United States District Court, D. Maine
(REDACTED 05/05/2017 & 12/29/2017)
AMENDED  FINDINGS OF FACT AND
CONCLUSIONS OF LAW ON PLAINITFF'S MOTION FOR
H. Rich III United States Magistrate Judge.
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.
Findings of Fact
plaintiff filed this action on May 22, 2014. The complaint
alleged, inter alia, trademark infringement and
breach of contract. ECF No. 1.
parties settled the case and incorporated the terms of the
settlement into a proposed consent judgment, which was
adopted by the court. Consent Judgment.
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.
plaintiff is the owner of the federal trademark registration
for THEAM, for conveyors mounted onto mixer trucks. Consent
Judgment ¶ 3.
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.
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
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.
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.
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,
Theam S.A. was reorganized in 2013 and its name was changed
to RotaTHEAM. Id. at 136.
plaintiff has used the THEAM brand name since 1981.
Id. at 194.
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.
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.
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.
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.
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.
one at RotaTHEAM reviewed the content of the website
(theam.com/en) before it was posted online. Transcript at 38.
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.
April 13, 2016, the plaintiff filed the motion now before the
court. ECF No. 120.
Studio Plune, which was hired by RotaTHEAM to create websites
at www.rotabelt.com and www.theam.com,
published the prohibited content on the English-language
version of RotaTHEAM's website without its knowledge or
authorization. Transcript at 23-24, 79-80.
Studio Plune was responsible for translating
www.theam.com into various languages. Id.
at 26. For the English version, Studio Plune was instructed
to take the English text from the www.rotabelt.com
website that was then under construction and to replace all
references to RotaBELT with THEAM. Id. at 32, 38.
Studio Plune reviewed the website host statistics to
determine the number of IP addresses that visited
www.theam.com/en 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.
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.
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.
Luque was unable to reproduce Exhibit 38 and does not see
THEAM photos on the RotaBELT Facebook page. Id. at
Shumaker uses a brochure, Plaintiff's Exhibit 26, that
states that RotaBELT came to the United States in 1982.
Plaintiff's Exh. 26 at . The defendants were using
this corporate history prior to the entry of the Consent
Judgment as well as after. Transcript at 330-31.
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 .
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.
English version of www.theam.com 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 .
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 theam.com website contains an image
like the ...