and Daniel B. Binstock

A version of this article was published in IP Worldwide, March 2001

Many trademark cases end with an injunction ordering the defendant to stop infringing the plaintiff's mark. Though many cases concluded long before the Internet came along, their injunctions remain very much alive. Now, defendants must decide to what extent, if any, those injunctions apply to Internet activity. Plaintiffs, meanwhile, must roam the Internet to find trademark uses violating injunctions won long ago.

Modern-day litigants face similar dilemmas. When drafting a proposed injunction, plaintiffs must anticipate how their trademarks might appear on the Internet and how technology might change to turn defendant's use of the mark into one outside the injunction. And after the injunction is entered, defendants must understand its scope and the types of online behaviors that might violate it.

A spate of cases have addressed the issues arising from Internet uses of trademarks protected by injunctions antedating the Internet. The most recent show the care a plaintiff must use in crafting a modern-day injunction and the care a defendant must use to comply.

Silence and Websites Abroad

If a pre-Internet injunction fails to mention the Internet, the defendant does not get a green light to use an infringing mark on the Internet. And just because a website originates in some other country, a defendant still risks contempt for violating a U.S. injunction. In Playboy v. Chuckleberry,1 plaintiff obtained an order in 1981 permanently enjoining defendant from using the mark PLAYMEN in the U.S. in connection with its Italian-based "male sophisticate" magazine of the same name. In January 1996, plaintiff learned that defendant was advertising its PLAYMEN magazine and associated merchandise on an Italian-based website ("www.playmen.it"), hosted on an Italian web server. Internet users around the world could access electronic versions of the PLAYMEN magazine by contacting defendant and obtaining a user name and password.

The court held defendant in contempt. According to the court, defendant distributed or sold the PLAYMEN magazine in the U.S. when it established an Internet site using the infringing PLAYMEN mark. The court rejected defendant's argument that the 1981 injunction was not "clear and unambiguous" because it did not contemplate uses on the Internet. In fact, said the court, although this type of online use was unlikely foreseeable in 1981, the injunction could still apply to mediums and technologies not explicitly mentioned. Allowing otherwise would permit defendants to "emasculate the [i]njunction." Further, the court pointed out, defendant actually violated the injunction because the site did more than just provide access—it actively invited users to download pictures. This interaction constituted a distribution. And by accepting faxed subscription requests from U.S. customers and then e-mailing passwords to them, defendant’s distribution took place in the U.S.

Blazing a trail other courts would follow, the court declared that "cyberspace is not a ‘safe haven’ from which [defendant] may flout the Court’s injunction."2

That same court later reinforced Chuckleberry in Gianni Versace S.p.A. v. Alfredo Versace.3 Here, an earlier preliminarily injunction enjoined defendant from using or authorizing the use of any of plaintiff’s VERSACE trademarks in the U.S. After entry of that order, defendant used or authorized others to use the ALFREDO VERSACE trademark on Internet websites originating in foreign countries but accessible from the U.S. Relying on Chuckleberry, the court found contempt, reasoning that the injunction’s failure to refer to the Internet did not limit its applicability to the Internet.

Enabling or Disabling Websites Abroad

When drafting proposed orders concerning websites in other countries, a plaintiff must consider the issue of whether the court will permit the foreign site to continue operations and, if so, what steps should be taken to prevent access to it by visitors from the U.S.4

In Jeri-Jo Knitwear, Inc. v. Club Italia, Inc.,5 an earlier judgment enjoined defendant from "advertising or promoting" in the U.S. apparel bearing plaintiff’s ENERGIE trademark. Defendants, however, owned the rights to the ENERGIE mark for apparel in Italy and other countries. Plaintiffs filed a motion for contempt, arguing that defendants promoted ENERGIE apparel in the U.S. through its "energie.it", "misssixty.com", and "sixty.net" websites. The "energie.it" site displayed defendants' ENERGIE apparel. Although the "misssixty.com" and "sixty.net" sites did not feature ENERGIE apparel, both contained a link labeled "ENERGIE" to the Italy-based "energie.it" site. According to the plaintiffs, defendant was not reasonably diligent in complying with the court's injunction and could have (1) moved the "misssixty.com" and "sixty.net" sites to ".it" top-level domains, which U.S. users are not accustomed to; (2) removed the links to the "energie.it" site on the "misssixty.com" and "sixty.net" sites; and (3) restricted access to the "energie.it" site by requiring a password unavailable to Internet users in the U.S.

According to the court, although defendants could be viewed as "advertising" in the U.S., this conduct did not rise to the level of "contempt," particularly in light of defendants' rights to the mark outside the U.S. Although defendant was permitted to continue operating its Italian website without requiring anti-U.S. passwords, the court did require it to de-link its "energie.it" site from its U.S.-based "misssixty.com" and "sixty.net" sites.

In Chuckleberry, the court had taken a different approach. Although guilty of contempt, defendant was still permitted to operate its Italian-based website bearing the PLAYMEN mark, but only if the site barred access to U.S. customers. Defendant was ordered to explicitly indicate on its website that U.S. customers would be denied the passwords required for entry.

In contrast to its earlier decision in Chuckleberry, the court in Versace required defendant to "purge all references to the Infringing Marks throughout cyberspace . . . that do not comply with Judge Stein’s [earlier] Order . . . ,"6 which enjoined defendant from using plaintiff’s marks "in the United States of America."7 Arguably, because every unrestricted website is accessible from the United States, this decision could be read as preventing defendant from using the infringing marks on any website in the world, even if the website visitors hailed from outside the U.S.8 To justify this sweeping order, the court noted that unlike Chuckleberry, defendant here offered no evidence of a feasible way to exclude only U.S. visitors. Thus, defendant was ordered to purge all online references to the infringing marks.

The Versace decision leaves open the question of whether the foreign websites would have been permitted to continue operating if the defendant had suggested a feasible way to limit access to U.S. customers. Perhaps mandatory subscriptions and passwords excluding U.S. customers, as was done in the Chuckleberry case, would have satisfied the need to block U.S. visitors.

In Crate & Barrel v. Crate & Barrel Ltd,9 the court held an Ireland-based defendant in contempt for failing to comply with a U.S. injunction that covered the entire Internet. Specifically, the injunction enjoined defendant from using the CRATE & BARREL mark, the "crateandbarrel-ie.com" and "crateandbarrel.ie" domain names, and any other confusingly similar marks or names in the United States and "on any website on the Internet." Because defendant continued to knowingly operate its "crateandbarrel.ie" website and use the CRATE AND BARREL trademark on that site, the court found contempt, despite defendant’s foreign residence in Ireland. Describing defendant’s behavior as "flagrant," the court imposed an ongoing $5,000.00 per day fine, and ordered the arrest of defendant’s president and others in active concert or participation with defendant who enter the United States.

De-Registering from Search Engines

So far, three cases have discussed the de-registration of websites from search engines after the website is enjoined. In the first, Nettis Environment Ltd. v. IWI, Inc.,10 the court ordered defendant to "purge its webpage of all materials which could cause a web search engine looking for 'Nettis Environmental', 'Nettis', or similar phrases to pull up [defendant’s] webpage."11 Although defendant deleted the offending meta-tags, it failed to de-register its website from 380 search engines, explaining that its computer consultant erroneously assumed the search engines would automatically update the information once the meta-tags had been removed. In the words of the court, "Not only would a reasonable person check whether the search engines had automatically been updated, but would have taken affirmative action to ‘undo' the registrations."12 Although defendant’s reliance on its computer consultant negated willfulness, its failure to ensure the cancellation of search-engine registrations was nonetheless unreasonable and constituted contempt.

Similarly, in Versace, the failure of the preliminary injunction to explicitly include the "Internet" did not excuse defendant’s obligation to remove infringing references from search engines. According to the court, the earlier order prohibiting the using, advertising, marketing, and promoting of the infringing mark imposed an affirmative duty to remove all infringing references from the search engines themselves. And "[b]ecause the search engines continued to direct users towards web sites that were in violation of [the] Order, the appearance of the ‘Alfredo Versace’ name on the search engines was itself a violation, as it constitutes ‘using, advertising, marketing, [and] promoting . . . .'"13

Taking a different approach, the court in Jeri-Jo Knitwear did not require defendant to de-register its foreign website from search engines. In light of defendant’s rights to the ENERGIE mark outside the U.S., requiring the de-registration from search engines was overly broad because de-registering does not guarantee "100% perfection."14

URLs, Hyperlinks, and the Need for Technical Clarity

Northern Light Technology, Inc. v. Northern Lights Club15 illustrates how easily the Internet and its technology can cause a court’s order later to be deemed "unclear" or "ambiguous," thus preventing a finding of contempt. During a dispute over the "northernlights.com" domain name, plaintiff filed a motion for contempt, alleging that defendant violated an earlier preliminary injunction requiring defendant to post the following three disclaimers on its website:

1. IF YOU ARE LOOKING FOR FLAIRMAIL, THE FREE E-MAIL SERVICE, FOUND AT
www.flairmail.com, click here

 2. IF YOU ARE LOOKING FOR THE NORTHERN LIGHT SEARCH ENGINE, FOUND AT
www.northernlight.com, click here

 3. IF YOU ARE LOOKING FOR BUSINESSES THAT ARE LISTED WITH THE NORTHERN
LIGHTS COMMUNITY (Not affiliated with the Northern Light search engine), click here.
16

Defendant posted these three disclaimers and properly linked the first two to the specified websites. But the third, which was supposed to link to businesses affiliated with the Northern Lights community, instead linked to a message board discussing the lawsuit. Under the court's analysis of whether this message-board link constituted contempt, defendant’s greeting page technically complied with the order because defendant copied the disclaimer verbatim. Because it was not completely "clear and unambiguous" whether the injunction covered only the actual text on the "greeting page" or whether it also included the linked-to pages, defendant’s link to the message board fell short of the First Circuit’s "clear and convincing" standard for contempt.17

This decision raises multiple issues about the drafting of injunctions involving hyperlinks. For example, if the injunction requires one site to link to another, the plaintiff should explicitly list the entire URL (e.g., www.finnegan.com) of the website to be linked to, not merely the business and/or person’s name next to the words "click here." Similarly, if the order seeks to require the defendant to link to a particular page within a site (often referred to as an "embedded page" or a "deep link"), the plaintiff should write out the full URL showing the path name of the page (e.g. www.finnegan.com/attorneys.htm).

When the injunction includes designated text to be posted on a website, as in Northern Lights, the plaintiff should ask the court to order defendant to refrain from linking to pages not explicitly spelled out in the designated text or the rest of the order. This will help to discourage enjoined parties from cleverly linking to pages of their choice and later claiming that the order was "technically" complied with because the designated text was posted verbatim.

Conclusion

The Internet offers sellers a truly global marketplace. It also offers a massive medium for trademark infringement. In infringement suits, plaintiffs seeking injunctive relief must carefully draft a suggested court order spelling out the Internet actions the defendant must take to stop the infringement. The plaintiff must also anticipate technological change, which might provide the defendant with the chance to dodge provisions of the injunction. Plaintiffs of old did not contemplate the advent of the Internet, and injunctions issued in older cases have been held to encompass Internet activity. But the modern-day plaintiff must look forward and try to ensnare all possible infringing activity within the terms of the injunction. Defendants, meanwhile, must carefully review their Internet activities to make certain the terms of any injunction are satisfied. Otherwise, contempt of court might well be on the horizon.

1. 939 F. Supp. 1032 (S.D.N.Y. 1996).
2. Id. at 1040.
3. 87 F. Supp. 2d 281 (S.D.N.Y. 2000).
4. The extraterritoriality issues involved with applying a U.S. injunction to a foreign website are not addressed in this article.
5. 94 F. Supp. 2d 457 (S.D.N.Y. 2000).
6. Versace, 87 F. Supp. at 296.
7. Id. at 285.
8. In a later decision, the district court clarified the scope of Judge Stein’s earlier order, and affirmed that it applied to defendant’s behavior both in the United States and abroad. See Gianni Versace S.p.A. v. Alfredo Versace, 2001 U.S. Dist. LEXIS 39 (S.D.N.Y. Jan. 4, 2001).
9. No. 99-C-6926 (N.D. Ill. Oct. 17, 2000).
10. 46 F. Supp. 2d 722 (N.D. Ohio 1999).
11. Id. at 724 (quoting language from an earlier injunction).
12. Id. at 728.
13. Versace, 87 F. Supp. 2d at 295 n.1.
14. Jeri-Jo Knitwear, 94 F. Supp. 2d at 459.
15. 97 F. Supp. 2d 96 (D. Mass. 2000).
16. Id. at 121.
17. Id. at 121-22.

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