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JMRI case -- Implementation of the Federal Circuit's Opinion

From: Alexander Terekhov
Subject: JMRI case -- Implementation of the Federal Circuit's Opinion
Date: Sat, 23 Aug 2008 15:33:01 +0200

Jacobsen says:

Implementation of Federal Circuit Ruling

Jacobsen has proposed an injunction, which is attached as Exhibit A. The
original motion for preliminary injunction sought to enjoin infringement
of JMRI Decoder Definitions 1.7.1. Jacobsen asks the Court to expand the
preliminary injunction to cover all versions of JMRI software. Jacobsen
will also ask the Court to enjoin Defendants from violation Sec. 1202.

Defendants argue that they need further briefing relating to irreparable
harm. Plaintiff addressed irreparable harm and balance of hardships in
his motion, so Defendants had the opportunity to address the issues
then. Also, as noted earlier, Defendants have argued—and continue to
argue in their motions to strike—that Plaintiff is not entitled to
monetary damages. Thus, Defendants admit damages are inadequate, which
is an important factor in favor of the issuance of an injunction.
Furthermore, the eBay decision issued 18 months ago, so again Defendants
have had long enough to file a surreply to discuss eBay. To delay the
injunction until further briefing is complete is to draw this case out
further and waste judicial resources. The preliminary injunction should

Jacobsen’s copyright covers JMRI materials. If Defendants make copies or
derivative works, or distribute JMRI materials, then Defendants are
infringing. Defendants’ products do not work unless they use a range of
decoder definition files, such as that which JMRI provides. Thus,
Defendants are motivated to use JMRI materials as a basis for their
products. Having already been found to infringe JMRI materials,
Defendants must provide documentation that they have independently
created their products, in order to bar an injunction. They had provided
nothing. Thus, the injunction should issue.

Katzer says:

Kamind Associates, Inc. and Matthew Katzer (collectively referred to as
“Katzer”) disagree with the entirety of Plaintiff’s statement above and
the attached Exhibit A and submit the following regarding the recent
decision of the Federal Circuit:


Implementation of the Federal Circuit’s Opinion

The Federal Circuit’s August 13, 3008 Opinion remands this case to this
Court for further findings on whether Jacobsen has demonstrated (1) a
likelihood of success on the merits and either a presumption of
irreparable harm or a demonstration of irreparable harm; or (2) a fair
chance of success on the merits and a clear disparity in the relative
hardships and tipping in his favor. Opinion at 15.

This Court did not reach these questions in its August 17, 2007 Order
denying Plaintiff’s Motion for a Preliminary Injunction. Since this
Court held that Plaintiff’s claim sounds only in contract, this Court

“therefore Plaintiff has not met his burden of demonstrating likelihood
of success on the merits of his copyright claim and is therefore not
entitled to a presumption of irreparable harm. See Sun Microsystems, 188
F.3d at 1119. Plaintiff has not met his burden of demonstrating either a
combination of probable success on the merits of his copyright claim nor
the existence of serious questions going to the merits. See,
202 F.3d at 1204-1205.”

Order Denying Plaintiff’s Motion forPreliminary Injunction at 11 [Dkt.
#158]. The Federal Circuit has held that Plaintiff has a viable
copyright claim, therefore these conclusions regarding irreparable harm
and success on the merits must be revisited by this Court.

To complicate matters, the law regarding the test for irreparable harm
for a preliminary injunction in the copyright law context has changed
dramatically since this Court issued its August 17, 2007 Order. In its
Order, this Court noted that:

“Under federal copyright law, however, a plaintiff who demonstrates a
likelihood of success on the merits of a copyright claim is entitled to
a presumption of irreparable harm. Sun Microsystems, Inc. v. Microsoft
Corp., 188 F.3d 1115, 1119 (9th Cir. 1999), citing Cadence Design
Systems v. Avant! Corp., 125 F.3d 824, 826-27 (9th Cir. 1997). ‘That
presumption means that the balance of hardships issue cannot be accorded
significant-if any-weight in determining whether a court should enter a
preliminary injunction to prevent the use of infringing material in
cases where…the plaintiff has made a strong showing of likely success on
the merits.’”
Order Denying Plaintiff’s Motion forPreliminary Injunction at 8 [Dkt.

In 2006, the Supreme Court eviscerated the presumption of irreparable
harm to motions for permanent injunctions in the patent infringement
context, holding that a Plaintiff seeking a permanent injunction must
demonstrate that the traditional equitable factors for granting an
injunction have been met. eBay Inc. v. MercExchange, LLC, 547 U.S. 388,
126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006). Since that time, and
subsequent to this Court’s August 17, 2007 Order, numerous courts,
including this Court, the Northern District of California, have held
that, as a result of eBay, the presumption of irreparable harm no longer
exists in the preliminary injunction context either. See e.g. Hologic,
Inc. v. Senorx, Inc., 2008 U.S. Dist LEXIS 36693 at *44-46 (N.D. Cal.
April 25, 2008), Tiber Labs, LLC v. Hawthorn Pharms., Inc., 527 F.
Supp.2d 1373, 1380 (N.D. Ga 2007); Voile Mfg. Corp. v. Dandurand, 551,
F.Supp.2d 1301, 1306 (D. Utah 2008); Sun Optics, Inc. v. FGX Int’l,
Inc., 2007 U.S. Dist. LEXIS 56351, 2007 WL 2228569, at *1 (D. Del.
August 2, 2007); Torspo Hockey Int’l Inc. v. Kor Hockey Ltd., 491 F.
Supp. 2d 871, 881 (D. Minn. 2007); Allora, LLC v. Brownstone, Inc., 2007
U.S. Dist. LEXIS 31343 (W.D.N.C. April 27, 2007) (copyright

Additionally, a district court in the Ninth Circuit has recently held
that no presumption of irreparable harm results from a finding of
liability in a copyright case following eBay. Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d. 1197, 1210-1214. (C.D.
Cal. 2007). Therefore, Katzer believes that the cases cited in this
Court’s August 17, 2007 Order regarding the presumption of irreparable
harm are no longer good law post-eBay.
As a consequence, Katzer believes that Plaintiff is now required to meet
his burden of demonstrating irreparable harm and can no longer rest on
this former presumption as he did in his papers in support of his motion
for preliminary injunction. Additionally, Katzer believes that since the
presumption of irreparable harm is gone, it is now necessary for the
Court to make findings on the balance of hardships between the parties
should an injunction issue, and for Katzer to introduce evidence into
the record regarding the hardship imposed by a preliminary injunction
from this Court. Since Plaintiff must now prove irreparable harm and
Katzer is entitled to introduce evidence of the hardship created by an
injunction, Katzer believes that a hearing is necessary for the
introduction of this evidence before any injunction can issue. See Fed.
Rule Civ. P. 65. Katzer also requests that he be allowed to provide this
Court additional legal briefing on why the presumption of irreparable
harm no longer exists in a copyright preliminary injunction proceeding
following eBay and how it is not possible for Plaintiff to demonstrate
irreparable harm in this case.

Lastly, Plaintiff must prove a likelihood of success on the merits or a
fair chance of success on the merits of his copyright claim. Plaintiff
has not yet specifically identified the copyrighted material that is the
subject of the proposed motion and Plaintiff’s attached Exhibit A
broadens significantly the scope of the injunction from the original
motion. Therefore, further findings must be made by this Court to
determine whether Plaintiff has met his burden on the merits issue and
the scope of any proposed injunction.

Katzer proposes the following briefing schedule on the preliminary
injunction motion:

October 3, 2008: Plaintiff submits Supplemental Memorandum in Support of
Motion for Preliminary Injunction

November 7, 2008: Defendant submits Supplemental Memorandum in

November 21, 2008: Plaintiff submits Reply

December 13, 2008: Evidentiary hearing on Plaintiff’s Motion for
Preliminary Injunction


(GNG is a derecursive recursive derecursion which pwns GNU since it can
be infinitely looped as GNGNGNGNG...NGNGNG... and can be said backwards
too, whereas GNU cannot.)

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