Court Holds Defendant in Contempt for Failing to Scrub Trademark Use From the Internet — TDC Int’l v. Burnham

[Post by Venkat, with comments from Eric]

TDC Int’l v. Burnham, 2010 U.S. Dist. LEXIS 116741 (E.D. Mich; Nov. 2, 2010)

TDC sued Burnham based on Burnham’s use of the “Quick and Easy Moving” mark, which supposedly infringed on TDC’s “EZ Moving/Moving and Storage” mark. The parties settled, and Burnham stipulated to a judgment against him. The consent judgment required Burnham to:

remove all internet postings, websites, email addresses, advertisements, online business listings, YouTube accounts, Twitter accounts, and any other online material associated with [Burnham].

TDC brought a motion for contempt, arguing that Burnham failed to comply. Burnham responded that he had been unable to remove pages hosted by Squidoo.com and Yelp.com because he was “locked out of them.”

The court finds that, although Burnham is not required to do “the impossible,” he should have taken reasonable steps. The court finds that Burnham failed to do so, and directs Burnham to:

contact the entities that maintain the sites [Squidoo.com and Yelp.com] and request that they be removed pursuant to the Settlement Agreement, Consent Judgment, and Injunction. . . . . This includes requesting sites remove keywords that Defendant would be prohibited from placing on the sites. This is no small undertaking, but is required by the Injunction.

Interestingly, the court also orders Burnham to take corrective measures in the form of including the following disclaimer “at the top of the initial page of any web site promoting, describing, advertising, or otherwise involving [Burnham’s] business operations . . . that is maintained by or for the Defendant”:

I, Jae Burnham, the owner of the content posted here, have been ordered by the United States District Court for the Eastern District of Michigan to post this notice because I have been twice found in contempt of court.

IF YOU ARE SEARCHING FOR “EZ MOVING” OR “EASY MOVING,” THIS IS NOT THE SITE OF ANY SUCH MOVING BUSINESS.

Until 2009 I used the name “Quick and Easy Moving” for my moving business and was ordered to cease using that name because it wasconfusingly similar to another more senior business, “EZ Moving and Storage.” My moving business is NOT “Easy Moving,” “EZ Moving,” oranything similar to the word “easy” in connection with “moving.”

Also, during the time I advertised to provide moving services using the words “Quick and Easy,” I made claims that my business had “5 employees and its own moving vehicles.” These statements were false when I made them, and they continued to be false through November 2010.

After I was sued for trademark infringement, I settled and agreed to remove the words “easy” and “quick” from my internet presence, and Iagreed to make certain payments.

I failed to comply with these terms, and I was held in contempt ofcourt. Additional monetary penalties were added.

I again failed to abide by the terms as ordered, and was again held in contempt of court.

I have been ordered by the court to post this notice to correct my past untrue statements connected with my misuse of the “Quick and Easy Moving” trade name and to ensure that I will comply with the terms of my agreement.

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This order raises the issue of how one wipes a trademark use off of the internet and whether courts will be sympathetic to an enjoined defendant’s argument that they shouldn’t be required to remove all references to a trademark on the internet because they can’t control what’s out there (here the court was not very sympathetic, but that may be due to the defendant’s overall pattern of non-compliance). It’s reminiscent of the Promatek v. Equitrac case, which Professor Goldman blogged about here: “Promatek Redux: Software Consultant Enjoined from Metatag Usage and Other TM References.” It also reminds me of the CertainTeed Corp. v. Seattle Roof Brokers case, where Judge Jones (in a false advertising case) ruled for the plaintiff, and gave the defendant the option of (1) posting the court’s order on defendant’s website or (2) including a disclaimer. (See Mike Atkins’s post on this case: “Shingle Manufacturer Obtains Permanent Injunction, with Compliance Options.”) Rhino Sports v. Sport Court is another similar case, though that case reached a different result.

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Eric’s comments: Promatek v. Equitrac is one of my favorite cases to teach. At the end of the discussion, I ask the innocuous question: “who won this case?” That seems easy: the TM owner got its requested injunction from the district court, and the appellate court upheld the injunction. However, as you’d expect from a law professor, this is a trick question. The correct answer is “the parties’ lawyers” who got cash from their clients. Everyone else appears to get an F in Cyberlaw (and shame on the lawyers for taking the money).

In Promatek, the TM owner asked for an injunction requiring the defendant to publish language very similar to the disclaimer above on its website. In both cases, the disclaimer language contained several keyword references to the TM owner in ways that would be well-indexed by the search engines. Effectively, in this case, the court orders the defendant to stop using the TM on other websites but then ORDERS THE DEFENDANT TO INCLUDE THE SAME TRADEMARKS MULTIPLE TIMES IN FULLY INDEXABLE FASHION ON ITS OWN WEBSITE.

The disclaimer may not be optimally SEOed language, but any SEO is surely amused by this remedy. Now, the court could have ordered this disclaimer to be presented in ways that the search engines wouldn’t read (for example, as an image). The court did provide highly detailed formatting instructions, but these instructions reinforce the indexability:

The text must be encoded to display in Arial or Times New Roman font at a sizeof no less than 10 point font, black on a white background. The text may be directly above or directly below any banner across the top of the page. It must precede all articles, videos, or audio recordings that promote Defendant’s business or deal with the moving services industry. Defendant shall maintain such notice prominently on all websites, articles, videos, or other severable internet or computer content created or owned by or for Defendant and involving the moving services business. Defendant shall also prominently display such notice in any other online postings, articles, or other similar content placed on the sites of others by, for, or with the consent of Defendant. This requirement will continue from December 15, 2010, until December 15, 2011.

Overall, this result is a good cautionary tale for trademark lawyers pursuing corrective advertising remedies: make sure you’ve fully thought through the SEO implications of the corrective advertising you are seeking!

Venkat was also genteel enough not to disparage the plaintiff’s trademark in “EZ Moving and Storage,” but I can’t believe the court gave any credit to that trademark. It seems highly likely the defendant’s behavior had something to do with that.