CPC International Inc v. Skippy Inc, 99-2318
| Decision Date | 05 April 2000 |
| Docket Number | No. 99-2318,99-2318 |
| Citation | 214 F.3d 456 |
| Parties | (4th Cir. 2000) CPC INTERNATIONAL, INCORPORATED, Plaintiff-Appellee, v. SKIPPY INCORPORATED; JOAN CROSBY TIBBETTS, Defendants-Appellants. AMERICAN CIVIL LIBERTIES UNION OF VIRGINIA, INCORPORATED, Amicus Curiae. . Argued: |
| Court | U.S. Court of Appeals — Fourth Circuit |
Page 456
v.
SKIPPY INCORPORATED; JOAN CROSBY TIBBETTS, Defendants-Appellants.
Decided: June 2, 2000.
Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria.
Richard L. Williams, Senior District Judge. (CA-86-109-1-A).
Page 457
COUNSEL ARGUED: Rodney Ray Sweetland, III, Arlington, Virginia, for Appellants. William Mack Webner, SUGHRUE, MION, ZINN,
MACPEAK & SEAS, P.L.L.C., Washington, D.C., for Appellee. ON BRIEF: Dov Szego, Williamsburg, Virginia; Rebecca K. Glenberg, AMERICAN CIVIL LIBERTIES UNION OF VIRGINIA FOUNDATION, Richmond, Virginia, for Amicus Curiae.
Before WILKINSON, Chief Judge, and WILKINS and WILLIAMS, Circuit Judges.
Vacated and remanded by published opinion. Chief Judge Wilkinson wrote the opinion, in which Judge Wilkins and Judge Williams joined.
Page 458
WILKINSON, Chief Judge:
This case involves a protracted dispute over the use of the trademark SKIPPY. In 1986, CPC International, the maker of Skippy Peanut Butter, brought suit against Skippy, Incorporated, for trademark infringement and unfair competition. The district court enjoined Skippy from communicating that CPC has no rights in the trademark SKIPPY for food products. In 1998, Skippy created the web site Skippy.com. CPC alleged that the web site violated the 1986 order, and the district court ordered Skippy to remove about ten pages of material from its web site. Because the district court's injunction lacks the findings and specificity required by Fed. R. Civ. P. 65(d) and because its substantial breadth raises serious First Amendment concerns, we vacate the injunction and remand for further proceedings.
I.
In 1923, Percy L. Crosby created a cartoon featuring a school-aged child named Skippy. The cartoon was syndicated and the Skippy character was marketed in cartoon books, magazine articles, and novels. Crosby obtained a federal trademark SKIPPY for cartoons depicting the humorous juvenile character. This mark was transferred to appellant Skippy, Incorporated, sometime after 1932. Appellant Joan Crosby Tibbetts is Percy Crosby's daughter and the current president of Skippy. Skippy currently owns a trademark SKIPPY for the cartoon comic strip.
CPC International and its predecessors have sold peanut butter in the United States under the trademark SKIPPY since 1933. CPC owns a federal trademark SKIPPY for peanut butter. In 1986, CPC brought suit alleging that Skippy had engaged in trademark infringement and unfair competition. Skippy had licensed the right to use "the word mark SKIPPY, the comic strip SKIPPY, [and] the fanciful character SKIPPY" on the packaging of caramel corn, popcorn, and nuts. CPC Int'l, Inc. v. Skippy, Inc., 651 F. Supp. 62, 65 (E.D. Va. 1986). The district court found that the use of the mark SKIPPY on caramel corn or any other food product constituted trademark infringement because it would create a likelihood of confusion with CPC's trademark in SKIPPY Peanut Butter. See id. at 67.
Accordingly, the district court issued an order (the 1986 order) that enjoined Skippy and Joan Tibbetts (1) "from continuing to offer to license, offer to sell, distribute, advertise or promote a caramel corn and peanut product or any other food product under the trademark SKIPPY or any mark confusingly similar thereto"; and (2) "from communicating in any manner with anyone that [Skippy's] rights in the trademark SKIPPY include the right to use SKIPPY on peanut butter and food products and, conversely, that CPC has no rights in the SKIPPY trademark in connection with these products."
In 1997, Skippy registered the domain name Skippy.com. The web site recounted the "Life and Times" of Percy Crosby, including his childhood, military career, and the popular success enjoyed by the Skippy cartoon character. It also included stories of an FBI investigation, "CPC's Malicious Prosecution," and "CPC's Fraud on the Courts." A "legal notice" on the web site stated "SKIPPY and the image of the character SKIPPY are trademarks and copyrights of SKIPPY, INC. Neither these marks nor the copyrighted works of Percy Crosby may be used without the permission of SKIPPY, INC."
The instant case arises out of CPC's motion to show cause why Skippy and Tibbetts should not be held in contempt of the 1986 order. On September 9, 1999, the district court ordered Skippy and Tibbetts to remove permanently significant portions of the web site. The passages to be deleted were highlighted and attached to the order. The court also enjoined appellants from "providing others with any of the deleted material on the Skippy.com
Page 459
website or any material that violates the Court's [1986 order]." On September 21, 1999, the district court entered a final order, which provided that upon showing of further violations of the 1986 order the court would impose a $500 per day damage award against appellants. Skippy and Tibbetts now appeal.
II.
It is important at the outset to define the precise focus of this lawsuit. This is not a defamation suit, and it is only an unfair competition suit insofar as it challenges Skippy's compliance with the 1986 order. The case involves solely CPC's motion to show cause why Skippy should not be held in contempt for violation of the 1986 order. Rather than addressing Skippy's conduct under the terms of that order, the district court simply issued a sweeping injunction requiring the wholesale removal of material from Skippy's web site.
We find that the district court's injunctive decree suffers from two related deficiencies. First, the injunction fails to comply with the terms of Fed. R. Civ. P. 65(d). Second, the injunction's substantial over breadth raises serious First Amendment concerns. We shall address each of these problems in turn.
A.
Rule 65(d) provides, "Every order granting an injunction . . . shall set forth the reasons for its issuance; shall be specific in terms; shall describe in reasonable detail . . . the act or acts sought to be restrained." Rule 65(d) applies to the district court's 1999 order because it is an "order granting an injunction." In fact, Rule 65(d) applies generally to "equitable decree[s] compelling obedience under the threat of contempt." International Longshoreman's Ass'n, Local 1291 v. Philadelphia Marine Trade Ass'n, 389 U.S. 64, 75 (1967).
The terms of Rule 65(d) "are mandatory and must be observed in every instance." Thomas v. Brock, 810 F.2d 448, 450 (4th Cir. 1987) (internal quotation marks omitted). "[T]he specificity provisions of Rule 65(d) are no mere technical requirements. The Rule was designed to prevent uncertainty and confusion on the part of those faced with injunctive orders, and to avoid the possible founding of a contempt citation on a decree too vague to be understood." Schmidt v. Lessard, 414 U.S. 473, 476 (1974); accord Hughey v. JMS Dev.
Corp., 78 F.3d 1523, 1531 (11th Cir. 1996); Town of Islip v. Eastern Air Lines, Inc., 793 F.2d 79, 83 (2d Cir. 1986). Moreover, without specificity, appellate review of an injunctive order is "greatly complicated, if not made impossible." Schmidt, 414 U.S. at 477. Rule 65(d) thus serves the twin purposes of providing fair notice of what an injunction requires and of facilitating appellate review. See Consumers Gas & Oil, Inc. v. Farmland Indus., 84 F.3d 367, 371 (10th Cir. 1996).
The district court's 1999 order states: "Defendants shall permanently remove the highlighted passages and titles shown on the attached Schedule A from anywhere in the Skippy.com Internet website . . . and shall not republish that deleted material or have that deleted material republished by others." In the attached Schedule A, the court simply lists and highlights what should be removed -- about ten pages of material. The injunction thus silences a substantial quantity of speech from Skippy's web site, including commentary on the ongoing litigation and the alleged mistreatment of Skippy cartoon creator Percy Crosby. Yet the district court does not explain how these statements violate the 1986 order. There are no findings that relate the redacted statements to the 1986 order. Nor are there any reasons given for issuance of the injunction. What is...
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