Vol. 3, No. 3

Court Denies Preliminary Injunction in Domain Name Trademark Case
This is a recently published opinion in a trademark case involving a dispute over the use of the name “Jupiter Hosting” by Santa Clara, California-based Internet firm Jupiter Hosting, Inc. The name “Jupiter Hosting” is similar to the trademark “JUPITER” registered with the U.S. Patent and Trademark Office (PTO) by Jupitermedia Corporation, an Internet research company based in Darien, Connecticut. On May 7, 2004, Jupiter Hosting filed a complaint in U.S. District Court for the Northern District of California seeking a declaratory judgment that it was not violating Jupitermedia Corp.’s intellectual property rights by conducting business under the name “Jupiter Hosting” and maintaining the website “jupiterhosting.com.” On July 16, 2004, Jupitermedia filed a motion for a preliminary injunction against Jupiter Hosting, alleging its use of that name violated the Lanham Act, the Anticybersquatting Consumer Protection Act (ACPA), and California’s Unfair Competition Law. The court denied the motion, finding that Jupitermedia did not have a high probability of success on the merits and that it failed to show it would suffer irreparable injury without the injunction.To obtain a preliminary injunction, the court stated, a party must show either (1) probable success on the merits and the possibility of irreparable harm or (2) serious questions on the merits and a showing that the balance of hardships weighs heavily towards the moving party. The court then analyzed whether these criteria could be met under the Lanham Act, the ACPA, or California’s Unfair Competition Law.

Michigan Federal District Court grants preliminary injunction to block enforcement of statute against exposure of violent video
In an action brought by three video game businesses, the United States District Court for the Eastern District of Michigan preliminarily enjoined the enforcement of a portion of Michigan 2005 Public Act 108 (the “Act”), which prohibited “the dissemination, exhibit[ion], or display of certain sexually explicit and ultra-violent explicit video games to minors without the consent of their parents or guardians.” The Court held that the defendants, officials of the State of Michigan, were unlikely to succeed on the merits and, should the statute be enforced, irreparable harm would follow from the loss of First Amendment freedoms. In conducting its analysis, the Court applied a four factor test to determine whether to grant a preliminary injunction: (1) whether the plaintiffs were likely to prevail on the merits, (2) whether irreparable injury would ensue if the injunction was not granted, (3) whether the injunction would harm others, and (4) whether the injunction was in the public interest.

Radio Interference Constitutes Violation of Computer Fraud and Abuse Act (CFAA)
The city of Madison, Wisconsin uses a computer-based radio system for police, fire, ambulance and other emergency communications. The radio system spreads transmissions across 20 frequencies, one of which is reserved as a control channel for initiating conversations. On multiple occasions between January and August 2003, mobile radio units in Madison mysteriously malfunctioned, and on Halloween of that year the city’s entire radio system went down because a powerful signal blanketed the city and prevented communications over the control channel. As a result, public safety departments were unable to coordinate their activities.

WIPO Panel transfers Disputed Domain Name to BMW
The domain name dispute in question was filed with the WIPO Arbitration and Mediation Center on September 2, 2005 and decided by a sole panelist on October 20, 2005.

The disputed domain name was registered with eNom on June 11, 2005, eleven days before BMW AG acquired a majority shareholding in Sauber Motorsport AG and announced that BMW and Sauber would jointly create a Formula One racing team. BMW and Sauber allege that the respondent was speculating on the merger in response to rumors in the press about the potential collaboration that had been circulating since February 2005.
BMW and Sauber submit that the respondent, an auto repair shop specializing in Datsun Z cars, was not a trademark licensee and therefore lacked authorization to use their names or logos. They also allege that in response to the complaint, the respondent attempted to act like a racing fan by posting “fake” content on the website in order to show fair use.

New York Can Tax 100% of Tennessee Telecommuter’s Income
The United States Supreme Court recently denied certiorari for a Court of Appeals of New York case holding that New York could tax 100% of the income of a Tennessee resident who telecommuted from Tennessee for a New York employer 75% of the time, and was only physically present in New York 25% of the time. The Plaintiff sought Supreme Court review under 28 U.S.C. Section 1257(a) because of the constitutional questions involved in the case. The Plaintiff had brought suit against the New York State Division of Tax Appeals to overturn a decision that 100% of his income was taxable in New York. The decision relied on New York’s “convenience of the employer” test which states that nonresidents working for New York employers must pay taxes on work done in another state unless it is done out of state for the necessity of the employer. The Plaintiff claimed that taxing the income he earned in Tennessee was a violation of New York tax law and violated his due process rights. The Court of Appeals of New York denied both his claims.

Board rejects “technological arts” test for process patents
The Board of Patent Appeals and Interferences addressed whether there was a separate “technological arts” test aside from the statutory subject matter test used to decide if an invention is eligible for patent protection. The pending patent application was for a method of compensating a manager who controls operations of a firm for the purpose of reducing the degree to which prices exceed marginal costs in an industry. The issue was whether the method was a process that could be excluded from patent protection. The board found that there was no separate test for “technological arts” and therefore reversed the decision of the patent examiners that the applicant’s process was not patentable.

Florida Court Rules That State Must Produce Intoxilyzer Source Code

As part of the ongoing criminal trial State v. Bjorkland, No. 2004 CT 014406 (Sarasota County Ct. Nov. 2, 2005) (order granting access to source code), a Florida trial court recently ruled that the State of Florida must produce the software source code for the EPROM’s (erasable programmable read only memory) in the Intoxilyzer machine used to test the defendants’ blood alcohol content. The defendants in the case claim that they need access to the EPROM’s in order to determine whether the devices have been modified and whether they have been approved by the Florida Department of Law Enforcement. The court held that, contrary to the arguments of the State, the production of the source code was material to the defendant’s theory of defense and that the State could be compelled to produce the source code even though it was maintained as a confidential trade secret by CMI, Inc., the vendor who manufactured the machines.

Illinois District Court rejects personal jurisdiction over California newspaper based solely on their website
Plaintiffs Bo Jackson (“Jackson”) and Ellen Coleman brought an action initially in the Circuit Court of Cook County, Illinois, alleging defamation, invasion of privacy and intentional infliction of emotional distress in response to an article in defendants’ newspaper, published in California, and on its website stating that "Bo Jackson lost his hip because of anabolic [steroid] abuse."After removing the action to the United States District Court for the Northern District of Illinois, Eastern Division, defendants moved to dismiss for want of personal jurisdiction and improper venue or, in the alternative, to transfer the case to California. The Court granted defendants’ motion to dismiss and found personal jurisdiction lacking because defendants did not have the requisite “minimum contacts” with Illinois. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980).. To reach this conclusion, the Court relied primarily on two tests: a “targeting” test from Calder v. Jones, 465 U.S. 783 (1984) and a “sliding scale” test of website interactivity from Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D.Pa.1997).