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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...

Archdiocese of St. Louis, et al. v. Internet Entertainment Group, Inc.

34 F. Supp. 2d 1145 (E.D. Mo., Feb. 12, 1999)

Plaintiffs Archdiocese of St. Louis ("Archdiocese") and Papal Visit 1999, St. Louis owned common law trademarks in a number of marks including "Papal Visit 1999," which marks they used to promote the Pope's January 1999 visit to St. Louis, Missouri. Defendant operated websites at the domain names "papalvisit.com" and "papalvisit1999.com." These websites provided limited information about both the Pope's then upcoming visit and St. Louis in general. In addition, they "provided advertising for defendant's adult entertainment websites, hyperlinks to these other websites, and an assortment of 'off-color' stories and jokes regarding the Pope and the Roman Catholic Church."

Plaintiffs objected to this use of their marks, and brought suit alleging federal and state law claims for trademark infringement, dilution and unfair competition. On plaintiffs' motion, the court issued a preliminary injunction, enjoining the defendant from continuing to operate the websites at the domain names at issue.

Defendant opposed this motion in part on the ground that the court lacked personal jurisdiction over it. Relying on defendant's contacts with Missouri via the operation of the challenged websites, the court rejected this argument and held that it could exercise specific personal jurisdiction over the defendant in claims arising out of the operation of these websites.

As stated above, defendants operated websites available via the World Wide Web to all residents of the United States, including those of Missouri, at domain names that allegedly incorporated plaintiffs' common law trademarks. These websites merely contained information about the Pope's visit, as well as advertising for, and links to, adult websites operated by the defendant. These adult sites, in turn, solicited membership for use of the sites, and offered to sell various adult entertainment products and services. The court did not indicate in its decision that any Missouri residents had actually bought anything after reaching defendant's adult sites via links from the sites at issue. It did, however, find that "a number of Missouri residents contacted the Archdiocese to complaint about defendant's papal visit websites."

These contacts with Missouri were held sufficient to confer jurisdiction on the Missouri District Court. The court rejected defendant's argument that the websites at issue were "passive" sites which would not confer jurisdiction on the court. Instead the court held that these websites:

actively not only provides information about the papal visit and St. Louis, but aggressively encourages users to hyperlink to other websites which advertise, promote and sell adult entertainment services and products. It is clear to this Court that [defendant] may have been communicating its activities globally, but by specifically utilizing the papal visit to St. Louis, using domain names which mirrored the alleged trademarks consistently publicized by the Archdiocese of St. Louis throughout St. Louis and the immediate metropolitan area, and providing information about St. Louis, [defendant] intended to reach Internet users in Missouri. ... [and] availed itself of the privilege of conducting activities in Missouri.

Arguably, this decision holds that the addition of an advertisement and link to a website, which links that website to another at which the webmaster sells products, is sufficient to transform an otherwise passive site into a site whose operation subjects the webmaster to jurisdiction wherever it is available.

Finding that it had jurisdiction over the defendant, the court proceeded to award plaintiffs injunctive relief. In so holding, the court found that plaintiffs were likely to prevail on their Federal trademark claims that defendant was diluting plaintiffs' famous marks by tarnishing them. The court found that plaintiffs' marks "are famous and distinctive." This was apparently based on plaintiffs' use of the marks for approximately seven months, and their expenditure of a "considerable amount of money" advertising the marks. Tarnishment arose by the association of the mark with "websites advertising and promoting adult entertainment materials and services."

The court rejected defendant's argument that it had a First Amendment right to use the marks because defendant did not use the marks as part of a communicative message. Instead, its use of the marks in domain names, which serve as "source identifiers," is not protected by the First Amendment. Said the court:

Defendant's use of the plaintiffs' marks is entitled to First Amendment protection when its use of the marks is part of a communicative message, not when the marks are used to identify the source of a product, or in this case, the websites belonging to or being sponsored by the plaintiffs.

The full text of the court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.

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