Planetary Motion, Inc., Plaintiff-counter- Defendant-appellee, v. Techplosion, Inc., Michael Gay A.k.a. Michael Carson, Defendants-counter-claimants-appellants, 261 F.3d 1188 (11th Cir. 2001)

Planetary Motion, Inc. ("Planetary Motion" or "Appellee") sued Techsplosion, Inc. and Michael Gay a/k/a Michael Carson (respectively "Techsplosion" and "Carson"; collectively "Appellants") for infringement and dilution of an unregistered trademark under Section 43(a) and (c) of the Federal Trademark Act, 15 U.S.C. § 1051 et seq. (1994) ("Lanham Act"), and for violation of Florida's unfair competition law. Fla. Stat. Ann. § 495.151 (West 2000). Finding that Planetary Motion had established priority of use and a likelihood of confusion, the United States District Court for the Southern District of Florida entered summary judgment in favor of Planetary Motion.We affirm the judgment and vacate the award of attorney fees.

Facts

I. Development and Distribution of the "Coolmail" Software

In late 1994, Byron Darrah ("Darrah") developed a UNIX-based program (the "Software") that provides e-mail users with notice of new e-mail and serves as a gateway to the users' e-mail application. On December 31, 1994, Darrah distributed the Software over the Internet by posting it on a UNIX user site called "Sunsite," from which it could be downloaded for free. Darrah had named the Software "Coolmail" and this designation appeared on the announcement sent to the end-users on Sunsite as well as on the Software user-manual, both of which accompanied the release.

The Software was distributed without charge to users pursuant to a GNU General Public License that also accompanied the release. A GNU General Public License allows users to copy, distribute and/or modify the Software under certain restrictions, e.g., users modifying licensed files must carry "prominent notices" stating that the user changed the files and the date of any change. After the release of the Software, Darrah received correspondence from users referencing the "Coolmail" mark and in some cases suggesting improvements. In 1995, Darrah released two subsequent versions of the Software under the same mark and also pursuant to the GNU General Public License.

In early 1995, a German company named S.u.S.E. GmbH sought permission from Darrah to include the Software in a CD-ROM package sold as a compilation of Unix-based programs. Darrah consented and, pursuant to the GNU licensing agreement, S.u.S.E. distributed the Software in its compilation product and in subsequent versions thereof. S.u.S.E. sold and continues to sell the software compilation in stores in the United States and abroad, as well as over the Internet.

II. Launch of Techsplosion's "CoolMail" E-mail Service

In 1998, Appellant Carson formed Techsplosion, for the purpose of operating a business based on an e-mail service that he had developed. On April 16, 1998, Techsplosion began offering the e-mail service on the Internet under the mark "CoolMail." Two days later, Techsplosion activated the domain name "coolmail.to" Techsplosion delivered an e-mail solicitation under the "CoolMail" mark to approximately 11,000 members of the Paramount Banner Network, an Internet advertising network, also created and operated by Carson. Techsplosion charged no fee to subscribe to the service and generated revenues through the sale of banner advertisements on its web site.

III. Planetary Motion's E-mail Service & Application for Trademark Registration

Appellee Planetary Motion is a computer software and telecommunications company that developed and owns an electronic mail service called "Coolmail." As part of its service, Planetary Motion enables a person to check e-mail via telephone without logging onto a computer. On April 24, 1998, Planetary Motion filed three intent-to-use applications to register the mark "Coolmail" with the United States Patent and Trademark Office. Though Planetary Motion was aware that Darrah's Software also bore the mark "Coolmail," it represented in its applications that it was not aware of any mark upon which its proposed registered mark would infringe. Planetary Motion launched its Coolmail e-mail service to subscribers on June 8, 1998.

IV. Planetary Motion's Complaint and Subsequent Acquisition of Darrah's Rights

On April 22, 1999, Planetary Motion filed a complaint against Techsplosion. In the complaint, Planetary Motion alleged infringement of the alleged mark "Coolmail" for use in connection with e-mail services. Planetary alleged federal trademark infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as injury to business reputation and dilution under Florida Statute § 495.151.

On June 10, 1999, Techsplosion filed an Answer, Affirmative Defenses, and Counterclaims. The counterclaims alleged infringement of the mark "Coolmail" for use in connection with e-mail services. Techsplosion alleged unfair competition, false designation, description, and representation under the Lanham Act, common trademark infringement, common law unfair competition, and injury to business reputation and dilution.

In July of 1999, Planetary Motion purchased from Darrah all rights, title, and interest to the Software including all copyrights, trademarks, patents and other intellectual property rights.¹  On August 31, 1999, Planetary filed an Amended Verified Complaint, adding a claim for dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and alleging violation of trademark rights assigned from Darrah.

V. Disposition of Planetary Motion's Complaint

On January 31, 2000, the district court entered an Order granting Planetary Motion's motion for summary judgment and denying Carson's and Techsplosion's motion for summary judgment. The district court based the Order on two findings: (1) that the alleged mark was affixed to Darrah's software, and that Darrah's distribution of the software over the Internet constituted a "transport in commerce," resulting in the creation of trademark rights and priority, and (2) there was a likelihood of confusion because the marks "are essentially the same." The district court did not reach the issue of whether Techsplosion's use of "CoolMail" in connection with its e-mail service diluted Planetary Motion's mark.

On the same date, the district court entered final judgment granting Planetary Motion permanent injunctive relief. See 15 U.S.C. § 1116. The order also awarded Planetary Motion profits and damages, as well as attorney fees and costs, pursuant to section 35 of the Lanham Act, 15 U.S.C. § 1117. The district court requested a report and recommendation from a magistrate judge fixing the amounts to be awarded.

A Notice of Appeal was filed on February 15, 2000. On February 15, 2000, Techsplosion filed an Emergency Motion to Stay Pending Appeal, reasserting that Darrah never established any rights in the alleged mark. This motion was denied on February 17, 2000.

On May 9, 2000 the magistrate judge entered his report recommending that Planetary Motion be awarded $275,508 in attorneys' fees and $6,562.34 in costs, but that its request for damages be denied for lack of specificity. Techsplosion served its appeal brief on May 22, 2000. On June 9, 2000, the district court entered an order adopting the report and recommendation in its entirety. On July 7, 2000, Techsplosionfiled a Notice of Appeal from the order adopting the magistrate judge's report and recommendation.² 

Standard of Review

Review of a district court's grant of summary judgment is de novo, with all facts and reasonable inferences therefrom reviewed in the light most favorable to the non-moving party. Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999).

Discussion

Section 43(a) of the Lanham Act forbids unfair trade practices involving infringement of trade dress, service marks, or trademarks, even in the absence of federal trademark registration.³  Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Section 43(a) is remedial in nature and should be interpreted and applied broadly so as to effectuate its remedial purpose. Montgomery v. Noga, 168 F.3d 1282, 1300 & n. 29 (11th Cir. 1999) (citing Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir. 1981)). To prevail under this section, a claimant must show (1) that it had prior rights to the mark at issue and (2) that the defendant had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.⁴  Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir. 1997) (citing Conagra Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir. 1984)), modified, 122 F.3d 1379 (1997). Appellants argue that the district court erred in finding that Planetary Motion had established both elements. Appellants also dispute the scope of injunctive relief, as well as the award of attorney fees and costs.

Under common law, trademark ownership rights are "appropriated only through actual prior use in commerce." Tally-Ho, Inc. v. Coast Cmty College Dist., 889 F.2d 1018, 1022 (11th Cir. 1989) (citation omitted). Under the Lanham Act,⁵  the term "use in commerce" isdefined in relevant part as follows:

the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . [A] mark shall be deemed to be in use in commerce . . . on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce . . . .

15 U.S.C. § 1127.⁶  The district court found that because the statute is written in the disjunctive (i.e., "sale or transport"), Darrah's wide distribution of the Coolmail software over the Internet, even absent any sales thereof, was sufficient to establish ownership rights in the "CoolMail" mark. Appellants contend that "transport in commerce" alone -- here, Darrah's free distribution of software over the Internet "with no existing business, no intent to form a business, and no sale under the mark" -- is insufficient to create trademark rights. Appellants' Brief at 13. Appellants' argument lacks merit.

The parties do not make clear the two different contexts in which the phrase "use in commerce" is used. The term "use in commerce" as used in the Lanham Act "denotes Congress's authority under the Commerce Clause rather than an intent to limit the [Lanham] Act's application to profit making activity." United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92-93 (2d Cir. 1997) (citation omitted), cert. denied, 523 U.S. 1076 (1998); U.S. Const., Art. I, § 8, cl. 3. Because Congress's authority under the Commerce Clause extends to activity that "substantially affects" interstate commerce, United States v. Lopez, 514 U.S. 549, 559 (1995), the Lanham Act's definition of "commerce" is concomitantly broad in scope: "all commerce which may lawfully be regulated by Congress." 15 U.S.C. § 1127. See also Steele v. Bulova Watch Co., 344 U.S. 280, 283-84 (1952); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 666 (Fed. Cir.) (allowing registration for an intrastate provider of restaurant services with an undefined interstate clientele), cert. denied, 502 U.S. 823 (1991). The distribution of the Software for end-users over the Internet satisfiesthe "use in commerce" jurisdictional predicate. See, e.g., Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1434 (S.D.N.Y. 1997) ("The nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's 'in commerce' requirement."), aff'd, 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998).

Nevertheless, the use of a mark in commerce also must be sufficient to establish ownership rights for a plaintiff to recover against subsequent users under section 43(a). See New England Duplicating Co. v. Mendes, 190 F.2d 415, 417-18 (1st Cir. 1951) (after finding "use in commerce" jurisdiction predicate satisfied, court noted that " [t]he question remains whether the plaintiff has established that he was the 'owner' of the mark, for under [15 U.S.C. § 1051] only the 'owner' of a mark is entitled to have it registered."). The court in Mendes set forth a two part test to determine whether a party has established "prior use" of a mark sufficient to establish ownership:

[E]vidence showing, first, adoption,⁷  and, second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales.⁸ 

Id. at 418. See also New West, 595 F.2d at 1200.⁹ 

Courts generally must inquire into the activities surrounding the prior use of the mark to determine whether such an association or notice is present. See, e.g., Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999) ("The determination of whether a party has established protectable rights in a trademark is made on a case by case basis, considering the totality of the circumstances."), cert. denied, 528 U.S. 1188 (2000). Under the "totality of circumstances" analysis, a party may establish "use in commerce" even in the absence of sales. " [A]lthough evidence of sales is highly persuasive, the question of use adequate to establish appropriation remains one to be decided on the facts of each case . . . ." New West, 595 F.2d at 1200 (quoting Mendes, 190 F.2d at 418). The court in New West recognized that "mere advertising by itself may not establish priority of use," but found that promotional mailings coupled with advertiser and distributor solicitations met the Mendes "public identification" ownershiprequirement. Id. at 1200. Thus, contrary to Appellants' assertions, the existence of sales or lack thereof does not by itself determine whether a user of a mark has established ownership rights therein.¹⁰  Compare Marvel Comics Ltd. v. Defiant, 837 F. Supp. 546, 549 (S.D.N.Y. 1993) (finding announcement of "Plasmer" title to 13 million comic book readers and promotion at annual trade convention sufficient to establish trademark ownership rights, notwithstanding lack of any sales) with Warnervision Entm't Inc. v. Empire of Carolina Inc., 915 F. Supp. 639, 645-46 (S.D.N.Y.) (finding toy manufacturer's promotional efforts insufficient to establish priority of use where only a few presentations were made to industry buyers, even though one resulted in a sale to a major toy retailer), aff'd in part, vacated in part, 101 F.3d 259 (2d Cir. 1996).¹¹ 

Similarly, not every transport of a good is sufficient to establish ownership rights in a mark. To warrant protection, use of a mark "need not have gained wide public recognition," but " [s]ecret, undisclosed internal shipments are generally inadequate." Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975).¹²  In general, uses that are de minimis may not establish trademark ownership rights. See, e.g., Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1772-73 (Trademark Tr. & App. Bd. 1994) (finding no bona fide use in ordinary course of trade where mark was affixed to a game consisting of three pieces of paper and distributed for the purpose of promoting musical group).

We find that, under these principles, Darrah's activities under the "Coolmail" mark constitute a "use in commerce" sufficiently public to create ownership rights in the mark. First, the distribution was widespread, and there is evidence that members of the targeted public actually associated the mark Coolmail with the Software to which it was affixed. Darrah made the software available not merely to a discrete or select group (such as friends and acquaintances, or at a trade show with limited attendance), but to numerous end-users via the Internet. The Software was posted under a filename bearing the "Coolmail" mark on a site accessible to anyone who had access to the Internet. End-users communicated with Darrah regarding the Software by referencing the "Coolmail" mark in their e-mails. Appellants argue that only technically-skilled UNIX-users made use of the Software, but there is no evidence that they were so few innumber to warrant a finding of de minimis use.

Third, the mark served to identify the source of the Software. The "Coolmail" mark appeared in the subject field and in the text of the announcement accompanying each release of the Software, thereby distinguishing the Software from other programs that might perform similar functions available on the Internet or sold in software compilations.¹³  The announcements also apparently indicated that Darrah was the "Author/Maintainer of Coolmail" and included his e-mail address. The user manual also indicated that the Software was named "Coolmail."¹⁴  The German company S.u.S.E. was able to locate Darrah in order to request permission to use his Software in its product under the mark "Coolmail." Appellants do not assert that S.u.S.E. was unaware that the Software was called "Coolmail" when it contacted Darrah.

Fourth, other potential users of the mark had notice that the mark was in use in connection with Darrah's Software. In investigating whether the mark Coolmail existed before submitting its trademark registration application for its e-mail service, Planetary Motion was able to discover that Darrah was using the mark to designate his Software product.

Fifth, the Software was incorporated into several versions of a product that was in fact sold worldwide and specifically attributed ownership of the Software to Darrah under the "Coolmail" mark. Any individual using the S.u.S.E. product, or competitor of S.u.S.E., that wanted to know the source of the program that performed the e-mail notification function, could do so by referring to the user manual accompanying the product.¹⁵  There is no support for the argument that for a trademark in software to be valid, the mark must appear on the box containing the product incorporating it, that the mark must be displayed on the screen when the program is running, or that the software bearing the mark be a selling point for the product into which it is incorporated. There is no requirement that the public come to associate a mark with a product in any particular way or that the public bepassive viewers of a mark for a sufficient public association to arise.

Sixth, software is commonly distributed without charge under a GNU General Public License. The sufficiency of use should be determined according to the customary practices of a particular industry. See S. Rep. 100-515 at 44 (1988) ("The committee intends that the revised definition of 'use in commerce' [see note 13, supra] be interpreted to mean commercial use which is typical in a particular industry.") (emphasis added). That the Software had been distributed pursuant to a GNU General Public License does not defeat trademark ownership, nor does this in any way compel a finding that Darrah abandoned his rights in trademark. Appellants misconstrue the function of a GNU General Public License. Software distributed pursuant to such a license is not necessarily ceded to the public domain and the licensor purports to retain ownership rights, which may or may not include rights to a mark.¹⁶ 

Appellants cite Heinemann v. General Motors Corp., 342 F. Supp. 203 (N.D. Ill. 1972), aff'd, 478 F.2d 1405 (7th Cir. 1973), for the proposition that Darrah was a "hobbyist" unworthy of common law trademark protection. Heinemann is factually distinguishable from the case at hand. The plaintiff in Heinemann used a mark in connection with his automobile before an automobile manufacturer independently had adopted the same name for a new model. The court held that the plaintiff had not established common law ownership rights based on two findings. First, the court found that because Heinemann's purpose in using the mark was to "open [at a later date] an automobile equipment shop which would have capitalized upon the slogan," he merely attempted to "reserve a trade or service mark pending the creation of a trade or business . . . ." 342 F. Supp. at 207. The court reasoned as follows:

While the law does not require a nationwide business; an old, established business; or even a profitable business for the acquisition of property interests in trade or service marks, it does require a presently existing trade or business for such acquisition. The exhibits disclose that Plaintiff had only a desire to open a business in futuro. To hold otherwise would make a trade mark a property right in gross, instead of a right appurtenant.

Id. (emphasis in original). The Heinemann court also found that plaintiff Heinemann's activities consisted merely of occasionally racing or displaying the automobile at fairs as a hobby, as evidenced by his testimony that he was employed at an oil company. Id. Here, Darrah did not attempt to "warehouse" the mark by promoting a product he merely intended to develop and distribute at a later date. Darrah's use of the mark to designate the distributed Software and each subsequent version thereof indicates that his use was not mere sporadic or token use.¹⁷  Furthermore,unlike Heinemann, Darrah activities pertained to his chosen profession. Darrah is employed as a computer systems administrator, which entails the management and oversight of computer networks and systems as well as the development of software in support thereof.

Appellants also rely on DeCosta v. Columbia Broad. Sys., Inc., 520 F.2d 499, 513 (1st Cir. 1975), cert. denied, 423 U.S. 1073 (1976), to argue that Darrah is an eleemosynary individual and therefore unworthy of protection under unfair competition laws. The DeCosta court did not hold that the that the absence of a profit-oriented enterprise renders one an eleemosynary individual, nor did it hold that such individuals categorically are denied protection. Rather, the DeCosta court expressed "misgivings" of extending common law unfair competition protection, clearly available to eleemosynary organizations, to eleemosynary individuals.¹⁸  Id. The court's reluctance to extend protection to eleemosynary individuals was based on an apparent difficulty in establishing a line of demarcation between those eleemosynary individuals engaged in commerce and those that are not. But as the sufficiency of use to establish trademark ownership is inherently fact-driven, the court need not have based its decision on such a consideration. Mendes, 190 F.2d at 418. Common law unfair competition protection extends to non-profit organizations because they nonetheless engage in competition with other organizations.¹⁹  See Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., 683 F. Supp. 50 (S.D.N.Y. 1988), aff'd, 859 F.2d 148 (2d Cir.). Thus, an eleemosynary individual that uses a mark in connection with a good or service may nonetheless acquire ownership rights in the mark if there is sufficient evidence of competitive activity.²⁰ 

Here, Darrah's activities bear elements of competition, notwithstanding his lack of an immediate profit-motive. By developing and distributing software under a particular mark, and taking steps to avoid ceding the Software to the public domain, Darrah made efforts to retain ownership rights in his Software and to ensure that his Software would be distinguishable from other developers who may have distributed similar or related Software. R2-47-Exh. 3 at 67. Competitive activity need not be fueled solely by a desire for direct monetary gain. Darrah derived value from the distribution because he was able to improve his Software based on suggestions sent by end-users. Just as any other consumers, these end-users discriminate among and share information on available software. It is logical that as the Software improved, more end-users used his Software, thereby increasing Darrah's recognition in his profession and the likelihood that the Software would be improved even further.

In light of the foregoing, the use of the mark in connection with the Software constitutes significant and substantial public exposure of a mark sufficient to have created an association in the mind of public.

The district court supported its determination of "likelihood of confusion" with the following findings: (1) the mark used by Planetary Motion ("Coolmail") is "essentially the same" as that used by Techsplosion ("CoolMail")²¹  ; (2) both marks are used in connection with e-mail services; (3) both plaintiff and defendants serve e-mail customers via the Internet; and (4) both use the Internet to promote their services. R2-62-7.²²  Appellants do not dispute the accuracy of these findings. Rather, Appellants claim the district court improperly based its analysis on a comparison of the parties' respective e-mail services, rather than on a comparison of Techsplosion's "CoolMail" e-mail service to the "Coolmail" Software. Appellants argue that the latter comparison is requiredbecause Planetary Motion acquired its rights to the "Coolmail" mark by assignment of rights in Darrah's Software, and under the "natural expansion" doctrine this is a use unrelated to Planetary Motion's current use of e-mail services. Thus, Appellants' argument in essence goes to whether the scope of trademark protection enjoyed by Planetary Motion extends from the initial use (in connection with the Software) to the current use (in connection with Planetary Motion's e-mail services).

The scope of protection enjoyed by a trademark owner is not restricted to the owner's original use. The "natural expansion" doctrine is applied to determine the proper scope of protection where a mark owner's previous use differs from its current use, and the junior use intervenes. Under this doctrine, the first trademark owner's rights are limited to goods on which the mark has already been used or that lie within the realm of natural expansion; " [t]his appears to be no more than a specific application of the familiar 'related goods' test." J. McCarthy, § 24:20.²³  See also Carnival, 187 F.3d at 1310-11.

The court in Tally-Ho explained that a senior user's rights "may extend into uses in 'related' product or service markets (termed the 'related goods doctrine')," and that "an owner of a common law trademark may use its mark on related products or services and may enjoin a junior user's use of the mark on such related uses . . . ." 889 F.2d at 1023 (citing J. Mc.Carthy, § 24:1 to 24:12). This rule is limited by equitable considerations. The court in Carnival noted that " [A] trademark owner cannot by the normal expansion of its business extend the use or registration of its mark to distinctly different goods or services not comprehended by its previous use . . . where the result could be a conflict with valuable intervening rights established by another through extensive use . . . of the same or similar mark for like or similar goods and services." 187 F.3d at 1310-11 (citations and internal quotation marks omitted) (emphasis added).

Courts determine the proper scope of protection of a mark in the context of intervening uses by applying the "source or sponsorship" test. Under this test, a trademark owner has "protection against use of its mark on any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner." J. McCarthy, § 24:6. The public perception in this regard is determined at the time the junior user first used the mark on the product or service to which the allegedly infringing mark is affixed.²⁴  Carnival, 187 F.3d at 1312. The court in Tally-Ho explainedthat "related use" is "merely a facet of the likelihood of confusion test and therefore requires an inquiry into [the] seven factors affecting the likelihood of confusion . . . ."²⁵  889 F.2d at 1027.

We find that the relatedness between e-mail notification software and a service that allows users to check e-mail via telephone line is not so attenuated that the district court mistakenly failed to limit Planetary Motion's rights in the mark to its use in connection with the Software. Consumers reasonably could attribute the Software and an e-mail service under the same name to the same source for several reasons.²⁶  Both the Software and the e-mail service belong to the same general field of commerce, i.e., information technology, and both deal more specifically with e-mail.²⁷  Appellants do not dispute Planetary Motion's contention that major firms in this field sell e-mail software as well as provide e-mail service.²⁸  See Darrah Affidavit, R2-46-Exh. 2 at ¶ 34. Both the Software and the e-mail service involve sending messages over the Internet: the former provides a functionality that enables a user with e-mail capability to receive notification of new mail, and the latter enables subscribers to the service to send and receive e-mail. Both the Software and the e-mail service were promoted over the Internet to those who make use of e-mail.

Furthermore, the equities do not necessarily favor Techsplosion.²⁹  Techsplosion's"CoolMail" e-mail service had not been in operation for an extended period of time before Planetary Motion entered the market under the name "Coolmail," and Planetary Motion is not merely attempting to reserve the mark for a future business endeavor. Accordingly, we sustain the district court's finding of "likelihood of confusion."

Review of the district court's award of injunctive relief, attorney's fees and costs is for abuse of discretion. See Burger King Corp. v. Weaver, 169 F.3d 1310, 1315 (11th Cir.), cert. dismissed, 528 U.S. 948 (1999); Tally-Ho, 889 F.2d at 1022.

Appellants assert that the injunctive relief awarded by the district court is impermissibly vague and overbroad. Appellants contend that the language "imposes a grossly unfair burden on Techsplosion, as it does not allow for a determination of what is and is not permitted under the injunctive provisions." Appellants' Brief at 40. Federal Rule of Civil Procedure 65(d) states in relevant part: "Every order granting an injunction . . . shall be specific in terms [and] shall describe in reasonable detail . . . the act or acts sought to be restrained . . . ."³⁰  Fed. R. Civ. P. 65(d). A clear and unambiguous order is one that leaves "'no uncertainty in the minds of those to whom it is addressed,' . . . who must be able to ascertain from the four corners of the order precisely what acts are forbidden.'" King v. Allied Vision, Ltd., 65 F.3d 1051, 1058 (2d Cir. 1995) (citations omitted). Optimally, the injunction

should clearly let defendant know what he is ordered to do or not to do. A court order should be phrased in terms of objective actions, not legal conclusions. An injunction which merely forbids a defendant from performing "acts of unfair competition," or from "infringing on plaintiff's trademarks and trade secrets" adds nothing to what the law already requires.

John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 984-985 (11th Cir. 1983) (quoting J. McCarthy, at § 30.13) (emphasis added).

Notwithstanding these strictures, appellate courts do not set aside injunctions under Rule 65(d) "unless they are so vague that they have no reasonably specific meaning." E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1297 (9th Cir. 1992). Rather than applying Rule 65(d) rigidly, appellate courts determine the propriety of an injunctive order by inquiring into whether the parties subject thereto understand their obligations under the order. Williams v. City of Dothan, 818 F.2d 755, 761 (11th Cir. 1987) (citing Combs v. Ryan's Coal Co., 785 F.2d 970, 978-79 (11th Cir.), cert. denied sub nom. Simmonsv. Combs, 479 U.S. 853 (1986)), modified, 828 F.2d 13 (11th Cir. 1987). Furthermore, the degree of particularity required depends on the nature of the subject matter. McComb v. Jacksonville Paper Co., 336 U.S. 187, 191-92 (1949) (decrees of generality are often necessary to prevent further violations where a proclivity for unlawful conduct has been shown) .

Here, although several parts of the order are phrased in terms of legal conclusions, the order, read as a whole, clearly indicates what Techsplosion is forbidden from doing.³¹  According to the order, Techsplosion is permanently enjoined from using the name "Coolmail" in connection with "e-mail or other Internet-related services," in connection with software, and as part of the domain name of its website. These limitations sufficiently define the scope of the injunction and give context to the arguably legally conclusory language included therein. Furthermore, the use of "any similar mark" after references to "Coolmail" does not detract from this level of specificity. See Planned Parenthood, 152 F.3d 920 (upholding preliminary injunction that prohibited defendant from using mark or "any colorable imitation of [that] mark" anywhere on the Internet and from taking actions "likely to cause confusion" among Internet users regarding Planned Parenthood's endorsement or sponsorship of defendant's site). Appellants do not propose any reading of the language in the injunction that would impermissibly prohibit conduct that Techsplosion arguably has the right to do. Cf. B. H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254, 1269 (5th Cir. 1971) (finding injunction impermissible where broad reference to opinion's findings of fact " [appeared to] enjoin perfectly legal acts"). But see AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1547- 48 (11th Cir. 1986) ("An injunction can be therapeutic as well as protective. In fashioning relief against a party who has transgressed the governing legal standards, a court of equity is free to proscribe activities that, standing alone, would have been unassailable.") (citation omitted), cert. denied, 481 U.S. 1041 (1987). Nor do Appellants explain how thewording of the injunction could lend itself to alternate interpretations. In the absence of any apparent contextual ambiguities or alternate readings prohibiting legal conduct, it is unlikely that Appellants will misapprehend what conduct is proscribed, or will incur liability to contempt citations for activities not contemplated by this order.

Awards of attorney fees are reviewable only to determine if the trial court abused its discretion in granting or denying them.³²  See St. Charles Mfg. Co. v. Mercer, 737 F.2d 891, 894 (11th Cir. 1983). Fla. Stat. § 495.151 provides for injunctive relief only. Under Section 35(a) of the Lanham Act, however, courts may award reasonable attorney fees to the prevailing party "in exceptional cases." 15 U.S.C. § 1117(a). See also Montgomery, 168 F.3d at 1304. Exceptional cases are those where the infringing party acts in a "malicious, fraudulent, deliberate, or willful manner." Burger King Corp. v. Pilgrim's Pride Corp., 15 F.3d 166, 168 (11th Cir. 1994) (quoting S.R. Rep. 93-1400 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7133) (internal quotation marks omitted).

Here, the district court awarded attorney fees without articulating a basis for doing so, let alone the factual circumstances that would warrant such an award.³³  Furthermore, there is nothing in the record to support a finding of "malicious, fraudulent, deliberate, or willful" conduct on the part of Planetary motion. Remand is therefore unnecessary on this issue. Accordingly, we find that the award of attorney fees is an abuse of discretion and vacate the award.

c. Award of Costs

Under the Lanham Act, a successful party "subject to the principles of equity" may recover: "(1) defendant's [the infringer's] profits; (2) any damages sustained by the plaintiff, and (3) the costs of the action." 15 U.S.C. § 1117(a). See Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182 (11th Cir. 1994). To recover costs under the Lanham Act, therefore, a plaintiff need not establish that the alleged infringer acted maliciously, fraudulently, deliberately, or willfully. Because it was within the district court's discretion to award costs, and in the absence of any evidence that would warrant a finding that the balance of equities necessarily tipped in favor of Techsplosion, we uphold the award of costs to Planetary Motion.

Conclusion

Accordingly, the district court's order and final judgment are AFFIRMED, except that the order adopting the magistrate judge's report and recommendation, with respect to the award of attorney fees, is VACATED.