Be In, Inc. v. Google Inc. et al

Filing 37

MOTION for Leave to File Second Amended Complaint filed by Be In, Inc.. (KatieLynn, Townsend) (Filed on 4/30/2013)

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GIBSON, DUNN & CRUTCHER LLP
S. ASHLIE BERINGER, SBN 263977
[e-mail]
1881 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: 650.849.5333
WAYNE BARSKY, SBN 116732
[e-mail]
KATIELYNN TOWNSEND, SBN 254321
[e-mail]
2029 Century Park East
Los Angeles, California 90067
Telephone: [phone]
Facsimile: 310.551.8741
Attorneys for Plaintiff
BE IN, INC., a New York corporation

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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BE IN, INC., a New York corporation,
Plaintiff,
v.
GOOGLE, INC., a California corporation,
RICHARD ROBINSON, and DOES 1 through
3, inclusive,
Defendants.

CASE NO. 5:12-CV-03373-LHK
PLAINTIFF’S NOTICE OF MOTION AND
MOTION FOR LEAVE TO FILE SECOND
AMENDED COMPLAINT
Date:
Time:
Dept:
Judge:

September 26, 2013
1:30 p.m.
Courtroom 8, Fourth Floor
Hon. Lucy H. Koh

Date Comp. Filed: June 28, 2012
Trial Date: None set.

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Gibson, Dunn &
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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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NOTICE OF MOTION

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Please Take Notice that on September 26, 2013 at 1:30 p.m. or as soon thereafter as the matter

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may be heard before the Honorable Lucy H. Koh, 280 South 1st St., San Jose, California, Plaintiff Be

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In, Inc. (“Be In”) will and hereby does move this Court pursuant to Rule 15(a) of the Federal Rules of

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Civil Procedure for an order granting leave to file its Second Amended Complaint.

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RELIEF REQUESTED

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Be In seeks an order granting leave to file a Second Amended Complaint to withdraw claims,

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address new claims, and add and remove defendants—before the commencement of discovery in this

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case. The Ninth Circuit repeatedly has held that leave to amend under Rule 15(a) should be granted

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freely, particular where (as here) there would be no resulting prejudice to Defendants. Be In

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respectfully requests that the Court grant this motion for several reasons: (1) new counsel has only

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recently joined the case; (2) Defendants would not be prejudiced by the filing; (3) the new filing

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withdraws certain claims, one of which was subject to motion practice, thereby ensuring more

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efficient progression of the case; and (4) the amendment would not be futile.

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BACKGROUND
Be In filed its original complaint in this action on June 28, 2012 against Google, Inc.

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(“Google”) and Richard Robinson—whom it currently understands to be a direct employee of Google

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UK—as well as three Doe defendants. (See Compl. (Dkt. No. 1).) The complaint alleged that

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numerous Google employees encountered Be In’s social entertainment consumption platform,

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CamUp, at the 2011 South by Southwest Interactive Conference, and that, approximately two months

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later, Mr. Robinson conducted a meeting with Be In executives regarding the platform and Be In’s

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confidential business and marketing strategies. (Id. at ¶¶ 2, 27–29.) Less than two months later,

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Google launched an identical platform, Hangouts—the “killer feature” in the new Google+ social

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network—and began implementing the business and marketing strategies that Be In disclosed

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confidentially in its meeting with Mr. Robinson. (Id. at ¶¶ 33–37.) The complaint alleged theft of

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trade secrets with respect to business and marketing strategies that were disclosed to Mr. Robinson,

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civil conspiracy regarding the same, and infringement of copyright and trade dress with respect to the

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CamUp platform. (Id. at ¶¶ 38–58.) Be in sought preliminary and permanent injunctive relief, an

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Crutcher LLP

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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accounting, compensatory damages, fees, costs, and interest. (Id. at pp. 11–12.)
On August 16, 2012, Be In filed its First Amended Complaint, adding additional context to its

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allegations, but asserting the same causes of action against the same Defendants, and seeking the

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same relief. (See First Am. Compl. (Dkt. No. 12).)

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On March 7, 2013, this Court issued an order granting withdrawal of prior counsel and

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substitution of the undersigned as counsel for Plaintiff Be In. (See Order (Dkt. No. 33).) Then on

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March 26, 2013, this Court granted Plaintiff Be In’s unopposed administrative motion continuing the

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case management conference scheduled for April 18, 2013, to June 5, 2013, based on Be In’s stated

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intent to seek leave to file a Second Amended Complaint by April 30, 2013. The Court ordered

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Plaintiff to file its Motion for Leave to File a Second Amended Complaint by April 30, 2013, denying

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as moot Defendants’ Motion to Dismiss Plaintiff’s Third and Fourth Causes of Action, and vacating

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the April 18, 2013 hearing on Defendants’ Motion. (See Order (Dkt. No. 35).)

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Pursuant to that Order, Plaintiff Be In now brings this Motion for Leave to File its Second

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Amended Complaint. The Proposed Second Amended Complaint (“Proposed SAC”), which is

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attached as Exhibit A to the concurrently filed Declaration of Katie Townsend (“Townsend

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Declaration” or “Townsend Decl.”), (i) removes two causes of action from the First Amended

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Complaint—civil conspiracy and trade dress infringement, the latter of which was the subject of

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Defendants’ former Motion to Dismiss; (ii) and removes Richard Robinson as a defendant. (See

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Townsend Decl., Exhibit A.) In addition, the Proposed SAC adds two causes of action—breach of

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implied contract and breach of contract—and adds two new defendants: YouTube, LLC, and Google

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UK Ltd. (Id. at ¶¶ 93–105.) The Proposed SAC also provides additional details and allegations

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relating to the misappropriation of trade secrets and copyright infringement claims, in part to address

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Defendants’ assertion that the First Amended Complaint lacked adequate specificity. (Id. at ¶¶ 18–

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32, 62–69, 86–92.)

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One week prior to filing, Be In provided counsel for Defendants with a copy of the Proposed

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SAC, in an effort to seek written consent to file, pursuant to Rule 15(a) of the Federal Rules of Civil

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Procedure. (Townsend Decl., ¶ 4.) Plaintiff’s counsel advised that Be In was prepared to remove

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Defendant Robinson (and refrain from including Mr. Robinson’s direct employer, Google UK) as

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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defendants in the SAC, so long as Defendants confirmed that they would search for and produce

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discovery from Google UK and Mr. Robinson as if they were parties in the case. Defendants

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responded that Google Inc. and YouTube would stipulate to the amendment without prejudice to their

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rights or defenses, if Plaintiff agreed to an extension of time for Defendants to respond to the new

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complaint. (Townsend Decl., Exhibit B.) However, Defendants were also unwilling to agree to

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search for and produce materials from Google UK, stating: “Google UK will not enter any agreement

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with respect to the proposed second amended complaint or discovery in this action.” (Id.)

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Because Defendants would not confirm Google’s intent to collect or produce relevant
documents in the possession of its subsidiary, Google UK Ltd., Plaintiff Be In revised the draft

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Second Amended Complaint to add Google UK Ltd. as a defendant and forwarded a revised draft to

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Defendants. (Id.) Earlier today, Defendants’ counsel advised that they were prepared to stipulate to

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filing of the Proposed Second Amended Complaint only on the condition that Plaintiff agree to an

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extension of time for Defendants to respond, “counting from the date when service is effectuated

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upon all Defendants.” (Id.) At the same time, however, counsel for the Defendants refused to accept

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service on behalf of the new Defendants—each a subsidiary of Defendant Google, Inc. (Id.) To

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avoid unnecessary delay in the progress of this case, Plaintiff Be In seeks leave of this Court to file its

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Proposed SAC.

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LEGAL STANDARD
Rule 15(a) of the Federal Rules of Civil Procedure directs that leave to amend “shall be freely

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given when justice so requires.” This policy of favoring amendments to pleadings “is to be applied

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with extreme liberality.” Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir.

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1990). Courts commonly consider four factors when determining whether to grant leave to amend:

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(1) bad faith on the part of the movant; (2) undue delay; (3) prejudice to the opposing party; and (4)

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futility of the proposed amendment. Foman v. Davis, 371 U.S. 178, 182 (1962); Lockheed Martin

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Corp. v. Network Solutions, Inc., 194 F.3d 980, 986 (9th Cir. 1999). “[I]t is the consideration of

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prejudice to the opposing party that carries the greatest weight.” Eminence Capital, LLC v. Aspeon,

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Inc., 316 F.3d 1048, 1052 (9th Cir. 2003) (citing DCD Programs, Ltd v. Leighton, 833 F.2d 183, 185

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(9th Cir. 1987)). “Absent prejudice, or a strong showing of any of the remaining Foman factors,

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Crutcher LLP

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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there exists a presumption under Rule 15(a) in favor of granting leave to amend.” Id. (citation

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omitted).

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ARGUMENT
The undersigned was substituted as counsel for Plaintiff Be In less than two months ago,

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promptly assessed the most appropriate claims for the vindication of Plaintiff’s rights, and timely

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brings this Motion in good faith for leave to file the Proposed SAC.

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Defendants will suffer no prejudice if this Court grants leave to file the Proposed SAC. The

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new and amended causes of action are based on the same set of underlying events as those in the

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original and First Amended Complaint, and Defendants have therefore been on notice of the relevant

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events since at least the initiation of this suit. Moreover, no discovery has taken place, and there has

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yet been no case management conference. As such, Defendants will have every opportunity to

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investigate and defend against the amended and new causes of action.

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Moreover, the changes in the Proposed SAC will contribute to the efficient progress of the

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case and address issues raised in Defendants’ earlier motion to dismiss. The new filing removes two

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causes of action, trade dress infringement and civil conspiracy, and the Doe defendants. The trade

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dress infringement claim was the subject of Defendants’ Motion to Dismiss, and its removal thus will

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avoid unnecessary delay and the necessity of a hearing or ruling from this Court. The Proposed SAC

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also adds significant detail to Be In’s copyright claim, the other cause of action challenged in

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Defendants’ Motion to Dismiss, thus reducing the likelihood of motion practice.

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In addition, the Proposed SAC adds two causes of action—breach of implied contract and

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breach of the CamUp Terms of Service. The new causes of action are tailored to the parties’ conduct

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and relationship, and raise claims that are best addressed now, before the imminent commencement

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of discovery.

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Finally, the Proposed SAC adds two new defendants—YouTube, LLC, and Google UK Ltd—

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who (in addition to parent company Google, Inc.) are key players in the misappropriation of Be In’s

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trade secrets, copyright infringement and breach of contract at the heart of this case. Google UK

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Ltd.’s employee, Richard Robinson, was the initial recipient of Be In’s confidential business and

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marketing strategies, and YouTube, LLC directly implemented these confidential strategies after

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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receiving proprietary information about CamUp from Google UK Ltd. and Mr. Robinson. Both

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played a critical role in the infringement to and harm suffered by Be In.

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Lastly, the amendment would not be futile. Regarding its trade secrets claim, Be In alleges in

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detail that Defendants improperly used its confidential business and marketing strategies (provided

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under conditions of secrecy), integrating them into YouTube and many other Google products, to Be

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In’s detriment. (See Townsend Decl., Exhibit A at ¶¶ 80–85.) Regarding its copyright claim, Be In

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sufficiently alleges that Defendants had access to CamUp, its original social entertainment

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consumption media platform, and that Defendants engaged in the unauthorized copying and

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exploitation of numerous original elements of the CamUp platform. (See id. at ¶¶ 86–92.)

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Regarding its breach of implied in fact contract claim, Be In sufficiently alleges that it disclosed its

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business and marketing strategies to Defendants on the express condition that, if used, Defendants

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would license CamUp from Be In, and that Defendants accepted that disclosure under circumstances

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that made them aware of those conditions. In connection with that claim, Be In also sufficiently

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alleges that Defendants’ continuing conduct is a breach of that understanding. (See id. at ¶¶ 93–98.)

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Regarding its breach of contract claim, Be In sufficiently alleges that (i) the Terms of Service on the

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CamUp website—which Defendants accessed repeatedly after meeting with Be In executives—

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provide that no visitor to the site may copy any element of the site for commercial purposes without

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authorization, and that (ii) Defendants did in fact access the site for such a purpose and without

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authorization, to Be In’s detriment. (See id. at ¶¶ 99–105.)

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK

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CONCLUSION

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For the reasons above, Plaintiff Be In’s Motion for Leave to file its Proposed Second

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Amended Complaint, attached as Exhibit A to the concurrently filed Townsend Declaration, should

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be granted.

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Dated: April 30, 2013

Respectfully submitted,

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GIBSON, DUNN & CRUTCHER LLP

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By:

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/s/
S. Ashlie Beringer

Attorneys for Plaintiff
BE IN, INC.

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ATTESTATION PURSUANT TO LOCAL RULE 5-1(i)(3)
I, KatieLynn Townsend, hereby attest that concurrences in the filing of this document have been
obtained from each of the signatories.

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By: /s/
KatieLynn Townsend

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PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
Case No. 5:12-CV-03373-LHK