Orthodontists Assoc. v. Yellow Book USA

United States Court of Appeals
FOR THE EIGHTH CIRCUIT
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No. 04-3521
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American Association of Orthodontists, *
*
Plaintiff - Appellant, *
* Appeal from the United States
v. * District Court for the
* Eastern District of Missouri.
Yellow Book USA, Inc., *
*
Defendant - Appellee. *
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Submitted: May 11, 2005
Filed: January 24, 2006
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Before LOKEN, Chief Judge, BEAM and MELLOY, Circuit Judges.
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LOKEN, Chief Judge.
Yellow Book USA, Inc., publishes “yellow pages” directories that list, by
category, businesses and professionals that pay for the listings. During the time in
question, Yellow Book publications in Missouri included separate listings for
“Dentists,” “Dentists-Orthodontists,” and “Orthodontists (Straightening-Braces).”
The American Association of Orthodontists (“AAO”), a trade organization
representing orthodontists, commenced this action for injunctive relief, alleging that
Yellow Book is violating the Lanham Act, 15 U.S.C. § 1125(a), by listing general
dentists under the categories “Dentists-Orthodontists” and “Orthodontists
(Straightening-Braces)” in Yellow Book publications. The district court1 dismissed
the complaint on the ground that AAO lacks Lanham Act standing, and AAO appeals.
We review a dismissal for lack of standing de novo, accepting as true the material
allegations of the complaint and construing the complaint in favor of the plaintiff.
Gardner v. First Am. Title Ins. Co., 294 F.3d 991, 993 (8th Cir. 2002). We affirm.
The Statute. As relevant here, 15 U.S.C. § 1125(a) provides:
(1) Any person who, on or in connection with any goods or services
. . . uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of
fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she
is or is likely to be damaged by such act.
Subsection (a)(1)(A) is referred to as the false endorsement prohibition; subsection
(a)(1)(B) is referred to as the false advertising prohibition. In general, the statute is
broadly construed as “making certain types of unfair competition federal statutory
torts.” Home Builders Ass’n v. L & L Exhibition Mgmt, Inc., 226 F.3d 944, 947 (8th
Cir. 2000) (quotation omitted).
1
The HONORABLE CAROL E. JACKSON, Chief Judge of the United States
District Court for the Eastern District of Missouri.
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The Complaint. We will briefly summarize the most significant allegations in
AAO’s complaint:
-- AAO “is an association of educationally qualified Orthodontists . . . .
Members of AAO must have . . . completed an accredited orthodontic
program.”
-- It is improper under the American Dental Association’s Principles of Ethics
and Code of Professional Conduct “for a General Dentist to announce a
specialty when the General Dentist has not completed the requisite education
relative to such specialty.”
-- Yellow Book is advertising General Dentists under its “Dentists-
Orthodontists” and “Orthodontists (Straightening-Braces)” listings.
-- Such designations are false “in that General Dentists who have not undergone
specialized training including completion of an accredited orthodontic program
are not Orthodontists and should not be advertised as Orthodontists.”
-- This false advertising is likely to confuse and deceive the public and
irreparably injures AAO and its member orthodontists.
-- AAO seeks preliminary and permanent injunctive relief restraining Yellow
Book from violating 15 U.S.C. § 1125(a) “by listing General Dentists as
Orthodontists in any Yellow Book or other publication . . . when they have not
completed an accredited orthodontic program.”
AAO asserts on appeal, as it did in the district court, that Yellow Book’s listings
violate both the false endorsement prohibition of 15 U.S.C. § 1125(a)(1)(A) and the
false advertising prohibition of § 1125(a)(1)(B).
The Complaint Fails To State a Lanham Act Claim. This is not a typical
Lanham Act claim. AAO’s complaint does not allege that a “general dentist” who
requests to be included in Yellow Book listings for orthodontists is falsely claiming
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endorsement by AAO, nor that the dentist is pretending to be an AAO member.
Rather, AAO complains because the general dentist who is included in Yellow Book’s
orthodontist listings is holding himself out as qualified to perform orthodontics
services (i.e., to compete with AAO members) when he has not obtained an additional
education pedigree that AAO considers to be a necessary qualification.
Dentistry is a profession heavily regulated by the States, including Missouri.
Orthodontics is a sub-specialty of the dental profession. The complaint does not
allege that it is illegal in Missouri for a general dentist to perform orthodontic services
unless he or she has completed “an accredited orthodontic program.” Thus, AAO
seeks an injunction that would usurp the function of the state licensing authorities to
determine who may advertise themselves as qualified to provide this type of
professional dental services. AAO cites no authority for the proposition that the
Lanham Act confers this regulatory authority on the federal courts. We are confident
Congress did not intend to do so.
Absent a specific state law prohibition against general dentists holding
themselves out as orthodontists, the legal determination that any particular dentist is
guilty of false advertising by requesting inclusion in the Yellow Book listings for
orthodontists requires a detailed analysis of that dentist’s qualifications and
experience. As no general dentist is before the court, the injunctive relief requested
by AAO “in gross” may not be granted.
For these reasons, the complaint fails to state a claim upon which the relief
requested can be granted. Therefore, the district court properly granted Yellow
Book’s Rule 12(b)(6) motion to dismiss.
If the Complaint States a Claim, AAO Lacks Standing. Standing includes both
a constitutional and a prudential component. The constitutional requirement,
grounded in Article III case or controversy limitations, consists of three elements:
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First, the plaintiff must have suffered an injury in fact -- an invasion of
a legally protected interest which is (a) concrete and particularized and
(b) actual or imminent, not conjectural or hypothetical. Second, there
must be a causal connection between the injury and the conduct
complained of -- the injury has to be fairly traceable to the challenged
action of the defendant, and not the result of the independent action of
some third party not before the court. Third, it must be likely, as
opposed to merely speculative, that the injury will be redressed by a
favorable decision.
Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992) (quotations and citations
omitted). We agree with the district court that AAO lacks standing under either
subsection of 15 U.S.C. § 1125(a)(1).
1. Section 1125(a)(1)(A) prohibits “false representations concerning the origin,
association, or endorsement of goods or services through the wrongful use of
another’s distinctive mark, name, trade dress, or other device.” Waits v. Frito-Lay,
Inc., 978 F.2d 1093, 1108 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993). The
complaint alleges that Yellow Book’s listings may confuse the public as to whether
AAO or its members have approved the listings. The allegation is far-fetched, but we
accept it as true at this stage of the proceedings. However, even assuming it is true
and a sufficient allegation of injury in fact, the remedy sought -- an injunction barring
Yellow Book from including general dentists who have not completed an accredited
orthodontic program under its orthodontist listings -- would not redress the injury
alleged -- public confusion over whether AAO or its members endorse the Yellow
Book listings. Thus, the favorable decision sought will not redress the injury alleged.
2. Section 1125(a)(1)(B) prohibits false advertising. Applying prudential
standing considerations, a number of circuits have held, categorically, that false
advertising claims not involving misuse of a trademark are actionable only “when
brought by competitors of the wrongdoer.” Waits, 978 F.2d at 1109; accord Telecom
Int’l Amer., Ltd. v. AT&T Corp., 280 F.3d 175, 197 (2d Cir. 2001); Stanfield v.
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Osborne Indus., Inc., 52 F.3d 867, 873 (10th Cir.), cert. denied, 516 U.S. 920 (1995);
L.S. Heath & Son, Inc. v. AT&T Info. Sys., Inc., 9 F.3d 561,575 (7th Cir. 1993).
Other circuits have adopted a less categorical multi-factor test, based on the Supreme
Court’s test for antitrust standing, that focuses judicial enforcement of the Lanham Act
on the protection of commercial interests and the prevention of competitive harm. See
Conte Bros. Auto., Inc. v. Quaker State-Slick 50, Inc., 165 F.3d 221, 233-35 (3d Cir.
1998), followed in Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 562-64 (5th
Cir.), cert. denied, 534 U.S. 945 (2001).
In this case, neither AAO nor its members are competitors of the alleged
wrongdoer. Yellow Book is a publisher, not a competing provider of orthodontic
services. AAO of course urges us to adopt the less categorical approach of Conte
Brothers. But we need not resolve what may be a circuit conflict over the appropriate
test for standing under § 1125(a)(1)(B), because AAO and its members lack standing
to assert this false advertising claim against Yellow Book under either test.
Yellow Book is not the advertiser of orthodontic services when a general dentist
is listed in the orthodontist listings. The dentist is the advertiser; Yellow Book
provides the advertising medium. Absent an allegation that Missouri prohibits all
general dentists from offering orthodontics services unless they have the additional
education or training that AAO would require, a claim that a particular general dentist
is guilty of false advertising by being included in Yellow Book’s orthodontist listings
should be brought against the dentist whose lack of education, training, or experience
is being challenged by an AAO member (or by AAO as an associational plaintiff).
Perhaps this aspect of our analysis is not truly an element of plaintiff’s standing, since
it focuses on who is a necessary defendant given the relief requested. But in our view,
this is without question a proper component of the “prudential considerations defining
and limiting the role of the courts” in exercising their remedial powers to enforce the
Lanham Act. Warth v. Seldin, 422 U.S. 490, 518 (1975).
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The judgment of the district court is affirmed.
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