A new administration often means a new approach to federal agency enforcement of the antitrust laws. And, a shift from Republican to Democrat often means more aggressive enforcement by the DOJ and FTC. The business and legal communities want to know, what can we expect?
James W. Lowe and Thomas Mueller of Wilmer Hale attempt to answer some of these questions in their article Whither US Antitrust?, published in the March 2009 issue of the Global Competition Review.
A few days ago I discussed a decision by Massachusetts U.S. District Court Judge Nancy Gertner holding that purchase of a trademarked keyword to trigger a sponsored link on a search engine constitutes a “use in commerce” of the trademark under the Lanham Act (the Federal Trademark statute). (Earlier post here). In that post I mentioned that among cases addressing this issues, only the Second Circuit had held otherwise.
Now the Second Circuit seems to have changed its position on this issue. In Rescuecom v. Google, issued on April 3, 2009, the court reversed a motion to dismiss by the trial court, holding that Rescuecom properly alleged that Google’s keyword ad practices constituted a “use in commerce” under the Lanham Act.
In a somewhat unusual step, the court attached to its opinion an Appendix entitled “On the Meaning of “Use in Commerce” in Sections 32 and 43 of the Lanham Act.” The Appendix, which is described as dicta, discusses at some length the statutory history of the “use in commerce” phrase in the Lanham Act.
This decision appears to be a game-changer for Google, and will require it to modify its policies on selling key word search ads to competitors.
Judge Marylin Hall Patel, a federal district judge in the North District of California (San Francisco/Silicon Valley) since 1980 and Chief Judge in the District from 1997 – 2004, is a well known federal judge when it comes to intellectual property matters. For example, Judge Patel decided the Grokster case at the district court level, which eventually was affirmed by the Supreme Court, and she has decided many patent cases. When she speaks on IP matters, one would do well to listen
Therefore, her March 26, 2009 decision in Cybersource v. Retail Decisions is of no small significance. In this case Judge Patel applied In re Bilski to invalidate two business method patent claims in U.S. Patent No. 6,029,154, titled “Method and system for detecting fraud in a credit card transaction over the Internet.” The CAFC’s decision in Bilski requires that a process either be tied to a machine or apparatus or involve a transformation, and Judge Patel held that the ‘154 patent failed this “machine-or-transformation” test.
Judge Patel held that a credit card number is not a physical object, thereby failing the “transformation” test, and she rejected the argument that because the claims were tied to the Internet they satisfied the “machine” test, since “one cannot touch the Internet.”
At the conclusion of her opinion she stated:
In analyzing Bilski, one is led to ponder whether the end has arrived for business method patents, whose numbers swelled following the decision in State Street. Without expressly overruling State Street, the Bilski majority struck down its underpinnings. This caused one dissenter, Judge Newman, to write that State Street “is left hanging,” while another dissenter, Judge Meyer, registered “an emphatic ‘yes’” to rejecting State Street, and a third, Judge Rader, queried whether the court was willing to decide that the entire field of business patents is “undeserving of incentives for invention.” 545 F.3d at 995, 998, 1014. Although the majority declined say so explicitly, Bilski’s holding suggests a perilous future for most method patents.
The observations of several Justices suggest that this issue may be expected to receive serious consideration by the Supreme Court . . . The closing bell may be ringing for business method patents, and their patentees may find they have become bagholders.
The issues associated with Electronically Discoverable Information (ESI) hang over the legal profession like the threat of Katrina II hangs over New Orleans. Lets face it: most judges and attorneys would do anything to avoid confronting the complexities of ESI. However, judges are good at forcing lawyers to face up to bad stuff, so it’s impossible to avoid the subject.
Of course, in a huge case involving large sums of money it’s no problem hiring a consulting firm that does all the work for the lawyers, and guides them every step of the way. However, that’s only 1 case in 100, if that. What about all the “little cases,” where expensive consultants are not an option?
The answer, not surprisingly, is the “keyword search.” After all, if we can search a trillion documents using Google, why not use key word search to find documents relevant to litigation.
Sadly, key word search is not very reliable. For example, if you have a million documents how would you formulate a key word search that would be certain to collect documents that relate to to people under age 12? In fact, recently the courts have noted the shortcomings of key word searching and criticized its use.
An excellent article in the April 2009 ABA Journal discusses these issues in some detail, and the good news is that some “very smart people” are working on a solution. The bad news, as I said, is that key word search is not very reliable, and this poses a problem until the problem is solved by these masterminds. To quote from the article:
It would be the ultimate discovery for e-discovery: a perfect method to turn terabytes of digital data into a collection of case-relevant documents.
Three years ago, a handful of lawyers and scientists started the quest, a project to save litigation from being buried in an avalanche of electronic documents. Since then, the Text Retrieval Conference Legal Track has been using different types of computer searches to wade through huge piles of digital information, hoping to get closer to a complete picture of what is issue-important in a computer’s data stores.
The good news: The TREC Legal Track team believes it is close to finding a protocol that can work. The bad: The project also found disturbing problems with the way lawyers work today.
And the harshest conclusion: Keyword searching—what most lawyers use to find litigation documents—misses the majority of relevant documents. Or as Jason Baron, one of the Legal Track study coordinators, puts it, “Lawyers need to understand that the way they have been searching for electronic documents has some serious flaws.”
So, just what is the “TREC Legal Track”? Well, the TREC Legal Track web page has a number of documents that discuss the efforts underway. The papers are, based on my perusal, not for the faint of heart – they involve technical assessments of the effectiveness of various search. Lets hope we can get by on old-fashioned key word searches until the happy day arrives when the TREC folks, or someone, finds that protocol.
“How does the court have confidence that the public integrity section has public integrity?”
Judge Emmett Sullivan, during the trial of former Senator Ted Stevens
Prosecutor: I already got no proof how the victim got hold of that heroin. Now you’re saying I can’t put Hodgins on the stand? Why?
FBI Agent: You don’t wanna know the answer to that.
Forensic Investigator: Why doesn’t she wanna know?
Prosecutor: As the prosecutor in this case, I’m obliged to share everything I know with the defense.
Forensic Investigator: [starts to explain…]
Prosecutor: Whoa! Goodnight!
From TV Show “Bones”
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Prosecutors have a legal duty to provide criminal defendants with exculpatory evidence. Every criminal prosecutor knows this – it’s probably Rule No.1 for prosecutors: “YOU MUST GIVE DEFENDANT EXCULPATORY EVIDENCE.” This has been a constitutional right since the 1963 Supreme Court decision in Brady v. Maryland.
Rules 2 and 3 are, don’t forget Rule No. 1.
Today’s decision by the Obama Justice Department to dismiss criminal charges against former Senator Ted Stevens means that prosecutors at the highest levels of the DOJ forgot this rule (or disregarded it). This is an enormous embarrassment for DOJ, and a probably a career killer for the attorneys involved, who are likely to be sacked, at the very least. (Keep in mind that former U.S. Attorney General Roberto Gonzales has been unable to find a private law firm job 18 months after his resignation, apparently due to the stigma associated with the assistant AG firings and other controversies associated with his tenure. It’s a tight job market for lawyers these days, but not that tight.)
Vindication is probably small consolation for Senator Stevens, whose loss in the last senatorial election was almost certainly due to his conviction just before the election. At age 85 he may recover his reputation, but he’s not likely to recover his Senate seat.
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