Wolfard Glassblowing Co. v. Vanbragt

• Decision Date: 07 July 1997
• Docket Number: No. 96-35287,96-35287
• Citation: 118 F.3d 1320
• Parties: , 97 Cal. Daily Op. Serv. 5339, 97 Daily Journal D.A.R. 8668 WOLFARD GLASSBLOWING COMPANY, Plaintiff-Appellee, v. Willy VANBRAGT; Mary Vanbragt, individually, and doing business as Zodiac Expressions, Defendants-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1320

118 F.3d 1320

43 U.S.P.Q.2d 1378, 97 Cal. Daily Op. Serv. 5339,

97 Daily Journal D.A.R. 8668

WOLFARD GLASSBLOWING COMPANY, Plaintiff-Appellee, v. Willy VANBRAGT; Mary Vanbragt, individually, and doing business as Zodiac Expressions, Defendants-Appellants.

No. 96-35287.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Jan. 7, 1997.

Decided July 7, 1997.

Thomas M. Singman, Oakland, CA, for plaintiff-appellee.

Frank J. Dykas, Boise, ID, for defendants-appellants.

Appeal from the United States District Court for the District of Idaho; Edward J. Lodge, District Judge, Presiding. D.C. No. CV-89-01197-EJL.

Before: CANBY and TASHIMA, Circuit Judges and SILVER ^*, District Judge.

CANBY, Circuit Judge.

Willy and Mary Vanbragt, doing business as Zodiac Expressions, appeal the district court's judgment that held them in civil contempt. The district court concluded that Zodiac had violated a consent judgment and permanent injunction that prohibited it from making or selling oil lamps that are "colorable imitations" of the Wolfard Glassblowing Company's oil lamps. We conclude that the district court did not err in finding that Zodiac made and sold lamps that are colorable imitations of Wolfard's lamps. The district court accordingly did not abuse its discretion in holding Zodiac in civil contempt, and we affirm its judgment.

BACKGROUND

Wolfard makes and sells the "Wolfard Lamp," which is a glass oil lamp. In January 1990, Wolfard registered a trademark for the Wolfard Lamp with the Patent and Trademark Office under a trade dress theory. Wolfard's mark consists of "the overall visual impression of a glass oil lamp design featuring a spherical oil reservoir suspended within a glass cylinder by a glass stem attached to the inside wall of the cylinder."

In 1989, Wolfard brought an unfair competition action against Zodiac in an effort to stop Zodiac from selling their "Virgo Lamps," which Wolfard contended were copies of the Wolfard Lamp. The Virgo Lamps at that time were virtually identical to the Wolfard Lamp, consisting of a glass cylinder with a suspended spherical oil reservoir.

In April 1990, after Wolfard had registered its trademark, Wolfard and Zodiac agreed to settle the unfair competition action. Pursuant to their agreement, the district court entered a consent judgment and permanent injunction that enjoined Zodiac from making, distributing, selling, or advertising any oil lamp that was a "simulation, reproduction, counterfeit, copy, or colorable imitation" of the Wolfard Lamp design. In the consent judgment, Zodiac stipulated that the Wolfard Lamp trademark was valid and that the Virgo Lamp infringed Wolfard's trademark.

In 1995, Wolfard filed a motion in the district court for a contempt judgment. Wolfard alleged that Zodiac had violated the consent decree by selling lamps that were only slightly different from the original Virgo Lamps. Zodiac was selling lamps under the "Virgo" name that consisted of a glass cylinder with a suspended oil reservoir that was shaped like an inverted tear drop, not a The district court found that the new Virgo Lamps were a "colorable imitation" of the Wolfard Lamp, in violation of the consent decree. The district court therefore held Zodiac in civil contempt. The district judge based his conclusion primarily on a visual comparison of the Wolfard Lamp and the new Virgo Lamp. The district judge also considered "counsels' arguments." The district court ordered Zodiac to comply with the 1990 consent judgment, destroy all "offending" lamps, and pay the costs and attorneys' fees that Wolfard had incurred in bringing the contempt motion.

sphere as in the Wolfard Lamp and the original Virgo Lamp.

ANALYSIS

For Wolfard to succeed in its motion for civil contempt, it had to show by clear and convincing evidence that Zodiac violated the consent judgment beyond substantial compliance, and that the violation was not based on a good faith and reasonable interpretation of the judgment. See In re Dual-Deck Video Cassette Antitrust Litigation, 10 F.3d 693, 695 (9th Cir.1993). We conclude that the district court did not abuse its discretion in determining that Wolfard had met this burden. ¹

The basic issue is whether Zodiac violated the consent judgment by marketing "colorable imitations" of Wolfard's oil lamps. Id. The term "colorable imitation" in trademark law means "any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive." 15 U.S.C. §§ 1127, 1114(1) (1994). In determining whether a defendant has committed trademark infringement by colorable imitation, we have employed a number of factors to determine the likelihood of confusion. See Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114, 1116-17 (9th Cir.1990). For example, we have indicated that the court may consider the similarity of the defendant's mark to the plaintiff's trademark, the goods' marketing channels, evidence of actual consumer confusion, and numerous other related factors. Id. at 1117. A plaintiff seeking to establish infringement in the first instance would wish to marshal evidence on as many of these factors as possible.

As the district court noted, however, the issue here is not whether Zodiac infringed Wolfard's trademark. The issue is whether Zodiac violated a consent judgment. See Vertex Distrib., Inc. v. Falcon Foam Plastics, Inc., 689 F.2d 885, 889 (9th Cir.1982). We agree with the Second Circuit that a plaintiff in Wolfard's position, who already has a judgment establishing that the defendant has infringed, is not required to muster all of the evidence it would need to make out an original infringement case in order to prove contempt.

When enforcing injunctions that enjoin use of any mark confusingly similar to the protected mark, courts should not adjudicate issues such as product proximity but should simply evaluate whether or not the new mark is confusingly similar to the protected mark.... Although the terms of such an injunction impose a heavier burden on an infringing party with a redesigned mark than is imposed on a newcomer with a similar mark, "a party who has once infringed a trademark may be required to suffer a position less advantageous than that of an innocent party."

Wella Corp. v. Wella Graphics, Inc., 37 F.3d 46, 48 (2d Cir.1994) (quoting Oral-B Labs. v. Mi-Lor Corp., 810 F.2d 20, 22-23 (2d Cir.1987)). Wolfard would have had no incentive to settle its infringement case if the resulting injunction could not be enforced without renewed litigation of all of the elements of its original infringement claim. See id. Thus several of the marketing factors urged by Zodiac are not in issue. See id. The question is no longer trademark infringement; it is whether Zodiac's new lamp is a "colorable imitation" of Wolfard's lamp. We thus conclude that Wolfard, in order to establish a violation of this consent decree, need not prove a likelihood of consumer confusion in This conclusion is consistent with the rule that an infringer must keep a fair distance from the "margin line." See Plough, Inc. v. Kreis Labs., 314 F.2d 635, 639 (9th Cir.1963). Zodiac admitted in the consent judgment that its original Virgo Lamps infringed Wolfard's trademark. Zodiac should not then be able to make minimal changes in its product in order to test the outer boundaries of that judgment; Zodiac had a duty to stay well away from Wolfard's trademark:

the same manner that we would require in a trademark infringement case.

[A trademark infringer] should have its conduct carefully scrutinized in future use and should not be allowed to claim the same leniency accorded a good faith user who starts use of the mark which the enjoined defendant has shifted to....