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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc.

1996 WL 337276 (S.D.N.Y. June 19, 1996), aff'd on recons., 1996 WL 396128 (S.D.N.Y. July 12, 1996)

(Court holds that defendant, by placing pictorial images on a server located in Italy that is connected to the World Wide Web, and hence available to United States residents, has violated a permanent injunction prohibiting distribution of the images in the United States). In Playboy, Playboy sought to have defendant Tattilo Editrice S.p.A. held in contempt for violating a permanent injunction issued in a 1981 trademark infringement action which enjoined Tattilo from "distributing in the United States ... publications and related products" bearing the name "Playmen." The target of the 1981 action was the conventional distribution in the United States of a print magazine titled "Playmen." Tattilo owns the Italian trademark in the mark "Playmen." Ownership of this trademark permits Tattilo to publish in Italy a male sophisticate magazine of the same name, which Tattilo has been doing on a monthly basis continuously since 1967. This publication sight has been confirmed by the Italian courts. Since the issuance of the 1981 injunction, Tattilo has not published or distributed print copies of the magazine in the United States. In April 1995, Tattilo uploaded a web site containing covers of its "Playmen" magazine and photographs appearing therein onto a World Wide Web server, a computer accessible to individuals anywhere around the globe who posses the appropriate technology to connect to the Web. Significantly, this server was in Italy. These pictorial images were available on the most heavily visited section of the site, a free service called Playmen Lite, which could be accessed without a password. To view Playmen Lite, a United States resident needed a computer, modem and web browser. A web browser is a software program that enables a computer to "read" the text, images and codes in which web sites are written. The resident must also hire a commercial online service or other access provider to give him access to the Web. With these tools in place, the computer operator typed http://www.playmen.it, the uniform resource locator or URL for Tattilo's web site. A URL is the address of the web site and indicates where it is located. The ".it" in Tattilo's URL signifies the site is stored on a server physically present in Italy. After the site's URL is typed, the operator's computer communicates with this Italian server, from which it captures or pulls the requested images and associated text of Tattilo's site. This information is read by the operator's browser and presented for viewing on his United States computer. In this exchange, the United States based computer is the active participant -- the Italian based server is passive, merely responding to commands supplied by the user. If no United States resident attempted to contact the site, Tattilo's images would not appear on any computer screen here, as Tattilo does not initiate contact with users. Consequently, Tattilo argued that its conduct only occurred in Italy. United States residents, by taking the steps described above, effectively boarded a plane, landed in Italy, and purchased a copy of the magazine there. The Court disagreed, finding instead that Tattilo was impermissibly distributing infringing product in the United States in violation of the Court's 1981 injunction. As a result, the Court directed Tattilo to either cease operating the site, or prevent United States users from accessing it. The Court did recognize limits on its jurisdiction, holding that it has "neither the jurisdiction nor desire to prohibit the creation of sites around the globe ..." . Nor, determined the Court, could it prohibit Tattilo from operating its Italian web site, even if the site infringed a valid United States trademark. Tattilo may of course maintain its Italian site. The is a world-wide phenomenon, accessible from every corner of the globe. Tattilo cannot be prohibited from operating its site merely because the site is accessible from within one country in which its product is banned. To hold other-wise 'would be tantamount to a declaration that this Court, and every other court throughout the world, may assert jurisdiction over all information providers on the global World Wide Web.' Def. Mem. at 2. Such a holding would have a devastating impact on those who use this global service. Nonetheless, the Court determined that it had the power to deny a web site hosted on a server located abroad which infringed a United States trademark access to United States citizens. Said the Court "Cyberspace is not a 'safe haven' from which Tattilo may flout the Court's injunction" or the trademark laws of the United States. "In the absence of enforcement, intellectual property laws could be easily circumvented through the creation of sites that permit the very distribution that has been enjoined." The Court further found that operation of Playmen Lite constituted distribution in the United States because Tattilo's images appeared on United States computer screens. The Court held: That the local user "pulls" these images from Tattilo's computer in Italy, as opposed to Tattilo "sending" them to this country is irrelevant. By inviting United States users to download these images, Tattilo is causing and contributing to their distribution within the United States. Moreover, the availability of Playmen Lite within the United States violates the In- junction even if the user could not download these images. Technically, this case does not directly address the issue of jurisdiction, holding only that an Italian based web site distributes product in the United States if it permits United States users to access its site over the Web. The Court's reliance solely on such computer contacts in reaching its conclusion as to the situs of Tattilo's acts, however, is a strong indication of the Court's views on their sufficiency to support jurisdiction. The jurisdictional issue was squarely addressed by the Sixth Circuit in CompuServe v. Patterson.

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