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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Nettis Environmental Ltd. v. IWI, Inc.

46 F. Supp. 2d 722 (N.D. Ohio, April 14, 1999)

Plaintiff Nettis Environmental Ltd. ("Nettis") and defendant IWI, Inc. ("IWI") are competitors that each aid their customers in resolving "in-plant ventilation problems." Defendant IWI created a web site to advertise its services. Defendant IWI included the name of plaintiff's company, Nettis, in meta tags contained on its site.

IWI also registered its web site with over 500 search engines. As part of this process, IWI provided the search engines with the terms "Nettis" and "Nettis Environmental" as "search engine" key words. As a result, surfers using the term "Nettis" in a search would be directed by the search engine to IWI's site (as well as many others).

Upon discovering IWI's use of its name in the meta tags found on defendant's site, plaintiff brought suit, claiming such activity violated 15 U.S.C. §1125. Defendants promptly consented to the entry of both a temporary restraining order and preliminary injunction (the "Orders"). These orders prohibited defendants from using the "Nettis" name in the meta tags on defendant IWI's site, "in connection with the advertising or promotion of [defendant IWI's] goods, services or web site" or in such a way that might lead consumers to believe that defendant's services were authorized, sponsored or connected with plaintiff.

Upon entry of these orders, defendants promptly took steps to remove the offending meta tags from the IWI web site. To this end, defendant IWI directed its computer consultant to remove the "Nettis" meta tags, which was accomplished some four days later.

Defendants did not, however, take any additional steps to remove "Nettis" from the list of key words associated with its web site by search engines. Instead, defendants relied on the advice of their computer consultant that such key words would automatically be delisted when the search engines updated their listing of the IWI site, and discovered that those terms were no longer found in IWI's meta tags. This, defendants were advised, would occur within days of their removal as meta tags. Unfortunately, this advice was not entirely correct.

Some two months after the Orders were issued by the Court, plaintiff discovered that defendant IWI's site still appeared on the search results produced by six search engines when the term "Nettis" was used in the search. Plaintiff thereafter sought to hold defendants in contempt of court for violating the Orders.

Upon receipt of this motion, defendant IWI immediately pulled its web site off the Internet, and, via e-mail, instructed each search engine to whom its site had been submitted to deregister it, so as to end all association between plaintiff Nettis and the site.

In determining whether a defendant is guilty of civil contempt, the court analyzes the steps taken by the defendant to comply with the court's order under an objective, not subjective standard. Thus, the court does not look at whether the defendant, subjectively and in good faith, believed its actions were sufficient to ensure compliance with the court's order. Rather, it measures defendants' conduct against that which a "reasonable man" would undertake to ensure compliance. Said the court:

The test for determining when an order has been violated is not a subjective good faith standard, but rather an objective standard which asks whether the alleged contemnor has "failed to take 'all reasonable steps within [its] power to comply with the court's order.'"
(Citation omitted)

Intent is not an element of the showing needed to establish contempt:

There is no requirement of willfulness to establish civil contempt, and "the intent of a party to disobey a court order is 'irrelevant to the validity of [a] contempt finding.'
(Citation omitted).

The court held that defendants' efforts to remove the meta tags from the IWI web site represented a good faith effort at compliance with the court's order sufficient to avoid contempt.

Defendants' efforts in connection with the search engines were not sufficient, however. Reliance on the advice of its computer consultant, that the association between the key word "Nettis" and defendant IWI's site would be eliminated when those search engines automatically updated their sites, without more, was inadequate.

A reasonable person under court orders would, however, at least check to make certain compliance had occurred. IWI did not. ... Not only would a reasonable person check whether the search engines had automatically been updated, but also would have taken affirmative action to "undo" the registrations.

As a sanction for the violation of its orders, the court awarded plaintiff the attorneys' fees incurred in making its contempt motion. It also directed defendants to keep the IWI web site inaccessible from the URL listed with the search engines during the pendency of the lawsuit (or pending further order of the Court). Defendants were granted permission to operate the web site at a different URL.

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