defendant nevertheless argues that a contempt order is not appropriate considering its diligence in attempting, in a reasonable manner, to comply with the court's earlier order. Such diligence, defendant maintains, is manifested by the fact that it has complied with the injunction for the past seven years without incident, and that it was B.H. Smith, not RGA, which controlled the activities causing the alleged violation.
Defendant's contentions are without merit. The court does not find the mere passage of time to be a sufficient indicator of diligence. Moreover, evidence that Barry, the person entrusted with delivering samples to be photographed for the ITEM ATTACK, was never instructed and had no knowledge of any policy by Smithy not to use Amity's products in its own photographs, (Barry Tr. at 60-61), seems to indicate that defendant was lax, to say the least, in making sure that an incident such as this one never occurred.
Furthermore, defendant's attempt to shift all the responsibility of the alleged violation to another corporation is inappropriate. The record indicates that the Petite Valise product is marketed through a joint venture of RGA and B.H. Smith, Inc. known as Smithy Accessories. (Ackerman Tr. pp. 8-10, 14, 25-27.) As the court's order permanently enjoins "RGA, its successors, assigns and affiliates, its officers, agents and employees, and all persons in active concert or participation with RGA" from using pictures of Amity's products to advertise and/or promote its own similar product, the prohibited use of Amity's product in the ITEM ATTACK can certainly be ascribed to defendant RGA. As joint venturers in the Smithy enterprise, RGA and B.H. Smith are both jointly liable for the joint venture's acts. Tehran-Berkeley v. Tippetts-Abbett, et al., 888 F.2d 239, 243 (2d Cir. 1986) (citations omitted). It is inconsequential that RGA lacks supervisory authority over the employees
charged with delivering the ITEM ATTACK photographs to the photographer. Therefore, RGA's failure to make sufficient efforts to prevent these employees from using pictures of an Amity product in its promotional document is certainly evidence of RGA's own lack of diligence.
As RGA has not been diligent in its efforts to comply with the court's order, and has violated the order by using an image of plaintiff's product in the ITEM ATTACK piece, there is sufficient evidence to find defendant RGA in civil contempt. Accordingly, Amity's request for an order holding RGA in civil contempt for violation of the consent judgment entered on April 23, 1985 is granted.
Although plaintiff seeks an order requiring defendant to pay plaintiff's attorneys fees and costs reasonably incurred in this proceeding, such an order is inappropriate in a case such as this one where there is no adequate showing that defendant willfully violated the court's earlier order. See Vuitton et Fils, S.A. v. Carousel Handbags, Inc., 592 F.2d 126, 130 (2d Cir. 1979). However, plaintiff is entitled to compensation for defendant's unlawful use of an Amity product since the distribution of the ITEM ATTACK may have improperly influenced J.C. Penney representives to order the Petite Valise, although they had the image of Amity's Macro bag wallet in mind. Therefore, to avoid defendant's unjust enrichment, RGA must provide an accounting and pay Amity the profits made on sales of the Petite Valise product to J.C. Penney. See Manhattan Industries, Inc. v. Sweater Bee by Banff, Ltd., 885 F.2d 1, 7 (2d Cir. 1989).
Furthermore, it should go without saying that defendant RGA Accessories, Inc., its successors, assigns, and affiliates, its officers, agents, and employees, and all persons in active concert or participation with RGA, including Smithy Accessories, must cease and desist from further commercial use of the ITEM ATTACK document. Lastly, defendant is to send a written disclaimer to all recipients of the ITEM ATTACK notifying them that the products pictured in ITEM ATTACK document mailed in August, 1993 are not specimens of the Smithy Petite Valise, and requesting them, if they still have any ITEM ATTACK document in their possession, to destroy it or return it to Smithy Accessories.
Based on the foregoing analysis, plaintiff's motion for an order finding defendant in contempt is granted. Following an accounting of sales made of the Petite Valise product to J.C.Penney, defendant is to pay plaintiff the profits derived from those sales. In addition, defendant must cease from further violations of the order, notify recipients of the ITEM ATTACK that the products depicted are not specimens of the Smithy Petite Valise and request that they destroy or return to Smithy any ITEM ATTACK document still in their possession.
IT IS SO ORDERED.
Dated: New York, New York
January 3, 1994
Robert L. Carter