Young v. United States Vuitton Et Fils Klayminc v. United States Vuitton Et Fils, Nos. 85-1329

• Court: United States Supreme Court
• Writing for the Court: Justice BRENNAN delivered the opinion of the Court with respect to Parts I, II, III-A, and IV, and an opinion with respect to Part III-B, in which Justice MARSHALL
• Citation: 481 U.S. 787,95 L.Ed.2d 740,107 S.Ct. 2124
• Parties: Gerald J. YOUNG, George Cariste, Sol N. Klayminc and Nathan Helfand, Petitioners v. UNITED STATES ex rel. VUITTON ET FILS S.A., et al. Barry Dean KLAYMINC, Petitioner v. UNITED STATES ex rel. VUITTON ET FILS S.A., Louis Vuitton S.A., et al
• Docket Number: 85-6207,Nos. 85-1329
• Decision Date: 26 May 1987

481 U.S. 787 107 S.Ct. 2124 95 L.Ed.2d 740 Gerald J. YOUNG, George Cariste, Sol N. Klayminc and Nathan Helfand, Petitioners

v.

UNITED STATES ex rel. VUITTON ET FILS S.A., et al. Barry Dean KLAYMINC, Petitioner v. UNITED STATES ex rel. VUITTON ET FILS S.A., Louis Vuitton S.A., et al.

Nos. 85-1329, 85-6207. Argued Jan. 13, 1987. Decided May 26, 1987. Syllabus

In an agreement settling a suit in which they had been named as defendants, two of the petitioners consented to the entry of a permanent injunction prohibiting them from infringing the trademark of respondent leather goods manufacturer (hereinafter respondent). Subsequently, upon submission of an affidavit by respondent's attorneys, the District Court found probable cause to believe that petitioners were engaged in conduct violative of the injunction. The court therefore granted the request of respondent's attorneys for appointment as special counsel to represent the Government in the investigation and prosecution of a criminal contempt action against petitioners. Ultimately, a jury convicted petitioners of either criminal contempt or of aiding and abetting that contempt. The Court of Appeals affirmed, rejecting petitioners' contention that the appointment of respondent's attorneys as special counsel violated their right to be prosecuted by an impartial prosecutor. The court stated, inter alia, that the judge's supervision of a contempt prosecution is generally sufficient to prevent the danger that the special prosecutor will use the threat of prosecution as a bargaining chip in civil negotiations.

Held: The judgment is reversed.

780 F.2d 179 (CA2 1985), reversed.

Justice BRENNAN delivered the opinion of the Court as to Parts I, II, III-A, and IV, concluding that:

1. District courts have authority to appoint private attorneys to prosecute criminal contempt actions. Pp. 793-802.

(a) Although Federal Rule of Criminal Procedure 42(b) does not authorize the appointment of private attorneys, its reference to such appointments acknowledges the long-settled rule that courts possess inherent authority to initiate contempt proceedings for disobedience to their orders, which authority necessarily includes the ability to appoint a private attorney to prosecute the contempt. The contention that only the United States Attorney's Office may bring a contempt prosecution is unavailing, since the Judiciary must have an independent means to vindi-

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cate its own authority without dependence on another Branch to decide whether proceedings should be initiated. Pp. 793-763.

(b) Courts' authority to initiate contempt prosecutions is not limited to the summary punishment of in-court contempts, but extends to out-of-court contempts as well. The underlying basis for the contempt power is the need to address disobedience to court orders regardless of whether such disobedience interferes with the conduct of trial. The distinction between in-court and out-of-court contempts has been drawn not to define when a court has authority to initiate a contempt prosecution, but to prescribe the procedures that must attend the exercise of that authority. Thus, although proceedings in response to out-of-court contempts are sufficiently criminal in nature to warrant the imposition of many procedural protections, this does not mean that their prosecution can be undertaken only by the Executive Branch, and it should not obscure the fact that the limited purpose of such proceedings is to vindicate judicial authority. Pp. 767-801.

(c) In order to ensure that courts will exercise their inherent power of self-protection only as a last resort, they should ordinarily request the appropriate prosecuting authority to prosecute contempt actions, and should appoint a private prosecutor only if that request is denied. Pp. 801-802.

2. Counsel for a party that is the beneficiary of a court order may not be appointed to undertake criminal contempt prosecutions for alleged violations of that order. A private attorney appointed to prosecute a criminal contempt should be as disinterested as a public prosecutor, since the attorney is appointed solely to pursue the public interest in vindication of the court's authority. In a case where a prosecutor also represents an interested party, however, the legal profession's ethical rules may require that the prosecutor take into account an interest other than the Government's. This creates an intolerable danger that the public interest will be compromised and produces at least the appearance of impropriety. The fact that the judge makes the initial decision to proceed with a contempt prosecution is not sufficient to quell concern that the interested prosecutor may be influenced by improper motives, since the prosecutor exercises considerable discretion in matters that are critical to the case but outside the court's supervision. The requirement of a disinterested prosecutor is consistent with this Court's earlier decisions recognizing that prosecutors need not be as disinterested as judges. Most such cases require the court's informed speculation as to whether the prosecutor is subject to extraneous influence, whereas such influence is a virtual certainty in cases such as the present. Pp. 802-809.

Justice BRENNAN, joined by Justice MARSHALL, Justice BLACKMUN, and Justice STEVENS, concluded in Part III-B that the harmless-

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error doctrine cannot apply when a court appoints counsel for an interested party as contempt prosecutor, since such error is so fundamental and pervasive that it requires reversal without regard to the facts or circumstances of the particular case. Pp. 809-814.

Justice SCALIA concluded that the District Court's error in appointing respondent's attorneys to prosecute the contempts requires reversal of the convictions. The appointments were defective because the federal courts have no constitutional power to prosecute contemners for disobedience of court judgments, and no power derivative of that to appoint attorneys to conduct contempt prosecutions. In light of the discretion allowed prosecutors, which is so broad that decisions not to prosecute are ordinarily unreviewable, it would be impossible to conclude with any certainty that these prosecutions would have been brought had the court simply referred the matter to the Executive Branch. Pp. 825.

BRENNAN, J., announced the judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, III-A, and IV, in which REHNQUIST, C.J., and MARSHALL, BLACKMUN, POWELL, STEVENS, and O'CONNOR, JJ., joined, and an opinion with respect to Part III-B, in which MARSHALL, BLACKMUN, and STEVENS, JJ., joined. BLACKMUN, J., filed a concurring opinion, post, p. ----. SCALIA, J., filed an opinion concurring in the judgment, post, p. ----. POWELL, J., filed an opinion concurring in part and dissenting in part, in which REHNQUIST, C.J., and O'CONNOR, J., joined, post, p. ----. WHITE, J., filed a dissenting opinion, post, p. ----.

James A. Cohen, New York City, for petitioners.

William C. Bryson, Washington, D.C., for the U.S., as amicus curiae, in support of petitioners, by special leave of Court.

J. Joseph Bainton, New York City, for respondents.

Justice BRENNAN delivered the opinion of the Court with respect to Parts I, II, III-A, and IV, and an opinion with respect to Part III-B, in which Justice MARSHALL, Justice BLACKMUN, and Justice STEVENS join.

Petitioners in these cases were found guilty of criminal contempt by a jury, pursuant to 18 U.S.C. § 401(3), for their

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violation of the District Court's injunction prohibiting infringement of respondent's trademark. They received sentences ranging from six months to five years.¹ On appeal to the Court of Appeals for the Second Circuit, petitioners urged that the District Court erred in appointing respondent's attorneys, rather than a disinterested attorney, to prosecute the contempt. The Court of Appeals affirmed, 780 F.2d 179 (CA2 1985), and we granted certiorari, 477 U.S. 903, 106 S.Ct. 3270, 91 L.Ed.2d 561 (1986). We now reverse, exercising our supervisory power, and hold that counsel for a party that is the beneficiary of a court order may not be appointed to undertake contempt prosecutions for alleged violations of that order.

I

The injunction that petitioners violated in these cases is a result of the settlement of a lawsuit brought in December 1978, in the District Court for the Southern District of New York, by Louis Vuitton, S.A., a French leather goods manufacturer, against Sol Klayminc, his wife Sylvia, his son Barry (the Klaymincs), and their family-owned businesses, Karen Bags, Inc., Jade Handbag Co., Inc., and Jak Handbag, Inc. Vuitton alleged in its suit that the Klaymincs were manufacturing imitation Vuitton goods for sale and distribution. Vuitton's trademark was found valid in Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769 (CA9 1981), and Vuitton and the Klaymincs then entered into a settlement agreement in July 1982. Under this agreement, the Klaymincs agreed to pay Vuitton $100,000 in damages, and consented to the entry of a permanent injunction prohibiting them from, inter alia, "manufacturing, producing, distributing, circulating, selling, offering for sale, advertising, promoting or displaying any product bearing any simulation, reproduction, counterfeit, copy, or colorable imitation" of

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Vuitton's registered trademark. App. to Pet. for Cert. 195-A to 196-A.

In early 1983, Vuitton and other companies concerned with possible trademark infringement were contacted by a Florida investigation firm with a proposal to conduct an undercover "sting" operation. The firm was retained, and Melvin Weinberg and Gunner Askeland, two former Federal Bureau of Investigation agents, set out to pose as persons who were interested in purchasing counterfeit goods. Weinberg expressed this interest to petitioner Nathan Helfand, who then...