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)
Defendants’ Additional Proposed 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
enrico.schaefer@traverselegal.com
brianhall@traverselegal.com
Lead Attorneys for Plaintiff
William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
(213) 955-9240
williamdelgado@willenken.com
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
(313) 225-7000
734-662-4426
stasevich@butzel.com
apatti@hooperhathaway.com
steffans@butzel.com
Attorneys for Plaintiff
Local Counsel for Defendants
______________________________________________________________________
DEFENDANTS’ 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 FORM
You will take the verdict form to the jury room. The verdict form contains various
questions and instructions which you should follow. When answering a question, you
should read each question, discuss amongst yourselves, and then answer the question as a
group. Your answer to each question must be unanimous. That is, every one of you must
answer the question with the same answer. Your foreperson should fill in your unanimous
answer to the question on the verdict form. When you have reached unanimous agreement
on a question and have indicated as such on the verdict form, you may then move to the
next question or section on the verdict form as instructed by the form. When you have
reached the end of the verdict form, your foreperson will date and sign it and inform the bailiff
that you are finished.
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.
Authority:
Defendants‟ proposed Instruction No. 8 is very similar to Plaintiff‟s proposed Instruction No. 8
but provides a more comprehensive explanation of the verdict form (the bold language),
including the importance of reaching unanimity as to each question on the verdict form.
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:
Defendants‟ proposed instruction is similar to Plaintiff‟s but would strike the phrase “both
negligent and” as indicated above. This Court has already held that “willful blindness” is
insufficient to trigger liability under the ACPA. Order Denying Motions for Partial Summary
Judgment, Docket No. 232.
By extension, “negligence” (which is a lower level of culpability than “willful blindess”) would
also be insufficient to trigger liability under the ACPA so it would be improper to instruct the
jury that a corporation can be liable under the ACPA if its employees acted “negligently.” Only
an intentional act by its employees would suffice.
INSTRUCTION NO. 10
SPOLIATION/DESTRUCTION OF EVIDENCE
(DEPENDING ON HOW EVIDENCE COMES IN AT TRIAL)
Authority:
Defendants do not believe that any instruction on spoliation/destruction of evidence would be
appropriate as indicated in their motion in limine on this topic. Defendants reserve the right to
propose an instruction in the event the Court elects to give one.
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 and 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.
Defendants Connexus Corporation, Firstlook, Inc., and Navigation Catalyst Systems
are Delaware corporations having their principal place of business in California.
Connexus is the parent corporation of Firstlook which is the parent corporation of
Navigation Catalyst. Defendants maintain that while they registered and monetized
Internet domain names in bulk, they never registered, used, or trafficked in any domain
names that were confusingly similar to Plaintiff’s trademarks with the bad faith intent to
profit therefrom.
Authority:
Defendants instruction differs from Plaintiff‟s proposal in that it adds a section on Defendants‟
position thus making it consistent with the jointly prepared theory of the case.
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 for a particular set of goods or services 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. So, for
example, the company APPLE could prevent others from selling computers that are
marketed as APPLE but could not prevent farmers from marketing the fruit called
“apple” for sale.
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
Authority:
Defendants proposed Instruction No. 12 is very similar to Plaintiff‟s proposed instruction but
would add the language highlighted in bold. The rights to the exclusive use of a trademark are
inherently limited by the particular class of goods and services (e.g., the class that appears in the
trademark registration), and the jury instruction requires this language to be a complete and
accurate recitation of law. See 15 U.S.C. § 1115(a) (referring to registrant‟s exclusive right to
use the registered mark in commerce “on or in connection with the goods or services specified
in the registration subject to any conditions or limitations stated therein.”) (emphasis added).
The additional language involving “Apple” provides a practical example which highlights
when a trademark owner can restrict use and when it cannot.
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 for a particular set of goods and services.
Registration of a mark entitles the owner to sue for trademark 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:
Defendants‟ changes to Plaintiff‟s proposed instruction are three-fold:
1. It adds a phrase regarding “a particular set of goods and services” for the reasons noted
with respect to Instruction No. 12.
2. It adds the word “trademark” before infringement to make the language more clear.
3. It strikes the sentence involving constructive notice. The concept of “constructive
notice” is relevant in traditional Lanham Act claims. It is not relevant nor should it be
applied in ACPA cases where the test is one for “bad faith intent.”
Indeed, as this Court noted in its previous Order, Docket No. 232, the Sixth Circuit‟s case
of Lucas Nursery and Landscaping v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004) quoted
from the Senate Report accompanying the ACPA. That reported defined cybersquatters
as those who registered “well-known” marks and brand names in the hopes of extortion.
It did not define cybersquatters as those who registered domain names that might be
similar to one of the tens of thousands of rarely-known trademarks that just happen to be
registered with the Trademark Office.
Lastly, Plaintiff‟s “constructive notice” argument is part-and-parcel of its argument that
Defendants‟ acted with “willful blindness.” Given that the “willful blindness” argument
has already been rejected by the Court, so, too, should the “constructive notice” argument
be rejected.
INSTRUCTION NO. 16
ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT
INTRODUCTORY INSTRUCTION AND DEFINITIONS
Plaintiff seeks damages from defendants 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. Congress enacted the ACPA to prohibit “cybersquatting” which
occurs when a person other than the trademark holder registers the domain name of a well
known trademark and then attempts to profit from this by either ransoming the domain
name back to the trademark holder or by using the domain name to divert business from
the trademark holder to the domain name holder.
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)
Defendants 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)
Defendants did so with a bad faith intent to profit.
In this case, Plaintiff‟s registered trademarks are distinctive as a matter of law.
Authority:
Defendants‟ changes to Plaintiff‟s proposed instruction are as follows:
1. Plaintiff‟s recitation of the “purpose” of the Act has been replaced by language from the
Court‟s Order (Docket No. 232) which more accurately tracks caselaw as to the purpose
of the ACPA. Order, Docket No. 232, at p. 3 citing Sporty’s Farm LLC v. Sportsman’s
Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000).
2. Defendants have deleted Plaintiff‟s language that certain elements are not contested by
Defendants. Defendants contest all elements.
3. Defendants have deleted Plaintiff‟s language that the marks are distinctive as a matter of
law and offer a specific instruction on that issue in Instruction No. 17.
INSTRUCTION NO. 17
DISTINCTIVE OR FAMOUS
I will now instruct you on how to determine whether Plaintiff‟s trademarks are distinctive
or famous. Trademarks can be distinctive in one of two ways. They can be “inherently
distinctive” or they can have “acquired distinctiveness.”
An inherently distinctive trademark is one that almost automatically tells a consumer that
it refers to a brand or a source for a product. A trademark is inherently distinctive if it is a
“fanciful,” “arbitrary,” or “suggestive” term. A “fanciful” term is a newly created word or parts
of common words that are used in a fictitious, unfamiliar, or fanciful way. For example, “Exxon”
for gasoline is a fanciful mark. An “arbitrary” term is a common term used in an unfamiliar way.
For example, “Apple” for computers is an arbitrary mark. A “suggestive” term implies some
characteristic or quality of the product. If the consumer must use imagination, reflection, or
additional reasoning to understand the meaning of the mark as used with the product, then the
mark is suggestive. For example, “Coppertone” for suntan lotion is a suggestive mark because it
is suggestive of suntanned skin.
Another type of valid trademark is a “descriptive” term that has “acquired
distinctiveness.” A “descriptive” term directly identifies or describes some characteristic or
quality of the product in a straightforward way that requires no imagination or reasoning to
understand the meaning of the trademark. For example, “All Bran” for cereal is a descriptive
trademark because it describes a characteristic of the cereal. A descriptive trademark can be
valid only if it has “acquired distinctiveness.” To determine whether a descriptive trademark has
acquired distinctiveness, you may consider the following factors: (1) direct consumer testimony,
(2) consumer surveys, (3) exclusivity, length, and manner of use, (4) amount and manner of
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advertising, (5) amount of sales and number of customers, (6) established place in the market,
and (7) proof of intentional copying.
A “famous” mark is a mark that has become a household name such as BUICK, KODAK
or TYLENOL. In determining whether Plaintiff‟s trademarks are famous, you may consider the
following factors:
1.
The duration, extent, geographic reach of advertising and publicity of the mark,
whether advertised or publicized by the owner or third parties.
2.
The amount, volume, and geographic extent of sales of goods or services offered
under the mark.
3.
The extent of actual recognition of the mark.
4.
The nature and extent of use of the same or similar trademark by third parties.
Authority
For explanation of inherent and acquired distinctiveness: See Wal-Mart Stores, Inc. v. Samara
Brothers, Inc., 529 U.S. 205, 212 (2000) (“a product‟s color is unlike a „fanciful,‟ „arbitrary,‟ or
„suggestive‟ mark, since it does not „almost automatically tell a customer that [it] refers to a
brand.‟”) (emphasis in original; quoting Qualitex Co. v. Jacobson Products Co., 514 U.S. 159.
163 (1995)); Bliss Salon Day Spa v. Bliss World LLC, 268 F.3d 494, 496 (7th Cir. 2001)
(“Suggestive („Tide‟ laundry detergent), arbitrary („Apple‟ computers), and fanciful („Exxon‟
gasoline) marks collectively are distinctive in the sense that secondary meaning is likely to
develop, as a result of which any duplicate use of the name is likely to breed confusion about the
product‟s source. Generic marks, on the other hand, designate the products themselves rather
than any particular maker, and descriptive marks might (but usually won‟t) acquire
distinctiveness.”).
For acquired distinctiveness: Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters,
Inc., 280 F.3d 619, 636 (6th Cir. 2002) (“A non-inherently distinctive mark or dress can have
acquired distinctiveness through attachment of secondary meaning…”); General Motors Corp. v.
Lanard Toys, Inc., 468 F.3d 405, 418 (6th Cir. 2006) (listing factors for secondary meaning).
For famousness: Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir.
2004); Friesland Brands, B.V. v. Vietnam Nat. Milk Co., 228 F. Supp. 2d 399, 412; 15 U.S.C. §
1125(c)(1).
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For instruction in general: Even if Plaintiff‟s trademarks are deemed to be “distinctive” as a
matter of law as Plaintiff requests, the ACPA specifically provides that the jury can consider “the
extent to which the mark…is or is not distinctive and famous within the meaning of subsection
(c).” 15 U.S.C. 1125(d)(1)(B)(IX) (emphasis added). In order for the jury to determine the
“extent” to which Plaintiff‟s marks are distinctive and or famous, they must know about
distinctiveness, the spectrum of distinctive marks, and the factors for famousness.
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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 for the entirety of the registration period.
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.
A person may be liable for using a domain name only if that person is the registrant
of the domain name or the authorized licensee of the registrant.
In this case, Defendants do not contest that they registered and used the domain names
listed on Exhibit **.
Authority:
Defendants‟ changes from Plaintiff‟s proposed instructions are as follows and for the following
reasons:
1. An addition to the definition of “registers” (which is not defined in the ACPA) to
make clear that “registration” requires an intent to keep the domain name for the
entirety of the registration period. This particular issue will likely require further
briefing and hearing.
2. Striking Plaintiff‟s definition of “use” which does not comport with the language of
the ACPA and replacing it with the language of the ACPA. 15 U.S.C. §
1125(d)(1)(D).
3. Striking the suggestion that Defendants are not contesting registration and/or use.
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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:
Plaintiff‟s cited authority does not support the statements that Defendants have struck. The law
does not contemplate a test like the one proposed by Plaintiff (i.e., that words or letters added to
the Plaintiff‟s mark “clearly distinguish” them from Plaintiff‟s usage). The addition of letters or
words or the substitution of even a single letter might be sufficient to overcome “confusing
similarity” (e.g., consider the domain names “niceshoes.com” and “nikeshoes.com” which differ
by only one letter but are unlikely to be confused).
Similarly, the addition of a descriptive or generic term might affect confusing similarity as is
evidenced by gripe sites (e.g., consider “disney.com” and “disney-sucks.com”).
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INSTRUCTION NO. 20
TYPOSQUATTING
Authority:
Defendants do not believe an instruction on “Typosquatting” is necessary. The ACPA does not
mention “typosquatting” such that a definition must be given nor do the five prima facie
elements of an ACPA claim require the court to define “typosquatting” for the jury. Plaintiff is
free to argue that the domain names at issue are typographical variations of Plaintiff‟s trademarks
without requiring the need for an instruction on a specialized term.
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INSTRUCTION NO. 21
BAD FAITH INTENT TO PROFIT
To help you decide whether defendants 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 defendants.
3.
The extent of defendants‟ prior use of the domain names listed on Exhibit ____ in
connection with good faith offering of goods or services.
4.
Defendants’ good faith non-commercial or fair use of the trademarks in a site
accessible under the domain name.
5.
Whether defendants 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.
6.
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
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offering of goods or services; or whether defendant has exhibited a pattern of such conduct in
the past.
7.
Whether defendants: (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 defendants had some legitimate reason to hide his identity.
8.
Whether defendants has registered or otherwise acquired multiple domain names
in addition to the domain names at issue that defendants know are identical to or, 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.
9.
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:
Defendants‟ proposed instruction:
1. Adds Factor No. 4 which is missing in Plaintiff‟s proposed instruction. 15 U.S.C. §
1125(d)(1)(B)(i)(IV).
2. Fixes a typographical error in Factor 8.
3. Deletes the language about Plaintiff‟s marks being distinctive as a matter of law. The
relevant inquiry is not whether they are distinctive but the extent to which they are
distinctive.
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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. However, in considering what is a just damages award under the ACPA, you may
consider the actual damage or harm to Plaintiff, if any, as well as the actual profit realized
by Defendant.
Authority:
Defendants‟ proposed instruction specifically instructs the jury that they can consider Plaintiff‟s
harm/damages as well as Defendants‟ actual profit in determining statutory damages.
Defendants‟ arguments and authority for this proposition is set forth in Defendants‟ Motion in
Limine No. 6.
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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
(213) 955-9240
williamdelgado@willenken.com
Lead Counsel for Defendants
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