United States District Court, D. Massachusetts
FERRING PHARMACEUTICALS, INC., Plaintiff-Counterclaim Defendant,
BRAINTREE LABORATORIES, INC., Defendant-Counterclaim Plaintiff.
MEMORANDUM & ORDER
Nathaniel M. Gorton United States District Judge
case concerns two pharmaceutical companies that have
competing products used for bowel preparation before
colonoscopies. Plaintiff/counterclaim-defendant Ferring
Pharmaceuticals, Inc. (“Ferring”) claims that
Defendant/counterclaim-plaintiff Braintree Laboratories, Inc.
(“Braintree”) engaged in false advertising in
violation of the Lanham Act and unfair trade practices in
violation of the Massachusetts Consumer Protection Act,
M.G.L. ch. 93A (“Chapter 93A”). Ferring also
alleges that Braintree diluted Ferring's trademark in its
product, Prepopik. Braintree counterclaims that Ferring has,
itself, engaged in false advertising and unfair trade
practices. In August, 2014, the Court dismissed
Braintree's additional counterclaim that Ferring
misappropriated trade secrets.
Factual and Procedural Background
a Delaware corporation with its principal place of business
in Switzerland, advertises and sells Prepopik, a colonoscopy
preparation medication. Braintree, a Massachusetts
corporation with its principal place of business in
Braintree, Massachusetts, advertises and sells Suprep which
is similarly used prior to colonoscopies.
October, 2013, Ferring filed a complaint against Braintree
which, in turn, answered and counterclaimed. In August, 2014,
this Court allowed Ferring's motion to dismiss
Braintree's counterclaims that Ferring had
misappropriated trade secrets and falsely advertised with
respect to “flexible dosing” and “helps
achieve success.” The Court denied Ferring's
motions to dismiss Braintree's false advertising
counterclaims relating to “superior cleansing
efficacy” and “lowest volume.” The Court
also denied Braintree's motion for summary judgment
April 22, 2016, Ferring filed motions for summary judgment on
Braintree's counterclaims, its own Canadian Adverse
Reaction Newsletter (“Canadian Newsletter”) and
“What's NOT New About Prepopik”
(“comparison detailer”) claims and
Braintree's affirmative defenses. Braintree, in turn,
filed its own motion for summary judgment on all of
Ferring's claims. The motions for summary judgment are
pending before the Court.
Motions for Summary Judgment
Legal Standard for Summary Judgment
role of summary judgment is “to pierce the pleadings
and to assess the proof in order to see whether there is a
genuine need for trial.” Mesnick v.
Gen. Elec. Co., 950 F.2d 816, 822 (1st Cir. 1991).
The burden is on the moving party to show, through the
pleadings, discovery and affidavits, “that there is no
genuine dispute as to any material fact and that the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A fact is material if it “might
affect the outcome of the suit under the governing
law.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). A genuine issue of
material fact exists where the evidence with respect to the
material fact in dispute “is such that a reasonable
jury could return a verdict for the nonmoving party.”
moving party has satisfied its burden, the burden shifts to
the non-moving party to set forth specific facts showing that
there is a genuine, triable issue. Celotex Corp.
v. Catrett, 477 U.S. 317, 324 (1986). The
Court must view the entire record in the light most favorable
to the non-moving party and indulge all reasonable inferences
in that party's favor. O'Connor v. Steeves,
994 F.2d 905, 907 (1st Cir. 1993). Summary judgment is
appropriate if, after viewing the record in the non-moving
party's favor, the Court determines that no genuine issue
of material fact exists and that the moving party is entitled
to judgment as a matter of law.
Motions for Summary Judgment on Ferring's Lanham Act and
Chapter 93A Claims
parties move for summary judgment on Ferring's claims
that Braintree's use of the Canadian Newsletter and
comparison detailer constituted false or misleading
advertising under the Lanham Act and violated Chapter 93A.
Braintree also moves for summary judgment on Ferring's
“Clean Freak” claim.
Lanham Act prohibits “commercial advertising or
promotion” that “misrepresents the nature,
characteristics, [or] qualities” of a product. 15
U.S.C. § 1125(a)(1)(B). To prevail on a claim brought
under that statute, a plaintiff must prove:
(1) the defendant made a false or misleading description of
fact or representation of fact . . . in a commercial
advertisement about [its] own or another's product; (2)
the misrepresentation is material . . .; (3) the
misrepresentation actually deceives or has the tendency to
deceive a substantial segment of its audience; (4) the
defendant placed the false or misleading statement in
interstate commerce; and (5) the plaintiff has been or is
likely to be injured as a result of the misrepresentation,
either by direct diversion of sales or by a lessening of
goodwill associated with its products.
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth
Ave., 284 F.3d 302, 310-11 (1st Cir. 2002), cert.
denied, 537 U.S. 1001 (2002).
are two paths to success on a Lanham Act claim. A plaintiff
can show that an advertisement is “literally
false” in which case consumer deception is presumed.
Clorox Co. Puerto Rico v. Proctor &
Gamble Commercial Co., 228 F.3d 24, 33 (1st Cir. 2000).
Consumer deception is also presumed if a plaintiff
demonstrates an intentional attempt to confuse consumers.
Cashmere, 284 F.3d. at 314, 16. Alternatively, a
plaintiff may show that an advertisement is “literally
true or ambiguous” but misleads consumers.
Chlorox, 288 F.3d at 33. For misleading
advertisements, a plaintiff must prove that consumers were
actually misled which is commonly accomplished through
consumer surveys. Id. at 36.
advertisement is considered material under the Lanham Act if
it is “likely to influence the purchasing
decision.” Cashmere, 284 F.3d. at 311. The
materiality requirement is also met if the statement concerns
one of the product's “inherent
characteristic[s].” Id. at 312.
standing to pursue a Lanham Act claim, a plaintiff must
demonstrate that it is within the zone of interests protected
by § 1125(a) by
alleg[ing] injury to a commercial interest in reputation or
Lexmark Int'l, Inc. v. Static Control
Components, Inc., 134 S.Ct. 1377, 1390 (2014).
Furthermore, a plaintiff must show that the defendant's
false or misleading promotion proximately caused financial or
reputational damage. Id. at 1391.
Canadian Adverse Reaction Newsletter
addition to Prepopik, Ferring produces a chemically-identical
treatment called “Pico-Salax” which is sold in
other countries. After the Food and Drug Administration
(“FDA”) approved Prepopik, Ferring issued a press
release stating that:
Ferring has a long history in the international
gastroenterology market, where PREPOPIK is available in
Canada (marketed under the name PICO-SALAX) . . . .
Prepopik and Pico-Salax have the same chemical composition,
there are several purported differences between the
treatments. Prepopik must be prescribed but Pico-Salax is
available over the counter. The Prepopik instructions direct
users to consume approximately two liters of fluid, while the
Pico-Salax instructions indicate that users should consume
three to four liters of fluid. Furthermore, Prepopik is only
approved for adult colonoscopy preparation, whereas
Pico-Salax is approved for children and adults in preparation
for x-rays, surgeries and colonoscopies.
Canadian government published an article about Pico-Salax in
January, 2013, in the Canadian Adverse Reaction
Newsletter, Vol. 23, Issue 1. The Canadian Newsletter
The diarrhea produced by [Pico-Salax] can lead to dehydration
and loss of electrolytes, particularly sodium which may
result in hyponatremia and convulsions . . . . As of June 30,
2012, Health Canada received 11 reports of convulsions
suspected of being associated with Pico-Salax.
contends that, in violation of the Lanham Act and Chapter
93A, Braintree used the Canadian Newsletter to make false and
misleading statements about Prepopik. ...