Omega World Travel, Inc. v. Omega Travel and Shipping Agencies, Inc.

• Citation: 905 F.2d 1530
• Decision Date: 10 May 1990
• Docket Number: Nos. 89-3268,890-3282,s. 89-3268
• Parties: Unpublished Disposition NOTICE: Fourth Circuit I.O.P. 36.6 states that citation of unpublished dispositions is disfavored except for establishing res judicata, estoppel, or the law of the case and requires service of copies of cited unpublished dispositions of the Fourth Circuit. OMEGA WORLD TRAVEL, INC., Plaintiff-Appellant, v. OMEGA TRAVEL AND SHIPPING AGENCIES, INC., Defendant-Appellee, and Omega Travel, Inc., Defendant. OMEGA WORLD TRAVEL, INC., Plaintiff-Appellee, v. OMEGA TRAVEL AND SHIPPING AGENCIES, INC., Defendant-Appellant, and Omega Travel, Inc., Defendant.
• Court: United States Courts of Appeals. United States Court of Appeals (4th Circuit)

Page 1530

905 F.2d 1530

15 U.S.P.Q.2d 1800

Unpublished Disposition

NOTICE: Fourth Circuit I.O.P. 36.6 states that citation of unpublished dispositions is disfavored except for establishing res judicata, estoppel, or the law of the case and requires service of copies of cited unpublished dispositions of the Fourth Circuit.

OMEGA WORLD TRAVEL, INC., Plaintiff-Appellant, v. OMEGA TRAVEL AND SHIPPING AGENCIES, INC., Defendant-Appellee, and Omega Travel, Inc., Defendant.

OMEGA WORLD TRAVEL, INC., Plaintiff-Appellee, v. OMEGA TRAVEL AND SHIPPING AGENCIES, INC., Defendant-Appellant, and Omega Travel, Inc., Defendant.

Nos. 89-3268, 890-3282.

United States Court of Appeals, Fourth Circuit.

Argued March 8, 1990.

Decided May 10, 1990.

Appeals from the United States District Court for the Eastern District of Virginia, at Richmond. Robert R. Merhige, Jr., Senior District Judge. (CA-88-166-R)

Barry Roberts, Ulmer & Berne, Washington, D.C., for appellant.

John F. Rick, Maloney, Yeatts & Barr, P.C., Richmond, Va. (Argued), for appellees. Michele A. Haley, Maloney, Yeatts & Barr, P.C., Richmond, Va., on brief.

E.D.Va., 710 F.Supp. 169.

AFFIRMED.

Before ERVIN, Chief Judge, and K.K. HALL and WILKINS, Circuit Judges.

PER CURIAM:

This is an appeal from an Order holding Omega World Travel, Inc. ("World") in civil contempt for violating a Consent Order previously entered by the court below in settlement of a trademark infringement action originally brought by World against Omega Travel & Shipping Agencies, Inc. ("Travel"). On appeal, World argues that: (1) it was in substantial compliance with the Consent Order; (2) the sanctions, premised on criminal rather than civil contempt, were imposed without regard to due process; and (3) the trial court erred in awarding monetary damages in the absence of demonstrable losses. Travel cross-appeals the district court's denial of attorneys' fees. Because no error was committed by the lower court, the judgment below is hereby affirmed in all respects.

I.

On March 10, 1988, World brought a trademark infringement and unfair competition action against Travel. One week before the scheduled start of trial, the parties joined in a consent decree, which was entered by the lower court on June 8, 1988 (the "Consent Order"). The Consent Order limited both parties' use of the word "Omega" in the advertising and marketing of their respective travel services in the greater Richmond, Virginia, metropolitan area. On February 15, 1989, Travel filed a Motion for Order to Show Cause, alleging that World's advertisement in the Atlantic Bell System's "Yellow Pages" for the "Greater Richmond" area violated the Consent Order, and requesting that World be held in civil contempt.

On March 14, 1989, the court conducted an evidentiary hearing on the issue of World's compliance with the Consent Order. Following the hearing, the district court found World in violation of the third numbered paragraph of the Consent Order which provides that World is:

permanently ENJOINED AND RESTRAINED from using, in connection with sale or provision of travel services, in the same cities and counties named in the preceding paragraph, any service marks, trade names, trademarks, or other name containing the word "Omega" and identifying its services, other than all of the words in its full corporate name as of the date of this Order, except that it may omit the word "Inc." from such identification. The words "Omega" and "World" shall be in the same typeface and size.

In the challenged advertisement, the word "Omega" was approximately four times larger than the word "World." Accordingly, on April 6, 1989, the court entered an order finding World in civil contempt, imposing a fine of $5,000 payable directly to Travel, and requiring World to install a recorded message for the telephone number listed in World's advertisement. ¹ World now appeals that decision.

II.

A district court's finding that a party is in violation of one of its orders may not be set aside unless clearly erroneous. Fed.R.Civ.P. 52(a). There is no evidence of clear error in the record below. The third numbered paragraph of the Consent Order explicitly states: "The words 'Omega' and 'World' shall be in the same typeface and size." In World's Yellow Pages advertisement, the word "Omega" was printed significantly larger than the word "World." Moreover, the word "Omega" was printed in a disproportionately large and conspicuous typeface.

In its defense, World asserts that its advertisement was permissible under the fourth numbered paragraph of the Consent Order. That paragraph provides:

The prohibitions in paragraph 3 above shall not apply to advertising appearing in the specified geographic areas in nationally circulated print media, or in other print media published outside of the specified areas and not primarily distributed in those areas.

By its own terms, this exception does not apply to the advertisement at issue in this case. First, the advertisement appeared in the Yellow Pages for the "Greater Richmond" area, the region expressly covered by the Consent Order. Second, that particular phone directory is circulated within and intended for a specific region, the Richmond metropolitan area, and in no way constitutes a national publication. There is no doubt that World's advertisement is in violation of the Consent Order.

As an alternative defense, World claims that it took reasonable steps to comply with the Consent Order after the filing of this enforcement action, and that its violation was neither intentional nor willful. Therefore, World maintains that it has made a good faith effort to satisfy its obligations to Travel, and that it was in substantial compliance with the Consent Order. The district court, however, expressly found "no evidence that World made a good faith attempt to comply with the order," that "various World marketing devices other than the offending ad were also in violation of the decree as recently as the week before the hearing," ² that "World certainly did not take reasonable steps" to comply with the Consent Order, and that "World continued to make almost no effort, much less a good faith effort to comply with the decree, even after entry of the show cause order." The record supports these findings. Even if this court were to conclude that the trial court's findings on this point were clearly erroneous as a matter of law, "good faith alone does not immunize a party from a civil contempt sanction for non-compliance with a court order." McLean v. Central States S & S Areas Pension Fund, 762 F.2d 1204, 1210 (4th Cir.1985).

III.

As a general matter, contempt proceedings are neither entirely civil nor altogether criminal in nature, but rather can partake of the characteristics of both. Gompers v. Buck's Stove & Range Co., 221 U.S. 418, 444, 31 S.Ct. 492, 499, 55 L.Ed. 797, 806 (1911). ³ Most frequently, the distinction between civil and criminal contempt depends on the actions of the contemnor and the nature of the sanctions imposed by the court. For example, the refusal to do an act commanded by a court ordinarily constitutes civil contempt, while the doing of a forbidden act traditionally comprises criminal contempt. Id. Moreover, it is civil contempt if the punishment is remedial, coercive and for the benefit of the complainant, but criminal contempt if the sentence is punitive and primarily intended to vindicate the authority of the court. Id.; see also Richmond Black Police Officers Assn. v. City of Richmond, 548 F.2d 123, 125-26 (4th Cir.1977); Carbon Fuel Co. v. United Mine Workers of America, 517 F.2d 1348, 1349 (4th Cir.1975); C. Wright & A. Miller, 11 Federal Practice & Procedure Sec. 2960, at 583-98 (1973); G. Wright, et al., Civil and Criminal Contempt in the Federal Courts, 17 F.R.D. 167 (1955) (all discussing the salient differences between civil and criminal contempt). ⁴

In Consolidation Coal Co. v. Local 1702, United Mineworkers of America, this court elaborated upon the differences between civil and criminal contempt, stating:

We recognize at the outset that the gist of criminal contempt is to punish past behavior, while the essence of civil contempt is to coerce future behavior. To determine whether a contempt order was civil or criminal we must decide whether the contempt order was both forward-looking in application and compensatory.

683 F.2d 827, 830 (4th Cir.1982). The court went on to hold that a contempt order was civil in nature if the punishment imposed was forward-looking and compensatory. Id.

Based on the standard enunciated in Consolidation Coal, it is clear that the two sanctions imposed in this case were based on civil contempt. First, the recorded telephone message which the trial court required World to install for the phone number listed in its disputed advertisement was most certainly a prospective and corrective punishment. There is ample language in the district court's opinion to the effect that this special requirement was intended as "a remedy," a method of "coercing future compliance" by the contemnor, and a means of "compensating" the complainant. Second, the monetary damages awarded in this case also were intended by the lower court to be compensatory. In its opinion, the trial court stated that "the payover to Travel of the proceeds of a fine against World will work, in part, toward accomplishing the dual objectives of compensating Travel for its losses and denying World the benefits of its wrongdoing."

Moreover, the court below ordered that, given "the equities of this case," the $5,000 fine be paid directly to Travel. In Carbon Fuel Co., this court held that a punishment was criminal in nature if the court imposing monetary sanctions required the contemnor to pay the fine to the clerk of the court, and indicated that a punishment was civil in nature if the court ordered the contemnor to pay the fine directly to the complainant. 517 F.2d at 1349-50. Finally, it should be noted...