The opinion of the court was delivered by: ANITA BRODY, District Judge
On March 11, 2003, plaintiff Ardex Laboratories filed this trademark
infringement action against defendant Anthony B. Cooperider. Plaintiff
requested attorney fees in its complaint, but did not specify a sum
certain. On April 16, 2003, default was entered against defendant. On
October 15, 2003, default judgment and a permanent injunction were
entered against defendant and plaintiff's motion for attorney's fees was
granted. Jennifer Friedrich*fn1 filed an affidavit in support of the
motion, stating that she "mailed a copy of the Order and the Civil
Judgment to the defendant on October 15, 2003 via first class mail."*fn2
On January 14, 2004, plaintiff filed a motion for contempt, claiming that
defendant has failed to comply with my order regarding attorney's fees.
In addition to a contempt order, plaintiff seeks an order that defendant
pay the $4,189.00 originally ordered and $600.00 in sanctions associated
with costs and attorney's fees incurred by plaintiff in filing the
contempt motion. On February 25, 2004, I ordered defendant to show cause by March 24, 2004 why plaintiff's motion for contempt
should not be granted. This order was mailed to defendant by the court.
Although defendant was served with the complaint on March 18, 2003, there
has never been an entry of appearance for defendant, nor any pleadings
filed on his behalf.
In order to hold a party in civil contempt, plaintiff must establish
three elements: (1) that a valid court order existed; (2) that defendant
had knowledge of the order; and (3) that defendant disobeyed the order.
Roe v. Operation Rescue, 919 F.2d 857, 871 (3d Cir. 1990).
Plaintiff has met the first element because I issued a valid order
awarding attorney fees on October 15, 2003. Plaintiff has likely met the
second element because (a) Ms. Friedrich's affidavit states that she
mailed a copy of the October 15, 2003 judgment order to defendant; and
(b) the court clerk mailed a copy of the February 24, 2004 order to show
cause to defendant. See Colonial Beef Co. v. Hardimon, Civ. A.
No. 91-236. 1997 U.S. Dist. LEXIS 15527 at * 11-12, 1997 WL 634371 at *4
(E.D. Pa. Oct. 7, 1997) (finding that a party could not be held in
contempt when there was no evidence that he had received a copy of the
order); Residential Reroofers Local v. Rynk Roofing,
848 F. Supp. 590, 592 (E.D.Pa. 1994) (finding that a party had knowledge of an
order when plaintiffs mailed copies of the order and contempt motion to
him, and a copy of the order to show cause was served upon a person at
the party's address who refused to sign his name.) Plaintiff has met the
third element because defendant has failed to pay attorney fees.
Although plaintiff may have met this initial burden, there are factors
that lead to my refusal to order defendant in contempt. Ordinarily,
plaintiff must seek enforcement of an order that awards attorney fees
through a writ of execution. "Process to enforce a judgment for the
payment of money shall be a writ of execution, unless the court directs
otherwise." Fed.R. Civ. P. 69(a): see also Shuffler v. Heritage Bank,
720 F.2d 1141. 1147 (9th Cir. 1983) ("The proper means . . . to secure
compliance with a money judgment is to seek a writ of execution, not to
obtain a fine of contempt.") Although the language of Rule 69(a)
contemplates other means to enforce money judgments, "such other means
are confined only to cases in which established principles warrant
equitable relief, such as when execution would be an inadequate remedy."
Moore's Federal Practice § 69.02 (3d ed. 2003) (citing Hilao v.
Marcos, 95 F.3d 848, 854-855 (9th Cir. 1996).)
Also, in a trademark action, only in "exceptional cases" may the court
award reasonable attorney fees to the prevailing party.
15 U.S.C. § 1117(a). The Third Circuit has held that an "exceptional case"
must involve culpable conduct, and that examples of such conduct include bad
faith, fraud, malice, and knowing infringement. Securacomm
Consulting, Inc. v. Securacomm Inc., 224 F.3d 273, 280 (3d Cir.
2000) (finding no abuse of discretion in a district court decision
granting attorney fees in a trademark infringement action, where the case
involved a "sweeping attempt to beat a financially weaker opponent
through the use of vexatious litigation." Securacomm, 224 F.3d
at 283.) Plaintiff has cited one case in this district where attorney
fees were awarded after a default judgment in a trademark infringement
action. Choice Hotels Int'l. Inc. v. Pennave Assoc.'s,
159 F. Supp.2d 780 (E.D.Pa. 2001). In that case, however, attorney fees were
awarded only after a trial to determine damages, which provided the court
with evidence that defendant's conduct "constitute[d] knowing and willful
infringement on plaintiffs marks." Id. at 786. In the instant
case, there is no evidence before me that defendant's behavior should be
considered "culpable conduct," or that this case should be considered
"exceptional". Furthermore, "[a] finding of contempt . . . must satisfy due process
requirements." Newton v. A.C. & S., 918 F.2d 1121, 1127 (3d
Cir. 1990). "Due process requires that a potential contemnor be given
notice and a hearing regardless of whether the contempt is civil or
criminal in nature." Id. There has been no hearing in this
case, nor has plaintiff requested a hearing.*fn3
Finally, plaintiff did not request a sum certain for attorney fees in
Although Fed.R.Civ.P. 69(a) gives me discretionary power to enforce
a judgment through contempt proceedings, I decline to do so for all of
the above reasons. (1) In this case, plaintiff may seek relief through a
writ of execution; (2) this case is not "exceptional" within the meaning
of 15 U.S.C. § 1117(a); (3) defendant has not received due process,
and (4) plaintiff did not specify a sum certain for attorney fees in its
complaint. The only appropriate course for plaintiff to recover
attorney's fees is a writ of execution. ORDER
AND NOW, this day of May, 2004, plaintiff's motion for