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

[Alexander Terekhov]

This is hilarious:

http://www.jmri.org/k/docket/289.pdf 

(Transcript of Proceedings held on 12-19-08, before Judge Jeffrey White.
Court Reporter/Transcriber Katherine Wyatt, Telephone number
925-212-5224. Per General Order No. 59 and Judicial Conference policy,
this transcript may be viewed only at the Clerks Office public terminal
or may be purchased through the Court Reporter/Transcriber until the
deadline for the Release of Transcript Restriction.After that date it
may be obtained through PACER. Any Notice of Intent to Request
Redaction, if required, is due no later than 5 business days from date
of this filing. Release of Transcript Restriction set for 5/4/2009.
(kpw, COURT STAFF) (Filed on 2/6/2009)) 

Enjoy Ms. Hall's (Jacobsen's counsel and Judge Jeffrey White's former
student at Boalt Hall where White has taught a course in civil trial
advocacy) Impeccable Lawyering performance... LOL. 

Selected quotes: 

"THE COURT: WELL, LET ME ASK -- BEFORE I GET A 
RESPONSE, I WANTED TO RAISE WHAT I CALL A "POP QUIZ" QUESTION, 
WHICH IS NOT ON THE TAKE HOME EXAM. AND I'LL WAIT UNTIL 
MS. HALL GETS HER WATER. 

I ACTUALLY HAD THIS QUESTION BEFORE I RECEIVED THE 
SUPPLEMENTAL AUTHORITY BY THE DEFENDANT, THE DEL MADERA 
PROPERTIES VERSUS RHODES & GARDNER. 

AND THE QUESTION IS: IS THERE ANY PREEMPTION ISSUE 
WITH FINDING THAT THE CAUSE OF ACTION IN COPYRIGHT LAWS THAT 
EVISCERATES THE BREACH OF CONTRACT CLAIM? IT STRIKES THE COURT 
THAT GIVEN THE BREADTH OF THE COPYRIGHT STATUTE, GIVEN THE 
LANGUAGE OF THE FEDERAL CIRCUIT'S OPINION IN THIS CASE, THAT 
THAT CASE IS RIGHT ON POINT AND PREEMPTS THIS CLAIM. 

WHY ISN'T THAT NOT TRUE? 

MS. HALL: I RESPECTFULLY DISAGREE. THE FEDERAL 
CIRCUIT DECISION STATES THAT A TERM CAN BE BOTH A COVENANT AND 
A CONDITION. AND THAT'S AT PAGE 1380. THUS, THE ARTISTIC 
LICENSE IS A BILATERAL IMPLIED PATENT CONTRACT. 

COPYRIGHT INFRINGEMENT AS A CLAIM OR AS A CAUSE OF 
ACTION REQUIRES OWNERSHIP AND AN UNAUTHORIZED EXERCISE OF AN 
EXCLUSIVE RIGHT. 

IT DOES NOT REQUIRE THE EXCHANGE OF PROMISES. AND IT 
IS THAT EXCHANGE OF PROMISES THAT IS THAT EXTRA ELEMENT AS 
DISCUSSED IN DEL MADERA THAT TAKES IT OUT OF PREEMPTION. 

THE COURT: I GUESS I READ THE SAME DECISION OF THE 
FEDERAL CIRCUIT THAT YOU DID. AND I JUST -- AND BEFORE I HEAR 
FROM THE DEFENDANTS I'D LIKE TO KNOW AFTER THAT OPINION -- AND 
YOU WERE KIND ENOUGH TO CITE THE ORAL ARGUMENT WHERE THE 
PARTIES SAID: 

"THIS IS NOT ABOUT DAMAGES. IT'S ONLY ABOUT 
INJUNCTION. THIS IS A COPYRIGHT CLAIM. IT'S NOT A 
CONTRACT CLAIM," CAN THE DEFENDANTS BE LIABLE FOR 
BOTH COPYRIGHT INFRINGEMENT AND CONTRACT DAMAGES ON THE EXACT 
SAME THEORY? 

MS. HALL: I BELIEVE SO. AND IF I RECOLLECT CORRECTLY 
I THINK YOU MAY FIND THAT IN THE NINTH CIRCUIT SUN MICROSYSTEMS 
VERSUS MICROSOFT CORPORATION. 

I THINK YOU'LL FIND IT THERE. YES, YOU CAN BOTH 
COPYRIGHT INFRINGEMENT AND CONTRACT. 

AND I MIGHT ADD THERE MAY BE SOMETHING IN -- AGAIN, 
THIS HIGHLIGHTS WHY THIS WOULD BE PREMATURE TO DISMISS. THERE 
MAY BE SOMETHING THAT WE FIND THAT FOR WHATEVER REASON AND FOR 
WHATEVER INTERPRETATION IT IS NOT COVERED. I MEAN, EVEN IF YOU 
DID SAY IT DID PREEMPT. 

THERE MAY BE SOMETHING THERE THAT WE ARE NOT AWARE OF 
THAT WOULD NOT BE COPYRIGHT INFRINGEMENT. 

THE COURT: WELL, FROM A METAPHYSICAL STANDPOINT 
THERE MAY BE FACTS OUT THERE IN THE WORLD NOBODY IS AWARE OF, 
OR AS OUR FORMER SECRETARY OF DEFENSE SAID "MAY NOT BE 
KNOWABLE." 

WE DON'T KNOW WHAT WE DON'T KNOW, RIGHT? WOULD YOU 
AGREE WITH THAT? 

MS. HALL: THAT'S TRUE. BUT I THINK THAT'S THE POINT 
OF DISCOVERY SO WE CAN GET A BETTER VIEW OF WHAT THE FACTS ARE. 
IT DOES NO HARM TO DEFEND THIS TO KEEP THIS BREACH OF CONTRACT 
CLAIM IN. 

THE COURT: MR. JERGER, IF YOU COULD RESPOND TO ALL 
OF THOSE POINTS. 

MR. JERGER: WELL, I THINK THE ISSUE IS ACTUALLY 
PRETTY SIMPLE, AND I THINK YOU NAILED IT. THE COPYRIGHT LAW 
COMPLETELY PREEMPTS THE STATE LAW BREACH OF CONTRACT CLAIM 
BECAUSE THERE'S NO EXTRA RIGHT TO REMEDIES IN THE CONTRACT ACT 
CLAIM. THEY ARE EQUIVALENT. THERE IS NO EXTRA ELEMENT, AND 
ALL OF THE DAMAGES, THE RELIEF, THE ELEMENTS WOULD BE PREEMPTED 
BY THE COPYRIGHT ACT. 

MS. HALL: AN EXTRA ELEMENT IS PROMISE. 

THE COURT: WAIT A MINUTE. 

MR. ZEFF, DO YOU WANT TO ADD ANYTHING? 

MR. ZEFF: YOUR HONOR, I DON'T THINK ISSUES TWO AND 
THREE ARE MY DOG IN THE FIGHT, SO I'LL STAY OUT OF THAT. 

THE COURT: OKAY. SOMETIMES THE DOGS ARE BROUGHT 
BACK INTO THE FIGHT OR BRING THEMSELVES BACK INTO THE FIGHT. 
BUT THAT'S FINE. 

MR. JERGER: INDEED, YOU'RE CORRECT, YOUR HONOR. 
THAT IS WHY I SUPPLEMENTED THE RECORD WITH THE DEL MADERA CASE 
TO HIGHLIGHT THAT ISSUE. 

THE COURT: NOW, HERE'S WHAT CONCERNS ME, MS. HALL. 
AND I'LL LET YOU REPLY IN A MOMENT. BUT IN READING YOUR BRIEFS 
YOU HAVE CLEARLY STATED IN YOUR PREVIOUS BRIEFS THAT YOU'RE NOT 
SEEKING CONTRACT DAMAGES. YOU'RE SEEKING EQUITABLE RELIEF. IN 
FACT, THAT'S WHAT YOU AND THE AMICI MADE BEFORE THE FEDERAL 
CIRCUIT. 

SO ISN'T IT A LITTLE BIT OF A CONTRADICTION TO COME 
BACK AND SAY: 

"OH, NO. NO. NO. WE ARE SEEKING CONTRACT 
DAMAGES AND INJUNCTIVE RELIEF"? 

MS. HALL: I GUESS HAVING LOOKED AT THIS A LITTLE BIT 
FURTHER, THE TERMS OR CONDITIONS VIOLATE THE TERMS. THEY ARE 
COPYRIGHT INFRINGEMENT. THERE IS THE ADDITIONAL ELEMENT OF A 
PROMISE HERE, AND THAT DOES TAKE IT OUT OF PREEMPTION. 

THE COURT: WHAT IS THE PROMISE? 

MS. HALL: THE PROMISE IS THE EXCHANGE OF PROMISES. 
WE PROMISED TO MAKE THAT SOFTWARE AVAILABLE. THEY PROMISED TO 
FOLLOW THE TERMS. 

THE COURT: AND WAIT. STOP. AND THE ARGUMENT THAT WAS 
EFFECTIVELY MADE BY THE PLAINTIFF BEFORE THE FEDERAL CIRCUIT IS 
THAT THOSE BREACHES OF PROMISES, IF THEY EXIST, CONSTITUTE 
COPYRIGHT INFRINGEMENT. 

MS. HALL: THAT'S TRUE. 

THE COURT: AND THE COURT AGREED WITH YOU. 

MS. HALL: THAT'S TRUE. 

THE COURT: SO ARE YOU ASKING ME TO GO AGAINST THE 
FEDERAL CIRCUIT'S DECISION? 

MS. HALL: NO. I'M SAYING THAT YOU WOULD DO BOTH 
COPYRIGHT INFRINGEMENT AND BREACH OF CONTRACT. 

THE COURT: ALL RIGHT. LET'S MOVE ON TO QUESTION 
NUMBER TWO, . . ." 

ROFL! 

"THE COURT: ALL RIGHT. LET'S MOVE ON TO QUESTION 
NUMBER TWO, WHICH HAS TO DO WITH IF THE COURT GAVE THE 
PLAINTIFF LEAVE TO AMEND, WHAT FACTS DO YOU HAVE OR COULD YOU 
ALLEGE THAT THE INFRINGING CONDUCT OCCURRED AFTER THE 
PLAINTIFF'S COPYRIGHT REGISTRATION, AND A CONCOMITANT OF THAT 
TO PLAINTIFF IS: WHY SHOULDN'T THE PLAINTIFF BE BOUND BY THE 
ALLEGATIONS IN HIS COMPLAINT REGARDING THE TIMING OF THE 
ALLEGEDLY INFRINGING ACTIVITIES, WHICH WAS VERY CLEAR? 

MS. HALL: THIS, TO ME, IS THE REASON WHY A MOTION TO 
STRIKE DAMAGES IS PREMATURE. THERE ARE TWO POINTS THAT WE WOULD 
MAKE. AND, ACTUALLY, WE PUT THIS IN OUR SURREPLY. THERE'S 
DIFFERING KINDS OF INFRINGEMENT. IF THERE IS DIFFERING KINDS 
OF INFRINGEMENT, THEN DEREK ANDREW VERSUS PROOF APPAREL IMPLIES 
THAT THE DATE THAT IT COMMENCED WOULD START A NEW ROUND OF 
INFRINGEMENT SO THAT YOU WOULD HAVE A COMMENCEMENT AFTER 
REGISTRATION. 

THE OTHER IS THERE'S INFRINGEMENT OF SEPARATE WORKS 
WHICH HAVE INDEPENDENT ECONOMIC VALUE AND ARE VIABLE. AND 
SOFTWARE VERSIONS WHICH THEY DON'T EVEN DESCRIBE IN THEIRS ARE 
OFTEN SEPARATE WORKS WHEN THERE IS A SIGNIFICANT DIFFERENCE 
BETWEEN VERSIONS. 

4 AND I WOULD POINT THE COURT TO THE MICROSOFT CASES. 
THERE ARE SIGNIFICANT -- YOU'LL SEE THIS ONCE WE GET INTO 
DISCOVERY AND ONCE THE FACTS START TO SHAKE OUT -- THERE ARE 
SIGNIFICANT DIFFERENCES BETWEEN JMRI VERSIONS. SOME OF THOSE 
WERE REGISTERED WITHIN THREE MONTHS OF PUBLICATION. 

WE ARE ALLEGING THAT THEY INFRINGED SOME OF THOSE, 
AND THEREFORE STATUTORY DAMAGES ARE AVAILABLE. 

THE COURT: ALL RIGHT. 

COUNSEL? 

MR. JERGER: WE ADDRESSED THE ISSUE OF SEPARATE WORKS 
IN OUR BRIEFING. AND THE PRIMARY CASE THERE IS THE WALT DISNEY 
CASE, AND WE WILL REST ON THAT. 
THE ISSUE -- AND WHEN YOU READ THAT I THINK IT 
BECOMES CLEAR THAT THE INFRINGEMENT -- ALLEGED INFRINGEMENT 
COMMENCED BEFORE THE FIRST REGISTRATION. THEN, THE ISSUE 
BECOMES MS. HALL -- IS PLAINTIFF BOUND BY THE FACTS IN THEIR 
COMPLAINT AND IN THEIR DECLARATION? 

FOR EXAMPLE, A VERY RECENTLY-FILED DECLARATION, 
DOCUMENT NUMBER 266, PARAGRAPH 10, BY MR. JACOBSEN SAYS: 

"HE -- "HE" REFERRING TO KATZER -- COPIED JMRI 
CONTENT IN JUNE, 2005." 

I THINK THE CASE LAW IS PRETTY CLEAR -- AND WE CITE 
SOME CASES IN OUR BRIEFS -- THAT THESE FACTUAL ALLEGATIONS IN 
DECLARATIONS AND IN THE COMPLAINT ARE JUDICIAL ADMISSIONS, AND 
THEY ARE ABSOLUTELY BOUND BY THOSE. AND THIS HIGHLIGHTS A 
BIGGER PROBLEM, WHICH I JUST REALLY WANT TO TOUCH ON, WHICH IS 
THE FACT THAT THIS LITIGATION IS NEVER GOING TO NARROW IN SCOPE 
IF WE CAN'T EVEN AGREE ON SOMETHING AS SIMPLE AS THIS WHERE 
THEY ARE ALLEGING IT, AND THEN TRYING TO PULL IT BACK. 

THE COURT: WELL, I DON'T WANT TO HEAR THAT. YOU MAKE 
THAT ALLEGATION. THERE MAY BE LEGAL CONSEQUENCES TO THAT. 
THAT'S WHY I ASKED THE QUESTION. 

AND AS FAR AS THESE OTHER POLICY REASONS WHY COURTS 
MAY HAVE COME UP WITH THE RULE OF JUDICIAL EQUITABLE ESTOPPEL 
AND ADMISSIONS, THAT MAY BE THE REASON. I'M NOT SAYING IT IS. 
BUT I DON'T NEED TO HEAR THE POLICY REASONS. 

I'VE CITED THE RULE, AND I'VE ASKED PLAINTIFF'S 
COUNSEL HOW PLAINTIFF AVOIDS THE RULE HAVING MADE THESE 
ADMISSIONS ON MULTIPLE OCCASIONS. YOU'VE GIVEN ME THE 
RESPONSE. 

WHAT'S YOUR REPLY? 

MS. HALL: A BARE ALLEGATION IS NOT AN ADMISSION. 
IN THE CASE THAT THEY CITED -- 

THE COURT: PARDON ME? AN ALLEGATION IN A SWORN 
DECLARATION BY YOUR CLIENT IS NOT AN ADMISSION? WHAT AUTHORITY 
DO YOU HAVE FOR THAT? 

MS. HALL: THEY ARE THE ONES WHO KNOW WHEN THEY 
INFRINGED. WE DON'T. 

THE COURT: BUT YOU MADE -- YOUR CLIENT MADE AN 
ALLEGATION. ARE YOU SAYING -- 

MS. HALL: WE'RE MAKING THE BEST BELIEF. 

THE COURT: WAIT. ARE YOU MOVING TO STRIKE YOUR OWN 
CLIENT'S DECLARATION? 

MS. HALL: NO. 

THE COURT: ALL RIGHT. I'LL LOOK AT THAT. I DON'T 
NEED ANY MORE ON THAT. THAT'S PRETTY CLEAR TO THE COURT. 

MS. HALL: OKAY." 

ROFL! 

Read the whole transcript. It's full of Ms. Hall's Impeccable Lawyering. 

regards,
alexander.

--
http://gng.z505.com/index.htm 
(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.)