FreecycleSunnyvale v. The Freecycle Network

Filing 140

JOINT CASE MANAGEMENT STATEMENT (SUPPLEMENTAL) filed by FreecycleSunnyvale, The Freecycle Network. (Feinberg, Ian) (Filed on 2/28/2008) Modified on 2/29/2008 (cp, COURT STAFF).

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FreecycleSunnyvale v. The Freecycle Network Doc. 140 1 2 3 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 Ian N. Feinberg (SBN 88324) Eric B. Evans (SBN 232476) MAYER BROWN LLP Two Palo Alto Square, Suite 300 3000 El Camino Real Palo Alto, CA 94306-2112 Telephone: (650) 331-2000 Facsimile: (650) 331-2060 Attorneys for Plaintiff FREECYCLESUNNYVALE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION FREECYCLESUNNYVALE, a California unincorporated association, Plaintiff, v. THE FREECYCLE NETWORK, an Arizona corporation, Defendant. THE FREECYCLE NETWORK, INC., an Arizona Corporation, Counterclaimant, v. FREECYCLESUNNYVALE, a California unincorporated association, Counterdefendant. CASE NO. C06-00324 CW SUPPLEMENTAL JOINT CASE MANAGEMENT STATEMENT SUPPLEMENTAL JOINT C ASE MANAGEMENT STATEMENT CASE NO. C06-00324 CW 1 2 3 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 FreecycleSunnyvale ("Sunnyvale") and The Freecycle Network, Inc., ("The Freecycle Network") jointly submit this Supplemental Joint Case Management Statement pursuant to this Court's Scheduling Order issued January 22, 2008, which set a Case Management Conference for March 13, 2008. I. RECENT CASE DEVELOPMENTS This case arises from The Freecycle Network's claim that it has trademark rights in the word FREECYCLE and a stylized logo depicting that word. Sunnyvale filed declaratory relief action for a declaration of non-infringement or, in the alternatives, a declaration that The Freecycle Network's purported marks are generic or that The Freecycle Network engaged in naked licensing. The Freecycle Network filed counterclaims, alleging trademark infringement, contributory infringement, and unfair competition under the Lanham Act, as well as California state-law claims for unfair competition. Counsel for both parties appear pro bono. A related action by The Freecycle Network against Tim Oey, one of the principals for Sunnyvale, is pending in the U.S. District Court for the District of Arizona. In the Arizona action, The Freecycle Network brought trademark infringement and Arizona law unfair competition claims against Mr. Oey, based at least in part on his use of the word FREECYCLE in a generic sense and his recommendations that others do so as well. The Arizona court entered a preliminary injunction against Mr. Oey, forbidding him from using FREECYCLE generically or encouraging others to use it generically. Mr. Oey appealed this injunction to the Ninth Circuit. On July 19, 2007, Sunnyvale filed a motion for summary judgment that The Freecycle Network had engaged in naked licensing. Before Sunnyvale's motion was heard, the Ninth Circuit entered a decision in the Arizona case, holding definitively that there is no cause of action under the Lanham Act for using a word generically. The Court, on September 27, 2007, heard argument on Sunnyvale's motion and requested a supplemental motion, to be decided without oral argument, to address the impact of the Ninth Circuit's ruling on this case and its implications on Sunnyvale's standing to pursue this action further. Sunnyvale filed that supplemental motion on October 25; The Freecycle Network's opposition and Sunnyvale's reply followed in the normal course. SUPPLEMENTAL JOINT C ASE MANAGEMENT STATEMENT CASE NO. C06-00324 CW 1 2 3 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 The parties are presently awaiting the Court's decision on Sunnyvale's motions, which will determine the future trajectory of this case. II. PROPOSALS FOR FUTURE CASE DEVELOPMENTS Sunnyvale: The parties are awaiting an order on Sunnyvale's motions, which are under submission. Once the order is entered, the parties can address any issues that remain. The Freecycle Network: The Freecycle Network has made different several proposals regarding possible ways to resolve this dispute, but has not received a response from counsel for Sunnyvale. Dated: February 20, 2008 MAYER, BROWN LLP IAN N. FEINBERG ERIC B. EVANS By: /s/ Ian N. Feinberg Ian N. Feinberg Attorneys for Plaintiff and Counterdefendant FREECYCLESUNNYVALE Dated: February 20, 2008 KING & SPALDING LLP LISA KOBIALKA By: /s/ Lisa Kobialka Lisa Kobialka Attorneys for Defendant and Counterclaimant THE FREECYCLE NETWORK, INC. Filer's Attestation: Pursuant to General Order No. 45, Section X(B), the filer hereby attests that the signatories' concurrence in the filing of this document has been obtained. 2 SUPPLEMENTAL JOINT C ASE MANAGEMENT STATEMENT CASE NO. C06-00324 CW

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