S.C. Johnson & Son v. The Clorox Co.

• Citation: 241 F.3d 232
• Decision Date: 01 August 2000
• Docket Number: Docket No. 00-7591
• Parties: (2nd Cir. 2001) S.C. JOHNSON & SON, INC., Plaintiff Appellee, -v.- THE CLOROX COMPANY, Defendant Appellant
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 232

241 F.3d 232 (2nd Cir. 2001)

S.C. JOHNSON & SON, INC., Plaintiff Appellee, -v.- THE CLOROX COMPANY, Defendant Appellant.

Docket No. 00-7591

August Term, 2000

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Argued: December 1, 2000

Decided: February 23, 2001

Defendant-appellant The Clorox Company appeals from a final judgment of the United States District Court for the Southern District of New York (Hon. Thomas P. Griesa) holding a television commercial and a print advertisement literally false under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and permanently enjoining Clorox from disseminating the advertisements.

Affirmed.

[Copyrighted Material Omitted]

STEVEN A. ZALESIN, (Joshua Burstein, on the brief), Patterson, Belknap, Webb & Tyler LLP, New York, N.Y., for Defendant Appellant.

LAWRENCE I. WEINSTEIN, (Kevin J. Perra, Eric German, on the brief), Proskauer Rose LLP), New York, N.Y., for Plaintiff Appellee.

Before: WALKER, Chief Judge, POOLER, Circuit Judge, and HALL, District Judge.^*

HALL, District Judge:

This case involves a Lanham Act challenge to the truthfulness of a television commercial and print advertisement depicting the plight of an animated goldfish in a Ziploc Slide-Loc bag that is being held upside down and is leaking water. Plaintiff-appellee S.C. Johnson & Son manufactures the Ziploc bags targeted by the advertisements. In an Order dated April 6, 2000, the United States District Court for the Southern District of New York (Griesa, J.) permanently enjoined the defendant-appellant, The Clorox Company, manufacturer of Ziploc's rival Glad-Lock resealable storage bags, from using these advertisements. See S.C. Johnson & Son v. The Clorox Co., No. 99 Civ. 11079 (TPG), 2000 WL 423534, 2000 U.S. Dist. LEXIS 4977 (S.D.N.Y. Apr. 19, 2000) ("S.C. Johnson II"). We conclude that the district court did not abuse its discretion in entering this injunction and accordingly affirm.

BACKGROUND

In August 1999, Clorox introduced a 15-second and a 30-second television commercial ("Goldfish I"), each depicting an S.C. Johnson Ziploc Slide-Loc resealable storage bag side-by-side with a Clorox Glad-Lock bag. The bags are identified in the commercials by brand name. Both commercials show an animated, talking goldfish in water inside each of the bags. In the commercials, the bags are turned upside-down, and the Slide-Loc bag leaks rapidly while the Glad-Lock bag does not leak at all. In both the 15- and 30-second Goldfish I commercials, the Slide-Loc goldfish says, in clear distress, "My Ziploc Slider is dripping. Wait a minute!," while the Slide-Loc bag is shown leaking at a rate of approximately one drop per one to two seconds. In the 30-second Goldfish I commercial only, the Slide-Loc bag is shown leaking while the Slide-Loc goldfish says, "Excuse me, a little help here," and then, "Oh, dripping, dripping." At the end of both commercials, the Slide-Loc goldfish exclaims, "Can I borrow a cup of water!!!"

On November 4, 1999, S.C. Johnson brought an action against Clorox under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for false advertising in the Goldfish I commercials. After S.C. Johnson moved for a preliminary injunction, the district court converted the evidentiary hearing on the motion to a trial on the merits under Fed. R. Civ. P. 65(a)(2).

Dr. Phillip DeLassus, an outside expert retained by S.C. Johnson, conducted "torture testing," in which Slide-Loc bags were filled with water, rotated for 10 seconds, and held upside-down for an additional 20 seconds. He testified about the results of the tests he performed, emphasizing that 37 percent of all Slide-Loc bags tested did not leak at all. Of the remaining 63 percent that did leak, only a small percentage leaked at the rate depicted in the Goldfish I television commercials. The vast majority leaked at a rate between two and twenty times slower than that depicted in the Goldfish I commercials.

On January 7, 2000, the district court entered findings of fact and conclusions of law on the record in support of an Order permanently enjoining Clorox from disseminating the Goldfish I television commercials. Specifically, the district court found that S.C. Johnson had shown by a preponderance of the evidence that the Goldfish I commercials are "literally false in respect to its depiction of the flow of water out of the Slide-Loc bag." S.C. Johnson & Son, Inc. v. The Clorox Co., No. 99 Civ. 11079 (TPG), 2000 WL 122209, at *1, 2000 U.S. Dist. LEXIS 3621, at *1-*2 (S.D.N.Y. Feb. 1, 2000) ("S.C. Johnson I").

The court found that "the commercial impermissibly exaggerates the facts in respect to the flow of water or the leaking of water out of a Slide-Loc bag." S.C. Johnson I, 2000 WL 122209, at *1, 2000 U.S. Dist. LEXIS 3621, at *2. The court further found that:

[t]he commercial shows drops of water coming out of the bag at what appears to be a rapid rate. In fact, the rate is about one fairly large drop per second. Moreover, there is a depiction of the water level in the bag undergoing a substantial and rapid decline. Finally, there is an image of bubbles going through the water.

Id. at *1, 2000 U.S. Dist. LEXIS 3621, at *2-*3. The district court found that "the overall depiction in the commercial itself is of a rapid and substantial leakage and flow of water out of the Slide-Loc bag." Id. at *1, 2000 U.S. Dist. LEXIS 3621, at *3. The court noted that "[t]his is rendered even more graphic by the fact that there is a goldfish depicted in the bag which is shown to be in jeopardy because the water is running out at such a rate." Id.

The district court found "that when these bags are subjected to the same kind of quality control test as used by Clorox for the Glad bags, there is some leakage in about two-thirds of the cases." Id. at *2, 2000 U.S. Dist. LEXIS 3621, at *4. However, the court found "that the great majority of those leaks are very small and at a very slow rate." Id. The court found that "[o]nly in about 10 percent of these bags is there leakage at the rate shown in the commercial, that is, one drop per second." Id. The district court further found that "[t]he problem with the commercial is that there is no depiction in the visual images to indicate anything else than the fact that the type of fairly rapid and substantial leakage shown in the commercial is simply characteristic of that kind of bag." Id.

Accordingly, the court held that "the Clorox commercial in question misrepresents the Slide-Loc bag product," and that this "finding relates to the different sizes and types of the Slide-Loc bags because there is no attempt to limit the commercial to any particular category." Id. at *3, 2000 U.S. Dist. LEXIS 3621, at *7. The court entered an injunction, noting that S.C. Johnson had shown irreparable harm sufficient to support an injunction because, as the court found, the Goldfish I commercials are literally false. Id. The district court rejected S.C. Johnson's other theories of relief under section 43(a) of the Lanham Act, including a claim of implied falsity. Id. at *3, 2000 U.S. Dist. LEXIS 3621, at *6-*7. Clorox has not appealed this January 7 permanent injunction relating to the Goldfish I commercials.

In February 2000, Clorox released a modified version of the Goldfish I television commercials as well as a related print advertisement ("Goldfish II"). In the 15-second Goldfish II television commercial, a Ziploc Slide-Loc bag and Glad-Lock bag are again shown side-by-side, filled with water and containing an animated, talking goldfish. The bags are then rotated, and a drop is shown forming and dropping in about a second from the Slide-Loc bag. During the approximately additional two seconds that it is shown, the Slide-Loc goldfish says, "My Ziploc slider is dripping. Wait a minute." The two bags are then off-screen for approximately eight seconds before the Slide-Loc bag is again shown, with a drop forming and falling in approximately one second. During this latter depiction of the Slide-Loc bag, the Slide-Loc goldfish says, "Hey, I'm gonna need a little help here." Both bags are identified by brand name, and the Glad-Lock bag does not leak at all. The second-to-last frame shows three puddles on an orange background that includes the phrase "Don't Get Mad."

In the print advertisement, a large drop is shown forming and about to fall from an upside-down Slide-Loc bag in which a goldfish is partially out of the water. Bubbles are shown rising from the point of the leak in the Slide-Loc bag. Next to the Slide-Loc bag is a Glad-Lock bag that is not leaking and contains a goldfish that is completely submerged. Under the Slide-Loc bag appears: "Yikes! My Ziploc Slide-Loc is dripping!" Under the Glad-Lock bag is printed: "My Glad is tight, tight, tight." On a third panel, three puddles and the words "Don't Get Mad" are depicted on a red background. In a fourth panel, the advertisement recites: "Only Glad has the Double-Lock green seal. That's why you'll be glad you got Glad. Especially if you're a goldfish."

After these advertisements appeared, S.C. Johnson moved to enlarge the January 7 injunction to enjoin the airing and distribution of the Goldfish II advertisements. On April 6, 2000, after hearing oral argument, the district court entered another order on the record, setting forth further findings of fact and conclusions of law in support of an Order permanently enjoining the distribution of the Goldfish II television commercial and print advertisement. The district court explicitly noted that it was "in a position, in [its] view, to decide the case based on the existing evidence without further evidence." S.C. Johnson II, 2000 WL 423534, at *1, 2000 U.S. Dist. LEXIS 4977, at *1.

The court incorporated by reference its prior findings of fact from its January 7, 2000 Order, stating that it would "not attempt to repeat what was said in the earlier decision, although a great deal of it applies to the issue now...