Asociacion de Industriales de Puerto Rico v. MarketNext, Inc. et al

Filing 70

ORDER GRANTING 64 MOTION for compliance filed by Asociacion de Industriales de Puerto Rico. Defendants are ORDERED to: (a) Distribute the text of our Order, Docket No. 46 , and our memorandum opinion, Docket No. 58 , in full, to all their subscr ibers, clients, and vendors, including all persons who have purchased advertisements in Defendants' magazine, and any other person with legal or economic interest in their publication; (b) Faithfully reproduce the following notice in bold, all c apital letters, single-space, and monospace Courier font no smaller than one pica (twelve-point), in both English and Spanish, on the second or third page of each copy of their issues of Empresarios for the term of one year: (1) EMPRESARIOS IS NOT RE LATED TO INDUSTRIALES MAGAZINE IN ANY WAY, AND IS NOT A CONTINUATION, SUCCESSOR, OR MODIFICATION OF INDUSTRIALES; (2) MARKETNEXT, INC. NO LONGER PUBLISHES INDUSTRIALES FOR THE PUERTO RICO MANUFACTURERS' ASSOCIATION (PRMA) AND EMPRESARIOS IS NOT AN AUTHORIZED PUBLICATION OF THE PRMA; and (c) Certify by sworn affidavit their compliance with the present order by not later than April 13, 2009. Notice of Compliance Deadline due by 4/13/2009. Signed by Chief Judge Jose A Fuste on 3/31/09.(mrj)

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UNITED STATES DISTRICT COURT DISTRICT OF PUERTO RICO ASOCIACIÓN DE INDUSTRIALES DE PUERTO RICO, Plaintiff, v. MARKETNEXT, INC., et al., Defendants. Civil No. 09-1122 (JAF)

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 On March 27, 2009,

ORDER Plaintiff moved to compel Defendants'

compliance with our preliminary injunction in this case. Docket No. 64. On March 11, 2009, we entered an Order ("Order") against Defendants, preliminarily enjoining them from (1) using the mark, "Industriales," (2) causing the in commerce to via print or electronic media, with

public

associate

Defendants'

services

Plaintiff, and (3) competing unfairly with Plaintiff or its licensees by falsely representing the nature of Defendants' services. Docket No. 46. We further required Defendants to "communicate this Order to . . . persons in active concert or participation in the publication of Defendants' magazine, and each and every person using the mark INDUSTRIALES, selling advertisement in Defendants' magazine,

advertising in Defendants' magazine . . . and to any other person that may have a legal or economic interest in Defendants' magazine."

Civil No. 09-1122 (JAF) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

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Id. (emphasis added). We allowed Defendants ten days to certify by sworn affidavit their compliance with the Order. Id. On March 23, 2009, we issued a memorandum opinion supporting and reiterating our Order. Docket No. 58. On March 23, 2009, Defendants submitted a motion in compliance with an affidavit from Defendant Edison Misla-Grillasca ("Misla"). Docket No. 60. Misla attests that Defendants sent a letter to their subscribers, clients, and vendors, informing the addressees that Defendants' publication had altered its name to "Empresarios." Id. Misla contends that Defendants have sufficiently complied with our Order by adopting the a new title name, and ceasing to use the mark, the

"Industriales,"

domain

"industrialesmag.com," Id. have

and

internet address, "www.industrialesmag.com." Plaintiff notes, however, that

Defendants

failed

to

"communicate [the] Order," per our mandate. Docket No. 64. This omission creates a false impression of continuity between Defendants' former publication under their agency relationship with Plaintiff and their present publication, which is no longer authorized by

Plaintiff. Id. Our Order related not only to Defendants' ongoing trademark infringement, but also to their unfair competition with Plaintiff, their former principal. See Docket Nos. 46, 58. By our requirement for Defendants to communicate the substance of the Order to all persons with "legal or economic interest in Defendants' magazine," we

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intended to resolve lingering doubt in the public as to the true identity and nature of Defendants' publication in relation to

Plaintiff's authorized publications. See id. A half-hearted circular letter that omits any reference to our Order cannot serve. In addition to Defendants' communication of our preliminary injunction to their business contacts, Plaintiff requests further clarification that Defendants' magazine bears no relation to their previous publication on behalf of Plaintiff. Docket No. 64. To resolve public confusion, the court may fashion equitable remedies that "enjoin only those uses that are likely to create appreciable confusion, and no more." Joseph Scott Co. v. Scott Swimming Pools, Inc., 764 F.2d 62, 67 (2d Cir. 1985). To this end, we may use disclaimers to distinguish competing products and preserve the rights of the trademark holder. L. E. Waterman Co. v. Modern Pen Co., 235 U.S. 88 (1914). In view of Defendants' continuing evasion of justice, we command them to print a conspicuous and unambiguous notice in their forthcoming publication disclaiming all connection to Plaintiff and its authorized magazine, "Industriales." Accordingly, we hereby GRANT Plaintiff's motion to compel

compliance, Docket No. 64. It is hereby: ORDERED, that Defendants distribute the text of our Order, Docket No. 46, and our memorandum opinion, Docket No. 58, in full to all their subscribers, clients, and vendors, including all persons

Civil No. 09-1122 (JAF) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 and ORDERED, that Defendants certify by sworn affidavit

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who have purchased advertisements in Defendants' magazine, and any other person with legal or economic interest in their publication; ORDERED, that Defendants faithfully reproduce the following notice in bold, all capital letters, single-space, and monospace Courier font no smaller than one pica (twelve-point), in both English and Spanish, on the second or third page of each copy of their issues of "Empresarios" for the term of one (1) year: (1) "EMPRESARIOS" IS NOT RELATED TO "INDUSTRIALES" MAGAZINE IN ANY WAY, AND IS NOT A CONTINUATION, SUCCESSOR, OR MODIFICATION OF "INDUSTRIALES"; (2) MARKETNEXT, INC. NO LONGER PUBLISHES "INDUSTRIALES" FOR THE PUERTO RICO MANUFACTURERS' ASSOCIATION (PRMA) AND "EMPRESARIOS" IS NOT AN AUTHORIZED PUBLICATION OF THE PRMA;

their

compliance with the present order by not later than April 13, 2009. IT IS SO ORDERED. San Juan, Puerto Rico, this 31st day of March, 2009. s/José Antonio Fusté JOSE ANTONIO FUSTE Chief U.S. District Judge