## Facts

- Playboy Enterprises, Inc. published the adult magazine PLAYBOY and sued to stop use of the similar mark PLAYMEN in the United States.
- In 1981, the federal court entered an injunction barring Tattilo Editrice, S.p.A. from publishing, printing, distributing, or selling in the United States an English-language “male sophisticate” magazine under the name PLAYMEN.
- In the mid-1990s, Tattilo operated a PLAYMEN-branded website from Italy offering free content (“PLAYMEN Lite”) and paid subscriptions (“PLAYMEN Pro”) with explicit images.
- The website was accessible in the United States, and U.S. residents could purchase subscriptions, receive usernames and passwords, and obtain access to the content.
- Playboy moved for civil contempt, alleging the website amounted to distributing and selling PLAYMEN in the United States in violation of the 1981 injunction.

## Issues

1. Whether operating a foreign-based, PLAYMEN-branded website that is accessible to and used by U.S. customers constitutes “publishing, printing, distributing or selling in the United States” an English-language male sophisticate magazine under the 1981 injunction.
2. Whether the injunction could be applied to Internet distribution even though the injunction predated modern commercial Internet use.
3. Whether the court retained jurisdiction to enforce the 1981 injunction through contempt proceedings against Tattilo’s online conduct.

## Decision

- The court held that Tattilo’s operation of the PLAYMEN website violated the 1981 injunction and granted Playboy’s motion for civil contempt.
- The court ordered Tattilo, within two weeks, to either shut down the site or stop accepting new subscriptions from U.S. residents and to deny future subscription requests from U.S. customers.
- The court ordered Tattilo to invalidate access credentials previously sold to U.S. customers and to refund the unused portions of their subscriptions.
- The court ordered Tattilo to remit to Playboy all gross profits earned from U.S. subscriptions to PLAYMEN Pro and from goods and services sold to U.S. customers through advertising on the site.
- The court awarded Playboy its costs and attorney’s fees incurred in bringing the contempt motion.
- The court imposed a coercive sanction of $1,000 per day for noncompliance after the two-week deadline.

## Legal Principles

- An injunction aimed at preventing distribution and sale of infringing goods in the United States may apply to later-developed distribution technologies if the defendant’s conduct is functionally equivalent to the prohibited activity.
- Internet delivery of paid content to U.S. users, when coupled with transactions for subscriptions and provision of access credentials, can constitute distribution and sale “in the United States” for purposes of enforcing a territorial injunction.
- Active solicitation and servicing of U.S. customers through an interactive website supports treating the conduct as occurring within the enjoined territory.
- A court retains continuing jurisdiction to enforce its prior injunction through civil contempt when the defendant’s later conduct continues the prohibited conduct in a new medium.
- Civil contempt remedies may include coercive compliance measures, disgorgement of gross profits tied to the violation, and an award of fees and costs to the moving party.

## Conclusion

The court enforced a pre-Internet trademark injunction against online distribution, finding that a foreign publisher’s interactive website that solicited and served U.S. subscribers amounted to prohibited U.S. distribution and sale under the enjoined mark, warranting civil contempt sanctions and disgorgement.


Playboy Enters., Inc. v. Chuckleberry Publ’g, Inc., 939 F. Supp. 1032 (S.D.N.Y. 1996)