the fact that DW recognized that an injunction would conflict with its right to use its corporate
name in an unfettered manner.

In response, DW argues that it is using the corporate name as a “trade name,” not a
trademark, and hence it is not subject to my Injunction because its “trade name” is not a
“colorable imitation” of the WURLITZER trademarks. Whereas a “trademark” is “any word,
name symbol or device or any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them from those manufactured and sold by
others,” a “trade name” is “any name used by a person to identify his or her business or
vocation.” 15 U.S.C. § 1127. While trade names and trademarks are distinct concepts, “[i]t is
well settled that, in appropriate circumstances, a name may function as both a trade name and as
a trademark and/or a service mark. The question of whether a name used as a trade name or as a
part thereof also performs the function of a trademark and/or service mark is one of fact and is
determined from the manner in which the name is used and the probable impact thereof upon
purchasers and prospective customers.” Jn re Univar Corp., 20 U.S.P.Q.2d 1865, 1866
(C.C.P.A. 1991).

By affixing its corporate name as a stand-alone “logo” to vending machines and
jukeboxes, and using it prominently in advertising (separate and apart from its address, telephone
number or other contact information), DW is using its corporate name to function as a trademark,
ie, to identify its goods and distinguish them from those manufactured and sold by others. See
id, at 1869 (use of corporate name in logo set apart from other text in advertisements is indicative
of trademark usage). In light of the long past history of DW’s use of the WURLITZER

trademarks, the natural and probable effect on consumers of such usage is to cause them to



A party that has been found to have infringed a trademark must “keep a safe distance
from the margin line between compliance with the order and a violation.” World’s Finest
Chocolate, Inc. v. World Candies, Inc., 409 F. Supp. 840, 844 (N.D. Ill. 1976); see also Scandia
Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1432 (7th Cir. 1985) (“A district court possesses
substantial discretion to decide how close is too close, once an infringer has committed a
contempt of the original injunction. The court may require the contemnor to choose a
distinctively different mark rather than to hew so close to the line that the parties must
interminably return to court to haggle about every mark.”). Here, by featuring its corporate
name, which includes the term “Wurlitzer,” on its products and advertisements, DW has violated
the Injunction. I specifically addressed the circumstances under which DW could use its
corporate name when I issued the Injunction, explaining that DW would still have the right to
“refer to itself as ‘Deutsche Wurlitzer GmbH,” but would not be permitted “to use the
WURLITZER Registered Trademarks,” or “‘colorable imitations’ thereof, on goods or services
in commerce.” Baldwin Piano, 2004 WL 406792, at **4-5. By prominently featuring its
corporate names on its products and in advertisements, DW has gone beyond merely referring to
itself as Deutsche Wurlitzer GmbH, and has used these marks “on goods and services in
commerce” in violation of the Injunction. This use is “likely to cause confusion” among
consumers. 15 U.S.C. § 1127 (a “colorable imitation” is “any mark which so resembles a
registered mark as to be likely to cause confusion or mistake or to deceive”); see also Bunn-O-
Matic Corp. v. Bunn Coffee Serv., 88 F. Supp. 2d. 914, 922 (C.D. Ill. 2000) (“likelihood of
confusion exists as a matter of law if a licensee continues to use marks owned by the licensor

after termination of the license”). Also, it is clear that DW’s violations are intentional in light of



believe that DW is approved, sponsored or authorized by or affiliated or otherwise connected
with the owner of the WURLITZER trademarks.”

If DW sought merely to use its name to identify its business, the references to “Deutsche
Wurlitzer, GmbH” that appear in small font at the bottom left-hand corner of the advertisements,
along with DW’s address and other contact information would have sufficed. See, e.g., Inre
Lyndale Farm, 186 F.2d 723 (C.C.P.A. 1951) (use of address in conjunction with name
strengthens inference of trade name, rather than trademark function). But DW’s use of its name
alone as a logo, featured prominently throughout the advertisements and affixed to the goods
themselves, goes far beyond merely identifying DW’s “business or vocation.” See, e.g., Inre
Walker Process Equip., 233 F.2d 329, 331 (C.C.P.A. 1956) (application of trade name to
merchandise “one of the factors to be considered in determining whether there has been a
trademark use”). Accordingly, it is clear that DW’s use of “Deutsche Wurlitzer GmbH” on
goods and services is a direct violation of the Injunction, and the issuance of an order to show

cause is warranted.

? The fact that the word “Deutsche” (meaning “German”) has been added before the
mark and the German equivalent of “Corporation” or “Inc.” appears after the mark does not
change the fact that such use is likely to cause confusion. See Victoria’s Cyber Secret v. V Secret
Catalogue, Inc., 161 F. Supp. 2d 1339, 1351 (S.D. Fla. 2001) (“it is a bedrock axiom of the
Lanham Act that the addition of generic or minor words to a trademark, especially a famous
trademark, notwithstanding the positioning of the words, does nothing to abate likely confusion
or dilutive effect”); Rockland Mortgage Corp. v. Shareholders Funding, 835 F. Supp. 182, 192 n.
18 (finding that plaintiff Rockland Mortgage Corp. was entitled to preliminary injunction
enjoining competitor from using Rockwell National Mortgage mark and noting that the word
“national” is descriptive of a geographic area, and “does not aid in distinguishing defendant’s
mark from plaintiffs mark”).


‘Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge 4 Sitting Judge if Other
|_ ° or Magistrate Judge James B. Zagel Sinan Acted Suge
CASE NUMBER 03 C 2105 DATE 6/15/2004
CASE BALDWIN PIANO vs. WURLITZER
TITLE

[in the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.]

ay)

MOTION:

DOCKET ENTRY:

qd) Q Filed motion of [ use listing in “Motion” box above.]

(2) o Brief in support of motion due

(3) o Answer brief to motion due__. Reply to answer briefdue____.

(4) QO Ruling/Hearingon____setfor_— ss at__

(5) o Status hearing[held/continued to] [set for/re-set for]on___setfor at

(6) Oo Pretrial conference[held/continued to] [set for/re-set for]on___—ssetfor_——sat_

(7) oO Trial[set for/re-set for]on_____at

(8) a [BenclyJury trial] [Hearing] held/continued to_ at

(9) QO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
QFRCP4(m) OlLocal Rule 41.1 COFRCP41(a)(1) © FRCP41(a)(2).

(0) «xf (Other docket entry] _ Plaintiff's motion for an order to show cause why defendant should not be

held in contempt is granted. Enter memorandum opinion and order.

| [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required .
number of notices.

Document
~. Number

Notices mailed by judge's staff.

JUN 17 2004

Notified counsel by telephone. dare docketed

Docketing to mail notices.

Mail AO 450 form.

fing Cepia
Copy to judge/magistrate judge

Ve

JU Nsad lifes RONG

courtroom
DW deputy’s
initials

mmaiting deputy initials



For the reasons above, Baldwin’s Motion for an Order to Show Cause Why Defendant

Should Not Be Held in Contempt is GRANTED.

ENTER:

a OB Cal

- James|B. Zagel - i)
United States Dis ug je

pate: _JUN 15 2004



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BALDWIN PIANO, INC.,
Plaintiff,
v. No. 03 C 2105
Judge James B. Zagel
DEUTSCHE WURLITZER, GMBH d/b/a
WURLITZER JUKEBOX COMPANY,

Defendant.

MEMORANDUM OPINION AND ORDER

Plaintiff Baldwin Piano, Inc. (“Baldwin”) moved for partial summary judgment, and for
the entry of a permanent injunction that would prohibit Defendant Deutsche Wurlitzer GmbH.
(“DW”) from using “any colorable imitation” of the registered WURLITZER trademarks. In
opposing Baldwin’s motion, DW specifically took issue with the “colorable imitation” language,
arguing that this limitation “was inconsistent with Deutsche Wurlitzer’s independent right to
continue using its corporate name,” relying upon paragraph 6(A) of the 1985 Purchase and Sale

Agreement. DW argued that “Baldwin’s request for a broad and unqualified injunction against,

[DW’s] use of any variant of the WURLITZER mark stands squarely at odds with [DWASRGRETER
contractually-guaranteed right to use its Wurlitzer corporate name.” JUN £7 2004

My February 17, 2004 Memorandum Opinion and Order granting Baldwin’s motion for

BBaraierer cere Die Pitan

partial summary judgment flatly rejected DW’s assertion:

DW argues that any order prohibiting it from using any “colorable imitation” of the
WURLITZER Registered Trademarks would be inconsistent with its independent right to
continue using its corporate name [pursuant to paragraph 6A of the Purchase and Sale]

. That provision simply means that DW can continue to refer to itself as “Deutsche
Wurlitzer GmbH,” but it does not permit DW to use the WURLITZER Registered

oR



Trademarks, or “colorable imitations” thereof, on goods or services in commerce after
termination of the License Agreement.

Baldwin Piano, Inc. v. Deutsche Wurlitzer GmbH, No. 03 C 2105, 2004 WL 406792, at *2 (N.D.
Ill. Feb. 17, 2004). Accordingly, the Injunction, entered on February 20, 2004, expressly
enjoined DW from, inter alia:

using any WURLITZER Registered Trademarks or any reproduction, counterfeit, copy or

colorable imitation of any WURLITZER Registered Trademarks in connection with the

sale, offering for sale, distribution, servicing or advertising of jukeboxes or any goods or
services that is likely to confuse the public into believing or create the false impression
that such goods or services are approved or sponsored or authorized by or are affiliated or
otherwise connected with Baldwin, or otherwise infringing any of the WURLITZER

Registered Trademarks.

Upon entry of the Injunction, DW launched a rebranding campaign in which it placed the
“Deutsche Wurlitzer GmbH” corporate name on its goods and in advertising.’ As a result of
these uses, Baldwin has moved for an order to show cause why DW should not be held in
contempt for its alleged willful violation of the Injunction.

The purpose of civil contempt proceedings “is to secure compliance with a prior court
order.” Rockwell Graphics Sys. v. DEV Indus., 91 F.3d 914, 920 (7th Cir. 1996). Courts have
inherent and statutory powers to punish a party that fails to comply with the terms of their orders,
and to coerce compliance with such orders. See, e.g., United States v. Dowell, 257 F.3d 694, 698

(7th Cir. 2001); 18 U.S.C. §§ 401-02. Moreover, district courts have “considerable latitude” in

enforcing their own decrees in a contempt proceeding. Rockwell Graphics, 91 F.3d at 920.

' Because there is no dispute concerning the factual circumstances alleged to constitute
the contempt, I may rule on the motion without the necessity of an evidentiary hearing. See
Local Rule 37.1(b).