Cancer Research Institute, Inc. v. Cancer Research Society, Inc.

Cancer Research Institute, Inc. (CRI) (plaintiff) sought and obtained a court injunction stopping Cancer Research Society, Inc. (CRS) (defendant) from using “Cancer Research Society” or any other name that was confusingly similar to CRI’s name. The injunction entered on April 29, 1988, required CRS, before June 1, 1988, to notify telephone-directory publishers to cancel listings of “Cancer Research Society” in the directories. Further, CRS was permanently enjoined from listing or advertising itself as “Cancer Research Society” in any telephone directory. In issuing the injunction, the court found that listings of “Cancer Research Society” caused a substantial diminution in contributions to CRI in 1987 and 1988 due to public confusion over the entities. CRS proceeded to engage an advertising agency, AAM, to assist in compliance with the court’s injunction. CRS assumed that AAM would take necessary actions to comply with the injunction but failed to actively monitor AAM’s activities. AAM sent out a “form” cancellation to 150 directory publishers but sent a majority of the notices months after the injunction’s specified date of June 1, 1998. In at least 66 cases, there continued to be an improper telephone listing of CRS due to untimely notices. A formal cancellation order was not sent to another 33 directories. In 1999, CRI sought an order adjudging CRS in civil contempt for violating the court’s injunction. CRI requested compensation for CRS’s civil contempt and an award of attorney’s fees. CRI did not produce proof of actual losses from CRS’s civil contempt, and CRS argued that CRI’s inability to prove actual loss precluded a compensatory sanction.