Chobani, LLC v. The Dannon Company, Inc.

Filing 72

MEMORANDUM-DECISION & ORDER: It is Ordered that Chobani's # 52 Motion for Reconsideration is DENIED. Signed by Judge David N. Hurd on 4/22/2016. (jmb)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
---------------------------------CHOBANI, LLC,
Plaintiff,
-v-

3:16-CV-30

THE DANNON COMPANY, INC.,
Defendant.
---------------------------------THE DANNON COMPANY, INC.,
Counter-Claimant,
-vCHOBANI, LLC,
Counter-Defendant.
---------------------------------APPEARANCES:

OF COUNSEL:

FOLEY, HOAG LAW FIRM
Attorneys for Plaintiff
155 Seaport Boulevard
Boston, MA 02210

JULIA HUSTON, ESQ.
DAVID A. KLUFT, ESQ.
ANTHONY E. RUFO, ESQ.

HARRIS, BEACH LAW FIRM
Attorneys for Plaintiff
99 Garnsey Road
Pittsford, NY 13534

DOUGLAS A. FOSS, ESQ.
SVETLANA K. IVY, ESQ.

VENABLE LLP
Attorneys for Defendant
8010 Towers Crescent Drive, Suite 300
Tysons Corner, VA 22182

RANDALL K. MILLER, ESQ.
MARCELLA BALLARD, ESQ.
ANGEL A. GARGANTA, ESQ.
MICHAEL C. HARTMERE, ESQ.

SCOLARO, SHULMAN LAW FIRM
Attorneys for Defendant
507 Plum Street, Suit 300
Syracuse, NY 13204

CHAIM J. JAFFE, ESQ.

DAVID N. HURD
United States District Judge

MEMORANDUM–DECISION and ORDER
I. INTRODUCTION
On January 29, 2016, a Memorandum–Decision & Order (the "January 29 MDO")
issued granting a request by The Dannon Company, Inc. ("Dannon") to preliminarily enjoin
Chobani, LLC ("Chobani") from making certain advertising claims directed at the sweetener
used in Dannon's yogurt products. Chobani, LLC v. The Dannon Company, Inc., –F. Supp.
3d–, 2016 WL 369364 (N.D.N.Y. Jan. 29, 2016) (concluding, inter alia, that Dannon
established a likelihood of success on the merits of its claim for false advertising under the
Lanham Act). Chobani has since appealed from this order. See 28 U.S.C. § 1292(a)(1).
Chobani has also moved for partial reconsideration of the January 29 MDO. That
motion has been fully briefed and will be considered on the basis of the submissions without
oral argument.
II. DISCUSSION1
Chobani's motion, brought pursuant to Federal Rule of Civil Procedure ("Rule") 59,
seeks modification, elimination, or clarification of Part 2(d) of the preliminary injunction order
memorialized in the January 29 MDO. According to Chobani, that portion of the order

1

The parties' familiarity with the factual background in this matter is presumed and will not be
repeated here.
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"restrains and enjoins an overly broad swath of speech by Chobani, including both lawful
speech and hypothetical future speech about matters that were not [the] subject of Dannon's
motion and on which the Court heard no evidence."
Rule 59(e), read in conjunction with Rule 54(a), provides for the alteration or
amendment of a "judgment"; that is, "any order from which an appeal lies." FED. R. CIV. P.
54(a), 59(e); American ORT, Inc. v. ORT Israel, 2009 WL 233950, at *2 n. 2 (S.D.N.Y. Jan.
22, 2009) (concluding Rule 59(e) is proper procedural vehicle for seeking modification of
preliminary injunction because it is an appealable interlocutory order).
Even in this context, a party seeking such relief "must show an intervening change in
controlling law, the availability of previously unavailable evidence, or the need to correct a
clear error of law or prevent manifest injustice[.]" Town of Halfmoon v. Gen. Elec. Co., 2015
WL 6872308, at *1 (N.D.N.Y. Nov. 9, 2015) (citation omitted); Country Club Assocs. v.
Shaw's Supermkts., Inc., 643 F. Supp. 2d 243, 246 (D. Conn. 2009) (noting motions to alter
or amend a judgment are subject to same standard as motion for reconsideration); see also
PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 2015 WL 58388, at *1 & n. 2
(N.D.N.Y. Jan. 5, 2015) (Sharpe, C.J.) (applying reconsideration standard to party's motion to
amend preliminary injunction).
Here, Chobani contends reconsideration of Part 2(d) of the preliminary injunction order
is warranted to correct a clear error of law or prevent manifest injustice. This portion of the
order specifically prohibits Chobani from disseminating the following claims in its marketing
and advertising as they relate to Dannon products:
i.

Dannon products, including Dannon Light & Fit Greek,
contain chlorine and Chobani products, including Chobani
Simply 100 Greek, do not;
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ii.

Dannon products, including Dannon Light & Fit Greek, are
unhealthy because they contain chlorine and Chobani
products, including Chobani Simply 100 Greek, are healthy
because they do not contain chlorine;

iii.

Dannon products, including Dannon Light & Fit Greek,
contain pool chlorine, a dangerous chemical used to clean
swimming pools;

iv.

Sucralose is bad or unsafe for consumers;

v.

Dannon products, including Dannon Light & Fit Greek, are
unsafe, harmful, and/or unhealthy; and

vi.

Use of the term "no bad stuff" as it relates to Dannon
products, including Dannon Light & Fit Greek;

Chobani, LLC, 2016 WL 369364, at *12.
According to Chobani, these limitations place it at a competitive disadvantage
because it completely precludes usage of the phrase "no bad stuff" in relation to Dannon
products regardless of whether or not a safety message is at issue. Indeed, Chobani's
memorandum goes on—for six pages, in fact—to point out instances where its competitors in
the industry use "nearly identical puffery."
Generally speaking, an order granting injunctive relief must "(A) state the reasons why
it issued; (B) state its terms specifically; and (C) describe in reasonable detail . . . the act or
acts restrained or required." FED. R. CIV. P. 65(d)(1). As the Second Circuit has explained,
"[i]njunctive relief should be narrowly tailored to fit specific legal violations," Peregrine
Myanmar Ltd. v. Segal, 89 F.3d 41, 50 (2d Cir. 1996), and courts should theref ore "mould
each decree to the necessities of the particular case." Forschner Grp., Inc. v. Arrow Trading
Co., Inc., 124 F.3d 402, 406 (2d Cir. 1997) (citations om itted).

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First, insofar as Chobani appears to be attempting to re-litigate the permissibility of
using the phrase "no bad stuff" as part of the particular sweetener comparison
advertisements discussed in detail in the January 29 MDO, that attempt is of course rejected
as improperly made on reconsideration. Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d
Cir. 1995) ("[A] motion to reconsider should not be granted where the moving party seeks
solely to relitigate an issue already decided.").
Second, each of the examples cited in Chobani's brief is actually irrelevant to the
particular factual circumstances of this case, since none of these examples are of specific
comparative advertisements made in the context of product safety. As the January 29 MDO
explained, the phrase "no bad stuff," standing alone or at the very least in the absence of a
specific comparison to the safety of a direct competitor's product, may very well amount to
non-actionable puffery. Chobani, LLC, 2016 WL 369364, at *8. But that was decidedly not
the context in which the language was used in the advertisements at issue here.
As the January 29 MDO further explained, a statement about something being "bad"
or "bad stuff" can take on a specific, non-puffing meaning when connected to an express or
implied factual assertion about a specific competitor's product. Chobani, LLC, 2016 W L
369364, at *8. This is especially so where, as here, that kind of "negative phrasing" was
employed "in connection with other statements and images that paint[ed] Dannon's products
as a safety risk because they contain sucralose." Id.
To the extent Chobani is seeking what amounts to an advisory opinion on the
permissibility of some counterfactual usage scenario, that request must be declined. Indeed,
as Dannon points out, Chobani has in fact continued to use the phrase "no bad stuff" as part
of other advertising efforts that do not include product safety comparison claims directed at
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specific competitors. See Ballard Decl., Exs. A & B, ECF No. 63-1 (attaching instances of
usage that post-date the preliminary injunction order memorialized in the January 29 MDO).
Notably, this usage has not drawn any objection by Dannon. Nor should it.
Finally, and particularly in light of the distinction just reiterated above, Chobani's claim
that Part 2(d) of the preliminary injunction order is overly broad is only persuasive if one
reads that portion of the order in a complete vacuum. The twenty-five pages of discussion
set forth in the January 29 MDO were not written gratuitously—Rule 65 explicitly requires that
an order granting injunctive relief "state the reasons why it issued" as well as "describe in
reasonable detail . . . the acts restrained." FED. R. CIV. P. 65(d)(1).
As relevant here, Parts 2(a)-(c) of the preliminary injunction order restrain Chobani
from transmitting the "Commercial," the "Print Ad," and the "Digital Content," three terms that
reference specific advertisements described in the January 29 MDO. Chobani, LLC, 2016
WL 369364, at *2 (relating these terms to particular elements of Chobani's Simply 100
advertising campaign). The details of each of these advertisements were submitted as part
of briefing on the underlying motion and, of course, form the basis for the underlying dispute
between the parties.
Beyond identifying these three specific advertisements, Part 2(d)(i)-(vi) clearly reflects
the further goal of fashioning preliminary relief that adequately precludes Chobani from
creating other advertisements that, while perhaps not falling neatly into the descriptions of
the specific advertisements set forth in Parts 2(a)-(c), might nevertheless employ the same or
a similar combination of words, images, and phrases in a slightly different manner in an effort
to communicate the same impermissible message—that Dannon's products containing
sucralose are a safety risk. Chobani, LLC, 2016 WL 369364, at *8.
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In other words, Part 2(d), properly considered in the context of "the reasons why it
issued," explains "in reasonable detail" what is prohibited. More importantly, it also draws a
reasonable boundary just beyond the three specific advertisements identified in Part 2(a)-(c)
that is intended to prevent subversion of the January 29 MDO's preliminary injunction
order. See Forschner Grp., Inc., 124 F.3d at 406 (" A district court has a wide range of
discretion in framing an injunction it deems reasonable to prevent wrongful conduct."); cf.
N.Y.C. Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 345 (S.D.N.Y . 2010)
(noting in Lanham Act trademark infringement case that "the Second Circuit has affirmed the
application of the 'safe distance' rule in the preliminary injunction context").
To be sure, it is possible to hypothesize a usage of the phrase "no bad stuff" (1) in
combination with other images or phrases that (2) relates to Dannon's products yet (3) does
not convey an express or implied safety message about sucralose. Indeed, Chobani's
memorandum attempts to do just that. 2 But Rule 65(d) "does not require the district court to
'predict exactly what [the enjoined party] will think of next' or to describe all possible,
permissible future commercials that [the enjoined party] may produce involving [its
competitor's products]." S.C. Johnson & Son, Inc. v. Clorox Co., 241 F.3d 232, 241 (2d Cir.
2001). Should any of Chobani's proffered hypotheticals come to pass, the preliminary
injunction may be revised appropriately. N.Y.C. Triathlon, LLC, 704 F. Supp. 2d at 328
(noting district court retains "equitable discretion" to revise preliminary injunction order as
necessary).

2

For example, Chobani's reply brief laments that Part 2(d) of the order would preclude Chobani from
including the phrase "no bad stuff" as part of a hypothetical comparative advertisement regarding Dannon's
ongoing use of the ingredient carmine.
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III. CONCLUSION
The preliminary injunction order memorialized in the January 29 MDO restrains
Chobani from disseminating advertisements that portray Dannon's products as unsafe to
consume. Chobani's assertion that Part 2(d) of this order is overly broad or impermissibly
vague fails to warrant reconsideration. Accordingly, Chobani's motion will be denied.
Therefore, it is
ORDERED that
Chobani's motion for reconsideration is DENIED.
IT IS SO ORDERED.

Dated: April 22, 2016
Utica, New York.

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