PLAYBOY ENTERPRISES, INC.,
Plaintiff,
v.
CHUCKLEBERRY PUBLISHING, INC., TATTILO EDITRICE, S.p.A., PUBLISHERS DISTRIBUTING CORPORATION, and ARCATA PUBLICATIONS GROUP, INC.,
Defendants.
79. Civ. 3525 (SAS)
Date Filed 6-19-96
OPINION AND ORDER
SHIRA A. SCHEINDLIN, U.S.D.J.: Plaintiff, Playboy Enterprises, Inc. (“PEI”), has moved for a finding of contempt against Defendant, Tattilo Editrice, S.p.A. (“Tattilo”). PEI alleges that by. operating an Internet site from Italy under the PLAYMEN label, Tattilo has violated a judgment dated June 26, 1981, enjoining it from publishing, printing, distributing or selling in the United States an English language male sophisticate magazine under the name “PLAYMEN” (“Injunction”).
For the reasons enunciated below, the motion is granted. Tattilo must, within two weeks of the date of this Order: (1) either shut down its Internet site completely or refrain from accepting any new subscriptions from customers residing in the United States; (2) invalidate the user names and passwords to the Internet site previously purchased by United States customers; (3) refund to its United States customers the remaining unused portions of their subscriptions; (4) remit to PEI all gross profits earned from subscriptions to its PLAYMEN Pro Internet service by customers in the United States; (5) remit to PEI all gross profits earned from the sale of goods and services advertised on its PLAYMEN Internet service to customers in the United States; (6) revise its Internet site to indicate that all subscription requests from potential United States customers will be denied; and (7) remit to PEI its costs and attorney’s fees incurred in making this application. If these conditions have not been met within the stated two-week period, Tattilo shall pay to PEI a fine of $1,000 per day until it complies with this Order.
I. Facts
In 1967, Tattilo began publishing a male sophisticate magazine in Italy under the name PLAYMEN. Although the magazine carried an English title, it was written entirely in Italian. In July 1979, Tattilo announced plans to publish an English language version of PLAYMEN in the United States. Shortly thereafter, PEI brought suit against Tattilo to enjoin Tattilo’s use of the name PLAYMEN in connection with a male sophisticate magazine and related products. PEI has published the well-known male entertainment magazine “PLAYBOY” since 1953, which is sold throughout the world in a multitude of foreign languages. Plaintiff’s suit for injunctive relief alleged trademark infringement, false designation of origin, unfair competition based on infringement of Plaintiff’s common law trademark rights, and violations of the New York Anti-Dilution Statute.[1]
A permanent injunction was awarded on April 1, 1981, and a judgment subsequently entered on June 26, 1981, permanently enjoining Tattilo from:
a. using the word “PLAYMEN” or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of a male sophisticate magazine, published, distributed or sold in the United States;
b. publishing, printing, distributing or selling in the United States and importing into or exporting from the United States an English language male sophisticate magazine which uses the word “PLAYMEN” or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of such magazine;
c. using “PLAYBOY”, “PLAYMEN” or any other word confusingly similar with either such word in or as part of any trademark, service mark, brand name, trade name or other business or commercial designation, in connection with the sale, offering for sale or distributing in the United States, importing into or exporting from the United States, English language publications and related products. Declaration of David R. Francescani, Attorney for Playboy, dated February 27, 1996 (“Francescani Decl.”) Ex. 1.
PEI was similarly successful in enjoining the use of the PLAYMEN name in the courts of England, France and West Germany. However, the Italian courts ruled that “lexically” PLAYBOY was a weak mark and not entitled to protection in that country. See Playboy Enters., Inc. v. Chuckleberry Publishing, Inc., 687 F.2d 563, 569 n.3 (2d Cir. 1982) . The publication of PLAYMEN in Italy continues to the present day.
On approximately January 22, 1996, PEI discovered that Tattilo had created an Internet site featuring the PLAYMEN name.[ 2] This Internet site makes available images of the cover of the Italian magazine, as well as its “Women of the Month” feature and several other sexually explicit photographic images. Users of the Internet site also receive “special discounts” on other Tattilo products, such as CD ROMs and Photo CDs. Tattilo created this site by uploading these images onto a World Wide Web server located in Italy. These images can be accessed at the Internet address “http://www.playmen.it.”[3]
Two distinct services are available on the PLAYMEN Internet site. “PLAYMEN Lite” is available without a paid subscription, allowing users of the Internet to view moderately explicit images via computer. It appears that the main (if not sole) purpose of the PLAYMEN Lite service is to allow prospective users to experience a less explicit version of the PLAYMEN product before committing to purchasing a subscription. In addition, the PLAYMEN Internet site offers the more sexually explicit service called “PLAYMEN Pro.” PLAYMEN Pro is available only to users who have paid the subscription price.
In order to access the Lite version of the PLAYMEN Internet service, the prospective user must first contact Tattilo. The user will then receive a temporary user name and password via e-mail. To subscribe to PLAYMEN Pro, the prospective user must fill out a form and send it via fax to Tattilo. Within 24 hours, the user receives by e-mail a unique password and login name that enable the user to browse the PLAYMEN Pro service.
The PLAYMEN Internet site is widely available to patrons living in the United States. More to the point, anyone in the United States with access to the Internet has the capacity to browse the PLAYMEN Internet site, review, and obtain print and electronic copies of sexually explicit pages of PLAYMEN magazine. Francescani Decl. 4. All that is required to establish the account is the brief contact with Tattilo outlined above.
II. The Standard for Holding a Party in Contempt
It is well settled that “[t]he power to punish for contempts is inherent in all courts.’” Chambers v. Nasco, Inc., 501 U.S. 32, 44 (1991) (quoting Ex parte Robinson, 19 Wall. 505, 510 (1874)). This inherent power “reaches both conduct before the court and that beyond the court’s confines, for “[t]he underlying concern that gave rise to the contempt power was not … merely the disruption of court proceedings. Rather, it was disobedience to the orders of the Judiciary, regardless of whether such disobedience interfered with the conduct of trial.’” Id. (quoting Young v. U.S. ex rel Vuitton et Fils S.A., 481 U.S. 787, 798 (1987)); see also In re Weiss, 703 F.2d 653, 660 (2d Cir. 1983) (“acts of willful disobedience to clear and unambiguous orders of the court constitute contempt of court”).
An order of contempt “is a potent weapon, to which courts should not resort where there is a fair ground of doubt as to the wrongfulness of the defendant’s conduct.” King v. Allied Vision, Ltd., 65 F.3d 1051, 1058 (2d Cir. 1995) (citations omitted). A contempt order is warranted only where the moving party establishes by clear and convincing evidence that the alleged contemnor violated the district court’s edict. Id.; see also Hart Schaffner & Marx v. Alexander’s Dep’t Stores, Inc., 341 F.2d 101, 102 (2d Cir. 1965).
Generally, the purpose of holding a party in civil contempt is “to enforce compliance with an order of the court or to compensate for losses or damages.” Powell v. Ward, 643 F.2d 924, 931 (2d Cir. 1981) (citation omitted). A court has the power to hold a party in civil contempt when (1) there is a “clear and unambiguous” court order; (2) there is clear and convincing proof of noncompliance; and (3) the party has not attempted to comply in a reasonably diligent manner. New York State Nat’l Org. for Women v. Terry, 886 F.2d 1339, 1351 (2d Cir. 1989), cert. denied, 495 U.S. 947 (1990); see also McComb v. Jacksonville Paper Co., 336 U.S. 187, 191 (1949). A “clear and unambiguous” order is one “specific and definite enough to apprise those within its scope of the conduct that is being proscribed.” Terry, 886 F.2d at 1352 (citation omitted). The alleged contemnor “must be able to ascertain from the four corners of the order precisely what acts are forbidden.” Dyywall Tapers and Pointers of Greater New York, Local 1974 v. Local 530 of Operative Plasterers and Cement Masons Int’l Ass’n, 889 F.2d 389, 395 (2d Cir. 1989), cert. denied, 494 U.S. 1030 (1990). Finally, failure to comply with the court order need not be willful. Canterbury Belts, Ltd. v. Lane Walker Rudkin, Ltd., 869 F.2d 34, 39 (2d Cir. 1989).
III. Discussion
