Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Filing 266

RESPONSE to 250 MOTION in Limine No. 6 filed by Weather Underground, Incorporated. (Patti, Anthony)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Case No. 2:09-cv-10756
Hon. Marianne O. Battani

Plaintiff,
vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; BASIC FUSION, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; and FIRSTLOOK, INC.,
a Delaware corporation,
Defendant.
/
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Counsel for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants
/

PLAINTIFF THE WEATHER UNDERGROUND, INC.’S EVIDENTIARY
OBEJCTIONS AND RESPONSES TO DEFENDANTS’ MOTION IN LIMINE NO. 6
I.

The Seventh Amendment Does Not Guarantee a Right to a Jury Trial Under These
Circumstances

As Defendants note in their motion, the Seventh Amendment right to a jury trial applies
only to suits “at common law.” The Anti-Cybersquatting Consumer Protection Act (“ACPA”)
obviously does not involve a common law right. Although Defendants are correct in noting
that courts will look to see whether the modern statutory right in question is analogous to a
common law action that existed in the Eighteen Century, they are incorrect in lumping together
cyber-piracy with trademark law. Cyber-piracy, which obviously was not known at common
law in Eighteen Century, may or may not involve trademark infringement. Domain names do
not necessary have to be recognized trademarks, although they may be.

Although the

Defendants’ citation to the GoPets case is interesting, it does not answer the question, since the
court itself in that case stated that it “need not decide that question”, as it had already awarded
summary judgment and the only issue to be tried was damages, where only minimal statutory
damages were awarded. 1 Thus, the issue of the Seventh Amendment right to a jury trial under
the ACPA is an issue of first impression. While the Court may wish to impanel an advisory
jury, it need not necessarily do so.
II.

Evidence of Plaintiff’s Financial Condition and Actual Damages Should Be
Excluded
In response to this portion of the Defendants’ motion, Plaintiff primarily relies upon its

pending Motion in Limine to Exclude Discussion of Plaintiff’s Actual Damages and of
Defendants’ Monetary Gain, which is hereby incorporated by this reference in its entirety.
Additionally, Plaintiff notes that -- contrary to Defendants’ assertion -- judicial scrutiny of a
cyber-piracy victim’s damages is not required in order to pass constitutional muster.
Defendants cite no binding precedent which would require this Court to admit evidence of
1

Likewise, in the only other case to discuss the right to a jury trial under the ACPA, the court
in Verizon California Inc. v OnlineNIC, Inc., 2009 U.S. Dist. LEXIS 894235 (N.D. Cal. 2009),
the court also failed to decide the issue, since the case involved a default judgment.
2

Plaintiff’s actual damages in order to assess statutory damages. The ACPA is an entirely
unique statute, in that it does not allow for statutory damages unless bad faith is proven, and
then provides a list of factors which may be considered in determining whether bad faith exists.
15 U.S.C. § 1125(d)(1)(B). In other words, the statute itself focuses upon the Defendants’
conduct and provides within the language of the statute itself a scrutiny which would justify the
imposition of statutory damages. Noticeably absent from these factors is any mention of a
victim’s actual damages. Unlike the Copyright Act, which seems to have been at issue in most
of the cases Defendants cited, the ACPA protects against a violation of due process rights in the
awarding of statutory damages because of its requirement that a court find bad faith in order to
do so. St. Luke’s Cataract and Laser Institute v Sanderson, 573 F.3d 1186, 1204 (11th Cir.
2011) (“an ACPA-Cyber-Piracy claim, unlike a service mark infringement claim, requires a
showing of a ‘bad faith intent to profit’ from a protected domain name.”). The Copyright Act
contains no such requirement, but simply gives the copyright owner the ability to collect
statutory damages over actual damages and profits. In contrast, under the ACPA, a plaintiff
cannot make that election unless it has proven a violation of 15 U.S.C. § 1125(d)(1), which, in
turn, requires proof of bad faith. See § 1117(d). Thus, by the time a court gets to the point of
awarding statutory damages under the ACPA, it has already considered various factors relating
to the cybersquatter’s behavior, and in doing so has assured him of due process. 2
Defendants suggest that the Supreme Court’s opinion in St. Louis Iron Mountain &
Southern Railway Co. v Williams, 251 U.S. 63, 66 (1919) mandates a scrutiny of actual
damages in order to award statutory damages. The Williams case contains no such holding.
2

Not surprisingly, the cases relied upon by the Defendants, most of which are unreported, do
not relate to the ACPA, e.g., Charter Communications, decided under 47 U.S.C. § 553, the
unauthorized reception of cable service statute; Bosch, a copyright case; Andrade, a fair credit
reporting case; and Zomba, another copyright case.
3

That case considered the constitutionality of the statute itself, and upheld the constitutionality
of statutory damages. Its scrutiny about the severity and oppressiveness of the punishment did
not relate to the specific facts of the case, but rather, to the fact that the statute in question
contained a maximum and minimum statutory damage range, as does the ACPA. The court’s
finding in that regard is instructive:
True, the penalty goes to the aggrieved passenger [under the civil
statutory damages provision of a statute regulating the transportation of
railway passengers] and not the State, and is to be enforced by a private
and not a public suit. But this is not contrary to due process of law. ***
Nor does giving the penalty to the aggrieve passenger require that it is to
be confined or proportioned to his loss or damages; for, as it is imposed
as a punishment for the violation of a public law, the legislature may
adjust its amount to the public wrong rather than the private injury, just
as if it were going to the State.
Under the ACPA, a defendant’s right to due process is protected by the requirement that
bad faith be proven in order to recover under the statute and by the fact that defendant’s
wrongful behavior is scrutinized for its severity before making such an award. This award need
not be “confined or proportioned to [a plaintiff’s] loss or damages”; rather, the statutory
damages may be imposed as a deterrent or as punishment for the public wrong committed, so
long as that public wrong has been proven and appropriately scrutinized by the court in a
manner which assures the defendant of due process, as is the case under the ACPA. Plaintiff’s
actual damages and lost profits are not a required element for due process, and are in fact
irrelevant and immaterial to this inquiry. For the reasons stated in Plaintiff’s pending motion,
they should be excluded under FRE 402 and 403.

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Respectfully submitted this 27th day of February, 2012.

/s/Anthony P. Patti__________
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-Counsel for Plaintiff
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff

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CERTIFICATE OF SERVICE
I hereby certify that on the 27th day of February, 2012, I electronically filed the
foregoing paper with the Court using the ECF system which will send notification of such
filing to the following:
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Counsel for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants

/s/Anthony P. Patti__________
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-Counsel for Plaintiff

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