Perfect 10 Inc v. Google Inc et al

Filing 393

RESPONSE filed by Counter Claimant Google Inc, Defendant Google Incto Minutes of In Chambers Order/Directive - no proceeding held,,, Set Hearings,, #387 Google Inc.'s Response to the Court's Tentative Order Dated December 2, 2008 and Opposition to Contemplated Stay (Attachments: #1 Declaration of Rachel M. Herrick in Support Thereof, and Exhibits A-M Thereto)(Zeller, Michael)

Perfect 10 Inc v. Google Inc et al

Doc. 39

1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Michael T. Zeller (Bar No. 196417) michaelzeller@quinne manuel.com 2 865 South Figueroa Street, 10th Floor 3 Los Angeles, California 90017-2543 Telephone: [phone] Facsimile: [phone] Charles K. Verhoeven (Bar No. 170151) charlesverhoeven@quinne manuel.com 5 50 California Street, 22nd Floor 6 San Francisco, California 94111 Rachel M. Herrick (Bar No. 191060) [e-mail] 7 555 Twin Dolphin Drive, Suite 560 8 Redwood Shores, California 94065-213 9 Attorneys for Defendant Google Inc. 10 11 12 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CASE NO. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 054753 AHM (SHx)] GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER DATED DECEMBER 2, 2008 AND OPPOSITION TO CONTEMPLATED STAY [Declarations of Rachel M. Herrick and Andrea Pallios Roberts filed concurrently] Hon. A. Howard Matz Date: December 18, 2008 Time: 3:00 pm Crtrm.: 14 Discovery Cutoff: None Set Pretrial Conference Date: None Set Trial Date: None Set

13 PERFECT 10, INC., a California corporation, 14 Plaintiff, 15 vs. 16 GOOGLE INC., a corporation; and 17 DOES 1 through 100, inclusive, 18 19 20 22 23 vs. Defendants. AND COUNTERCLAIM

PERFECT 10, INC., a California 21 corporation, Plaintiff,

24 AMAZON.COM, INC., a corporation; A9.COM, INC., a corporation; and 25 DOES 1 through 100, inclusive, 26 27 28 Defendants.

GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

Dockets.Justia.com

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TABLE OF CONTENTS Page

4 Preliminary Statement .............................................................................................. 1 5 I. 6 7 8 9 10 II. 11 III. 12 13 14 15 17 18 19 20 21 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

RESOLUTION OF THE MICROSOFT ACTION IS NOT LIKELY TO ADVANCE RESOLUTION OF THIS SUIT AGAINST GOOGLE...............2 A. B. C. The Three Cases Differ In Legal Claims and Defenses.........................2 The Three Cases Differ In Facts To Be Established..............................4 Because Google Does Not Agree To Sampling, The Outcome of The Microsoft Matter Is Unlikely To Be Dispositive. ........................... 6

A STAY WOULD UNFAIRLY PREJUDICE GOOGLE...............................8 AT A MINIMUM, GOOGLE SHOULD BE PERMITTED TO SEEK SUMMARY JUDGMENT UNDER THE DMCA........................................ 10 A. B. A Decision Under the DMCA Would Resolve Significant Aspects Of This Suit........................................................................... 11 Not Allowing Google To Obtain Rulings Under the DMCA Would Be Inconsistent With the Purposes Of That Act and Prejudice Google. ............................................................................... 12

16 Conclusion ............................................................................................................. 13

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TABLE OF AUTHORITIES P a g e (s) Cases

4 Arizona v. California, 530 U.S. 392 (2000) ............................................................................................ 8 5 Charles J. Arndt, Inc. v. City of Birmingham, 748 F.2d 1486 (11th Cir. 1984) ........................................................................... 8 6 7 Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090 (W.D. Wash. 2004) ................................................... 11, 12 8 Dependable Highway Exp., Inc. v. Navigators Ins. Co., 498 F.3d 1059 (9th Cir. 2007) ........................................................................... 10 9 10 E.B. Harper & Co. v. Nortek, Inc., 104 F.3d 913 (7th Cir. 1997) ............................................................................... 8 11 Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004) ..................................................................... 11, 12 12 13 Kahn v. General Motors Corp., 889 F.2d 1078 (Fed. Cir. 1989).......................................................................... 10 14 Landis v. North American Co., 299 U.S. 248, 255 (1936)................................................................................... 10 15 16 Lockyer v. Mirant Corp., 398 F.3d 1098 (9th Cir. 2005) ........................................................................... 10 17 National Industries, Inc. v. Republic Nat. Life Ins. Co., 677 F.2d 1258 (9th Cir. 1982) ............................................................................. 8 18 19 In re Orion Securities Litigation, 2008 WL 2811358 (S.D.N.Y. 2008) .................................................................... 2 20 Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) ....................................................................... 5, 11 21 22 Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) ........................................................................... 11 23 Sorenson v. Raymond, 532 F.2d 496 (5th Cir. 1976) ............................................................................... 8 24 25 26 27 28 Statutes 17 U.S.C. §§ 512(b)-(d).......................................................................................... 11 17 U.S.C. § 512(a).................................................................................................... 3 -ii-

GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

1 Fed. R. Civ. P. 42 ..................................................................................................... 2 2 Fed. R. Civ. P. 42(a) ................................................................................................. 2 3 Local Rule 7-3 ....................................................................................................... 11 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

Miscellaneous Wright, Miller & Cooper, Federal Practice and Procedure § 4465.1............................................................................................................... 8

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1

Google respectfully submits this response to the Court's December 2, 2008

2 Minute Order, which contemplates, among other things, a stay of Perfect 10, Inc. v. 3 Google Inc., Case No. 04-9484 AHM (SHx). 4 5 Preliminary Statement Google understands that Perfect 10's massive, blunder-buss claims impose

6 burdens upon this Court and recognizes the importance of the Court's continuing 7 efforts to find an appropriate solution to managing Perfect 10's simultaneous suits 8 against Google, Amazon and Microsoft. However, Google does not believe that a 9 stay of this case pending resolution of the Microsoft action is the solution. A stay 10 risks serious, irreparable prejudice to Google. Furthermore, because of the 11 differences in the legal and factual issues between the actions, resolution of the 12 Microsoft case is unlikely to materially advance the goal of bringing this lawsuit to 13 an orderly and just conclusion. 14 At a minimum, Google should be permitted to file its contemplated summary 15 judgment motions on Perfect 10's copyright claims pursuant to the safe harbor 16 provisions of the Digital Millennium Copyright Act. Prior to the December 2 Order, 17 Google was meeting and conferring with Perfect 10 about those motions and, 18 specifically, the parties were discussing a schedule in which Google would file its 19 motions in January 2009 with an agreed briefing schedule. Google's DMCA 20 motions, if successful, will resolve Perfect 10's pending copyright infringement 21 claims against Google, thus obviating the need for additional extensive discovery 22 and other litigation involving those claims. 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

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1 I. 2 3

RESOLUTION OF THE MICROSOFT ACTION IS NOT LIKELY TO ADVANCE RESOLUTION OF THIS SUIT AGAINST GOOGLE. While Perfect 10's suits against Google and against the Amazon Defendants

4 share some facial similarities with Perfect 10's case against Microsoft,1 the overlap 5 of the relevant factual and legal issues is limited, and a stay of this lawsuit is 6 inappropriate. 7 8 A. The Three Cases Differ In Legal Claims and Defenses. The differences in legal claims and defenses in the three cases are material

9 and significant. In particular, because Perfect 10 sent different purported DMCA 10 notices to Microsoft than it did to Google,2 the DMCA issues in the Microsoft and 11 Google suits will likely differ. Perfect 10 also has brought multiple claims against 12 Google that Perfect 10 has not brought against Microsoft. These include claims for 13 alleged unfair competition under federal, state and common law, and state law 14 claims of violation of publicity rights, unjust enrichment, and misappropriation that 15 Perfect 10 has asserted against Google, but has not asserted against Microsoft.3 And 16 17 18 19 20 21 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

The cases against Google and the Amazon Defendants (namely, Amazon.com, Alexa Internet, and A9.com) are consolidated for pretrial and discovery purposes only, and the case against Microsoft is not consolidated with either action--nor has any party ever requested such consolidation. Even if one or more of the parties had requested consolidation, it is not clear that the consolidation standard would even be met in these circumstances. See Fed. R. Civ. P. 42 (permitting consolidation of actions pending before the same court and "involv[ing] a common question of law or fact"); In re Orion Securities Litigation, 2008 WL 2811358, at *3 (S.D.N.Y. 2008) ("Consolidation of these three actions pursuant to Rule 42(a) is appropriate because the factual allegations and legal claims raised in the complaints are largely overlapping and raise common questions of law and fact."). 2 See Declaration of Andrea Pallios Roberts dated December 12, 2008 ("Roberts Decl."), and Exhibits A and B thereto (filed under seal). 3 See Declaration of Rachel M. Herrick dated December 11, 2008 ("Herrick Decl.") at Ex. A (Perfect 10's [Proposed] Second Amended Complaint in the Google case) and at Ex. B (Perfect 10's Amended Complaint in the Microsoft case). -2-

1

1 while Perfect 10 has alleged trademark claims against Google, it has not alleged 2 such claims against Amazon.4 As such, Google has pled a number of defenses and 3 counterclaims based on federal preemption and issues of California state and 4 common law that have no apparent relevance to the cases against Microsoft or the 5 Amazon Defendants.5 Further, Perfect 10 has recently amended its complaint to add 6 claims regarding Google's Blogger content hosting service, which has nothing to do 7 with Amazon or Microsoft.6 Resolution of the Microsoft case will not have a 8 potential impact on the resolution of any of these claims and defenses in this matter 9 against Google. 10 The differences between the three cases are further illustrated by the motion 11 practice in the Amazon case that raises claims and defenses unique to those parties 12 and has no bearing on Google here. For example, A9.com has sought safe harbor 13 under § 512(a) of the DMCA.7 At this time, Google does not anticipate seeking safe 14 harbor under that provision. Further, Perfect 10 has argued that Amazon.com and 15 Alexa Internet are ineligible for any safe harbor under the DMCA because they 16 failed to properly designate an agent to receive notices of alleged infringement.8 17 This is entirely inapplicable to Google. 18 20 21 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

The following charts summarize the divergent claims brought by Perfect 10 in

19 the three cases:

See id. at Ex. A (Perfect 10's [Proposed] Second Amended Complaint in the Google case) and at Ex. C (Perfect 10's Amended Complaint in the Amazon case). 5 See id. at Ex. D (Google's Answer and Counterclaims to Perfect 10's [Proposed] Second Amended Complaint). 6 See id. at Ex. A (Perfect 10's [Proposed] Second Amended Complaint in the Google case, at ¶ 37). 7 See id. at Ex. E (Motion of A9.com for Summary Judgment). 8 See id. at Ex. F ([Redacted] Reply Memorandum in Support of Perfect 10's Motion for Partial Summary Judgment Against Alexa Internet, Inc.). -3-

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17

Legal Claims Copyright Infringement Claims Based Upon Search Engine Functionality Copyright Infringement Claims Based Upon Content Hosting Lanham Act ­ Trade mark Infringement Lanham Act ­ Trade mark Dilution Right of Publicity (state law) Unfair Competition (federal, state, and common law) Unjust Enrichment (state law) Misappropriation (state law) Legal Defenses DMCA Safe Harbors Trademark Defenses Preemption by the Copyright Act Preemption by the Communications Decency Act B.

Google Yes Yes Yes Yes Yes Yes Yes Yes Google Yes Yes Yes Yes

Microsoft Yes No Yes No No No No No Microsoft Yes Yes No No

Amazon Yes No No No No No No No Amazon Yes No No No

The Three Cases Differ In Facts To Be Established.

Key facts underlying the legal claims and defenses in the three cases are

18 dissimilar as well. Most importantly, each defendant either has raised or plans to 19 raise defenses based on the safe harbor provisions of the DMCA. Principal issues 20 with those defenses include the (1) deficiencies in the various purported notices o f 21 infringement that Perfect 10 sent to the various defendants, and (2) actions taken by 22 the defendants in response. Perfect 10 sent different notices to each of the different
9 23 parties in substantially divergent numbers, over different time periods.

24 Furthermore, proof of what Microsoft did or did not do in response to a purported 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER
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See Roberts Decl. and Exhibits A and B thereto. -4-

1 DMCA notice is not the same as what Google did or did not do in response to a 2 different purported DMCA notice. 3 Proof of any alleged infringements by Microsoft (by operation of Microsoft's 4 search engine) also will have little or no bearing on proof of any alleged 5 infringements by Google (by operation of Google's search engine). The search 6 engines are distinct operations, with different algorithms, different indexes, different 7 content and different results.10 Even if Perfect 10 can establish infringement of one 8 or more copyrights by Microsoft, in each and every case, Perfect 10 would still have 9 the burden of proving an entirely separate and distinct infringement by Google. Nor 10 is any knowledge by Microsoft of any infringement on Microsoft's system probative 11 of any knowledge by Google of any infringement of Google's system. 12 14 15 16 17 18 19 20 21 22 23 24 Even a ruling that a particular action is or is not a "simple measure" that Microsoft could take to reduce infringement would not necessarily apply to Google. 26 For technological, logistical or other reasons, what may be "simple" for Microsoft 27 may not be "simple" for Google, and vice versa. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007). 28 25
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER
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The following chart illustrates just some of the divergences in underlying Factual and/or Legal Issue Are Google's and Microsoft's search engines identical? Do Google and Microsoft have identical s e a r c h indexes? Did P10 send identical purported DMCA notices to Google and Microsoft? Did Google and Microsoft respond in identical fashion to Perfect 10's purported DMCA notices? Does an infringement on one defendant's system prove an infringe ment on another defendant's system? Identical Between Cases? N o. No. No. No. No.

13 facts between the Google and Microsoft cases:

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1 2 3 4 5 6 7 8 9

Is one defendant's knowledge of any infringement its system probative of another defendant's knowledge of any infringement on its system? Is a "simple measure" for one defendant necessarily a "simple measure" for another defendant? C.

No.

No.

Because Google Does Not Agree To Sampling, The Outcome of The Microsoft Matter Is Unlikely To Be Dispositive.

The Court's Tentative accepts a proposal advanced by Microsoft for

10 "structuring" the case against it. Specifically, Microsoft apparently proposed 11 (among other things) that Perfect 10 be required to select a limited number of factual 12 and legal "scenarios" (or "combinations") that it will pursue to establish liability for 13 infringement in the Microsoft case; that each party will select a certain number of 14 representative works to serve as examples for each scenario; and that Perfect 10 will 15 be compelled to produce certain information regarding each selected work. 16 Assuming that this process proves to be workable in the suit between 17 Microsoft and Perfect 10, there is little reason to believe that it will persuade Perfect 18 10 to narrow or focus its claims against Google. Indeed, even in the face of the 19 Court's plainly stated view that Perfect 10's claims are fundamentally for 11 20 contributory copyright infringement, and contrary to the Court's grant of summary
12 21 judgment to A9.com on Perfect 10's direct and vicarious infringement claims, 22 Perfect 10 still refuses to narrow its claims against any of the parties. For example,

23 in the Microsoft case, Microsoft served Requests for Admission that Perfect 10 24 See Herrick Decl. at Ex. G (October 6, 2008 Transcript at 20:21-23 ("Without making a final ruling on any motion that's pending, I will tell you all that this is 26 almost entirely a contributory infringement case."). 25 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER
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1 would not pursue its federal trademark claims, and Perfect 10 so admitted.13 But 2 when Microsoft requested that Perfect 10 voluntarily dismiss its trademark claims 3 following that sworn admission, not only did Perfect 10 refuse to dismiss them, it 4 purported to amend its Responses to "reinstate" the claim.14 5 Furthermore, because there is little overlap between the claims in the 6 Microsoft and Google matters, it is unlikely that any narrowing (or resolution) 7 accomplished by sampling in the Microsoft case will advance the resolution of 8 Perfect 10's case against Google. Microsoft's proposal is limited to the claims and 9 defenses of that case, namely, federal copyright and trademark infringement claims 10 regarding Microsoft's web search and image search functions. There also is little 11 reason to think that the "factual scenarios" of Microsoft's operations are identical to 12 those of Google's operations. Each entity operates its own search engine based on 13 its own proprietary technology. Although Google's and Microsoft's web search, 14 "thumbnailing" and "inline linking" processes may have similarities as they appear 15 to users, the resolution of claims of direct and/or secondary infringement will likely 16 depend on the technical details underlying those processes. To the extent 17 relationships with advertisers are relevant, Google and Microsoft do not have 18 identical contractual or other relationships with advertisers. Nor does Microsoft's 19 proposal include any factual or legal scenarios regarding web hosting services (such 20 as Blogger)--services implicating different legal theories and different legal 21 defenses, including a separate safe harbor under the DMCA. 22 23 24 See id. at Ex. H (November 4, 2008 Order Granting in Part and Denying in 25 Part3A9.com's Summary Judgment Motion). 1 See id. at Ex. I (Perfect 10's Objections and Responses to Microsoft's Second 26 Set of Requests for Admissions, at 3-5). 14 See id. at Ex. J (Perfect 10's Amended Responses to Microsoft's Second Set 27 of Requests for Admissions, at 3-6). 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER
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1

Finally, Google has not stipulated to or otherwise agreed to the "sampling"

2 proposal, and any rulings regarding that proposal (including any appellate rulings) 3 would not bind Google in this case or otherwise directly moot issues in this case. 4 Even in the unlikely event that Perfect 10 obtains a judgment of liability against 5 Microsoft, under traditional and well-established principles of claim and issue 6 preclusion, such a judgment would not be binding on Google. See, e.g., National 7 Industries, Inc. v. Republic Nat. Life Ins. Co., 677 F.2d 1258, 1260 (9th Cir. 1982) 8 ("Neither was a party nor privy to the other's suit and thus neither is bound by the 9 other's judgment."); cf. Charles J. Arndt, Inc. v. City of Birmingham, 748 F.2d 1486, 10 1494 (11th Cir. 1984) (refusing to permit plaintiff to invoke judgment against 11 defendant from different case that plaintiff deliberately chose not to join, finding 12 that "[t]o countenance such practice so that [plaintiff] could now use the decision in 13 [the other] case against the defendants would serve only to promote the 'wait and 14 see' attitude disapproved by the [Supreme] Court in Parklane."). In the event that 15 the sampling method were to yield a settlement of the Microsoft case, that 16 settlement will not bind Google. See, e.g., Arizona v. California, 530 U.S. 392, 414 17 (2000) ("settlements ordinarily occasion no issue preclusion"); Sorenson v. 18 Raymond, 532 F.2d 496, 499 (5th Cir. 1976) (nonmutual preclusion could not rest 19 on a permanent injunction entered by consent after a preliminary injunction had 20 issued); E.B. Harper & Co. v. Nortek, Inc., 104 F.3d 913, 921-24 (7th Cir. 1997); 21 Wright, Miller & Cooper, Federal Practice and Procedure § 4465.1, at 753 22 ("Whenever settlement seems to have sacrificed meaningful opportunities to test the 23 judgment further, a later court should be free to deny nonmutual preclusion"). 24 II. 25 A STAY WOULD UNFAIRLY PREJUDICE GOOGLE. Under basic standards of due process, justice and fair play, Google is entitled

26 to fully defend itself against Perfect 10's sweeping claims. Perfect 10's suit against 27 Google has been pending for over four years, has been to the Ninth Circuit and 28 back, and is proceeding toward the filing of dispositive motions. A stay would stop
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

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1 this progress in its tracks, and do so for a period of time that is both lengthy and 2 undetermined. The Microsoft case is not set for trial until the summer of 2009. It is 3 a virtual certainty that any final ruling in that case will be appealed, and such 4 appeals could remain pending for years. 5 During any stay, Perfect 10 no doubt will use the time to continue pressing 6 and expanding its claims against Google by barraging Google with the same type of 7 wholly defective DMCA notices that it has sent in the past and on which its present 8 claims rely. Indeed, Perfect 10 has sent three such purported notices in the past two 9 weeks alone.15 Perfect 10 also will presumably seek additional damages spanning 10 the entire period of any stay that is ordered. It would be fundamentally unfair to 11 permit Perfect 10 to continue to expand its claims and increase its alleged damages 12 claims while simultaneously tying Google's hands with a stay order that precludes 13 the defense of those claims and precludes Google from obtaining clarity about its 14 legal obligations.16 15 Not only will Google suffer substantial prejudice from such a stay, there is 16 little benefit to be gained since any resolution of the Microsoft case is unlikely to 17 obviate the need for Google to obtain a ruling on its own motions--including, at the 18 very least, motions under the DMCA's safe harbors and for summary judgment on 19 claims present in the Google case that are not at issue in the Microsoft case. Courts 20 have found that circumstances of the type presented here--such as the material 21 differences between litigants and actions--militate against the imposition of a stay. 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

See Herrick Decl. ¶ 15. In fact, more than once, Perfect 10 has already attempted to use the mere possibility of a stay to Google's disadvantage. To cite just one example, even though Google extended the professional courtesy of a two-week extension for Perfect 10 to draft and deliver its portions of the Joint Stipulation on a motion to compel long-outstanding and necessary discovery, Perfect 10 broke its word and (footnote continued)
16

15

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1 See, e.g., Lockyer v. Mirant Corp., 398 F.3d 1098, 1113 (9th Cir. 2005) (stay was 2 abuse of discretion when it was entered based on pending litigation that "is unlikely 3 to decide, or to contribute to the decision of, the factual and legal issues before the 4 district court") (referencing Landis v. North American Co., 299 U.S. 248, 255 5 (1936) ("Only in rare circumstances will a litigant in one cause be compelled to 6 stand aside while a litigant in another settles the rule of law that will define the 7 rights of both.")); Kahn v. General Motors Corp., 889 F.2d 1078, 1080 (Fed. Cir. 8 1989) ("The potential lengthy and indefinite stay of these claims pending resolution 9 of an entirely different issue involving different parties will deprive these claims of 10 practical remedy. It is the duty of courts to avoid unnecessary delay in resolving the 11 rights of litigants."). See also Dependable Highway Exp., Inc. v. Navigators Ins. 12 Co., 498 F.3d 1059, 1067 (9th Cir. 2007) ("[I]n light of the general policy favoring 13 stays of short, or at least reasonable, duration, the district court erred by issuing a 14 stay without any indication that it would last only for a reasonable time"). 15 16 III. 17 18 20 21 22 refused to abide by its agreement with an untenable excuse that the Court's explicitly tentative December 2 Order actually imposed a stay of the Google case. 23 17 If the Court ultimately decides to issue a stay, Google requests that any stay 24 be conditioned on Perfect 10's agreement to a binding stipulation that precludes it 25 from pursuing any claims arising from any conduct or events during any stay period and that waives any ability to seek or recover any damages under any of its claims 26 during any stay period. Perfect 10 also should be required to waive any contention 27 that Google's actions or inactions during any stay period evidences willfulness or intent for any purpose. 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

For all these reasons, the proposed stay should not issue.17 AT A MINIMUM, GOOGLE SHOULD BE PERMITTED TO SEEK SUMMARY JUDGMENT UNDER THE DMCA. For the reasons stated above, Google respectfully submits that a stay is not In the event the Court does impose a stay, however, Google

19 appropriate.

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1 alternatively requests that the Court at a minimum allow Google to move for 2 summary judgment under the DMCA. 3 4 5 A. A Decision Under the DMCA Would Resolve Significant Aspects Of This Suit. Prior to the time of the December 2 Order, and pursuant to Local Rule 7-3,

6 Google was discussing with Perfect 10 Google's contemplated motions for summary 7 judgment on safe harbors provided by the DMCA, 17 U.S.C. § 512(b)-(d).18 Google 8 had been making progress toward an agreement that would set the filing of those 9 motions for January 2009 and establish a briefing schedule. As the Court is aware, 10 the DMCA establishes four "safe harbors" for Internet service providers, and "[a] 11 service provider that qualifies for such [safe harbor(s)] is not liable for monetary 12 relief and may be subject only to the narrow injunctive relief set forth in section 13 512(j)." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1158 (9th Cir. 2007). 14 See also Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1098-99 (W.D. 15 Wash. 2004); Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1109 (9th Cir. 2007); 16 Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004). Accordingly, if 17 successful, not only will Google's motions be final and dispositive of the vast bulk 18 of Perfect 10's case--namely, its copyright infringement claims against Google-- 19 but it also will reduce and likely eliminate the need to pursue large swaths of 20 discovery and other motion practice.19 21 22 23 24 25 26 27 28 See Herrick Decl. at Ex. K (Letter from R. Herrick to J. Mausner dated November 7, 2008). 19 For example, Google has sought to compel Perfect 10 to identify the copyrighted works and infringements it asserts against Google. The Court has largely granted that motion in principle, noting that "it would be both fair and feasible for Perfect 10 to create a spreadsheet along the lines contemplated by Google's Interrogatories Nos. 3 and 11 ... but only for a selected and relatively small sample of copyrighted works." Herrick Decl. at Ex. L (Civil Minutes dated September 25, 2007, at 4). Although the dispute over such identification has not (footnote continued)
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER
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1 2 3 4

B.

Not Allowing Google To Obtain Rulings Under the DMCA Would Be Inconsistent With the Purposes Of That Act and Prejudice Google.

Congress enacted the DMCA to bring clarity to the obligations of Internet

5 service providers with respect to alleged copyright infringement on the Internet. 6 Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1098 (W.D. Wash. 2004). 7 The DMCA was meant to balance the interests of copyright holders and Internet 8 service providers by "creating a mechanism for rights holders to inform ISPs of 9 potentially infringing conduct while, at the same time, providing 'greater certainty 10 to service providers concerning their legal exposure for infringements that may 11 occur in the course of their activities.'" Id. (quoting Ellison v. Robertson, 357 F.3d 12 1072, 1076 (9th Cir. 2004) (emphasis added)). 13 Precluding Google from going forward with its motions for summary 14 judgment would be inconsistent with this purpose--and prejudicial to Google-- 15 since it would deny Google clarity on any legal obligations it had or will have to 16 respond to the purported DMCA notices of Perfect 10. Perfect 10's case against 17 Google has been pending for over four years, and Perfect 10 continues to send 18 Google ostensible DMCA notices, including on November 27, 2008--Thanksgiving 19 Day.20 Google believes that it is and has at all times been fully in compliance with 20 all applicable laws, including the DMCA, but until Google receives a ruling on that 21 issue, Perfect 10's pending and ever-expanding claims create uncertainty for 22 Google's present and future business operations. 24 25 been fully resolved and although Perfect 10 certainly has made no effort to provide 26 the information despite the Court's statements, Google's dispositive motion may 27 render it (and possibly other discovery disputes as well) largely moot. 20 See Herrick Decl. ¶ 15. 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

Google's eligibility for safe

23 harbors is ripe for review, and nothing that occurs in the Microsoft case is likely to

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1 obviate the need for the Court to rule on that question. Google respectfully requests 2 the opportunity to settle these concerns with its dispositive motions for safe 3 harbors.21 4 5 Conclusion Google shares the Court's concerns with the progress of this litigation and is

6 striving to bring it to a fair and orderly conclusion. Google respectfully believes, 7 however, that the solution is not to stay this case in deference to a later-filed case 8 involving disparate factual and legal issues. Google accordingly requests that the 9 Court not stay this case and, in the alternative, that the Court at a minimum allow 10 Google to move for summary judgment under the DMCA and obtain a ruling from 11 the Court prior to any decision regarding a stay of this lawsuit. 12 13 DATED: December 12, 2008 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
GOOGLE INC.'S RESPONSE TO THE COURT'S TENTATIVE ORDER

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP By /s/ Michael T. Zeller Michael T. Zeller Attorneys for Defendant Google Inc.

Perfect 10 has previously claimed that a stay would result in prejudice to it. In opposing the stay requested by Amazon on August 25, 2005, Perfect 10 argued that "a stay would severely harm Perfect 10 by effectively granting Amazon a 'free pass' to continue massively infringing Perfect 10's copyrights until at least December, 2006, when the Google action is set for trial." Herrick Decl. at Ex. M (Memorandum of Points and Authorities of Plaintiff Perfect 10 in Opposition to Motion to Stay, at 1). -13-

21