Carey Licensing, Inc. v. Erlich
| Decision Date | 25 October 2007 |
| Docket Number | No. 4:05CV1194 AGF.,4:05CV1194 AGF. |
| Citation | 627 F.Supp.2d 1029 |
| Parties | CAREY LICENSING, INC., and Carey International, Inc., Plaintiffs, v. Jack ERLICH and International Chauffeured Services, Inc., Defendants. |
| Court | U.S. District Court — Eastern District of Missouri |
McPherson D. Moore, Polster and Lieder, St. Louis, MO, for Plaintiffs.
Bridget G. Hoy, Lewis and Rice, St. Louis, MO, for Defendants.
This matter is before the Court1 on Plaintiffs' motion to cite Defendants for contempt for violation of a Consent Judgment entered in the case. A hearing on the record was held on the motion on September 11, 2007. There is no continuing violation at this point, and the only issue before the Court is Plaintiffs' entitlement to liquidated damages and/or attorney's fees for past violations.
On August 1, 2005, Plaintiffs filed a complaint and a motion for a preliminary injunction, alleging that Defendants, a competing limousine services company and the company's operator, willfully infringed Plaintiffs' trademark CAREY and engaged in unfair competition by using the name or mark CAREY (or similar names) in advertisements on Defendants' website, and in accepting telephone reservations.
On September 15, 2005, Defendants consented to the entry of a consent judgment against them, and, on October 12, 2005, the Court entered the Consent Judgment drafted and agreed to by the parties. The Consent Judgment can be divided into several sections: paragraphs 1 to 7 contain stipulated facts; paragraph 8 permanently enjoins Defendants from various acts; in paragraphs 9 to 13 Defendants represent and warrant to have taken certain actions respecting materials, websites, hyperlinks, telephone numbers, and directory listings; paragraphs 14 and 15 set out various remedies; and paragraphs 16 to 20 set out the Consent Judgment's binding effect and the parties' authority to enter into it. The provisions relevant to the Court's determination of the issues in this case are laid out with greater specificity below.
Paragraph 8 of the Consent Judgment permanently enjoins Defendants from: (1) Using the mark CAREY, and the name "Carey Limousine," and any similar mark and/or name "in any manner in connection with the rendering and/or advertising of" limousine or similar services, "including, but not limited to, in ... websites, website names and domain names"; (2) "Registering, purchasing, selling, owning or transferring any domain name that contains the mark CAREY and any other" similar term; (3) securing any phone-directory listing under the name "Carey" or any similar name; and (4) "Doing any other act or thing calculated or likely to cause the public to be confused or deceived into believing that Defendants' limousine services originate from, are affiliated with or are sponsored by Carey, or that Defendants have a connection with Carey."
In paragraphs 10 and 11 of the Consent Judgment, Defendants warranted that, among other things, they had: (1) "removed from all websites owned and/or controlled by them including, but not limited to, InternationalChauffeuredServices.com, all references to CAREY" and any other similar mark and/or name; and (2) "removed all references to CAREY" and any other similar mark and/or name "from all sponsored links and hyperlinks reasonably known to them as of the date of this Consent Judgment." In addition, Defendants agreed to "take action to remove any additional references to CAREY from any additional sponsored links or hyperlinks, if any, within 24 hours of being advised of such additional sponsored links or hyperlinks by Plaintiffs."
In paragraph 14 of the Consent Judgment, the parties agreed that "if Defendants violate any provision of this Consent Judgment," Defendants: (1) "consent to an injunction or injunctions to compel specific performance of the provisions of this Consent Judgment"; (2) "shall be jointly and severally liable to pay the Plaintiffs' reasonable attorney's fees incurred by Plaintiffs in connection with this lawsuit and in any subsequent lawsuits or other enforcement measures under this Consent Judgment," with the "reasonableness of the amount of Plaintiffs' fees and costs [to] be determined by the Court unless otherwise agreed to by the parties"; and (3) "will not challenge Plaintiffs' entitlement to such fees and costs in the event of such breach."
Finally, in paragraph 15 of the Consent Judgment, the parties agreed that, "Should a Court of competent jurisdiction find Defendants to have infringed upon the service mark and trade name CAREY for any acts subsequent to the date of entry of this Consent Judgment, in addition to any other legal or equitable remedy Carey may have, [Defendants] will pay Carey ... $2,500[] as liquidated damages for each instance of infringement therein found, such payment to be made within thirty (30) days of a final judgment, including the exhaustion of all appeals."
The record establishes that, on February 9, 2007, at 10:45 a.m.,2 Plaintiffs' counsel Sara Edelman notified Defendants' counsel Frank Janoski by e-mail that Defendants had registered the domain name careylimousine.net in violation of the Consent Judgment. Plaintiffs demanded that Defendants transfer ownership of the domain name to Plaintiffs. (Pls.' Ex. 6.) On February 12, at 8:21 p.m., Plaintiffs' counsel sent an e-mail to Defendants' counsel, demanding a response. (Pls.' Ex. 7.) On February 15, at 2:52 p.m., Plaintiffs' counsel again sent an e-mail to Defendants' counsel, carbon copying Defendant Jack Erlich. (Pls.' Ex. 7.) Twenty minutes later, at 3:12 p.m., Defendants' counsel sent an e-mail response to Plaintiffs' counsel, notifying Plaintiffs that Mr. Erlich "has taken steps to have the domain name cancelled." (Pls.' Ex. 8.) Shortly thereafter, at 3:18 p.m., Plaintiffs' counsel sent an e-mail reply to Defendants' counsel demanding that Defendants transfer ownership of the domain name careylimousine.net to Plaintiffs. Thirty minutes later, at 3:48 p.m., Defendants' counsel sent an e-mail response to Plaintiffs' counsel notifying Plaintiffs that Defendants had "already cancelled the domain name."
On February 15, 2007, at 3:18 p.m., in the e-mail message noted above, Plaintiffs' counsel also notified Defendants' counsel that a hyperlink to one of Defendants' websites appeared in Google search results when a search for "careylimousine nyc" was performed. (Pls.' Ex. 9.) Thirty minutes later, in the 3:48 email response noted above, Defendants' counsel responded that Defendants would "check into the use of the `careylimousine nyc.'" (Pls.' Ex. 10.)
On Friday, March 2, 2007, at 7:27 p.m., Plaintiffs' counsel sent an e-mail to Defendants' counsel, again carbon copying Mr. Erlich. Attached to the e-mail was a letter demanding that Defendants "immediately cease and desist from infringing my client's trademark." (Pls.' Ex. 11.) In that letter, Plaintiffs' counsel cited two violations of the Consent Judgment: (1) respecting Google, that Mr. Erlich "purchased the key word `Cary' and used this term to describe International Chauffeured Services in the `sponsored link' that he purchased";3 and (2) respecting Yahoo, that Mr. Erlich "use[d] the mark CAREY® in a hyperlink to his company, `limocenter.us.'" On March 7, 2007, at 9:24 a.m. (Central), Plaintiffs' counsel sent another e-mail, demanding a response. Later that day, at 5:53 p.m. (Central), Defendants' counsel responded, notifying Plaintiffs counsel that Defendants had contacted Google about removing Carey Limousine from www.limocenter.com, and that Defendants had looked at the source code of the website appearing in Yahoo search results and did not see any key words or meta tags for "Carey."
On March 21, 2007, at 4:38 p.m., Plaintiffs' counsel again sent an e-mail message to Defendants' counsel. In that e-mail, Plaintiffs noted that "it appears that your client continues to unlawfully include CAREY in a hyperlink to its website," and included a screenshot displaying a hyperlink in Google "Plus Box" map data, for "Carey Limousine NYC," to www.internationalchauffeuredservices.com. (Pls.' Ex. 12.) The next day, on March 22, 2007, at 3:29 p.m., Plaintiffs' counsel sent an e-mail to Defendants' counsel, carbon copying Mr. Erlich. In that e-mail, Plaintiffs' counsel noted that Defendants' counsel was out of the office4 and asserted, "I am copying your client on this e-mail so that he can take the action I request in my e-mail below immediately." (Pls.' Ex. 13.) On April 17, 2007, at 9:49 p.m., Plaintiffs' counsel sent an e-mail to Defendants' counsel, noting a hyperlink in Google "Plus Box" map data, for "Carey Limousine NYC," to www.internationalchauffeured services.com. (Pls.' Ex. 14.)
On July 19, 2007, Plaintiffs filed the present motion to cite Defendants for civil contempt. Plaintiffs assert that Defendants violated the Consent Judgment in three ways: (1) by continuing to own the domain name careylimousine.net; (2) by including the mark CAREY in hyperlinks to Defendants' website www.international chauffeuredservices.com (in Google); and (3) by including the mark CAREY in hyperlinks to Defendants' website www.limocenter.us (in Yahoo). Plaintiffs allege that they contacted Defendants about the domain infringement on February 9, 2007, about the Google hyperlink infringement on February 15, 2007, and about the Yahoo hyperlink infringement on March 2, 2007. Plaintiffs ask the Court to find Defendants in civil contempt; to order specific performance, including Defendants' removal of the hyperlinks and transfer of the domain name to Plaintiffs; and to order payment of liquidated damages in the amount of $7,500, representing three acts of infringement, at $2,500 each, and fees, pursuant to the Consent...
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...allegedly violated], he should not be held in contempt.” 806 F.Supp. 1381, 1386 (N.D.Iowa 1992); see also Carey Licensing, Inc. v. Erlich, 627 F.Supp.2d 1029, 1036 (E.D.Mo.2007). The Court does not read either Rinehart or Chase Industries as establishing any sort of good faith defense to ci......