Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., 94 F.Supp.2d 457 (S.D.N.Y. 2000) (full-text).
Factual Background Edit
A December 1999 consent judgment enjoined defendants from “advertising or promoting” in the United States apparel bearing plaintiff’s ENERGIE trademark. Defendants owned rights to the ENERGIE mark for apparel in Italy and many other countries.
Trial Court Proceedings Edit
Plaintiffs filed a motion for contempt, arguing that defendants advertised and promoted ENERGIE apparel in the United States through its “energie.it,” “misssixty.com,” and “sixty.net” websites. The “energie.it” site displayed defendants’ ENERGIE apparel. Although the “misssixty.com” and “sixty.net” sites did not feature ENERGIE apparel, both contained a link labeled “ENERGIE” to the “energie.it” site.
Plaintiffs contended that defendants were not reasonably diligent in complying with the Court’s injunction, arguing that defendants could have (1) moved the “misssixty.com” and “sixty.net” sites to “.it” top-level domains, which U.S. users are not accustomed to using; (2) removed the links to the “energie.it” site on the “misssixty.com” and “sixty.net” sites; and (3) restricted access to the “energie.it” site by requiring a password that would not be issued to U.S. Internet users.
Defendants had proposed adding a disclaimer to its “misssixty.com” and “sixty.com” sites, stating that defendants’ ENERGIE brand was not available for purchase in the U.S. and that plaintiffs owned the ENERGIE brand in the U.S., but plaintiffs rejected that proposal. Although defendants could be viewed as “advertising” in the U.S., this conduct did not rise to the level of “contempt,” according to the court, particularly in light of defendants’ worldwide rights to the mark outside of the United States.
Accordingly, the court did not require defendants to delist their “energie.it” site from various search engines or to password protect the “energie.it” site. The court did order defendants, however, to delink its “energie.it” site from its “misssixty.com” and “sixty.net” sites. Finally, the court denied plaintiffs’ request for a forfeiture of defendants’ gross profits but did award them their attorney’s fees in bringing the contempt motion.
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