Court Orders Defendant to Re-Post Facebook Profile Picture Showing Infringing Trade Dress to Allow Plaintiff an Opportunity to Print Chosen Posts

Katiroll Co., Inc. v. Kati Roll & Platters, Inc., No. 10-3620 (GEB), 2011 WL 3583408 (D.N.J. Aug. 3, 2011)

In this trademark infringement case, Plaintiff sought sanctions for defendants’ alleged spoliation of several categories of evidence, including the contents of the individual defendant’s Facebook page.  Specifically, plaintiff sought sanctions for the defendant’s failure to preserve his Facebook pages in their “original state” i.e., before they were taken down, and because he changed the Facebook profile picture (which had previously displayed the infringing trade dress at issue) without preserving the prior image.  The court held that while the spoliation was unintentional, it was nonetheless “somewhat prejudicial” and ordered the defendant to change the picture back for a brief time, to allow plaintiff to print whatever posts it found relevant.

Taking up the question of whether sanctions were warranted, the court first set forth the standard of review, including identification of four things a moving party must show to “qualify” for a spoliation inference (“the mildest sanction”):

"First, it is essential that the evidence in question be within the party’s control.  Second, it must appear that there has been actual suppression or withholding of the evidence.  Third, the evidence destroyed or withheld was relevant to claims or defenses. And fourth, it was reasonably foreseeable that the evidence would later be discoverable."   Mosaid Tech., Inc. v. Samsung Elec. Co., Ltd., 348 F.Supp.2d 332, 336 (D.N.J.2004).

Noting a split in the Third Circuit regarding the level of culpability required to support the second factor, the court identified what it concluded was the “best rule” to apply:

[T]he best rule is to use the amount of prejudice to the opposing party to help to determine the degree of fault required: Where there is substantial prejudice to the opposing party, negligence may be sufficient to warrant a spoliation inference.  Where there is minimal prejudice to the opposing party, intentional conduct is required.

Regarding the alleged spoliation, plaintiff argued that sanctions were warranted for defendant’s “failure to preserve his Facebook pages in their original state – in other words, Plaintiff wanted PDFs of these pages prior to their being taken down.”  The court noted, however, that the pages were removed because of plaintiff’s own take-down request.  Thus, sanctions for defendant’s actions “would be unjust.”

Plaintiff also sought sanctions based on defendant’s change to his profile picture which removed a picture displaying the alleged infringing trade dress at issue in this case.  As the court noted, changes to a user’s profile picture also change the picture associated with “each and every post the user has made in the past.” Defendants argued that no sanctions were warranted where the website was public, and plaintiff could have printed the website himself.  The court rejected this argument, reasoning that courts have “still found public websites to be within the control of parties who own them” and dismissing defendants’ arguments as an attempt to pass the buck:  “Given that Defendants have a discovery obligation to produce [websites] and that only Defendants knew when the website would be changed, it is more appropriate for Defendants to have that burden.”

The court then turned to the questions of culpability and prejudice (having already decided the evidence was relevant).  “As to the forseeability of the discoverability of the evidence,” the court noted that “the change of a profile picture on Facebook is a common occurrence” and that active users “often change their profile pictures weekly.”  Therefore, it was “hardly surprising that [Defendant] changed his profile picture during the pendency of this litigation.”  The court went on to point out that while the defendant was on notice of his obligation to preserve, “it would not have been immediately clear that changing his profile would undermine discoverable evidence.”  Thus, the court found the spoliation was unintentional.  Nonetheless, the court also concluded that the loss was “somewhat prejudicial.”

Accordingly, the court concluded that “a less imposing alternative” was “the best solution” and ordered the defendant to replace the picture “for a brief time so that Plaintiff may print whatever posts he thinks are relevant . . .”  Thereafter, the picture was to be immediately changed back to the non-infringing image.  Regarding the availability of the image to be reposted, the court indicated in footnote that the “photographs ha[d] not been destroyed” and were “attached in several PDFs” to the court.  Thus, the court opined, the photograph could be recovered from the PDFs (a “simple process”).

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