Facebook Inc. v. Lamebook LLC

Filing 32

CASE MANAGEMENT STATEMENT (UPDATED) filed by Facebook Inc.. (Norberg, Jeffrey) (Filed on 4/28/2011)

Download PDF
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 COOLEY LLP MICHAEL G. RHODES (116127) (rhodesmg@cooley.com) GAVIN L. CHARLSTON (253899) (gcharlston@cooley.com) 101 California Street, 5th Floor San Francisco, CA 94111-5800 Telephone: (415) 693-2000 Facsimile: (415) 693-2222 ANNE H. PECK (124790) (peckah@cooley.com) JEFFREY T. NORBERG (215087) (jnorberg@cooley.com) 3175 Hanover Street Palo Alto, CA 94304-1130 (650) 843-5000 (650) 849-7400 Attorneys for Plaintiff FACEBOOK, INC DURIE TANGRI LLP MARK A. LEMLEY (SBN 155830) (mlemley@durietangri.com) JOSEPH C. GRATZ (SBN 240676) (jgratz@durietangri.com) 217 Leidesdorff Street San Francisco, CA 94111 Telephone: 415-362-6666 Facsimile: 415-236-6300 BRACEWELL & GIULIANI LLP CONOR M. CIVINS (conor.civins@bgllp.com) EDWARD A. CAVAZOS (ed.cavazos@bgllp.com) 111 Congress Avenue, Suite 2300 Austin, TX 78701 Telephone: 512-472-7800 Facsimile: 800-404-3970 Attorneys for Defendant LAMEBOOK, LLC UNITED STATES DISTRICT COURT 20 NORTHERN DISTRICT OF CALIFORNIA 21 22 23 24 25 26 27 FACEBOOK, INC., Case No. 3:10-CV-05048-RS Plaintiff, UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT v. LAMEBOOK LLC, Defendant. 28 COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 1. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 Pursuant to Federal Rule of Civil Procedure 26(f), a conference was held on February 9, 2 2011, between Anne H. Peck and Jeffrey T. Norberg of Cooley LLP, counsel to Plaintiff 3 Facebook, Inc. (“Facebook”); and Conor M. Civins, Edward A. Cavazos, and Joseph C. Gratz, 4 counsel to Defendant Lamebook, Inc. (“Lamebook”). The parties submit this Updated Case 5 Management Statement and Rule 26(f) Report pursuant to Local Rule 16-9(a), the March 1, 2007 6 Standing Order for All Judges of the Northern District of California, and this Court’s Notice 7 continuing the March 3, 2011 case management conference (D.I. 24). 8 9 DESCRIPTION OF THE CASE 1. 10 JURISDICTION AND SERVICE This court has subject matter jurisdiction over Facebook’s claims under 28 U.S.C. §§1331 11 and 1338(a), as the case involves a dispute regarding alleged trademark infringement and 12 violations of the Anti-Cybersquatting Consumer Protection Act under 15 U.S.C. § 1125. This 13 Court has supplemental jurisdiction over state law claims under 28 U.S.C. § 1367. Facebook 14 asserts that venue is proper in this Court under 28 U.S.C. § 1391, as Facebook maintains its 15 principal place of business in this District and a substantial part of the events giving rise to the 16 claims at issue occurred in this District. Lamebook has moved to dismiss this action in favor of 17 an earlier-filed suit in the Western District of Texas. All parties have been served. 18 2. FACTS 19 A. Facebook Statement 20 Facebook is a prominent provider of online networking services and is dedicated to 21 making the web more social, personalized, smarter and relevant. Through Facebook’s website, 22 the Facebook Platform, Social Plugins and other tools, hundreds of millions of Facebook users 23 enjoy personalized and relevant internet experiences. Facebook has provided its services under 24 the FACEBOOK trademark since February 4, 2004. The FACEBOOK trademark is a famous 25 mark under 15 U.S.C. § 1125(c)(2)(A). 26 Facebook alleges that Lamebook misappropriated the FACEBOOK brand by adopting, 27 using and applying to register the confusingly similar and dilutive LAMEBOOK trademark. 28 Facebook further alleges that Lamebook misappropriated Facebook’s WALL trademark. COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 2. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 Facebook alleges that Lamebook’s acts as stated in the complaint give rise to a likelihood of 2 dilution and consumer confusion in the marketplace in violation of the Lanham Act and common 3 law. Facebook also asserts claims for violations of the Anti-Cybersquatting Consumer Protection 4 Act arising out of Lamebook’s registration of the lamebook.com domain name, common law 5 trademark infringement, and unfair competition in violation of Cal. Bus. & Prof. Code §§ 17200, 6 et seq. 7 On November 4, 2010, after months of settlement discussions and representing to 8 Facebook that it was considering changing its name to “Lameblog,” Lamebook filed a declaratory 9 relief action in the Western District of Texas styled Lamebook, LLC v. Facebook, Inc., Civil 10 Action No. 1:10-cv-00833 (the “Texas Action”). Facebook has filed a motion to dismiss the 11 Texas Action on the ground that it is an improper anticipatory lawsuit. The Texas Court held a 12 hearing on the motion on March 25, 2011, and the matter is now submitted and awaiting decision. 13 B. 14 Defendant Lamebook, LLC is a two-person company located in Austin, Texas. 15 Lamebook Statement Lamebook operates an eponymous blog which makes fun of Facebook and its users. 16 Facebook doesn’t like being made fun of. It asked Lamebook to switch to another name, 17 apparently fearing that confused web surfers might think that Facebook was making fun of itself 18 and its own users. The parties entered into discussions about resolving their dispute. The back- 19 and-forth lasted for eight months, and Lamebook faced substantial uncertainty about the matter 20 which affected its ability to operate its business. Lamebook brought an action in federal court in 21 Austin, Texas, where all of its operations are located, and where Facebook operates an office. 22 That action, filed in the United States District Court for the Western District of Texas, seeks a 23 declaration that it is not a violation of the trademark laws to operate a blog about why Facebook 24 is lame and call it “Lamebook.” 25 Several days later, Facebook filed this lawsuit. Lamebook has filed a motion to dismiss 26 this lawsuit on the ground that the Texas Action was filed earlier and deals with substantially 27 similar issues. That motion is currently pending. 28 /// COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 3. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 3. LEGAL ISSUES 2 Facebook submits that the following principal legal issues are in dispute: 3 (a) 4 U.S.C. § 1125 and/or California Bus. & Prof. Code §14247; 5 6 (b) (c) (d) Whether Lamebook is liable for violation of the Anti-Cybersquatting Consumer Protection Act under 15 U.S.C. § 1125(d); 11 12 Whether Lamebook is liable for infringement of the FACEBOOK mark pursuant to 15 U.S.C. § 1114, and/or common law; 9 10 Whether Lamebook is liable for false designation of origin under 15 U.S.C. § 1125; 7 8 Whether Lamebook is liable for dilution of the FACEBOOK mark pursuant to 15 (e) Whether Lamebook is liable for infringement of Facebook’s WALL mark pursuant to 15 U.S.C. § 1114, and/or common law; 13 (f) Whether Lamebook is liable for unfair competition under the common law; 14 (g) Whether Lamebook is liable for violation of California Bus. & Prof. Code §17200, 16 (h) Whether Facebook is entitled to injunctive relief; and 17 (i) The determination of the appropriate measure of money remedies to which 15 18 et seq.; Facebook is entitled. 19 Lamebook respectfully submits that before any of the above issues may be addressed, this 20 case should be dismissed in favor of the earlier-filed Texas Action. 21 4. MOTIONS 22 Lamebook’s Motion to Dismiss this matter in favor of the Texas Action is currently 23 pending. Lamebook’s Complaint for Declaratory Relief and Facebook’s Motion to Dismiss 24 concerning this matter in the U.S. District Court for the Western District of Texas, Austin 25 Division, Lamebook, LLC v. Facebook, Inc., Civil Action No. 1:10-cv-00833 are currently 26 pending in the Western District of Texas. The parties anticipate that summary judgment motions 27 will be filed after the close of discovery. 28 /// COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 4. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 5. 2 AMENDMENT OF PLEADINGS The parties do not anticipate any amendments to its pleadings at this time, but may seek to 3 add additional claims as discovery proceeds. 4 6. EVIDENCE PRESERVATION 5 The parties have taken reasonable steps to preserve documents relating to the issues 6 presented in the complaint based on their current understanding of the issues. Among other 7 things, the parties have issued document preservation instructions to the key individuals likely to 8 have such documents, directing such individuals to take affirmative steps to preserve such 9 documents, whether in hard copy or electronic form, and to suspend applicable document 10 destruction/deletion policies. 11 7. 12 13 14 DISCLOSURES The parties exchanged initial disclosures on February 24, 2011. 8. DISCOVERY Facebook does not at this time seek any modifications to the scope of discovery as 15 provided under the applicable Federal Rules of Civil Procedure. Facebook proposes pursuing 16 discovery by taking depositions and by serving document requests, interrogatories, and requests 17 for admission, subject to the following discovery plan: 18 (a) Protective Order: A protective order will be necessary due to the sensitive and 19 proprietary information that will be exchanged during discovery. The parties will meet and 20 confer on and submit a proposed stipulated protective order no later than May 13, 2011 in a form 21 that is consistent with the Court’s Model Protective Orders. 22 (b) Privilege Logs: Communications with outside litigation counsel related to this specific 23 action and work product prepared by outside litigation related to this specific action do not need 24 to be logged. 25 (c) Production: The parties will produce documents and other electronically stored 26 information electronically (e.g., on compact discs) in single-page TIFF format with corresponding 27 text files and Concordance compatible load files, or in native format. To the extent either party 28 believes, on a case-by-case basis, that documents should be produced in an alternative format, the COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 5. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 parties will meet and confer in good faith concerning such alternative production arrangements. 2 The parties will also meet and confer in good faith to ensure that the format of each party’s 3 production is compatible with the technical requirements of the receiving party’s document 4 management system. 5 9. 6 7 CLASS ACTIONS This case is not a class action. 10. 8 RELATED CASES Lamebook has filed a declaratory relief action against Facebook concerning this matter in 9 the U.S. District Court for the Western District of Texas, Austin Division, Lamebook, LLC v. 10 Facebook, Inc., Civil Action No. 1:10-cv-00833. Facebook has filed a motion to dismiss that 11 action. That motion is currently pending. 12 11. 13 RELIEF Facebook seeks judgment that Lamebook has infringed and continues to infringe the 14 FACEBOOK and WALL marks. Facebook seeks a determination that Lamebook’s acts of 15 infringement have been and are willful. Facebook further seeks judgment that Lamebook has 16 diluted and continues to dilute the FACEBOOK mark. Facebook further seeks judgment that 17 Lamebook has violated federal and state laws prohibiting unfair competition and false designation 18 of origin, and that Lamebook’s registration of the lamebook.com domain was in violation of the 19 Anti-Cybersquatting Consumer Protection Act. 20 Facebook seeks a permanent injunction, treble damages and attorney’s fees, compensatory 21 and/or statutory damages, and an accounting and disgorgement of Lamebook’s revenues and 22 profits derived from its wrongful use of the infringing trademark. Facebook also seeks an order 23 requiring Lamebook to (a) transfer the lamebook.com domain name and all other infringing 24 domain names to Facebook; and (b) deliver up all promotional materials bearing the infringing 25 trademark. Finally, Facebook seeks an order requiring Lamebook to abandon all pending 26 trademark applications for the Lamebook mark, and/or deeming Lamebook’s pending Lamebook 27 application void ab initio. Facebook also seeks such other relief at law and in equity as the Court 28 may deem just and proper. COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 6. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 Because Lamebook has moved to dismiss this action in favor of the earlier-filed Texas 2 Action, it has not filed an Answer or Counterclaims, and has not yet identified any relief it may 3 seek. 4 12. 5 SETTLEMENT AND ADR The parties have met and conferred regarding ADR pursuant to Civil L.R. 16-8 and ADR 6 L.R. 3-5 but were unable to reach an agreement on ADR. The Court’s ADR unit held a 7 conference call with the parties on April 28, 2011. A further ADR conference call has been 8 scheduled for June 2, 2011. 9 13. 10 11 CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES Facebook has declined to have this case proceed before a magistrate judge. 14. 12 OTHER PREFERENCES The parties do not believe that this case is suitable for reference to binding arbitration or 13 to a Special Master. This case is also inappropriate for reference to the Judicial Panel on 14 Multidistrict Litigation at this time. 15 15. 16 NARROWING OF ISSUES The parties are not aware of any issues that can be narrowed by agreement or by motion 17 and do not have any suggestions to expedite the presentation of evidence at this time. The parties 18 anticipate that as discovery proceeds, the issues for trial may be narrowed. 19 16. 20 EXPEDITED SCHEDULE At this time, the parties do not believe that this case is appropriate for expedited 21 procedure. 22 17. SCHEDULING 23 The parties propose the following schedule: 24 Exchange of Initial Disclosures: February 24, 2011 (completed). 25 Initial Case Management Conference (telephonic): May 5, 2011 26 Last Day to Amend Pleadings: September 19, 2011 27 Non-Expert Discovery Cutoff: October 31, 2011 28 Designation of Experts and Exchange of Expert Reports: November 21, 2011 COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 7. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 2 Designation of Rebuttal Expert Witnesses and Exchange of Rebuttal Expert Reports: December 19, 2011 3 Expert Discovery Cutoff: January 16, 2012 4 Last Day to File Dispositive Motions: February 6, 2012 5 Pretrial Conference: March 5, 2012 6 Trial: March 19, 2012 7 18. 8 9 TRIAL Facebook has demanded a jury trial. At this time, Facebook estimates that the length of trial is likely to be 5-10 court days. Lamebook estimates that the length of trial is likely to be 3-5 10 court days. 11 19. 12 DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS Facebook filed its disclosure of non-party interested entities at the time of filing its 13 complaint. Lamebook has no parent and no publicly held company directly or indirectly owns 14 10% or more of Lamebook, LLC’s stock. 15 20. 16 OTHER MATTERS The parties agree to service by electronic mail pursuant to Federal Rule of Civil Procedure 59(b)(2)(E). 17 Dated: April 28, 2011 18 19 20 21 22 23 24 COOLEY LLP MICHAEL G. RHODES (116127) GAVIN L. CHARLSTON (253899) ANNE H. PECK (124790) JEFFREY T. NORBERG (215087) /s/ Jeffrey T. Norberg Jeffrey T. Norberg (215087) Attorneys for Plaintiff FACEBOOK, INC. DURIE TANGRI LLP MARK A. LEMLEY (SBN 155830) JOSEPH C. GRATZ (SBN 240676) 25 26 27 /s/ Joseph C. Gratz Joseph C. Gratz (240676) Attorneys for Defendant LAMEBOOK, LLC 28 COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 8. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS 1 GENERAL ORDER 45 ATTESTATION 2 In accordance with General Order 45, concurrence in the filing of this document has been 3 obtained from each of the signatories and I shall maintain records to support this concurrence for 4 subsequent production for the Court if so ordered or for inspection upon request by a party. 5 6 7 8 9 /s/ Jeffrey T. Norberg Jeffrey T. Norberg Attorneys for Plaintiff FACEBOOK, INC. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY LLP ATTORNEYS AT LAW SAN FRANCISCO 9. UPDATED JOINT CASE MANAGEMENT STATEMENT AND RULE 26(F) REPORT CASE NO. 3:10-CV-05048-RS