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August 03, 2012
What Are Trademark Defendants' Obligations to Clean Up the Internet After a Trademark Injunction?
By Eric Goldman
We're continuing to get cases interpreting a defendant's obligation after a court has issued an injunction against continuing to use a trademark. (The same basic issue arises after a settlement agreement). I don't know that we have any clear legal principles to draw yet, other than the defendant's good faith effort to comply with the injunction/settlement agreement clearly makes a difference. Three cases on the topic from the past few months:
M. Cohen & Sons, Inc. v. Cohen Iron Works, LLC, 2012 U.S. Dist. LEXIS 57104 (E.D. Pa. April 24, 2012)
After the court issued an injunction against using the name “Cohen Iron Works,” the defendant was in contempt by maintaining a YouTube account “cohenironworks” and a Twitter account @cohenironworks and by reclaiming and maintaining a Manta.com page for “Cohen Iron Works.”
Medi-Weightloss Franchising USA, LLC v. Medi-Weightloss Cline of Boca Raton, LLC, 2012 WL 2505930 (M.D. Fla. May 24, 2012)
Plaintiffs claim the Defendants have defied the preliminary injunction by failing to de-identify and disassociate VIP Wellington from Medi on various web sites. In their opposition memorandum and during the hearing before me, Defendants explained their diligent efforts to de-identify and disassociate their new business from Medi, including Defendants' efforts to contact third parties such as Angie's List, Yelp, Linked In, and Google. Moreover, Defendants explained that the “we are moving” status on Facebook was made after Medi Boca had closed and VIP had opened, in order to comply with the injunction order's requirements. And, Defendants stated that they have removed the photograph from VIP's Facebook page that included the reflection of Medi's slogan “The One that Works!” and have also removed Medi's logo from the protein bar packaging seen on their Facebook page. Accordingly, I find the Defendants have made reasonably diligent efforts to de-identify and disassociate their new business from Medi, and the Plaintiffs have failed to show by clear and convincing evidence that the Defendants have violated the injunction order in this regard.
SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 2012 WL 2344081 (N.D. Cal. June 20, 2012)
As to the Sun-Earth.com/web, SunEarthPower.com/web, and SunEarthPower.net/web pages, Defendants contend that these were not encompassed within a literal reading of the modified preliminary injunction, which refers only to Sun-Earth.com, SunEarthPower.com, and SunEarthPower.net in paragraph seven….However, this is an unreasonably limited reading of the injunction, which clearly encompasses all subpages within those domain names.
* Cautionary Tale for Settling Trademark Cases--Tormented Souls v. Tormented Souls Motorcycle Club
* Court Holds Defendant in Contempt for Failing to Scrub Trademark Use From the Internet -- TDC Int'l v. Burnham
* Injunction Requires Negative Keywords in Future Adwords Campaigns
* Keyword Advertising is TM Use in Commerce But Doesn't Violate Injunction--Boston Duck Tours v. Super Duck Tours
* Broad Matching Doesn't Violate Injunction--Rhino Sports v. Sport Court
Posted by Eric at August 3, 2012 10:22 AM | Trademark
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