Revlon, Inc. v. Carson Products Co.

• Citation: 602 F. Supp. 1071
• Decision Date: 21 March 1985
• Docket Number: No. 82 Civ. 4326 (IBC).,82 Civ. 4326 (IBC).
• Parties: REVLON, INC., a Delaware corporation, Plaintiff, v. CARSON PRODUCTS CO., a Georgia corporation, Defendant.
• Court: U.S. District Court — Southern District of New York

602 F. Supp. 1071

REVLON, INC., a Delaware corporation, Plaintiff, v. CARSON PRODUCTS CO., a Georgia corporation, Defendant.

No. 82 Civ. 4326 (IBC).

United States District Court, S.D. New York.

January 30, 1985.

As Amended March 21, 1985.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Wigman & Cohen, P.C., Arlington, Va., Cooper, Dunham, Clark, Griffin & Moran, New York City (Herbert Cohen, George C. Meyers, Jr., Arlington, Va., Gerald W. Griffin, Thomas G. Carulli, New York City, of counsel), for plaintiff.

Wyatt, Gerber, Shoup, Scopey & Badie, New York City (Gerald F. Dunne, New York City, William H. Needle, Lawrence K. Nodine, Atlanta, Ga., of counsel), for defendant.

OPINION

IRVING BEN COOPER, District Judge.

Plaintiff, an international company engaged in the business of beauty and health products and services, brings this action for a judgment pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, declaring that two patents issued to defendant, U.S. Patent No. 4,304,244 ("`244 patent") and U.S. Patent No. 4,373,540 ("`540 patent") for a hair straightening and curling process are invalid, unenforceable and not infringed. Defendant, a company based in Savannah, Georgia manufactures cosmetics for the black ethnic market, and counterclaims for injunctive relief and damages, alleging that two hair straightening products made by plaintiff sold under the trademarks "FABULAXER" and "CREME OF NATURE" infringe defendant's patents.¹ The case was tried to the Court on January 3 to January 13, 1984 and was bifurcated (the issue of liability to be determined first); damages reserved pending our decision thereon. At the conclusion of the trial decision was reserved. Post trial memoranda and proposed findings of fact and conclusions of law were filed on March 7 and 8, 1984; replies were filed on April 2 and 3, 1984.

FACTS

A prerequisite to a determination of the issues presented by this conflict requires at least a brief analysis of the structure of human hair and the chemistry of formulas created to treat it.

A. The Structure of Human Hair

The molecules of human hair are composed of keratin, a natural fibrous protein containing 18 amino acids which are organic compounds that compose protein molecules. (Ex. 35)² A vertical strand of the keratin molecule is called a polypeptide; the polypeptides are cross-linked by hydrogen bonds on one plane and by two sulpher atoms on another, the latter creating very tough disulphide bonds called cystine. (Tr. 69-70; Ex. 38I, Paper 6, Du Yung Hsiung article at 1156; Ex. W). The strength of the cystine is responsible for maintaining the natural configuration of a person's hair. It follows that in order to permanently change the hair's characteristics, the cystine must be broken down. The application of highly alkaline substances accomplishes this goal, making the hair malleable. At that point, it may be reset into a new configuration; the broken disulphide bonds will reform either by leaving single sulfer bonds with excess unattached sulfer atoms in the hair, or the excess sulfer atoms will reconnect with the bonded sulfer atoms in new places, forming new disulphide bonds in the new hair shape. (Ex. 246I, Hendrix, at 30). In this manner, one with naturally curly hair is able to get straight hair and one with naturally straight hair obtains a permanent wave. The challenge centers upon the substances which most effectively bring about the desired result.

B. Chemistry of Formulas that Treat Hair

In the early 1970's several methods were employed to straighten curly hair. One approach involved the application of pressing oil and a hot comb to the hair; this resulted in steaming and stretching hair. (Tr. 57-58; 307). Since this formula lacked alkalinity, it broke only the hydrogen bonds (Ex. 38I, Paper 6, Du Yung Hsiung article at 1156), not the cystine, causing only a temporary alteration along with some damage to the hair. (Tr. 58).

A second formula called "Vigorol" contained ammonium thioglycolate or sulfite as its key ingredient.³ Its main drawback was that a few days after application the hair often reverted to its original curly state. (Tr. 307-08).

The most effective hair straightening formula used at that time was sodium hydroxide, commonly referred to as "lye." Sodium hydroxide has a very high "pH" — meaning the measurement of the acidity or alkalinity of a substance on a scale from one to fourteen in which one is the most acidic and fourteen is the most highly alkaline. (Tr. 63). The pH of sodium hydroxide approaches fourteen (Tr. 133), and is very successful in breaking down the tough disulphide bonds, changing the configuration of the fibers when stress (by combing) is applied to the hair. The two main competitors in the sodium hydroxide hair straightening market in the early 1970's were plaintiff and Johnson Products Company.

Cognizant of the problem of scalp irritation that resulted from applying sodium hydroxide to the head and desirous of competing in the hair straightening market, Mr. Mario de la Guardia, president of the defendant corporation, envisioned introducing a straightening product with a neutral pH. To that end, he contacted the Southern Research Institute ("SRI") in Birmingham, Alabama, a non-profit research organization doing research and development for defendant over 20 years. (Tr. 1147-48). The three year research effort at SRI to develop a non-alkali sulfite relaxer similar to compounds used for hair waxing proved unsuccessful. (Tr. 309-11; 1039-45).

In 1975, the Federal Trade Commission ("FTC") issued an order that altered the balance of competition in the hair straightening field. The order required that all hair relaxers containing either sodium hydroxide or potassium hydroxide be labeled as containing lye.⁴ (Stipulated Fact 23; Tr. 312). As should have been expected, consumer reaction to products with that label was negative in the extreme. (Stipulated Fact 24). Intent upon obtaining a competitive advantage in the market of hair straighteners, Mr. de la Guardia sought an effective alkaline formula that did not contain sodium or potassium hydroxide. (Stipulated Fact 25).

The president of the defendant company was successful in his endeavor. After a weekend of experimentation in October 1976 (Tr. 453), he discovered that a formula combining a guanidine salt, an extremely alkaline salt, such as guanidine carbonate and a water soluble hydroxide such as calcium hydroxide would create the desired objective. Irritation, efficacy and stability tests using Mr. de la Guardia's formula were conducted at SRI and elsewhere, and attained positive results. (Tr. 328-31). On June 9, 1977, defendant filed its first patent application for the product; in May 1978, the hair straightener "Dark and Lovely" was introduced on the market. (Stipulated Fact 3; Tr. 330). The label affixed to the box of the product read "contains no lye." On December 9, 1981, the `244 patent was issued to defendant. (Amended Complaint ¶ 4).

"Dark and Lovely" achieved a high sales rate (Ex. K) which negatively impacted consumer sales of plaintiff's products containing sodium hydroxide. Consequently, before any patent had issued on defendant's product, plaintiff and several other competitors in the market began selling hair straighteners with formulas similar to that produced by defendant. (Ex. 246II, Goldberg, at 95-97; Ex. 246II, Bottner, at 18-19; Ex. 246II, Roppolo, at 10-11) Revlon's competitive products are called "FABU-LAXER" and "CREME OF NATURE." Johnson Products' relaxer is named "Gentle Treatment,"⁵ and one put out by Posner is called "Perfect Performance." (Ex. 246II, Roppolo, at 10).

C. Defendant's Patents

Mr. de la Guardia created his formula by combining guanidine carbonate, a commercially available salt, with calcium hydroxide in water. He discovered that under proper conditions, the two chemicals break apart and reform into guanidine hydroxide and calcium carbonate. As a salt, calcium carbonate precipitates out of the solution leaving guanidine hydroxide in solution. As a practical matter, however, the reaction between guanidine carbonate and calcium hydroxide is an equilibrium reaction, i.e., the two chemicals break apart and form guanidine hydroxide and calcium carbonate which (the newly formed guanidine hydroxide and calcium carbonate) in turn quickly break apart and reform into guanidine carbonate and calcium hydroxide. Therefore, the reaction must be driven toward completion; the right conditions must be employed to ensure as much precipitation of the calcium carbonate as possible, leaving more guanidine hydroxide. (Ex. 234, col. 3, lines 54-59; Ex. 235, col. 3, lines 56-61)

According to defendant, proper conditions include: (1) reaction temperatures between 35°F and 140°F (Ex. 234, col. 4, line 33; Ex. 235, col. 4, line 35); (2) use of the solution within 48 hours (Ex. 234, col. 4, line 38; Ex. 235, col. 4, line 39); (3) the presence of hydroxide in at least a stoichiometric⁶ amount, even up to two to five times the stoichiometric amount (Ex. 234, col. 4, lines 41-45; Ex. 235, col. 4, lines 42-46); (4) the reaction product should contain one to fifty percent guanidine hydroxide by weight, most preferably between four to seven percent by weight (Ex. 234, col. 5, lines 36-49; Ex. 235, col. 5, lines 39-52); (5) the guanidine salt should contain 1.2 to 40 percent by weight, preferably 5 to 8 percent by weight (Ex. 234, col. 5, lines 52-64; Ex. 235, col. 5, lines 55-67); (6) a pH value in the reaction product above 11.8, preferably about 12.5 to 13.5 (Ex. 234, col. 6, lines 42-45; Ex. 235, col. 6, lines 45-48); (7) a treatment time of 5 to 45 minutes, preferably 20 to 30 minutes (Ex. 234, col. 6, lines 46-58; Ex. 235, col. 6, lines 49-61); and (8) use of a neutralizing agent (such as a shampoo) after treatment (Ex. 234, col. 6, lines 64-66; Ex. 235, col. 6, lines 67-68).

Conventional additives may be added to defendan...