A&H Sportswear Co. v. Victoria’s Secret Stores, Inc., 134 F. Supp. 2d 668 (E.D. Pa. 2001) (full-text).
Factual Background Edit
Plaintiff used the trademark MIRACLESUIT for swimsuits, and defendant used the trademark THE MIRACLE BRA for swimsuits and lingerie. Since 1996, plaintiff and defendant have been involved in litigation over defendant’s use of THE MIRACLE BRA. In late 2000, the Third Circuit affirmed the district court’s decision that defendant’s use of THE MIRACLE BRA for swimsuits in its catalogs and advertising materials did not create direct confusion, so long as defendant included a specified disclaimer on those pages where the mark identified defendant’s swimwear. Although the court did not “order” defendant to post a disclaimer, its finding of no likelihood of confusion was premised on use of the specified disclaimer. Furthermore, during the litigation, defendant represented that it would publish the required disclaimer in any catalog or magazine advertisement in which the mark appeared to identify swimwear.
Trial Court Proceedings Edit
At issue in this decision, among other things, was plaintiff’s motion for contempt because defendant failed to include the required disclaimer on all web pages where the trademark appeared. Despite the court’s earlier order enjoining defendant from using THE MIRACLE BRA without a disclaimer, that order was vacated in a later decision. Defendant was thus no longer bound by a valid order, so it could not be liable for civil contempt. Nonetheless, the court noted that defendant was still “legally obligated” to include the specified disclaimers because the district court’s earlier decision finding against confusion was based on the assumption that defendant would use the disclaimers.
Because defendant’s failure to properly use disclaimers on its website could “potentially jeopardize [the court’s] finding that there is no similarity between the marks,” the court treated plaintiff’s contempt motion as a “motion to reopen” the earlier decision finding against direct confusion. In this regard, defendant argued that the earlier decision’s failure to expressly discuss Internet marketing meant that the disclaimer was required only on print media, and defendant’s limited use of the disclaimer on its website was merely a gesture of “good faith.” In rejecting defendant’s argument, the court stated “[w]e decline to grant Defendants request to draw meaningless distinctions between marketing swimwear via a print catalogue and marketing it via a website. The Victoria’s Secret website is directly analogous to the Victoria’s Secret hard copy catalogue.”
Nonetheless, the court held that defendant’s use of disclaimers on its website was still sufficient to support the court’s earlier decision finding against confusion. Here, defendant used the required disclaimer on every web page on which THE MIRACLE BRA trademark appeared, with the one exception of its “search results” page. When a user accessed the site’s “search” function, it returned a variety of thumbnail-sized images of defendant’s products. Some of these thumbnail photos depicted defendant’s swimwear with the name “THE MIRACLE BRA” underneath it but without the accompanying disclaimer. If a user clicked on the thumbnail picture of THE MIRACLE BRA swimwear, however, the user was forwarded to a page where the disclaimer was prominently featured next to a larger image of the swimwear products.
In finding that thumbnail photos without the disclaimer were not inconsistent with the disclaimer requirement, the court analogized the thumbnail photos to magazine or catalog covers, which the court previously held were exempt from the disclaimer requirement so long as the disclaimer appeared within the catalog. Because consumers were forced to undertake additional steps before they could purchase plaintiff’s swimwear — steps that would require exposure to the disclaimers — defendant was still acting in accordance with earlier representations that it would post disclaimers. Accordingly, the court denied plaintiff’s motion to reopen.
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