Delta Sigma Theta Sorority, Inc. v. Bivins et al

Filing 139

ORDER denying 122 (1)Plaintiff Delta Sigma Theta Sorority, Inc.'s Motion for an Order to Show Cause and to Hold Defendants in Contempt; denying as moot 126 Defendants' Motion to Strike Plaintiff's Motion for an Order to Show Cause and to Hold Defendants in Contempt. Signed by Judge Sheri Polster Chappell on 3/26/2015. (LMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
DELTA SIGMA THETA SORORITY,
INC.,
Plaintiff,
v.

Case No.: 2:14-cv-147-FtM-38CM

LETISHA D. BIVINS, ALPHONSO D.
GOINS, FRATHOUSE CLOTHING,
LLC,
Defendants.
___________________________________/
ORDER1
This matter is before the Court on Plaintiff Delta Sigma Theta Sorority, Inc.'s Motion
for an Order to Show Cause and to Hold Defendants in Contempt (Doc. #122) filed on
February 16, 2015. Defendants Letisha D. Bivins, Alphonso D. Goins, and Frathouse
Clothing, LLC did not file a written response to Plaintiff's motion, and the time to do so
has expired.2 Although the Defendants did not file a written response, the Court held a
Show Cause Hearing on March 24, 2015, at which time both parties were allowed to
argue their respective positions. Thus, this matter is ripe for review.

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The Court accepts no responsibility for the availability or functionality of any hyperlink. Thus, the fact that
a hyperlink ceases to work or directs the user to some other site does not affect the opinion of the Court.
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On March 3, 2015, Defendants filed a Joint Motion to Strike Plaintiff's Motion for an Order to Show Cause
and to Hold Defendants in Contempt. (Doc. #126). In this motion, Defendants stated, "[i]n a separate filing
to be filed in due court, Defendants will fully explain the legal and factual basis supporting the denial of
Plaintiff's contempt motion." (Id. at 2 n.1). To date, Defendants have not submitted any such filing.

BACKGROUND
Plaintiff is a not-for-profit, Greek-letter service organization founded in 1913 and
incorporated under the laws of the District of Columbia. (Doc. #116 at ¶¶ 3, 13). Plaintiff
owns several trademarks and service marks ("Marks") used to promote its organization.
(Id. at ¶ 19; Doc. #116-3). Plaintiff grants licenses to select vendors so that they may sell
clothing and other merchandise imprinted with Plaintiff's Marks. (Doc. #116 at ¶ 23; Doc.
#116-7).
Defendant FratHouse Clothing, Inc. is a Florida limited liability company that sells
apparel and accessories for members of historically African-American sororities and
fraternities. (Doc. #116 at ¶ 6). According to Plaintiff, Defendants Alphonso Goins and
Letisha D. Bivins are (or were) managing members of FratHouse Clothing. (Id. at ¶¶ 45). Although Defendants are not approved vendors of Plaintiff, they have allegedly been
selling and advertising merchandise (e.g., tee shirts, polo shirts, tote bags, and drawstring
bags) imprinted with Plaintiff's registered and unregistered Marks on Facebook, Twitter,
and its website (www.frathouseclothing.com).
Consequently, Plaintiff commenced this trademark infringement action against
Defendants on February 26, 2013, in the United States District Court for the District of
Columbia. (Doc. #1). On March 17, 2014, the case was transferred to this Court under
28 U.S.C. § 1406(a). (Doc. #60). Before doing so, the D.C. District Court granted
Plaintiff's motion for a temporary restraining order. (Doc. #37). This temporary restraining
order was extended three times, the last of which expired on March 12, 2014, when the
case was transferred here. (Doc. #60).

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Plaintiff immediately moved this Court for a temporary restraining order and
preliminary injunction that enjoined Defendants from infringing on its Marks. (Doc. #62).
Only Defendant Bivins opposed Plaintiff's motion. (Doc. #69). On April 1, 2014, the Court
granted the temporary restraining order but deferred ruling on the preliminary injunction.
(Doc. #65 at 8-9).
Fourteen days later, the Court held a hearing on the preliminary injunction. (Doc.
#76). Only Plaintiff and Defendant Bivins appeared. The Court granted the preliminary
injunction (Doc. #76) and memorialized its ruling on January 22, 2015 (Doc. #117). As in
the temporary restraining order (Doc. #65), the Court restrained, enjoined, and prohibited
Defendants from, in pertinent part, (1) "[m]anufacturing, distributing, marketing,
advertising, promoting, . . . offering for sale, . . . or otherwise distributing any merchandise
that uses any of Plaintiff's registered or unregistered trademarks as depicted in Exhibits
3 and 4 to the First Amended Complaint (Doc. #116-3; Doc. #116-4), or any mark that is
confusingly similar to Plaintiff's Marks"; and (2) "using any website to advertise, offer for
sale, or sell any products bearing Plaintiff's registered or unregistered Marks, or linking
any website or web content to any such website." (Doc. #117 at 2). The Court further
ordered Defendants to "remove, within twenty-four (24) hours of receiving th[e] Order, all
content from their FratHouse website (www.frathouseclothing.com), as well as FratHouse
Clothing Facebook pages, Twitter, and Flickr website[s] depicting any of Plaintiff's
registered or unregistered Marks, or any mark that is confusingly similar." (Id. at 3).
Plaintiff now moves to hold Defendants in contempt because they have allegedly
not removed content promoting merchandise bearing Plaintiff's Marks from FratHouse
Clothing's Facebook pages as previously directed by this Court. (Doc. #65; Doc. #117).

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In support, Plaintiff presents twenty-nine (29) images of merchandise promoting its Marks
that Goins posted (and/or reposted) on FratHouse Clothing's Facebook pages in late
2013. (Doc. #122-3). Plaintiff's Intellectual Property Specialist allegedly discovered these
images on January 28, 2015, February 11, 2015, and March 22, 2015. (Id.). Since these
images purportedly violate the preliminary injunction order, Plaintiff requests the following
relief:
(1) Defendants be held in contempt of court for violating the Court's
orders/injunctions;
(2) Defendants be sanctioned per day of violation of the Court's orders per
infringing promotion;
(3) If Defendants cannot satisfy the Court that they will remove and keep the
prohibited content off of the internet in accordance with the Court's orders,
that the Court issue an order requiring FratHouse Clothing's website (home
page www.frathouseclothing.com) and Facebook business page (home page
www.facebook.com/frathouseclothing) to be taken down from the internet
entirely;
(4) FratHouse Clothing and Goins be ordered to pay Plaintiff's costs and
attorneys' fees associated with this motion; and
(5) Any other relief deemed appropriate by the Court.
(Doc. #122 at 1-2).
DISCUSSION
A district court has the inherent power and authority to punish a party for
disobeying or resisting its orders. See 18 U.S.C. § 401(3). "Where an injunction is
ordered, the parties are bound to obey it and are under an obligation to take steps to
insure that violations of the order, even inadvertent, do not occur. . . . An injunctive order
is an extraordinary writ, enforceable by the power of contempt." Smith Barney, Inc. v.
Hyland, 969 F. Supp. 719, 722 (M.D. Fla. 1997) (citations omitted); see also Alderwoods

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Group, Inc. v. Garcia, 682 F.3d 958, 970 (11th Cir. 2012) ("[T]he court that enters an
injunctive order retains jurisdiction to enforce its order.").
In a civil contempt proceeding, the moving party must present "clear and
convincing" evidence that the court's order was violated. Howard Johnson Co., Inc. v.
Khimani, 892 F.2d 1512, 1516 (11th Cir. 1990) (citations omitted). "'This clear and
convincing proof must also demonstrate that 1) the allegedly violated order was valid and
lawful; 2) the order was clear, definite and unambiguous; and 3) the alleged violator had
the ability to comply with the order.'" McGregor v. Chierico, 206 F.3d 1378, 1383 (11th
Cir. 2000) (citation omitted).
"[O]nce the moving party makes [its] prima facie showing that the court order was
violated, the burden of production shifts to the alleged contemnor to show a 'present
inability to comply that goes beyond a mere assertion of inability. . . .'" Howard Johnson,
892 F.2d at 1516 (citations omitted). "The focus of a court's inquiry in civil contempt
proceedings is not on the subjective beliefs or intent of the alleged contemnors in
complying with the court order, but whether in fact their conduct complied with the order
at issue." Smith Barney, 969 F. Supp. at 722-23 (citations omitted). "Generally, conduct
that evinces substantial but not complete compliance with a court's order may be excused
in a contempt proceeding if it was made as part of a good-faith effort at compliance." Id.
at 723 (citation omitted). A "person who attempts with reasonable diligence to comply
with a court order should not be held in contempt." Newman v. Graddick, 740 F.2d 1513,
1525 (11th Cir. 1984).
If a district court finds a party in contempt, it has broad discretion in fashioning a
contempt sanction "to ensure compliance, as long as the sanctions are not greater than

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necessary." Smith Barney, 969 F. Supp. at 722 (citations omitted). "Such options include
a coercive daily fine, a compensatory fine, attorney's fees, expenses to the aggrieved
party, and coercive incarceration." Id. at 723 n.6.
Here, Defendants do not argue that the preliminary injunction order was invalid or
unlawful, or unclear and ambiguous. Nor do they argue that they were unable to comply
with its requirements. Instead, Defendants claim that they have made a good-faith effort
to comply with the preliminary injunction order and that any images of merchandise
promoting Plaintiff's Marks on FratHouse Clothing's Facebook pages were inadvertently
left on the social media account. The Court agrees with Defendants.
At the Hearing on March 24, 2015, Goins testified about his efforts to remove
images depicting Plaintiff's Marks from FratHouse Clothing's social media accounts. He
also testified about the obstacles he has faced in doing so largely because Facebook did
not offer him the capability to search FratHouse Clothing's photographs specifically for
Plaintiff's Marks.3 Consequently, Goins testified that, on several occasions, he combed
through more than 20,000 individual photographs posted on Facebook. Because of said
efforts, Goins admitted to discovering approximately fifteen (15) images of merchandise
promoting Plaintiff's Marks sometime after the Court issued the preliminary injunction
order but before Plaintiff filed the instant Motion.
photographs upon discovery.

However, he removed those

Also, because of his due diligence in removing any

offending images, Goins denied that any of the images Plaintiff presented in support of
the instant Motion are on FratHouse Clothing's Facebook pages. Goins also testified that

3

Goins testified that he is the sole account owner and manager of FratHouse Clothing's Facebook pages,
meaning he alone is responsible for maintaining the social media account.

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he checked the hyperlinks listed on the images that Plaintiff presents and that said images
are not viewable on Facebook.4
Accordingly, after careful consideration of the record, the parties' arguments at the
hearing, and applicable law, the Court finds that Defendants have made a good-faith effort
to comply with the Court's orders and will excuse the past violations now at issue. See
Smith Barney, 969 F. Supp. at 723. Defendants have shown to the Court's satisfaction
that any offending images on FratHouse Clothing's Facebook pages were inadvertently
left on the social media account after reasonable efforts were expended to ensure
removal.
To the extent Plaintiff argues that the custom order form on FratHouse Clothing's
store website is contemptuous, the Court disagrees. FratHouse Clothing's Facebook
pages offer hyperlinks to its website, and the website, in turn, offers an order form by
which an individual may request custom merchandise bearing symbols not otherwise
advertised. According to Plaintiff, an individual may view merchandise on FratHouse
Clothing's Facebook pages, click the website hyperlink, and order an item bearing their
Marks. Plaintiff's concern is unfounded. First, FratHouse Clothing's custom order form
is generic and merely a tool for the company to facilitate business. Second, Goins
testified that he has refused, on two occasions, to grant custom orders bearing Plaintiff's
Marks since the preliminary injunction. Plaintiff has not presented any evidence or
argument to the contrary.

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At the hearing, Plaintiff presented images purportedly on FratHouse Clothing's Facebook pages as of
March 22, 2015, that depicted merchandise bearing Plaintiff's Marks. After the hearing, however, the Court
tested several of the URLs listed on the images and received an error message stating, "[t]his content is
currently unavailable."

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Having excused Defendants' breach of the preliminary injunction order, the Court
will not impose any sanctions. The Court is satisfied that any outstanding contempt will
be promptly corrected and Defendants understand their complete compliance is
mandatory. See EEOC v. Guardian Pools, Inc., 828 F.2d 1507, 1515 (11th Cir. 1987)
(explaining "the purposes of civil contempt sanctions are 'to coerce the defendant into
compliance with the court's order,' and to compensate the complainant for losses
sustained" (citation omitted)). The Court's leniency, however, should not be taken as a
sign that any subsequent issue will be treated so kindly. On the contrary, any future
failure of Defendants to comply with the Court's preliminary injunction order will be met
with swift action to ensure full remedial relief.
Accordingly, it is now
ORDERED:
(1) Plaintiff Delta Sigma Theta Sorority, Inc.'s Motion for an Order to Show Cause
and to Hold Defendants in Contempt (Doc. #122) is DENIED.
(2) Defendants' Motion to Strike Plaintiff's Motion for an Order to Show Cause and
to Hold Defendants in Contempt (Doc. #126) is DENIED as moot.
DONE and ORDERED in Fort Myers, Florida this 26th day of March 2015.

Copies: All parties of record

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