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An injunction ordering removal of approximately 10 pages of material from a Web site “raises serious First Amendment concerns” sufficient to require that the order be vacated and a trademark action remanded for further proceedings, the 4th U.S. Circuit Court of Appeals ruled June 2 ( CPC International Inc. v. Skippy Inc., et al., No. 99-2318, 4th Cir.). A three-judge panel held that an injunction entered against Skippy Inc. by U.S. Judge Richard L. Williams of the Eastern District of Virginia “lacks the findings and specificity” required by Rule 65 of the Federal Rules of Civil Procedure. Skippy Inc. is the owner of the federally registered trademark “Skippy” for a cartoon comic strip created by Percy L. Crosby in 1923. The cartoon features a school-aged child named Skippy. CPC International Inc., owner of the federal trademark “Skippy” for peanut butter, sued Skippy Inc. in 1986, alleging trademark infringement and unfair competition in Skippy’s licensing of its mark, the comic strip and its character on the packaging of caramel corn, popcorn and nuts. The District Court found for CPC and issued an order prohibiting Skippy and its president, Joan Tibbetts, from using the mark on food products and from communicating that its rights in the mark include the right to use it on food products or that CPC has no right to use the mark in connection with food products. DOMAIN NAME In 1997, Skippy registered the domain name Skippy.com and put up a Web site recounting the “Life and Times” of Percy Crosby and the success of the Skippy cartoon character. The site also included stories of an FBI investigation, “CPC’s Malicious Prosecution” and “CPC’s Fraud on the Courts.” A notice on the site stated, “Skippy and the image of the character Skippy are trademarks and copyrights of Skippy Inc. Neither these marks nor the copyrighted works of Percy Crosby may be used without the permission of Skippy Inc.” CPC filed a motion to show cause why Skippy and Tibbetts should not be held in contempt of the 1986 order. In September 1999, the District Court ordered Skippy and Tibbetts to permanently remove significant portions of the site and enjoined them from “providing others with any of the deleted material on the Skippy.com website or any material that violates the Court’s [1986 order].” On Sept. 21, the court entered a final order imposing a $500 per day in damages award upon showing of any further violations of the 1986 order. Skippy and Tibbetts appealed. NO FACTUAL FINDINGS Reversing and remanding, the Fourth Circuit held first that the lower court’s order fails to adequately set forth the reasons for its issuance as required by Rule 65. “[T]he court simply lists and highlights what should be removed — about ten pages of material,” the panel said. “The injunction thus silences a substantial quantity of speech from Skippy’s web site, including commentary on the ongoing litigation and the alleged mistreatment of Skippy cartoon creator Percy Crosby. “Yet the district court does not explain how these statements violate the 1986 order. There are no findings that relate the redacted statements to the 1986 order. Nor are there any reasons given for issuance of the injunction. What is to be removed is clear from the order; however, the reason for redacting these materials is not. Such a terse and sweeping injunction does not comply with the requirements of Rule 65(d).” NOT NARROWLY TAILORED Further, the court said, the injunction is not narrowly tailored to remedy specific violations of the 1986 order and therefore implicates First Amendment concerns. “The district court failed to articulate any correlation between the redactions and the government’s interest in enforcing trademark law,” the panel said. “The basic objectives of trademark law are to encourage product differentiation, promote the production of quality goods, and provide consumers with information about the quality of goods. It is hard to see what ‘significant government interest’ is served here.” First Amendment considerations are triggered here, the court said, “because Ms. Tibbetts tells her side of the story on the Skippy web site � how a big corporation worked to steal her father’s cartoon trademark and then used the trademark to make a fortune. This is an admittedly partisan account and one that vexes CPC. Yet just because speech is critical of a corporation and its business practices is not a sufficient reason to enjoin the speech.” CPC is represented by William Mack Webner of Sughrue, Mion, Zinn, MacPeak & Seas in Washington, D.C. Skippy Inc. is represented by Rodney R. Sweetland III of Arlington, Va. The American Civil Liberties Union of Virginia Foundation, represented by Rebecca K. Glenberg of Richmond, Va., filed an amicus curiae brief in support of Skippy. � Copyright 2000 Mealey Publications, Inc.

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