Church & Dwight Co., Inc. v. The Clorox Company - Document 51
OPINION AND ORDER: The Court hereby grants C & D's request for a preliminary injunction. Specifically, Clorox is hereby enjoined, immediately, from further airing the commercial in question. The Court further directs the parties to jointly call Chambers by no later than January 6, 2012 to schedule further proceedings in this case. (Signed by Judge Jed S. Rakoff on 1/3/2012) (rdz)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
CHURCH & DWIGHT CO., INC.,
11 Civ. 1865 (JSR)
OPINION AND ORDER
THE CLOROX COMPANY,
JED S. RAKOFF, U.S.D.J.
By this action, plaintiff Church
among other things, to preliminarily enjoin defendant Clorox Pet
Products Company ("Clorox")
from airing a commercial that makes
allegedly misleading claims about the respective merits of each
party's cat litter.
On June 17, 2011, the Court held an evidentiary
hearing on the "lab test" Clorox used to support the claims made in
This was followed by substant
Having now reviewed these materials at length, the Court finds that
Clorox's test is insufficiently reliable to meet the required legal
standards and that the commercial is 1
harm if not enjoined.
ly to cause C & D irreparable
McNeil-P.C.C., Inc. v. Bristol-Myers Squibb
Co., 938 F.2d 1544, 1549 (2d Cir. 1991).
Thus, for the reasons
explained below, the Court grants C & D's request for a preliminary
injunction enjoining further use of the commercial
C & D manufactures several kinds of cat litter that
incorporate Arm & Hammer baking soda under the Arm & Hammer trademark.
Those varieties include Arm & Hammer Double Duty Clumping Litter
("Double Dutyll) and Arm & Hammer Super Scoop Clumping Litter ("Super
Clorox manufactures "Fresh Stepll cat litter products, which
utilize carbon instead of baking soda as an odor-fighting ingredient.
In the Fall of 2010, Clorox started airing certain commercials
that immediately preceded the commercial here in dispute.
commercial, cats were depicted choosing litter boxes filled with Fresh
Step over litter boxes filled with Super Scoop.
S. Cohen dated March 21, 2011 ("Cohen Decl.
Declaration of David
11 & Ex. 2.
this was occurring, the voiceover explained that "cats like boxes
. with Fresh Step litter inside .
because Fresh Step's
scoopable litter with carbon is better at eliminating odors than Arm &
In another commercial, cats were first depicted
stepping into the box containing Super Scoop and then stepping out of
the box and choosing the box with Fresh Step.
Id. Ex. 3.
of 2011, Clorox began airing still another commercial that displayed
cats engaging in "clever" behavior.
As the videos played, the
"Cats are smart.
choose the litter with less odors.1I
They can outsmart their
They're also smart enough to
Id. Ex. 4.
C & D alleges that it then commissioned a test to replicate these
situations and found that of the 158 cats tested, only six cats -
than four percent - rejected their litter box when the litter box was
filled with Super Scoop.
Complaint ~ 40.
By contrast, eight cats
or five percent - allegedly rejected a litter box filled with Clorox's
Fresh Step litter.
As a result, on January 5, 2011, C & D filed
a complaint against Clorox, claiming that the aforementioned
commercials were literally false.
permanently discontinue the commercials, id.
Clorox agreed to
13, and C & D
voluntarily dismissed the complaint on February 2, 2011.
Sometime around February 14, 2011, Clorox began airing a new
commercial, the one here in issue.
14 & Ex. 6.
commercial, cats are featured doing "clever" things and the voiceover
"We get cats.
And their canines."
They can outsmart their
Then a cat is seen entering a litter box
and pawing through the litter as the voiceover continues, "That's why
they deserve the smartest choice in litter."
The commercial then
transitions to a demonstration that displays two laboratory beakers.
One beaker is represented as Fresh Step and the bottom of it is filled
with a black substance labeled "carbon."
The other beaker is filled
with a white substance labeled "baking soda."
While the second
beaker is not identified as any specific brand of cat litter, Arm &
Hammer is the only major cat litter brand that uses baking soda.
Green gas is then shown floating through the beakers and the
voiceover continues: "So we make Fresh Step scoopable litter with
carbon, which is more effective at absorbing odors than baking soda."
The green gas in the Fresh Step beaker then rapidly evaporates while
the gas level in the baking soda beaker barely changes.
Id. ~ 18.
During this dramatization, small text appears at the bottom of the
screen informing the viewer that Clorox's claims are "[b]ased on [a]
sensory lab test."
at ~ 19.
leges that the new commercial contains several false
messages, including, inter alia, that cat litter products made with
baking soda do not eliminate odors well and that cat litter products
made with baking soda are less effective at eliminating odors than
Clorox's Fresh Step cat litter.
In order to establish its entitlement to a preliminary
injunction, C & D must show:
irreparable harm and (b) either (1)
likelihood of success on the merits or (2) sufficiently serious
questions going to the merits to make them a fair ground for
litigation and a balance of hardships tipping decidedly toward the
party requesting the preliminary relief."
Citigroup Global Markets,
Inc. v. VCG Special Opportunities Master Fund Ltd., 598 F.3d 30, 35
(quoting Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc.,
(2d Cir. 2010)
596 F.2d 70, 72
(2d Cir. 1979».
Success on the merits under
of the Lanham Act requires a demonstration that the challenged
advertisement is either (1)
face," or (2)
"while not literally false,
mislead or confuse consumers."
F.3d 93, 112 (2d Cir. 2010)
i.e., false on its
. nevertheless likely to
Inc. v. eBay, Inc., 600
(quoting Time Warner Cable, Inc. v.
DIRECTV, Inc., 497 F.3d 144, 153 (2d Cir. 2007».
Where, as here,
scientific or technical evidence is said to establish an advertiser's
claim (a so-called "establishment claim"), a plaintiff can prove
literal falsity by showing that the test "did not establish the
proposition for which [it was] cited" because it is either "not
sufficiently reliable to permit a conclusion" or "simply irrelevant."
Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 63
(2d Cir. 1992)
Thus, C & D's likelihood of success on the merits depends upon its
ability to show that Clorox's sensory lab test is "not sufficiently
reliable" or "simply irrelevant."
To support its claim that carbon better eliminates cat malodor
than baking soda, Clorox conducted an in-house test called the "Jar
In the Jar Test, Clorox prepared separate containers of:
fresh cat feces covered with carboni
(ii) fresh cat urine covered with
(iii) fresh cat feces covered with baking sodai
urine covered with baking sodaj
(iv) fresh cat
(v) uncovered fecesi and (vi)
See Declaration of Jodi Russell dated March 24, 2011
After letting the sealed containers sit for
twenty-two to twenty-six hours, the containers were placed in three
sensory testing booths
one containing the carbon samples, one
containing the baking soda samples, and one containing the uncovered
feces and urine as a control - and eleven panelists rated the samples
on a 0 to 15 scale.
12, 14 15.
This experiment was repeated
four times, for a total of forty-four samplings.
was found to reduce odor from 2.72 to 0 while baking soda was found to
reduce odor only from 2.72 to 1.85.
Reducing odor from
2.72 to 1.85 represents a 32% decrease, precisely the decrease that is
represented in the demonstration shown in Clorox's commercial.
Clorox trained the eleven panelists used in the Jar Test to
evaluate odors on a specific scale, which its expert witness devised.
According to Clorox, the sensory evaluation method
here employed by Clorox has been reviewed in textbooks and peer
reviewed journals, and is taught in more than forty universities in
the United States.
See Transcript of June 17, 2011 hearing ("Tr.lf) at
Over the course of their training, panelists smelled
identical smells at different levels of intensity in order to develop
a common metric for pungency.
Id. at 89:17 22.
smelled different litter products, both with and without cat
excrement, in order to learn to discriminate between cat malodor and
other odors present in litter.
Russell dated March 27, 2011
Supplemental Declaration of Jodi
Clorox taught its panelists that,
when they could not detect a certain olfactory stimuli, they should
note that absence by giving that odor a rating of zero.
See Tr. at
As it turned out, all eleven panelists gave a malodor
rating of zero whenever cat excrement was treated with carbon,
resulting in a score of zero for each of the forty-four trials.
C & D criticizes the reliability of the Jar Test in at least
First, it argues that Clorox's commercial broadly
claims that Fresh Step cat litter outperforms C & DIs products in
eliminating odorl a claim the Jar Test cannot support.
argues that certain aspects of the Jar Test - particularly the
uniformity of the panelists
findings that carbon completely
eliminates cat malodor - are so suspicious as to render the Jar Test
unreliable even for the narrower proposition that carbon better
eliminates odor than baking soda.
it argues that the Jar Test
is unreliable because it failed to use a ratio scale to compare
degrees of malodor.
The Court considers C & DIs first two criticisms
finding them meritorious
has no need to reach the third.
C & DIs first criticism may be elaborated as follows.
the doctrine of "falsity by necessary implication,lI a company's claims
about particular aspects of its product may necessarily imply more
sweeping claims about that product, and these implied claims may be
"literally false" within the meaning of the Lanham Act.
Inc. v. Pennzoil Co., 987 F.2d 939
947 (3d Cir. 1993)
implication is that Pennzoil outperforms the other leading brands with
respect to protecting against engine failure
because it outperforms
them in protecting against viscosity breakdown, the cause of engine
Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144,
158 (2d Cir. 2007)
A court must analyze the
disputed message in its "full context,lI Time Warner Cable, 497 F.3d at
158 (quoting Pennzoil, 987 F.2d at 946)
to determine whether its
"words or images, considered in context, necessarily imply a false
Because an implication must be necessary in order to
render the commercial's claims false,
"if the language or graphic is
susceptible to more than one reasonable interpretation, the
advertisement cannot be literally false.
C & D argues that under the doctrine of necessary implication,
Clorox's claims about the superiority of carbon to baking soda
necessarily imply that Fresh Step cat litter better eliminates odors
than do Arm & Hammer litters that use baking soda.
responds that one could reasonably interpret its commercial as simply
comparing the general odor-reducing properties of carbon and baking
soda, Clorox has not identified any basis for believing that any
consumer who pays attention to its commercial reasonably cares about
how effectively carbon works compared with baking soda outside the
context of cat litter and competing litter products.
The Jar Test cannot reasonably support the necessary
implication that Clorox's litter outperforms C & D's products in
eliminating odor in cat litters.
As noted above, Clorox sealed the
jars of cat waste for twenty-two to twenty-six hours before subjecting
them to testing.
In actual practice, however, cats do not seal their
waste, and smells offend as much during the first twenty-two hours as
they do afterwards.
Thus, the Jar Test's unrealistic conditions say
little, if anything, about how carbon performs in cat litter in
circumstances highly relevant to a reasonable consumer.
substantiate the commercial's implied claims, the Jar Test must prove
not only that carbon eliminates odors in open cat litter (as opposed
to sealed jars), but also (1) that it outperforms baking soda in that
task and (2)
that baking soda eliminates only thirty-two percent of
odors, the amount by which, in the commercial, the gas dissipated in
the beaker labeled "baking soda."
Given that the Jar Test says little
about how substances perform in litter as opposed to jars, it cannot
possibly support Clorox's very specific claims with regard to litter.
Consequently, the necessarily contrary implication of Clorox's
commercials is literally false.
C & D's second crit
ism is that flaws in the methodology of
the Jar Test render its conclusions unreliable.
In particular, C & D
notes that the uniformity with which panelists found that cat
excrement treated with carbon contained "zero" malodor is highly
implausible, and more likely reflects flaws in their in-house training
or objectivity than any reliable result.
See Tr. at 35:21-36:18.
C & D maintains that humans are "noisy instruments" that, for
neurological reasons, perceive the exact same thing differently at
different times and report the presence of olfactory stimuli even
where they do not exist.
Id. at 34:14-17; see also Declaration of
Daniel Ennis dated April 11, 2011
Thus, given the variation
even among the same person's reports at different times, C & D argues
that eleven different people almost certainly would not uniformly
report the same experience forty four times.
C & D further notes that Clorox's own studies support this
First, in an internal panel validation test report
which involved cat litter - Clorox/s panelists gave an average malodor
score of greater than zero to a box of litter that admittedly
contained no cat excrement.
Second l in an
See Tr. 129:22-130:2.
earlier iteration of the Jar Test l eighteen percent of trials resulted
in a report of some malodor in jars of excrement treated with carbon.
Declaration of B. Thomas Carr dated April 51 2011
14 & Ex. A.
Third l even Clorox/s expert confirms that "[h]umans l even highly
trained sensory panelists l are 'noisyl measuring instruments .
For a variety of physiological and psychological reasons
not perceive and report exactly the same value when evaluating the
same sample repeatedly.1I
Clorox responds that the mere fact that humans are noisy
instruments does not preclude a uniform rating of zero where no
malodor was in fact present.
Moreover, according to Clorox l most of
the studies showing that humans report experiencing stimuli even where
none exists do not involve trained panelists such as those Clorox
These arguments misunderstand C & D's point.
evidence acknowledges that humans, even trained panelists, report
smells even when none are present.
Thus, the Court agrees with
C & D's expert that it is highly implausible that eleven panelists
ck their noses in jars of excrement and report forty-four
independent times that they smelled nothing unpleasant. 1
the Court concludes that the results of the Jar Test are "not
sufficiently reliable to permit one to conclude with reasonable
certainty that they established the proposition for which they were
in Clorox's commercial.
Castrol, Inc. v. Quaker State Corp.,
977 F.2d 57, 62-63 (2d Cir. 1992).
In short, because the Jar Test on which Clorox based its
claims is unreliable and, even if it were reliable, could not possibly
support Clorox's implied claims about the relative merits of carbon
and baking soda in cat litter, the Court finds Clorox's claims are
Based on this literal falsity,
C & D has met
the requirement of likelihood of success on the merits.
Having met that requirement, C & D must further show that
failure to enjoin Clorox will cause it irreparable harm.
Global Markets, Inc. v. VCG Special Opportunities Master Fund Ltd.,
598 F.3d 30, 35 (2d Cir. 2010).
is literally false,
Under older law, if an advertisement
"the court may enjoin the use of the claim without
reference to the advertisement's impact on the buying public."
McNeil-P.C.C., Inc., 938 F.2d at 1549 (quoting Coca-Cola Co. v.
Tropicana Products, Inc., 690 F.2d 312, 317 (2d Cir. 1982».
ITaking the average false alarm rate of 14~ from Kyle E.
Mathewson et al., To See or Not to See, 29 J. NEUROSCIENCE 2725,
2727 (2009), the statistical probability of Clorox's results is
Even assuming that Clorox's training and selection of
panelists reduced the average false alarm rate to 7~ (half of the
observed average) the probability of Clorox's results is still
recently, the formulation has been that "the likelihood of irreparable
harm may be presumed where the plaintiff demonstrates a likelihood of
success in showing that the defendant's comparative advertisement is
literally false and that given the nature of the market, it would be
obvious to the viewing audience that the advertisement is targeted at
the plaintiff, even though the plaintiff is not identified by name."
Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 148 (2d
While Clorox argues that the Supreme Court cautioned in
Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393
(2006), against the
use of presumptions in the context of establishing irreparable harm,
the Second Circuit decided Time Warner after eBay.
In any case, the Court concludes that,
aside, C & D has proved a likelihood of irreparable harm on the facts
of this case.
Clorox's commercial bore the
One of the beakers
label "baking soda," and, as noted, C & D is the only major
manufacturer of cat litter that uses baking soda as a deodorizing
Consumers shopping for cat litter
overwhelmingly identify baking soda with C & D's Arm & Hammer cat
Finally, the commerc
shares themes with
Clorox's former commercials - e.g., reference to cats' intelligence
and cleverness - recalling those former commercials' expl
of C & D's products.
direct as those
These comparisons are at least as
Time Warner, where the Court found that viewers of
a commercial that disparaged "cable" in an area in which Time Warner
served as the exclusive cable provider would "undoubtedly understand"
that criticism to apply to Time Warner specifically.
497 F.3d at 162.
Put simply, Clorox, cloaking itself in the authority of "a lab
test," made literally false claims going to the heart of one of the
main reasons for purchasing cat litter.
In such circumstances, where
the misrepresentation is so plainly material on its face, no detailed
study of consumer react
that Clorox is likely to
is necessary to conclude inferentially
customers from C & D's products to its
own unless the offending commercial is enjoined.
successfully shown a
Because C & D
Thus, C & D has
likelihood of irreparable harm.
shown that it will likely succeed on the
merits and that it will suffer irreparable harm if a preliminary
injunction is not granted, the Court hereby grants C & D's request for
a preliminary injunction.
Specifically, Clorox is hereby enjoined,
airing the commercial
Court further directs the parties to jointly call Chambers by no later
than January 6, 2012 to schedule further proceedings in this case.
Dated: New York, New York
January 3, 2012
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