Morrison Foerster Defeats False and Deceptive Advertising Counterclaims for Alcon Vision

On May 26, Morrison Forester defeated a trio of counterclaims and several defenses asserted against its client Alcon Vision (Alcon) in the Eastern District of New York. 

Alcon sued Lens.com to stop it from importing and selling gray market Alcon contact lenses in the United States. Alcon’s lawsuit accuses Lens.com of infringing its trademark rights by importing and reselling in the United States certain contact lenses bearing Alcon’s trademarks that Alcon distributes solely outside the U.S. 

Lens.com countered by accusing Alcon of various anticompetitive strategies. Lens.com accused Alcon of false advertising from the use of allegedly misleading symbols on packaging Alcon uses for contact lenses sold outside the United States, including copyright and trademark symbols, the CE symbol, and the statement “Rx Only.” Lens.com claimed those symbols and words falsely conveyed that the lenses comply “with all FDA regulations” and “may lawfully be sold in the United States.” Judge Nina Gershon dismissed that counterclaim, finding that Lens.com failed “to plausibly allege literal falsity,” and further, failed to alleged any facts that “would allow me to draw a plausible inference that a significant number of consumers were misled,” noting that the symbols and words can have different meanings than what Lens.com asserted. She also rejected Lens.com’s claim that the use of a U.S. flag on the packaging would be understood to mean “made in the U.S.”  

Judge Gershon also dismissed two New York state law deceptive trade practice counterclaims because Lens.com failed to allege any consumers in New York were deceived. 

And she struck one of Lens.com’s affirmative defenses because Lens.com failed to link Alcon’s trademarks to the alleged misdeeds underlying that defense, which were antitrust in nature. She also struck a copyright first sale doctrine defense because Alcon had not included any copyright claims in its complaint. 

The MoFo team advising Alcon was led by San Francisco partner Jennifer Lee Taylor and includes New York partner Jamie Levitt, New York partner Michael Miller, New York associate Janie Buckley, and San Francisco associates Sabrina Larson and Nick Herrera.