United States v. Washington Mint, LLC, 143 F. Supp. 2d 1141 (D. Minn. 2001)

Joan Humes, Robyn A. Millenacker, Assistant United States Attorney, Office of the United States Attorney, Minneapolis, MN, Anthony Wayne Brown, US Attorney, Thomas J. Byrnes and Susan L. Christenberry, Department of Justice, Jon Tornquist, Washington, DC, for plaintiff.

Donald Chance Mark, Jr., Casey A. Kniser, Fafinski Mark & Johnson, Eden Prairie, MN, Marion Edwyn Harrison, Harrison Law Office, Falls Church, VA, for defendants.

TUNHEIM, District Judge.

On September 18, 2000, this Court granted the government's motion for a preliminary injunction in connection with the government's copyright infringement claims, trademark infringement claims, trademark dilution, and false advertising claims. The preliminary injunction concerning the government's copyright infringement claims was to take effect immediately upon the posting of security in the amount of $10,000 pursuant to Rule 65(c) of the Federal Rules of Civil Procedure. The preliminary injunction concerning the government's trademark infringement, trademark dilution, and false advertising claims was not to take effect immediately, but instead was to take effect as set forth in this Court's final order for preliminary injunction, to be issued after the parties were given an opportunity to provide the Court with proposed disclaimer language. Having considered the proposed language submitted by the parties, the Court now issues its Final Order for a Preliminary Injunction.

In its initial order, the Court explained that it would enjoin defendants from using the trademark, trade name, and domain name "Washington Mint," "Washington Mint LLC," or "washingtonmint.com" in the absence of a more bold, noticeable, and clearly stated disclaimer. The notice was to disclaim any affiliation with the United States government. The Court now orders Washington Mint to include the following language in any advertisements, order forms, marketing materials or web pages for any replica products of the United States Mint:

The Washington Mint, LLC is not affiliated with the United States Government or any government agency in any way. The United States Government does not endorse the coinage of the Washington Mint.

This language is to be prominently displayed at the top of any Washington Mint advertisements or other marketing materials for replicas of United States Mint products. The disclaimer is to appear in an easily readable font of at least 12 point and is to be placed within the photograph box of any advertisement or other marketing material. The disclaimer is not to be included with other text below the photograph box, but is to be placed immediately adjacent to or below the actual photograph used in the advertisement or marketing material. The language is also to be in a different color than the background of the photograph box in which it is placed so that the language is clear and noticeable. Again, to be clear, this disclaimer language as well as the placement, size, and color requirements set forth above are to be included in all Washington Mint advertisements, order forms, web pages or other marketing material that includes replicas of United States Mint products. These requirements will preserve the status quo pending a trial on the government's claims.

Pursuant to Rule 65(c) of the Federal Rules of Civil Procedure, no security shall be required of the United States for the preliminary injunction to become effective. This final order is effective immediately.

Based on the foregoing, and all of the records, files and proceedings herein, IT IS HEREBY ORDERED that in connection with the preliminary injunction concerning the government's trademark infringement, trademark dilution, and false advertising claims [Docket No. 57], the Washington Mint, Novus, Brokl, and any and all of their successors, employees, agents, heirs, and assigns are hereby EN- *1143 JOINED and RESTRAINED pending a final disposition of this matter as follows:

a. The enjoined parties are prohibited from using or contributing to the use of the "Washington Mint" trade name, the registered trademark "The Washington Mint LLC," or the Internet domain name "washingtonmint.com" in connection with the advertisement, marketing or sale of any product of the United States Mint or any replica of a United States Mint product, unless each page of the advertisement, web page, order form, or other marketing tool used also contains a noticeable, clear, and boldly written disclaimer of any association with the United States government.

b. The disclaimer shall consist of the following language:

The Washington Mint, LLC is not affiliated with the United States Government or any government agency in any way. The United States Government does not endorse the coinage of the Washington Mint.

The disclaimer shall appear immediately adjacent to or below the photograph that is used in the advertisement or marketing material and shall be placed inside the photograph box. The language is not to be placed with other text in the body of the advertisement. The language shall be at least 12 point font and is to be a different color from the background of the photograph box in which it is placed.

c. The injunction set forth in this paragraph shall take effect immediately and no security need be posted pursuant to Rule 65(c) of the Federal Rules of Civil Procedure.