Fair Use of Trademark in Domain Name – Ninth Circuit

by admin on August 10, 2010

Chief Judge Kozinski

Chief Judge Kozinski

The Ninth Circuit held that the domain names buy-a-lexus.com and buyorleaselexus.com could be fair use of the Lexus trademark. Toyota Motor Sales, U.S.A., Inc. v. Tabari, opinion by Judge Kozinski dated July 8, 2010. Excerpts are below.

The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), and found that the Tabaris’ domain names — buy-a-lexus.com and buyorleaselexus.com— infringed the Lexus trademark. But we’ve held that the Sleekcraft analysis doesn’t apply where a defendant uses the mark to refer to the trademarked good itself. … The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We’ve long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement.”
…
In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.
…
The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or “more” of a mark than necessary. But if the nominative use satisfies the three-factor New Kids test, it doesn’t infringe. If the nominative use does not satisfy all the New Kids factors, the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether.
…
The injunction here is plainly overbroad … because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement. The Tabaris are prohibited from doing business at sites like independent-lexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn’t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.
…
[Under the injunction by the Trial Court, t]he Tabaris may not do business at lexus- broker.com, even though that’s the most straightforward, obvious and truthful way to describe their business. The nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it’s unlikely to cause confusion as to sponsorship or endorsement.
…
The inclusion of such words [e.g. "independent"] will usually negate any hint of sponsorship or endorsement, which is why we mentioned them in concluding that there was no infringement in Volkswagenwerk. …But that doesn’t mean such words are required … Our subsequent cases make clear they’re not.
…
[in footnote 3:]
Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark.
…
When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder.
…
Toyota asserts that, even if the district court’s injunction is overbroad, it can be upheld if limited to the Tabaris’ actual domain names: buyorleaselexus.com and buy- a-lexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris’ use of the mark was “necessary” to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It’s true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it’s enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal.
…
[in footnote 9:]
The Seventh Circuit has similarly upheld the right of a seller of Beanie Babies to operate at “bargainbeanies.com” on the grounds that “[y]ou can’t sell a branded product without using its brand name.”
…
The disclaimer stated, prominently and in large font, “We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker.” While not required, such a disclaimer is relevant to the nominative fair use analysis. … Because there was no risk of confusion as to sponsorship or endorsement, the Tabaris’ use of the Lexus mark was fair.
…
On remand, Toyota must bear the burden of establishing that the Tabaris’ use of the Lexus mark was not nominative fair use. A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. … A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion.
…
We vacate and remand for proceedings consistent with this opinion. At the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris. Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.

The opinion did not mention the Anticybersquatting Consumer Protection Act. The ACPA prohibits cybersquatting on a domain name that is confusingly similar to another person’s trademark, with a bad faith intent to profit from the registration typically by selling the domain name to the trademark owner.

The Tabaris ran an actual automobile brokerage business using their websites, and nothing was said about any attempt to sell the domain names to Toyota. In the absence of intent to profit by selling the domain names, there was no bad faith under the ACPA, and the ACPA was not applicable.

For additional commentary on the trademark infringement issues raised in the opinion, see blog post by Prof. Barbara Tushnet, and a blog post by Prof. Eric Goldman that compares this opinion to an earlier domain name opinion, also by Judge Kozinski.

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Business method patents questioned by US Supreme Court in Bilski opinion

by admin on June 28, 2010

The long awaited opinion by the US Supreme Court in the Bilski case was released today and discusses business method patents, but does not yet invalidate them. For the opinion click here.

Holding not based on invalidity of business method patents

The opinion by Justice Kennedy affirmed the denial of a patent, based on the unpatentability of abstract ideas. However, the opinion did not preclude business method patents.

“Petitioners’ application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula.”

business method patent on energy hedging process

Business method patent on energy hedging process?

The opinion leaves the limits of business method patents for future development.

Section 101 similarly precludes the broad contention that the term “process” categorically excludes business methods. The term “method,” which is within §100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing business.

. . .

[W]hile §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

. . .
Finally, even if a particular business method fits into the statutory definition of a “process,” that does not mean that the application claiming that method should be granted. In order to receive patent protection, any claimed invention must be novel, §102, nonobvious, §103, and fully and particularly described, §112. These limitations serve a critical role in adjusting the tension, ever present in patent law, between stimulating innovation by protecting inventors and impeding progress by granting patents when not justified by the statutory design.

…

petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea.

Concurring opinion hostile to business method patents

The concurring opinion by Justice Stevens makes a statement about business method patents.

The wiser course would have been to hold that petitioners’ method is not a “process” because it describes only a general method of engaging in business transactions—and business methods are not patentable.    More precisely, although a process is not patent-ineligible simply because it is useful for conducting business, a claim that merely describes a method of doing business does not qualify as a “process” under §101.

The Stevens concurring opinion comments on the economic effect of business method patents.

Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation. That can take a particular toll on small and upstart businesses. Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace.

Also available online are the merit briefs and amicus briefs that were submitted.

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Copyright litigation – Expansive jurisdiction in Ninth Circuit

by admin on August 11, 2009

A recent Ninth Circuit opinion sets out an expansive jurisdiction analysis. The case was for copyright infringement.

The opinion sets out the minimum contacts requirement for jurisdiction.

“This Court employs a three-prong test to determine whether a party has sufficient minimum contacts to be susceptible to specific personal jurisdiction:
(1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum,
thereby invoking the benefits and protections of its laws;
(2) the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.”

The Court then discussed the first requirement, of purposeful direction or availment. A purposeful availment analysis applies to contract actions; a purposeful direction analysis applies to tort actions.

Since copyright infringement is characterized as a tort, purposeful direction is determined using the three-part “Calder-effects” test, taken from the U. S. Supreme Court’s decision in Calder v. Jones, 465 U.S. 783 (1984).

Under this test, “the defendant allegedly must have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state.”

The mere maintenance of a passive website alone cannot satisfy the express aiming requirement.

The express aiming requirement is satisfied when the defendant engaged in wrongful conduct targeted at a plaintiff, and the defendant knows the plaintiff is a resident of the forum state.

“By thus individually targeting Brayton Purcell, a known Forum resident, Recordon expressly aimed its conduct at the Forum. Assuming the dissent is correct that something more than knowledge of the residence of the plaintiff is required for there to be express aiming at the Forum, such a requirement is satisfied here; the parties are competitors in the same business so that the intentional infringement will advance the interests of the defendant to the detriment of the Forum interests of the plaintiff. The express aiming prong is therefore satisfied.”

The dissent argues that this was not enough.

“Pebble Beach and Schwarzenegger establish that knowledge of the plaintiff’s residence and a foreseeable harm to the plaintiff are, standing alone, insufficient to establish express aiming; ‘something more’ is required in order for the state of the plaintiff’s residence to constitute a proper forum.”

The opinion is available at Brayton Purcell v Recordon & Recordon.

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New search page for Oregon cases

by admin on April 6, 2009

This site now offers a fast and free search engine, to find relevant Oregon cases from the last ten years. Included are Oregon cases about civil law, criminal law, negligence, contracts and all the other issues that were appealed. The search results link to the slip opinions of the Oregon Supreme Court and Oregon Court of Appeals.

You can get much of what you need in 10 minutes using this feature. Just put the relevant words into the search box, and click on the Go! button.

If you get more than 50 results, add more words to the search box to narrow down the results. You may see that you need to put in a negative term to eliminate irrelevant results that tend to include your search words.

Then, print the first results page. The first page of results will have the top 10 cases, put at the top by the statistical ranking calculated by the search program.

With the print out in hand, start clicking on the results, top to bottom. If a case is irrelevant, cross it off and go to the second, etc. In a few minutes you will have close to a finished understanding of the relevant law.

This search facility is fast. I suspect it is much faster than the competition. In fairness to the competition, the database is only 10 years of case law. You are invited to run a speed test comparison and let me know what your experiment reveals.

The site works reasonably well if you use an iPhone or a T-Mobile G1 phone, given the limitation of using the small screen on such a smart phone. Making a search from your smart phone may be of use if you need a quick look while you are out of the office, perhaps while waiting in the courthouse and you just spotted another issue.

Your comments are invited, and will help improve the search facility.

- E. J. Simmons

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Another unfortunate arbitration agreement

by admin on March 23, 2009

In March of 2009, the United States Court of Appeals for the Ninth Circuit upheld the dismissal of a case with prejudice. The plaintiff had agreed to arbitration but could not afford the $220,000 advance arbitration fee. Kam-Ko Bio-Pharm v. Mayne Pharma, No. 07-35449. This left the party with no remedy.

The decision follows settled law. That is, if you are a business (not a consumer or employee) and you sign an arbitration contract, you are bound by the contract terms. But the unfortunate parties who sign ridiculous arbitration contracts do not understand the implications of an agreement to arbitrate.

There are 2 problems with the arbitration process: It is more expensive than Court proceedings, and the decisions are of lower quality, i.e., arbitrary.

I recommend arbitration generally in situations where you are wealthier than the other party and you do not care about the outcome.

Arbitration is expensive

As in the case cited, the parties have to pay for private arbitration.

On the other hand, in the Court setting, access to the system is a benefit of our government, already paid for by our taxes. For a $350 filing fee you get the benefit of an excellent system.

Lower quality because of less experience

Many arbitrators are attorneys who are considering becoming Judges someday. The typical arbitrator has heard a small fraction of the number of cases heard by the typical Judge.

“Early on the learning curve” translates to “increased probability of mistakes”.

To lesson the effect of random factors, the arbitration agreement can require 3 arbitrators. Of course, this triples the arbitrator fees.

Lower quality because of lack of feedback

Arbitrators and Judges are human. As a result, they make mistakes.

If a Judge makes a mistake in a big case, the parties may appeal. But there is no appeal from a wrong arbitration decision. So the arbitrator who makes incorrect decisions may never learn.

Furthermore, there is no public record of incorrect arbitration decisions. Data on the performance of arbitrators in actual proceedings is, to be charitable, incomplete. You can ask around, but this is not as reliable as the written record of appeals.

Those who prefer arbitrations believe that arbitrations are fast and less expensive. They may be faster, but flipping a coin is faster and less expensive yet. So consider this thought experiment: would you be willing for disputes under this contract to be decided by flipping a coin? If so, then sign the arbitration clause, and specify one random arbitrator.

When an arbitration clause is used

Some clients want an arbitration clause. In a few situations, arbitration is better for the client. In such situations I add a requirement to the arbitration clause: the arbitrator selected must be a retired Judge.

If the arbitrator is a retired Judge, then you get an experienced decision maker. This greatly increases the quality of the process and the quality of the decision at no added expense.

If you have an arbitration experience or comment to share, please leave your comment below. And to my arbitrator friends: I am not writing about you.

- E. J. Simmons

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Use Declarations Not Affidavits

by admin on November 21, 2008

The other day, another attorney asked me to provide my opinion, in affidavit form, about the value of a personal injury case, in support of a motion in the Federal Court. I suggested a declaration instead of an affidavit.

Both Federal and State courts in Oregon allow declarations for most purposes in lieu of affidavits, including in support of or in opposition to motions for summary judgment.

Every time this comes up, I spend a frustrating few minutes trying to remember where to find the statute or rule to verify the required language. This post points to the statutory or rule language for each Court.

Federal cases:

28 U.S.Code Section 1746
Unsworn declarations under penalty of perjury
Wherever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath, or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specified official other than a notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:
(1) If executed without the United States: “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date). (Signature)”.
(2) If executed within the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date). (Signature)”.

Note that the language differs for declarations signed outside of the United States.

Oregon State Court cases:

Oregon Rules of Civil Procedure 1E. Use of declaration under penalty of perjury in lieu of affidavit; “declaration” defined. A declaration under penalty of perjury may be used in lieu of any affidavit required or allowed by these rules. A declaration under penalty of perjury may be made without notice to adverse parties, must be signed by the declarant and must include the following sentence in prominent letters immediately above the signature of the declarant: “I hereby declare that the above statement is true to the best of my knowledge and belief, and that I understand it is made for use as evidence in court and is subject to penalty for perjury.” As used in these rules, “declaration” means a declaration under penalty of perjury.

Some other States similarly allow declarations. E.g.
Revised Code of Washington 9A.72.085;
Utah Code Annotated § 46-5-101;
Rule 7(g) of the Rules of the Circuit Courts of the State of Hawai`i

The declaration is recommended as more efficient, especially for clients who will not have to seek a notary.

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Forcing Efficient 30(b)(6) Deposition Testimony

by admin on October 8, 2008

For a link to a notice of deposition form, scroll down to the end of this post. A deposition under Federal Rules of Civil Procedure 30 (b) (6) requires an adverse organization to provide a  witness who will give up its information on the specified topics.

“FRCivP 30 (b) (6) Notice or Subpoena Directed to an Organization.
In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. …”

However, an adverse witness is motivated to not cooperate and to neither know nor remember anything specific. This makes the discovery process less efficient, more costly, and maybe incomplete.

To lessen the chance of stalling and delaying deposition answers (not that any witness would ever try to stall or delay), I have found it helpful to send a letter with the notice of deposition commenting on the company’s obligation to investigate and review the topics of a 30(b)(6) notice of deposition.

The following is an example letter to send after conferring with adverse counsel about the topics, and setting a convenient time. With the letter I include a one-page summary of the law. Sophisticated adverse counsel will understand that the letter is intended to be a concise way to persuade the Judge, if a discovery dispute breaks out.

[Letter to: Attorney for adverse party]

Re: [case name], US District Court No. ______

Dear Ms. ______:

We have discussed deposition scheduling a number of times. The deposition of XYZ Company is scheduled for _______ 200_ .

To clarify the topics I wish to cover, I will depose XYZ Company under FRCivP 30(b)(6) on these topics:

1. Safety standards used or referred to by XYZ Company that relate to _______. I expect that this will include [specific references]. In any event the witness will need to testify about sources XYZ Company refers to for safety standards. The witness will need to be familiar with the specific application of the relevant standards to [specifics of case].

2. As pertaining to [a relevant contract]: what XYZ Company understood in 200_ to be its obligations for [relevant performance] as to [relevant circumstances], [relevant place], [relevant communications with others], [relevant knowledge], and [relevant action].

3. Other information about the [relevant incident].

Please note that, under FRCivP 30(b)(6), XYZ Company has an obligation for the designated witness to investigate and prepare to testify on the designated topics. See enclosed quotation from Calzaturficio S.C.A.R.P.A. V. Fabiano Shoe Company, Inc., 201 F.R.D. 33 (D.Mass 2001), and cases cited therein.

As is my practice, a formal Notice of Deposition under FRCivP 30(b)(6) is also enclosed.

Yours truly,

E. J. Simmons

Encl

………………………………………….

The following quotation is from Calzaturficio S.C.A.R.P.A. V. Fabiano Shoe Company, Inc., 201 F.R.D. 33, 36:

Indeed, the law is well-established that a 30(b)(6) deponent does have an affirmative obligation to educate himself as to the matters regarding the corporation.

Rule 30(b)(6) explicitly requires [a company] to have persons testify on its behalf as to all matters known or reasonably available to it and, therefore, implicitly requires persons to review all matters known or reasonably available to it in preparation for the 30(b)(6) deposition. This interpretation is necessary in order to make the deposition a meaningful one and to prevent the “sandbagging” of an opponent by conducting a half-hearted inquiry before the deposition but a thorough and vigorous one before the trial. This would totally defeat the purpose of the discovery process…Preparing for a Rule 30(b)(6) deposition can be burdensome. However, this is merely the result of the concomitant obligation from the privilege of being able to use the corporate form in order to conduct business…[A company] does not fulfill its obligations at the Rule 30(b)(6) deposition by stating that it has no knowledge or position with respect to a set of facts or area of inquiry within its knowledge or reasonably available….

United States v. Taylor, 166 F.R.D. 356, 362 (M.D.N.C., 1996), aff’d 166 F.R.D. 367 (M.D.N.C., 1996). See also Poole ex rel. Elliott v. Textron, Inc., 192 F.R.D. 494, 504 (D. Md., 2000) (“Upon notification of a deposition, the corporation has an obligation to investigate and identify and if necessary prepare a designee for each listed subject area and produce that designee as noticed.”); Dravo Corp. v. Liberty Mut. Ins. Co., 164 F.R.D. 70, 75 (D. Neb., 1995) (citing Marker v. Union Fidelity Life Ins. Co., 125 F.R.D. 121, 126 (M.D.N.C., 1989)) (“If the persons designated by the corporation do not possess personal knowledge of the matters set out in the deposition notice, the corporation is obligated to prepare the designees so that they may give knowledgeable and binding answers for the corporation.”); Buycks-Roberson v. Citibank Fed. Savings Bank, 162 F.R.D. 338, 343 (N.D. Ill., 1995)(stating that the duty to present and prepare a Rule 30(b)(6) designee goes beyond matters personally known to that designee or to matters in which that designee was personally involved.); Securities and Exchange Commission v. Morelli, 143 F.R.D. 42, 45 (S.D.N.Y., 1992) (citing Mitsui & Co. (U.S.A.), Inc. v. Puerto Rico Water Resources Authority, 93 F.R.D. 62, 67 (D.P.R., 1981)) (“under Rule 30(b)(6), the deponent ‘must make a conscientious good-faith endeavor to designate the persons having knowledge of the matters sought by [the party noticing the deposition] and to prepare those persons in order that they can answer fully, completely, unevasively, the questions posed…as to the relevant subject matters.’”); ABA Civil Discovery Standards (Aug. 1999), § 19(f) (“Counsel for the [corporation] should prepare the designated witness to be able to provide meaningful information about any designated area(s) of inquiry.”).

…………………………………..

For an example of a notice of deposition under FRCP 30 (b) (6), see the Depositions page. This form is based on a notice that was served in a personal injury case involving major injuries resulting from failure to follow safety standards. .

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Example – Preparation for Direct Testimony

by admin on October 1, 2008

This example is based on questions and answers used to prepare a company president to testify. The case was a contract action. The contract terms were on the plaintiff’s website. Acceptance by the defendant was based on a click-through.

By going through this review and preparation process, the witness becomes familiar with the questions that lay the foundation for introduction of each business record exhibit.

________________________________________

Questions for [Company President]
And Expected Answers

When going over the questions and answers with the witness, explain:
These are questions I expect to ask and the answers I expect you will give, based on our prior conversations.  This is not a script.  In every answer, tell the truth even if it varies from what I expect.  Each time we go through this, please let me know if any expected answer is incorrect.

Q. What is your relationship to [plaintiff company]?
A. I am the owner and president.

Q. What business does [company] do?
A. We provide a web-based service of [describe the basic service offered]

Q. Please describe the website offer.
A. On our site, we offer [basic terms]

Q. How would a buyer review what to buy?
A. [Describe how the prospective buyer looks at what is offered]

Q. Please look at Exhibit 1 and identify it.
A. It is a printout of the home page of the company’s website.

Q. Is Exhibit 1 an accurate representation of the home page that defendant saw around December 200_ when first visiting your website?
A. Yes.

Attorney: I move to admit Exhibit 1.

[The witness is examined about the relevant pages of the website, to get to the page where the click-through agreement is accepted by the defendant.]

…

Q. How does a buyer get in touch with the seller to buy an [object]?
A. The buyer clicks on “Contact Seller”, as shown on Exhibit 5.

Q. What happens then?
A. The Buyer’s Agreement is displayed, Exhibit 6.  In the paragraph above the buttons, the agreement refers to the “Legal Notice”. The “Legal Notice” is an underlined hyperlink. The buyer must click on “I agree to all conditions” to proceed. When the buyer clicks on that button, the computer program displays an inquiry form, to gather information to be sent by e-mail to the seller. It is a fill-in the blanks form, for the buyer to identify itself.  The website sends an email to the seller and to our company, including a copy to me.

Q. Please examine Exhibit 7. Is Exhibit 7 an accurate representation of the Legal Notice that was on the website when [defendant] agreed to your terms and conditions?
Yes.

Q.Is Exhibit 7 the contract that the defendant entered into with your company?
A. Yes.

Attorney: I move to admit Exhibit 7 into evidence.
…

______________________________________

The witness is similarly made familiar with the questions and expected answers for the other areas of his testimony. For example, performance of the contract by the plaintiff, the contract price, the lack of payment by the defendant, and the elements of a quantum meruit claim as a precaution.

After two or three times through this review, the witness will be organized and confident in his testimony.

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Preparing for Trial – Direct Examination

by admin on September 25, 2008

Once I heard a trial lawyer making a speech. He recalled a time when he had to testify in a civil action. This lawyer was experienced, intelligent and motivated to testify clearly, completely and truthfully. But while he was testifying on direct examination, answering questions asked by his own lawyer, he could not tell for sure what facts his own lawyer wanted. “I had no idea where we were going.”

If an attorney-witness cannot read the examining attorney’s mind, imagine the difficulty facing the average witness. More nervousness, less familiarity with the elements.

A colleague of mine once was trying a case. The adverse party was being examined by the adverse attorney. The adverse attorney became visibly exasperated with his own witness for failing to give the desired answers. Of course, the witness had a common shortcoming, that is, lack of mental telepathy.

Presenting a guessing game is the wrong way for a witness to testify. You may wish to consider the most effective way to prepare a witness for direct examination.

The best method I know of is to write out, for each witness, each question to ask, and each expected answer, in the order for trial testimony.

The expected answers come from prior interviews with the witness. Preparing the question and answer memorandum forces the trial attorney to organize. You will decide which facts to introduce from which witness and in what order.

Moreover, you should write into this question and answer memorandum the exhibits to be introduced, and at what point from what witness. In a State court case, with no pre-admission of exhibits, the foundational questions can be organized and written into the memorandum. Potential objections are eliminated.

Some attorneys believe that this is too much work. I hope that all my opponents think this.

A few days before trial, when meeting with a witness, you will use the question and answer memorandum to go over the testimony. Inevitably, you discover weak spots, confusion over what you are asking, and the need to improve. After revision, you go over it again.

No witness will testify completely in accordance with your expectation. But your presentation will be much smoother and complete. Your witness will be nervous, but much less so since every question on direct will be a question the witness has heard before.

Since examples are useful, another post will provide an excerpt from a memorandum as used in actual testimony, with names changed to preserve confidentiality. (We won the prayer for relief.)

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Taking Video Depositions for Federal Cases

by admin on September 8, 2008

In most depositions, the testimony is taken down by a stenographic court reporter. The court reporter then produces a transcript. Using the deposition transcript works well in support of a motion for summary judgment.

However, not all cases are resolved by summary judgment. For those cases not decided by motion, video depositions are better for settlement assessment and are much better for impeachment at trial.

Judges recognize why video depositions are better.

“… video depositions provide greater accuracy and trustworthiness than a stenographic deposition because the viewer can employ more of his senses in interpreting the information from the deposition.” Burlington City Board of Education v. U.S. Mineral Products Co., Inc., 115 F.R.D 188, 189 (Middle District of North Carolina 1987).

Independent videographers are available, but an independent videographer is not required. The attorney taking the deposition may also take the video. Juanita J. Ott v. The Stipe Law Firm, 169 F.R.D. 380 (Eastern District of Oklahoma 1996); Rice’s Toyota World, Inc. v. Southeast Toyota Distributors, 114 F.R.D. 647 (Middle District of North Carolina 1987).

In my office, we make a video of all depositions we take. The legal assistant runs the camcorder, while the court reporter takes down the traditional transcript. Later, we make digital video clips.

Federal Rules

F.R.Civ.P. 30(b)(2) allows video taping. The notice of deposition must state that video will be used to record the testimony. Note that F.R.Civ.P. 30(b)(4) requires certain statements on the record to be done at the beginning of each tape, and a statement to be made at the end of the tape. In my office, we use a checklist during the deposition to ensure that the F.R.Civ.P. requirements are met.

Hardware

The equipment is inexpensive. In a lawyer’s office, the camcorder’s audio quality is important. For about $250.00 you can buy a mini-DV camcorder, for example the Canon ZR900. For $20 you can buy a short tripod to sit the camcorder on the conference room table. With the camera near the witness, the built-in microphone will clearly record the witness testimony.

To make the video in the first place, the legal assistant just sets up the camcorder, points it at the witness, and presses the Record button. I do not recommend that you try to use separate microphones or special lighting. Trying too hard in this way increases the chances of an equipment problem. Relax, and let the camcorder do the work. Have plenty of tapes, label them, and keep feeding the tapes to the camcorder every hour as needed.

Software

After the deposition, the digital video from the camcorder is edited on a computer. A Firewire cable connects the camcorder to the computer. For a Windows computer, Sony Vegas or the free Windows Moviemaker is adequate to make clips. On a Mac, iMovie is more than adequate and easy to use.

At Trial

To introduce video deposition excerpts at trial, you must be prepared in advance. This is similar to using a written deposition transcript: you must know in advance which excerpts you will present. The practical procedure is to have, for each topic to introduce by video testimony, a clip. For example:

  • Clip 1: Two minute excerpt: Defendant’s president admits liability.
  • Clip 2: One minute excerpt: Defendant’s vice-president admits the amount of damages.

Then, all you have to do is play the clip at the appropriate time from the notebook computer using a projector or big screen TV. (Remember to provide computer speakers, so the jury can hear the witness.) Before you play the tape, you will let the Judge and adverse counsel know what you plan to introduce. The Judge will be given a transcript of what is on the clip. The other side may or may not object. If an objection is sustained, re-editing may be needed.

Showing a video clip has much more impact than reading from the transcript. You are not trying to compete with a movie studio in production quality. You only have to be better than your opponent’s boring reading from a transcript.

Conclusion

There are three purposes for depositions: discovery, settlement assessment and impeachment. For settlement assessment and impeachment, video recording of depositions is better. Currently available camcorders and software make video depositions an inexpensive and simple part of the discovery process.

If you want to try taking a video deposition using your staff, let my office know. We will send you a copy of the video deposition checklist, including what statements the court reporter must make while the tapes are recorded.

- E. J. Simmons

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