## Facts

- Web Printing Controls Company, Inc. (WPC) manufactured high-tech printing equipment and affixed its trademark to its products.
- In the late 1970s, WPC was a start-up without a sales force and entered an oral marketing agreement with Oxy-Dry Corporation (Oxy-Dry), an established manufacturer and distributor in the printing market.
- Under the oral agreement, Oxy-Dry would handle sales, “buy” WPC products, and resell them to customers at a markup; WPC would deliver the equipment and provide technical services to customers.
- During the relationship, Oxy-Dry began misbranding WPC products, including by covering WPC’s trademark with a combined Oxy-Dry/WPC mark and by otherwise taking credit for the quality of WPC’s products.
- After WPC objected, the parties reduced their arrangement to a written agreement that included a clause requiring Oxy-Dry to use only WPC’s trademark when selling WPC products.
- Oxy-Dry later resumed the misbranding practices, and the parties’ business relationship ended.
- Although there was only minimal evidence that customers were actually confused by the misbranding, WPC ran a marketing campaign intended to prevent confusion in the marketplace.
- WPC’s campaign was successful and WPC’s sales increased, even after Oxy-Dry introduced its own competing line of equipment.
- WPC sued Oxy-Dry under Lanham Act § 43(a), 15 U.S.C. § 1125(a), asserting “reverse passing off” and seeking monetary (non-injunctive) relief.
- After a bench trial, the district court entered judgment for Oxy-Dry. While accepting much of WPC’s factual account, the court concluded that because WPC sought monetary relief, WPC had to prove actual confusion and resulting injury and had not done so.

## Issues

1. In a Lanham Act § 43(a) reverse passing off claim seeking monetary relief, must the plaintiff prove injury caused by actual consumer confusion to establish a statutory violation?

## Decision

- The Seventh Circuit reversed.
- The court held that to prove a violation of § 43(a), a plaintiff need not prove injury caused by actual confusion, even when the plaintiff seeks non-injunctive relief.
- The case was remanded for further proceedings under the proper legal standard.

## Legal Principles

- “Passing off” generally refers to selling one’s own goods or services under another’s name or mark; “reverse passing off” occurs when a seller removes or obscures the original producer’s mark (without authorization) and resells the producer’s goods as its own.
- Reverse passing off is actionable under Lanham Act § 43(a) as a false designation of origin or false description/representation tied to the source of goods.
- Proof of injury caused by actual consumer confusion is not a required element to establish a § 43(a) violation; the statute reaches conduct with a tendency to mislead or confuse as to source.
- Evidence of actual confusion and proof of harm may matter to the scope and measure of monetary relief, but they are not prerequisites to finding that § 43(a) was violated.
- On appeal, factual findings from a bench trial are reviewed deferentially; the Seventh Circuit accepted the district court’s findings and reversed based on the legal standard applied to those facts.

## Conclusion

Web Printing Controls Co. v. Oxy-Dry Corp. holds that in a § 43(a) reverse passing off action, the plaintiff does not have to prove injury caused by actual consumer confusion to establish a Lanham Act violation, even when seeking monetary relief; the Seventh Circuit therefore reversed the judgment for Oxy-Dry and remanded for further proceedings.


Web Printing Controls Co. v. Oxy-Dry Corp., 906 F.2d 1202 (1990)