Opinion
Case No. 3:00CV7038
June 18, 2001
ORDER
This is a patent infringement case in which the plaintiff has filed, and then, pursuant to court order, supplemented a motion for contempt. The gravamen of the motion is that the defendant has violated an injunction that was issued after the defendant was found to have infringed the plaintiff's patent.
As originally filed, plaintiff's motion contended that the defendant's owner, Dr. Larry Frydman, had violated the injunction by discussion a possible sale of the infringing articles with some of the defendant's customers. (Doc. 133). Thereafter, plaintiff notified the court that those customers had agreed to refrain from selling the infringing products. That agreement sufficed, the plaintiff stated, to resolve the issue that caused it to seek a contempt finding against the defendant. (Doc. 141).
Plaintiff also, however, asserted that it had reason to believe that the defendant had committed other violations of the injunction, including operation of a website through which it was offering its infringing articles for sale. (Id.). In view of that representation, defendant was granted leave to file a supplemental response. Defendant having filed that response (Doc. 143), and the plaintiff having filed a further reply (Doc. 145), the plaintiff's motion for a finding of contempt is decisional.
There is little, if any, dispute that the defendant violated the injunction's prohibition against offering the infringing articles for sale in the United States through a website. It is also appears that it has ceased doing so, and that its sales amounted to less than $500, resulting, in turn, in a profit of about $160.
During the period of the website's infringing activity, Dr. Frydman's forty-year old wife died suddenly, and shortly thereafter, his father suffered a heart attack. Plaintiff argues, in effect, that these events may mitigate, but they do not excuse the failure to have complied fully with the injunction.
For the reasons that follow, I find that the defendant's actions in selling its infringing articles over one of its websites violated the injunction. Nonetheless, I decline at present to enter a formal finding of contempt or impose any sanctions.
In Spallone v. United States, 493 U.S. 265, 276 (1990), the Supreme Court stated, "`in selecting contempt sanctions, a court is obliged to use the "least possible power adequate to the end proposed."`" (quoting United States v. City of Yonkers, 856 F.2d 444, 454 (2nd Cir. 1988) (quoting Anderson v. Dunn, 6 Wheat., at 231). As the Second Circuit recently noted in E.E.O.C. v. Local 28 of Sheet Metal Workers Intern. Ass'n, 247 F.3d 333, 336 (2nd Cir. 2001), "In a civil contempt proceeding, the district court has `broad discretion to fashion an appropriate coercive remedy . . . based on the nature of the harm and the probable effect of alternative sanctions, . . . .'" (quoting N.A. Sales Co. v. Chapman Industries Corp., 736 F.2d 854, 857 (2d Cir. 1984)). In selecting an appropriate sanction, the Sixth Circuit has stated, "`The magnitude of the sanctions imposed should be assessed by weighing the harm caused by noncompliance, and the probable effectiveness of any suggested sanction in bringing about the result desired.'" Glover v. Johnson, 199 F.3d 310, 312 (6th Cir. 1999) (quoting United States v. United Mine Workers, 330 U.S. 258, 304 (1947)).
The defendant's violations of the injunction, though not to be taken lightly, appear to have been de minimus. The profit engendered was slight, and it is hard, in view of the death of his wife and his father's condition, to fault him too severely for his failure to have acted more promptly to terminate those sales.
I am, in any event, persuaded that the integrity of this court's injunction and its enforceability will not be impaired if I decline to impose a sanction at this time. The plaintiff's response to the defendant's violations has been vigorous and thorough, and puts it and Dr. Frydman on clear notice that the plaintiff is willing to respond to any noncompliance with the injunction. Defendant also has competent counsel, who, no doubt, has made clear the risks of being inattentive, even in the slightest, to the injunction and its commands.
I am satisfied, for now, that no sanction need be imposed. That is not to say that, if further violations come to my attention, I will then be forgiving of misconduct. A court has no means, aside from its ability to impose sanctions, for making its orders meaningful and effective. I have not, and will not, hesitate to use contempt sanctions to make certain that that power is not diminished.
In this case and instance, I am, however, confident that the defendant will refrain from any further acts of infringement. If it fails to do so, the plaintiff can renew its motion, which I am denying without prejudice, that sanctions be imposed for the actions which have brought this motion here at this time. In reaching this decision, I am fully cognizant of the expense to which the plaintiff has been put. Defendant should understand that if further problems with compliance with the injunction arise, I will be strongly inclined to impose sanctions, including an award of fees as requested thus far. Thus, though I find that the defendant violated the injunction, imposition of sanctions will be withheld pending further developments, if any.
Finally, I will not require the defendant to produce Dr. Frydman's tax returns, and I will not address the issue of whether I have jurisdiction over him. That request and issue can be addressed at some later time, if either party thinks it necessary to do so.
It is, therefore,
ORDERED THAT: plaintiff's motion for a finding of contempt shall be granted, to the extent that it requests a finding that the defendant violated the injunction, but denied without prejudice with regard to its request for a formal finding of contempt and an award of sanctions.
So ordered.