DeVry/Becker Educ. Dev. Corp. v. Totaltape, Inc., 2002 WL 99743, 2002 U.S. Dist. LEXIS 1230 (N.D. Ill. Jan. 25, 2002).
Factual Background Edit
Plaintiff owned the registered trademarks BECKER and BECKER CPA REVIEW for its business of providing CPA-examination review courses. Defendant, a competitor of plaintiff’s, used plaintiff’s marks in URLs and metatags. Plaintiff sued defendant for trademark infringement, but the parties settled the matter before trial. Under the settlement agreement, which was incorporated into the court’s order, defendant agreed to stop using the BECKER trademark in URLs or domain names, in metatags on defendant’s websites, in connection with the retrieval of information or in any other manner likely to cause consumer confusion.
After the case settled, plaintiff alleged that defendant used the BECKER mark in a URL, paid third-party search engines to display featured links to defendant’s websites to potential customers searching for “Becker CPA,” and caused featured listings on at least two websites to be displayed in a way that mentioned plaintiff’s and defendant’s names together.
Trial Court Proceedings Edit
Plaintiff filed a motion to reopen the action and sought a show-cause order why defendant should not be held in contempt of the court’s order. Defendant argued that its use of the BECKER mark as a keyword search term did not violate the settlement agreement and that the display of plaintiff’s and defendant’s names together was a mistake by a third-party search engine or marketing service. Regarding the motion to reopen, the court could not reopen the case without vacating its earlier order, but plaintiff advised the court that it did not want to vacate the settlement agreement incorporated in the court’s order.
Moreover, plaintiff’s motion for a rule to show cause for contempt was premature. Although the court’s order referred to the settlement agreement, it failed to include language from the agreement imposing specific obligations on defendant, which was “fatal” to a contempt proceeding. The court did note, however, that it could enter an injunctive order clarifying the rights and duties of the parties under the settlement agreement. According to the court, that order was appropriate here because defendant’s allegedly infringing behavior had ceased, and the settlement agreement was unclear on the issue of keyword searches.
The court thus ordered the following injunctive relief based on the settlement agreement: (a) defendant was permanently enjoined from using plaintiff’s trademarks and any confusingly similar terms as “a domain name, directory name, URL, or other computer address,” in “buried code or metatags,” and “in connection with the retrieval of data or information (including the use of such terms as a keyword or keywords in pay-for-placement or pay-for-rank search engines), (b) defendant had to inform all search engines, marketing consultants, and others used by defendant to market its goods and services on the Internet of the terms of this order, and (c) defendant had to monitor all search engines with which it had a direct or indirect contractual relationship at least once a month for the next year “to ensure that any searches and/or keywords approved, requested, ordered, or authorized by [defendant] comply with the terms of this order.” Finally, the court reserved action on plaintiff’s request for attorney’s fees pending submission of plaintiff’s petition of fees.
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