BETTIE PAGE LLC v. DESIGN TECHNOLOGY HOLDING LLC
1:14-cv-00394
S.D. Ind.Jan 28, 2015Background
- Bettie Page LLC (Plaintiff) owned rights to Bettie Page intellectual property and licensed them to Design Technology entities (Defendants) until Plaintiff terminated the license effective March 19, 2014.
- Plaintiff obtained an agreed temporary restraining order entered May 1, 2014, prohibiting Defendants and persons acting in concert from using or associating with Bettie Page marks, domains, website metadata/keywords, marketing, and sales.
- Plaintiff moved for a show-cause order alleging Defendants, Tatyana LLC, Tatyana Designs, Tatyana Khomyakova, and Jan Glaser violated multiple paragraphs of the agreed order by leaving Bettie Page references on domains, websites, social media, trade-show materials, a storefront sign, and other marketing.
- Defendants acknowledged some inadvertent references, removed many items after notice, and explained others were created by third parties or predated the order; they claim reasonable diligence to comply and significant costs to disassociate (~$1 million).
- The magistrate judge held a hearing and recommended finding contempt only for certain violations (MAGIC-show posters, remaining Bettie Page references on Tatyana websites, and a vacated storefront logo) and denying contempt as to other alleged items (Google Plus profile, About.me page, YouTube video, spring catalogue, and search-keyword allegations).
- Remedies recommended: order Defendants/related parties to cease all Bettie Page references within 28 days and award Plaintiff reasonable attorney fees; deny Plaintiff’s requested monthly remedial damages and detailed joint report.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants violated the agreed May 1, 2014 order | Defendants and related parties continued to use/associate with Bettie Page marks/domains/marketing in websites, social media, trade-show materials, storefront signage, and search keywords | Many references predated the order, were third-party authored, inadvertent oversights, or already removed; Defendants acted reasonably and diligently to remove items once noticed | Contempt found in part: violations proved as to MAGIC trade-show posters, remaining Bettie Page references on Tatyana websites, and the storefront logo; other alleged violations insufficiently proven or excused |
| Liability of nonparties acting in concert (scope of order) | Related parties (Tatyana entities, Khomyakova, Glaser) acted in concert and are bound | Defendants partly concede concert/agency but argue some pages/accounts were created/controlled by unknown third parties | Court treated related parties as bound; contempt finding applied to same entities for proven violations |
| Whether Defendants used Bettie Page terms as search-engine keywords/metadata in violation of paragraph 15 | Search results showing Bettie Page references and tatyana.com ranking suggest keyword/metatag use | Defendants show they blocked inbound traffic to bettiepageclothing.com and removed Bettie Page metadata since March 2014; Plaintiff’s claims are speculative | No contempt finding for keyword/metatag allegations due to lack of clear and convincing evidence |
| Appropriate sanctions (coercive vs remedial, monetary amount) | Seek $50,000–$70,000 per month (equivalent to prior license fees) and a detailed joint report identifying all uses since June 1, 2014 | Requested monetary sanction is excessive given limited violations, Defendants’ responsiveness, and remediation costs already incurred; detailed report unnecessary | Denied monetary remedial sanctions requested; ordered Defendants cease references within 28 days and recommended awarding Plaintiff reasonable attorney fees; parties given 28 days to agree on fees or Plaintiff to file fee petition |
Key Cases Cited
- Bailey v. Roob, 567 F.3d 930 (7th Cir.) (civil contempt is within the court’s discretion)
- U.S. S.E.C. v. Hyatt, 621 F.3d 687 (7th Cir.) (elements for civil contempt: unambiguous command, violation, significance, and lack of reasonable diligence)
- Dowell, 257 F.3d 694 (7th Cir.) (distinction between coercive and remedial civil contempt sanctions)
- South Suburban Housing Center v. Berry, 186 F.3d 851 (7th Cir.) (remedial sanctions must be tied to actual loss)
- McComb v. Jacksonville Paper Co., 336 U.S. 187 (U.S.) (scienter not required for civil contempt; remedial focus)
- McNamee, 481 F.3d 451 (7th Cir.) (civil-contempt proceedings do not require proof of willfulness)
- Manez v. Bridgestone Firestone N. Am. Tire, LLC, 533 F.3d 578 (7th Cir.) (requirement of a valid decree for contempt)