Facebook Inc. v. Lamebook LLC

Filing 32

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

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COOLEY LLP
MICHAEL G. RHODES (116127) ([e-mail])
GAVIN L. CHARLSTON (253899) ([e-mail])
101 California Street, 5th Floor
San Francisco, CA 94111-5800
Telephone:
[phone]
Facsimile:
[phone]
ANNE H. PECK (124790) ([e-mail])
JEFFREY T. NORBERG (215087) ([e-mail])
3175 Hanover Street
Palo Alto, CA 94304-1130
[phone]
[phone]
Attorneys for Plaintiff
FACEBOOK, INC
DURIE TANGRI LLP
MARK A. LEMLEY (SBN 155830) ([e-mail])
JOSEPH C. GRATZ (SBN 240676) ([e-mail])
217 Leidesdorff Street
San Francisco, CA 94111
Telephone:
415-362-6666
Facsimile:
415-236-6300
BRACEWELL & GIULIANI LLP
CONOR M. CIVINS ([e-mail])
EDWARD A. CAVAZOS ([e-mail])
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

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NORTHERN DISTRICT OF CALIFORNIA

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FACEBOOK, INC.,

Case No. 3:10-CV-05048-RS

Plaintiff,

UPDATED JOINT CASE MANAGEMENT
STATEMENT AND RULE 26(F) REPORT

v.
LAMEBOOK LLC,
Defendant.

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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

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Pursuant to Federal Rule of Civil Procedure 26(f), a conference was held on February 9,

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2011, between Anne H. Peck and Jeffrey T. Norberg of Cooley LLP, counsel to Plaintiff

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Facebook, Inc. (“Facebook”); and Conor M. Civins, Edward A. Cavazos, and Joseph C. Gratz,

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counsel to Defendant Lamebook, Inc. (“Lamebook”). The parties submit this Updated Case

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Management Statement and Rule 26(f) Report pursuant to Local Rule 16-9(a), the March 1, 2007

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Standing Order for All Judges of the Northern District of California, and this Court’s Notice

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continuing the March 3, 2011 case management conference (D.I. 24).

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DESCRIPTION OF THE CASE
1.

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JURISDICTION AND SERVICE
This court has subject matter jurisdiction over Facebook’s claims under 28 U.S.C. §§1331

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and 1338(a), as the case involves a dispute regarding alleged trademark infringement and

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violations of the Anti-Cybersquatting Consumer Protection Act under 15 U.S.C. § 1125. This

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Court has supplemental jurisdiction over state law claims under 28 U.S.C. § 1367. Facebook

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asserts that venue is proper in this Court under 28 U.S.C. § 1391, as Facebook maintains its

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principal place of business in this District and a substantial part of the events giving rise to the

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claims at issue occurred in this District. Lamebook has moved to dismiss this action in favor of

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an earlier-filed suit in the Western District of Texas. All parties have been served.

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2.

FACTS

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A.

Facebook Statement

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Facebook is a prominent provider of online networking services and is dedicated to

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making the web more social, personalized, smarter and relevant. Through Facebook’s website,

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the Facebook Platform, Social Plugins and other tools, hundreds of millions of Facebook users

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enjoy personalized and relevant internet experiences. Facebook has provided its services under

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the FACEBOOK trademark since February 4, 2004. The FACEBOOK trademark is a famous

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mark under 15 U.S.C. § 1125(c)(2)(A).

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Facebook alleges that Lamebook misappropriated the FACEBOOK brand by adopting,

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using and applying to register the confusingly similar and dilutive LAMEBOOK trademark.

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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

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Facebook alleges that Lamebook’s acts as stated in the complaint give rise to a likelihood of

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dilution and consumer confusion in the marketplace in violation of the Lanham Act and common

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law. Facebook also asserts claims for violations of the Anti-Cybersquatting Consumer Protection

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Act arising out of Lamebook’s registration of the lamebook.com domain name, common law

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trademark infringement, and unfair competition in violation of Cal. Bus. & Prof. Code §§ 17200,

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et seq.

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On November 4, 2010, after months of settlement discussions and representing to

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Facebook that it was considering changing its name to “Lameblog,” Lamebook filed a declaratory

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relief action in the Western District of Texas styled Lamebook, LLC v. Facebook, Inc., Civil

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Action No. 1:10-cv-00833 (the “Texas Action”). Facebook has filed a motion to dismiss the

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Texas Action on the ground that it is an improper anticipatory lawsuit. The Texas Court held a

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hearing on the motion on March 25, 2011, and the matter is now submitted and awaiting decision.

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B.

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Defendant Lamebook, LLC is a two-person company located in Austin, Texas.

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Lamebook Statement

Lamebook operates an eponymous blog which makes fun of Facebook and its users.

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Facebook doesn’t like being made fun of. It asked Lamebook to switch to another name,

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apparently fearing that confused web surfers might think that Facebook was making fun of itself

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and its own users. The parties entered into discussions about resolving their dispute. The back-

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and-forth lasted for eight months, and Lamebook faced substantial uncertainty about the matter

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which affected its ability to operate its business. Lamebook brought an action in federal court in

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Austin, Texas, where all of its operations are located, and where Facebook operates an office.

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That action, filed in the United States District Court for the Western District of Texas, seeks a

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declaration that it is not a violation of the trademark laws to operate a blog about why Facebook

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is lame and call it “Lamebook.”

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Several days later, Facebook filed this lawsuit. Lamebook has filed a motion to dismiss

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this lawsuit on the ground that the Texas Action was filed earlier and deals with substantially

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similar issues. That motion is currently pending.

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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

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3.

LEGAL ISSUES

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Facebook submits that the following principal legal issues are in dispute:

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(a)

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U.S.C. § 1125 and/or California Bus. & Prof. Code §14247;

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(b)

(c)

(d)

Whether Lamebook is liable for violation of the Anti-Cybersquatting Consumer

Protection Act under 15 U.S.C. § 1125(d);

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Whether Lamebook is liable for infringement of the FACEBOOK mark pursuant

to 15 U.S.C. § 1114, and/or common law;

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Whether Lamebook is liable for false designation of origin under 15 U.S.C. §

1125;

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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;

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(f)

Whether Lamebook is liable for unfair competition under the common law;

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(g)

Whether Lamebook is liable for violation of California Bus. & Prof. Code §17200,

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(h)

Whether Facebook is entitled to injunctive relief; and

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(i)

The determination of the appropriate measure of money remedies to which

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et seq.;

Facebook is entitled.

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Lamebook respectfully submits that before any of the above issues may be addressed, this

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case should be dismissed in favor of the earlier-filed Texas Action.

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4.

MOTIONS

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Lamebook’s Motion to Dismiss this matter in favor of the Texas Action is currently

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pending. Lamebook’s Complaint for Declaratory Relief and Facebook’s Motion to Dismiss

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concerning this matter in the U.S. District Court for the Western District of Texas, Austin

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Division, Lamebook, LLC v. Facebook, Inc., Civil Action No. 1:10-cv-00833 are currently

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pending in the Western District of Texas. The parties anticipate that summary judgment motions

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will be filed after the close of discovery.

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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

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5.

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AMENDMENT OF PLEADINGS
The parties do not anticipate any amendments to its pleadings at this time, but may seek to

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add additional claims as discovery proceeds.

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EVIDENCE PRESERVATION

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The parties have taken reasonable steps to preserve documents relating to the issues

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presented in the complaint based on their current understanding of the issues. Among other

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things, the parties have issued document preservation instructions to the key individuals likely to

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have such documents, directing such individuals to take affirmative steps to preserve such

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documents, whether in hard copy or electronic form, and to suspend applicable document

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destruction/deletion policies.

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7.

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DISCLOSURES
The parties exchanged initial disclosures on February 24, 2011.

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DISCOVERY
Facebook does not at this time seek any modifications to the scope of discovery as

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provided under the applicable Federal Rules of Civil Procedure. Facebook proposes pursuing

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discovery by taking depositions and by serving document requests, interrogatories, and requests

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for admission, subject to the following discovery plan:

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(a) Protective Order: A protective order will be necessary due to the sensitive and

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proprietary information that will be exchanged during discovery. The parties will meet and

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confer on and submit a proposed stipulated protective order no later than May 13, 2011 in a form

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that is consistent with the Court’s Model Protective Orders.

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(b) Privilege Logs: Communications with outside litigation counsel related to this specific

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action and work product prepared by outside litigation related to this specific action do not need

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to be logged.

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(c) Production: The parties will produce documents and other electronically stored

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information electronically (e.g., on compact discs) in single-page TIFF format with corresponding

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text files and Concordance compatible load files, or in native format. To the extent either party

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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

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parties will meet and confer in good faith concerning such alternative production arrangements.

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The parties will also meet and confer in good faith to ensure that the format of each party’s

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production is compatible with the technical requirements of the receiving party’s document

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management system.

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CLASS ACTIONS
This case is not a class action.

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RELATED CASES
Lamebook has filed a declaratory relief action against Facebook concerning this matter in

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the U.S. District Court for the Western District of Texas, Austin Division, Lamebook, LLC v.

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Facebook, Inc., Civil Action No. 1:10-cv-00833. Facebook has filed a motion to dismiss that

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action. That motion is currently pending.

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11.

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RELIEF
Facebook seeks judgment that Lamebook has infringed and continues to infringe the

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FACEBOOK and WALL marks. Facebook seeks a determination that Lamebook’s acts of

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infringement have been and are willful. Facebook further seeks judgment that Lamebook has

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diluted and continues to dilute the FACEBOOK mark. Facebook further seeks judgment that

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Lamebook has violated federal and state laws prohibiting unfair competition and false designation

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of origin, and that Lamebook’s registration of the lamebook.com domain was in violation of the

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Anti-Cybersquatting Consumer Protection Act.

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Facebook seeks a permanent injunction, treble damages and attorney’s fees, compensatory

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and/or statutory damages, and an accounting and disgorgement of Lamebook’s revenues and

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profits derived from its wrongful use of the infringing trademark. Facebook also seeks an order

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requiring Lamebook to (a) transfer the lamebook.com domain name and all other infringing

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domain names to Facebook; and (b) deliver up all promotional materials bearing the infringing

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trademark. Finally, Facebook seeks an order requiring Lamebook to abandon all pending

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trademark applications for the Lamebook mark, and/or deeming Lamebook’s pending Lamebook

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application void ab initio. Facebook also seeks such other relief at law and in equity as the Court

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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

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Because Lamebook has moved to dismiss this action in favor of the earlier-filed Texas

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Action, it has not filed an Answer or Counterclaims, and has not yet identified any relief it may

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seek.

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12.

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SETTLEMENT AND ADR
The parties have met and conferred regarding ADR pursuant to Civil L.R. 16-8 and ADR

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L.R. 3-5 but were unable to reach an agreement on ADR. The Court’s ADR unit held a

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conference call with the parties on April 28, 2011. A further ADR conference call has been

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scheduled for June 2, 2011.

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CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES
Facebook has declined to have this case proceed before a magistrate judge.

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OTHER PREFERENCES
The parties do not believe that this case is suitable for reference to binding arbitration or

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to a Special Master. This case is also inappropriate for reference to the Judicial Panel on

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Multidistrict Litigation at this time.

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15.

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NARROWING OF ISSUES
The parties are not aware of any issues that can be narrowed by agreement or by motion

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and do not have any suggestions to expedite the presentation of evidence at this time. The parties

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anticipate that as discovery proceeds, the issues for trial may be narrowed.

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EXPEDITED SCHEDULE
At this time, the parties do not believe that this case is appropriate for expedited

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procedure.

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SCHEDULING

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The parties propose the following schedule:

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Exchange of Initial Disclosures: February 24, 2011 (completed).

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Initial Case Management Conference (telephonic): May 5, 2011

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Last Day to Amend Pleadings: September 19, 2011

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Non-Expert Discovery Cutoff: October 31, 2011

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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

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Designation of Rebuttal Expert Witnesses and Exchange of Rebuttal Expert Reports:
December 19, 2011

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Expert Discovery Cutoff: January 16, 2012

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Last Day to File Dispositive Motions: February 6, 2012

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Pretrial Conference: March 5, 2012

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Trial: March 19, 2012

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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

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court days.

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DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS
Facebook filed its disclosure of non-party interested entities at the time of filing its

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complaint. Lamebook has no parent and no publicly held company directly or indirectly owns

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10% or more of Lamebook, LLC’s stock.

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OTHER MATTERS
The parties agree to service by electronic mail pursuant to Federal Rule of Civil Procedure
59(b)(2)(E).

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Dated: April 28, 2011

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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)

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/s/ Joseph C. Gratz
Joseph C. Gratz (240676)
Attorneys for Defendant
LAMEBOOK, LLC

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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

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In accordance with General Order 45, concurrence in the filing of this document has been

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obtained from each of the signatories and I shall maintain records to support this concurrence for

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subsequent production for the Court if so ordered or for inspection upon request by a party.

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/s/ Jeffrey T. Norberg
Jeffrey T. Norberg
Attorneys for Plaintiff
FACEBOOK, INC.

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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