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January 3, 1994



The opinion of the court was delivered by: ROBERT L. CARTER

CARTER, District Judge

 Plaintiff Amity Leather Products Co. ("Amity") moves for an order finding defendant RGA Accessories, Inc. ("RGA") in contempt of court for having violated the court's previous injunction prohibiting RGA from using photographs of Amity's products to promote RGA's competing products. Specifically, Amity alleges that RGA violated the consent judgment by using a photograph of Amity's "Macro bag" to promote another product, the Petite Valise, through the joint venture, Smithy Accessories ("Smithy"), which is half-owned by RGA.


 The prior proceedings which led up to the entry of an injunction against RGA concerned, among other things, RGA's use of a picture of an Amity product known as the "Initial Keyholder" for advertising and promoting sales of a similar product made by RGA, allegedly in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and New York state law. On April 23, 1985, the court entered a Final Judgment and Injunction on Consent permanently enjoining RGA and all persons in active concert or participation with RGA from "marketing . . . any product using pictures of Amity's products to advertise and/or promote its own similar products." (Final Judgment and Injunction on Consent [Shipley Exh. A], P 4.) In addition, on April 25, 1986, in a subsequent contempt proceeding concerning RGA's unauthorized use of photographs of another Amity product, the court modified the injunction to make it clear that its scope would not be limited to the "Initial Keyholder" product. (Shipley Exh. B. at 19-22.)

 The alleged instant violation began in August, 1993, when Smithy employee Theresa Barry ("Barry") engaged an outside photographer Jerry Banberger ("Banberger") to prepare the "ITEM ATTACK," a promotional device which contains a photographic image purporting to show samples of the Petite Valise wallet. Barry gave Banberger three wallets to be shown in the ITEM ATTACK in different views. One wallet, a purple sample, was to be altered photographically to change its color and the position of the credit card pockets. (Banberger Tr. at 66). After the project was completed, the ITEM ATTACK was then sent to J.C. Penney stores as a way of encouraging them to order the Petite Valise. (Shipley Aff. P 10.) Plaintiff contends that at least one of the wallets depicted in the ITEM ATTACK is a sample of its own Macro Bag, not a sample of the Petite Valise.


 A court may hold a party in civil contempt only when: (1) the order the party allegedly failed to comply with is clear and unambiguous; (2) the proof of non-compliance is clear and convincing; and (3) the party has not diligently attempted in a reasonable manner to comply. S.E.C. v. Oxford Capital Securities Inc., 794 F. Supp. 104, 106 (S.D.N.Y. 1992) (Conner, J.); see also, EEOC v. Local 638, Local 28 of Sheet Metal Workers' Int'l Ass'n, 753 F.2d 1172, 1178 (2d Cir. 1985), aff'd, 478 U.S. 421, 92 L. Ed. 2d 344, 106 S. Ct. 3019 (1986). While defendant does not challenge the clarity of the order, it nevertheless argues that plaintiff has failed to present "clear and convincing" proof of the alleged violation, and that there is insufficient evidence to prove that RGA has not been reasonably diligent in its compliance with the court's order.

 Amity bases its claim primarily on an examination of photographs of the items in question--i.e. photographs of the wallet depicted in the ITEM ATTACK, and photographs of Amity's own Macro bag wallet--which Amity claims are of exactly the same item. Amity relies on an analysis of these photographs as set out in the affidavit of Brownlyn Lane ("Lane"), Amity's assistant advertising manager, to support its claim.

 In her affidavit, Lane stated that one of the wallets shown in the ITEM ATTACK is the same wallet which had earlier been produced and identified by B.H. Smith as being a specimen of Amity's Macro bag wallet. *fn1" (Lane Aff. P 8.) Lane based her finding on her visual comparison of the photograph of the Amity Macro bag wallet with photographs used in the ITEM ATTACK. *fn2" In support of her conclusion, Lane pointed out that the pattern of scratches, scuff marks and other irregularities, including a scar and pattern of markings on the checkbook cover, apparent in the enlargement of the photograph of Amity's wallet, was identical to the markings in the enlarged ITEM ATTACK photograph. Noting the identical markings in both photographs, Lane concluded that the same wallet appears in both photographs. (Lane Aff. PP 11-14.)

 Defendant, on the other hand, relies on the testimony of various individuals as proof that the wallet in question was a Smithy Accessories item and not an Amity product. However, defendant's reliance is misplaced.

 Defendant first points to the testimony of Marshall Ackerman ("Ackerman"), the B.H. Smith employee with supervisory responsibility for the operations of the Smithy Accessories joint venture which produced the ITEM ATTACK. Although Ackerman testified that it was not his usual practice to send Amity bags to be photographed, (Ackerman Tr. at 123), and that the item in the ITEM ATTACK photograph was not an Amity product, (Ackerman Tr. at 122), Ackerman could not say from personal knowledge that the samples sent to be photographed were not Amity products. Indeed, in his deposition Ackerman admitted that he did not know which specific sample Barry used in the ITEM ATTACK, (Ackerman Tr. at 121), and that he could not produce the Smithy sample that was allegedly used in the ITEM ATTACK. (Ackerman Tr. at 121-122).

 In addition, defendant's reliance on the testimony of Barry, the employee who delivered the samples to be photographed, is problematic. Notwithstanding her emphatic statement that the samples she delivered to the photographer were not Amity products, but rather Smithy samples which specifically had been shipped from Hong Kong, (Barry Tr. at 65, 32-34), her testimony is unconvincing. For one thing, Barry first testified that the samples came to her in a box from Hong Kong, (Barry Tr. at 33), and that she sent them to the photographer the same day that she received them. (Barry Tr. at 34.) However, she later testified that when she was told to prepare the ITEM ATTACK, she had "original samples," but "had to wait on one more." (Barry Tr. at 63-64.) She did not recall opening the box, and did not know whether there were more than three or more than one hundred samples in the box. (Barry Tr. at 33-36.) Moreover, Barry's explanation of the differences between the items in question is not convincing. When asked to compare the Amity Macro bag wallet shown to her at her deposition, which had been marked in a prior deposition as defendant's Exhibit J, with the wallet she delivered to the photographer, the only difference that she could point out was the color: she described the Amity wallet before her as being "eggplant." (Barry Tr. at 53.)

 Finally, Banberger's equivocal testimony as to the identification of the Amity wallet and the sample he photographed cannot be given much weight. Although Banberger did in fact state that two black Amity wallets shown to him at his deposition were definitely not the wallets he photographed, (Banberger Tr. at 119-121, 132), he was uncertain about the purple Amity wallet, Exhibit J, also shown to him at that time. (Banberger Tr. at ...

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