We have previously written about trademark cases where one party was ordered to turn over social media accounts, websites, links, etc. that included the disputed mark(s). But what happens if the defendant doesn’t turn them over but instead destroys them?
This case began when a former member of Left Coast Wrestling (LCW) started using the phrase “Battle on the Midway” to promote a wrestling tournament. The defendant created social media accounts and pages using the term, as well as a website, tournament registration databases, and cross-links and search terms. (According to LCW, when a user attempted to visit LCW’s site, battleonthemidway[dot]com, the user was redirected to the defendant’s site ultimatesummerseries[dot]com.) LCW had originally paid a consultant $4,000 to create its social media accounts.
LCW filed a lawsuit in federal court, alleging claims under the federal Lanham Act (false designation of origin) as well as violations of California state law. The defendant, only periodically represented by counsel, was eventually subject to a default judgment. The default judgment included the following requirements related to social media:
Defendants shall immediately return to Plaintiff by facilitating the transfer of the rights with the host company or otherwise, any and all media related to intellectual property of Plaintiff . . .
Defendants shall immediate cease, desist and disable any cross links from the Battle on the Midway website or search terms to Defendants’ website or social media portals and locations.
When the defendant did not turn over the social media accounts, LCW filed a motion with the court to have the defendant held in civil contempt. LCW had to show by “clear and convincing evidence” that the defendant violated a “specific and definite order of the court.” The matter was referred to a magistrate, who issued a report on August 1, 2019. (Left Coast Wrestling, LLC v. Dearborn Int’l LLC, Civ. No. 3:17-cv-00466-LAB-NLS (S.D. Cal. Aug. 1, 2019) (2019 WL 3493992).)
According to the magistrate’s report, LCW “offered evidence that not only were transfers of social media accounts never facilitated, but some accounts have since been destroyed.” The magistrate found that “deletion is not compliant” and that “there is clear and convincing evidence that Mr. Le did not comply” with the court order.
The burden then shifted to the defendant, who was proceeding pro se at this point. The defendant offered inconsistent testimony regarding ownership of the social media accounts and whether he owned or controlled the companies listed as owners of the accounts. Among other things, the magistrate found that the defendant owned the website at issue and had paid for its registration through April 1, 2021.
With respect to the cross-links, the magistrate found that the defendant waited two months before taking any action. Because the court order required “immediate” action, the magistrate found “clear and convincing evidence” that the defendant was in civil contempt of the court order.
As a result, the magistrate recommended that the defendant pay ten times the amount that LCW paid for its social media accounts: 10 x $4,000 = $40,000, plus full costs and attorneys’ fees.