Pop-Up® Web Photos Cook TNI

Posted on | April 28, 2008 | No Comments

2008-1319 Volk Enter. v. TNI Packaging
ND/GA 1:06-cv-318

Defendant  TNI appeals from the Order of Judge Jack Camp holding it in contempt, fining it $200/day, and awarding over $30,000 in legal fees against it.  TNI was found to have violated the terms of a stipulated Consent Order that ended the case in 2006.

Volk owns patents on disposable cooking thermometers which it markets under the Pop-Up®  brand.  TNI sells a competing product and, in early 2006, Volk sued for patent infringement, trademark infringement, and Lanham Act violations.  The parties apparently settled and a Consent Order was entered which, in part,  prohibited TNI from using photgraphs of Volk’s thermometers in TNI ads or in similar situations.

In January 2007 Volk discovered that TNI was using photographs of Volk thermometers in various print ads and on the Web.  A motion for contempt followed.

The court found Volk’s evidence–the distinctive features of its thermometers versus TNI–sufficient to establish that the depicted products were Volks.  Further, TNI admitted that it did not change the photgraphs it used in its ads after the Consent Order.  As for the Web, TNI claimed that it only pictured what it purchased from China, although apparently it could not explain why it looked different from what it actually sold.

Applying 11th Circuit law, the court found that it could award sanctions for past conduct only as compensatory–if Volk could prove actual damages.  Since Volk could not, the only available sanction was coercive and forward-looking only–no sanction for past contempt. 

The court order a fine of $200/day until all photographs were corrected.  The court also ordered TNI to pay Volk over $30,000 for the attorneys’ fees incurred in bringing the motion for contempt.  This covered all of the partner’s and paralegal’s time, and half the associates time.

Documents:

2008-1319_Contempt_Order.pdf

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