## Facts

- Jeri-Jo Knitwear, Inc. owned and registered the ENERGIE trademark for apparel in the United States.
- Club Italia, Inc. and related “Sixty” entities held ENERGIE trademark rights for apparel in Italy and other countries and sold apparel abroad under that mark.
- In December 1999, the parties entered a consent judgment in the Southern District of New York enjoining defendants from “advertising or promoting” in the United States apparel bearing the ENERGIE mark.
- After the judgment, defendants operated three websites hosted on servers located in Italy: `misssixty.com`, `sixty.net`, and `energie.it`.
- `energie.it` displayed ENERGIE apparel; `misssixty.com` and `sixty.net` did not display ENERGIE apparel but contained an “ENERGIE” link that directed users to `energie.it`.
- The websites were accessible from the United States despite being hosted abroad.
- Jeri-Jo moved to hold defendants in civil contempt, contending the websites (and the cross-links from `.com`/`.net` domains) constituted prohibited U.S. “advertising or promoting.”
- Defendants proposed adding disclaimers stating ENERGIE products were not available for purchase in the United States and acknowledging Jeri-Jo’s U.S. ownership; Jeri-Jo rejected the proposal.

## Issues

1. Whether operating foreign-hosted websites that display ENERGIE apparel, and linking to that content from `.com` and `.net` sites accessible in the United States, violated the consent judgment’s ban on “advertising or promoting” in the United States.
2. Whether defendants’ conduct met the standard for civil contempt, including whether the injunction was clear and whether defendants lacked reasonable diligence in attempting compliance.
3. What remedial measures, if any, were appropriate to reduce U.S.-directed exposure without improperly burdening defendants’ lawful foreign use of the mark.

## Decision

- The court denied the motion to hold defendants in contempt of the consent judgment.
- The court ordered defendants to remove (delink) the “ENERGIE” links on `misssixty.com` and `sixty.net` that directed users to `energie.it`.
- The court declined to require defendants to delist `energie.it` from search engines.
- The court declined to require password protection or other access restrictions for `energie.it`.
- The court denied Jeri-Jo’s request for forfeiture of defendants’ gross profits.
- The court awarded Jeri-Jo attorney’s fees incurred in bringing the contempt motion.

## Legal Principles

- Civil contempt generally requires a clear and unambiguous order, clear and convincing proof of noncompliance, and a showing that the alleged contemnor did not act with reasonable diligence to comply.
- Trademark rights are territorial; a court assessing contempt for Internet activity may consider the enjoined party’s legitimate rights and lawful commercial activity outside the United States.
- Mere accessibility in the United States of a foreign-hosted website is not automatically treated as prohibited U.S. “advertising or promoting” for contempt purposes; courts may look for features that more directly expose U.S. users.
- Remedies in contempt-related disputes should be tailored; courts may require targeted changes (such as removing U.S.-facing links) while rejecting broader measures that substantially interfere with lawful foreign operations.
- Monetary contempt relief may be limited where the violation is not sufficiently clear; attorney’s fees may still be awarded to compensate a moving party for bringing a nonfrivolous enforcement motion.

## Conclusion

The court declined to impose contempt sanctions based on defendants’ foreign-hosted ENERGIE web content accessible in the United States, but required removal of `.com`/`.net` links pointing to the ENERGIE site, rejected broader technical restrictions and profit forfeiture, and awarded the plaintiff attorney’s fees.


Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., 94 F. Supp. 2d 457 (S.D.N.Y. 2000)