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Westcon MFG Inc. v. RotaTHEAM SAS

United States District Court, D. Maine

December 29, 2017

WESTCON MFG., INC., d/b/a THEAM USA, Plaintiff,

          (REDACTED 05/05/2017 & 12/29/2017)


          John H. Rich III United States Magistrate Judge.

         The plaintiff, Westcon Manufacturing, Inc., has moved to enforce the consent judgment entered in this case on October 21, 2016 (“Consent Judgment”) (ECF No. 117), and for a finding of contempt and assessment of sanctions. Plaintiff THEAM USA's Motion to Enforce Consent Judgment and for Civil Contempt and Sanctions (“Motion”) (ECF No. 120). An evidentiary hearing was held on September 27 and 28, 2016, at which seven witnesses testified and 35 exhibits were admitted. The parties have submitted their proposed findings of fact and conclusions of law (ECF Nos. 164, 166). I now make the following findings of fact and conclusions of law.

         I. Findings of Fact

         1. The plaintiff filed this action on May 22, 2014. The complaint alleged, inter alia, trademark infringement and breach of contract. ECF No. 1.

         2. The parties settled the case and incorporated the terms of the settlement into a proposed consent judgment, which was adopted by the court. Consent Judgment.

         3. The plaintiff is a Maine-based manufacturer and distributor of conveyors mounted onto mixer trucks and related products and services. Transcript (ECF Nos. 160-61) at 314-16.

         4. The plaintiff is the owner of the federal trademark registration for THEAM, for conveyors mounted onto mixer trucks. Consent Judgment ¶ 3.

         5. Defendant RotaTHEAM is a French company that sells conveyors for use on mixer trucks, mostly in Europe. Plaintiff's Exh. 15 ¶ 1; Transcript at 316.

         6. Defendant Shumaker is the United States distributor of mixer mounted conveyors and related products sold by RotaTHEAM in the United States under the brand RotaBELT. Transcript at 120, 156.

         7. In 1981, Jean Garrec formed Concrete Placement Systems (CPS) in the United States. Id. at 229-33, 405-06. After CPS's formation, possibly in 1982, Luc Thenaud, the son of Rene Thenaud, one of the men who developed the mixer-mounted conveyor in France, became a partner in CPS. Id.

         8. Rene Thenaud gave Jean Garrec and his wife, Lolly Garrec, two conveyors and money to bring THEAM conveyors to the United States from France. Id. at 229-32.

         9. Thenaud S.A., a small business in Jean Garrec's hometown in France, was purchased by Mr. Levesque in 2000. He changed the name of the company to Theam S.A. Id. at 217-18, 229.

         10. Theam S.A. was reorganized in 2013 and its name was changed to RotaTHEAM. Id. at 136.

         11. The plaintiff has used the THEAM brand name since 1981. Id. at 194.

         12. RotaTHEAM's predecessors, Thenaud S.A. and Theam S.A., sold THEAM-branded conveyor parts made in France to the plaintiff for use in the plaintiff's conveyors from 1981 to 2012. Id. at 261-63. Around 1985, the plaintiff began making parts for THEAM conveyors in the United States, in addition to importing them from RotaTHEAM's predecessor, Thenaud S.A., in France. Id. at 406-07.

         13. RotaTHEAM began doing business with defendant Shumaker in 2012. Id. at 337. This gave rise to the litigation that resulted in the Consent Judgment. Consent Judgment.

         14. The Consent Judgment provides that the defendants will cease all use of the term THEAM in the United States, including use of the name RotaTHEAM, rebrand to a different mark (RotaBELT), and educate their employees on the terms of the settlement. Id. ¶¶ 4-5.

         15. After the Consent Judgment was entered, the plaintiff identified some examples of marketing material that it believed violated the Consent Judgment. It notified the defendants, who promptly changed them without issue. Transcript at 351-52.

         16. On April 7, 2016, the plaintiff discovered English webpages on RotaTHEAM's website that improperly contained references to RotaBELT and Shumaker, including videos featuring RotaBELT conveyors, photographs of RotaBELT conveyors, and text that commingled RotaBELT and THEAM. Id. at 94, 311-12; Plaintiff's Exh. 7.

         17. No one at RotaTHEAM reviewed the content of the website ( before it was posted online. Transcript at 38.

         18. On April 12, 2016, the defendants discovered the improper references and took down the website less than an hour after the discovery. Id. at 184. Mark Knutson of Shumaker first discovered the offending content and notified RotaTHEAM immediately. Id. at 355-56.

         19. On April 13, 2016, the plaintiff filed the motion now before the court. ECF No. 120.

         20. Studio Plune, which was hired by RotaTHEAM to create websites at and, published the prohibited content on the English-language version of RotaTHEAM's website without its knowledge or authorization. Transcript at 23-24, 79-80.

         21. Studio Plune was responsible for translating into various languages. Id. at 26. For the English version, Studio Plune was instructed to take the English text from the website that was then under construction and to replace all references to RotaBELT with THEAM. Id. at 32, 38.

         22. Studio Plune reviewed the website host statistics to determine the number of IP addresses that visited between April 1 and April 12, 2016. Id. at 48-52. After eliminating IP addresses associated with Studio Plune and RotaTHEAM, Studio Plune determined that six additional, unknown IP addresses visited the www.theam.con/en website between April 1 and April 12, 2016. Id.

         23. Studio Plune cannot identify those six IP addresses. Id. at 52, 54. At least two of them belonged to the plaintiff or its attorneys. Id. at 310-13.

         24. The plaintiff's attorney printed some photographs from RotaTHEAM's Facebook page. Plaintiff's Exh. 38. Vanessa Luque, the person responsible for loading content and uploading the photographs on the RotaTHEAM, Theam (France), and RotaBELT Facebook pages, could not explain why THEAM photos appeared on the RotaBELT Facebook page or why photos of RotaBELT conveyors appeared on the THEAM Facebook page. Transcript at 168-74, 176-77.

         25. Luque was unable to reproduce Exhibit 38 and does not see THEAM photos on the RotaBELT Facebook page. Id. at 171, 174.

         26. Shumaker uses a brochure, Plaintiff's Exhibit 26, that states that RotaBELT came to the United States in 1982. Plaintiff's Exh. 26 at [4]. The defendants were using this corporate history prior to the entry of the Consent Judgment as well as after. Transcript at 330-31.

         27. Page 1 of Plaintiff's Exhibit 10 is the RotaBELT history that appears on the Shumaker website. Id. at 368-69; Plaintiff's Exh. 10 at [1].

         28. The Consent Judgment permits Shumaker to use the term “THEAM” solely to inform customers that it repairs and sells replacement parts intended for THEAM conveyors in the United States, subject, inter alia, to a disclaimer that Shumaker and/or RotaTHEAM “is not an authorized distributor of genuine THEAM replacement parts” and that “THEAM is a registered trademark of Westcon Mfg., Inc. d/b/a Theam USA.” Consent Judgment, ¶ 4(g) (emphasis omitted). Shumaker's compliance instructions to its employees do not say that the disclaimer is required when advising customers about whether Shumaker may supply OEM replacement parts for THEAM conveyors in the United States. Defendants' Exh. 9.

         29. The English version of contains a disclaimer that Theam France's conveyors are not available in the United States, but it is in French. Plaintiff's Exh. 11 at [2].

         30. THEAM USA created what it calls the “Lee Mascot” as part of a safety campaign for CPS in 1983. Transcript at 197-98. A page of the website contains an image like the ...

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