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Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc.

District Court, S.D. New York
939 F.Supp. 1032 (1996)
ELI5:

Rule of Law:

A party violates a U.S. injunction against distributing a product in the United States when it operates a website from a foreign server that actively solicits and sells paid subscriptions for that product to U.S. residents. An injunction's scope can extend to new technologies not contemplated at the time of its issuance if the new activity falls within the injunction's original purpose.


Facts:

  • Since 1967, Tattilo Editrice, S.p.A. ('Tattilo'), an Italian corporation, has published a male sophisticate magazine in Italy under the name 'PLAYMEN'.
  • In 1979, Tattilo announced its intention to publish an English-language version of PLAYMEN in the United States.
  • In January 1996, Playboy Enterprises, Inc. ('PEI') discovered that Tattilo had created a website operating from a server in Italy under the domain 'playmen.it'.
  • The website prominently featured the 'PLAYMEN' name and logo and offered sexually explicit images from the magazine.
  • The website offered two services: a free 'PLAYMEN Lite' and a paid subscription service, 'PLAYMEN Pro'.
  • To subscribe to PLAYMEN Pro, users, including those in the United States, were required to fill out a form and fax it to Tattilo in Italy.
  • Upon payment, Tattilo would email a unique password and login name to the user, granting them access to the service.

Procedural Posture:

  • In 1979, Playboy Enterprises, Inc. ('PEI') sued Tattilo Editrice, S.p.A. ('Tattilo') in the United States District Court for the Southern District of New York for trademark infringement and related claims.
  • On June 26, 1981, the district court entered a final judgment and permanent injunction against Tattilo, prohibiting it from, among other things, distributing or selling an English-language male sophisticate magazine titled 'PLAYMEN' in the United States.
  • In 1996, PEI filed a motion in the same district court asking the court to hold Tattilo in contempt for violating the 1981 injunction.

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Issue:

Does an Italian company violate a 1981 U.S. injunction against 'distributing or selling' a magazine in the United States by operating a website on an Italian server that actively solicits and sells subscriptions to U.S. residents?


Opinions:

Majority - Scheindlin, District Judge

Yes, Tattilo violated the injunction. An injunction’s applicability extends to new technologies that fall within its prohibitive purpose, and by actively soliciting and selling subscriptions to U.S. residents over the internet, Tattilo was 'distributing' its product within the United States. The court reasoned that the injunction's failure to specifically mention the internet, a technology not widely available in its current form in 1981, did not limit its scope. The purpose of the injunction was to prevent Tattilo from distributing its infringing product in the U.S. Allowing Tattilo to do so via the internet would 'emasculate the Injunction.' The court found that Tattilo's actions met the three conditions for a violation: it used the 'PLAYMEN' name as a commercial designation, the website constituted an 'English language publication and related product,' and the process of accepting subscription forms from and sending passwords to U.S. customers constituted a sale and distribution 'in the United States.' The court rejected Tattilo's argument that users were merely 'transporting' themselves to Italy, holding instead that Tattilo was actively reaching into the U.S. to do business.



Analysis:

This case is a foundational decision in cyberlaw, establishing that activities conducted on the internet from a foreign country can be subject to the jurisdiction and enforcement of U.S. courts if those activities are purposefully directed at U.S. residents. It affirmed that courts will interpret the purpose of existing injunctions broadly to cover new technologies, preventing parties from using technological advances to circumvent court orders. The ruling set a significant precedent for applying national trademark and intellectual property laws to the borderless environment of the internet, influencing how future cases would analyze online distribution and personal jurisdiction.

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