evidence clearly demonstrates that any competition created by the "Alice Darling" - "Let's Play Dolls" line is in the play doll market. Such competition is prohibited neither by agreement of the parties nor by any of the terms of the preliminary injunction.
4. With respect to those portions of the preliminary injunction based upon plaintiff's rights acquired under the terms of the Convertible Term Note Purchase Agreement and the Lanham Act, defendants have violated certain provisions of the preliminary injunction, namely paragraphs 1(g), 5 and 8. In all other respects, defendants have complied with the preliminary injunction order.
5. Structuring the civil contempt sanctions to be imposed for violation of the injunction by identifying Mrs. Woods as having designed the "Let's Play Dolls" line for Alexander in defendants' promotional material, it is appropriate to seek guidance from the Lanham Act. Howard Johnson Co., v. Khimani, 892 F.2d 1512, 1519 (11th Cir. 1990); Winterland Concessions Co. v. Brandt, F. Supp. , 1992 U.S. Dist. LEXIS 9917 (E.D. Pa. 1992). Under the Lanham Act, a plaintiff whose trademark rights have been violated may be entitled to recover defendants' profits, any actual damages to plaintiff (which may be trebled) and costs of the action, including attorneys' fees in "exceptional" cases. 15 U.S.C. § 1117(a); Howard Johnson, 892 F.2d at 1519; Knorr-Nahrmittel A.G. v. Reese Finer Foods, Inc., 695 F. Supp. 787, 794 (D.N.J. 1988).
6. The district court's discretion in imposing compensatory damages in civil contempt proceedings is "particularly broad," and may include disgorgement of defendants' profits in addition to plaintiff's actual damages. Howard Johnson, 892 F.2d at 1521. In a civil contempt proceeding occasioned by willful disobedience of a court order, the court also may award attorneys' fees as well as the costs of investigating the violation of the order and conducting and preparing for the contempt proceeding. Ranco Indus. Products Corp. v. Dunlap, 776 F.2d 1135, 1139 (3d Cir. 1985); Quinter, 676 F.2d 969 at 974; Int'l Bhd. of Teamsters, Local 249 v. Western Pennsylvania Motor Carriers Ass'n., 660 F.2d 76, 84 (3d Cir. 1981); Winterland Concessions, F. Supp. at , 1992 U.S. Dist. LEXIS 9917,*24, citing, inter alia, Vuitton et. Fils. S.A. v. Carousel Handbags, 592 F.2d 126, 130-31 (2d Cir. 1979).
8. Where the plaintiff's injury is of such nature as to preclude precise measurement of the amount of damage sustained, as will often be the case where the defendant violates a preliminary injunction,
it is "enough if the evidence shows the extent of the damages as a matter of just and reasonable inference, although the result be only approximate." Howard Johnson, 892 F.2d 1512 at 1520, quoting Story Parchment Co. v. Paterson Parchment Paper Co., 282 U.S. 555, 563 (1931). However, although reasonable approximation may suffice as to ascertainment of the amount of damage, the plaintiff must demonstrate that, in fact, the defendants' contempt actually caused the injuries complained of. Advent Systems Ltd. v. Unisys Corp., 925 F.2d 670, 681 (3d Cir. 1991). (The court "emphasized the need for evidence sufficiently concrete to provide a reasonable degree of certainty" that an award of damages "is more than the result of a lottery or emotional reaction.")
9. In determining the sanctions to impose for defendants' contempt in this case, it is appropriate for the Court to consider the purpose of the injunction in light of the protections afforded by the Lanham Act, and to weigh defendants' post-injunction conduct in that light.
10. Under the Lanham Act, as well as the common law, owners of trademarks are protected from other marks that are likely to cause confusion. Scott Paper Co. v. Scott's Liquid Gold, 589 F.2d 1225, 1228 (3d Cir. 1978). Trademark law focuses on the consuming public, Premier Dental Products Co. v. Darby Dental Supply Co., 794 F.2d 850, 856 (3d Cir. 1986), and the "basic issue in a trademark infringement action under both the Lanham Act and the common law" is the likelihood that consumers will be misled and confused by the trademark infringement as to the origin or sponsorship of the goods or services consumed. Scott v. Mego International, Inc., 519 F. Supp. 1118, 1128 (D. Minn. 1981) (collecting cases). The Third Circuit has observed that trademark law "is not made for the protection of the experts but for the public -- that vast multitude, which includes the ignorant, the unthinking and the credulous, who, in making purchases, do not stop to analyze but are governed by appearances and general impressions." Dresser Indus., Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 462 (3d Cir. 1968).
11. Considering the character of the product, the use to which it is put, the manner in which it is marketed and purchased, and the class of buyers and level of their sophistication, the district court must determine whether the plaintiff has proven the buying public is likely to confuse defendant's goods with plaintiff's. Id.
12. Under the circumstances existing as of February 7, 1992, there was a likelihood of confusion as to the source of "Robin Woods" dolls, given the uncertainty in the industry and among consumers at that time over Mrs. Woods' affiliations and as to whether she would be designing collectible, play or both kinds of dolls for the Company or Alexander or both. (Memorandum Opinion, paragraph 17).
Personal Names as Trademarks
13. Earlier in our jurisprudence, it was considered one's "sacred right" to use one's personal name in connection with his or her business, despite the existence of other businesses operating under that same name. Mandell, Personal Name Trademarks - Your Name May Not Be Your Own, 70 TMR 326, 327 1980); Basile, S.P.A. v. Basile, 283 U.S. App. D.C. 227, 899 F.2d 35, 38 (D.C. Cir. 1990).
Today, courts treat disputes involving personal name trademarks in much the same way as any other trademark dispute. McCarthy, Trademarks and Unfair Competition, Ch. 13, Personal Names as Marks, Section 13.3 (2d Ed. 1984). The court will determine whether the name has developed a secondary meaning and, if so, whether defendants' use of the personal name as a trademark is likely to deceive or to cause confusion with plaintiff's prior use of the same name. Mandell, 70 TMR at 328 (and see cases cited therein). If confusion is likely, the courts will fashion an appropriate decree. See L.E. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 94, 59 L. Ed. 142, 35 S. Ct. 91 (1914) (Holmes, J., stating, "When the use of his own name upon his goods by a later competitor will and does lead the public to understand that those goods are the product of a concern already established and well known under that name, and when the profit of the confusion is known to and, if that be material, is intended by the later man, the law will require him to take reasonable precautions to prevent the mistake.")
14. Certain nuances accompany the personal-name-as-trademark cases, and "easy solutions cannot always be fashioned for problems generated by use of a personal name, particularly since an emotional factor is often involved." Mandell, 70 TMR at 337. Where more than one person or company has a legitimate claim to a given personal name, the courts will endeavor to accommodate and reach a judicial compromise between the competing interests of: (1) the plaintiff (usually the "senior user") in protecting the good will in her or his trademark; (2) the public in being free of confusion; and (3) the defendant (usually the "junior user") in the use of her or his own family name in connection with a business. Id. at 332; Taylor Wine Co., v. Bully Hill Vineyards, 569 F.2d 731, 733-34 (2d Cir. 1978).
15. The law is "reluctant" to preclude an individual's business use of her or his own name where no attempt to confuse the public or to arrogate the goodwill of the "senior user" has been made. Friend v. H.A. Friend and Co., 416 F.2d 526, 531 (9th Cir. 1969); Joseph Scott Co. v. Scott Swimming Pools, Inc., 764 F.2d 62, 67 (2d Cir. 1985). The problem is "more difficult when the second comer has his own background of experience in the particular industry, and is not simply a newcomer." Bully Hill, 569 F.2d at 733. A court must be "particularly cautious to enjoin only those uses that are likely to cause confusion, and no more," and the "ultimate aim" is to craft an injunction that will avoid confusion in the marketplace, protect the "senior user's" business interest in the name, and permit a "junior user" to "explain his [or her] identity and reputation in a legitimate manner." In fashioning the proper injunctive remedy in personal-name-as-trademark cases, the rule of stare decisis is somewhat limited because of the unlimited variation in fact patterns and uniqueness of circumstances. Bully Hill, 569 F.2d 731 at 734 .
16. In the Third Circuit, courts apply the ten factor test announced in Scott Paper Co. v. Scott's Liquid Gold, 589 F.2d 1225 (3d Cir. 1978), to determine whether there is a likelihood of confusion of the buying public regarding the source of goods marketed by two business entities under the same or similar personal names. Those factors are:
(1) The degree of similarity between the marks;
(2) The strength of the mark;
(3) The price of the goods and other factors which suggests the care a consumer might take in making the purchase;
(4) The length of time the mark has been in use;
(5) The defendant's intent in adopting the mark;
(6) Any evidence of actual confusion;
(7) Whether the goods travel in the same channels of trade;
(8) The extent the parties target the same customers;
(9) Similarity of function in the mind of the public; and
(10) Other factors that suggest that the public would expect the plaintiff to manufacture a similar product.
17. Application of Scott Paper Co. Test.
(1) Degree of similarity. To the extent defendants identified Mrs. Robin F. Woods' personal name with the "Let's Play Dolls" line, there is obviously a high degree of similarity to the trademark "Robin Woods." However, aside from this similarity arising from promotional literature for "Let's Play Dolls," there is no similarity between "Robin Woods" and "Alice Darling," nor is Mrs. Woods' handwriting so distinctive that her signature of "Alice Darling" on postcards or on boxes associates her "Alice Darling" persona with her signature as "Robin Woods."
(2) Strength of the mark. Personal name trademarks are not descriptive or suggestive and acquire their value from secondary meaning. See generally Telemed Corp. v. Tel-Med, Inc., 588 F.2d 213 (7th Cir. 1978). The name "Robin Woods" is a strong mark in the collectible doll market and is a relatively weak mark in the play doll market, especially given the Company's emphasis on collectibility and progression toward "The Collectible Doll Company" over the past few years.
(3) Price of goods and other factors suggesting degree of care consumer might be expected to exercise. The price range of "Let's Play Dolls" is approximately $ 80.00 to $ 150.00, retail; the Company's collectible doll price range is much higher, typically $ 150.00 to $ 250.00, although prices run from $ 100.00 to $ 700.00. Additionally, purchasers of collectible dolls are generally more sophisticated than non-collector purchasers who are buying a doll primarily for children to play with every day.
(4) Length of time. The "Robin Woods" trademark has existed at least since the mid-1980s, "Alice Darling" since 1992 at the earliest.
(5) Defendants' intent in "adopting" mark. Defendants have not adopted the mark, but merely advertised the fact that "Mrs. Robin F. Woods" would no longer be designing dolls for the Company and would be designing and promoting the "Let's Play Dolls" line of play dolls for Alexander. Their intent does not seem to have been to damage plaintiff
or arrogate the Company's goodwill for themselves, but was rather to develop a strategy to allow Mrs. Woods to use her considerable talents and "hard earned reputation" to design and promote dolls to compete in the play doll market, a market that was not foreclosed to Mrs. Woods by the injunction.
(6) Evidence of actual confusion. There was evidence of potential confusion as of February 7, 1992. By mid-summer of 1992 certainly, the evidence shows that there has been no actual confusion in the doll industry as to the source of "Robin Woods" dolls. "Robin Woods" collectible dolls that have been designed by Mrs. Woods are available only from the Company (as long as its inventory lasts). "Alice Darling" (who everybody in the industry knows to be Mrs. Woods) is the sole source of "Let's Play Dolls" dolls. There is no evidence that collectors are purchasing "Let's Play Dolls" dolls by mistake, seeking to add to their "Robin Woods" collection; indeed, the "Alice Darling" dolls are being purchased and, so far as can be known, used for play.
(7) Channels of trade. The dolls are being marketed in the same general channels of trade, i.e., the doll market, but the similarities stop there. As the testimony of Mr. Mandeville (among others) convincingly proves, "Let's Play Dolls" are advertised, marketed and promoted exclusively as play dolls, and the marketing has apparently been successful in reaching the target purchaser of play dolls.
(8) Customer targeting. Plaintiff and defendants do not target the same retail customers. Plaintiff, the "Collectible Doll Company," targets a different, older and more sophisticated buyer of collectible dolls, while defendants target mothers and grandmothers buying "Let's Play Dolls" dolls for their daughters and granddaughters to play with. While labels and nomenclature can sometimes be misleading, here they are not.
(9) Similarity of function in the public perception. The functions -- play vs. collection -- are not at all similar, although it is likely that some buyers may purchase a "Let's Play Dolls" doll for collection and that some may purchase a "Robin Woods" doll for play. That cross-over is not, however, determinative of whether a doll is "collectible" or "play."
(10) Other miscellaneous factors to suggest the public would expect plaintiff to manufacture a similar product. Collectors, more sophisticated and informed than non-collector doll buyers, now know that Mrs. Woods is no longer designing dolls for the Company or designing collectible dolls for anyone, and would not expect the Company to manufacture a play doll by Mrs. Woods.
18. Considering all of the circumstances and all of the Scott Paper Co. factors, there is no likelihood of confusion between the Company's business of manufacturing and selling "Robin Woods" collectible dolls, and defendants' business of manufacturing and selling play dolls in the "Let's Play Dolls" line. Compare Scott v. Mego Int'l Inc., 519 F. Supp. 1118 (D.Minn.1981) (Manufacturer/seller of "Micro Nauts" small scale precision military equipment and pieces used in the highly specialized "wargaming" hobby industry, was not entitled to injunction to prohibit defendant from manufacturing and selling "Micronauts," futuristic, space-oriented toys, despite the near identical names, because defendant's product was not designed or marketed for sophisticated "wargamers" but was, instead, targeted at children for play) with Hasbro, Inc., v. Lanard Toys, Ltd., 858 F.2d 70 (2d Cir. 1988) (Manufacturer/seller of "G.I.Joe" warmongering military action toy figures was entitled to injunction against defendant to prohibit it from marketing and selling its "Gung Ho" line of warmongering military action figures designed to compete with "G.I.Joe" and to wear "G.I.Joe's" accessories and equipment) and Warner Bros. v. Gay Toys, Inc., 658 F.2d 76 (2d Cir. 1981) (Manufacturer/seller of toy car called "Dixie Racer" which was in all other respects a duplicate of plaintiff's toy car, the "General Lee" prominently featured on Warner Bros.' successful television series, the "Dukes of Hazzard," could be enjoined from marketing and selling the "Dixie Racer" which caused confusion for target consumers, i.e., young boys.)
19. Another nuance is introduced into this personal-name-as-trademark case in that the actual "senior user" of the trademark "Robin Woods" is the defendant, Mrs. Robin F. Woods, who has conveyed the right to use that trademark to the "junior user," the plaintiff-Company, for valuable consideration, namely a much-needed infusion of capital from the Pittsburgh Seed Fund. It is "well-settled that a person who has adopted and used his surname as a trade-mark, or trade-name may transfer the same with the good will of a business and thereby divest himself of the right to use his name in connection with such a business." Guth v. Guth Chocolate Co., 224 F. 932, 933 (4th Cir. 1915). The Fourth Circuit Court of Appeals refused to allow defendant to manufacture and sell chocolates under the name "Charles G. Guth" because he had sold the Guth Chocolate Co. along with the "good will and use of the name Guth," stating "what [Guth] really seeks to do is to keep for himself the essential thing he sold, and also keep the price he got for it. A court of equity may properly prevent such manifest unfairness." Id. at 933. In other words, Mr. Guth could not have his chocolate cake and eat it, too. See also Levitt Corp. v. Levitt, 593 F.2d 463 (2d Cir. 1979) (William Levitt, creator and developer of the highly successful "Levittown" communities in New York and Pennsylvania, was prohibited from using his name and exploiting his personal reputaticn to promote and market a residential community in Florida, having sold all of the goodwill, trademarks, trade names, service marks and service names, including the registered names "Levitt" and "Levitt and Sons" and the unregistered trademark "Levittown" to ITT Corporation in exchange for ITT common stock worth $ 60 million, and other consideration.)
20. The circumstances of this case more closely resemble those of Madrigal Audio Laboratories v. Cello. Ltd., 799 F.2d 814 (2d Cir. 1986), which this Court finds particularly helpful in determining the scope of the injunction and the extent of defendants' contempt of court. In Madrigal, Mark Levinson, well-known designer of sophisticated high-end audio equipment, started his own company to produce and distribute his audio equipment. In need of operating capital, Levinson obtained substantial investors who insisted that he convey to Mark Levinson Audio Systems, Inc. (MLAS) the trade name "Mark Levinson" and all variations thereof.
Eventually, Levinson left MLAS which went into bankruptcy and sold all of its assets at public auction to Madrigal, including the trademarks and trade name. Meanwhile, Levinson had started a new company, Cello, Ltd., to manufacture and distribute high-end audio equipment to the audiophile. Cello began manufacturing its first product, an "audio palette" which is similar to an equalizer, and marketed this product as part of the "Mark Levinson" line, with promotional literature identifying Levinson as the designer by text and photograph.
21. The Second Circuit reversed and vacated the district court's injunction enjoining Cello and Levinson from generating any publicity, advertising or oral or written communication about Levinson's connection with Cello or his past connection with MLAS. The court held that a preliminary injunction was inappropriate in the absence of any evidence that the purchasers of plaintiff's or defendant's audio equipment were actually misled or confused as to the source of the equipment. 799 F.2d 814 at 821. The court further stated:
A name becomes a trade name and merits protection under Section 43 of the Lanham Act, 15 U.S.C. § 1125, when it acquires "secondary meaning", i.e., when the name comes to "symbolize a particular business . . ." to consumers. . . . An individual's personal name can acquire, through advertising or some other means, such a "secondary meaning"; thereupon it may become a trade name. . . . But even when a personal name has become a trade name it continues to serve the important function to its bearer of acting as a symbol of that individual's personality, reputation and accomplishments as distinguished from that of the business, corporation or otherwise, with which he has been associated. . . Accordingly, though an individual may sell the right to use his personal name . . . a court will not bar him from using that name unless his "intention to convey an exclusive right to the use of [his] own name" is "clearly shown." . . .
Whether a person who sells the trade name rights to his personal name is barred from using his personal name depends on the terms of the sale. . . . When an individual sells no more than the right to use his name as a trade name or trademark he is precluded only from using his personal name as part of that of another company or on other products. . . . and not from taking advantage of his individual reputation (as opposed to the reputation of the company which bore his personal name as a trade name) by establishing a company which competes against the purchaser of the trade name . . . or from advertising, in a not overly intrusive manner, that he is affiliated with a new company. . . .
799 F.2d 814 at 822 (Citations omitted).
22. As in Madrigal, Mrs. Woods conveyed to the Company her right to affix the trademark "Robin Woods" and the other trademarks to any products designed for other businesses, but her agreement with the Company did not purport to preclude Mrs. Woods, upon termination, from taking advantage of her own individual reputation (as opposed to the reputation and goodwill of the Company which bears her name); neither did the injunction prohibit Mrs. Woods from all association with her given name for all time, and her name continues to serve the important function of "acting as a symbol of that individual's personality, reputation and accomplishments," as distinguished from those of the Company. Instead, the injunction was designed to prevent the likelihood of confusion that existed at that time as to Mrs. Woods' affiliations and the possible dual sources in the public's perception of "Robin Woods" collectible dolls.
23. Defendants have not attempted to arrogate the goodwill of the Company, nor have they falsely designated any of their products as associated with plaintiff's. See Madrigal, 799 F.2d 814 at 823-24. Moreover, the Company has no right to cloak with secrecy the fact that Mrs. Woods is no longer associated with it, nor does it possess the right to represent that it retains her services, and it would be at least misleading were the Company to make such representations to the public. (Chief Magistrate Judge's Recommendation at 23; Madrigal, 799 F.2d 814, n. 5.)
24. Plaintiff has not established that any of its lost sales, orders or profits were caused by defendants' post-injunction conduct or by any confusion that conduct might have caused. The record discloses several other causes of the Company's losses, especially the facts that Mrs. Woods was no longer designing or signing dolls for the Company and that the Company had made some serious customer relations/marketing blunders which soured its already overstocked former customers on the Company. Plaintiff's lay and expert witnesses were not convincing and offered very little by way of foundation as to their opinions that the Company's losses were caused by having two sources of "Robin Woods" dolls on the market. Mr. Iwanyshn, the "outside" expert witness, based his opinion as to the cause of damages ("unanticipated competition") primarily on his interviews with the "inside" experts and the "internally-generated" information the Company supplied in preparation for litigation. The foundation for such opinion evidence is inherently self-serving, and the opinion is therefore entitled to little weight. 815 Tonawanda Street Corp. v. Fay's Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988). Plaintiff has not proven it is entitled to any compensatory damages.
25. Plaintiff is, however, entitled to attorneys' fees associated only with the contempt litigation, and not with the proceedings on the preliminary injunction or the appeal. Attorneys' fees for the latter would be unfair because defendants had not yet begun distributing or promoting "Let's Play Dolls" and no trademark infringement had yet occurred when the injunction issued. It is not necessary that defendants' contemptuous conduct be undertaken in bad faith to justify an award of counsel fees, but only that it be willful. Ranco Industrial Products Corp. v. Dunlap, 776 F.2d 1135, 1139 (3d Cir. 1985). There is no indication defendants acted in bad faith, and they did act on advice of counsel. However, that advice was unreasonable in light of this Court's denial on February 11, 1992, of defendants' motion for modification or stay pending appeal. Defendants' willful violation of the clear and unambiguous language of paragraphs 1(g), 5 and 8 of the injunction order prompted the motion for contempt, and warrants an award of attorneys' fees.
26. Plaintiff has submitted affidavits of counsel as to attorneys' fees and expenses connected with the preliminary injunction, its appeal and these contempt proceedings. Defendants do not dispute the reasonableness of the fees, but they dispute plaintiff's entitlement to attorneys' fees related to obtaining the preliminary injunction and its appeal, they dispute plaintiff's calculations, and they further argue "defendants should not be held responsible for the time spent by Karlowitz & Cromer to familiarize themselves with the facts of this action, as it was Robin Woods, Inc's decision to obtain new counsel." There is no suggestion plaintiff changed attorneys (as is its right) to build-up counsel fees or to delay these proceedings, and this Court disagrees with defendants that current counsel's "start-up time" should not be included in the award of attorneys' fees. However, plaintiff is not entitled to recover attorneys' fees generated in obtaining the preliminary injunction or in defending it on appeal.
As to those portions of the itemized statements of fees and expenses connected with the contempt proceedings that are in dispute and the challenged computation of a total amount, the Court will direct the parties to consult and attempt to resolve their differences by consent, and failing such resolution will schedule an evidentiary hearing upon the request of either party to resolve the issue of attorneys' fees.
27. Plaintiff also seeks approximately $ 107,000.00 which it claims is the cost of management's time and expense in preparing for the contempt litigation. Defendants do not dispute the amount claimed, but deny that plaintiff is legally entitled to such damages. (Defendants' Proposed Findings of Fact and Conclusions of Law, paragraphs 55 (Findings) and 20 (Conclusions)). A successful party proving contempt is entitled to recover by way of civil fine, the expense of investigating the violation of the order, preparing for and conducting the contempt proceeding, in addition to attorneys' fees. Winterland Concessions, 1992 U.S. Dist. LEXIS 9917,*24, citing, inter alia, Vuitton et Fils. S.A. v. Carousel Handbags, 592 F.2d 126, 130-31 (2d Cir. 1979). This Court will award plaintiff these costs.
28. Plaintiff also requests this Court extend the two-year "non-competition agreement and the restraints imposed upon the defendants by a period equal to the time elapsed between the entry of the preliminary injunction and the imposition of the sanctions." (Proposed Findings of Fact and Conclusions of Law submitted by plaintiff, paragraph 18(i)). Although such an extension is within the range of sanctions that a court can lawfully impose upon a finding of willful contempt, extension is not appropriate in this case because defendants have not violated the agreement not to compete in the collectible doll market or the provisions of the injunction based upon that agreement. Cf. Levitt Corp. (Where defendant/infringer's contempt was willful and blatant and caused actual widespread confusion among consuming public as to whether plaintiffs or defendant/infringer was the developer of retirement communities, and seriously damaged the goodwill that defendant/infringer had sold to plaintiffs, district court properly extended the restrictive period of covenant not to compete and injunction).
29. Defendants have filed a motion to modify this Court's Order dated February 7, 1992 (Document No. 132), and plaintiff has responded (Document No. 137). The motion requests this Court modify the injunction to permit Mrs. Woods to again use the trade name "Robin Woods" based on the initial determination by the Patent and Trademark Office denying plaintiff's application for registration of this trade name. The proper protocol would be to await the Chief Magistrate Judge's recommendation on this motion; however, in the interests of judicial economy, this Court will decide the merits of this motion, and will deny it.
Federal registration does not create a trademark; rather, the trademark comes from use, not registration, and the right to use it is in the nature of a property right based on the common law. Friend v. H.A. Friend, 416 F.2d 526, 532 (9th Cir. 1969). This Court's determination of February 7, 1992, has been affirmed by the Third Circuit and is the law of the case. United States v. Local 560 Int'l. Bhd. of Teamsters, 974 F.2d 315, 329-30 (3d Cir. 1992). That determination establishes conclusively, therefore, that "Robin Woods" is a trademark or trade name as to which plaintiff now owns the rights, regardless of whether that mark has been registered.
Based upon the foregoing findings of fact and conclusion of law, this Court holds defendants in contempt of court for violating paragraphs 1(g), 5 and 8 only of the Order of February 7, 1992, and will impose sanctions by an appropriate Order of Court to accompany this Opinion.
ORDER OF COURT
AND NOW, this 18th day of December, 1992, it is hereby ordered that plaintiff's Motion for Contempt, Counsel Fees, Expenses, Damages and Other Sanctions (Document No. 57) is granted in part, defendants having been found in contempt of paragraphs 1(g), 5 and 8 of this Court's Order of February 7, 1992, and sanctions are imposed against defendants as follows:
(1) Damages in the amount of $ 107,000 are awarded to compensate plaintiff for the costs of management time and expense in preparation for the contempt proceedings;
IT IS FURTHER ORDERED that attorneys' fees and expenses in connection with the contempt proceeding will be awarded in an amount either:
(i) To be established by consent order to be submitted by the parties on or before January 15, 1993; or
(ii) To be determined on plaintiff's affidavit(s), defendants' response and/or affidavit(s) and supporting briefs of the parties, or after hearing in the event that any party requests an evidentiary hearing on or before January 15, 1993. Plaintiff's affidavit(s) and brief shall be filed on or before January 22, 1993, and defendants' response, affidavit(s) and brief shall be filed on or before January 29, 1993.
(2) Defendants' motion to strike damage claims (Document No. 95), motions in limine to exclude certain evidence (Document Nos. 96 and 104), motion for summary judgment as to damages (Document No. 102), motion to strike plaintiff's Exhibit 104 (Document No. 120) and motion to modify this Court's Order of February 7, 1992 (Document No. 132) are denied.
Donald J. Lee
United States District Judge
[SEE EXHIBIT IN ORIGINAL]