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)

Plaintiff’s Additional Proposed Instructions

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
vs.

Case No. 2:09-CV-10756
Hon. Marianne O. Battani

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

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants
______________________________________________________________________
PLAINTIFF’S PROPOSED JURY INSTRUCTIONS

INSTRUCTION NO. 8
ELECTION OF A FOREPERSON
EXPLANATION OF VERDICT FORM(S)

When you go to the jury room, you should first select one of your members to act
as your foreperson. The foreperson will preside over your deliberations and will speak
for you here in court.
A form of verdict has been prepared for your convenience.
EXPLAIN VERDICT
You will take the verdict form to the jury room; when you have reached
unanimous agreement, you will have your foreperson fill in the verdict form, date and
sign it, and then return to the courtroom.
If you should desire to communicate with me at any time, then please write down
your message or question and pass the note to the marshal who will bring it to my
attention. I will then respond as promptly as possible, either in writing or by having you
returned to the courtroom so that I can address you orally. I caution you, however, with
regard to any message or question you might send, that you should not tell me your
numerical division at the time.

INSTRUCTION NO. 9
Vicarious Liability for Corporate Employer
Employers are vicariously liable for acts of their officers, employees and agents.
The employer is liable for both negligent and intentional torts committed by an officer
employees, or agent within the scope of his or her employment.

Authority:
Meyer v. Holley, 537 U.S. 280, 285-86 (2003).

INSTRUCTION NO. 10
SPOLIATION/DESTRUCTION OF EVIDENCE
(DEPENDING ON HOW EVIDENCE COMES IN AT TRIAL)
Plaintiff contends that Defendants at one time possessed [describe evidence
allegedly destroyed]. Defendants contend that evidence was destroyed consistent with
their document retention policy.
Even when an action has not been commenced and there is only a potential for
litigation, the litigant is under a duty to preserve the evidence that it knows or
reasonably should know is relevant to the action.
You may assume that the such evidence would have been unfavorable to
Defendants only if you find by a preponderance of the evidence that:
1. Defendants intentionally destroyed the evidence; and
2. Defendants destroyed the evidence in bad faith.
Authority:
Chrysler Realty Co., LLC v. design Forum Architects, Inc., 2009 U.S. Dist. LEXIS
121411 (E.D. Mich. 2009).

INSTRUCTION NO. 11
THE PARTIES AND CLAIMS

I will now explain the claims that the Plaintiff has made against the Defendants.
Plaintiff The Weather Underground, Inc. is a Michigan corporation. Plaintiff owns
various trademarks including THE WEATHER UNDERGROUND and
WUNDERGROUND. It also operates various websites include
<weatherunderground.com> and <wunderground.com> on which it provides online
weather information. Plaintiff has sued the defendants in this matter claiming that the
defendants in this matter have registered, used, or trafficked in Internet domain names
that are confusingly similar to its trademarks with the bad faith intent to profit therefrom.
It seeks to hold Defendants liable for cybersquatting for the registration, use or
trafficking of such domain names. Plaintiff seeks statutory damages between $1,000
and $100,000 for each domain that violates the anti-cybersquatting law.

INSTRUCTION NO. 12
TRADEMARKS IN GENERAL

The first issue governing Plaintiff’s claims concerns Plaintiff’s trademarks. It is
important that you know something about what a trademark is. For the purposes of
these instructions, I will use the terms "trademark" and "mark" interchangeably. The
term trademark includes any word, name, symbol, device, or any combination thereof
used to identify and distinguish a company's goods from those made or sold by other
companies, even if the specific source is unknown. Slogans, designs, and logos can
serve as trademarks.
A single product or service can have more than one trademark (including an
accompanying slogan such as "FORD" and "TAURUS" for automobiles, "CAPITAL
ONE" and "WHAT'S IN YOUR WALLET" for credit cards, and "AOL" and "AMERICA
ONLINE" for Internet services). The main function of a trademark is to designate goods
as a particular company's product and to protect that company's goodwill. A trademark
is also a merchandising shortcut that allows a prospective purchaser to select what he
or she wants. Put another way, a trademark identifies a given good as the product of a
particular company and allows people to select the particular brand they want to
purchase. Trademarks serve a public interest by avoiding public confusion as to the
source of products.
When a company has established a trademark right before anyone else, the
company's right to use that mark becomes an exclusive right and the mark is the

property of only that company. No other person can use the same or a similar mark in
any manner that would be likely to cause confusion, mistake, or deception.
In this case, Plaintiff claims it owns trademark rights in the following marks:
WUNDER
THE WEATHER UNDERGROUND
WUNDERGROUND.COM
WUNDERSEARCH WUNDERMAP
WUNDERRADIO
WUNDERPHOTOS
WUNDERBLOG
WUNDERGROUND
WEATHER UNDERGROUND

INSTRUCTION NO. 13
REGISTERED TRADEMARKS
If a mark is registered, then the registration constitutes “prima facie” evidence of
the validity of the mark, the registrant's ownership of the mark, and the registrant's
exclusive right to use the mark throughout the United States. Registration of a mark
entitles the owner to sue for infringement and bestows upon the mark a presumption of
validity in that suit. Trademark registration with the US Trademark Office puts all would
be users of the mark on constructive notice of the mark under 15 U.S.C. § 1072.

The following trademarks owned by Plaintiff are registered with the United States
Patent and Trademark office:

THE WEATHER UNDERGROUND (Reg. No. 2,297,683)
(First Use in Commerce 3-16-1995)
WUNDERGROUND.COM (Reg. No. 2,324,272)
(First Use in Commerce 3-16-1995)
WUNDERSEARCH (Reg. No. 3,647,301)
(First Use in Commerce 2-0-1999)
WUNDERPHOTOS (Reg. No. 3,739,351)
(First Use in Commerce 8-12-2002)
WUNDERBLOG (Reg. No. 3,742,092)
(First Use in Commerce 6-7-2005)
WUNDERMAP (Reg. No. 3,527,030)

(First Use in Commerce 2-21-2008)
WUNDERRADIO (Reg. No. 3,647,301)
(First Use in Commerce 9/25/2008)

Authority:
15 USC §§1114; Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 682-83
(6th Cir. 2006).
15 U.S.C. § 1072; Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d
1111, 1123 (6th Cir. 1996) (citing Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831
F.2d 1177, 1181 (1st Cir. 1987)).

INSTRUCTION NO. 16
ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT
INTRODUCTORY INSTRUCTION AND DEFINITIONS
Plaintiff seeks damages from defendant for violation of the federal law known as
the Anti-Cybersquatting Consumer Protection Act, which will be referred to as the
“ACPA.” The purpose of the ACPA is to protect marks against certain confusing uses of
those marks in Internet domain names. A “domain name” is an alphanumeric
designation that forms at least part of an address on the Internet, such as www.cnn.com
(“cnn” for the CNN television network), that has been registered with or assigned by any
domain-name authority. The term “mark,” for purposes of the ACPA, means any
trademark, service mark, collective mark, or certification mark, whether registered or
unregistered, as well as a personal name that may be protected as a mark.
Plaintiff has the burden to prove by a preponderance of the evidence that
Defendants violated the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C.
1125(d). To prove its claim, Plaintiff must prove that each of the following essential
elements is more probably true than not true:
(a)

Plaintiff has a valid trademark or trademarks entitled to protection. In this
case Plaintiff’s trademarks are not contested by Defendant.

(b)

Plaintiff’s trademarks are distinctive or famous. In this case, Defendants
do not contest that Plaintiff’s trademarks are distinctive.

(c)

One or more of defendants’ domain names listed on Exhibit ___ were
identical or confusingly similar to that trademark;

(d)

Defendant registered, used or trafficked in one or more of the domain
names listed on Exhibit ___. Defendants do not contest that they
registered and used the domain names listed on Exhibit A.

(e)

Defendant did so with a bad faith intent to profit.

In this case, Plaintiff’s registered trademarks are distinctive as a matter of law.

Authority:

15 USC §1125(d)(1)(A); see also House Judiciary Committee Report on HR 3028, HR
Rep. Ho. 106-412 at 15 (October 15, 1999); Senate Section-by-Section Analysis, Cong.
Rec., at S14715 (Nov. 17, 1999).

INSTRUCTION NO. 17
Defendants’ Instruction No. 17 is unnecessary because Plaintiff’s marks are
distinctive as a matter of law.

INSTRUCTION NO. 18
“REGISTERS,” “TRAFFICS IN” OR “USES”
The terms “registers” means taking the action to register a domain name through
a Registrar, such as Basic Fusion or GoDaddy, to become the registrant or owner of the
domain name.
The term “traffics in” means to engage in a transaction including but not limited to
sales, purchases, loans, pledges, licenses, exchanges of currency, and any other
transfer for consideration or receipt in exchange for consideration. The term “uses”
means operates a website on that domain name such as a “parking” page or “landing”
page.
In this case, Defendants do not contest that they registered and used the domain
names listed on Exhibit **.

Authority:
15 USC §§1125(d)(1)(D), 1125(d)(1)(E); Ford Motor Co. v. Catalonotte, 342 F.3d 543
(6th Cir. 2003).

INSTRUCTION NO. 19
“CONFUSINGLY SIMILAR”
To determine whether the domain names at issue are confusingly similar to
Plaintiff’s trademarks you should consider whether the domain names are similar to
Plaintiff’s trademarks in spelling, characters, sight, sound, or meaning such that that the
domain name and trademark being compared could be confused. Unless words or
letters added to the Plaintiff’s marks within the domain names clearly distinguish them
from the Plaintiff’s usage, allegations that a domain name incorporates a protected mark
generally will suffice to satisfy the “identical or confusingly similar to” requirement. The
addition of descriptive or generic terms to a domain name, such as the addition of the
descriptive term “search” does not affect confusing similarity.

Authority:
15 USC §1125(d)(1)(A); For Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635
n.3 (E.D. Mich. 2001). See Coca-Cola v. Purdy, 382 F.3d 774, 784 (8th Cir. 2004); see
also In re Chatam Int’l, Inc., 380 F.3d 1340, 1343 (Fed. Cir. 2004) (“With respect to
GOLD, the Board determined that the term denotes a premium quality, a descriptive
term offering little to alter the commercial impression of the mark.”).

INSTRUCTION NO. 20
TYPOSQUATTING
Typosquatting is the registration of typographical variations of trademarks hoping
to capitalize on the poor spelling or typographical skills of consumers who proceed
directly to the web browser address bar to type in a domain. The Anticybersquatting
Consumer Protection Act also prohibits “typosquatting,” “that is, registering intentional
misspellings of trademarks. For the purposes of this trial, “cybersquatting” and
“typosquatting” are used to mean the same thing.
In the context of typosquatting, confusing similarity is judged not just by
appearances, but by the likelihood that a particular domain name might be typed in
accidentally by someone trying to type in one of Plaintiff’s marks or domain names.

Verizon California, Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1094 1095 (C.D. Cal. 2008) (citing Shields v. Zuccarini, 254 F.3d 476, 484 (3rd Cir. 2001)).
Legislative History, S. Rep. No. 106-140 (1999)(For example, the Committee was
informed of a parent whose child mistakenly typed in the domain name for
“dosney.com,” expecting to access the family-oriented content of the Walt Disney home
page, only to end up staring at a screen of hard core pornography because a
cybersquatter had registered that domain name in anticipation that consumers would
make that exact mistake.

INSTRUCTION NO. 21
BAD FAITH INTENT TO PROFIT
To help you decide whether defendant had a bad faith intent to profit from
Plaintiff’s trademarks, you may consider the following factors. These factors are given
as a guide, not as a substitute for careful thinking about the ultimate issue in a
cybersquatting claim: whether the conduct at issue is motivated by a bad faith intent to
profit. You may decide that not every factor applies to this case, and you are not limited
to only those factors.
1.

The trademark or other intellectual property rights of the Defendants, if

any, in the domain names..
2.

The extent to which the domain names listed on Exhibit ____ reflect

defendants’ legal name or a name that is commonly used to identify defendant.
3.

The extent of defendant’s prior use of the domain names listed on Exhibit

____ in connection with good faith offering of goods or services.
4.

Whether defendant intended to divert consumers from plaintiff’s own

website to a website under the domain names at issue that could harm the goodwill
represented by Plaintiff’s trademarks either for commercial gain or with the intent to
tarnish or disparage the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation or endorsement of the site.
5.

Defendants offer to transfer, sell, or otherwise assign the domain names

listed on Exhibit _____ to plaintiff or any other person for financial gain without having
used, or having an intent to use, the domain names listed on Exhibit _____ in

connection with a good faith offering of goods or services; or whether defendant has
exhibited a pattern of such conduct in the past.
6.

Whether defendant: (a) provided material and misleading false

information regarding his contact information when applying for the registration of the
domain names at issue; (b) intentionally failed to maintain accurate contact information;
or (c) has established a pattern of such conduct in the past. This factor should not
weigh against defendant if you find that defendant had some legitimate reason to hide
his identity.
7.

Whether defendant has registered or otherwise acquired multiple domain

names in addition to the domain names at issue that defendants know are identical to,
confusingly similar to, marks of other third parties that are distinctive at the time of
registration of such domain names, or dilutive of famous marks of others that are
famous at the time of registration of such domain names, without regard to the goods
or services of the parties; and.
8.

The extent to which Plaintiff’s trademarks are, or are not, distinctive or

famous.
In this case, Plaintiff’s registered trademarks are distinctive as a matter of law.

Authority:
15 USC §1125(d)(1)(B)(i); Ford Motor Co. v. Catalonette, 342 F.3d 543 (6th Cir. 2003);
Interstellar Starship Servs. Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002); E. & J. Gallo
Winery v. Spider Webs, Ltd., 286 F.3d 270 (5th Cir. 2002); N. Light Tech., Inc., v. N.
Lights Club, 236 F.3d 57 (1st Cir. 2001); Shields v. Zuccarini, 254 F.3d 476 (3d Cir.
2001); Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001);
Sporty’s Farm LLC v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000); Flow Control
Indus., Inc. v. AMHI, Inc., 278 F. Supp. 2d 1183 (W.D. Wash. 2003); Nissan Motor Co.
v. Nissan Computer corp., 61 U.S.P.Q.2d 1839 (C.D. Cal. 2002); Hartog & co. AS v.
SWIX.com, 136 F. Supp. 2d 531 (E.D. Va. 2001); Advance Magazine Pu8blishers, Inc. v.
Vogue Int’l, 123 F. Supp. 2d 790 (D.N.J. 2000); Virtual Works, Inc. v. Network Solutions,
Inc., 106 F. Supp. 2d 845 (E.D. Va. 2000); Morrison & Forrester, LLP v. Wick, 94 F.
Supp. 2d 1125 (D. Colo. 2000); Dolby v. Robertson, 654 F. supp. 815 (N.D. Cal. 1986);
J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 25:78 (4th ed. 2005); see
also Senate Section-by-Section Analysis, CONG. REC., at S14715 (Nov. 17, 1999); House
Judiciary Committee Report on H.R. 3028, H.R. Rep. No. 106-412, at 10-11, 13, 15 (Oct.
25, 1999).; Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 811 (6 th Cir.
2004).

INSTRUCTION NO. 22
ANTICYBERSQUATTING CONSUMER PROTECTION ACT DAMAGES
[SUBJECT TO THE PARTIES STIPULATING, RULING OR AN AGREEMENT AS TO
WHETHER STATUTORY DAMAGES ARE AWARDED BY THE JURY OR JUDGE]

If you find Defendants liable under the ACPA, then you should award Plaintiff
damages under that law as well. Plaintiff has elected statutory damages as its monetary
remedy. You may award not less than $1,000 and not more than $100,000 for each of
the domain names registered, trafficked in and/or used by Defendants with a bad faith
intent to profit that you find are confusingly similar to any of Plaintiff’s trade name or
trademarks. Those domain names are listed on Exhibit __.
You should decide the just amount to award Plaintiff, keeping in mind that the
purpose of the ACPA is to both deter wrongful conduct and provide adequate remedies
for trademark owners who seek to enforce their rights in court.
Statutory damages are provided as an alternative to actual damages under the
ACPA, and Plaintiff need not show actual damages to establish cybersquatting or to
recover statutory damages.

Source: FieldTurf, Inc. v. Triexe Mgmt. Group, Inc., 69 USPQ 2d 1861, 1863 (N.D. Ill.
2003)

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