Waterkeeper Alliance, Inc. v. Spirit of Utah Wilderness, Inc.

Background

Waterkeeper Alliance sued Spirit of Utah Wilderness, Inc., doing business as Great Salt Lakekeeper or Great Salt Lake Water Keepers, and its officers over alleged trademark infringement, unfair competition, and related New York State claims. Waterkeeper licensed its “Waterkeeper” marks, including “Lakekeeper,” to member organizations. Spirit of Utah Wilderness had previously received a conditional license to use the name “Great Salt Lakekeeper,” but Waterkeeper later revoked that license and the organization’s membership, as well as Jeffrey Salt’s permission to use the marks.

In a May 8, 2015 default judgment and order, the court found that Salt had infringed Waterkeeper’s marks. The order barred Spirit of Utah Wilderness, its officers, and Salt from using the marks; referring to Salt as the Great Salt Lakekeeper or a similar title; and using websites, email addresses, or other electronic services containing the marks.

Earlier Contempt Proceedings

The court later found the defendants in contempt in an October 2, 2017 order. That order required them to comply with the earlier judgment, provide a detailed list of their post-May 8, 2015 uses of the marks, and pay specified fines. The court suspended those fines on the condition that Salt comply by November 2, 2017.

In an April 5, 2019 order, after an evidentiary hearing, the court again found by clear and convincing evidence that Spirit of Utah Wilderness, its officers, and Salt had violated the earlier orders. The evidence included public references to Salt as the “Great Salt Lakekeeper” or “Lakekeeper,” use of the email address “jeffsalt@greatsaltlakekeeper.org,” maintenance of the website “greatsaltlakekeeper.org,” failure to provide the required list of trademark uses, and failure to pay the required fines.

Current Motion and Analysis

Waterkeeper filed a third motion seeking additional contempt findings and imprisonment of Salt. Waterkeeper submitted evidence that Spirit of Utah Wilderness’s corporate registration listed “Great Salt Lakekeeper” and similar names as business names, and that Salt’s LinkedIn page identified him as “Jeff Salt owner, Comics Aeroplane, Great Salt Lakekeeper.”

The court explained that civil contempt is used to enforce compliance with court orders and compensate victims for harm caused by violations. A party may be held in civil contempt when the order is clear and unambiguous, noncompliance is proven by clear and convincing evidence, and the party has not made a diligent effort to comply reasonably. The court found that all three requirements were met for its three prior orders. It also found that monetary sanctions had not persuaded or coerced the defendants to comply.

Ruling

Judge Nelson S. Roman granted Waterkeeper’s motion to hold Spirit of Utah Wilderness, its officers, and Jeffrey Salt in contempt and for an order of imprisonment. The court found by clear and convincing evidence that they had violated the May 8, 2015 default judgment and order, the October 2, 2017 contempt order, and the April 5, 2019 second contempt order.

The court ordered Salt, as an officer and principal of Spirit of Utah Wilderness, to surrender to the United States Marshal for the Southern District of New York on March 23, 2020, at 2:00 p.m., for incarceration until the contempt was purged. The defendants could avoid that incarceration before the deadline by making necessary changes to publications, websites, LinkedIn pages, and corporate filings; fully complying with the 2015 order; providing the required list of trademark uses; and paying the required $500 fine, daily noncompliance fines, and $700 fines for specified violations.