Petroliam Nasional Berhad v., Inc.

Filing 107

Letter from Plaintiff and Defendant JOINT re Discovery. (Clark, Perry) (Filed on 9/2/2011)

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LAW OFFICES OF PERRY R. CLARK 825 SAN ANTONIO ROAD PALO ALTO, CA 94303 TELEPHONE 650 248 5817 FACSIMILE 650 618 8533 September 2, 2011 BY ELECTRONIC FILING Hon. Phyllis Hamilton Oakland Courthouse Courtroom 3 - 3rd Floor 1301 Clay Street Oakland, CA 94612 Re: Petronas v. GoDaddy, 09-CV-5939 PJH Dear Judge Hamilton, We write regarding certain discovery disputes that have arisen in this cybersquatting and trademark case. The parties were able to resolve some discovery issues by meeting and conferring telephonically on August 8, 2011 and exchanging correspondence thereafter. For the remaining discovery disputes, the parties submit this joint letter based on your Honor's directions at the May 26,2011 Case Management Conference at which the Court retained discovery (no referral) and directed that, "ifthere is a discovery dispute, counsel should submit a joint letter brief of dispute in a minimum amount of pages. The Courtroom Deputy will contact counsel when/if a phone conference will be held as to a discovery issue." (Doc. No. 91). The parties' positions on the disputes are set forth below. Go Daddy's Response to Petronas's Document Request No.5 (Ex. A at 4:18-5:5) Petronas 's Position Go Daddy should be compelled to comply with Petronas's Document Request No. 5 which seeks specific information related to the ''thousands" of trademark infringement notices Go Daddy claims to receive each year regarding the domain name services at issue in this case. (Ex. A at 4:18-5:5). One ofGoDaddy's defenses in this case is that it did not have a "bad faith intent to profit" from its refusal to stop providing its domain name services after receiving Petronas' s notices of trademark infringement. The only reason Go Daddy has identified for its refusal to act on Petronas' s trademark infringement notices is its allegation that it would be impossible for it investigate such notices because it receives thousands of them each year. Go Daddy, however, has refused to produce documents related to any trademark infringement 1 notices, except for the notices it received from Petronas and copies of its trademark dispute policies, much less the supposedly "thousands" of notices it receives from other trademark owners each year. Go Daddy has repeatedly argued that the reason it does not investigate notices of trademark infringement regarding its domain name services-including the notices it received from Petronas that led to this case-is because it receives so many notices of trademark infringement that it would be impossible to investigate any of them. As Go Daddy's counsel represented to this Court in a hearing on September 8, 2010, "Go Daddy is put on notice of trademark disputes, again, it happens thousands of times a year ... and it would be impossible for it to sort through these trademark issues." (Ex. B Transcript at 24:9-25). Similarly, at another hearing, Go Daddy's counsel represented to this Court that "I am told that over 800 times a year it [Go Daddy] is put on notice of some sort of adversary proceeding oftrademark infringement like the one we are talking about today ... If the Go Daddys of the world, meaning registrar internet service providers were putin the position of policing these issue, it would have a very, very, very significant adverse impact on their ability to do business." (Ex. C. Transcript at 9:21-10:1). Petronas's Document Request No. 5 is narrowly tailored to obtain only the documents that are "sufficient to show" relevant information (such as the nature of the trademark complaint, the date, Go Daddy's response, etc.) and is expressly limited to complaints after January 1, 2008. (Ex. A at 4: 19-26). 1 Go Daddy's response contains only boilerplate objections and offers no justification for Go Daddy's decision to limit its response to documents "relating to disputes involving the PETRONAS trademark that can be located after a reasonable search, as well as documents sufficient to show the trademark policy and standard operating procedure of Go Daddy." (Ex. A 4:27-5:3). Cat GoDaddy's arguments below also fail. First, although 15 U.S.C. § 1125(d) refers to a bad faith intent to profitfrom a mark, GoDaddy bases its "safe-harbor" defense on 15 U.S.C. § 1114(D)(iii) which refers to a "bad faith intent to profit from [the] registration or maintenance of the domain name." Second, and as GoDaddy acknowledges below, Petronas's complaint alleges that GoDaddy had a bad faith intent to profit from refusing to investigate Petronas' s trademark infringement notices because it intended to set a general "precedent" sparing Go Daddy the cost of investigating others' complaints. F AC at 71-74. Because the cost of investigating other trademark infringement complaints is relevant to Petronas' s claims in this case, Go Daddy should be compelled to produce all of the documents requested by Petronas's Document Request No. 5. Go Daddy's Position This is Petronas' second attempt at demanding production of Go Daddy documents related to complaints by other trademark owners. The Court struck Petronas' first attempt -- Document Request No. 4 -- at the May 26, 2011 Case Management Conference. These documents sought by Petronas are not relevant to any of the claims or defenses in the First Amended Complaint, the demand is overly broad and unduly burdensome, and thus the Court should strike the demand 1 In fact, Petronas drafted Document Request No. 5 to incorporate the exact limitations the Court recommended at the May 26, 2011 Case Management Conference including, among other things, limiting it to a very short time frame, requesting only "documents sufficient to show" as opposed to "all documents," and precisely identifying the categories of information sought. 2 once again. As Go Daddy explained in an e-mail message to Petronas' counsel dated July 6, 2011: 1. The statute on which plaintiff is relying, 15 USC § 1125(d), requires a showing that Go Daddy acted with bad faith intent to profit from P etronas' trademark. It does not speak to Go Daddy's general intent or Go Daddy's intent with respect to others' trademarks. 2. The First Amended Complaint does not allege that the two disputed domain names were treated differently than others registered with Go Daddy; rather, it alleges that complaints about the disputed domain names were treated in the same manner as others, that this treatment is '"crucial,' 'central," and/or 'core' to [Go Daddy's] business," and that continuing such treatment with the disputed domain names would set a general "precedent" sparing Go Daddy the cost of investigating others' complaints. FAC at 71-74. Go Daddy is already in the process of providing documents and information concerning the disputed domain names. Go Daddy will also make available a 30(b)( 6) witness, as appropriate, to discuss the company's trademark policy and how/whether the domain names were treated within it. If it turns out that Go Daddy somehow deviated from its standard policy when responding to plaintiff's complaints - which by all indications it did not- only then would it make sense to benchmark Go Daddy's response against its actions in other, illustrative situations. Indeed, the statute on which Petronas is basing its claims could not be more clear: "A person shall be liable in a civil action by the owner of a mark ... if, without regard to the goods or services of the parties, that person ... has a bad faith intent to profit from that mark ...." 15. U.S. C.§ 1125(d) (emphasis added). It does not contemplate Go Daddy's intent with respect to other trademarks. Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1110 (C.D. Cal. 2009) ("The bad faith required to support a cybersquatting claim is not general bad faith, but 'a bad faith intent to profit from the mark'") (emphasis in original) 2 ; see also, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 107 (2d Cir. 2010) (no liability for contributory trademark infringement where eBay's generalized knowledge of infringement of on its website was insufficient to impose upon eBay an affirmative duty to remedy a specific problem). Go Daddy has over 40 million domain names under its supervision. In connection with its defense of this lawsuit the company has searched nearly 90 million e-mails, and to date it has produced to Petronas approximately 2400 pages of documents. The documents relate to the two disputed domain names and to Go Daddy's general policies and procedures for responding to incoming trademark complaints. Go Daddy's July 6 offer to make available a 30(b)(6) witness to discuss general policies and procedures, the volume of incoming trademark complaints as well as the specific handling of the two disputed domain names still stands. There is no basis, however, for compelling Go Daddy to gather, review and produce responses to other trademark complaints, particularly where, as here, Go Daddy receives nearly a thousand such complaints a year, the documents do not bear on the specific issues in this dispute, the documents are confidential, and 2 The statutory language is equally clear with respect to the registrar's safe harbor (15 U.S.C. § 1114(D)(iii)), which likewise refers to bad faith intent to profit from "the domain name" (emphasis added). 3 the number of documents is substantial. Accordingly, the objections to Document Request No.5 are well founded and should be sustained. Go Daddy's Responses to Petronas's Interrogatory Nos. 2, 3, 4, 5, 6, and 8 (Ex. D. at 5:23-11:11- 112 Petronas 's Position Petronas seeks an order compelling Go Daddy to provide complete responses to Petronas's Interrogatory Nos. 2, 3, 4, 5, 6, and 8, which seek information about the existence and description of documents containing information potentially relevant to this case. (Ex. D. at 5:2311: ll-17)._In particular, Interrogatory Nos. 2, 3, 4, 5, and 6 are directed to the documents Go Daddy identified in its Fed. R. Civ. P. 26(a)(l)(A)(ii) initial disclosures as documents it "may use to support its claims or defenses." (Ex. Eat 3:24-4:5). Interrogatory No.8 is directed to documents related to the notices of trademark infringement Go Daddy claims to have received (discussed above). Petronas sought this information in order to narrowly tailor its document requests to relevant documents and to avoid the production of numerous, irrelevant documents by Go Daddy. The information requested by Petronas's interrogatories is specifically identified as discoverable in Fed R. Civ. P. 26(b)( 1), which provides that "parties may seek discovery regarding any nonprivileged matter that is relevant to a party's claim or defense, including the existence, description, nature, custody, condition and location ofany documents or other tangible things . .. "(emphasis added). Go Daddy refused to provide any response to Interrogatory Nos. 4, 5, and 8 and instead interposed boilerplate, unsupported objections. For the others (Nos. 2, 3, and 6), Go Daddy stated only that documents "exist in electronic form on Go Daddy's servers," which is tantamount to providing no answer at all. As such, Petronas requests that Go Daddy be compelled to provide complete responses to Interrogatory Nos. 2, 3, 4, 5, 6, and 8. Go Daddy's Position It remains unclear what additional information Petronas could be seeking with respect to Go Daddy's documents and on what basis it is entitled to any further information. As set forth above, Go Daddy has produced approximately 2400 pages of relevant documents to Petronas. Go Daddy is not withholding other responsive documents, nor has it delivered unnecessary or irrelevant documents. Moreover, at Petronas' request, on June 29, 2011 Go Daddy provided Supplemental Initial Disclosures with identification of witnesses and descriptions by category and location of the documents it may use to support its defenses. Exhibit F. In many instances, Go Daddy has not waited for an appropriate document request from Petronas, and has simply provided documents on topics related to the two disputed domain names, agreements relevant to the two disputed domain names, registration and forwarding services generally, among others. Many of the interrogatories request information about documents that are outrageously overbroad and unrelated to this action (such as documents related to registration ofwebsites generally and all customer accounts (Interrogatory No. 3), or documents regarding Go Daddy's website generally and domain name registration process in general (Interrogatory No.5)). 4 Setting aside the clearly overbroad categories of documents, all that is left here is tantamount to a request for Go Daddy to describe the documents it has already produced to Petronas; this request is well beyond what is required in the Federal Rules. Go Daddy has produced documents that address each of the relevant and proper subjects identified in the interrogatories, and those documents speak for themselves. In particular, for Interrogatory No. 2- regarding the registration and hosting of the two disputed domain names Go Daddy has responded that, as Petronas was aware, Go Daddy did not provide hosting services for the domain names, and Go Daddy produced all account information available on its servers regarding registration of the two domain names. For Interrogatory No.4- regarding contracts and agreements - Go Daddy has produced all contracts and agreements related to the disputed domain names. For Interrogatory No.6 -regarding communications between plaintiff's counsel and Go Daddy- Go Daddy has searched its entire universe of nearly 90 million emails, and has produced all such communications. For Interrogatory No.7 -regarding Go Daddy's intent with respect to the disputed domain names - Go Daddy responded that its intent was to provide (and it did provide) registrar services with respect to the domain names. The documents already provided to Petronas demonstrate that Go Daddy provided such registrar services, and only such registrar services. Even for the overbroad requests referenced above (Interrogatory Nos. 3 and 5), Go Daddy has produced documents in these categories as they relate to the disputed domain names, as well as documents from its website that explain or assist with domain name registration, routing, and forwarding Interrogatory No. 8 seeks details concerning third-party trademark complaints submitted to Go Daddy. Go Daddy's objections to this demand are discussed in detail above. Under these circumstances, there is no basis to compel further responses from Go Daddy to these Interrogatories. Petronas' Document Collection in Response to Go Daddy's Discovery Demands Go Daddy's Position Petronas' document production begs serious questions about the thoroughness and sufficiency of its collection efforts. Go Daddy respectfully requests that the Court direct Petronas to produce all responsive documents, including e-mails and other electronic documents, no later than September 8, 2011, which is one week before the scheduled 30(b)(6) deposition ofPetronas in Palo Alto. According to published reports, Petronas is a Fortune 500 company with nearly 40,000 employees. Its website boasts that Petronas is a leader in harnessing technology to advance its business. In this lawsuit Go Daddy has served on Petronas a number of document demands (copies of which are attached as Exhibit G (June 17, 2011 N.D.C.A.) and Exhibit H (November 23,2010 (U.S.P.T.O. Trademark Trial and Appeal Board). These 31 document demands address Petronas' U.S. sale of a wide variety of goods and services under the PETRONAS trademark (in connection with Go Daddy's counterclaim for cancellation of 5 EXHIBIT A EXHIBIT B PAGES 1 - 35 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA BEFORE THE HONORABLE PHYLLIS J. HAMILTON, JUDGE PETROLIUM NASIONAL BERHAD, PLAINTIFF, ) ) ) ) ) VS. ) ) GODADDY.COM, INC. ) ) DEFENDANT. ) ____________________________) NO. C-09-5939 PJH WEDNESDAY, SEPTEMBER 8, 2010 OAKLAND, CALIFORNIA REPORTER'S TRANSCRIPT OF PROCEEDINGS APPEARANCES: FOR PLAINTIFF: BY: FOR DEFENDANT: BY: REPORTED BY: LAW OFFICE OF PERRY R. CLARK 3457 COWPER STREET PALO ALTO, CALIFORNIA 94306 PERRY R. CLARK, ESQUIRE WILSON, SONSINI GOODRICH & ROS 650 PAGE MILL ROAD PALO ALTO, CALIFORNIA 94304 JOHN L. SLAFSKY, ESQUIRE HOLLIS BETH HIRE, ESQUIRE DIANE E. SKILLMAN, CSR 4909, RPR, FCRR OFFICIAL COURT REPORTER DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC (510) 451-2930 24 1 INDICATES THAT HIS CLIENT FILLED OUT ALL THE FORMS NECESSARY 2 AND GODADDY DECIDED THAT IT WASN'T GOING TO INVESTIGATE OR TAKE 3 ANY ACTION WITH REGARD TO THEIR CLAIM. 4 MR. SLAFSKY: SURE. AND STEPPING BACK ONE SECOND. 5 SO THE STANDARD CONTRACT THAT GODADDY HAS WITH ITS CUSTOMERS, 6 ITS REGISTRANTS INCLUDES REPRESENTATIONS AND WARRANTIES BY THE 7 CUSTOMER THAT THEY WILL NOT USE THE DOMAIN NAME FOR INFRINGING 8 OR ILLEGAL PURPOSES. THAT'S THE STARTING POINT. 9 WHEN GODADDY IS PUT ON NOTICE OF TRADEMARK DISPUTES, 10 AGAIN, IT HAPPENS THOUSANDS OF TIMES A YEAR _____________________________________________________ AND IT MAKES A FORM 11 AVAILABLE FOR TRADEMARK OWNERS TO CALL THESE ISSUE TO ITS 12 ATTENTION. 13 REGISTRANT CANNOT THEN TRANSFER IT TO A THIRD PARTY AND EVADE 14 DUE PROCESS, FOR EXAMPLE, AND IT WILL COMMUNICATE PROMPTLY TO 15 THE TRADEMARK OWNER, AS IT DID IN THIS CASE, THAT THERE ARE 16 VARIOUS OPTIONS AVAILABLE TO THE TRADEMARK OWNER. 17 TRADEMARK OWNER CAN BRING A UDRP PROCEEDING, THAT'S TYPICALLY 18 WHAT HAPPENS. 19 AGAINST THE REGISTRANT, THE INFRINGER. 20 SECOND SCENARIO, AND GODADDY COMMUNICATES TO TRADEMARK OWNERS 21 THAT FOR REASONS WE HAVE ALLUDED TO EARLIER, IT CANNOT BE JUDGE 22 OR JURY IN THIS TYPE OF DISPUTE. 23 FACT-INTENSIVE ANALYSIS INVOLVING INTERNATIONAL LAW, IN MANY 24 CASES, AND IT WOULD BE IMPOSSIBLE FOR IT TO SORT THROUGH THESE __________________________________________________________________ 25 TRADEMARK MESSES. ___________________ IT WILL LOCK THE DOMAIN NAME UP SO THAT THE THE THE TRADEMARK OWNER CAN FILE A LAWSUIT IN COURT THAT'S PROBABLY THE IT'S A MULTIFACETED DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC (510) 451-2930 EXHIBIT C PAGES 1 - 18 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA BEFORE THE HONORABLE PHYLLIS J. HAMILTON, JUDGE PETROLIAM NASIONAL BERHAD, PLAINTIFF, ) ) ) ) ) VS. ) ) GO DADDY.COM, ) ) DEFENDANT. ) ____________________________) NO. C-09-5939 PJH WEDNESDAY, DECEMBER 23, 2009 OAKLAND, CALIFORNIA REPORTER'S TRANSCRIPT OF PROCEEDINGS APPEARANCES: FOR PLAINTIFF: BY: FOR DEFENDANT: BY: REPORTED BY: KIRKLAND & ELLIS 950 PAGE MILL ROAD PALO ALTO, CALIFORNIA 94303 PERRY R. CLARK, ESQUIRE WILSON, SONSINI, GOODRICH & RO GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CALIFORNIA 94304 JOHN L. SLAFSKY, ESQUIRE HOLLIS BETH HIRE, ESQUIRE DAVID KRAMER, ESQUIRE DIANE E. SKILLMAN, CSR 4909, RPR, FCRR OFFICIAL COURT REPORTER DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC (510) 451-2930 9 1 AND I DON'T KNOW WHAT THE TERMINOLOGY DE-REGISTERED CERTAIN 2 DOMAIN NAMES BECAUSE OF ALLEGATIONS OF INFRINGEMENT? MR. SLAFSKY: 3 4 LET ME SEE IF I CAN SUMMARIZE FOR THE COURT, YOUR HONOR. 5 GO DADDY HAS OVER 37 MILLION DOMAIN NAMES UNDER ITS 6 MANAGEMENT. 7 PUT ON NOTICE OF SOME SORT OF ADVERSARY PROCEEDING INVOLVING _________________________________________________________________________ 8 ALLEGATIONS OF TRADEMARK INFRINGEMENT LIKE THE ONES WE ARE ______________________________________________________________________ 9 TALKING ABOUT TODAY. ________________________ 10 AND I AM TOLD THAT OVER 800 TIMES A YEAR, IT IS ____________________________________________________ ITS POLICY, AS A GENERAL MATTER, WHICH REFLECTS THE 11 VERY WELL-ESTABLISHED LAW IN THIS AREA, IS THAT IT DOES NOT 12 WANT TO BE JUDGE OR JURY, IT'S NOT CAPABLE OF BEING JUDGE OR 13 JURY TO ASSESS TRADEMARK INFRINGEMENT CLAIMS. 14 THEM. 15 IT STAYS OUT OF IT DOES HAVE AN ABUSE POLICY FOR THE MOST EGREGIOUS, 16 EXCEPTIONAL SITUATIONS INVOLVING SPAM AND CHILD PORNOGRAPHY, 17 AND THINGS LIKE THAT, WHERE IN EXCEPTIONAL SITUATIONS IT WILL 18 TAKE ACTION, BUT IT TRIES TO BE AS CONSISTENT AS POSSIBLE TO 19 AVOID GETTING INVOLVED IN THE MANNER THAT PLAINTIFF IS SEEKING 20 GO DADDY TO GET INVOLVED TODAY. 21 THAT POLICY MAKES SENSE AS A BUSINESS MATTER. IT 22 MAKES SENSE AS A MATTER OF PUBLIC POLICY. _________________________ IF THE GO DADDY'S OF 23 THE WORLD DEMEANING REGISTRAR INTERNET SERVICE PROVIDERS WERE __________________________________________________________________________ 24 PUT IN THE POSITION OF POLICING THESE ISSUES, IT WOULD HAVE A ___________________________________________________________________________ 25 ____________________________________________________________________________ VERY, VERY, VERY SIGNIFICANT ADVERSE IMPACT ON THEIR ABILITY TO DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC (510) 451-2930 10 1 DO BUSINESS. ______________ 2 THE COURT: BUT -- 3 MR. SLAFSKY: I WANT TO POINT OUT, YOUR HONOR, FIRST 4 OF ALL, I THINK COUNSEL HAS MISCHARACTERIZED THE LOCKHEED 5 DECISION, AND I WOULD RESPECTFULLY REQUEST -- 6 7 8 9 THE COURT: BEFORE WE GET TO THAT, I WANT TO HAVE A CLEAR UNDERSTANDING OF THE PROCESS. COUNSEL HAS REFERRED TO THE FACT THAT HIS CLIENT FOLLOWED THE PROCEDURE. CAN YOU DESCRIBE WHAT THE PROCEDURE IS 10 IN ABUSE SITUATIONS WHICH I ASSUME IS WHAT WE HAVE HERE. 11 CLIENT -- AND WHAT IS YOUR CLIENT'S RESPONSE TO THOSE 12 PROCEDURES? 13 MR. SLAFSKY: YOUR SO VERY GENERALLY SPEAKING, THE CLIENT 14 HAS A PROCEDURE WHERE IT PUBLICIZES AN E-MAIL ADDRESS AND PHONE 15 NUMBER FOR PEOPLE TO CALL ATTENTION TO PROBLEMS, AN ABUSE 16 DEPARTMENT. 17 WHO REVIEW INCOMING COMPLAINTS. 18 THERE IS A TEAM OF PEOPLE WHO WORK AT THE COMPANY THEY CATEGORIZE THESE COMPLAINTS INTO DIFFERENT 19 CATEGORIES. THIS TYPE OF DISPUTE FALLS INTO, FRANKLY, A FAIRLY 20 COMMON CATEGORY OF A TRADEMARK DISPUTE, AND GO DADDY'S POLICY 21 IN THIS TYPE OF CASE IS TO NOTIFY THE TRADEMARK OWNER THAT IT 22 OR HE OR SHE SHOULD BE PURSUING THE BAD ACTOR, WHICH IN THIS 23 CASE IS THE DOMAIN NAME OWNER. 24 STATES, THE TRADEMARK OWNER CAN SUE THE DOMAIN NAME REGISTRANT 25 OR IF IT IS HAVING A DIFFICULT TIME TRACKING THAT PERSON DOWN UNDER THE LAW IN THE UNITED DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC (510) 451-2930 EXHIBIT D EXHIBIT E EXHIBIT F EXHIBIT G EXHIBIT H

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