UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
THE TAUBMAN COMPANY LIMITED
PARTNERSHIP, Plaintiff,
v. WEBFEATS and HENRY MISHKOFF,
Defendants.
Civil Action No. 01-72987
Honorable Lawrence P. Zatkoff
Magistrate Judge Komives
BRIEF IN SUPPORT OF EXPEDITED MOTION
TO MODIFY PRELIMINARY INJUNCTION
As set forth in Plaintiffs motion, since the entry by this Court of the preliminary
injunction in this case, Defendants have been using numerous additional websites, all
incorporating Plaintiff's marks. All of these sites are being used for purposes of publishing
defamatory and/or confidential/privileged settlement information relating to this case. The
websites still being used are:
- willowbendsucks.com
- willowbendmallsucks.com
- theshopsatwillowbendsucks.com
- taubmansucks.com
- theshopsatwillowbendsucks.com
A representative copy from Defendants" websites is attached to the motion as Exhibit B.
Plaintiff respectfully submits that the preliminary injunction in this case should be
modified to prohibit Defendants' continued use of Plaintiffs marks on any website, specifically
including those listed above. A copy of the proposed modified order is attached to the
accompanying motion as Exhibit C.
Defendants' continued use of these marks, while under injunction, demonstrates contempt
not only for the trademark rights of Plaintiff but for the Court's authority as well. As an enjoined
party, the law imposes on Defendants a higher requirement to avoid Plaintiff's marks than would
be imposed on third parties in general.
It has been held that a trademark infringer "should have its conduct carefully scrutinized in
future use and should not claim the same leniency accorded a good faith user who starts use of
the mark which the enjoined defendant has shifted to." 5 J. McCarthy, Trademarks and Unfair
Competition, §30:21 (2001). Under what has come to be known as the "safe distance rule," the
District Court has broad discretion to require a defendant to keep a "safe distance" away from
plaintiff's marks. As the court held in Sunbeam Prods, Inc. v. West Bend Co., 123 F.3d 246, 44
U.S.P.Q.2d 1161 (5th Cir. 1997), "the safe distance rule permits the court to issue injunctions that
sweep even more broadly than the Lanham Act would permit against a manufacturer who has not
already been found liable for trademark infringement."
As the Sixth Circuit has held, permitting a proven infringer to continue business with a
slight change in its mark, "is to make the decree futile and to disparage the power of the court to
give relief against trade larceny." Broderick & Bascom Rope Co. v. Manoff, 41 F.2d 353, 354, 6
U.S.P.Q. 8 (6th Cir. 1930), cited in 5 McCarthy at §30:21. In Taylor Wine Co. v. Bully Hill
Vineyards Inc., 208 U.S.P.Q. 80 (W.D.N.Y. 1979) the court found defendant liable for contempt
where the court found that defendant's actions amounted to ignoring or mocking the court's
orders, and to "derid[ing] the actions of the court."
Plaintiff respectfully submits that, as infringers, Defendants have no right to continue to
operate any website identified in any way with the Willow Bend Mall, or with Plaintiff. Having
required Plaintiff to obtain injunctive relief to stop the infringement, Defendants are now held to
the higher "safe distance" standard, requiring them to avoid all uses of Plaintiffs marks.
Plaintiff urges this Court to modify the injunction to expressly require that these additional
websites be shut down, as set forth in the proposed order of Exhibit C.
Respectfully submitted,
Julie A. Greenberg (P38299)
GIFFORD, KRASS, GROH, SPRINKLE,
ANDERSON & CITKOWSKI, P.C.
280 N. Old Woodward Ave., Suite 400
Birmingham, Michigan 48009
(248)647-6000
Attorneys for Plaintiff
Dated: October 16, 2001
