Facebook Inc. v. Lamebook LLC

Filing 27

REPLY (re 18 MOTION to Dismiss ) filed byLamebook LLC. (Gratz, Joseph) (Filed on 3/17/2011)

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DURIE TANGRI LLP MARK A. LEMLEY (SBN 155830) [e-mail] JOSEPH C. GRATZ (SBN 240676) [e-mail] GENEVIEVE P. ROSLOFF (SBN 258234) [e-mail] 217 Leidesdorff Street San Francisco, CA 94111 Telephone: [phone] Facsimile: 415-236-6300 BRACEWELL & GIULIANI LLP EDWARD A. CAVAZOS [e-mail] CONOR M. CIVINS [e-mail] 111 Congress Avenue, Suite 2300 Austin, TX 78701 Attorneys for Defendant LAMEBOOK, LLC IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION FACEBOOK, INC., a Delaware corporation, Plaintiff, v. LAMEBOOK, LLC, a Texas limited liability company, Defendant. Case No. 3:10-cv-05048-RS DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS Date: Time: Ctrm: Judge: March 31, 2011 1:30 p.m. Courtroom 3, 17th Floor The Honorable Richard Seeborg

DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS

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I.

ARGUMENT A. Lamebook agrees that the Texas court should determine venue.

In its Opposition, Facebook "requests that the decision [on this motion] be delayed until such time as the Court in Texas rules on Facebook's pending motion to dismiss." Plaintiff Facebook, Inc.'s Opposition to Defendant's Motion to Dismiss, ECF No. 25 ("Opp.") at 7. Lamebook agrees. The motion in the Texas action is fully briefed and set for hearing on March 25, 2011. If the Texas court denies Facebook's motion, this case will proceed in Texas; if the Texas court grants Facebook's motion, this case will proceed in California. It is appropriate that the court in the first-filed action be the court to determine venue. The "argument should be addressed to the court in the first-filed action" and "the court in the second-filed action is not required to duplicate this inquiry." Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 96-97 (9th Cir. 1982) (affirming the second-filed court's dismissal under the first-tofile rule). B. Suit was not imminent when Lamebook filed in Texas.

Facebook argues that suit was imminent on November 3, 2010 because, the previous July, Facebook had made a general statement about being "prepared to enforce its rights to the full extent of the law." Opp. at 3. Facebook also argues that Lamebook believed suit was imminent because Facebook "repeatedly warned Lamebook that it must change its name or face legal action," Opp. at 6, but the evidence Facebook cites shows only that Facebook suggested in early August of 2010 it was "prepared to litigate, if necessary, to enforce its rights." Declaration of Kathleen E. Johnston in Support of Defendant Facebook, Inc.'s Motion to Dismiss Complaint for Declaratory Judgment, ECF No. 26-2 ("Johnston Decl.") at ¶ 4. The communications between Lamebook and Facebook reveal that Facebook took special care not to threaten litigation. The only specific threats articulated by Facebook throughout the eight months of discussions between the parties were the removal of Lamebook's "Facebook page" from the Facebook website and a potential opposition to Lamebook's trademark application at the United States Patent and Trademark Office. See Declaration of Conor M. Civins in Support of Plaintiff Lamebook, LLC's Response to Defendant Facebook, Inc.'s Motion to Dismiss Complaint for Declaratory Judgment,

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DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS

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ECF No. 19-3 ("Civins Decl.") at ¶¶ 4-5.

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Such "veiled threats of legal action" fall well below the

relevant standard: that they provide "specific, concrete indications that a suit by defendant was imminent." Guthy-Renker Fitness, L.L.C. v. Icon Health & Fitness, Inc., 179 F.R.D. 264, 271 (C.D. Cal. 1998) (emphasis in original) (citation omitted). To say that "legal action" which had been threatened some months before but had not materialized was "imminent" stretches that term beyond its limits. Imminence is a well-developed concept in the law, and excludes uncertain occurrences threatened in the distant past. For example, "[a]n `imminent' harm is one which is immediately likely and threatening." United States v. Thompson, No. 90-10118, 1991 WL 67873, at *1 (9th Cir. 1991). "`Imminent' dangers are those dangers which are about to occur at any moment or are impending." Abdul-Akbar v. McKelvie, 239 F.3d 307, 315 (3d Cir.), cert. denied, 533 U.S. 963 (2001) (citation omitted). Likewise "imminent" suits are those which are about to be filed at any moment. There was no specific, imminent threat of legal action (let alone litigation), and Facebook's evidence does not suggest otherwise. Facebook's communications did nothing more than "suggest[]" to Lamebook the "possibility of legal action," Intersearch Worldwide, Ltd. v. Intersearch Group, Inc., 544 F. Supp. 2d 949, 960 (N.D. Cal. 2008), which was specifically articulated as a potential opposition to Lamebook's trademark application at the PTO. Talks had been dragging on, and seemed to be going nowhere. Facebook wasn't returning calls promptly. Civins Decl. at ¶¶ 3-9. Meanwhile, Lamebook faced severe uncertainty about its website and Facebook's intentions. Under these circumstances, Lamebook's filing of its declaratory action was not anticipatory, and Lamebook certainly did not mislead Facebook. As this Court has held: A letter which suggests the possibility of legal action, however, in order to encourage or further a dialogue, is not a specific, imminent threat of legal action. Likewise, a reasonable apprehension that a controversy exists sufficient to satisfy the constitutional requirements for a declaratory judgment action is not equivalent to an imminent threat of litigation. [This
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The content and timing of the discussions between the parties is briefed in detail in Lamebook's Response to Facebook's Motion to Dismiss ("Lamebook's Response") filed in the Western District of Texas. Rather than burden the Court with another recital of the events leading up to litigation, Lamebook respectfully refers the Court to pages 4-8 of Lamebook's Response filed in the Western District of Texas and filed in the instant action as Exhibit 2 to Declaration of Joseph C. Gratz in Support of Defendant Lamebook, LLC's Motion to Dismiss, ECF No. 19-2. 2
DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS

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is] because a declaratory action is an appropriate vehicle to alleviate the necessity of waiting indefinitely for a trademark owner to file an infringement action. Intersearch Worldwide, 544 F. Supp. 2d at 960-61 (citations and internal modifications omitted). See also BuddyUSA, Inc. v. Recording Indus. Ass'n of Am., Inc., 21 F. App'x 52, 55 (2d Cir. 2001) (allowing the first-filed action for declaration of noninfringement to proceed because "a declaratory action is not anticipatory where it is filed in response to a letter that is indicative of negotiations"). C. Lamebook sued in Austin because Lamebook is based in Austin, not because of "forum shopping."

As Facebook points out in its Opposition, "the anticipatory suit doctrine allows the Court to look to factors relating to fairness and judicial efficiency," including the "whether the plaintiff seeking declaratory relief appears to be engaged in forum shopping." Opp. at 6 (citing Kinetic Concepts, Inc. v. Connetics Corp., No. Civ.A.SA-04-CA0237XR, 2004 WL 2026812, at *3 (W.D. Tex. Sept. 8, 2004)). Facebook doesn't argue that Lamebook has engaged in forum shopping by choosing to file in Texas--nor could it. Lamebook chose to file in the Western District of Texas for the simple reason that it is a two-person company with all of its operations, documents, and employees located in Austin, Texas. Lamebook gains no unfair procedural or legal advantage by being in the Western District of Texas as opposed to this District. Cf. Travelers Indem. Co. v. Madonna, 914 F.2d 1364, 1371 (9th Cir. 1990) (typical case of forum shopping involves a plaintiff filing a federal action to "avoid adverse rulings made in the state court or to gain a tactical advantage from the application of federal court rules"); Cardoza v. T-Mobile USA Inc., No. 08-5120 SC, 2009 WL 723843, at *3 (N.D. Cal. March 18, 2009) ("There are no adverse state court rulings at issue here, and Plaintiff has not identified any tactical advantage that T-Mobile would gain from the application of federal court rules if this case were transferred . . ."). /// /// /// /// 3
DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS

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II.

CONCLUSION For the foregoing reasons, and the reasons set forth in its Motion, Lamebook respectfully requests

that the Court dismiss the instant lawsuit in favor of the earlier-filed lawsuit currently pending in the Western District of Texas. Dated: March 17, 2011 By: DURIE TANGRI LLP /s/ Genevieve P. Rosloff MARK A. LEMLEY JOSEPH C. GRATZ GENEVIEVE P. ROSLOFF Attorneys for Defendant LAMEBOOK, LLC

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DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS

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CERTIFICATE OF SERVICE I certify that all counsel of record are being served on March 17, 2011 with a copy of this document via the Court's CM/ECF system. Michael G. Rhodes Gavin L. Charlston Anne H. Peck Jeffrey T. Norberg [e-mail] [e-mail] [e-mail] [e-mail] /s/ Genevieve P. Rosloff GENEVIEVE P. ROSLOFF

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DEFENDANT LAMEBOOK, LLC'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS CASE NO. 3:10-CV-05048-RS