Vitarroz Corporation v. River Brand Rice Mills, Inc.

• Decision Date: 12 April 1967
• Docket Number: No. 65 Civ. 2735.,65 Civ. 2735.
• Parties: VITARROZ CORPORATION v. RIVER BRAND RICE MILLS, INC.
• Court: U.S. District Court — Southern District of New York

266 F. Supp. 981

VITARROZ CORPORATION v. RIVER BRAND RICE MILLS, INC.

No. 65 Civ. 2735.

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

April 12, 1967.

Brumbaugh, Free, Graves & Donohue, New York City, for plaintiff.

Watson, Leavenworth, Kelton & Taggart, New York City, for defendant.

RYAN, District Judge.

In this suit charging unfair competition in the sale of packaged rice, defendant has moved for summary judgment. The complaint seeking temporary as well as permanent injunctive relief was filed in September 1965; no motion for temporary injunctive relief has been made by plaintiff.

The complaint, based on diversity, charges that defendant has competed unfairly with plaintiff by copying the "trade dress" originated, adopted and popularized by plaintiff for Blue Rose type rice packaged for sale to "the Puerto Rican market".

Defendant has denied the charges alleged. It has taken depositions of plaintiff's two principal officers. On the basis of these depositions and its affidavits with exhibits attached, defendant moves for judgment for the reason that there is no genuine issue of fact.

Plaintiff has not registered its mark; but defendant registered its mark in 1958 and the time within which to contest its validity has expired. 15 U.S.C. § 1115(b). Plaintiff's claim here is one of unfair competition. The question presented on this motion is, whether the ordinary customer viewing plaintiff's and defendant's packages on a store shelf, is likely to be confused, mistaken or deceived into believing that defendant's package is plaintiff's package.¹

Plaintiff submits a list of the issues which, according to it, preclude the disposition of its claim summarily. These are: whether plaintiff's yellow package has acquired distinctiveness in the market place; whether defendant deliberately copied plaintiff's yellow package, and whether doing so constitutes an extrinsic element of deceit; whether there is likelihood of confusion; whether the trade here involved is more easily confused than the average customer; whether the appearance on the market of 8 other yellow packages of rice of other distributors is the result of defendant's unfair competition; whether the color yellow is being currently used for rice in the "Puerto Rican" market; and whether defendant and its distributors have been palming off their products for plaintiff's. Although numerous, the alleged issues resolve themselves into the simple one of confusion. If there is no copying and no likelihood of confusion, then defendant's intent and the other issues are immaterial.

What is not in dispute is the identity of the plaintiff's and defendant's respective packages; that there are at least 8 other brands of yellow packaged rice at least 4 of which are for "blue rose type" rice, and that while defendant packaged its rice in the same format but in the color white, its package was unobjectionable, presumably because it was not likely to cause confusion.

A visual inspection discloses the following about the packages in suit:

The similarities: they are both 5 lb. paper bags of "shiny, blue rose type" rice, in a yellow packaging with red and green and blue colors — in various places; and there ends the similarity.

The dissimilarities are numerous. To begin with, the names are totally different: plaintiff's name is VITARICE (on one side) and VITARROZ (on the other) printed in large black letters against a red oval and also printed in black hatched letters diagonally across the upper portion of the bag on both sides, beneath the center red oval is the word "brand" and also below the red oval and all growing out of a green oval patch are three light green palm trees, with green trunks; defendant's package has the name "RICO RICE" (on one side) and "RICO ARROZ" (on the other) in large red letters.² The center of the bag shows two multicolored two-inch high fighting roosters, feathers flying, against a background of wavy blue lines forming a rectangle from the upper corner of which sprouts a single palm tree having six dark green branches and a brown trunk; the bottom portion of plaintiff's bag says in black script and block letters "Extra Fancy", "The Finest Rice Shiny `Blue Rose' Type", and below that in light green letters "Distributed by Vitarroz Corporation, Hoboken, New Jersey"; the defendant's package below the roosters says in blue block letters "Coated with Glucose and Talc. Wash before Cooking", then the word "Rice" appears in large red letters, then in blue block letters "Shiny Blue Rose Type", then in red letters "Excelente", and then below that in very large blue, block letters in a red rectangle "RIVIANA" underneath which in small block letters are the words "Riviana Foods Inc., Abbeville, Houston, New York". Plaintiff's bag has a white upper portion and two white side panels on which appear the words "VITARICE" horizontally in black letters and "VITARROZ" vertically in red letters (the converse for the other panel) and on which is black copy telling about the rice; the defendant's bag is yellow all over and running down the sides appear the words in very large red letters "RICO ARROZ" and "RICO RICE" respectively. These are the differences considered separately; they are in our opinion so numerous and so significant as to make the overall packages totally different one from the other.

This brings us to the question of whether the Court may, at this stage, exercise its own judgment as to copying and the likelihood of confusion, when the facts are before it and no other facts are necessary to reach that judgment and do not appear to exist. Of course, confusion is a question of fact, but it is a question of fact which can be resolved summarily in a proper case. We know of no law or logic which places questions of confusion beyond the pale of summary judgment when there is no dispute on the material issues. Certainly, the cases are legion where the Court reached just such a conclusion of copying and likelihood of confusion on the facts before it and, on that finding, granted a preliminary injunction. The Court, on the facts before it, made the comparison and when it granted such relief it determined that there had been copying or that the public was apt to be confused. This is not necessarily, in law, a final determination, but in reality it practically has a fairly final effect on the one guilty of copying or causing confusion. (Colgate-Palmolive Co. v. North American Chemical Corp., D.C., 238 F.Supp. 81, 86; Triumph Hosiery Mills, Inc. v. Triumph International Corp., D.C., 191 F.Supp. 937.) Where the similarity or copying is so obvious as to leave no doubt that it is likely to cause confusion or mistake or deceive purchasers as to the source of the origin of the goods and the alleged copier can raise no genuine issue as to this, the Court may, as a matter of law, grant summary judgment and a permanent injunction to the plaintiff (Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494 (C.A.2, 1962)). This is just such a case — with the opposite result; and it is also a case where the so-called issue of fact is an issue of law, which we shall discuss later.

If the Court can determine likelihood of confusion as a matter of law, there is no reason why it may not determine absence of such likelihood of confusion (See Upjohn Co. v. Schwartz, 246 F.2d 254 (C.A.2, 1957)). The visual comparison employed in reaching such determination is not that of the judicially trained mind, but that of the ordinary member of the purchasing public of which a Judge is one (Avrick v. Rockmont Envelope Co., 10 Cir., 155 F.2d 568).

Returning then to the affidavits submitted by plaintiff on this motion and to the testimony of plaintiff's officers submitted by defendant, we find that plaintiff's claim of copying and unfair competition rests on the use by defendant of the color yellow. Although plaintiff makes general statements regarding the "format and color" of defendant's package, its entire argument rests on the association of its product with the color yellow. In fact, plaintiff admits that while defendant (with the same format) employed a white bag for its rice, it did not object. That it is the similarity of color which plaintiff complains of, is further evidenced by plaintiff's statements that it has "gone after" two other distributors of yellow packaged rice, and has warned them "about the use of yellow packages" and intends, at the conclusion of the present suit (depending on its outcome undoubtedly) to "go after others" using yellow packages for their rice.³ The reason it has not gone after all the brands using similarly colored packages is, says plaintiff, because they are not competing in the same market as plaintiff's product. Yet defendant's photographic exhibit represents 8 brands of rice all in yellow packages found in various grocery stores in "Puerto Rican" neighborhoods — and plaintiff does not dispute the sales in this market of those brands.

We have no evidence as to the prices charged for their rice by these competitors, but we are informed by plaintiff that defendant's product sells at a price lower than plaintiff's to these "uneducated", "illiterate" people whose "economic condition is unhappily far below normal" (plaintiff's brief). The significance of the market, with this admission, becomes apparent and explains plaintiff's attack on defendant's yellow package of rice in the midst of so many other yellow packages of rice.

The plaintiff's emphasis is on the color yellow, this according to plaintiff is...