A.V. by Versace, Inc. v. Gianni Versace, S.p.A., 87 F.Supp.2d 281 (S.D.N.Y. 2000) (full-text).
Factual Background Edit
In an earlier order, the court preliminarily enjoined defendant from, inter alia, in the United States . . . using, advertising, marketing, . . . promoting or authorizing the use of any of [plaintiff’s VERSACE trademarks].” After entry of the preliminary injunction, defendant used or authorized others to use the ALFREDO VERSACE trademark on Internet websites originating in foreign countries.
Trial Court Proceedings Edit
In this action, plaintiff filed a motion for civil contempt alleging that the accessibility of those Internet sites in the United States violated the preliminary injunction. Relying on the Playboy Enters., Inc. v. Chuckleberry Publishing, Inc. decision, the court agreed, holding that “despite originating overseas . . . this type of online infringement is deemed to have occurred in the United States, and therefore is plainly covered by the preliminary injunction.”
The preliminary injunction order’s failure to refer to the Internet did not limit its applicability to the Internet. Furthermore, defendant’s failure to remove the infringing marks from search engines also violated the injunction because it constituted “using, advertising, marketing, [and] promoting” an infringing mark. Thus, the court required defendant to: (1) “take all reasonable steps to disable every Internet site that in any way employs any” trademarks in violation of the original order; (2) file an affidavit describing its efforts to delete any infringing references, and noting any references it was unable to remove; (3) pay a compensatory fine to plaintiff equal to defendant’s profits earned from the sales of products advertised on any Internet website after the date of the original order; (4) pay to plaintiff one-third of plaintiff’s costs and attorney's fees incurred in bringing the contempt motion because defendant’s violations were willful; and (5) if any of these conditions were not met within thirty days, defendant would be fined $1,000 each day (payable to plaintiff) until it achieved full compliance with the order.
The court distinguished this case from Playboy Enters., Inc. v. Chuckelberry Publishing, Inc. in which that court allowed the defendant to continue operating its website from Italy if it denied access to U.S. users. In contrast, there was no evidence before the court here concerning the feasibility of limiting access to pertinent websites to persons outside of the United States and it did not appear to the court that there was any practical alternative other than to require defendant to “purge all references to the infringing marks throughout cyberspace.” In a subsequent ruling, the court awarded plaintiff $31,031.39 in attorney's fees.
- ↑ 939 F. Supp. 1032 (S.D.N.Y. 1996).
- ↑ Id.
- ↑ See 2000 U.S. Dist. LEXIS 7799 (S.D.N.Y. June 8, 2000).
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