Lindows loses battle, but WINDOWS war not over

In Microsoft Corp v Inc, the US District Court for the Western District of Washington has denied Lindows's motion seeking (i) an order that would restrain Microsoft from filing suit in foreign jurisdictions, and (ii) a declaration that foreign orders be unenforceable in the United States (Case C01-2115C).

Microsoft, in its continuing efforts to police its WINDOWS trademark, brought suit in federal court in the state of Washington against Lindows, an operating system provider that employs a Linux-based open-source software system. Ruling on Microsoft's motion for a preliminary injunction, the district court denied relief based upon a showing that the word 'windows' had a generic connotation prior to its adoption by Microsoft as its trademark. The rule under US trademark law is that once a term is generic, it is always generic and no promotion or advertising expenditure of any quantity or quality can wrest a generic mark from that status.

Apparently reeling from this unexpected blow, Microsoft asked the court to have the finding that 'windows' was generic in the computer trade prior to its adoption as a trademark certified by the US Court of Appeals for the Ninth Circuit on an expedited basis.

Meanwhile, Microsoft brought actions in several countries outside the United States (without notifying Lindows) including Benelux, Canada, France, Finland and Sweden. It obtained injunctive relief in Benelux and Sweden (see Microsoft cracks down on Lindows in Benelux and Windows blocks distribution of Lindows's software). The Benelux judgment ordered Lindows to render its website "inaccessible to visitors from Belgium, Luxembourg and the Netherlands" - a task that would be impossible without shutting down the website altogether, as Lindows pointed out in subsequent pleadings. Microsoft reputedly sought a further order to establish a fine of €100,000 a day should Lindows continue the use of its mark in Benelux.

To avoid a war of attrition, Lindows adopted a somewhat unorthodox tactic and filed a motion in federal court seeking (i) an order that would restrain Microsoft from filing suit in other foreign jurisdictions, and (ii) a declaration that the foreign orders (such as the Benelux injunction) be unenforceable in the United States on the grounds that to do otherwise would, among other things, allow an order of a foreign court to impinge on the sovereignty of the United States to regulate activities over the Internet carried out within its own borders.

The court denied Lindows's motion. It also refused to reverse its previous order expediting Microsoft's appeal to the Ninth Circuit.

This case has thrown up a number of important issues and it will be interesting to see how they are resolved. For instance, the trademark law of the United States differs in many respects from the laws in other countries. Thus, while a mark may be deemed generic under US law, the same word or mark may not be considered generic in other countries. Although Lindows argues that the doctrine of foreign equivalents requires that the same rule on genericness applies when a word is generic in one particular language, it is less than clear whether Benelux courts would agree. Likewise, it is not clear whether US law that says "once generic always generic" is the law in all other countries. Certainly, Microsoft should have the right to enforce whatever trademark rights it has in whatever country it has them. The fact that a federal court in the United States might find the mark unenforceable does not dispose of all of Microsoft's rights elsewhere.

One thing is clear: the existence of the Lindows website adds an extra degree of complication to the case. It would be a lot simpler to resolve the issue if only national trademarks were at issue. This case promises to bring some bizarre and possibly entertaining results as it winds its way through the US court system, as well as jurisdictions outside the United States.

Seemingly giving in to the threat of further proceedings, Lindows announced last week that it is changing its name to Linspire for its operations outside the United States.

Robert Lyon, Holland & Knight LLP, Los Angeles

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