Microsoft v. Lindows.com

Citation: Microsoft Corp. v. Lindows.com Inc., 2002 U.S. Dist. LEXIS 24616 (W.D. Wash. Mar. 15, 2002) (denying preliminary injunction), 2002 U.S. Dist. LEXIS 26307 (W.D. Wash. May 13, 2002) (denying motion for reconsideration), Case No. C01-2115C (W.D. Wash. Jan. 22, 2003) (denying defendant’s motion for summary judgment), 2004 U.S. Dist. LEXIS 5584 (W.D. Wash. Feb. 10, 2004) (granting plaintiff’s motion to determine and certify controlling question of law), 319 F.Supp.2d 1219 (W.D. Wash. 2004) (denying defendant’s motion for anti-suit injunction and motion to declare foreign injunction non-enforceable)

Factual Background
Microsoft, developer of the Windows computer operating system (OS) and owner of the federally registered WINDOWS trademark, sued defendant, the developer of Lindows, a Linux-based OS that can run software developed for both the Windows and Linux operating systems.

Trial Court Proceedings
Microsoft sued defendant for trademark infringement and dilution, and filed a motion for a preliminary injunction against defendant’s use of the LINDOWS trademark and trade name and the “lindows.com” domain name. The court refused to grant a preliminary injunction, however, finding that defendant’s evidence regarding the genericness of the WINDOWS mark was enough to rebut the presumption of validity created by Microsoft’s trademark registration.

According to the court, defendant “presented substantial evidence that, prior to the time that Microsoft first announced its Windows product, the consuming public understood ‘the windows’ or ‘window’ to refer to a type of GUI or operating system feature and today understands the terms to indicate software applications that are compatible with Microsoft Windows.”

Defendant’s evidence included widespread use of the term “windows” generically by the media, by competitors, by Microsoft, and in computer dictionaries, as well as testimony of a computer-industry expert. Neither did the balance of hardships tip “sharply” in Microsoft’s favor. Among other things, the requested injunction “would eliminate the primary path the defendant has chosen to bring its product to market—the Lindows.com website.”

In closing, the court was careful to note that its “determination that there are serious questions regarding whether Windows is a non-generic name and thus eligible for the protections of federal trademark law is not a conclusive finding that the trademark is invalid,” but merely that Microsoft had failed to make a sufficient showing of likelihood of success on the merits for purposes of its motion for preliminary injunction.

Microsoft moved for reconsideration of the denial of its motion for preliminary injunction, arguing that the district court applied the wrong test for genericness and misapplied the evidence. But the court denied Microsoft’s motion. Microsoft argued that the Seventh Circuit and Ninth Circuit tests for genericness, which were both relied on by the district court, conflict because the Seventh Circuit determines genericness by looking to separate parts of a term whereas the Ninth Circuit examines the term as a whole. According to the court, however, the two tests do not directly conflict because the Seventh Circuit first analyzes a composite term as a whole before determining whether its individual parts are generic.

The court also rejected Microsoft’s argument that the WINDOWS mark was not generic because it was not the name for a class of products. The court relied on the Seventh Circuit’s analysis in several cases “that when a composite term is generic and is made up of an adjective (or other descriptive word) that classifies a noun, the adjective itself can also be a generic term.”

Just like the Seventh Circuit held that the term “light” was generic when used with beer, the court here stated that the use of “windows” would also be generic when used to refer to the same class of products (e.g., “window manager,” “windows programs,” and “windowing environment”). Having clarified its legal analysis, the court briefly revisited the evidence of record and concluded again that the consuming public used the terms “windows,” “window,” and “windowing” generically to refer to a type of graphical user interface or other software program, including operating systems, in which overlapping windows are the predominant visual feature.” Accordingly, the court denied Microsoft’s motion.

Lindows.com moved for summary judgment on the issue of genericness. The court denied Lindows.com’s motion because the parties’ evidence indicated that there was a genuine issue of material fact regarding the genericness of the term “windows.” Lindows.com’s evidence included dictionary definitions and generic usage of “windows” by Microsoft’s competitors, Microsoft, individuals in the computer industry, and the media.

Microsoft countered with evidence that: (1) competitors did not use “windows” generically as the name of a graphical operating environment; (2) Microsoft characterized its product as an “operating environment,” not as a “window” manager; (3) individuals in the industry testified that Microsoft’s Windows program and similar products were described as “operating environments” or “graphical user interfaces,” not “windows" products; (4) a study indicated that only 2% of 2,233 articles from computer magazines used “windows” to describe a type of program or operating environment; and (5) none of the terms “windowing system,” “windowing environment,” or “window manager” appeared in dictionaries.

Microsoft later moved to determine and certify the controlling question of law on the relevant and proper time for determining whether the WINDOWS trademark was generic. The district court declared that it would instruct the jury to “consider whether the Windows mark was generic during the period before Microsoft Windows 1.0 entered the marketplace in November 1985.”

In addition, the court stated that it would “not instruct the jury that even if Windows were generic prior to November 1985, the trademark would nonetheless be valid today so long as the primary significance of the term today is not generic.” Recognizing that its “declaration involves a controlling question of law as to which there is a substantial ground for difference of opinion” and that an immediate appeal from this order could “materially advance the ultimate outcome and/or termination of the litigation,” the district court certified its declaration of law for interlocutory appeal and canceled the jury trial scheduled to start March 1, 2004.

Lindows.com then moved for an antisuit injunction to prohibit Microsoft from pursuing foreign litigation against Lindows.com, and a declaration of nonenforceability of a Dutch court’s preliminary injunction against Lindows.com. In January of 2004, the Netherlands District Court in Amsterdam granted Microsoft’s request for a preliminary injunction and enjoined Lindows.com’s use of Lindows in that jurisdiction. The injunction also forced Lindows.com to make its “lindows.com” website inaccessible to users in the Benelux jurisdictions. Applying the rule of comity, i.e., the respect for the sovereignty of other nations, the court denied Lindows.com’s motion.

The court noted that an injunction would be appropriate only when both the parties and issues are the same, and the resolution of the U.S. action will resolve the foreign action. Furthermore, the injunction would be proper only when the foreign litigation would “(1) frustrate a policy of the forum issuing the injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable considerations.” In this case, the court followed the weight of authority holding that trademark disputes in two different countries are not the “same” for purposes of an antisuit injunction.

Analyzing the nonenforceability declaration, the court cited the same comity concerns when refusing to impose its own interpretation of the Dutch court’s preliminary injunction or block its enforceability, especially without a clear showing of a constitutional violation. Lindows.com asserted that the only way to comply with the Dutch injunction would be to shut down its website entirely, resulting in a violation of its First Amendment rights, since the site contains some clearly protected speech. The court rejected this argument, however, relying on Microsoft’s assertions that it was not its intent to shut down Lindows.com’s competitor’s website and believing that the Dutch court should first be given a chance to clarify its order.

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