Sulzer Mixpac Usa, Inc. v. Shanghai NSJ Hardware Ltd.
1:09-cv-09705
S.D.N.Y.Nov 13, 2013Background
- Sulzer sued NSJ and others for trademark, trade dress, and patent infringement; NSJ defaulted and a permanent injunction issued against NSJ.
- The default injunction barred NSJ from making, using, selling, or advertising infringing mixing tips and colorable imitations; it did not require monetary payment at that time.
- Sulzer later showed NSJ continued to infringe after the injunction, including sales to UC Dental and online advertising.
- The court issued an Order to Show Cause for contempt; NSJ did not respond, and contempt was found.
- The magistrate judge recommended damages of $500 and a $5,000 contempt fine to secure future compliance.
- No hearing was required because NSJ did not oppose and the record showed undisputed facts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether damages are warranted for NSJ’s civil contempt | Sulzer seeks compensatory damages of $500 for NSJ’s profits | NSJ did not respond; no argument presented | Damages awarded: $500 (compensatory) |
| Whether a coercive contempt fine is appropriate | Sulzer seeks a $5,000 fine to deter future violations | NSJ offered no evidence of inability to pay; no opposition presented | Fine imposed: $5,000 to secure compliance |
| Whether a hearing was required for contempt sanctions | Not necessary given undisputed facts and unopposed motion | (No response) | No hearing required; ruling based on written submissions |
| Whether profits evidentiary basis supports compensatory damages | NSJ earned profit approx. $500 from infringing sales | Lack of precise accounting; no direct rebuttal | Profit-based damages of $500 accepted as reasonable given defendant’s failure to provide records |
Key Cases Cited
- Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 885 F.2d 1 (2d Cir. 1989) (contempt sanctions may compensate plaintiff without direct proof of injury)
- Paramedics Electromedicina Comercial, Ltda. v. GE Med. Sys. Info. Tech., Inc., 369 F.3d 645 (2d Cir. 2004) (civil contempt serves coercive and compensatory purposes)
- Huber v. Marine Midland Bank, 51 F.3d 5 (2d Cir. 1995) (sanctions may be imposed without a finding of wilfulness)