JOLT Digest

Massive Patent Verdict Overturned
By Jia Ryu – Edited by Stephanie Young

Uniloc v. Microsoft, No. 03-440 S (D. R.I. Sept. 29, 2009)
Opinion

The United States District Court for the District of Rhode Island vacated one of the largest patent verdicts in history, in which a jury held that Microsoft’s “Product Activation System” (“PA”) infringed on Uniloc’s patented “System for Software Registration” (the “‘216 patent”). In holding that Microsoft did not infringe as a matter of law, the District Court found that Uniloc had not shown the presence of each element of the patent claim or its substantial equivalent in the accused device as required by Lemelson v. United States, 752 F.2d 1538 (Fed. Cir. 1985). The Court, while noting that the jury’s finding deserved deference, expressed its “firm belief” that the jury failed to grasp the complex issues in the case and lacked a legally sufficient basis for the finding.

The Microsoft Blog provides an overview of the case. Betanews provides a thorough analysis of the main legal issues. Evidence Prof Blog provides a look at the admissibility of expert damages testimony.  Current Events in IP Law questions the jurors’ ability to understand the issues. (more…)

First Circuit Bans Webcast in Trial Court

By Debbie Rosenbaum* – Edited by Chris Kulawik
In Re: Sony BMG Music Entertainment Et Al., April 16, 2009, No. 09-1090
Opinion

On Thursday, April 16, The United States Court of Appeals for the First Circuit in Boston, MA overturned a motion granted  by the district court which would have permitted the oral arguments in the case of Joel Tenenbaum vs. the Record Industry Association of America to be broadcast live over the Internet.

In a unanimous opinion by the First Circuit Court of Appeals authored by Judge Bruce Selya, the court ruled that the District of Massachusetts Local Rules, as well as policy statements by the First Circuit Judicial Council, and the United States Judicial Conference, all pointed toward one conclusion: no webcast would be permitted. The decision rested on two premises: 1) Judge Nancy Gertner lacked the authority to permit Internet broadcasts from her courtroom; and 2) the Judicial Council’s 1996 anti-camera resolution banned the use of recording devices in federal courtrooms unless they are used to preserve trial evidence. However, in so holding, the court noted that they were “reluctant to interfere with a district judge’s interpretation of a rule of her court, especially one that involves courtroom management.”

As explained by Copyrights & Campaigns, Judge Kermit Lipez filed a brief concurrence, agreeing with Judge Selya’s conclusion that the rules preclude the webcast, but arguing that there is no good policy reason to disallow it. Copyrights & Campaigns also argues, as does Recording Industry v. the People, that it is ironic that the court of appeals posted an audio recording of the oral argument on its website.

Ray Beckerman has consolidated all the legal documents associated with this portion of the case. (more…)

First Circuit Lifts Trademark Injunction to Make Way for Super Duck
By Miriam Weiler — Edited by Evie Breithaupt

Boston Duck Tours v. Super Duck Tours
First Circuit, June 18th, 2008, Nos. 07-2078, 07-2246
Slip Opinion

On June 18, the First Circuit lifted a preliminary injunction granted by the District Court of Massachusetts, which had enjoined Super Duck Tours, LLC (“Super Duck”) from using the phrase “duck tours” in its trade name and the cartoon of a duck in its logo. On July 2, 2007, Boston Duck Tours, LP (“Boston Duck”) filed a complaint in the district court alleging federal trademark infringement and unfair competition and seeking a preliminary injunction against Super Duck. The district court granted the injunction and Super Duck appealed.

The First Circuit held that the lower court clearly erred in concluding that Boston Duck was likely to succeed on the merits of its trademark infringement, by over-estimating the likelihood that use of the phrase and image would cause consumer confusion.

The court of appeals did not address the district court’s ruling regarding Super Duck’s purchase of the key word phrase “Boston duck tours” on Google. “Sponsored linking” or “keyword advertising” allows the purchaser of a keyword to link his or her website to the search engine’s results page with a highlighted link at the top of the page.

The district court found that Super Duck’s sponsored linking did not violate the injunction. It found that sponsored linking, however, does constitute “use” under the Lanham Act, which states that “a mark shall be deemed to be in use in commerce. . . (2) on services when it is used or displayed in the sale or advertising of services.” 15 U. S. C. §1127. The district court reasoned that the plain language of the statute and the majority of courts have considered sponsored linking “use.” (more…)