eDiscovery Daily Blog

• September 9, 2011

A New Jersey court ordered the defendant to re-post a photograph displaying infringing trade dress to his Facebook profile for a brief period of time to allow the plaintiff to print copies, in a case involving trademark infringement.

In Katiroll Co., Inc. v. Kati Roll & Platters, Inc., No. 10-3620 (GEB), 2011 WL 3583408 (D.N.J. Aug. 3, 2011), the plaintiff argued for sanctions after the defendant pulled down infringing materials from his Facebook page and altered his Facebook profile photo, removing a profile picture that included the distinctive trade dress at issue in this case. The court ultimately decided against sanctions, but did order the defendant to re-post the photo in question, as follows.

• The court first set out to establish whether or not the defendant’s actions could be considered as spoliation, citing the standard of review for the four criteria in spoliation. The four criteria include the party’s control over the evidence, apparent suppression or withholding of evidence, relevance of the destroyed evidence, and that it be “reasonably foreseeable” that the evidence would be required for discovery at a current or later date.
• The altered profile photograph was deemed by the court to be relevant, and under the control of the defendant. However, whether that evidence was suppressed or withheld, and whether it was foreseeable that it would be required as part of discovery, remained at issue.
• The plaintiff argued that the defendant should be sanctioned for failing “to preserve his Facebook pages in their original state” and “wanted PDFs of these pages prior to their being taken down”, but the court maintained that because these infringing pages had been removed at the plaintiff’s earlier request, it “would be unjust” to sanction the defendant for those actions.
• The court also noted that Facebook profile photos are changed as often as weekly by those who use the site regularly, and that the defendant could not have known that changing his photo would have been an issue. “It would not have been immediately clear that changing his profile picture would undermine discoverable evidence,” the court maintained.
• As result, the court declined to order sanctions against the defendant. Instead, the defendant was ordered to re-post the Facebook profile photo in question “for a brief time,” including the trade dress at issue (as they “ha[d] not been destroyed” and were “attached in several PDFs” to the court), so that the plaintiff might print whatever photos and Facebook pages it wishes. Afterward, the defendant was told to replace the photo again with a non-infringing image.

So, what do you think? Was the court’s decision fair, or should the defendant have been sanctioned for spoliation? Please share any comments you might have or if you’d like to know more about a particular topic.