Tempur Sealy International, Inc. et al v. WonderGel, LLC et al
Filing
61
MEMORANDUM OPINION & ORDER: (1) DENYING IN PART & REMAINING PENDING IN PART pla's 51 Motion for Contempt; (2) pls shall file further papers in support of their motion by 5:00 PM on 4/19/16; (3) that dft WonderGEL shall file further papers in support of its objections by 5:00 PM on 4/20/16; (4) that plas shall file any further reply in support of its motion by 5:00 PM on 4/21/16, at which time this matter shall stand submitted; (5) that WonderGel shall resubmit a copy of the Goldilocks II video (UNDER SEAL) in a format readily readable on the court's equipment by 5:00 PM 4/21/16; in order to determine which forms are advisable, counsel should contact the court's Automation Dept; (6) that the court in its equitable discretio n & recognizing that this Order may hinder Defendant WonderGels e-commerce marketing platform, requires Plaintiffs to post a $100,000 security pursuant to Fed. R. Civ. P. 65(c) (Bond); court concludes that the previously posted bond isadequate i n order to eliminate that concern and that no further security is required; (7) that WonderGel shall immediately discontinue & direct third-parties over whom they may exercise control to discontinue the advertisement known as Goldilocks II including anywhere it appears on the Internet & refrain from any advertising that references or relies upon Goldilocks II or the advertising claims at issue in the Goldilocks II video including in any & all publications, commercial social media accounts, or other traditional oronline marketing venues, pending further order of the Court. Signed by Judge Joseph M. Hood on 4/18/16.(KJR)cc: COR,Automation Dept
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION AT LEXINGTON
TEMPUR SEALY
INC., et al.
INTERNATIONAL, )
)
Civil Action No.
)
Plaintiffs,
5:16-CV-83-JMH
)
)
v.
)
) MEMORANDUM OPINION AND ORDER
WONDERGEL, LLC, et al.,
)
)
Defendants.
)
****
****
****
****
This matter is before the Court upon Plaintiffs’ Motion
for Contempt [DE 51].
Defendants WonderGel, LLC, and EdiZONE,
LLC, have filed a Response [DE 58], stating their objections,
and Plaintiffs has filed a Reply in further support of their
motion.1
The Court has also had the benefit of the parties’
presentation of evidence and arguments during a hearing on
April 18, 2016.
At the conclusion of that hearing, the Court
ordered further briefing and ordered Defendant WonderGel, LLC,
1
Defendants have argued and Plaintiffs concede that EdiZONE,
LLC, has no control over the public performance of the video
referred to in this Memorandum Opinion and Order as
“Goldilocks II” and cannot properly be the subject of
Plaintiffs’ Motion for Contempt. Accordingly, the motion will
be denied with respect to Defendant EdiZONE, LLC.
1
to
discontinue
the
subject
advertisement,
known
for
the
purposes of the present motion as “Goldilocks II,” until this
motion is resolved.
The history relevant to the present motion is that, on
April 1, 2016, the Court issued an order requiring Defendants
to immediately discontinue from using the “Goldilocks Video”
and “refrain from any advertising that references or relies
upon the ‘Goldilocks Video’ or the advertising claims at issue
in
the
‘Goldilocks
publications,
Video’
any
and
account,
traditional or online marketing venues.”
[DE 40.]
no
“Goldilocks
within
that
social
in
media
dispute
commercial,
including
Defendants
twenty-four
hours
removed
of
the
the
entry
of
the
or
all
other
There is
Video”
order
of
injunction.2
For the purposes of the present motion, the
Court
to
refers
the
original
2
video
as
Goldilocks
I
and
The Court understands that, after removing the original
video, Defendants posted an edited version of Goldilocks I
which removed the portion of the video which features and
compares the three distinct mattresses, including any and all
references to the TEMPUR-Contour mattress, which had been
included in the original video.
During the April 18, 2016,
hearing, the parties referred to this video as “Goldilocks
I+.”
While Plaintiffs ultimately do not believe that the
original injunction order would permit the posting of such a
modified video, it did not find the video objectionable and
Goldilocks I+ is not the subject of the current inquiry.
2
incorporates by reference the recitations of fact and law in
its Opinions of April 1, 2016 [DE 40 and 41].
Since
then,
Defendants
have
filed
a
Motion
for
Clarification and Modification [DE 43], effectively asking the
Court whether they would violate the Court’s April 1, 2016,
injunction order [DE 40] if they posted a modified version of
Goldilocks I that blurred out the identifying features on the
TEMPUR-Contour
mattress
in
the
advertisement.
The
Court
ultimately denied the Motion for Clarification, writing that:
. . . the Court [] is not willing to
bless the use of the proposed modified
Goldilocks
video
– which
obscures
the type of mattress and
direct
reference
to
Plaintiff’s
product
– over Plaintiff’s objection without
further
consideration.
Should
Defendants wish to pursue that relief,
they may file a new motion along with
a copy of that video (video to be
filed under seal).
For now, that
relief is denied.
In other words, contrary to Plaintiffs’ understanding of that
Order,
the
Court
has
not
yet
reached
a
conclusion
about
whether a version of the Goldilocks video modified to blur or
obscure the identifying features of the offending mattress
would violate the Court’s injunction order of April 1, 2016,
nor
has
the
Court
required
3
Defendants
to
submit
any
modifications to this Court for adjudication.
To the extent
that the Court was less than clear about that during the April
18, 2016, hearing, it writes now to clarify that there has
been no such requirement of Defendants to this point.
to
the
extent
that
Plaintiffs
ask
this
Court
Thus,
to
hold
Defendants in contempt of the Court’s April 11, 2016, Order,
their Motion is denied.
That said, Defendants or their counsel have clearly seen
that
they
might
clarification
advertising
and
video
avoid
a
counsel
that
host
before
bears
of
trouble
proceeding
too
many
by
to
seeking
post
similarities
any
to
Goldilocks I in order to avoid contempt of the Court’s April
1, 2016, order of injunction [DE 40].
And that is where the
parties now find themselves because another video, which is an
edited version of Goldilocks I, is now available on-line.
For
the purposes of the present motion, the Court refers to this
modified video as Goldilocks II.
Clearly, Defendants have
decided to take their chances.
Plaintiffs’ objections to Goldilocks I turned on the fact
that
one
of
Plaintiffs’
mattresses
was
featured
in
the
advertisement and was identifiable due to trade dress in the
form of the TEMPUR-Contour mattress cover:
4
a unique zipper, a
unique contrasting color and contoured aspect of the lower
portion of the mattress cover, and tell-tale stitching on the
white,
upper
cover
of
the
mattress.
With
Goldilocks
II,
Defendant WonderGel has now posted a full-length version of
the Goldilocks video featuring mattresses which it contends do
not
depict
any
of
Plaintiffs’
identifiable
trade
dress
features and, thus, cannot conceivably violate the Lanham Act.
Plaintiffs disagree.
Goldilocks II presents a digitally altered image of a
mattress, with a different zipper and in which the contrasting
color
and
contoured
aspect
of
the
lower
portion
of
the
mattress cover has been changed to a red border separating the
top cover pattern from a base material, which is now in a
different
color
with
Plaintiffs’ product.
a
different
contour
than
that
of
The red base or border is flattened and
does not angle upward at the corner and is, thus, further
differentiated from the orange zipper and contour featured on
the
TEMPUR-Contour
Goldilocks I.
mattress
cover
and
on
the
mattress
in
The gray base material below the cover has been
digitally altered to a red base material, as well.
Plaintiffs
contoured
complain,
stitching
however,
pattern
on
5
the
that
the
mattress
curved
top,
or
which
everyone agrees has been digitally modified so that it differs
from that shown in Goldilocks I, is still too similar to that
borne on their TEMPUR-Contour mattress product to pass muster
because
they,
alone,
among
mattress
manufacturers
feature
mattresses with a distinctive quilted white top with stitched
line patterns that are about one inch wide such that even a
similar albeit distinct pattern could be seen to represent
their
product.
Defendant
WonderGel
argues
that
that
the
change is enough to avoid contempt of the Court’s order [DE
40].
The Court has been provided with still photos of the
original
mattress
top
modified
version
from
from
Goldilocks
Goldilocks
II
I
and
and
the
notes
digitally
that
the
mattress top featured in Goldilocks II has been changed so
that the stitched pattern – while similar in terms of the
distance between the lines of stitching – runs diagonally, in
a different direction from that featured in Goldilocks I and
no longer has the characteristic whorl seen along some of the
lines of stitching as seen in Goldilocks I.
The Court has
provided Plaintiffs with an opportunity to provide additional
evidence
quilted
concerning
mattress
top
the
as
uniqueness
well
6
as
of
its
Plaintiffs’
similarity
white,
to
that
depicted
in
Goldilocks
II
and
for
Defendants
to
provide
evidence to the contrary.
Finally, during the April 18, 2016, hearing, the Court
determined that, in order that it might carefully consider
this motion and provide adequate relief to Plaintiffs if it is
ultimately
determined
to
be
necessary,
Defendant
WonderGel
must discontinue using Goldilocks II until such time as this
motion is resolved.
The Court recalls that it referenced
Defendant WonderGel as being in contempt but recognizes that,
in hindsight, such determination is premature at this time.
Rather, the Court seeks to remind Defendant what is at stake.
Thus,
the
Court
clarifies
that
Wondergel
has
not
been
adjudicated as being in contempt of this Court’s April 1,
2016, Order [DE 40].
Rather, the Motion for Contempt remains
pending as to Defendant Wondergel.
Accordingly, IT IS ORDERED:
(1)
That Plaintiffs’ Motion for Contempt is DENIED IN
PART and REMAINS PENDING IN PART as set forth above.
(2)
That Plaintiffs shall file further papers in support
of their motion no later than 5:00 p.m. on Tuesday, April 19,
2016.
7
(3)
in
That Defendant WonderGel shall file further papers
support
of
its
objections
no
later
than
5:00
p.m.
on
reply
in
Wednesday, April 20, 2016.
(4)
That
Plaintiffs
shall
file
any
further
support of its Motion no later than 5:00 p.m on Thursday,
April
21,
2016,
at
which
time
this
matter
shall
stand
submitted to the Court for further consideration.
(5)
That Defendant WonderGel shall resubmit a copy of
the Goldilocks II video (under seal) to the Court in a format
readily readable on the Court’s equipment no later than 5:00
p.m. on Thursday, April 21, 2016.
formats
are
advisable,
Counsel
In order to determine which
should
contact
the
Court’s
Automation Department by calling the Court Clerk’s office at
(859) 233-2503.
(6)
That
the
Court,
in
its
equitable
discretion
and
recognizing that this Order may hinder Defendant WonderGel’s
e-commerce marketing platform, requires Plaintiffs to post a
$100,000 security pursuant to Fed. R. Civ. P. 65(c) (“Bond”).
The
court
adequate
in
concludes
order
to
that
the
eliminate
further security is required.
8
previously
that
posted
concern
and
bond
is
that
no
(7)
That
discontinue
Defendant
and
direct
Wondergel
third-parties
shall
over
whom
immediately
they
may
exercise control to discontinue the advertisement known as
Goldilocks II including anywhere it appears on the Internet
and refrain from any advertising that references or relies
upon Goldilocks II or the advertising claims at issue in the
Goldilocks II video including in any and all publications,
commercial
social
media
accounts,
or
other
traditional
online marketing venues, pending further order of the Court.
This the 18th day of April, 2016.
9
or
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