In a decision entered on December 18, 2012, the U.S. Court of Appeals for the Eleventh Circuit, on its own motion, vacated the September 11, 2012 opinion summarized in our September 18 post. The 11th Circuit substituted a new opinion for its September 11 opinion. The new opinion repeats, and thus leaves untouched, the trademark fraud defense principles we discussed. Also unaffected is the ultimate rejection of plaintiff’s false advertising claim, but the grounds for affirming that rejection have now been modified.
Recap of Judge Pryor’s Dissent in the September 11 Opinion (Sovereign Military II)
The text changes incorporated into the new opinion focus on the evidentiary issue over which 11th Circuit Judge William H. Pryor had dissented from the September 11 opinion. The new opinion adopts Judge Pryor’s reasoning on that issue, i.e., that the district court had abused its discretion in allowing, over an objection, testimony by Mr. Nicholas Papanicolaou on behalf of the defendant, The Florida Priory. Mr. Papanicolaou, the Grand Master of The Ecumenical Order (the parent organization of The Florida Priory), had testified about the history concerning The Florida Priory and the plaintiff, Sovereign Military Hospitaller Order of Saint John of Jerusalem or Rhodes and of Malta (“Plaintiff Order”). Through that testimony, The Florida Priory sought to establish that it did, in fact, have a shared history with Plaintiff Order and that therefore, the district court should rule against Plaintiff Order on its false advertising claim.
In its false advertising claim, Plaintiff Order had contended that The Florida Priory, through the Ecumenical Order, “falsely claimed a historic affiliation with Plaintiff Order going back to the eleventh century.” Plaintiff Order had argued “that The Florida Priory’s adoption of Plaintiff Order’s pre-1798 historical lineage and corresponding record of charitable activities is likely to deceive customers into contributing money to The Florida Priory.”
The district court had considered conflicting testimony and sided with The Florida Priory, entering judgment against Plaintiff Order on its false advertising claim. In its September 11 opinion, the 11th Circuit upheld the district court’s decision to admit Mr. Papanicolau’s testimony. As we discussed in our September 18 post, Judge Pryor dissented from that part of the September 11 ruling because Mr. Papanicolaou had never been qualified to testify as an expert witness and because as a lay witness, he did not have first-hand knowledge of the historical events on which he testified.
The New Text Appearing in the December 18 Opinion (Sovereign Military III)
In its new opinion, the Eleventh Circuit now recognizes that there were two independent grounds on which the district court rejected Plaintiff Order’s false advertising claim: (1) The Florida Priory did, in fact, share a pre-1798 history with Plaintiff Order; “and (2) because ‘the Florida Priory expressly associates itself with the Ecumenical Order, a non-Catholic organization.’” Ground (2) did not appear in the Eleventh Circuit’s September 11 opinion. That is important here because, as discussed below, this previously-unmentioned ground forms the alternative basis on which the Eleventh Circuit has now been able to affirm the district court’s rejection of the false advertising claim, despite finding that the district court did, in fact, abuse its discretion when it admitted Mr. Papanicolau’s testimony.
In reversing itself over the challenged testimony, the Eleventh Circuit essentially echoed the reasoning of Judge Pryor’s earlier dissenting opinion:
We acknowledge that the district court erred when it permitted Papanicolaou, a lay witness, to testify about historical matters. Papanicolaou had neither “personal knowledge” of the historical facts about which he spoke, Fed. R. Evid. 602, nor could he offer testimony in the form of an opinion based on his “perception” of those historical facts. Fed. R. Evid. 701. Papanicolaou should have been qualified as an expert witness.
However, the Eleventh Circuit then characterized the district court’s error as “harmless”:
Nevertheless, “[w]here a District Court abuses its discretion in admitting evidence, we may still find the error harmless.” United States v. Gamory, 635 F.3d 480, 492 (11th Cir. 2011) (citation omitted). An evidentiary error is harmless if “sufficient evidence uninfected by any error supports the verdict, and the error did not have substantial influence on the outcome of the case.” United States v. Khanani, 502 F.3d 1281, 1292 (11th Cir. 2007) (internal quotation marks and citation omitted).
* * *
We conclude that despite its abuse of discretion in allowing Papanicolaou to testify, the district court was not “substantially swayed” by Papanicolaou’s inadmissible testimony because the holding’s alternative ground–that The Florida Priory is non-Catholic–is sufficient to uphold the district court.
* * *
And of course, by its very name, the Ecumenical Order is an interdenominational organization. It is evident, therefore, that the district court’s admission of Papanicolaou’s testimony was harmless, given that his testimony had nothing to do with the district court’s alternative ground for dismissing Plaintiff Order’s false advertising claim.
At bottom, the district court erred when it allowed Papanicolaou to testify–that much is true. Nevertheless, we conclude that the district judge was not substantially swayed by Papanicolaou’s testimony, because the uninfected evidence–namely, The Florida Priory’s unequivocally interdenominational nature–rendered moot any possibility that the alleged deceptions about Napoleonic history would influence purchasing decisions.
Consequently, despite the different conclusion on the evidentiary issue now reflected in the December 18 opinion, the ultimate result is the same: the false advertising claim remains out of the case, and no other portion of the September 11 opinion was affected.
As one might suspect, the new opinion has no dissent.
The new decision is Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, The Ecumenical Order, No. 11-15101, ___ F.3d ___, 2012 U.S.App.LEXIS 26125 (11th Cir. Dec. 18, 2012).
 Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, The Ecumenical Order, No. 11-15101, ___ F.3d ___, 2012 U.S.App.LEXIS 26125, at *3 (11th Cir. Dec. 18, 2012) (Sovereign Military III).
 Sovereign Military III, 2012 U.S.App.LEXIS 26125, at *32-*33.
 Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, The Ecumenical Order, 816 F.Supp.2d 1290, 1302 (S.D. Fla. 2011) (Sovereign Military I).
 Sovereign Military III, 2012 U.S.App.LEXIS 26125, at *15 (quoting Sovereign Military I, 816 F.Supp.2d at 1301-02).
 See Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, The Ecumenical Order, 694 F.3d 1200, 1209 (11th Cir. 2012) (Sovereign Military II).
 Sovereign Military III, 2012 U.S.App.LEXIS 26125, at *35.
 Id. at *35-*37 (citation omitted).