So there you are - a reputable company or person, and someone else is using your trademarks to direct Internet users to graphic pornographic Web sites. You file a lawsuit and rush into court seeking immediate relief, right?
Actually, no - not always. Indeed, it is important to line up all of your legal ducks before asking for legal relief - otherwise, your first dealings with a judge can meet with a thundering thud. A recent case example bears this out.
In a complaint filed last month, Williams-Sonoma, Inc. claimed that Online Marketing Services Ltd. and other companies and individuals were using Pottery Barn trademarks to direct Internet traffic to contain explicit pornographic content, none of which was related to, sponsored or endorsed by Williams-Sonoma. The trademarks allegedly were being wrongfully used in search terms such as gotterybarnteens, potterybarnteen, pottery-barn-teens and pottery-barnteen.
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 metatags which send Internet users to the sexually explicit Web sites.
Williams-Sonoma also sought prevention of the use of the term Potterybarteen 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.
Williams-Sonoma has not lost its case - it simply did not obtain emergency, injunctive relief at the outset of its case. Still, it is much better to obtain a favorable result when first appearing before a judge in a case, so as to avoid causing downward momentum that can continue in a case.
Thus, the lesson learned is that even if certain conduct is taking place on the Internet that gives rise to legal causes of action in your favor, before rushing into court requesting the relief you really need, you must make sure that you have taken the care, time and effort to satisfy all of the legal and factual elements necessary to obtain the relief at that time. Otherwise, you could be on the losing end and could face a long legal road ahead in a case.
Eric Sinrod is a partner in the San Francisco office of Duane Morris LLP where he focuses on litigation matters of various types, including information technology and intellectual property disputes. His Web site is http://www.sinrodlaw.com and he can be reached at [email protected]. To receive a weekly email link to Mr. Sinrod's columns, please send an email to him with Subscribe in the Subject line.
This column is prepared and published for informational purposes only and should not be construed as legal advice. The views expressed in this column are those of the author and do not necessarily reflect the views of the author's law firm or its individual partners.