Illinois Tool Works, Inc. v. Rust-Oleum Corp., No. 19-20210 (5th Cir. 2020)Annotate this Case
Illinois Tool Works, maker of Rain-X, filed suit against Rust-Oleum over a commercial for its competing product, RainBrella. Illinois Tool Works alleged that the commercial made three false claims. After a jury ruled in favor of Illinois Tool Works, it awarded the company over $1.3 million. The district court then reduced the corrective-advertising award.
The Fifth Circuit held that Illinois Tool Works failed to present sufficient evidence showing that Rust-Oleum's profits were attributable to the Lanham Act violation. Therefore, the court vacated the disgorgement-of-profits award, holding that there was no causal connection between Rust-Oleum's false advertising and its profits. The court never explicitly condoned a prospective corrective-advertising award, but saw no principled reason to prohibit them categorically. In this case, because Illinois Tool Works offered no evidence to support the corrective-advertising award, the court held that a jury could not have reasonably awarded any amount to Illinois Tool Works. Finally, the court held that the evidence was insufficient to support the district court's injunction against Rust-Oleum for making the 100-car-washes claim.
Therefore, the district court erred in denying Rust-Oleum's renewed motion for judgment as a matter of law. The court vacated the damages award and reversed the district court's judgment enjoining Rust-Oleum from making its 100-car-washes claim. The court affirmed the district court's judgment enjoining Rust-Oleum from making the other advertising claims.