Perspective: Rushing into court has its consequences

perspective 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.

Biography
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 [e-mail] with "Subscribe" in the subject line. This column is prepared and published for informational purposes only, and it 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.

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Fundamental

Maybe Pottery Barn's lawyers are overworked (and inattentive). This is fundamental law school Remedies class. The article does not mention this but, on an even more fundamental level, did Pottery Barn first contact the offending websites/service providers about the conflict? As I understand it, court resources are scarce and they do not look kindly on having them wasted when all other reasonable avenues for conflict resolution have not been exhausted before arriving on the courthouse steps.