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Many trademark cases end with an injunction ordering the defendant to stop infringing the plaintiff’s mark. These injunctions remain very much alive, but do they apply to activity on the Internet? The answer: It depends on how the original injunction is crafted. A host of cases have addressed the issues arising from Internet uses of trademarks protected by injunctions antedating the Internet. The most recent decisions show the care a plaintiff must use in crafting an injunction in this online age and the care a defendant must use to comply. Defendants, in particular, should be wary: A court can effectively disable a Web site that it decides is covered by a pre-Internet injunction. SILENCE AND WEB SITES ABROAD If a pre-Internet injunction fails to mention the Internet, the defendant does not get a green light to use an infringing mark online. Even if a Web site originates in some other country, a defendant still risks contempt for violating a U.S. injunction. These legal tenets were set in the (now granddaddy) case, Playboy v. Chuckleberry, 939 F. Supp. 1032 (S.D.N.Y. 1996). The case involved an order obtained by Playboy in 1981 permanently enjoining defendant from using the mark “Playmen” in the United States. The Playmen mark was used in connection with the defendant’s Italy-based male sophisticate magazine of the same name. In January 1996, Playboy discovered that defendant was advertising Playmen magazine and merchandise on an Italy-based Web site (www.playmen.it), hosted on an Italian Web server. Internet users worldwide could access electronic versions of Playmen by contacting defendant and obtaining a user name and password. The U.S. District Court for the Southern District of New York held the defendant in contempt — finding that the defendant violated the injunction when it established an Internet site using the infringing Playmen mark. The court rejected the defendant’s argument that the 1981 injunction was not “clear and unambiguous” because it did not contemplate uses on the Internet. Though online use was unlikely foreseeable in 1981, the injunction could still apply to mediums and technologies not explicitly mentioned. But the case has further implications: Although the court found defendant in contempt, the defendant was still allowed to operate its site on the condition that the site bar access to U.S. customers. The court ordered the defendant to explicitly indicate on the Web site that U.S. customers would be denied the passwords required for entry. The lesson is clear. When drafting proposed orders concerning Web sites in other countries, plaintiffs should consider the conditions under which a court will permit the foreign site to continue operations and the steps to be taken to prevent access by U.S. visitors. Prudent defendants should devise ways to limit access that might pass muster in court. A U.S. District Court in the Southern District of New York again analyzed this scenario in Gianni Versace S.p.A. v. Alfredo Versace, 87 F. Supp. 2d 281 (S.D.N.Y. 2000). A preliminary injunction that did not mention online activity enjoined defendant from using or authorizing the use of any of plaintiff’s Versace trademarks in the United States. After the order was entered, defendant used the Alfredo Versace trademark on Web sites that originated in foreign countries but were accessible from the United States. Relying on Chuckleberry, the court found contempt. But this decision went further than the Chuckleberrycourt. The court required the defendant to “purge all references to the Infringing Marks throughout cyberspace” that violated the preliminary injunction. To justify this sweeping order, the court noted that unlike Chuckleberry, the Versacedefendant offered no evidence of a feasible way to exclude only U.S. visitors. The decision leaves open the question of whether the defendant would have been allowed to continue operating the foreign Web sites if it had suggested a possible way to limit access to U.S. customers. Perhaps mandatory subscriptions or passwords excluding U.S. users would have satisfied the court. Two recent cases further illustrate diverging results. In Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., 94 F. Supp. 2d 457 (S.D.N.Y. 2000), an earlier judgment enjoined defendant from “advertising or promoting” in the United States clothing bearing plaintiff’s Energie trademark. Defendant, however, owned the rights to the Energie mark for apparel in Italy and in other countries. Plaintiffs filed a motion for contempt, arguing that defendant promoted Energie clothing in the United States through its “energie.it,” “misssixty.com,” and “sixty.net” Web sites. The “energie.it” site displayed defendant’s Energie apparel. Although the “misssixty.com” and “sixty.net” sites did not feature Energie clothing, both contained a link, labeled “Energie” to the Italy-based “energie.it” site. The plaintiffs argued that the defendant had not complied with the injunction and could have curtailed U.S. users’ access by removing the hyperlinks and requiring passwords (not available to U.S. users) to the site. ADVERTISING, BUT NOT CONTEMPT The court found that though defendant could be viewed as “advertising” in the United States, its conduct did not rise to the level of “contempt” in light of defendant’s rights to the mark outside the United States. The court allowed the defendant to continue operating its Italian Web site without requiring anti-U.S. passwords, but the defendant was required to delink its “energie.it” site from its U.S.-based sites. In Crate & Barrel v. Crate & Barrel Ltd., No. 99-C-6926 (N.D. Ill. Oct. 17, 2000), 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” Web site 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 per day fine and ordered the arrest of company’s president and others associated with the company who enter the United States. Another important issue is whether a court can order the deregistration of Web sites from search engines after the Web site is enjoined. So far, three decisions address this issue. The first, Nettis Environment Ltd. v. IWI, Inc., 46 F. Supp. 2d 722 (N.D. Ohio 1999), concerned meta-tags. 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.” Although defendant deleted the offending meta-tags from the HTML code on its site, it failed to deregister its Web site from 380 search engines. The defendant explained 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.” The court held the defendant in contempt. Similarly, in Versace, the original order imposed an affirmative duty to remove all infringing references from the search engines themselves. The court ruled, “[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.�” Taking a different approach, the Jeri-Jo Knitwear court did not require defendant to deregister its foreign Web site from search engines. In light of defendant’s rights to the Energie mark outside the United States, requiring the deregistration from search engines was overly broad because deregistering does not guarantee “100 percent perfection.” Plaintiffs now also need to be mindful that new technology can cloud the meaning of an injunction. For example, the Internet and its technology can cause a court’s order later to be deemed “unclear” or “ambiguous,” thus preventing a finding of contempt. Northern Light Technology, Inc. v. Northern Lights Club, 97 F. Supp. 2d 96 (D. Mass. 2000), illustrates this scenario. 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 Web site: “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.” FALLING SHORT OF THE STANDARD Defendant posted these three disclaimers and properly linked the first two to the specified Web sites. But the third, which was supposed to link to businesses with the words “Northern Lights” in their name, 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 “clear and convincing” standard for contempt. This decision raises multiple issues about drafting 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 Web site 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). The order should also anticipate a potential change in the URL of the “linked-to” page and, in that event, should require the defendant to update its link to correspond to the new URL. When the injunction includes designated text to be posted on a Web site, 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 in the rest of the order. This will help to discourage enjoined parties from cleverly linking to pages of their choice and later claiming that they technically complied with the order. The Internet offers sellers a truly global marketplace. It also offers a massive medium for trademark infringement. Plaintiffs must anticipate technological change, which might provide the defendant with the chance to dodge the provisions of the injunction. Plaintiffs as recently as a decade ago did not contemplate the advent of the Internet, and injunctions issued in older cases have been held to encompass Internet activity. But the plaintiffs who discover infringements today need to ensnare all possible infringing activity — including online use — within the terms of a proposed injunction. Defendants, meanwhile, must carefully review their Internet activities to make certain the terms of any injunction are satisfied. Otherwise, contempt of court — and attendant penalties — might well be on the horizon. David M. Kelly is a partner at Washington, D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner . Daniel B. Binstock is an associate with the firm.

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