Playboy Enters., Inc. v. Chuckleberry Publishing, Inc., 939 F. Supp. 1032 (S.D.N.Y. 1996) (full-text).
Factual Background Edit
In 1981, plaintiff obtained a permanent injunction enjoining defendant, which published an Italian-based “male sophisticate” magazine under the name PLAYMEN, from using the mark PLAYMEN “as part of any trademark, service mark, brand name, trade name or other business or commercial designation in connection with the sale, offering sale, or distributing in the United States, importing into or exporting from the United States, English language publications and related products.” Plaintiff was unsuccessful, however, in its attempts to enjoin defendant’s use of PLAYMEN in Italy.
In January 1996, plaintiff discovered that defendant operated an Italian-based Internet site (located at “playmen.it”) advertising its PLAYMEN magazine and providing sexually explicit images and associated merchandise. Internet users, regardless of their physical location, could access electronic versions of the PLAYMEN magazine by contacting defendant and obtaining a user name and password. Soon thereafter plaintiff charged defendant with contempt of the 1981 injunction.
Trial Court Proceedings Edit
The court framed the issue as “whether the Defendant distributed or sold the PLAYMEN magazine in the United States when it established an Internet site containing pictorial images under the PLAYMEN name.” Initially, defendant argued that the fifteen-year-old injunction was not “clear and unambiguous” because when drafted it did not contemplate uses on the Internet. The court noted that, although this type of online use was unlikely to be foreseen in 1981, the injunction could still apply to mediums and technologies not explicitly mentioned so as to uphold the purpose of the injunction to restrict defendant’s ability to distribute its PLAYMEN product in the United States.
Next, considering whether defendant actually violated the injunction, the court made three findings. First, defendant’s use of PLAYMEN constituted a “trade name or business or commercial designation” because the website’s URL was “www.playmen.it” and the word PLAYMEN was prominently displayed on the home page.
Second, as to whether the website was an “English language publication or related product,” the court held that uploading pictures onto an Internet site could perhaps constitute a “publication,” but in any event was definitely a “related product” covered by the injunction. The English language requirement was also met because the website—partially in English—could easily be navigated by English-speaking users.
Third, the court analyzed whether defendant’s use constituted a “distribution” and, if so, whether this distribution took place in the United States. Defendant argued that it was merely posting images on a computer server in Italy. Because defendant did more than simply provide access — it actively invited users to download pictures—this interaction constituted a distribution. And, by accepting faxed subscription requests from U.S.-based customers and then e-mailing passwords to these users, defendant’s distribution took place in the United States.
Accordingly, defendant’s actions violated the 1981 injunction, even though its website was based in Italy. Declaring that “cyberspace is not a ‘safe haven’ from which [defendant] may flout the Court’s injunction,” the court ordered defendant to: (1) either shut down its site completely or refrain from accepting any new subscriptions from U.S. customers; (2) cancel accounts of all U.S. customers and refund the unused portion of their subscriptions; (3) remit to plaintiff all gross profits received from U.S. customers; (4) indicate on its website that U.S. customers will be denied subscriptions; and (5) reimburse plaintiff its costs and attorney’s fees incurred in this contempt action.
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