even knew that the conduct described in his original column violated a regulation until he told them so himself in his retraction, much less that it tended to lessen their resolve to safeguard the mails.

Besides harm to public confidence and to the work of fellow employees, the affidavit asserts a third and final type of harm justifying Gordon’s discharge, that “[s]uch statements, whether true or not, demonstrate the unsuitability of the individual for employment in the Postal Service because such statements are a repudiation of an essential function of the employee’s job.” Id. at 1121. But this is again a conclusion, not a fact. There is no basis given for doubting the sincerity of Gordon’s claim that any “repudiation” was unintended.

The Postal Service has failed to meet its burden of showing any actual harm from the speech, much less harm substantial enough to outweigh the interest in free speech. On the other hand, plaintiffs have shown a strong First Amendment interest in the protection of Gordon’s speech.

Moreover, where the likelihood of harm is not apparent on the face of the employee’s statement, the agency should have to show at least that the employee was negligent in not knowing of the extrinsic facts making the statement harmful to the agency's reputation. No such showing has been made here. Although it has had opportunity to do so, the government has presented no evidence of Gordon’s awareness of any third-class mail regulations or of his duty to be aware of them. Plaintiffs have introduced evidence that the regulations are not published in the Postal Service’s employee manual and are not posted or otherwise readily accessible to employees.

Accordingly, the defendant’s motion for summary judgment is denied, and plaintiffs’ cross-motion for summary judgment is granted. The case will proceed to trial on the only remaining issue: whether the protected speech was a substantial or motivating factor in the discharge.

      . The Court also held that plaintiffs’ constitutional claim could go forward only as to equitable and declaratory relief, finding that the Federal Tort Claims Act did not waive sovereign immunity for constitutional tort actions for money damages against the United States.

      . The Court considered this issue tentatively in its Order of September 17, 1984, denying defendant’s motion for reconsideration of the Court’s September 7, 1984 Order. The issue is considered more fully and finally herein.

      . The June issue had already gone to the printer. Gordon testified at the arbitration that he delivered the retraction to the printer on May 27, the same day he wrote it.

      . Section 661.53 of the Employee and Labor Relations Manual of the Postal Service provides in part that “[n]o employee will engage in criminal, dishonest, notoriously disgraceful or immoral conduct, or other conduct prejudicial to the Postal Service.” This provision is also contained in the Code of Ethical Conduct for Postal Employees published in the Code of Federal Regulations. 39 C.F.R. § 447.25(c). The ethical code lists a number of specific types of proscribed conduct but not the reading or disclosing of mail. The Domestic Mail Manual, which does contain the ban on reading and disclosing mail, is incorporated by reference in the Code of Federal Regulations, 39 C.F.R. §§ 111.1 — 111.-5, which lists the manual’s table of contents and the locations where it can be read.

        . The Court considers herein only the First Amendment claim of Gordon, since the relief now sought by the union substantially coincides with any relief the Court could grant to Gordon.

      . The employee also must show that this protected conduct was a substantial or motivating factor in the discharge decision. Mt. Healthy City Bd. of Educ. v. Doyle, 429 U.S. 274, 287, 97 S.Ct. 568, 576, 50 L.Ed.2d 471 (1977). As has been noted, that issue has been reserved for later disposition if necessary.

      . Cf. Eastex, Inc. v. National Labor Relations Board, 437 U.S. 556, 569, 98 S.Ct. 2505, 2514, 57 L.Ed.2d 428 (1978), upholding NLRB finding that union newsletter concerning a proposed right-to-work state constitutional amendment was protected "mutual aid or protection” activity under Section 7 of the National Labor Relations Act, 29 U.S.C. § 157. The statutory protections of Section 7 are applicable to the Postal Service. See 39 U.S.C. § 1209(a).

      . Of course, it is not for this Court to pass on the merits of this belief. See Police Department of Chicago v. Mosley, 408 U.S. 92, 95-96, 92 S.Ct. 2286, 2289-2290, 33 L.Ed.2d 212 (1972). The Court is limited to determining whether the subject matter of the speech was of public concern.

      . Cf. American Postal Workers Union v. U.S. Postal Service, 595 F.Supp. 403, 406 (D.Conn. 1984), finding a private dispute between the Postal Service and the union on jobs affected matters of public concern and thus speech relating thereto was protected.

      . In both this and its earlier summary judgment motion, defendant relies on Gertz v. Robert Welch, Inc., 418 U.S. 323, 94 S.Ct. 2997, 41 L.Ed.2d 789 (1974), for the proposition that “there is no constitutional value in false statements of fact." Id. at 340, 94 S.Ct. at 3007.

      . In addition, defendant seriously misreads the law of libel. Under libel law, it is only when a false statement of fact is defamatory that it is subject to liability. Courts routinely dismiss libel claims where no defamation occurred, without reaching the issue of whether the statement was false or even knowingly false. See, e.g., Franklin Music Co. v. American Broadcasting Cos. Inc., 616 F.2d 528, 541 (3d Cir.1980); Southard v. Forbes, Inc., 588 F.2d 140, 144-46 (5th Cir.), cert. denied, 444 U.S. 832, 100 S.Ct. 62, 62 L.Ed.2d 41 (1979). Cf. McBride v. Merrell Dow & Pharmaceuticals, Inc., 717 F.2d 1460, 1464-65 (D.C.Cir.1983). A statement’s falsity, and the speaker’s knowledge of its falsity, are assessed only after it has been determined that the statement was injurious, and then as an assessment of the speaker's culpability, not as a substitute for the finding of injury.

      . Here, of course — accepting Gordon's statement that he did not in fact open the Crane letter — his statement was not literally true. But in its intended purpose — showing that a postal worker had sorted the Crane letter and thus had unwittingly contributed to furtherance of its message — it was true.

      . As will be discussed below, a speaker's knowledge of his statement’s falsity is evidence of his culpability in the harm caused by the statement only where the nature of the statement is intrinsically harmful. Where extrinsic facts must be shown to demonstrate the harm from a statement, a separate state of mind inquiry is required into the speaker’s culpability as to those extrinsic facts.

      . The cases cited by defendant, Fracaro v. Priddy, 514 F.Supp. 191 (M.D.N.C.1981) and Harper v. Blumenthal, 478 F.Supp. 176 (D.D.C.1979), are in accord with the Court’s analysis. Those cases stand for the simple proposition that given a certain increment of harm caused by speech, the employee who speaks in knowing or reckless falsehood will be more liable than one who speaks only negligently. This is not doubted.

      . The Postal Service has certified that no material facts remain in dispute preventing adjudication of either its or plaintiffs’ motions for summary judgment.

      . In Connick, by contrast, where the Supreme Court found only a minimal showing of harm necessary, there was testimony from two of the employee's supervisors with direct knowledge of the case. 103 S.Ct. at 1692 & n. 11.

      . This is not to say that the Postal Service cannot properly discipline an employee found to have read or disclosed the contents of any class of mail. That issue is not before the Court.


author: MAHON, District Judge.

text:
    Bradley W. BURRIS v. Margaret HECKLER, Secretary of Health and Human Services.
    Civ. A. No. 4-83-24-E.
    United States District Court, N.D. Texas, Fort Worth Division.
    Nov. 9, 1984.
    Warren H. Gould, Fort Worth, Tex., for plaintiff.

      James A. Rolfe, U.S. Atty. by Mattie Peterson Compton, Fort Worth, Tex., for defendant.
   ORDER

MAHON, District Judge.

The plaintiff herein has filed two motions for an award of attorney’s fees, one under the Equal Access to Justice Act (EAJA), 28 U.S.C. § 2412(d), and the other based on a contingent fee contract between the plaintiff and his attorney. The Secretary opposes both motions.

The EAJA permits an award of attorney’s fees to the prevailing party “[e]xcept as otherwise provided by statute____[and] unless the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.” 28 U.S.C. § 2412(d). The plaintiff contends that the defendant’s position was not substantially justified in this action because this Court found that there was not substantial evidence in the record that the plaintiff’s condition had improved and therefore reversed the decision of the Secretary.

The mere fact that an administrative decision was reversed does not mean that the government’s position was not substantially justified. See Gava v. United States, 699 F.2d 1367, 1370 (Fed.Cir. 1983); Trujillo v. Heckler, 582 F.Supp. 701, 707 (D.Col.1984). The Court finds that in light of the fact that this case was initiated prior to Buckley v. Heckler, 739 F.2d 1047 (5th Cir.1984) being decided, the Fifth Circuit’s ruling on the medical improvements issue, and in light of the special position the government occupies as a litigant in this country, this Court cannot say that the Secretary acted improperly in litigating the medical improvement issue present in this case. Accordingly, the plaintiff’s motion for an award of attorney’s fees under the EAJA is DENIED.

As an alternative to an award of attorney’s fees under the EAJA, the plaintiff has filed a motion seeking attorney’s fees based on a contingent fee contract between the plaintiff and his attorney. The plaintiff’s attorney seeks 25% of the past-due benefits the plaintiff will receive.

The Social Security Act provides: Whenever a court renders a judgment favorable to a claimant under this sub-chapter who was represented before the court by an attorney, the court may determine and allow as part of its judgment a reasonable fee for such representation, not in excess of 25 percent of the total of the past-due benefits to which the claimant is entitled by reason of such judgment ____

42 U.S.C. § 406(b)(1). The Court may not adopt the statutory maximum of 25% suggested by the plaintiff without considering what amount would be fair and reasonable compensation for the services of plaintiff’s counsel. See Redden v. Gardner, 391 F.2d 670 (4th Cir.1968); Stiltner v. Califano, 470 F.Supp. 261, 262 (E.D.Tenn.1977).

The factors to be considered in awarding attorney’s fees were discussed by the Fifth Circuit in Johnson v. Georgia Highway Express, Inc., 488 F.2d 714, 717 (5th Cir. 1974). The twelve factors listed in Johnson v. Georgia Highway Express, Inc., were:

(1) the time and labor required; (2) the novelty and difficulty of the question presented; (3) the skill required to perform the legal services; (4) the preclusion of other employment by the attorney due to the acceptance of the case; (5) the customary fee in the community; (6) whether the fee is fixed or contingent; (7) time limitations imposed by the client or circumstances; (8) the amount involved and the results obtained; (9) the experience, reputation, and ability of the attorney; (10) the undesireability of the case; (11) the nature and length of the professional relationship with the client; and (12) awards in similar cases.

Johnson at 717-19.

The Court makes the following findings:

(1) The time and labor required —Plaintiff’s attorney expended 79.75 hours on this matter at the district court level as evidenced by his time records.

(2) The novelty and difficulty of the questions —Whereas the facts of this case are unique to it, the plaintiffs attorney could rely on his past experience and ease law developed in this area in order to handle this case.

(3) The skill required to perform the legal services — Few members of the bar handle disability claims and counsel must be familiar with the applicable statutes and regulations and other items peculiar to these cases. However, once familiar with the laws and procedures, this knowledge can be drawn upon for all disability cases handled.

(4) The preclusion of other employment by the attorney due to acceptance of this case — The Court finds that this case did not preclude the attorney’s opportunity to accept other cases.

(5) The customary fee —The Court finds that the fee charged is within the range of fees charged in this area.

(6) Whether the fee is fixed or contingent —The present case involved a contingent fee contract.

(7) Time limitations imposed by the client or the circumstances — There were no unusual time limitations imposed, except the need to restore benefits as soon as possible.

(8) The amount involved and the results obtained — The amount of past-due benefits awarded in this case is substantial.

(9) The experience, reputation, and ability of the attorney —The Court finds that the plaintiff’s attorney has shown the experience and ability necessary to handle a case such as the one currently before the Court.

(10) The “undesireability” of the case —Although not many members of the bar accept social security cases, these cases are not “undesireable” because of unfavorable community reactions or otherwise.

(11) The nature and length of the professional relationship with the client —There is no evidence that plaintiff's counsel altered his fees due to any professional relationship his client may have had with his office. The Court recognizes that the client’s financial future has been dependent upon this case.

(12) Awards in similar cases —As previously stated, case law precludes an automatic award of the statutory maximum as is requested by plaintiff’s counsel.

In summation, whereas the Court recognizes that not many attorneys handle social security appeals, it must keep in mind that “[t]he primary consideration in these cases is that the disabled party receive the maximum benefit because he is the one most in need of funds.” Hector v. Gardner, 297 F.Supp. 510, 512 (W.D.Mich. 1969). Attorneys are entitled to reasonable compensation for their services, but the benefits awarded are not provided for the enrichment of the bar. For the aforementioned reasons, the Court finds that the plaintiff’s request for an award of 25% of the past-due benefits awarded is not fair and reasonable. The Court finds that an award equivalent to $65 per hour for the 79.75 hours expended on this matter at the district court level is reasonable and hereby GRANTS plaintiff’s motion for attorney’s fees to the extent that the Court finds that the plaintiff’s attorney is entitled to receive $5,183.75 in attorney’s fees out of the plaintiff’s award of past-due benefits for his work at the district court level.