FenF, LLC v. Yogabody Naturals LLC

Filing 22

ORDER denying 19 Motion for Contempt without prejudice. Signed by District Judge Arthur J. Tarnow. (MLan)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
FENF, LLC,

Case No. 16-13483
SENIOR U.S. DISTRICT JUDGE
ARTHUR J. TARNOW

Plaintiff
v.
YOGABODY NATURALS, LLC,

U.S. MAGISTRATE JUDGE
MONA K. MAJZOUB

Defendant.
/
ORDER DENYING WITHOUT PREJUDICE PLAINTIFF’S MOTION FOR CONTEMPT
[19]
Plaintiff FenF, LLC, filed a Complaint [1] on September 26, 2016 against
Defendant Yogabody Naturals, LLC, alleging federal trademark infringement of
the U.S. Trademark Registration Nos. 3,253,636 (“the 636 registration”)1 and
3,430,215 (“the 215 registration”)2 in violation of Section 32(a) of the Lanham
Act, 15 U.S.C. § 1114, unfair competition in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125, and false advertising, in violation of 15 U.S.C. §
1125. Since the commencement of this lawsuit, Defendant has neither retained
counsel nor attempted to participate in the proceedings in any way.

1

This registration number belongs to the mark “YOGA TOES,” which was registered on
June 19, 2007.
2

This registration number belongs to the mark “YOGATOES,” which was registered on
May 20, 2008.

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Plaintiff requested, and was granted, Clerk’s Entry of Default on January 9,
2017 [7, 8]. See Fed. R. Civ. P. 55(a). Plaintiff moved for Default Judgment [9] on
March 6, 2017, seeking 1) injunctive relief pursuant to 15 U.S.C. § 1116(a), (2)
reasonable attorney’s fees pursuant to 15 U.S.C. § 1117(a), and (3) costs pursuant
to Fed. R. Civ. P. 54(d)(1).
On October 26, 2017, the Court entered an Order Reinstating and Granting
the Motion for Default Judgment and Closing the Case [14]. Approximately one
month later, the Court entered a Permanent Injunction Order [16] against
Defendant. That Order states:
Pursuant to Fed. R. Civ. P. 65, Defendant, its officers, agents,
servants, employees, and attorneys, and those persons in active
concert or participation with Defendant who receive actual notice of
this Permanent Injunction, by personal service or otherwise, are
permanently enjoined and restrained from:
(1) using the term Yoga Toes as all or part of a name or caption
in connection with the sale or advertising of toe stretchers;
(2) imitating, copying, or making any unauthorized use of the
YOGA TOES® or YOGATOES® Trademarks;
(3) importing,
manufacturing,
producing,
distributing,
circulating, selling, offering for sale, advertising, promoting
or displaying any service or product using any simulation,
reproduction, counterfeit, copy, or colorable imitation of
either of the YOGA TOES® or YOGATOES®
Trademarks;
(4) using any simulation, reproduction, counterfeit, copy or
colorable imitation of
the YOGA TOES® or
YOGATOES® Trademarks in connection with the
promotion, advertisement, display, sale, offer for sale,
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manufacture, production, circulation or distribution of any
product or service; and
(5) using any false designation of origin or false description
(including, without limitation, any letters, symbols, or
designs constituting the YOGA TOES® or YOGATOES®
Trademarks) or performing any act, which can, or is likely
to, lead members of the trade or public to believe that any
service or product manufactured, distributed or sold by
Defendant are in any manner associated or connected with
FenF, LLC, the YOGATOES® brand, or the of the YOGA
TOES® or YOGATOES® Trademarks, or is sold,
manufactured, licensed, sponsored approved or authorized
by FenF, LLC.
On November 29, 2017, Plaintiff’s counsel, Richard W. Hoffmann, mailed
copies of the Court’s Default Judgment and Permanent Injunction Orders to
Defendant’s registered agent. He also emailed copies of those documents to
Defendant’s CEO, Lucas Rockwood. See Dkt. 20-2. In response, Defendant
informed Mr. Hoffmann via letter that it was “unable to accept [the Court’s]
judgment” and that it planned to “proceed to vacate.” See Dkt. 20-3. Several days
later, Mr. Hoffmann informed Defendant that it was in violation of the Permanent
Injunction Order by way of a number of statements on its Amazon listing, such as
the exchange listed below:
Question [from a customer]: I would like to know if I could order Yoga toe
spreaders size large, Amazon doesn’t give you options.
Answer:
Hi Edith,

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Thank you for writing. As of the moment we only have medium and small
size on our package. You can purchase those and contact us thru amazon to
process a large one for you.
Let me know if I can help you with anything else.
By YOGABODY Naturals LLC. SELLER on August 12, 2016
(Dkt. 20-4).
On December 11, 2017, Ignacio Briones, Defendant’s Financial Controller,
told Mr. Hoffmann that Defendant had previously asked Amazon to remove the
above-answered question from its Amazon listing. Mr. Briones agreed to contact
Amazon “a second time as a final courtesy.” (Dkt. 20-5). Mr. Hoffmann asked Mr.
Briones to provide documentation showing its contact with Amazon or to
otherwise comply with the Permanent Injunction Order.
On December 22, 2017, Mr. Briones told Mr. Hoffmann that Defendant had
added a “disclaimer” to the answered question on its Amazon listing. (Dkt. 20-7).
Mr. Hoffmann examined Defendant’s Amazon page on January 19, 2018.
He found at least 31 customer reviews of Defendant’s product that include the
terms “yoga toes” or “YogaToes.” Defendant responded by thanking these
customers. See Dkt. 20-8. It did not inform the customers that its products are not
associated with Plaintiff’s brand products or its registered marks.
Plaintiff filed the Motion for Contempt [19] and a Declaration [20] from Mr.
Hoffmann on February 2, 2018. In light of the fact that Defendant continues to
cause harm to Plaintiff, and because Defendant has not paid the $16,001.40 in
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attorney’s fees and costs that it owes to Plaintiff, Plaintiff asks the Court to hold
Defendant in contempt.
ANALYSIS
Federal Rule of Civil Procedure 70(e) allows the Court to “hold a
disobedient body in contempt” when it fails to comply with the Court’s orders.
“There can be no question that courts have inherent power to enforce compliance
with their lawful orders through civil contempt.” Shillitani v. United States, 384
U.S. 364, 370 (1966). That said, “courts must exercise the contempt sanction with
caution and use ‘[t]he least possible power adequate to the end proposed.’” Gascho
v. Glob. Fitness Holdings, LLC, 875 F.3d 795, 799 (6th Cir. 2017), reh’g denied
(Dec. 21, 2017) (quoting United States v. Wilson, 421 U.S. 309, 319 (1975)).
Plaintiff – as the party seeking civil contempt sanctions – bears a heavy
burden: it “must demonstrate by clear and convincing evidence that [Defendant]
knowingly ‘violated a definite and specific order of the court.’” Id. at 800 (quoting
NLRB v. Cincinnati Bronze, Inc., 829 F.2d 585, 591 (6th Cir. 1987)). “The
‘definite and specific’ requirement guards against arbitrary exercises of the
contempt power” and ensures that it is “reserved for those who ‘fully understand’
the meaning of a court order and yet ‘choose to ignore its mandate.’” Id. (quoting
Int’l Longshoremen’s Ass’n, Local 1291 v. Phila. Marine Trade Ass’n, 389 U.S.
64, 76 (1967). “[A]mbiguities must be resolved in favor of persons charged with
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contempt.” Grace v. Center for Auto Safety, 72 F.3d 1236, 1241 (6th Cir. 1996)
(citing NBA Properties, Inc. v. Gold, 895 F.2d 30, 32 (1st Cir. 1990)).
Plaintiff argues that, by allowing customer reviews that include use of the
terms “yoga toes” and “YogaToes” to remain on its online store and Amazon.com
listing, Defendant is perpetuating customer confusion and violating the Permanent
Injunction Order.
Plaintiff’s points are well taken. However, keeping in mind the principle that
“[c]ontempt is a measure of last resort, not first resort[,]” Gascho, 875 F.3d at 799800, it would be inappropriate to hold Defendant in contempt at this time. Instead,
the Court will modify the Permanent Injunction Order in such a way that puts
Defendant on clear notice that it must control, and is responsible for, the full
content of its Amazon.com listing, including its customer reviews. See Stryker
Corp. v. Davol, Inc., 75 F.Supp. 2d 741, 743 (W.D. Mich. 1999) (explaining that
“the Court has broad discretion to determine how best to enforce its injunction.”)
(citing Additive Controls & Measurement Systems, Inc. v. Flowdata, Inc., 154 F.3d
1345, 1349 (Fed. Cir. 1998)). Plaintiff is invited to submit a proposed order that
clearly and specifically explains: 1) that Defendant is responsible for the customer
reviews on its Amazon.com posting; 2) the manner in which Defendant should
respond to customer reviews that refer to Defendant’s product using the term, or

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any variation of the term, “Yoga Toes.”; and 3) if Defendant fails to comply with
the modified Permanent Injunction Order, an appropriate sanction will be granted.
CONCLUSION
Accordingly,
IT IS ORDERED that Plaintiff’s Motion for Contempt [19] is DENIED
WITHOUT PREJUDICE.
IT IS FURTHER ORDERED that Plaintiff may submit a proposed order,
as described above, by June 15, 2018.
IT IS FURTHER ORDERED that the Permanent Injunction Order [16]
will be modified, subject to the Court’s approval of Plaintiff’s proposed order.
SO ORDERED.

Dated: May 30, 2018

s/Arthur J. Tarnow
Arthur J. Tarnow
Senior United States District Judge

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