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August 16, 1990


The opinion of the court was delivered by: Keenan, District Judge:



This action in which plaintiff sought to protect the exclusivity of its tradename was the subject of a prior decision where this Court permanently enjoined defendant from using the name Cancer Research Society or any other name confusingly similar to plaintiff's name. See Cancer Research Inst. v. Cancer Research Soc'y, 694 F. Supp. 1051 (S.D.N Y 1988). The facts underlying the case are fully depicted in that decision, familiarity with which is assumed, and will not be recounted except to the extent necessary to this decision. Plaintiff now seeks an order adjudging defendant in civil contempt for violating the terms of the Judgment and Permanent Injunction of April 29, 1988, which embodied the decree of this Court's decision. Plaintiff also requests attorney's fees because it contends the alleged contumacy was willful. For the reasons discussed below, the Court finds defendant is in contempt and orders discovery on the issue of damages. The Court declines to award attorney's fees and costs.


The Judgment and Permanent Injunction entered by this Court on April 29, 1988 permanently enjoined defendant "from listing or advertising itself in any telephone directory in the United States under the name Cancer Research Society. . . ." Inj. ¶ 2. The Court instructed defendant to notify before June 1, 1988 the publishers of all directories in which the offending listing had already appeared, or in which it was about to appear and could not be halted, that the listing must be deleted from all future directories. Id. ¶ 4. Paragraph 3 of the injunction required the defendant to "take immediate steps to attempt to secure the withdrawal of any such listings which were placed prior to April 19, 1988," and were slated to appear in directories which had "not yet reached their closing dates."

When plaintiff initially brought this motion, it adduced evidence of 10 instances of purported violations of the April 29 injunction. This figure swelled to 178 violations in plaintiff's estimation by the time the extensive submissions were entirely before the Court.

The Purported Violations

Plaintiff claims that defendant's failure to secure the timely deletion of prohibited listings from numerous directories published between late 1988 and late 1989 warrants a finding of contempt. Paragraphs 1 and 2 of the December 21, 1989 affidavit of Thomas C. Morrison display 55 instances*fn1 where the prohibited listing appeared in directories issued between September 1988 and October 1989. Alongside nearly all of the alleged violations plaintiff supplies the date on which it placed an order for a listing in the directories where defendant's prohibited listing appears. The vast majority of plaintiff's listings were placed after April 29, 1988. Plaintiff asserts that "the closing date for telephone directories ranges from three to six months prior to the date of publication." Morrison Aff. of April 24, 1989 at ¶ 4. Thus, plaintiff points out, a "February directory may have closed as late as November, and certainly would have closed no earlier than September — some five months after defendant was ordered to cease all such listings and to "take immediate steps" to remove any such listings which had previously been placed (Injunction, ¶ 3)." Id. (emphasis in original)

To bolster its assertions of non-compliance, plaintiff surveyed 15 directory companies, responsible for the publication of 39 directories containing the prohibited listing, to determine whether they received cancellation orders from defendant and, if so, whether the cancellation orders were received in time to delete defendant's listings from directories that were still open when the Court issued its injunction. The results of this survey, which are compiled in the affidavit of Eric Wertheim, reveal "that no record of formal cancellation order [prior to late 1989] . . . could be found for 33 directories. Cancellation orders were found for five directories but they were received anywhere from 18 days after the effective closing date to approximately four months after the publication date." Wertheim Aff. ¶ 13 (emphasis in original). Moreover, the survey "could not verify a single instance where defendant secured the cancellation of its listing in a book that had not closed as of the date the injunction issued." Id.

Defendant's Compliance Efforts

Defendant concedes, as it must, that listings have appeared which violate the terms of the injunction. Defendant seeks, however, to lay the entire blame at the feet of its advertising agency, American Ad Management ("AAM") or the individual directories it maintains published the prohibited listing despite cancellation orders. Indeed, defendant claims it was unaware that any of its cancellation orders were ineffectual until it received plaintiff's contempt motion papers. Kip Sturgeon, an employee of defendant, declares that:

  "Following the issuance of the injunction, I
  immediately sent a copy to Judy Leverich at
  American Ad Management, the advertising agency
  responsible for placing the Society's telephone
  directory listings. Before I sent it to her, I
  spoke to her by telephone, and advised her of the
  terms of the injunction. I recall stressing to her
  that cancellation notices would have to be sent
  out no later than June 1, 1988."

Sturgeon Aff. of June 3, 1989. Defendant needed to rely upon AAM to cancel the listings because directories do not deal directly with advertisers. See Taylor Aff. ¶ 10. Sturgeon also asserts that defendant's telephones were disconnected between May 1988 and January 1989, and that defendant placed no new telephone listings or advertisements soliciting funds after mid-June 1988. See Sturgeon Aff. of May 10, 1989 at ¶ 5.

Judy Leverich, AAM's former coordinator responsible for cancelling telephone directory listings, sent a "Form 3235," the acknowledged form for cancelling telephone directory listings, to various directory publishers to cancel approximately 150 listings for the name Cancer Research Society. She believes that the "vast majority" of the cancellations were effective, and assumes that error on the publishers' ...

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