Reprinted with permission from CNET News
So there you are, a reputable company or person, and someone else is using your trademarks to direct Internet users to pornographic Web sites.
You file a lawsuit and rush into court seeking immediate relief. Right?
Actually, not always.
Indeed, before asking for legal relief, it is important to line up all of your legal ducks. Otherwise, your first dealings with a judge can be met with a thud. A recent case bears this out.
In a complaint filed last month in U.S. District Court in San Francisco, Williams-Sonoma claimed that Online Marketing Services and other companies and individuals were using its Pottery Barn trademarks to direct Internet traffic to sites containing explicit pornographic content, none of which was sponsored or endorsed by Williams-Sonoma. The trademarks allegedly were being wrongfully used in search terms such as potterybarnteen, pottery-barn-teens and pottery-barnteen.
Before asking for legal relief, it is important to line up all of your legal ducks.
Immediately after filing its complaint, Williams-Sonoma went into court, seeking a temporary restraining order, primarily with respect to its trademark infringement and dilution claims. Williams-Sonoma sought an injunction barring the defendants from using variants of its Pottery Barn family of trademarks in source code and meta tags that send Internet users to the sexually explicit Web sites.
Williams-Sonoma also sought prevention of the use of the term Pottery Barn or any similar term from appearing on those Web sites. Willams-Sonoma further requested that the defendants be prevented from transferring offending domain names to someone else in an effort to escape judicial dictates.
The federal judge in California who presided over the matter denied the relief requested by Williams-Sonoma, even though the defendants did not appear to oppose the temporary restraining order application. Most importantly, the judge ruled that Williams-Sonoma had failed to make the requisite showing of immediate and irreparable harm needed to obtain the issuance of a temporary restraining order. The judge also found that there was no evidence that the defendants had taken any steps to transfer the subject domains or that they intended to do so in the future.
While it is true that Williams-Sonoma has not lost its case, it did not obtain emergency, injunctive relief at the outset. If they could do it all over again, maybe Williams-Sonoma's lawyers would try a different tack. Obviously, it is much better to obtain a favorable result when first appearing before a judge, so as to avoid problems later on.
Thus, the lesson learned: Before rushing into court requesting relief, make sure that you have taken the care, time and effort to satisfy all of the necessary legal and factual elements. Otherwise, you could be on the losing end and face a long legal road ahead.
Eric J. Sinrod is a partner in the San Francisco office of Duane Morris. His focus includes information technology and intellectual property disputes. To receive his weekly columns, send an e-mail to ejsinrod@duanemorris.com with "Subscribe" in the subject line. The views expressed in this column do not necessarily reflect those of Sinrod's law firm or its individual partners.
This article is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specific facts or circumstances. The description of the results of any specific case or transaction contained herein does not mean or suggest that similar results can or could be obtained in any other matter. Each legal matter should be considered to be unique and subject to varying results. The invitation to contact the authors or attorneys in our firm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.
Duane Morris LLP, among the 100 largest law firms in the world, is a full-service firm of more than 600 lawyers. In addition to legal services, Duane Morris has independent affiliates employing approximately 100 professionals engaged in other disciplines. With offices in major markets, and as part of an international network of independent law firms, Duane Morris represents clients across the United States and around the world.
