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

Filing 269

STATEMENT of Pretrial Conference Bench Book by Connexus Corporation, Firstlook, Incorporated, Navigation Catalyst Systems, Incorporated, Weather Underground, Incorporated (Attachments: # 1 Administrative Section, # 2 Exhibit Theory of the Case, # 3 Exhibit Plaintiff's Proposed Voir Dire, # 4 Exhibit Defendants' Proposed Voir Dire, # 5 Exhibit Witness List, # 6 Exhibit Exhibit List, # 7 Exhibit agreed Upon Jury Instructions, # 8 Exhibit Plaintiff's Additional Proposed Instructions, # 9 Exhibit Defendants' Additional Proposed Instructions, # 10 Exhibit Plaintiff's Proposed Verdict Form, # 11 Exhibit Defendants' Proposed Verdict Form, # 12 Exhibit Evidentiary Issues) (Delgado, William)

Agreed Upon Jury Instructions

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
Case No. 2:09-CV-10756
Hon. Marianne O. Battani

vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; FIRSTLOOK, INC.,
a Delaware corporation; and EPIC MEDIA
GROUP, INC., a Delaware corporation,

Defendants.
______________________________________________________________________
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 Attorneys for Plaintiff

William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Anthony P. Patti (P43729)
BUTZEL LONG, P.C.
HOOPER HATHAWAY, PC
150 West Jefferson, Suite 100
126 South Main Street
Detroit, MI 48226
Ann Arbor, MI 48104
[phone]
734-662-4426
[e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiff
Local Counsel for Defendants
______________________________________________________________________
JOINT JURY INSTRUCTION LIST

123475.1

The parties identify the following jury instructions and their agreement and disagreement
as to particular instructions as follows:
Instruction
Title
No.
1
Preliminary Instructions Before
Trial
2
Court’s Instruction to the Jury
3
Consideration of the Evidence
Duty to Follow Instructions
Corporate Party Involved
4
Limited Purpose of Evidence
5
Credibility of Witnesses
6
Impeachment of Witnesses
Inconsistent Statement
7.
Burden of Proof When There Are
Multiple Claims or When Both
Plaintiff and Defendant Have
Burden of Proof
8.
Election of Foreperson
Explanation of Verdict Form

Agreed Upon?

Status

Yes.
Yes
Yes.

Yes.
Yes.
Yes.
Yes.

No.

9.

Vicarious Liability for Corporate
Employer

No.

10.

Spoliation/Destruction of Evidence

No.

11.

The Parties and Claims

No.

12.

Trademarks in General

No.

13.

Registered Trademarks

No.

14.
15.

Incontestable Trademarks
Common Law Trademarks

Yes.
Yes.

2

Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.

Instruction
Title
No.
16.
Anti-Cybersquatting Consumer
Protection Act
Introductory Instruction and
Definitions
17.
Distinctive or Famous

Agreed Upon?

Status

No.

Plaintiff and Defendants each
offer different proposals for
this instruction.

No.

Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendants each
offer different proposals for
this instruction.
Plaintiff and Defendant each
offer different proposals for
this instruction.

18.

“Registers,” “Traffics in” or “Uses”

No.

19.

“Confusingly Similar”

No.

20.

Typosquatting

No.

21.

Bad Faith Intent to Profit

No.

22.

Anticybersquatting Consumer
Protection Act Damages

No.

RESPECTFULLY SUBMITTED this 28th day of February 2012.
/s/William A. Delgado
William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

/s/Enrico Schaefer___________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
3

231-932-0411
[e-mail]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

4

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
Case No. 2:09-CV-10756
Hon. Marianne O. Battani

vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; FIRSTLOOK, INC.,
a Delaware corporation; and EPIC MEDIA
GROUP, INC., a Delaware corporation,

Defendants.
______________________________________________________________________
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 Attorneys for Plaintiff

William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Anthony P. Patti (P43729)
BUTZEL LONG, P.C.
HOOPER HATHAWAY, PC
150 West Jefferson, Suite 100
126 South Main Street
Detroit, MI 48226
Ann Arbor, MI 48104
[phone]
734-662-4426
[e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiff
Local Counsel for Defendants
______________________________________________________________________
JOINT JURY INSTRUCTIONS AGREED UPON BY THE PARTIES

INSTRUCTION NO. 1
PRELIMINARY INSTRUCTIONS BEFORE TRIAL

Ladies and Gentlemen:
You have now been sworn as the Jury to try this case. By your verdict you will decide
the disputed issues of fact.
I will decide all questions of law and procedure that arise during the trial, and, before you
retire to the jury room at the end of the trial to deliberate upon your verdict and decide the case, I
will explain to you the rules of law that you must follow and apply in making your decision.
The evidence presented to you during the trial will primarily consist of the testimony of
the witnesses and tangible items including papers or documents called "exhibits."
You should pay close attention to the testimony because it will be necessary for you to
rely upon your memories concerning what the testimony was. Although, as you can see, the
Court Reporter is making a stenographic record of everything that is said, typewritten transcripts
will not be prepared in sufficient time or appropriate form for your use during your deliberations
and you should not expect to receive them.
On the other hand, any exhibits admitted in evidence during the trial will be available to
you for detailed study, if you wish, during your deliberations. So, if an exhibit is received in
evidence but is not fully read or shown to you at the time, don't be concerned because you will
get to see and study it later during your deliberations.
If you would like to take notes during the trial, then you may do so. On the other hand,
of course, you are not required to take notes if you do not want to. That will be left up to you,
individually.

2

Also, your notes should be used only as aids to your memory, and, if your memory
should later differ from your notes, you should rely upon your memory rather than your notes.
If you do not take notes, then you should rely upon your own independent
recollection or memory of what the testimony was, and you should not be unduly influenced by
the notes of other Jurors. Notes are not entitled to any greater weight than the recollection or
impression of each Juror concerning what the testimony was.
During the trial you should keep an open mind and should avoid reaching any hasty
impressions or conclusions. Reserve your judgment until you have heard all of the testimony
and evidence, the closing arguments or summations of the lawyers, and my instructions or
explanations to you concerning the applicable law.
Because of your obligation to keep an open mind during the trial, coupled with your
obligation to decide the case at its conclusion only on the basis of the testimony and evidence
presented, you must not discuss the case during the trial in any manner among yourselves or with
anyone else, nor should you permit anyone to discuss it in your presence; you should also avoid
reading any newspaper articles that might be published about the case, and you should avoid
seeing or hearing any television or radio comments about the trial.
From time to time during the trial I may be called upon to make rulings of law on
objections or motions made by the lawyers. You should not infer or conclude from any ruling or
other comment I may make that I have any opinions on the merits of the case favoring one side
or the other. And if I should sustain an objection to a question that goes unanswered by a
witness, you should not guess or speculate what the answer might have been nor should you
draw any inferences or conclusions from the question itself.

3

During the trial it may be necessary for me to confer with the lawyers from time to time
out of your hearing with regard to questions of law or procedure that require consideration by the
court or judge alone. On some occasions you may be excused from the courtroom for the same
reason. I will try to limit these interruptions as much as possible, but you should remember the
importance of the matter you are here to determine and should be patient even though the case
may seem to go slowly.
The order of the trial's proceedings will be as follows: In just a moment the lawyers for
each of the parties will be permitted to address you in turn and make what we call their "opening
statements." The Plaintiff will then go

forward with

the

calling of

witnesses and

presentation of evidence during what we call the Plaintiff's "case in chief." When the Plaintiff
finishes (by announcing "rest"), the Defendants will proceed with witnesses and evidence, after
which, within certain limitations, the Plaintiff may be permitted to again call witnesses or present
evidence during what we call the "rebuttal" phase of the trial. The Plaintiff proceeds first, and
may rebut at the end, because the law places the burden of proof or burden of persuasion upon
the Plaintiff (as I will further explain to you as a part of my final instructions).
When the evidence portion of the trial is completed, I will instruct you on the applicable
law. Afterwards, the lawyers will then be given another opportunity to address you and to make
their summations or final arguments in the case, and you will then retire to deliberate upon your
verdict.
Now, we will begin by affording the lawyers for each side an opportunity to make their
opening statements in which they may explain the issues in the case and summarize the facts
they expect the evidence will show.

4

I caution you that the statements that the lawyers make now (as well as the closing
arguments they present at the end of the trial) are not to be considered by you either as evidence
in the case or as your instruction on the law. Nevertheless, these statements and arguments are
intended to help you understand the issues and the evidence as it comes in, as well as the
positions taken by both sides. So I ask that you now give the lawyers your close attention as I
recognize them for purposes of opening statements.

5

INSTRUCTION NO. 2
COURT’S INSTRUCTIONS TO THE JURY
Members of the Jury:
I will now explain to you the rules of law that you must follow and apply in deciding this
case.
When I have finished, you will go to the jury room and begin your discussions - - what
we call your deliberations.

6

INSTRUCTION NO. 3
CONSIDERATION OF THE EVIDENCE
DUTY TO FOLLOW INSTRUCTIONS
CORPORATE PARTY INVOLVED

In deciding the case you must follow and apply all of the law as I explain it to you,
whether you agree with that law or not; and you must not let your decision be influenced in any
way by sympathy, or by prejudice, for or against anyone.
The fact that a corporation is involved as a party must not affect your decision in any
way. A corporation and all other persons stand equal before the law and must be dealt with as
equals in a court of justice. When a corporation is involved, of course, it may act only through
people as its employees; and, in general, a corporation is responsible under the law for any of the
acts and statements of its employees that are made within the scope of their duties as employees
of the company.
In your deliberations you should consider only the evidence - - that is, the testimony of
the witnesses and the exhibits I have admitted in the record - - but as you consider the evidence,
both direct and circumstantial, you may make deductions and reach conclusions which reason
and common sense lead you to make.
Direct evidence is the testimony of one who asserts actual knowledge of a fact, such as an
eye witness. Circumstantial evidence is proof of a chain of facts and circumstances tending to
prove, or disprove, any fact in dispute. As an example, direct evidence that it is raining is
testimony from a witness who says, “I was outside a minute ago and I saw it raining.”
Circumstantial evidence that it is raining outside is the observation of someone entering a room

7

carrying a wet umbrella. The law makes no distinction between the weight you may give to
either direct or circumstantial evidence.
Remember that anything the lawyers say is not evidence in the case. And, except for my
instructions to you on the law, you should disregard anything I may have said during the trial in
arriving at your decision concerning the facts. It is your own memory and interpretation of the
evidence that counts.

8

INSTRUCTION NO. 4
LIMITED PURPOSE OF EVIDENCE
You will recall that during the course of this trial I instructed you that I admitted certain
evidence for a limited purpose. You must consider this evidence only for the limited purpose for
which it was admitted.

9

INSTRUCTION NO. 5
CREDIBILITY OF WITNESSES
Now, in saying that you must consider all of the evidence, I do not mean that you must
accept all of the evidence as true or accurate. You should decide whether you believe what each
witness had to say, and how important that testimony was. In making that decision, you may
believe or disbelieve any witness, in whole or in part. Also, the number of witnesses testifying
concerning any particular dispute is not controlling.
In deciding whether you believe or do not believe any witness, I suggest that you ask
yourself a few questions: Did the witness impress you as one who was telling the truth? Did the
witness have any particular reason not to tell the truth? Did the witness have a personal interest
in the outcome of the case? Did the witness seem to have a good memory? Did the witness have
the opportunity and ability to observe accurately the things he or she testified about? Did the
witness appear to understand the questions clearly and answer them directly? Did the witness’
testimony differ from other testimony or other evidence?

10

INSTRUCTION NO. 6
IMPEACHMENT OF WITNESSES
INCONSISTENT STATEMENT
You should also ask yourself whether there was evidence tending to prove that the
witness testified falsely concerning some important fact; or, whether there was evidence that at
some other time the witness said or did something, or failed to say or do something, which was
different from the testimony the witness gave before you during the trial.
You should keep in mind, of course, that a simple mistake by a witness does not
necessarily mean that the witness was not telling the truth as he or she remembers it, because
people naturally tend to forget some things and remember other things inaccurately. So, if a
witness has made a misstatement, you need to consider whether that misstatement was simply an
innocent lapse of memory or an intentional falsehood; and the significance of that may depend
on whether it has to do with an important fact or with only an unimportant detail.

11

INSTRUCTION NO. 7
BURDEN OF PROOF
WHEN THERE ARE MULTIPLE CLAIMS OR
WHEN BOTH PLAINTIFF AND DEFENDANT HAVE BURDEN OF PROOF

In this case each party asserting a claim or a defense has the responsibility to prove every
essential part of the claim or defense by a preponderance of the evidence. This is sometimes
called the burden of proof.
A preponderance of the evidence simply means an amount of evidence that is enough to
persuade you that a claim or contention is more likely true than not true.
When more than one claim is involved, and when more than one defense is asserted, you
should consider each claim and each defense separately; but in deciding whether any fact has
been proved by a preponderance of the evidence, you may consider the testimony of all of the
witnesses, regardless of who may have called them, and all of the exhibits received in evidence,
regardless of who may have produced them.
If the proof fails to establish any essential part of a claim or contention by a
preponderance of the evidence you should find against the party making that claim or contention.

12

INSTRUCTION NO. 8
INCONTESTABLE TRADEMARKS

The right of the a trademark registrant to use a registered mark in commerce for the
goods or services on or in connection with which such registered mark shall be incontestable.
The following trademarks owned by Plaintiff have been registered as incontestable trademarks
on the dates indicated, pursuant to 15 U.S.C.§ 1065:
THE WEATHER UNDERGROUND - December 20, 2008
WUNDERGROUND.COM - June 6, 2009
WUNDERSEARCH - March 7, 2011

13

INSTRUCTION NO. 9
COMMON LAW TRADEMARKS

Registration of a trademark is not needed to establish cybersquatting, trademark
infringement or unfair competition.

However, because some of Plaintiff’s marks are not

federally registered, Plaintiff must prove these marks are protectable. Plaintiff’s rights in these
marks are governed by common-law principles. Under common law, a party acquires rights in a
trademark by using it as a trademark. In order to obtain trademark protection, a designation must
identify one source and distinguish it from other sources.
The owner of a common-law mark acquires both the right to use the particular mark and
the right to prevent others from using the same or a confusingly similar mark. Plaintiff claims
common law trademark rights over all of its registered marks, as well as the word “WUNDER”
which has not been registered by the United States Patent and Trademark Office as of the date of
this trial:
Authority:
Source: Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992); See Wal-Mart
Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000).
RESPECTFULLY SUBMITTED this 28th day of February 2012.
/s/William A. Delgado
William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

14

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

15