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 accessit 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...
