Trademark Law. Last year I wrote (together with Susan Mulholland, an attorney at my firm), an article on the WhenU line of cases. We reviewed the three legal decisions that had been published to date on the WhenU technology: two from the district courts in Virginia and Michigan holding that WhenU’s practice was permissible; and one, from the federal district court in New York holding that WhenU had violated the Lanham Act, the federal trademark statute.

What does WhenU do that resulted in three federal court cases? In brief, once downloaded by a user (concealed in a “Trojan Horse” application), WhenU’s software will continuously monitor (invisibly, to the user) the user’s Internet browser to determine whether content accessed by the user matches key words stored in WhenU’s client directory. When the software finds a match for an associated key word – often a trademark or service mark – it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user’s computer. The pop-up ad is selected from a list supplied by WhenU’s advertising clients, and may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the web site of WhenU’s client that, if clicked on, results in the competitor’s web site opening on the user’s computer.

That was enough to send U-Haul, Wells Fargo and 1-800 CONTACTS running to court in protest. Unfortunately, they had only federal trademark law as the basis for their complaint, and the courts in Virginia and Michigan held that since WhenU didn’t “use” their trademarks in a way that was visible to potential customers — that is, it never actually displayed the trademarks — preliminary injunctions were inappropriate.

The New York federal district court disagreed, and issued a preliminary injunction.

The Second Circuit reversed that preliminary injunction on June 27, 2005, permitting WhenU to resume its use of the 1-800-CONTACTS trademark in this manner. In brief, the Second Circuit held that there was no trademark infringement because the WhenU ads do not display the 1-800-CONTACTS trademark.

This case is important decision in the developing law of the use of keywords on the Internet.

  • Read the case here

Yesterday’s masters of the universe are today’s cosmic dust.

What Were They Thinking? A case that has received enormous attention in Massachusetts is the Massachusetts Board of Bar Overseers investigation into the activities of several attorneys for the defendants in the Demoulas case, a state court case involving claims of breach of fiduciary duty surrounding the ownership of a large New England supermarket chain.

The case itself was a legal odyssey, spanning years and numerous state court decisions, but it is the aftermath of the litigation that stunned lawyers in Massachusetts and around the country. The losing defendants, dissatisfied with the decision of State Superior Court Judge Maria Lopez (who has since resigned in ignominy over a criminal molestation sentencing fiasco) and suspecting bias on her part, concocted a charade intended to induce the judge’s then law-clerk to disclose the inner workings of the judge’s chambers while the case was in litigation, and presumably prove that the judge’s clerk, rather than the judge herself, wrote the final (and most important) decision in the case.

The saga of how Gary Crossen (then of Foley, Hoag & Eliot, and former ethics counsel to two Massachusetts Governors), Richard Donahue (a former President of the Massachusetts Bar Association, chair of its Commission on Professionalism and President of Nike, Inc.), and Kevin Curry, (a former Massachusetts Assistant Attorney General), lured the judge’s former law clerk out-of-state in order to tape record his “confession,” attempted to bully him into signing an affidavit, conducted surveillance on him, and more, is described in agonizing detail in the 229 page decision. As a fan of hard-boiled detective novels (including Boston’s current claim to fame, Dennis LeHane, author of Mystic River and other engrossing works), I can only say that in Boston, reality is stranger than fiction.

After years of hearings and delays Bar Counsel issued her decision recommending the “ultimate sanction,” disbarment of all three attorneys. Her decision is now working its way through the Board of Bar Overseers and will ultimately be in the hands of a single Justice of the State Supreme Judicial Court. The consensus in the community appears to be that bar counsel’s decision will be followed.

Once again, we ask, “what were they thinking”? Even if the Demoulas lawyers had established that the Judge’s clerk had “done it” (written the fatal decision, that is), so what? What would they have done with that information? Used it as a basis to attack the integrity of the decision? Hardly a winning strategy.

  • You can read the case here

A word to the wise ain’t necessary, it’s the stupid ones who need the advice.
-Bill Cosby


What Were They Thinking? It fascinates me when lawyers do exceptionally stupid things. One would think that the successful completion of four years of college and three years of law school (not to mention years of experience watching clients do unwise things) would inoculate lawyers against the most foolish forms of human behavior. But, of course, experience shows otherwise. Even experienced lawyers are as likely to be rendered stupid by fear, greed, hatred and jealously, and to act on those emotions, as any other highly educated person.

A recently reported Massachusetts Superior Court case informs on this point. Although this case provides an interesting legal treatment of a contract issue (indeed, so interesting that the case was featured on the front page of Massachusetts Lawyers Weekly), it’s primary appeal is morbid curiosity. What was he thinking?

An attorney in good standing in Massachusetts (who will remain unnamed), was employed as Director of Procurement for Navisite. To make a somewhat long story short, his employment was terminated by Navisite in early 2002. After some back and forth over the terms of his severance, Navisite agreed to give the attorney two weeks severance pay ($5,300) and to pay his first month of COBRA benefits.

The lawyer, however, had other plans. After receiving this agreement from Navisite, he modified the boilerplate release language to provide:

“You will be paid eight hundred and fifty thousand dollars for wages earned, if not paid in full within seven days you will be paid three times this amount along with all your expenses and legal fees, all the officers and directors will be personally liable as well. ” [sic passim]

This language was added in such a way as not to attract Navisite’s attention to the alteration, and was signed and returned to Navisite without any mention of the change.

Navisite’s HR director briefly reviewed the document, didn’t spot the change, and signed the agreement.

Predictably, it was all downhill from there. After receiving the two weeks severance and the one month of COBRA benefits the lawyer made demand for $850,000 on Navisite and Navisite sued to rescind the agreement. The lawyer relied on the Massachusetts doctrine that “in the absence of fraud, one who signs a written agreement is bound by its terms whether he reads and understands it or not or whether he can read or not.” However, a Massachusetts Superior Court Judge had no trouble finding multiple grounds for rescinding the agreement (no meeting of the minds, unilateral mistake, unconscionably), and ordered the attorney to return to Navisite the severance payment he had received

This result was as predictable as rain in November in Boston. One hopes his attorney did not take this case on contingent fee.