Plaintiff uses the GORILLA PLAYSETS mark for outdoor play-sets. Defendant sold GORILLA GYM indoor exercise equipment, such as a pull-up bar, however it included accessories for children (such as ‘trapezes’). Plaintiff sues and defendant was enjoined from selling infringing play-sets. The injunction did not set out time-frames for compliance. Defendant, alleging that it was sitting on three months of inventory, moved for a phase-out period for existing stock, but the motion was denied (defendant also argued that it couldn’t satisfy the monetary award unless it moved this merch).
Several weeks later, a few infringing products were shipped, probably to trap-buyers, and plaintiff moved for contempt.
Defendant argued that it had made a good faith effort at compliance. District Court disagreed and this appeal followed.
11th Circuit: Because defendant itself was responsible for the problematic sales (and couldn’t blame the sales on agents), it would had to show that it had made ‘in good faith all reasonable efforts to comply.’ The court noted that defendant:
“…attempted – mostly successfully – to remove the words “Gorilla Gym” from its Amazon page and its web presence more broadly, built a new website, directed [its fulfillment entity] to repackage the goods it possessed, and rebranded the products under [other marks].”
However:
“[Defendant] took over two weeks to direct [its fulfillment and shipping entity] to remove the products from the infringing packaging and place the products into plain boxes and [defendant] did not make any efforts to verify compliance with ‘a new system’ until after [defendant] was notified that [infringing products] were still be shipped…It took [defendant] seven weeks after the injunction to direct [its shipper] to stop shipping orders’
Accordingly, the court determined that a reasonable person could find a clear and convincing violation and that defendant did not meet its burden to show an inability to comply – Defendant had made some efforts to comply but not all reasonable efforts to comply.
Ed. note: The court notes that defendant certainly didn’t ignore the injunction. This is a pretty harsh result, all things considered.
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