Patsy's Italian Restaurant, Inc. v. Patsy's Inc.
676 F. App'x 24
| 2d Cir. | 2017Background
- Long-running trademark dispute between Patsy’s Italian Restaurant, Inc. (plaintiff) and various defendants including Patsy’s Inc. and I.O.B. Realty over use of the PATSY’S mark in New York.
- District court entered a 2008 injunction prohibiting use of “PATSY’S alone” in advertising, signs, menus, etc., and elsewhere directed plaintiffs to use “PATSY’S ITALIAN RESTAURANT” and defendants to use “PATSY’S PIZZERIA.”
- Defendants registered and used the mark “PATSY’S OF NEW YORK,” prompting plaintiffs to seek contempt and cancellation of that registration as sanction for violating the injunction.
- A Special Master and the district court concluded the PATSY’S OF NEW YORK mark fell outside the injunction’s scope and declined to find contempt or cancel the registration.
- Defendants appealed the denial of their cross-contempt motions and the refusal to cancel the registration; the Second Circuit affirmed the district court’s judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants violated the 2008 injunction by using “PATSY’S OF NEW YORK” | Injunction bars use of PATSY’S alone and thus any confusing variants; registration/use of PATSY’S OF NEW YORK violates the order | The injunction only barred use of the mark “PATSY’S alone”; PATSY’S OF NEW YORK is not covered and is permissible | The injunction was not clear and unambiguous as to PATSY’S OF NEW YORK; use was beyond the injunction’s scope, so no contempt |
| Whether cancellation of the PATSY’S OF NEW YORK registration is an appropriate contempt sanction | Plaintiffs sought cancellation as remedy for contempt | Defendants argued registration should stand because use is outside the injunction | Court declined to cancel the registration because the mark fell outside the injunction’s scope |
| Standard for contempt: clarity of injunction | Plaintiffs argued the injunction clearly prohibited the contested use | Defendants argued the injunction’s language limited prohibition to using PATSY’S alone | Court applied the three-part contempt test and found the injunction ambiguous as to PATSY’S OF NEW YORK |
| Whether the district court abused its discretion in denying contempt/cancellation | Plaintiffs argued district court erred | Defendants argued denial was proper given ambiguity | Second Circuit found no abuse of discretion and affirmed |
Key Cases Cited
- Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., 779 F.3d 102 (2d Cir. 2015) (sets three-part test for civil contempt and discusses clarity requirement of injunctions)
- CBS Broad. Inc. v. FilmOn.com, Inc., 814 F.3d 91 (2d Cir. 2016) (an injunction must leave no doubt about forbidden acts to support contempt)
- Drywall Tapers & Pointers v. Local 530, 889 F.2d 389 (2d Cir. 1989) (describes standard for injunction clarity)
- Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) (prior appellate decision in the parties’ long-running litigation)
- Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011) (another prior appellate decision in the parties’ dispute)