World Trade Centers Assoc., Inc. v. World Trade Ill., No. 14 C 6237, Slip Op. (N.D. Ill. Jun. 15, 2015) (Darrah, J.).

Judge Darrah granted plaintiff World Trade Centers Association (“WTCA”) contempt motion in this Lanham Act dispute involving WTCA’s World Trade Center marks. In a previous suit, the parties entered a consent decree

Gaither Tool Co. v. Summit Tool Co., No. 01 C 4096, Slip Op. (N.D. Ill. Sep. 5, 2012) (Bucklo, J.).

Judge Bucklo granted plaintiff Gaither Tool’s motion to enforce the parties’ Consent Order which required that defendant Summit Tool not use the trademark BEAD KEEPER.  Summit Tool acknowledged use of the mark, but argued

Optics Plantet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Mar. 7, 2011) (Shadur, Sen. J.).
Judge Shadur denied defendants’ (collectively “AKYR”) motion to delay the contempt proceedings against it in this Lanham Act case. AKYR had failed to post a court ordered disclaimer for about eight months, and the Seventh Circuit denied AKYR mandamus relief. The Court, therefore, ordered that the parties appear to quantify the fee-shifting required to address AKYR’s delay pursuant to 28 U.S.C. § 1927, and to discuss whether additional sanctions where warranted.

Continue Reading Court Orders Hearing to Quantify Fees for Defendants’ Contempt

Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Aug. 9, 2010) (Zagel, J.).
Judge Zagel denied plaintiff Healix’s motion to compel and its motion for sanctions. The motion to compel was denied without substantive analysis for failing to meet and confer with defendant pursuant to Local Rule 37.2. The motion for contempt was denied because defendant had complied with the Court’s general orders to produce documents and respond to subpoenas. Defendant did produce documents and respond to the subpoenas. Defendant did not violate those orders by refusing to produce specific documents while producing others.

Continue Reading Discovery Motion Denied for Failure to Meet and Confer

Nat’l. Spiritual Assembly of the Baha’is of the U.S.A. Under the Hereditary Guardianship, Inc. v. Nat’l. Spiritual Assembly of the Baha’is of the U.S.A., Inc., ___ F.Supp.2d ___, 2008 WL 1839078 (N.D. Ill. Apr. 23, 2008) (St. Eve, J.).
Judge St. Eve denied defendant the National Spiritual Assembly of the Baha’is of the United States’ (the “NSA”) motion to hold non-parties Franklin D. Schlatter, Joel B. Marangella, the Provisional National Baha’i Council (“PNBC”), the Second International Baha’I Council (d/b/a Baha’is Under the Provisions of the Covenant)(“SIBC”), and the Baha’i Publishers Under the Provisions of the Covenant (“BPUPC”)(collectively the “Alleged Contemnors”) in contempt for violating the 1966 permanent injunction against plaintiff The National Spiritual Assembly of the Baha’is of the United States Under the Hereditary Guardianship, Inc.’s (the “NSA-UHG” or “UHG”) use of the NSA’s trademarks. Shortly after the injunction was entered, the NSA-UHG dissolved. NSA argued that its former officers, Schlatter and Marangella, remained bound by the injunction. But the Court held that officers or agents of an entity that are not personally named in an injunction are only bound while acting for the named entity or a subsequent entity formed to avoid the injunction. Schlatter’s and Marangella’s alleged contempt, therefore, is dependent on their new entity PNBC’s status.
The Court held that PNBC was not in privity with NSA-UHG. NSA-UHG followed the directives of its spiritual leader, Mason Remey. PNBC, however, followed the directives of its spiritual leader Marangella, not Remey. Furthermore, Marangella specifically instructed PNBC and its members not to violate the injunction. PNBC, Schlatter and Marangella, therefore, were not in privity with NSA-UHG and not bound by the injunction.
Similarly, non-parties Jensen, SIBC and BPGPC were not in privity with NSA-UGH, even though they admitted to being successors-in-interest to Remey. Jensen disassociated themselves from the NSA-UGH and Remey several years before the injunction was issued.

Continue Reading Former Officers Not Bound by Company’s Injunction

Am. Fam. Mutual Ins. Co. v. Roth, No. 05 C 3839 & 3869, 2008 WL 168693 (N.D. Ill. Jan. 15, 2008) (Guzman, J.).
Judge Guzman adopted Magistrate Judge Cole’s Report and Reconsideration in full, holding defendants in contempt for violating the Court’s injunctions requiring that defendants return various customer information taken from plaintiff, defendant’s former employer – click here for more on the prior opinions in the Blog’s archives. It was defendants’ responsibility to ensure that defendants’ former counsel, who had copies of relevant documents, comply with the injunction by turning the documents over to plaintiff. The fact that defendants did not have direct control over their former counsel’s copies did not matter.
Additionally, the Court held that it did not matter that plaintiff did not originally make a “big deal” out of defendant’s non-compliance. Defendants argued that they presumed there was no need to comply with the Court’s injunctions because nobody was making a “big deal” about the return of the materials. That presumption was flawed. Neither party moved to modify either the preliminary injunction or the amended preliminary injunction. Thus, defendants had a duty to comply with the Court’s injunctions as written.
Practice Tip: Do not fall in to the trap of believing that substantial compliance with a court order is sufficient. While that could be true in some cases, you should always contact the court if you have a problem complying with an order. Compliance with orders is one case where the adage that you are better off asking forgiveness than asking permission does not hold true.

Continue Reading Violating Injunctions is a “Big Deal”

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2728754 (N.D. Ill. Sep. 13, 2007) (Guzman, J.).
Judge Guzman conducted a Fed. R. Civ. P. 72 de novo review of Magistrate Judge Cole’s report which recommended that the Court hold defendant in contempt for violating the Court’s permanent injunction limiting defendant’s use of plaintiff’s Coilcraft mark (click here for further discussion in the Blog’s archive). The Court adopted Judge Cole’s Report in its entirety and gave plaintiff fourteen days to submit a proposed order and proof of its attorneys’ fees and costs related to this motion. The Court also held that Judge Cole was not required to hold an evidentiary hearing before issuing the Report because there were no genuine issues of material fact. The dispute was governed by the language of the Court’s injunction which was not disputed. And the only issue was whether defendant’s advertisements, the contents of which were not disputed, violated the injunction – a matter of law.

Continue Reading Evidentiary Hearing Not Required for Contempt Ruling Based Upon Undisputed Facts

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).
Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:
Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.
Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.” If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.
* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

Continue Reading Court Recommends Contempt Because Disclaimer Was Insufficient

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883937 (N.D. Ill. Dec. 27, 2006) (St. Eve, J.).

Judge St. Eve denied defendant’s emergency motion to prohibit plaintiff from sending Rule 65(d) notice letters regarding the Court’s permanent injunction to defendant’s customers (more on this case and the injunction in the Blog’s archives). But before analyzing defendant’s emergency motion, the Court first addressed defendant’s prior motion to clarify the injunction which the Court previously denied. In the motion to clarify, defendant stated that it had sold approximately 150,000 infringing radios to various resellers prior to being enjoined. Defendant argued that those resellers should be free to sell their supplies of infringing radios. The Court denied the motion because it was first raised in a sur-reply brief regarding plaintiff’s motion for a permanent injunction without presentation of any detailed facts, legal argument or supporting case law. Continue Reading Make Your Arguments Early and Often: Counsel are Both Advocates and Officers of the Court