475 F.Supp.3d 1235
W.D. Wash.2020Background
- Court previously granted Island Life summary judgment on trademark counterclaims and permanently enjoined BBC from using the unregistered “BOK BOK” mark (and any variation/derivative spelling) in Washington or as part of domain names, email accounts, or social media handles.
- After the injunction, BBC continued to use the domain bokbokchicken.com and social-media handles using the “Bok Bok” name; Island Life notified BBC and threatened a contempt motion.
- BBC changed its domain and handles (to eatbocboc.com / “eatbocboc” and “realbocboc”) and implemented geo-blocking for certain jurisdictions, but social accounts still displayed the unlicensed “Bok Bok” mark when Island Life filed its contempt motion.
- BBC argued it made good-faith efforts to comply, blamed COVID-19-related operational issues and the lack of specific account identification in Island Life’s notice; Island Life produced screenshots showing ongoing use on Instagram, Facebook, Twitter, LinkedIn, and others.
- The Court held BBC was in civil contempt at the time Island Life filed the motion due to continued use on BBC-controlled social media, found violations more than de minimis, rejected BBC’s COVID-19 and notice excuses, and denied prospective sanctions because BBC’s later changes complied with the injunction.
- The Court awarded Island Life a limited attorneys’ fee remedy: Island Life may include the fees for preparing the contempt motion in its later Motion for Attorney’s Fees with supporting documentation; prospective sanctions were denied.
Issues
| Issue | Plaintiff's Argument (BBC) | Defendant's Argument (Island Life) | Held |
|---|---|---|---|
| Whether BBC’s new domain and social handles (“eatbocboc”, “realbocboc”) violate the injunction | New spellings with "c" comply; court’s injunction does not bar all spellings that merely resemble the chicken sound | New names still create confusion and attempt to evade injunction | Court: "eatbocboc" and "realbocboc" comply with injunction; denied progressive sanctions on that basis |
| Whether BBC’s continued use of “Bok Bok” on social media constituted contempt | Continued use was inadvertent and BBC was transitioning accounts; geo-blocking and COVID impeded changes | Screenshots show active use on BBC-controlled social accounts after injunction—constitutes clear violation | Court: BBC was in contempt when motion filed; social-media use violated injunction and was more than de minimis |
| Whether BBC’s claimed good-faith defenses (COVID-19, lack of specific notice) excuse noncompliance | COVID-19 disrupted operations; Island Life didn’t identify specific handles so BBC couldn’t target fixes | BBC had control over its own accounts and knew it had to change handles per injunction; burden was on BBC to take reasonable steps | Court: Good-faith defense rejected; pandemic and notice shortcomings did not justify protracted noncompliance |
| Appropriate relief (prospective sanctions; attorneys’ fees) | Opposed progressive sanctions; sought to avoid fee award beyond later fee motion | Sought progressive sanctions and $2,500 now for motion-related fees | Court: Denied prospective sanctions; awarded limited fee remedy—Island Life may include time spent preparing the contempt motion in its case-concluding fee motion with documentation |
Key Cases Cited
- In re Dual–Deck Video Cassette Recorder Antitrust Litig., 10 F.3d 693 (9th Cir. 1993) (defines civil contempt and recognizes substantial compliance as a defense)
- Reno Air Racing Ass’n v. McCord, 452 F.3d 1126 (9th Cir. 2006) (a contemnor should not be held in contempt for a good-faith, reasonable interpretation of an order)
- United States v. Bright, 596 F.3d 683 (9th Cir. 2010) (outlines elements the moving party must prove by clear and convincing evidence for civil contempt)
- Inst. of Cetacean Research v. Sea Shepherd Conservation Soc’y, 774 F.3d 935 (9th Cir. 2014) (applies civil-contempt standards and proof requirements)
- Perry v. O’Donnell, 759 F.2d 702 (9th Cir. 1985) (recognizes district courts’ discretion to award fees in contempt proceedings)