OPINION & ORDER This case was brought in March 2017 by the owners of copyrights and trademarks associated with the late singer and songwriter Jimi Hendrix, claiming acts of infringement by various corporate and individual defendants, including Hendrix’s brother Leon Hendrix. Dkt. 1. Plaintiff Experience Hendrix, LLC owns the musical compositions and sound recordings of Jimi Hendrix, and is the assignee, and exclusive owner, of the copyright and trademark rights previously owned by Jimi Hendrix. See Dkt. 456 at 5. Plaintiff Authentic Hendrix LLC is the licensing arm of Experience. Id. After contentious litigation, the Court issued a series of opinions, orders, and permanent injunctions with respect to plaintiffs’ rights over these trademarks and copyrights, which bound, inter alia, defendants Leon Hendrix, Leon Hendrix’s business partner Andrew Pitsicalis, and related corporate entities, Dkts. 366, 370. On August 6, 2020, the Court closed this case. Dkt. 466. Plaintiffs now move for civil contempt against Leon Hendrix and two non-parties to the original Complaint: Leon Hendrix’s daughter Tina Hendrix and Hendrix Music Academy (“HMA”). Plaintiffs contend that they have violated the Court’s permanent injunctions. Dkt. 468 (“Pl. Mot.”). For the following reasons, the Court finds all three in contempt, orders them to comply with the injunctions, and awards plaintiffs monetary relief for the violations the Court has found. I. Background The Court assumes familiarity with the background and procedural history of this case and summarizes here only the information necessary to explain the instant rulings. A. The Underlying Litigation In 2017, plaintiffs sued Leon Hendrix, Andrew Pitsicalis, and related corporate entities for, inter alia, trademark infringement, 15 U.S.C. §1114; false designation of origin, 15 U.S.C. §1125(a); trademark dilution, 15 U.S.C. §1125(c); infringement of common law trademark rights; copyright infringement, 17 U.S.C. §501; contributory infringement; vicarious infringement; deceptive acts, N.Y. Gen. Bus. Law §349; false advertising, New York Gen. Bus. Law §350; and unjust enrichment. Dkt. 115 (Third Amended Complaint, “TAC”)
108-240. On October 25, 2019, the Court entered a permanent injunction for plaintiffs against Pitsicalis’s and Leon Hendrix’s corporate entities. Dkt. 370. On December 9, 2019, the Court issued an order imposing terminating sanctions against Leon Hendrix for serial misconduct, including discovery abuses. Dkt. 398. On December 10, 2019, the Court entered a default judgment as to liability against Leon Hendrix, Dkt. 402, and a week later, against various other defendants. Dkt. 415. The Court referred the case to the Hon. Gabriel W. Gorenstein, United States Magistrate Judge, for a damages inquest. Dkts. 418, 432. On July 1, 2020, Judge Gorenstein found that plaintiffs were entitled to injunctive relief as well as damages from the defaulting defendants, including Leon Hendrix, for their trademark and copyright infringement. See Dkt. 456 (“Report”) at 5, 28. Judge Gorenstein detailed the range of violations of the plaintiffs’ intellectual property rights that had been established, and which collectively demonstrated a brazen disregard of those rights. Judge Gorenstein noted that Leon Hendrix and Andrew Pitsicalis had worked together to create “the illusion of an empire of ‘authentic’ Jimi Hendrix goods which include[d] cannabis, edibles, food, wine, alcohol, ‘medicines,’ and electronic products” that infringed on plaintiffs’ trademarks and copyrights. Id. at 13. Among other acts of blatant infringement, Judge Gorenstein noted that the defendants had registered multiple domain names that infringed on plaintiffs’ federally registered and incontestable trademarks; these included “jimifoods.com,” “jimiwines.com,” and “jimiteas.com.” Id. at 9-10. “Pepper Palace,” a licensee of Leon Hendrix, willfully infringed on plaintiffs’ copyrighted “Axis: Bold as Love” album artwork by placing it on boxes for sale of “Jimi Hendrix Hot Sauce Gift Pack.” Id. at 18. Another corporate entity associated with Leon Hendrix “developed, marketed, and sold a line of cannabis-infused skin care products and beverages that infringed upon the Hendrix Marks.” Id. at 10 (quotations omitted). From just one licensing agreement with Tiger Paw Distributers LLC, Leon Hendrix received around $30,000 for infringing Hendrix-branded alcoholic beverages. Id. at 13. On July 24, 2020, this Court adopted Judge Gorenstein’s recommendations in their entirety, including awarding a judgment of $402,018.53 against Leon Hendrix. Dkt. 458. The same day, this Court issued a permanent injunction in favor of Experience Hendrix, LLC and Authentic Hendrix, LLC, and against “Leon Hendrix, his corporate entities,…partners,…affiliates, and those who receive actual notice or knowledge of th[e] injunction,” protecting their copyrights and trademarks against infringement. Dkt. 461 (“Leon Hendrix Permanent Injunction” or “Leon Hendrix Perm. Injun.”) at 2. B. This Motion On October 19, 2020, plaintiffs filed a motion for civil contempt, Pl. Mot., and a memorandum of law in support, Dkt. 469 (“Pl. Mem.”). Plaintiffs there argue that Leon Hendrix, Tina Hendrix, and HMA violated the Court’s permanent injunctions, over which the Court has retained jurisdiction for the purposes of enforcement. See Leon Hendrix Perm. Injun. 7. On October 20, 2020, the Court ordered plaintiffs to serve Leon Hendrix, Tina Hendrix, and HMA with the contempt motion, and to file proof of such service. Dkt. 471. Plaintiffs filed affidavits of service, see Dkts. 472-79, but, on November 12, 2020, the Court found those affidavits unpersuasive to establish legally effective service. The Court directed plaintiffs either to attempt proper service again or to explain why the service already made was legally effective. Dkt. 480. On November 20, 2020, plaintiffs filed such a letter, which in the alternative sought leave to serve Tina Hendrix and HMA by email. Dkt. 482. On November 23, 2020, the Court found that Leon Hendrix had been properly served with the contempt motion, and authorized plaintiffs to serve Tina Hendrix and HMA by email. Dkt. 483 (“Order of Service”). Plaintiffs then effected service via email on Tina Hendrix and HMA. Dkts. 484-85. On December 7, 2020, Tina Hendrix, on behalf of herself and HMA, filed an answer, pro se, to the motion. Dkt. 490 (“Answer”). Leon Hendrix has not appeared in response to the motion. On December 14, 2020, plaintiffs filed a reply to Tina Hendrix’s answer. Dkt. 491 (“Pl. Reply”). II. Discussion Federal courts have inherent authority to enforce compliance with their orders and to punish for contempt any person who violates its orders. See 18 U.S.C. §401(3). “Civil contempt sanctions may serve either or both of two purposes: They may be coercive, to secure compliance with court orders, or they may be compensatory, to make whole the party who has been wronged.” Al Hirschfeld Found. v. Margo Feiden Galleries Ltd., 438 F. Supp. 3d 203, 207 (S.D.N.Y. 2020); see also EEOC v. Local 638, Local 28 of Sheet Metal Workers’ Int’l Ass’n, 753 F.2d 1172, 1183 (2d Cir. 1985) (contempt sanctions serve “to coerce future compliance and to remedy past noncompliance”). Civil contempt differs from criminal contempt in that criminal sanctions are punitive in nature, while civil sanctions are not. See Paramedics Electromedicina Comercial, Ltda. v. GE Med. Sys. Info. Tech., Inc., 369 F.3d 645, 657 (2d Cir. 2004) (“Criminal contempt is typically imposed to punish the violation and vindicate the court’s authority.” (quotations omitted)). The compensatory goal of civil contempt sanctions is “met by awarding to the plaintiff any proven damages.” Weitzman v. Stein, 98 F.3d 717, 719 (2d Cir. 1996); see also id. at 720 (“It is error to withhold damages that are supported by the record.”). That is because the purpose of compensatory sanctions is “to make reparation to the injured party and restore the parties to the position they would have held had the injunction been obeyed.” Medina v. Buther, No. 15 Civ. 1955 (LAP), 2019 WL 581270, at *26 (S.D.N.Y. Feb. 13, 2019) (quotations omitted). In considering plaintiffs’ claims of contempt-worthy conduct here, the Court has reviewed the entire record of this case, which discloses a regrettable history of Leon Hendrix’s noncompliance with discovery and other orders. In addition, because Leon Hendrix has not filed an opposition or otherwise appeared, he is in default as to the instant motion. HMA is also in default because, although Tina Hendrix, appearing pro se, has filed an answer purportedly on behalf of HMA, Tina Hendrix, as a non-lawyer, cannot represent a corporation, and no counsel has entered a notice of appearance on behalf of HMA. See Lattanzio v. COMTA, 481 F.3d 137, 139 (2d Cir. 2007) (“[A] layperson may not represent a separate legal entity such as a corporation.”); Waterkeeper All. Inc. v. Spirit of Utah Wilderness, Inc., No. 10 Civ. 1136 (NSR), 2017 WL 4386376, at *2 (S.D.N.Y. Oct. 2, 2017), aff’d sub nom. Waterkeeper All., Inc. v. Salt, 829 F. App’x 541 (2d Cir. 2020) (summary order) (same in the context of a civil contempt motion). The Court nonetheless has considered, on the merits, the sanctions application sought against the two defaulting parties, as well as against Tina Hendrix, who is not in default. Because HMA and Tina Hendrix were not parties to the original lawsuit, the Court’s analysis begins by determining whether the Leon Hendrix Permanent Injunction applies to them. The Court then evaluates whether a contempt sanction is merited for each of Leon Hendrix, HMA, and Tina Hendrix, and then considers the appropriate remedy. A. Nonparties An order or injunction may bind a party’s “officers, agents, servants, employees, and attorneys; and…other persons who are in active concert or participation with [them]” who receive “ actual notice of [the order].” Fed R. Civ. P. 65(d)(2). “[C]onsequently, such non-parties may, under certain circumstances, also be found in contempt for violating such an order.” In re Soundview Elite, Ltd., No. 15 Civ. 5666 (KPF), 2016 WL 1178778, at *8 (S.D.N.Y. Mar. 23, 2016). On this basis, although none of the permanent injunctions that the Court has issued thus far in this case identified either HMA or Tina Hendrix by name, both are so bound. The Leon Hendrix Permanent Injunction in favor of Experience Hendrix, LLC and Authentic Hendrix, LLC broadly provided that it was entered against “Defendant Leon Hendrix, his corporate entities, successors, assignees, designees, officers, directors, employees, agents, partners, representatives, affiliates, and those who receive actual notice or knowledge of this injunction by personal service or otherwise.” Leon Hendrix Perm. Injun. at 2. As for HMA, it is registered in Washington State as a nonprofit corporation for which Leon (along with Tina) Hendrix serves as a Governor. Tina Hendrix is both an HMA Governor and its registered agent. Pl. Mem. at 9; Dkt. 470 (“Weber Decl.”), Ex. L. Washington State law defines a “Governor” as a “director of a nonprofit corporation” or “[a]ny other person under whose authority the powers of an entity are exercised and under whose direction the activities and affairs of the entity are managed pursuant to the organic law and organic rules of the entity.” Wash. Rev. Code Ann. §23.95.105(12). Tina Hendrix, with Leon Hendrix, also co-sponsored an event which plaintiffs claim breached the Leon Hendrix Permanent Injunction, giving rise to the present contempt motion. See supra p. 11; Pl. Reply at 2. As a result of these affiliations with Leon Hendrix, HMA and Tina Hendrix are covered by multiple provisions of the permanent injunction. HMA is, at a minimum, both a “corporate entity” and an “affiliate” of Leon Hendrix; and Tina Hendrix is, at a minimum, a “director,” “officer” and “agent” of HMA, and an “affiliate” of Leon Hendrix’s. See John Wiley & Sons, Inc. v. Book Dog Books, LLC, 327 F. Supp. 3d 606, 638 (S.D.N.Y. 2018) (“[A]ctive concert” has been found “where an enjoined party is substantially intertwined with a non-party.”). Both Tina Hendrix and HMA also received actual notice of the Injunction, as required by Federal Rule of Civil Procedure 65(d)(2). See Order of Service at 2. On August 25, 2020, plaintiffs sent a cease and desist letter to Tina Hendrix at her email address, [email protected] (“Yahoo email address”), and to her listed address in Washington State, which is also the listed address of HMA. Weber Decl., Ex. O; Pl. Reply at 8. The Court later granted plaintiffs leave to effectuate alternative service via that same Yahoo email address after finding that “it is substantially reasonable to assume that emails sent to that address will reach” Tina Hendrix and HMA. Order of Service at 4; see also Great Am. Ins. Co. v. JMR Constr. Corp., No. 15 Civ. 2226 (JCM), 2016 WL 3951409, at *2 (D. Nev. July 21, 2016) (finding that defendants received “actual notice via email”). Accordingly, the Court finds that Tina Hendrix and HMA had actual notice of the injunction at least since the beginning of September 2020. To be sure, Tina Hendrix claims that she did not receive plaintiffs’ cease and desist letter until she “was served with this lawsuit at the end of November, 2020.” Answer 6. The Court does not find that contention credible. In seeking leave to effect service by email, plaintiffs had supplied the Court with convincing evidence that Tina Hendrix was using the email address at issue. See Dkt. 482 at 8. And Tina Hendrix’s conduct confirms her active use of that email, including in connection with plaintiffs’ communications. For example, on November 11, 2020, plaintiffs sent the Court courtesy copies of the papers related to their motion via email, which included a copy of the cease and desist letter, and copied Tina Hendrix at her Yahoo email address. A few hours later, Tina Hendrix emailed the Court in reply to that email. Her response demonstrated that she had received a copy of the cease and desist letter well before she “was served with this lawsuit at the end of November, 2020.”1 B. Civil Contempt A court may hold a party in civil contempt for failure to comply with an order if “(1) the order the party failed to comply with is clear and unambiguous, (2) the proof of noncompliance is clear and convincing, and (3) the party has not diligently attempted to comply in a reasonable manner.” CBS Broad. Inc. v. FilmOn.com, Inc., 814 F.3d 91, 98 (2d Cir. 2016). For contempt sanctions to be imposed, “[i]t need not be established that the violation was willful.” Paramedics Electromedicina Comercial, 369 F.3d at 655. Plaintiffs here argue, persuasively, that Leon Hendrix, Tina Hendrix, and HMA’s conduct meets these standards. 1. Clear and Unambiguous Injunction Relevant here, the injunction instated against Leon Hendrix and affiliates forbids the use of “the name ‘Jimi Hendrix,’ the name ‘Jimi,’ the name ‘Hendrix,’ in any configuration…; any Hendrix registered or pending trademarks…; or any image, likeness or signature of Jimi Hendrix…in any manner, including but not limited to the sale, naming, identifying, offering for sale, marketing, labeling, packaging, promotion, distribution or advertising of any product or service, or in connection with any goods and services.” Leon Hendrix Perm. Injun. 1. It enjoins the use of “the trademarked Jimi Hendrix signature.” Id. 2. It prohibits assistance in “the preparation of any interviews, books, articles, television or motion picture productions or other creation…concerning or relating to Jimi Hendrix…or causing any third party to engage in any other activities constituting trademark infringement.” Id.
