United
States District Court,
D.
Massachusetts.
NITON CORPORATION, Plaintiff,
v.
RADIATION MONITORING DEVICES, INC., Defendant.
No.
Civ.A. 98-11629-REK.
Nov.
18, 1998.
Charles R. Bennett, Jr., Riemer &
Braunstein, Boston, MA, for Defendant.
Opinion
KEETON, District Judge.
Two innovative enterprises of modest size are
coexisting almost side-by- side without friction. They are not in direct competition. Each, however, has possibilities for success and expansion. The success of both will, some months or
years away, bring them to competing with each other and with larger entities
whose operations may, by then, be international or global in scope.
Enter upon this tranquil scene the Internet
and its inducements to each of the two modest enterprises to obtain web
sites. They do so, and soon begin to
worry about each other. As they learn
more, one comes into a United States district court with a complaint and prayer
for preliminary injunction against the other.
They accept a suggestion from the judge that the request for injunctive
relief be tried along with all other claims and defenses on an expedited
discovery and trial schedule.
One soon learns, by chance, that the other's
web sites and means of attracting Internet users to them are deceptive and
immediately harmful. Forthwith, the matter is back before the district court with a
renewed request for immediate intervention.
This is a classic illustration of a new kind
of litigation for which nothing in past experience comes even close to
preparing trial judges and the advocates appearing before them. But the case must be decided, and quickly,
unless mediation within or outside court sponsorship produces an even quicker
solution.
In the matter before me, I conclude that
court intervention is appropriate but not in a classic form of preliminary
injunction. For the reasons summarized
here, my order is more provisional and tentative in nature and is entitled
Preliminary Injunction Subject to Modification.
[1] This way
of proceeding is consistent with the principle that "injunctive relief should be no more burdensome to the
defendant than necessary to provide complete relief to the plaintiff[ ]." Califano v. Yamasaki, 442 U.S. 682, 702, 99 S.Ct. 2545, 61 L.Ed.2d 176
(1978). See also EEOC v. Astra USA, Inc., 94 F.3d 738, 744-46 (1st Cir.1996).
Plaintiff Niton Corporation is in the
business of manufacturing and selling x- ray fluorescence ("XRF")
instruments and software designed to detect the presence or absence of lead in
paint. Defendant Radiation Monitoring
Devices ("RMD") is in the business of manufacturing XRF instruments
that detect lead in paint. One of
these products is called the LPA-1. Niton's product employs the "L-Shell" and "K-shell"
methods while RMD's product employs only the "K- Shell" method. By the time this civil action is commenced,
Niton and RMD are aiming to sell to the same potential entities, in many instances,
one or more of their respective products.
Niton contends, and RMD denies, that the two companies are the only
companies in the American market for XRF instruments and software.
[2] In its
complaint, Niton alleges that RMD uses false and misleading statements in RMD's
advertising, marketing and promotion of its own product in Massachusetts and
interstate commerce. Niton asserts
that these statements "misrepresent the true nature, characteristics,
capabilities, and qualities of RMD's product" and, as a result, reflect on
Niton's products. Niton further
contends that these misleading statements are contained on RMD's World Wide Web
page on the Internet. These allegedly
misleading statements include the following:
(1) "The LPA-1 is the ONLY instrument
which measures lead without inconclusive values;"
(2) A report issued by the Midwest Research
Institute ("MRI") "indicates that K-Shell measurements are
preferred for lead determination;" and
(3) "The [LPA-1] is the most effective
lead inspection system available today."
Furthermore, Niton maintains that RMD has
made false, misleading, and deceptive
statements to third parties about Niton's products. RMD denies that it has made the following statements that the
complaint alleges RMD has made:
(1) Niton's products produce inconclusive
readings or ranges;
(2) Niton's products require the user to make
subjective judgments in order to reach a 95% confidence level in determining
the presence or absence of lead in paint, rather than relying on the instrument
alone;
(3) Niton's products do not automatically
display results as soon as a 95% confidence level determination is achieved;
(4) Niton's products require 120 seconds to
make a determination;
(5) Niton's products are not recognized by
the Environmental Protection Agency, the Department of Housing and Urban
Development or the MRI as equal or superior to any other XRF lead paint
analyzer; and
(6) The agencies listed in (5) above have
reservations about the performance of Niton's products.
In response, RMD has filed in this civil
action a counterclaim against Niton for using false and misleading statements
in its advertising, marketing and promotion of Niton products.
As stated above, the two companies were
involved in this litigation when Niton learned, by chance, that RMD's web sites
and the means of attracting Internet users to the sites were deceptive and
misleading. In an affidavit, a Niton
employee in charge of maintaining Niton's Internet web site, Robert Bowley, asserts that, on November 5, 1998, he discovered
that the "META" descriptions of RMD's web sites included references
to Niton's home page that were unusual. The term "META description"
refers to words that identify an Internet site, and the term "META" keywords
refers to keywords that are listed by the web page creator when creating the
web site. An Internet user then uses a
web search engine that searches the "META" keywords and identifies a
match or a "hit".
Upon further inspection of the
"META" descriptions, Bowley found that several of the web addresses
appeared to be for Niton's home page, but were actually for pages of RMD's web
sites. Although no links to Niton were
visible in the surface text of the RMD web sites, Bowley was able to use
Netscape's "View Source" command to look at the source code for the
RMD web sites.
Using this feature, Bowley discovered that
the "META" descriptions of RMD's web sites were identical to those he
had used when creating the Niton web site.
Bowley discovered that several keywords, such as "radon", that
were relevant to products Niton sold, but not to products sold or marketed by
RMD, nevertheless appeared in RMD's web site source code.
After this discovery, Bowley asserts that he
performed an Internet web search using the phrase "home page of Niton
Corporation" and turned up several "hits". Only three of the "hits" were for
pages on Niton's web site. The other
five matches referred him to pages on RMD's web sites. According to Bowley and the copy of his
search results marked as Exhibit B to Affidavit of Robert Bowley, Docket No. 13, the
"META" description of the five RMD pages is "The Home Page of
Niton Corporation, makers of the finest lead, radon, and multi-element
detectors."
In his affidavit, Bowley states that he
repeated the search for "home page of Niton Corporation" using
several other web search engines and came up with the same results. Finally, Bowley asserts that he performed a
search for "Niton Corporation" and "home page" and came up
with hits that described themselves as being the "Home Page of Niton
Corporation" but gave the web address of RMD's web site.
I find a likelihood of success of plaintiff
in establishing before the finder of fact, at trial, the credibility of
Bowley's findings recited here.
For the foregoing reasons, the Clerk is
directed to enter forthwith on a separate document a Preliminary Injunction
Subject to Modification in the form attached to this Opinion.
Preliminary
Injunction Subject to Modification
The court heard evidence and argument on
November 13 and November 18, 1998 on Plaintiff's Motion for a Preliminary
Injunction and Temporary Restraining Order (Docket No. 12, filed November 9,
1998), and considered supporting and opposing submissions, including affidavits
(Docket Nos. 13, 14, 15, 16). On the
basis of all the oral and filed submissions, the court finds: (a) that plaintiff has shown a likelihood of
success on the merits of its contention that
RMD's Internet web sites and means of attracting users of the Internet to
examine these web sites have been used by RMD in a way likely to lead users to
believe that the employees of RMD are "makers of the finest radon
detectors," that RMD is also known as Niton Corporation, that RMD is
affiliated with Niton Corporation, that RMD makes for Niton products marketed
by Niton, and that RMD web sites are Niton web sites; (b) that plaintiff has shown irreparable harm because of the
difficulty of proof of damages with reasonable certainty, despite the near
certainty of substantial harm in fact; (c) that the balance of hardships favors plaintiff because of
likely sales and sales growth that Niton would otherwise realize but for
defendant's misuse of defendant's web sites;
and (d) that the public interest is consistent with and will be served
by the Order of the court stated below.
For the reasons expressed here and orally at the hearings of November 13
and 18, 1998, it is ORDERED:
Defendant Radiation Monitoring Devices, Inc.
("RMD"), its officers, directors, agents, servants, employees, and those
persons in active concert or participation with them who receive notice in fact
of this Order are hereby enjoined from using RMD's Internet web sites and means
of attracting users of the Internet to examine those web sites in a way that is
likely to lead users to believe:
(1) that the employees of RMD are
"makers of the finest radon detectors," or
(2) that RMD
is also known as Niton Corporation, or
(3) that RMD is affiliated with Niton
Corporation, or
(4) that RMD makes for Niton any product marketed
by Niton, or
(5) that RMD web sites are Niton web sites.
This Order becomes effective upon plaintiff's
filing with the Clerk a bond or other security in the amount of $10,000.
This Order thereafter continues in effect
until modified by a further order of a judge of this or a higher court.
This Order is subject to modification by this
court upon motion of an interested party for good cause shown.
RMD may, at any time, apply to this court for
a modification of this Order upon a showing of good cause for determining that
an alternative form of relief is more appropriate than an injunction. Such a showing of good cause may be made by
RMD's showing that it has developed or proposes to develop a modification of
its web sites and means of attracting users of the Internet to examine those
web sites
(a) that, if practiced, would not be a
violation of this order, or
(b) that would be a violation of the terms of
this Order, absent modification, but for special reasons shown, an alternative
form of remedy allowing RMD to proceed on specified conditions, including
compensation or security to Niton against harm, is more appropriate than an
injunction.