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S.C. JOHNSON & SON v. CLOROX CO.

May 9, 1996

S.C. JOHNSON & SON, INC., Plaintiff, against THE CLOROX COMPANY, Defendant.


The opinion of the court was delivered by: SEYBERT

 SEYBERT, District Judge:

 Were it the determinative issue in this litigation, the Court would have little difficulty in concluding that SuperBait is a more effective product than RAID Max Plus. In this regard, Clorox's new testing protocol impresses the Court as a particularly effective measure of the relative efficacy of roach bait products for purposes of product development, insofar as it successfully gauges the products' strengths and weaknesses free of the encumbrances that traditional testing techniques had encountered in attempting to conform testing methods to expected consumer experience, assuming consumer compliance with the product label instructions.

 The Commercial, however, does not confine its sales pitch to general statements of product superiority that the evidence amply would support, or for that matter, to a nonquantitative claim that testing proves that SuperBait kills more roaches than RAID Max Plus. Rather, the Commercial states, in virtually unqualified terms, that "testing proves Combat SuperBait kills up to 98%" of consumers' roaches, while RAID Max Plus kills "no more than 60%." These claims, known in the legal vernacular as "establishment claims," therefore seek through advertisement to superimpose the results achieved in the sanctuary created by Clorox's new testing protocol, and in selected laboratory tests, into the variable-ridden world of consumers' homes. Because the Court finds that plaintiff has met its burden of proving that defendant's tests -- when applied to the untoward purpose of supporting quantitative declarations of product efficacy in home use -- fail to substantiate the Commercial's unqualified propositions with respect to each of the products at issue, plaintiff's motion to enjoin the Commercial is granted.

 FINDINGS OF FACT

 A. Introduction

 1. In the instant action brought pursuant to § 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), plaintiff SCJ seeks a preliminary injunction enjoining defendant Clorox from making certain challenged advertising claims. These claims, which concern the effectiveness of two competing household roach control products -- SCJ's RAID Max Plus and Clorox's SuperBait -- were presented last summer in a 30-second television commercial entitled "Weapon" (the "Commercial").

 2. The Commercial begins with a woman in her kitchen looking at cockroaches. The voice of a male (who later appears on screen as a scientist dressed in a white laboratory coat) tells consumers that "It's you against thousands of them. Choose your weapon wisely." The woman holds up a single package of RAID Max Plus (see Answer P 9), while the scientist declares: "This, only gets rid of some of your roaches." The woman then holds up a single package of SuperBait, while the scientist says: "This, kills just about all of them. And their eggs." The scientist then appears on screen dressed in laboratory attire and states, "In fact, testing proves COMBAT SuperBait kills up to 98%. The other guys [i.e., RAID Max Plus], no more than 60%." When the scientist refers to the SuperBait results, a single package of SuperBait appears on the screen, above which appears the caption "KILLS UP TO 98%." Similarly, when the scientist refers to "the other guys," a single package of RAID Max Plus appears on the screen, together with the caption, "KILLS NO MORE THAN 60%." PX 1, 2.

 3. The Commercial began airing on June 26, 1995 (Answer P 1), and it appeared on television stations in the New York metropolitan area and across the United States throughout last summer. SCJ commenced this action on July 13, 1995. On July 20, 1995, this Court denied SCJ's application for a temporary restraining order but granted its request for expedited discovery in advance of a preliminary injunction hearing. The Court conducted an evidentiary hearing on SCJ's preliminary injunction motion over the course of nine days between March 11 and 27, 1996. Unless enjoined, Clorox intends to resume broadcasting the Commercial in the near future. Clorox Pre-Hearing Mem. 1.

 B. The Products Featured In The Commercial

 4. Both RAID Max Plus and SuperBait are over-the-counter ( "OTC") products intended for use by consumers in treating infestations of German cockroaches in their homes and apartments. The German cockroach is recognized to be the most prevalent household cockroach pest species in this country (Owens 93/17-24), and all references to "cockroaches" or "roaches" are to the German cockroach. *fn1" There are, at a minimum, "millions" of strains of cockroaches -- i.e., individual populations -- located in households throughout the United States. Cochran 516/25-517/7. While infestations tend to be somewhat more common in Florida and other southern states whose high temperatures and relative humidity are especially conducive to cockroaches, see Owens 119/21-25; PX 89, Table 33 at 15, roach infestations are not limited to any geographical area, and are found in residences throughout the United States. Owens 97/17-98/2. For that reason, roach bait manufacturers advertise their products in locations throughout the United States. See Shapas 751/22-752/11. Moreover, the cockroach is not a respecter of socioeconomic class and is found in all sorts of housing, from private homes of all sorts to low-income housing. Owens 97/17-98/2. Indeed, according to an internal SCJ marketing analysis conducted in the ordinary course of business, 72% of roach bait users live in single family homes and only 28% are apartment dwellers. PX 89, Table 35 at 17.

 5. It is not surprising that U.S. consumers spend vast sums -- over $ 300 million in 1995 alone (PX 91) -- in an attempt to control roach infestations in their homes. Cockroaches can contaminate food supplies and kitchenware with bacteria and other microorganisms, and are a source of many potent allergens. Owens 96/17-97/16; PX 18 Chap. 4. The principal forms of OTC roach control products are sprays, foggers and baits. Owens 98/5-16. Roach baits, the subject of the Commercial, consist of a disc (also referred to as a bait tray or bait station) that contains a roach food (referred to as a bait "base") mixed with an insecticide. Roaches foraging for food enter the bait station, eat the toxic bait base, crawl away and die. Owens 102/6-103/7; PX 17.

 6. The two Clorox roach bait products marketed to consumers, SuperBait (PX 111) and COMBAT Roach Killing System ( "Regular COMBAT") (PX 114), each contain the insecticide hydramethylnon. Hydramethylnon is a relatively slow-acting metabolic poison that "inhibits the ability of the cockroach to have energy to move. So it is like a windup toy that eventually runs to a stop." Koehler 1341/14-1342/5. Regular COMBAT was first introduced by American Cyanamid ( "Cyanamid") in the mid-1980s. Shapas 597/9-12. Clorox acquired this and other COMBAT products from Cyanamid in the summer of 1990. During the winter of 1993, Clorox began marketing SuperBait. Silverman Dep. 67/7-11. SuperBait contains slightly more hydramethylnon by weight than Regular COMBAT and the food material in SuperBait is designed to appeal to a broader spectrum of roaches; the toxic formulations of these products, however, are identical. Shapas 606/4-25. Clorox's Dr. Shapas acknowledged that the increased amount of hydramethylnon in SuperBait would not likely have any impact on primary kill, i.e., roach deaths caused by eating the bait directly. Id. 753/5-11. And, while Dr. Shapas theorized that the increased amount of hydramethylnon in SuperBait would increase the amount of secondary kill (id.) -- i.e., roaches killed by eating the excrement of other roaches poisoned by the baits (Silverman 1157/20-1158/3) -- the only Clorox field test in evidence comparing those products reveals a relatively modest difference in efficacy. PX 60; Owens 205/2-15. *fn2"

 7. RAID Max Plus (PX 16) is actually two products contained in one package. It consists of (a) 12 roach baits and (b) 3 small containers of the insect growth regulator Hydroprene, which sterilizes certain roaches that come in contact with it. Owens 335/9-336/9; Koehler 887/4-888/17; PX 101, 125. The insecticide in the roach bait component of RAID Max Plus is called chlorpyrifos, also known by the brand name Dursban. PX 17. Dursban is a relatively fast-acting "nerve poison . . . that acts somewhere between one and five hours after exposure." Koehler 1340/11-20. Dursban "affects the nervous system resulting in excessive nervous firing," and causes the cockroach to "have spasms, flip over on its back," twitch its legs and "ultimately . . . die." Id. 1340/21-1341/1.

 8. When SCJ initially introduced RAID Max Plus roach baits in 1989, the product contained an insecticide known as sulfluramid. DX 144. In August 1994, SCJ voluntarily recalled this product nationwide because of EPA concerns about the child resistant package design of the product. See PX 92. RAID Max Plus remained off the market until early 1995, when it was relaunched with Dursban as the active ingredient. See PX 23. Even after SCJ began marketing sulfluramid baits in 1989, it continued to market Dursban baits as well, first under the name RAID Roach Controller (PX 12), and since 1990, under the name RAID Roach Bait (PX 13) ( "Regular RAID"). The formulations of Regular RAID and RAID Max Plus baits are identical. Koehler 826/19-828/17.

 9. Clorox characterizes SCJ's Dursban baits, including RAID Max Plus, as a "terrible product." Clorox Opening Statement 40/2-5. However, although Dursban baits can, in some situations, be compromised where cockroach strains have developed resistance to that insecticide, consumer tests conducted in the ordinary course of SCJ's business to monitor consumer satisfaction with OTC roach baits show that consumers rate RAID Dursban baits on substantial parity to Clorox's baits. E.g., PX 131 at 1075; PX 132 at 392; DX 70 ("Blind label testing of RAID Roach Bait, RAID Max and COMBAT showed that consumers could not perceive any performance differences between the 3 bait products.").

 C. The Inconsistent Performance Of Roach Baits In The Real World

 10. SCJ is by far the leader in total sales of roach control products (Mar. 27, 1996 Stip.; PX 91), which in part reflects the fact that consumers spend nearly twice as much on sprays as on baits. See Mar. 27, 1996 Stip.; PX 91. In the roach bait sub-category, however, Clorox is the clear market leader (57.7% market share in 1995), with SCJ a distant second (18.5% market share in 1995). Mar. 27, 1996 Stip. at 1 P 3.

 11. Unlike sprays, which consumers can target directly on roaches they see and on surfaces where they observe roaches moving, roach baits are passive instruments of roach control. Owens 98/8-99/8. Consumers set out the bait stations in their homes, where they compete with other food sources for the attention of roaches that are foraging for food and water. Id. 102/1-13; PX 18 at 246. Thus, roach baits cannot work unless significant numbers of roaches happen to encounter the bait station and ingest a lethal dose of the bait food. Owens 99/3-8; PX 18 at 239. Even roach baits to which no resistance has been demonstrated, such as hydramethylnon, can frequently be rendered ineffective by the inherent limitations in such a passive system of roach control. See Owens 99/3-8. As Clorox's own expert, Dr. Austin Frishman, observed in a recent article in a trade journal for PCOs, "even the best of baits fail under field conditions in some circumstances." PX 51 at 23.

 13. Another critical factor in achieving effective control with baits is the placement of the baits. Frishman 713/18-714/20; PX 18 at 249. The objective of effective bait placement is that "the baits must be placed between where the cockroaches harbor and where they eat." PX 51, Item 6. However, this is more easily said than done. Roaches generally live in groups in dark locations that are not readily visible to human beings, such as in cracks and crevices in the walls, wall voids, and inside and under furniture, appliances and cabinetry. (These locations are sometimes referred to as harborages). Owens 65/15-23, 103/4-7. Roaches typically search -- or "forage" -- for food and water at night when lights in the home are off and there is no human activity. PX 18 at 49; Owens 102/9-13; Koehler 1387/12-20. Moreover, most roaches generally have a very limited foraging range, rarely foraging more than a few feet from their harborages. Owens 132/7-14, 296/2-8; see PX 18 at 251, 253.

 14. As a result, the key to effective bait placement is not only to place the baits as close as possible to cockroach harborages, but also to locate all of the harborages in the apartment so that a bait can be placed in very close proximity to each harborage. Frishman 708/10-19; PX 18 at 250. Otherwise, the roach baits -- no matter how effective the poison -- will not kill roaches living in untreated harborages, and the treatment therefore will not come close to eliminating the infestation. Clorox's expert Dr. Frishman has publicly acknowledged this to be true, noting that "no matter how attractive the bait, if the placement is wrong you may kill 50 percent of a cockroach population, but you need a 96 percent-plus kill to put a permanent dent in their numbers." PX 51, Item 6.

 15. Although Clorox's experts testified that consumers have occasionally taken them "by the hand" (Frishman 709/21-25) and "by the arm" (Boase 1456/17-20) to show them where the roaches are, the credible evidence demonstrates that most consumers do not and cannot know the location of all of the cockroach harborages in their homes. *fn3" First, since roaches harbor in dark areas that are not readily visible to humans and quickly scurry away when lights are turned on (Koehler 1387/3-20), the sight of roaches foraging for food and water at night will, at best, give the homeowner only a vague clue about the locations of possible harborages. Second, in its cross-examination of Dr. Koehler, Clorox took pains to establish that many of the apartments where the parties have conducted field studies have cockroach infestations of 10,000 or more roaches. Koehler 949/12-952/1; DX 43. Depending on the number of cockroaches contained in any harborage, the number of harborages contained in those apartments would range from approximately 30 to 300 or even more. Compare PX 18 at 62-63 (10 to 30 roaches per harborage) with Boase 1597/1-22 (has seen harborages with as many as 200 to 300 roaches). It is extremely unlikely that any consumer would even appreciate the existence of so many cockroach harborages in his or her apartment, much less be able to locate them with precision. Third, the fact that both Clorox and SCJ use diagrams on the labels of their roach bait products to inform consumers of the "most important locations" (PX 111) and the locations which will produce "the best results" (PX 16) is compelling evidence that both companies recognize that many consumers do not know the optimum placement locations for baits in their homes. See also PX 18 at 249-50 (showing a placement diagram from a COMBAT package and noting that "placement guides have been developed to assist in bait placement. . . . These guides accompany most bait products, and generally point out places where bait should be installed in order to maximize cockroach contact.").

 16. Finally, there has emerged in the U.S. an industry of professional pest control operators ( "PCOs") who, according to Dr. Frishman, sell their services to consumers based in part on their superior training and ability to effectively locate cockroach harborages and to properly lay out roach bait stations in consumers' homes. See PX 51. On cross-examination, Dr. Frishman testified that PCOs are often trained in proper bait placement techniques and have at their disposal tools for locating out-of-the-way harborages, such as mirrors and sticky traps, that are not readily available to consumers. Frishman 708/10-19, 710/3-14. Dr. Frishman conceded that even assuming "consumers have a pretty good idea of the majority of locations where roaches are, it is the peripheral areas that take the extra effort," and "it is the peripheral areas, and the value added from the training [which] the PCOs often have, that often can make the difference between eliminating or virtually eliminating the roach infestation on the one hand and getting only moderate or inadequate control on the other [hand]." Frishman 708/20-709/7.

 17. Indeed, as Dr. Frishman has recognized, even trained PCOs often fail to locate and properly place baits in close proximity to all of the cockroach harborages. Thus, as Dr. Frishman wrote in an article directed at PCOs (PX 51):

 
6. You placed the bait in the wrong area. This is easier to do than you might think. You were not aware of how many locations the cockroaches were hiding in when you initiated your baiting program. The baits must be placed between where the cockroaches harbor and where they eat. No matter how attractive the bait, if the placement is wrong you may kill 50 percent of a cockroach population, but you need a 96 percent-plus kill to put a permanent dent in their numbers. . . .
 
9. The puck [i.e., professional bait station] was placed in the correct zone, but incorrectly placed within the treat zone. You cannot just place a bait any way you want to. . . . The pucks should be tucked in corners or along edges where cockroaches most likely congregate or walk. You have to think like a cockroach. That's why you are the professional. . . .
 
12. You missed a major pocket of cockroaches. This serves as a dispersion point to other areas. The sticky traps can help you find them. *fn4" Keep in mind that you are trying to control living organisms. It is not a simple mathematical formula that works every time. You sometimes have to adjust what you did to get the baits to do the job. I call it "tweaking the baits to perfection."
 
14. You missed the zone by one inch! What? How can that be? Simple. The air currents are moving the bait odors in the opposite direction from where the roaches are.

 PX 51.

 18. When one steps back from the Clorox's advocacy and looks at how both PCOs and respected academic entomologists view the utility of baits, one gets a very different picture than the one painted by the Commercial. Donald Reierson -- a widely respected entomologist at the University of California - Riverside (see Shapas Dep. 231/4-17), who has substantial experience with hydramethylnon (PX 97; DX 56, 131) -- recently wrote that except "under optimal conditions . . . such as might . . . occur in a vacant apartment," baits do not "lead to the [roach] population being eradicated," that while "bait usually reduces the number of cockroaches present . . . other measures are needed to keep the population suppressed," PX 18 at 259, and that "except where conditions for control of [German cockroaches] with bait are ideal, one should have modest expectations for control with current baits. Greater, and more acceptable levels of control will generally require supplementation of bait use with other control methods." PX 18 at 265.

 19. Similarly, since the livelihood of PCOs depends on their ability to effectively treat infestations, and since, unlike sprays and dusts, "in this age of increasing chemical awareness, baits are considered . . . especially safe . . . [and are] easy to use [and] virtually odorless" (PX 18 at 234), PCOs would have a powerful incentive to use baits exclusively if they provided the type of control the Commercial promises. In fact, however, as Dr. Frishman admits, in many areas of the country as few as 10% of PCOs use baits exclusively (Frishman 693/20-694/10), notwithstanding that Clorox's Maxforce baits, which are identical to SuperBait with respect to their active ingredient (id. 660/21-25), have been available to PCOs for nearly a decade. See PX 66 at 2309; DX 53 at 35; DX 73 at 1280-81. By contrast, Dursban sprays remain today one of the most popular insecticides among PCOs. Cochran 524/3-12, 542/11-19; Frishman Dep. 55/5-20; Boase 1644/17-1646/22. In like manner, despite the prevalence of Clorox's advertising, fewer than 20% of consumers with roach problems use baits exclusively. PX 89 at 37.

 20. The clinical evidence confirms that when the baits are used in a manner consistent with label directions, SuperBait rarely even approaches the level of 98% control promised in the Commercial. For example, although Clorox reported that SuperBait reduced roach populations on average by 84.4% in one such test (PX 61), in other Clorox field tests, SuperBait achieved average roach population reductions of only 29.9%, 34.1%, and 44.5% (PX 60, 61). The methodology used in these tests, and the changes in methodology employed in Clorox's new protocol, are discussed at PP 61-67 infra.

 D. The Original Version of the Commercial

 21. In the Spring of 1994, Clorox, having become dissatisfied with the results of testing under its existing field test method (Shapas Dep. 136/19-137/12; Bieman 1013/2-12), developed a new field test protocol (Bieman 1015/11-15, 1080/8-1081/5; PX 42), and tried it out for the first time. Bieman 1026/7-16. The products tested were SuperBait and SCJ's then-current RAID Max Plus product, which contained sulfluramid. Id. 1026/17-18. The test sites were two low income public housing complexes in Miami, Florida (the "Miami Field Test"). DX 25, 26. Based solely on the results of the Miami Field Test, Clorox began developing a commercial that was to have stated that "SuperBait kills 98%, RAID Max only 55%." See PX 19. Clorox's Claim Index for this version of the commercial (id.) -- a document that identifies what scientific support Clorox has for each of its advertising claims (Ochomogo Dep. 78/7-22)-- states that the Miami Field Test was intended to be the substantiation for that proposed commercial's comparative claims. See PX 19.

 22. In early 1995, apparently before the 98% versus 55% version of the commercial was ever filmed, Clorox learned that RAID Max Plus would contain Dursban in 1995 instead of sulfluramid (Shapas 740/5-9; PX 23). Clorox quickly appreciated that the change in formulation rendered any comparative claims based on its field test of the sulfluramid product invalid, and so informed its advertising agency, Young & Rubicam ( "Y&R"). Thus, in a March 10, 1995 memo (PX 23), Mark Adams of Y&R stated that "Clorox informed Y&R that Raid Max Plus ...


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