Entrepreneur Media Inc v. Eygn Limited Ernst & Young LLP et al

Filing 53

Opposition re: MOTION for Judgment on the Pleadings as to Lack of Personal Jurisdiction 38 filed by Plaintiff Entrepreneur Media Inc. (Attachments: # 1 Declaration of Ronald L. Young in Opposition to Motions for Judgment on the Pleadings and, in the Alternative, to Transfer)(Holmes, Michael)

1 Jeffrey R. Patterson, Esq. (State Bar No. 126148)
2

Michael R. Adele, Esq. (State Bar No. 138339)
Michael J. Holmes, Esq. (State Bar No. 199311)

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ALLEN MATKINS LECK GAMBLE MALLORY & NATSIS LLP
4 12348 High Bluff Drive, Suite 210
5 San Diego, CA 92130

Telephone: [phone]
6 Facsimile: [phone]
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Attorneys for Plaintiff/Counter-Defendant
8 ENTREPRENEUR MEDIA, INC.
9

UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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12 ENTREPRENEUR MEDIA, INC.,
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)
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Plaintiff,
)
)
v.
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EYGN LIMITED; ERNST & YOUNG )
LLP;and ERNST & YOUNG
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ADVISORY INC.,
)
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Defendants.
)
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EYGN Limited and ERNST &
)
YOUNG LLP
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Counterclaimants, )
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v.
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ENTREPRENEUR MEDIA, INC.
)
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Counterdefendant.)
)

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LAW OFFICES

Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

No. SACV08-0608 DOC
MEMORANDUM OF POINTS
AND AUTHORITIES OF
ENTREPRENEUR MEDIA, INC. IN
OPPOSITION TO MOTION OF EYGN
LIMITED FOR JUDGMENT ON THE
PLEADINGS FOR LACK OF
PERSONAL JURISDICTION
Date: December 22, 2008
Time: 8:30 a.m.
Courtroom: 9D
Judge: Honorable David O. Carter

1

Plaintiff Entrepreneur Media, Inc. (“Plaintiff”) respectfully submits this

2 memorandum in opposition to the motion (the "Motion") of Defendant EYGN
3 Limited ("Defendant" or "Defendant EYGN") for Judgment on the Pleadings for
4 Lack of Personal Jurisdiction.
5

I.

6

Defendant EYGN erroneously contends, through its motion for judgment

Introduction.

7 on the pleadings, that this Court lacks personal jurisdiction over Defendant
8 EYGN. However, the Complaint expressly alleges that the defendants have
9 had sufficient contacts with California generally, and in connection with this
10 matter particularly, so as to give rise to personal jurisdiction over each
11 defendant (including Defendant EYGN). Complaint, ¶ 7. Accepting this
12 allegation as true, as is mandated by Ninth Circuit law, requires denial of the
13 motion for judgment on the pleadings. Regardless, even if this Court were to
14 require greater specificity in pleading jurisdictional allegations than the short
15 and plain statement included in the Complaint, Plaintiff is entitled to leave to
16 amend its complaint so that it can provide any greater specificity the Court
17 requires.
18

Defendants have submitted a variety of declarations attesting to a lack of

19 jurisdiction over Defendant EYGN, but those declarations cannot be
20 considered in the context of a judgment on the pleadings. To the extent the
21 Court considers the declarations, the license agreement attached as Exhibit C
22 to the declaration of Victoria Cochraine evidences that Defendant EYGN and
23 Defendant Ernst & Young have a relationship relative to the trademarks at
24 issue here that establishes jurisdiction over Defendant EYGN. Indeed, under
25 the parties' license agreement (and federal law), Defendant EYGN was
26 obligated to oversee and control the quality of any use of the mark in California
27 (and elsewhere), Defendant EYGN and Defendant Ernst & Young were both
28 entitled to commence litigation in California (and elsewhere), and both
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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-1-

1 Defendants used the same counsel to send their cease and desist letter and
2 e-mail into California and to defend the litigation commenced by Plaintiff. If the
3 Court considers such evidence, it must treat the Motion as a summary
4 judgment motion and should deny it outright; however, to the extent the Court
5 is not inclined to deny the Motion outright based on the evidence submitted by
6 Defendants, Plaintiff is entitled to a continuance to allow it to conduct
7 discovery on the issue of jurisdiction. Discovery has not as yet commenced in
8 this matter, and is set to commence with the exchange of initial disclosures on
9 January 30, 2008. Plaintiff is entitled, at a minimum, to a full and fair
10 opportunity to conduct jurisdictional discovery so that it can fairly defend a
11 summary judgment motion based on a purported lack of jurisdiction.
12

In short, Defendant EYGN is not entitled to dismissal for lack of personal

13 jurisdiction. Given the motion as framed and the evidence submitted, EYGN's
14 motion should be denied outright. If judgment on the pleadings is granted,
15 however, Plaintiff is entitled to leave to amend. Moreover, if the matter is
16 treated as a summary judgment motion and not denied outright, Plaintiff is
17 entitled to a continuance to allow Plaintiff a full and fair opportunity to conduct
18 jurisdictional discovery before the motion is resolved. Regardless, Defendant
19 EYGN should not be dismissed for lack of personal jurisdiction.
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II.

Argument.

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A.

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Judgment on the Pleadings Must Be Denied Based on
the Jurisdictional Allegations in the Complaint.

“A judgment on the pleadings is a decision on the merits,” that the Ninth

25 Circuit reviews de novo. General Conference Corp. of Seventh-Day
26 Adventists v. Seventh-Day Adventist Congregational Church, 887 F.2d 228,
27 230 (9th Cir. 1989), cert. denied, 493 U.S. 1079 (1990). A motion for judgment
28 on the pleadings is proper “when the moving party clearly establishes on the
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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-2-

1 face of the pleadings that no material issue of fact remains to be resolved and
2 that it is entitled to judgment as a matter of law.” Hal Roach Studios, Inc. v.
3 Richard Feiner & Co., 896 F.2d 1542, 1550 (9TH Cir. 1990). “All allegations of
4 fact by the party opposing the motion are accepted as true, and are construed
5 in the light most favorable to that party.” General Conference, 887 F.2d at
6 230.

Here, the Complaint expressly alleges that "Defendants have sufficient

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8 contacts with this jurisdiction generally and, in particular, with the events
9 alleged herein, that each defendant is subject to the exercise of jurisdiction of
10 this court over its person." Complaint, ¶ 7. This allegation conforms with the
11 requirement that Plaintiff need only provide "a short and plain statement of the
12 grounds for this court's jurisdiction . . . " FRCP, 8(a)(1). Moreover, the
13 allegation must be taken as true in the context of a motion for judgment on the
14 pleadings. General Conference, 887 F.2d at 230. Accordingly, the motion for
15 judgment on the pleadings for lack of personal jurisdiction must be denied.1
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B.

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If Judgment on the Pleadings Is Granted (and It Should
Not Be), Leave to Amend Must Be Granted Too.

To the extent the Court requires greater specificity and is inclined to

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19 grant judgment on the pleadings, Plaintiff requests (and is entitled to) leave to
20 amend the complaint to provide that specificity.
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It is said that a motion for judgment on the pleadings is not
favored by the courts, and this is true, if the motion is permitted
to cut off the right to amend, thus preventing a hearing on the
merits. But if the motion for judgment is treated as a demurrer

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See also WebZero, LLC v. ClicVU, Inc., 2008 WL 1734702, 4 (C.D.Cal. 2008) (without
having conducted discovery, [plaintiff] need only make a prima facie showing that
[defendant] is subject to personal jurisdiction in California, citing Data Disc, Inc. v.
Systems Technology Associates, Inc., 557 F.2d 1280, 1285 (9th Cir.1977) (stating that
Plaintiff need only "demonstrate facts which support a finding of jurisdiction in order to
avoid a motion to dismiss") (citations omitted)).

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-3-

1
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to the defective pleading with leave to amend in a proper case,
as was done here, the practice is sanctioned by usage and free
from objection.

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4 David v. Robert Dollar Co., 2 F.2d 803, 806 (9th Cir. 1925). In determining
5 whether to grant leave to amend, “a court must be guided by the underlying
6 purpose of [Federal] Rule [of Civil Procedure] 15-to facilitate decision on the
7 merits, rather than on the pleadings or technicalities.” United States v. Webb,
8 655 F.2d 977, 979 (9th Cir. 1981), quoted in Roth v. Garcia, 942 F2d 617, 628
9 (9th Cir. 1991); see also In re Rogstad, 126 F.3d 1224, 1228 (9th Cir. 1997).
10

Here, if need be, Plaintiff can (and will) amend the Complaint to allege

11 greater jurisdictional specificity. Trademark licensors, such as Defendant
12 EYGN, are required to oversee and control the quality and the use of their
13 trademarks. In fact, Defendant EYGN's license agreement provides for such
14 control. See Declaration of Victoria Cochrane, Exhibit C section 5 (Defendant
15 EYGN's quality control rights); see also Miller v. Glenn Miller Productions, Inc.,
16 454 F.3d 975, 992 (9th Cir. 2006) ("It is well established that when the owner
17 of a trademark licenses the mark to others, he retains a “duty to exercise
18 control and supervision over the licensee's use of the mark”). As such,
19 Defendant EYGN is not a "mere" licensor, and its oversight and control over
20 the use and quality of the mark in California (including its joint effort with
21 Defendant Ernst & Young to enforce its rights in California) creates specific
22 jurisdiction over Defendant EYGN in this matter.
23

Defendant EYGN's oversight activities (and those of its agent/designated

24 controller, EYGS) in assuring Ernst & Young's proper use of the mark in
25 California and in policing the mark's use in California provide jurisdiction. So
26 too, the acts of Ernst & Young LLP in using the Entrepreneur of the Year mark
27 under Defendant EYGN's supervisory control are attributable to Defendant
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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-4-

1 EYGN. See e.g., Akro Corp v. Luker, 45 F.3d 1541, 1548-49 (Fed. Cir. 1995)
2 (licensor subject to personal jurisdiction due to sale of licensed product in state
3 pursuant to license that granted licensee power to litigate infringement actions
4 and that required licensor to defend and pursue infringements against the
5 patent); Genetic Implant Systems v. Core-Vent Corp., 123 F.3d 1455 (Fed.
6 Cir. 1997) (licensor's obligations under an exclusive license agreement may
7 subject it to personal jurisdiction in the forum state even if the licensee is not
8 incorporated or headquarted in the forum state, so long as the exclusive
9 licensee conducts business there).2

The case of Breckenridge Pharmaceutical, Inc. v. Metabolite

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11 Laboratories, Inc., 444 F.3d 1356 (Fed. Cir. 2006) establishes that a licensor
12 may subject itself to personal jurisdiction where it goes beyond a "mere"
13 license in exchange for royalties, by retaining control over licensee's activities
14 and granting licensee the right to litigate infringement actions. For instance, in
15 Breckenridge, the court held:

Here, in addition to sending letters into the forum state, which we
presume qualify as “cease and desist” letters, Metabolite has
entered into an exclusive license with PamLab, a company that,
while not headquartered or incorporated in Florida, conducts
business in Florida. As part of the license agreement, Metabolite
granted PamLab the right to sue for patent infringement with
Metabolite's written consent, and the parties agreed to “discuss
in good faith the appropriate action, if any, with respect to third
party infringers of the Licensed Patents, and to cooperate
reasonably in any enforcement actions”. Metabolite granted
PamLab “full control of the prosecution or maintenance” of any
patent or application that Metabolite abandons or permits to
lapse and agreed to provide PamLab with an executed power of
attorney for that purpose. Metabolite further agreed to “provide
consultation to PamLab in the science, medicine and marketing
of vitamins and related products, from time to time”.

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Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424 (Fed.Cir. 1996) (sending
cease and desist letters, plus placing patented product into commerce through
distributor and purposefully exploiting the California market through advertising suffices
for personal jurisdiction because the “forum state does not exceed its powers under the
Due Process Clause if it asserts personal jurisdiction over a corporation that delivers its
products into the stream of commerce with the expectation that they will be purchased
by consumers in the forum State”).

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-5-

That this exclusive license agreement not only contemplated an
ongoing relationship between PamLab and Metabolite beyond
royalty payments but has actually resulted in such a relationship
is obvious from the facts of this case. Metabolite coordinates
with PamLab in sending cease and desist letters and in litigating
infringement claims in Florida and elsewhere and, as is the case
here, licensor and licensee are often represented jointly by
counsel. As such, we hold that, through its relationship with
PamLab, which sells products in Florida, Metabolite has
purposefully availed itself to the privilege of conducting activities
within Florida.

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Id. at 1366-67.
The facts stated above are closely analogous to the facts presented

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here. As in Breckenridge, licensor EYGN has retained for itself and granted to
licensee Ernst & Young LLP the right to sue third parties for infringement, and
has obligated itself to protect the licensed interests and pay for lawsuits
instituted by Ernst & Young LLP. Cochrane Decl., Exh. C ¶¶ 4.2 and 4.3. So
too, as in Breckenridge, Defendant EYGN's license requires that Ernst &
Young LLP abide by various quality control provisions. Cochrane Decl., Exh.
C ¶¶ 5.1-5.4. Just as in Breckenridge, this license resulted in the coordination of the cease and desist letters sent by their joint counsel to Plaintiff
and Plaintiff's counsel (Complaint, Exhs. A and B), and has resulted in their
joint representation in the present California based action. As in Breckenridge,
the relationship between licensor EYGN and its licensee, which creates
continuing obligations to police the mark in California (and elsewhere) –
obligations that Defendants EYGN and Ernst & Young LLP were discharging
by having their counsel contact Plaintiff and Plaintiff's counsel in California –
gives rise to this Court's jurisdiction over Defendant EYGN.3
3

In the Federal Circuit, as in the Ninth Circuit, simply sending a cease and desist letter will
not create jurisdiction. See e.g, Campbell Pet Co. v. Miale, 542 F.3d 879, 885 (Fed. Cir.
2008) ("the sending of an infringement letter, without more, is insufficient to satisfy the
requirements of due process when exercising jurisdiction over an out-of-state patentee")
(emphasis added); Bancroft & Masters, Inc. v. Augusta Nat. Inc., 223 F.3d 1082, 1089 (9th
Cir. 2000) ("a cease-and-desist letter sent by a trademark holder to a putative infringer is

LAW OFFICES

Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-6-

1

Indeed, jurisdiction is particularly appropriate where, as here, Ernst &

2 Young LLP owned the mark originally (and has used it consistently in
3 California for years), then sold it to Defendant EYGN and took a license back
4 from Defendant EYGN. See Declaration of Michael R. Adele filed concurrently
5 herewith ("Adele Decl."). Notwithstanding the corporate shell game, the
6 relationship between Defendant EYGN Limited and Defendant Ernst & Young
7 LLP is either an alter ego and/or agency relationship, such that Ernst &
8 Young's conduct in connection therewith give rise to this Court's jurisdiction
9 over Defendant Ernst & Young LLP and Defendant EYGN Limited. Indeed, in
10 similar circumstances, attempts by the defendant to avoid jurisdiction have
11 been met by at least one court with incredulity and the observation that the
12 defendant had "chutzpah" for even making the argument. Dainippon Screen
13 Mfg. Co., Ltd. v. CFMT, Inc., 142 F.3d 1266, 1270 –1271 (Fed. Cir. 1998)
14 ("Stripped to its essentials, CFM contends that a parent company can
15 incorporate a holding company in another state, transfer its patents to the
16 holding company, arrange to have those patents licensed back to itself by
17 virtue of its complete control over the holding company, and threaten its
18 competitors with infringement without fear of being a declaratory judgment
19 defendant, save perhaps in the state of incorporation of the holding company.
20 This argument qualifies for one of our “chutzpah” awards. ").
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Plaintiff can and would make the foregoing specific factual allegations if

22 the Court were inclined to grant Defendant EYGN's motion for judgment on the
23 pleadings. See Adele Decl. Thus, if the Court grants judgment on the
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not, by itself, a sufficient basis for personal jurisdiction in the putative infringer's home
state."). However, the type of relationship at issue here, which goes beyond a mere
license in exchange for royalty payments, will suffice to give rise to personal jurisdiction.
Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc., 444 F.3d 1356 (Fed.
Cir. 2006); Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142 F.3d 1266, 1270 1271 (Fed. Cir. 1998).

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-7-

1 pleadings (which it should not), leave to amend the Complaint in this action
2 must also be granted. Id. Consequently, if the Court grants the Motion,
3 Plaintiff must also be granted leave to amend the Complaint. Swartz v. KPMG
4 LLP, 476 F.3d 756, 760 (9th Cir. 2007) (Ninth Circuit reaffirmed that a court
5 should not dismiss a complaint for jurisdictional defects unless “it is clear ...
6 that the complaint could not be saved by any amendment”); See also David v.
7 Robert Dollar Co., 2 F.2d at 806; Roth v. Garcia, 942 F2d at 628.
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C.

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If the Court Looks Beyond the Pleadings and Considers
Testimony and Other Extrinsic Evidence, Plaintiff Is

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Entitled Summary Judgment in Its Favor or, in the

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Alternative, to a Continuance to Conduct Discovery.

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Defendant EYGN's motion for judgment on the pleadings is not based

14 upon the four corners of the pleadings, but rather based on extrinsic evidence
15 from various declarants. As such, to the extent such evidence is considered
16 and not excluded, the motion is not a motion for judgment on the pleadings,
17 but a de facto summary judgment motion. See FRCP 12(d) ("If, on a motion
18 under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to
19 and not excluded by the court, the motion must be treated as one for summary
20 judgment under Rule 56. All parties must be given a reasonable opportunity to
21 present all the material that is pertinent to the motion"). Because Defendant
22 EYGN chose to bring a motion for judgment on the pleadings and not a
23 summary judgment motion, the declarations proffered by Defendant EYGN
24 should be excluded and the Motion should be denied (or at most, granted with
25 leave to amend as a judgment on the pleadings).
26

If, however, the Court decides to consider the declarations and treat this

27 Motion as one for summary judgment, then Plaintiff should prevail based on
28 the limited evidence currently available and proffered by Defendant EYGN. As
LAW OFFICES

Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-8-

1 the discussion above regarding Breckenridge establishes, Defendant EYGN's
2 license agreement with Defendant Ernst & Young LLP, which allows both
3 licensor EYGN Limited and licensee Ernst & Young LLP to litigate infringement
4 actions (at Defendant EYGN's expense), which requires Defendant EYGN to
5 protect licensed ENTREPRENEUR OF THE YEAR trademark in California
6 (and elsewhere), which affords Defendant EYGN quality control oversight over
7 the use of the trademarks in California (and elsewhere), and which resulted in
8 the co-ordinated cease and desist letters from counsel for Defendant EYGN
9 and Defendant Ernst & Young LLP being sent into California and directed at a
10 California resident, establishes personal jurisdiction over Defendant EYGN.
11 See Cochrane Declaration, Exh. C.
12

Indeed, the license agreement between Defendant EYGN and

13 Defendant Ernst &Young not only allows Defendant Ernst & Young LLP to
14 commence legal action if Defendant EGYN does not, it states that ". . . EYGN
15 shall act in good faith to protect the interests of [Ernst & Young LLP]. . . .
16 EYGN shall give [Ernst & Young LLP] all reasonable assistance in any such
17 action [i.e., instituting legal proceedings], including lending its name to any
18 legal proceedings. EYGN shall bear the reasonable costs of any such
19 actions." See Cochrane Declaration, Exh. C ¶ 4.3. Where, as here, EYGN
20 agreed to lend its name to trademark litigation Ernst & Young LLP may choose
21 to institute in California (and elsewhere), EYGN can and should be held to
22 have consented to personal jurisdiction anywhere (including California) where
23 Ernst & Young can sue or be sued for trademark infringement involving the
24 licensed EYGN trademarks (such as the ENTREPRENEUR OF THE YEAR
25 trademark at issue here). Defendant EYGN cannot grant Ernst & Young LLP
26 the right to commence trademark actions in California to protect EYGN
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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-9-

1 trademarks and contractually agree to participate as a party in such actions,4
2 and then claim (only when it suits EYGN) that California courts lack jurisdiction
3 over it in connection with those trademarks. See Breckenridge, 444 F.3d
4 1356; Viam Corp., 84 F.3d 424.

Viewed from another angle, if the present dispute had been an

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6 infringement action by Ernst & Young LLP against Entrepreneur Media Inc. for
7 infringement of the licensed trademark, and Entrepreneur Media Inc. objected
8 and sought dismissal for failure to join EYGN Limited as the owner of the
9 trademark – the license agreement between EYGN Limited and Ernst & Young
10 LLP would allow Ernst & Young LLP to be brought into the action as an
11 interested party who contractually agreed to lend its name to any legal
12 proceedings. Cochrane Decl., Exh. C, ¶ 4.3. EYGN could not claim a lack of
13 personal jurisdiction, because it waived any such objection by virtue of the
14 license provision requiring it to lend its name to any legal proceedings.

Indeed, even as this action is currently configured, if Ernst & Young LLP

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16 had sought to keep EYGN in the present action in California, the license
17 agreement would constitute consent to personal jurisdiction and waiver by
18 EYGN of any claim to lack of personal jurisdiction over it. Because the license
19 agreement constitutes a waiver of personal jurisdiction allowing Ernst & Young
20 LLP to keep EYGN in this action (or to bring it into the action through joinder if
21 EYGN was not a party), this Court must have personal jurisdiction over EYGN
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In the context of legal action taken by a licensee in commencing lawsuits against
third party infringers, an obligation of the licensor to give "all reasonable assistance in any
such action, including lending its name to any legal proceedings," must mean consenting to
being brought into the action as a party. Accord Lion Petroleum of Missouri, Inc. v.
Millennium Super Stop, LLC, 467 F.Supp.2d 953, 956(E.D.Mo. 2006) ("Generally, in suits
for patent and trademark infringement, the owner of the patent or trademark is a necessary
party).

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-10-

1 – and it does not matter whether or not it is Defendant Ernst & Young LLP or
2 Plaintiff Entrepreneur Media Inc. asserting the existence of such jurisdiction.

Alternatively, if the limited evidence currently proffered in connection

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4 with this motion (principally by Defendant EYGN) does not establish
5 jurisdiction over EYGN, Plaintiff is entitled to a continuance of the hearing on
6 this motion to allow discovery. See Portland Retail Druggists Ass'n v. Kaiser
7 Foundation Health Plan, 662 F.2d 641, 645 (9th Cir. 1981) ("Before summary
8 judgment may be entered against a party, that party must be afforded both
9 notice that the motion is pending and an adequate opportunity to respond.
10 Implicit in the “opportunity to respond” is the requirement that sufficient time be
11 afforded for discovery necessary to develop “facts essential to justify (a
12 party's) opposition” to the motion. "); See America West Airlines, Inc. v. GPA
13 Group, Ltd., 877 F.2d 793, 801 (9th Cir. 1989) (“where pertinent facts bearing
14 on the question of jurisdiction are in dispute, discovery should be allowed”).5

For instance, discovery regarding the following issues would further

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16 illuminate the propriety of this Court exercising personal jurisdiction over
17 Defendant EYGN:
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• The use by Ernst & Young LLP in California of the
ENTREPRENEUR OF THE YEAR trademark;

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• The terms and conditions of Ernst & Young LLP's transfer of the
ENTREPRENEUR OF THE YEAR trademark to EYGN Limited;

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• Knowledge by EYGN Limited of Ernst & Young LLP's use of the
trademark in California both before and after transfer of the
trademark to EYGN Limited;

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• The actions taken by EYGN Limited (and/or its control designate)
in enforcing ENTREPRENEUR OF THE YEAR trademark rights
against third parties in California;

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• The actions taken by EYGN Limited (and/or its control designate)
in overseeing and mandating quality control with regard to Ernst &

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See also FRCP 56(f) (providing for continuances to allow for discovery relevant to summary judgment
motions); see also FRCP 12(d) (If treated as a summary judgment motion, "[a]ll parties must be given a
reasonable opportunity to present all the material that is pertinent to the motion")

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-11-

Young LLP's use of the ENTREPRENEUR OF THE YEAR
trademark in California;

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• The terms and conditions of the Joining Agreement referenced in ¶
1.1 and license agreements (including the "master agreement")
referenced in ¶ 2.2 of the License of Name Rights (see Cochrane
Decl., Exh. C);

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• All documents that evidence or refer to the meaning of the phrase
"EYGN shall give [Ernst & Young LLP] all reasonable assistance in
any such action, including lending its name to any legal
proceedings," in ¶ 4.3 of the License of Naming Rights agreement.
See Cochrane Decl., Exh. C ¶ 4.3.

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Although this case has been pending since June 2008, it has only

9 recently become "at-issue," the parties only recently met and conferred
10 pursuant to Rule 26, and discovery is not slated to commence with the initial
11 disclosure of witnesses and documents on January 30, 2008 – after the
12 currently scheduled hearing on this motion. This schedule was established on
13 the understanding that Plaintiff's motion for an injunction and Defendants'
14 motions to dismiss, stay or transfer would be based on the undisputed facts
15 that relate to the first-to-file and "anticipatory filing" doctrines. Inasmuch as
16 Defendants have taken a much broader, fact-based, approach to avoiding
17 jurisdiction, to the extent this Motion is not denied outright given the limited
18 facts proffered by Defendant EYGN, Plaintiff is entitled to conduct jurisdictional
19 discovery so that the Court can make its decision regarding jurisdiction based
20 on a full and complete set of facts (and arguments based thereon).
21

III.

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This Court can and should deny Defendant EYGN's Motion.

Conclusion.

23 Alternatively, if the Court grants judgment on the pleadings, leave to amend
24 must be granted so that Plaintiff has an opportunity to provide additional
25 jurisdictional allegations to rectify any perceived deficiency. Similarly, to the
26 extent that the Court is inclined to treat this Motion as a summary judgment
27 motion and is not inclined to deny the Motion outright based on the limited
28 evidence presented, Plaintiff is entitled to a continuance to allow it a full and
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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

-12-

1 fair opportunity to conduct jurisdictional discovery. In any event, Defendant
2 EYGN is not entitled to dismissal for lack of personal jurisdiction.
3 Dated: December 8, 2008

ALLEN MATKINS LECK GAMBLE
MALLORY & NATSIS LLP

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By:
MICHAEL R. ADELE
Attorneys for Plaintiff
ENTREPRENEUR MEDIA, INC.

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Allen Matkins Leck Gamble
Mallory & Natsis LLP

709480.01/SD

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