Faegre & Benson, Llp v. Purdy

Page 1008

447 F.Supp.2d 1008

FAEGRE & BENSON, LLP, Felicia J. Boyd, and John H. Hinderaker, Plaintiffs, v. William S. PURDY, Sr., Please Don't Kill Your Baby, a Minnesota corporation, and Does 1-10, Defendants.

No. 03-6472 MJD/SRN.

United States District Court, D. Minnesota.

August 24, 2006.

John P. Borger, Felicia J. Boyd, Laura G. Coates, and Michelle Paninopoulos, Faegre & Benson LLP, Minneapolis, MN, for Plaintiffs.

William S. Purdy, Sr., South St. Paul, MN, Pro se.

MEMORANDUM OF LAW & ORDER

DAVIS, District Judge.

I. INTRODUCTION

This matter is before the Court on Plaintiffs' Motion for Partial Summary Judgment and Entry of Permanent Injunction. [Docket No. 139] The Court heard oral argument on May 26, 2006.

II. FACTUAL BACKGROUND

A. Procedural Background

On December 15, 2003, Plaintiffs Faegre & Benson, LLP ("Faegre"), Felicia J. Boyd, and John H. Hinderaker filed a complaint against Defendants William S. Purdy, Sr., Please Don't KILL Your Baby ("PDKYB"), and Does 1-10, alleging that Defendants registered numerous internet domain names that are confusingly similar to Faegre's protected marks and that statements on Defendants' web sites are defamatory. Plaintiffs' First Amended Complaint alleges the following counts: Count I: Violation of the Anticyber-squatting Consumer Protection Act ("ACPA"); Count II: Infringement of Registered Marks; Count III: False Designation of Origin, False Description, and False Representation in Connection with the FAEGRE Marks; Count IV: False Designation of Origin, False Description, and False Representation in Connection with Faegre's Trade Dress; Count V: Deceptive Trade Practices; Count VI: Common Law Trademark Infringement; Count VII: Common Law Trade Dress Infringement; Count VIII: Appropriation of Name; and Count IX: Defamation.

On January 5, 2004, the Court issued an order granting Plaintiffs' motion for a preliminary injunction and for a temporary restraining order ("January 5 Order"). The January 5 Order stated, in relevant part:

1. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are temporarily and preliminarily prohibited and enjoined from using the domain names faegrebenson.com, faegre-benson.org, faegre. biz, startribun e -fae gre -ben son lawfirm. com, startribune-faegre.com, and faegrebensonlawfirm.com.

2. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are also preliminarily enjoined from registering or using any domain name that both (1) incorporates, and is identical or confusingly similar to, Faegre's distinctive and protected marks FAEGRE & BENSON, FAEGRE, FAEGRE.COM or FAEGRE & BENSON LLP or any other marks identical or confusingly similar to any marks used or owned by Faegre, and (2) does not alert the Internet user to the protest or critical commentary nature of the attached web site within the language of the domain name itself.

* * * * * *

5. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are also preliminarily enjoined from using any trademark that is identical or confusingly similar to Faegre's distinctive and protected marks FAEGRE & BENSON, FAEGRE, FAEGRE & BENSON LLP, and FAEGRE.COM, or any other mark used or owned by Faegre.

* * * * * *

11. All Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are ordered to cease illegal appropriation of the names of the Plaintiffs and all individuals associated or affiliated with the Plaintiffs.

Purdy filed an appeal of the January 5 Order, and the Eighth Circuit Court of Appeals affirmed that Order on April 4, 2005. Faegre & Benson, LLP v. Purdy, 129 Fed.Appx. 323, 325 (8th Cir.2005) (unpublished).

On March 18, 2004, this Court set aside entry of default against Purdy and PDKYB and ordered PDKYB to file an answer, through counsel, within twenty days. [Docket No. 50] PDKYB has failed to answer or otherwise appear in this lawsuit through an attorney properly licensed before this Court.

On September 1, 2004, the Eighth Circuit issued an opinion upholding a similar preliminary injunction against Purdy in the case of Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir.2004). On September 2, 2004, this Court issued an Order ("September 2 Contempt Order") finding Purdy in contempt of its January 5 Order for 1) failing to transfer ownership of certain domain names specifically addressed in the January 5 Order; 2) registering and using a number of domain names that were identical or confusingly similar to Faegre's trademarks in violation of the ACPA, 15 U.S.C. § 1125(d); and 3) illegally appropriating Plaintiff Felicia Boyd's name. [Docket No. 86] In that Order, the Court also determined that Purdy controlled PDKYB. (Sept. 2 Contempt Order at 18.) Purdy appealed the Court's September 2 Contempt Order, and the Eighth Circuit dismissed Purdy's appeal on November 23, 2004.

On April 28, 2005, the Court issued a second contempt order (April 28 Contempt Order) granting in part and denying in part Plaintiffs' motion for contempt. [Docket No. 119] The Court found Purdy in contempt for ACPA violations based on his continued use of certain internet domain names and for appropriation of Hinderaker's name. The Court clarified its Preliminary Injunction to define the appropriate parameters of Purdy's use of Faegre's metatags to avoid trademark infringement. The Order required Purdy to pay accrued contempt sanctions and attorney fees within ten days. Purdy has still failed to pay these amounts.

Since being held in contempt, Purdy has continued to register domain names incorporating Faegre's trademarks: he has now registered the domain name Faegre.be. He has also registered domain names incorporating Hinderaker's name and pseudonym, Hindrocket: senatorHinderaker.com and senatorHindrocket.com. Purdy has continued to copy Faegre's metatags wholesale and attach them to his web pages. Additionally, postings falsely attributed to Faegre attorneys expressing support for Purdy or criticism of Plaintiffs continue to appear on Purdy's web site, pleasedontkillyourbaby.com. Plaintiffs' expert, Eric Nevalainen, has submitted declarations, which have not been contradicted by any admissible evidence, opining that Purdy, or an individual authorized by Purdy, posted these messages on the web site.

Plaintiffs now move for partial summary judgment and a permanent injunction. They request judgment in the amount of the accrued contempt fine and previously awarded attorneys fees, plus prejudgment interest. They further propose to dismiss their remaining claims, including all claims for compensatory and punitive damages, without prejudice, so long as they may reassert those claims within twelve months after entry of judgment should Defendants appeal the judgment. Plaintiffs request that the Court convert its Preliminary Injunction and clarifying orders into a similar Permanent Injunction against Defendants.

III. DISCUSSION

A. Summary Judgment Standard

Summary judgment is appropriate if, viewing all facts in the light most favorable to the non-moving party, there is no genuine issue as to any material fact, and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The party seeking summary judgment bears the burden of showing that there is no disputed issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. Summary judgment is only appropriate when "there is no dispute of fact and where there exists only one conclusion." Crawford v. Runyon, 37 F.3d 1338, 1341 (8th Cir.1994) (citation omitted).

B. ACPA Claim (Count I)

1. Introduction

In Count One of their First Amended Complaint, Plaintiffs allege that Defendants registered domain names that were identical or confusingly similar to one or more of Faegre's protected marks in violation of the ACPA, specifically: faegre-benson.com, faegre-benson.org, faegre.biz, startribun e -faegre -ben sonlawfirm. corn, and startribune-faegre.com. The ACPA prohibits a person from registering, trafficking in, or using a domain name that is "identical or confusingly similar to" a distinctive mark, if the person has bad faith intent to profit. The ACPA states:

(1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

15 U.S.C. § 1125(d).

2. Distinctive Marks

The undisputed evidence demonstrates that Faegre's federally registered marks, FAEGRE & BENSON LLP and FAEGRE & BENSON LLP in stylized letters in white on a black background, were distinctive before Defendants registered the domain names at issue, beginning in 2003. At that time, Faegre had a pending application for federal registration of the mark FAEGRE.COM, which has since been granted. Faegre also claims common law trademark rights in the aforementioned marks, FAEGRE & BENSON LLP, FAEGRE.COM, and FAEGRE & BENSON LLP in stylized letters in white on a black background (collectively the "FAEGRE Marks").

Faegre has used the distinctive FAEGRE Marks extensively and prominently in interstate commerce beginning in 1996. Federally registered marks...