Designer Skin LLC v. S & L Vitamins, Inc., et al.
Jeri-Jo Knitwear, Inc., et al v. Club Italia, Inc., et al.
2000 U.S. Dist. Lexis 4891, 94 F.Supp.2d 457 (S.D.N.Y., April 18, 2000)
Plaintiff Jeri-Jo Knitwear, Inc. ("Jeri-Jo") sought to have defendants held in contempt for violating an order and judgment which "enjoined defendants, in the United States, from 'advertising or promoting' apparel bearing Jeri-Jo's registered trademark ENERGIE ...".
Jeri-Jo is the owner of the federally registered trademark "ENERGIE" for men and woman's clothing. Jeri-Jo uses the mark primarily in connection with the sale of women's clothing.
Defendant Sixty S.p.A. ("Sixty") is the holder of valid trademarks for the "ENERGIE" mark in Italy, France and Germany, and, according to the court, has the right to sell ENERGIE apparel in numerous other countries outside of the United States. At the time this lawsuit was commenced, defendants were selling clothing bearing the ENERGIE mark and several variations thereof in the United States. In a prior decision, the court found that defendants had infringed plaintiffs' ENERGIE trademark, and, as a result, issued the judgment and order at issue.
After the issuance of injunctive relief in question, defendants continued to operate a web site at "www.energie.it." At this site, users from both the United States and other countries could view defendants' 1999/2000 collection of ENERGIE apparel. However, an individual residing in the United States apparently could not use the web site to effectuate a purchase of ENERGIE apparel. ("It appears that defendants stopped selling the infringing product in the United States after the injunction was granted ...".)
Defendants also operated two other web sites at the urls "www.missixty.com" and "www.sixty.net" at which they promoted non-infringing apparel products. These sites contain a hyperlink to defendants' "www.energie.it" web site. The text of the link is the word "ENERGIE."
On this record, the court declined to hold defendants in contempt. The court directed defendants to immediately delink to the web sites in question. It refused, however, to direct defendants to delist their "www.energie.it" web site from various search engines. Lastly, the court "grant[ed] plaintiffs' request for its attorneys' fees incurred in making this enforcement application."
Said the court:
While I agree with the plaintiffs ... that defendant could be viewed as "advertising" in the United States in violation of the consent judgment, I can not ... conclude on the total record before me that defendants' conduct is of that flouting willfulness to have earned the denomination "contemnor." Defendants, one must keep in mind, do have world-wide rights in the mark outside the United States. Accordingly, while I direct the defendants to immediately de-link its www.energie.it site from its www. Missixty.com and www.sixty.net sites, I do not conclude defendants should be required to delist its www.energie.it site from various search engines because I do not believe an adequate evidentiary foundation has been laid to require such broad relief where even plaintiff concedes 100% perfection is not possible, and, I repeat, defendants may legitimately advertise their mark over much of the rest of the globe, and there is no showing of damage to plaintiff from the failure to act with more dispatch.