Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 127

DECLARATION of Perry Clark In Support of Request For Denial or Continuance of GoDaddy's Motion For Summary Judgment filed byPetroliam Nasional Berhad. (Clark, Perry) (Filed on 11/16/2011) Modified on 11/17/2011 (vlkS, COURT STAFF).

1 PERRY R. CLARK, State Bar No. 197101
LAW OFFICES OF PERRY R. CLARK
2 825 San Antonio Road
Palo Alto, CA 94303
3 Telephone: [phone]
Facsimile: [phone]
4 [e-mail]
5 Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD (PETRONAS)
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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13 PETROLIAM NASIONAL BERHAD
(PETRONAS),
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Plaintiff,
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vs.

17 GODADDY.COM, INC.,
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Defendant.

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CASE NO: 09-CV-5939 PJH (MEJ)
Noticed Hearing Date: December 7, 2011
Noticed Hearing Time: 9:00 a.m.

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DECLARATION OF PERRY CLARK
IN SUPPORT OF REQUEST FOR DENIAL OR CONTINUANCE
OF GODDADDY’S MOTION FOR SUMMARY JUDGMENT UNDER FED. R. CIV. P.
56(D)

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DECLARATION OF PERRY CLARK
Case No: 09-CV-5939 PJH

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I, Perry Clark, declare as follows:

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I am the attorney for Plaintiff Petroliam Nasional Berhad (Petronas) and have

handled this case since its inception.
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Information regarding GoDaddy’s communications with the registrant of the

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Disputed Domains, GoDaddy’s policy and conduct regarding Petronas’s trademark claims at

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issue in this case, and the volume, nature, and GoDaddy’s handling of claims like Petronas’s

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trademark claims at issue in this case is in the possession of defendant GoDaddy. (Ex. A).

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GoDaddy has refused to provide certain discovery regarding this information. Id.

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On October 26, 2011, Petronas followed this Court’s procedure for filing a motion

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to compel by submitting a joint letter after meeting and conferring with GoDaddy. Id.
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On November 7, 2011, an Order Of Reference To Magistrate Judge was entered

and Petronas is pursuing its motion to compel according to that order. Ex. B
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I believe that the information outlined above will raise a genuine issue of material

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fact and, therefore, that the present summary judgment motion of GoDaddy should be denied as

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premature pursuant to Fed. R. Civ. P. 56(d).

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Dated: November 16, 2011

LAW OFFICES OF PERRY R. CLARK

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By:

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-1DECLARATION OF PERRY CLARK
Case No: 09-CV-5939 PJH

/s/ Perry R. Clark
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Perry R. Clark
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
(PETRONAS)

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Ex. A

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-2DECLARATION OF PERRY CLARK
Case No: 09-CV-5939 PJH

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LAW OFFICES OF

PERRY R. CLARK
825 SAN ANTONIO ROAD
PALO ALTO, CA 94303
TELEPHONE [phone]
FACSIMILE 650 618 8533

October 26, 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 discovery disputes that have arisen in this cybersquatting and unfair
competition case. The parties met and conferred by telephone on October 26, 2011. The parties
submit this joint letter in light of your Honor’s directions at the May 26, 2011 Case Management
Conference at which the Court retained discovery (no referral) and directed that, “if there 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’ respective positions on the dispute are set forth below.
Petronas’s Position
Petronas submits this letter to request the Court’s assistance in compelling two types of
discovery from GoDaddy: Fed. R. Civ. P. 30(b)(6) deposition testimony and the production of
documents.
Based on counsel’s telephonic meet and confer discussions, Petronas understands that
GoDaddy will be producing additional documents as soon as October 27, 2011 that may address
the document issues raised below. Petronas is, nonetheless, mindful of the 7-day deadline after
the close of fact discovery (which, in this case, was October 19, 2011) in Civ. L.R. 37-3 for the
filing of motions to compel and, accordingly, is filing this letter. Petronas, however, will
immediately review any documents produced by GoDaddy and inform the Court if they resolve
the document issues below. With respect to the deposition issues below, Petronas understands
that GoDaddy believes that the Fed. R. Civ. P. 30(b)(6) topics in question were covered by other
witnesses and that GoDaddy will provide citations to transcripts (in addition to those it already has
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provided) along those lines. While Petronas will review those transcripts to see if they resolve the
issues below, Petronas notes that the testimony identified by GoDaddy as of the filing of this letter
did not adequately cover the topics and was not from witnesses designated by GoDaddy for
examination on those topics under Fed. R. Civ. P. 30(b)(6).
Depositions
GoDaddy’s Fed. R. C. P. 30(b)(6) witnesses were unprepared to testify on the topics for
which they were designated. For example, GoDaddy designated Matthew Bilunes as its
representative on Topic No. 1 in Petronas’s Fed. R. Civ. P. 30(b)(6) notice of deposition, which is
“[t]he ‘trademark policy and how/whether the domain names were treated within it’ and the
‘general policies and procedures, the volume of incoming trademark complaints as well as the
specific handling of the two disputed domain names’ to which GoDaddy referred in the joint
letter to the Court dated September 2, 2011 (Doc. No. 107).” 1 Mr. Bilunes was unable to
provide information related to Topic No. 1, as the following testimony illustrates:
Q. Okay. Do you know what policy was applied to the trademark claim submitted by Petronas
in December 2009 to Go Daddy regarding the domain name petronastower.net?
A. I do not.
Q. Okay. Do you know what policy was applied to the trademark claim submitted by Petronas
in July 2010 related to the domain name petronastowers.net?
A. I do not.
***
Q. [D]o you understand that you’ve been designated as Go Daddy’s representative on topic
number 1 on page 7 in Exhibit 1 [Petronas’s Fed. R. Civ. P. 30(b)(6) Deposition Notice]?
A. Yes, I understand that I've been designated.
Q. Okay. So can you tell me how many incoming trademark complaints Go Daddy received in
2010?
A. I cannot give you an approximate number.
Q. You can give me an approximate number?
A. Cannot.
Q. Can you give me an approximate number for 2009?
A. No, I cannot.
Q. If you wanted to find out the number of incoming trademark complaints that Go Daddy had
received for any specific period of time, how would you go about doing that?
A. I would consult with our trademark claims people who handle the trademark complaints.
Q. Okay. And before your deposition today, did you consult with any of the people who handle
the trademark claims?
A. No, I did not.
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The Court will recall that the September 2, 2011 Joint Letter (Doc. No. 107) involved Petronas’s motion to compel
GoDaddy to respond a document request (No. 5) regarding the number of trademark claims like those at issue in this
case it receives (and which are part of Petronas’s allegations of bad faith in its First Amended Complaint). The
Court denied Petronas’s motion to compel “for the reasons stated by defendant” (Doc. No. 108), which included
GoDaddy’s representation in the September 2, 2011 Joint Letter that GoDaddy would provide a Fed. R. Civ. P.
30(b)(6) witness on the subject.

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In addition, GoDaddy’s designated deponent for Fed. R. Civ. P. 30(b)(6) Topic No. 7,
Laurie Anderson, was also unprepared and unable to answer questions on that topic:
Q. Okay. And if you could just flip back to Exhibit 1 which is your deposition notice. If you
turn to page 8, you see numbered paragraph 7. And do you understand that you've been
designated as GoDaddy's 30(b)(6) deponent on topic 7 which is “Heiko Schoenekess, including
services provided to him and communications with him?”
A. Yes.
***
Q. Do you know what services Go Daddy provided to Heiko Schoenekess in connection with
account number 14152086?
A. No.
Q. Do you know what services Go Daddy provided to Heiko Schoenekess for account number
12996115?
A. No.
Q. Okay. So can you tell me what services Go Daddy did provide to Heiko Schoenekess?
MR. LANSKY: Object to the form. Do you mean with respect to any domain or with respect to
the disputed domain?
BY MR. CLARK:
Q. With any domain.
A. Without looking at the account, no.
Q. Without looking at the account?
A. Yeah.
Q. And have you looked at the account?
A. Yes.
Q. And do you know the account number that you looked at?
A. I don't recall.
Q. You don't know if it's the account ending in 115?
A. No.
Q. Or if it's the account ending in 086?
A. No.
***
Q. Do you know what IRIS refers to here?
A. It's a tool that we use to handle e-mail correspondence with customers.
Q. So using the IRIS tool, Go Daddy's able to collect all of the e-mails they exchanged with a
customer?
A. Yes.
Q. So you would expect to find all of the e-mails exchanged between Go Daddy and a registrant
customer stored in the IRIS database?
A. Yes.
Q. Have you reviewed the IRIS database for Heiko Schoenekess?
A. No.
Q. Now, do you know if Go Daddy ever contacted Heiko Schoenekess regarding Petronas’s
allegations of trademark infringement?
MR. LANSKY: Object to the form.
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THE WITNESS: No, I don't know.
BY MR. CLARK:
Q. You don't know?
A. No.
Q. Okay. If you wanted to find out, how would you go about doing that?
A. I would contact trademark claims.
Q. Trademark claims?
A. At Go Daddy.
Q. Okay. And any particular person in trademark claims?
A. The manager.
Q. And who is the manager in trademark claims?
A. Karen Newbury.
Q. Did you speak with Karen Newbury in preparing for your deposition today?
A. No.
Petronas requests that GoDaddy be compelled to provide witnesses who can testify fully
on all of the topics designated in Petronas’s Fed. R. Civ. P. 30(b)(6) notice of deposition.2
Documents
Petronas requests that GoDaddy be compelled to produce all documents related to Heiko
Schoenekess, the registrant of the domain names at issue in this case. The Court will recall that
GoDaddy opposed Petronas’s request for responses to interrogatories related to GoDaddy’s
documents in the letter to the Court on September 2, 2011in which counsel for GoDaddy
represented that “Go Daddy has produced approximately 2400 pages of relevant documents to
Petronas. . . GoDaddy is not withholding other responsive documents.” Doc. No. 107. Despite
this representation, GoDaddy has produced more than 300 pages of highly responsive documents
to Petronas since that date, including more than 200 on the day after the close of fact discovery,
and has indicated that it will be producing more. It also appears that GoDaddy has failed to
produce any documents related to one of the two GoDaddy accounts of Heiko Schoenekess,
despite testimony by the GoDaddy deponents that such documents exist. Accordingly, Petronas
requests that GoDaddy be compelled to produce all responsive documents as soon as possible and,
if necessary, make deponents available for depositions on those documents.
Go Daddy’s Position
The parties met and conferred on October 26, 2011 and reached agreement on the issues
raised above. Go Daddy thus does not see the necessity for this section of the letter.
To date, Petronas has deposed 11 Go Daddy witnesses, many of whom were designated
as Go Daddy representatives covering 30(b)(6) topics. As Go Daddy pointed out on the meet
and confer call today, Petronas has the information it seeks above. For example, at least three
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With respect to GoDaddy’s statement below that “Petronas has deposed 11 Go Daddy witnesses,” it should be
noted that Petronas only took nine depositions: eight individuals and one Fed. R. Civ. P. 30(b)(6) (for which
GoDaddy designated multiple deponents). And the only reason Petronas took so many individual depositions was
because GoDaddy identified all those deponents in its initial disclosures as witnesses it “may use to support its
claims or defenses” pursuant to Fed. R. Civ. P. 26(a)(1)(A)(i).

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different witnesses provided estimates of the number of trademark complaints Go Daddy
receives each year. Additionally, Go Daddy has produced account records containing all
communications between Go Daddy and the registrant, and Petronas introduced those account
records at multiple depositions. Those same account records reflect the services Go Daddy
provided to the registrant. Go Daddy should not be penalized for Petronas’s decision not to
direct the witnesses attention to those portions of the document.
With respect to documents, over the course of the depositions Go Daddy learned of
potentially responsive documents that had not yet been produced. Go Daddy proactively
searched for and produced such documents prior to the discovery cutoff. Plaintiff now seeks
documents relating to the registrant’s second account with Go Daddy (not the account associated
with the disputed domains, which has already been produced). Go Daddy has agreed to search
for and produce any responsive documents associated with this second account, even though this
account information is likely irrelevant to Petronas’ claims, as the account is not related to the
PETRONAS trademark on which this lawsuit is based.
Because Petronas has or will soon have the information it seeks, there is nothing for this
Court to compel.
Petronas’s Document Production
Go Daddy’s Position
In the parties’ joint letter to the Court dated September 2, 2011, Go Daddy stated as
follows:
Petronas’ document production begs serious questions about the thoroughness and
sufficiency of its collection efforts. . . .
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 . . . .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 Petronas’ trademark registration), Petronas’ trademark generally,
the two disputed domain names, Petronas’ trademark policing efforts and Petronas’
claim of damages, among other topics.
Curiously, Petronas has failed to produce a single e-mail document in response. At
the same time, a disproportionate number of the documents actually produced by
Petronas suggest that they were merely generated by or came from the files of not
Petronas, but its outside counsel: e.g., a print-out of the Lanham Act from LEXIS,
the Standing Order for All Judges of the N.D. Cal. re Joint Case Management
Statements, court papers from federal court actions involving other parties, printouts from Go Daddy’s website, print-outs from third-party websites and
correspondence from Petronas’ counsel. It seems implausible that a large,
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international business such as Petronas would not have any e-mails or other
electronic documents related to claims or defenses in a lawsuit based on the
PETRONAS brand. . . .
In the Court’s subsequent order dated September 6, 2011, the Court stated, in relevant part:
It is not clear what [Petronas] means by “ its document production is ongoing.”
As the document requests were propounded on June 17, 2011, production is
clearly overdue and shall be made no later than September 9, 2011.
Notwithstanding the Court’s order, Petronas has failed to produce any internal company
e-mail messages (i.e. emails solely between employees of Petronas and/or its subsidiaries). As
Petronas’s 30(b)(6) witness, Yeoh Suat Gaik, conceded at her deposition, Petronas failed to
conduct electronic searches for emails or other responsive documents, nor was she aware of any
searches for responsive electronic documents. See Exhibit A, pp. 69 - 70. It strains credulity
that no such records exist. For example, Petronas has identified a subsidiary, iPerintis, charged
by Petronas with monitoring third-party Internet activity, including cybersquatting, related to
Petronas; it was this subsidiary that notified Petronas, apparently in writing, concerning the two
disputed domain names at issue in this lawsuit. No communications from or to iPerintis, nor any
agreements with iPerintis, have ever been produced (even though long ago requested). No
privilege claim has been asserted with respect to iPerintis-related documents; nor could one be.
More broadly, no internal Petronas e-mail messages referencing either of the two disputed
domain names have been produced or identified in a privilege log.
Go Daddy is compelled to request that the Court direct Petronas (i) to confirm that no
responsive, non-privileged e-mails or other electronic documents exist, or absent such
confirmation, (ii) to show cause why it should not be held in violation of the Court’s September
6, 2011 order.
Petronas’s Position
GoDaddy first raised the foregoing issue on September 30, 2011 and the parties met and
conferred and exchanged multiple emails on the issue until October 10, 2011, at which time
Petronas thought the issue was resolved. The first time that Petronas learned that GoDaddy
believed there still was an issue was at 1:30 p.m. today when GoDaddy insisted that the issue be
included in this letter to the Court regarding the issues raised by Petronas above. In any event,
Petronas can confirm that it is not aware of the existence of any responsive, non-privilege emails
or other electronic documents in its possession to which GoDaddy refers above.
Moreover, GoDaddy’s statement that “Petronas has failed to produce any internal
company e-mail messages” is false. Petronas has provided non-privileged emails in response to
GoDaddy’s document requests as well as by attaching them as exhibits to pleadings in this case
(and GoDaddy has included multiple copies of such emails in its document production back to
Petronas).
In addition, GoDaddy’s statement that “[n]o privilege claim has been asserted with
respect to these documents; nor could one be,” is false. Petronas served a privilege log on
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September 9, 2011 asserting privilege claims for specific emails responsive to GoDaddy’s
document requests and GoDaddy has not identified any issues with Petronas’s privilege log.
GoDaddy is also incorrect when it states that “[m]ore broadly, no internal Petronas e-mail
messages referencing either of the two disputed domain names have been produced or identified
in a privilege log.” To the contrary, virtually every entry identified in Petronas’s privilege log is
an “internal Petronas e-mail message[] referencing either of the two disputed domain names.”

Ms. Gaik further testified that documents related to this case from iPerentis were in the
possession of the Petronas legal team handling this case. Ex. A at 69:10-13. Ms. Gaik explained
Petronas’s document collection and preservation efforts in a portion of her deposition that
GoDaddy fails to cite in its section above. Ex. B (Gaik 59:7 to 67:11). Because this case began
within three weeks of discovery of the “petronastower.net” domain name and because the
Petronas legal team was in charge of the issue from the beginning, the Petronas legal team
collected the documents as they were created and double-checked later in the litigation to be sure
it had everything and turned it over to outside counsel.

Respectfully Submitted,
LAW OFFICES OF PERRY R. CLARK

/S/
Perry Clark
LAW OFFICES OF PERRY R. CLARK
825 San Antonio Road
Palo Alto, CA 94303
Tel.: [phone]
Email: [e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD (PETRONAS)

WILSON SONSINI GOODRICH & ROSATI

/S/
John L. Slafsky
David L. Lansky
Hollis Beth Hire
WILSON SONSINI GOODRICH & ROSATI
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650 Page Mill Road
Palo Alto, CA 94304-1050
Tel. [phone]
Email: [e-mail]
Email: [e-mail]
Attorneys for Defendant
GODADDY.COM, INC.

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Ex. A

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Page 69
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Q.

Do you know what sort of e-mail system

Petronas uses?

11:54:43
11:54:47

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A.

No.

11:54:50

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Q.

Do you know who is responsible for

11:54:52

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maintaining that system?

11:54:53

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A.

iPerintis, our IT subsidiary.

11:54:58

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Q.

Does iPerintis have access to all Petronas

11:55:04

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e-mails?

11:55:07

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A.

I don't know.

11:55:10

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Q.

Has iPerintis been contacted with respect to

11:55:12

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document collection and preservation in this case?
A.

I'm not sure, but I know their documents are

with us, which are relevant for this case.
Q.

Has Petronas searched for e-mails,

electronically, in connection with this case?

11:55:16
11:55:20
11:55:26
11:55:29
11:55:32

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A.

Searched for e-mails, no, we did not.

11:55:37

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Q.

Didn't search for e-mails.

11:55:39

Okay.

11:55:40

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Does Petronas have a document

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management --

11:55:49

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A.

11:55:49

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Sorry, can I go back to the earlier

question?

11:55:53

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Q.

Sure.

11:55:54

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A.

When you say search for e-mails, you mean

11:55:54

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search other people's inboxes?
Q.

Other people's e-mail accounts.

11:55:57
11:55:59

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Page 70
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A.

No, I don't know.

11:56:01

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Q.

Does Petronas have a document management

11:56:04

system, an electronic document management system?

11:56:08

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A.

Yes.

11:56:13

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Q.

What system is that?

11:56:13

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A.

It's the same -- it's the same as what I

11:56:14

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said just now.

11:56:21

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Q.

Do you know the name of the system it uses?

11:56:25

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A.

No.

11:56:28

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Q.

Okay.

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that system?

11:56:33

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A.

I believe it's iPerintis.

11:56:36

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Q.

And are all of Petronas' electronic

11:56:40

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Who is responsible for maintaining

documents accessible by iPerintis?

11:56:29

11:56:45

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I don't know.

11:56:51

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Q.

Okay.

11:56:52

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Has Petronas searched for electronic

documents that might relate to this case?

11:56:57

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A.

I don't know.

11:57:02

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Q.

Do you know if Petronas -- withdraw that.

11:57:10

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So be on notice we haven't received any

11:57:12

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internal e-mails or electronic documents, mostly

11:57:17

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internal e-mails relating to this case.

11:57:22

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So we're going to reserve the right to

11:57:24

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recall you and ask about those if subsequently we get

11:57:26

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some of that.

11:57:29

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Ex. B

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Page 59
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documents relate to this litigation?

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A.

No.

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Q.

Okay.

11:42:00
That's all I have on this.

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MR. CLARK:

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MR. LANSKY:

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11:41:58

That was 9?
Yes.

11:42:01
11:42:12
11:42:13

BY MR. LANSKY:
Q.

Were employees at Petronas -- employees or

11:42:20

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anybody else at Petronas instructed to preserve

11:42:23

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documents in connection with this case?

11:42:26

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A.

Yes.

11:42:28

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Q.

Who was instructed to preserve documents?

11:42:28

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A.

Who instructed?

11:42:34

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Q.

Who was instructed to preserve documents?

11:42:35

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If it's easier to list people by department, that's

11:42:38

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fine, too.

11:42:42

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A.

Priya was instructed.

11:42:42

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Q.

Priya was instructed to preserve documents.

11:42:45

Was anybody else instructed to preserve

11:42:48

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documents?

11:42:51

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A.

No.

11:42:53

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Q.

Nobody in corporate affairs was instructed

11:42:55

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to preserve their documents?
A.

We have all the documents that are relevant

to the case -- sorry, beg your pardon.
We -- when I say "we," I mean our team,

11:42:57
11:43:00
11:43:06
11:43:10

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Page 60
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which consists of Priya and me, have all the

11:43:13

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documents relating to this case.

11:43:16

So when we preserve it, we have the

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11:43:19

documents for all.
Q.

11:43:22

Is it possible that people in the corporate

11:43:26

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affairs department were communicating among

11:43:29

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themselves regarding the disputed domains?

11:43:31

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A.

No.

11:43:35

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Q.

Why not?

11:43:36

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A.

Because we are the relevant party.

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We are

the focal party for this action.
So there is no communication where we are

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11:43:37
11:43:42
11:43:48

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not involved.

11:43:52

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Q.

11:43:54

Did anybody at Petronas ask the people in

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corporate affairs if they engaged in any

11:43:59

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communications regarding these domains that didn't

11:44:02

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include the legal department?

11:44:05

18

A.

We would have asked them for information and

11:44:08

19

they would have alerted us if there was any

11:44:12

20

communication.

11:44:17

21
22
23
24
25

Q.

So somebody actually asked them, is that

your testimony?
A.

11:44:22

In the course of the investigation and

everything, yes.
Q.

Okay.

11:44:18

11:44:23
11:44:27

How were the instructions to preserve

11:44:28

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documents communicated?
MR. CLARK:

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3
4

11:44:36

Objection, it's vague.

11:44:39

BY MR. LANSKY:
Q.

The form.

11:44:41

5

MR. CLARK:

Communicated to who?

11:44:43

6

MR. LANSKY:

To anybody within Petronas.

11:44:47

7

THE WITNESS:

There was instructions to

11:44:49

8

preserve all the documents -- to print and file all

11:44:52

9

the documents.

11:44:56

10

BY MR. LANSKY:

11
12

Q.

Was this in an e-mail or written memo or

verbally or some other form?

11:44:58
11:45:01

13

A.

Verbally.

11:45:04

14

Q.

So not in an e-mail?

11:45:07

15

A.

No.

11:45:09

16

Q.

Do you know when that instruction was given?

11:45:11

17

A.

Not exactly, but probably quite early in the

11:45:22

18

court action.

11:45:39

19

Q.

Sometime after the litigation was filed?

11:45:40

20

A.

Yes.

11:45:45

21

Q.

Do you know if it was before or after

11:45:47

GoDaddy served discovery requests on Petronas?

11:45:51

22
23

A.

It was definitely before.

11:45:56

24

Q.

What types of documents were they instructed

11:46:03

25

to preserve?

I guess just Priya that got the

11:46:07

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instructions; is that correct?

11:46:10

2

A.

Yes.

11:46:11

3

Q.

What types of documents was Priya instructed

11:46:11

4

to preserve?

11:46:15

5

A.

11:46:16

All documents -- all documents that has any

6

relation to this action or to any communication

11:46:21

7

before this action started.

11:46:25

8

Q.

Did that include electronic documents?

11:46:27

9

A.

Yes.

11:46:29

10

Q.

Did that include internal e-mails?

11:46:31

11

A.

Yes.

11:46:33

12

Q.

Did that include paper documents as well?

11:46:34

13

A.

Everything.

11:46:38

14

Q.

Okay.

11:46:40

15
16

retention memo circulated; is that right?
A.

19

22
23
24
25

11:46:48
11:46:51

Objection, lacks foundation.

11:46:54

BY MR. LANSKY:
Q.

I can rephrase it.

11:47:00

Was there any formal document retention memo

20
21

There was -MR. CLARK:

17
18

So you said there was no document

11:47:01

circulated with respect to this litigation?
A.

There may be, but I only recall specifically

verbal communication.
Q.

You say may be.

there was one?

11:47:04
11:47:05
11:47:09

How would we find out if

11:47:14
11:47:18

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Page 63
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2
3

A.

I could go through the documents because

that's all there is.
Q.

Okay.

Did somebody follow up with I guess

11:47:18
11:47:20
11:47:21

4

Priya to make sure the documents were being

11:47:25

5

preserved?

11:47:29

6

A.

I did.

11:47:30

7

Q.

When did you do that?

11:47:31

8

A.

About a month ago.

11:47:32

9

Q.

And how did you do that?

11:47:36

10

A.

Go through all the files, to make sure that

11:47:39

11
12
13

there was complete set of documents and e-mails.
Q.

Were the files electronic that you went

through?

11:47:46
11:47:54
11:47:58

14

A.

They're hard copies.

11:47:58

15

Q.

Did you go through any electronic files?

11:48:00

16

A.

No.

11:48:03

17

Q.

Does Petronas have a document retention

11:48:06

18

policy?

19

A.

Yes.

11:48:10

20

Q.

Is it a written policy?

11:48:11

21

A.

Yes.

11:48:13

22

Q.

What is the policy?

11:48:14

23

A.

Where is that policy?

11:48:18

24

Q.

What is it in general, if you can tell me?

11:48:20

25

A.

Amongst other things, it has a -- it says

11:48:23

11:48:08

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how long documents have to be kept, how do you

11:48:32

2

categorize documents, confidential, trade secret,

11:48:35

3

things like that.

11:48:38

4
5

Q.

Is it the same policy for electronic versus

paper documents?

11:48:39
11:48:42

6

A.

For everything.

11:48:44

7

Q.

Was that policy suspended or modified in

11:48:45

8

light of this litigation?

11:48:48

9

A.

No.

11:48:50

10

Q.

Is the policy to destroy documents after a

11:48:51

11

certain amount of time?

11:48:56

12

A.

Yes, after seven years.

11:48:59

13

Q.

So is everything saved for seven years?

11:49:02

14

A.

We actually don't practice that policy.

15

We

keep everything.

11:49:08
11:49:11

16

Q.

Forever?

11:49:15

17

A.

Yes.

11:49:16

18

Q.

Who is most knowledgeable about the document

11:49:16

19
20
21
22

destruction and retention policies at Petronas?
A.

11:49:20

Each department is -- is -- each department

11:49:26

is responsible for -- for complying with the policy.

11:49:31

Q.

Is there a person that's most knowledgeable

11:49:41

23

about the overall retention policy and how that

11:49:43

24

works?

11:49:46

25

A.

Probably there is, but I'm not sure who.

11:49:51

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Q.

1
2

Okay.

Who managed the actual collection of

documents for this litigation?

11:49:53
11:49:57

3

A.

For this litigation?

11:50:00

4

Q.

Uh-huh.

11:50:02

5

A.

Priya collected and it is under my custody

11:50:03

6

now.

11:50:08

7

Q.

When did the collection efforts begin?

11:50:09

8

A.

It started the time the litigation started.

11:50:13

9

Q.

So right around the time the first complaint

11:50:18

10

was filed; is that right?

11:50:21

11

A.

Yes.

11:50:22

12

Q.

Who was interviewed or talked to at Petronas

11:50:25

13

regarding document collection?

11:50:32

14

A.

It was just Priya.

11:50:39

15

Q.

Just Priya.

11:50:40

What about the folks in corporate affairs?

11:50:42

16
17

A.

They're not involved.

11:50:46

18

Q.

So Priya didn't talk to them regarding

11:50:50

19
20

document collection?
A.

She may have, but I don't know -- but it's

11:50:53
11:50:53

21

not likely, as I said, that we have all the documents

11:50:56

22

for the first action.

11:51:01

23

Q.

So did Priya talk to anybody else regarding

24

collection?

11:51:07

25

A.

11:51:14

Are you talking documents --

11:51:04

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Q.

Collection of documents for this litigation,

11:51:17

2

did Priya go around and talk to anybody regarding

11:51:19

3

what documents they might have that relate to this

11:51:22

4

litigation?

11:51:25

5

A.

Yes, she did.

11:51:26

6

Q.

Who did she talk to?

11:51:28

7

A.

She talked to subsidiaries who have business

11:51:29

8

or trade in the United States.

11:51:40

9

Q.

Which subsidiaries are those?

11:51:41

10

A.

Those are the lubricant subsidiaries, LNG

11:51:43

11

Trading and Crude Oil Trading.

11:51:48

12

Q.

Did she talk to anybody else?

11:51:51

13

A.

She may have, but that's all I know.

11:51:54

14

Q.

Okay.

11:51:58

Do you know who the custodians are

15

for the documents that have already been produced in

11:52:01

16

this case?

11:52:03

17

MR. CLARK:

18

Asked and answered.

THE WITNESS:

I've already answered the

19

question; it's me, currently it's me.

20

11:52:05
11:52:11

BY MR. LANSKY:

21
22

Q.

But do you know where else the documents

came from, if anybody?

11:52:12

11:52:16
11:52:18

23

A.

I beg your pardon?

11:52:20

24

Q.

When I asked the document custodians, who

11:52:22

25

had the documents originally who were given to

11:52:25

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whoever was in charge of producing things, you

11:52:28

2

mentioned that Priya talked to different subsidiaries

11:52:30

3

and maybe individuals.

11:52:33

Do you know if any of those folks actually

4

11:52:35

5

had documents they gave and were produced in this

11:52:40

6

litigation?

11:52:43

7

A.

Yes, they did produce documents.

11:52:43

8

Q.

Each of those subsidiaries?

11:52:45

9

A.

Yes.

11:52:47

10

Q.

Anybody else?

11:52:48

11

A.

No one else.

11:52:50

12

Q.

Are you aware that there's another

11:52:52

13

proceeding between GoDaddy and Petronas that's

11:52:55

14

pending before the U.S. Trademark Trial and Appeal

11:52:58

15

Board?

11:53:02

16

A.

Yes.

17

Q.

Okay.

11:53:02
And in that case, GoDaddy had

11:53:03

18

document requests and Petronas produced some

11:53:06

19

documents.

11:53:09

I'm going to call that the TTAB production;

20

11:53:10

21

is that okay?

11:53:13

22

A.

T ten?

11:53:15

23

Q.

T-T-A-B.

11:53:17

24

A.

Okay.

11:53:21

25

Q.

Are you aware that the production in that

11:53:21

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7
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9
10
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13
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15
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18
19

Ex. B

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-3DECLARATION OF PERRY CLARK
Case No: 09-CV-5939 PJH

Case4:09-cv-05939-PJH Document122

Filed11/07/11 Page1 of 1

1
2
3
4
UNITED STATES DISTRICT COURT
5
NORTHERN DISTRICT OF CALIFORNIA
6
7
8
PETROLIAM NASIONAL BERHAD,
9
Plaintiff,

No. C 09-5939 PJH

10
v.
11

ORDER OF REFERENCE
TO MAGISTRATE JUDGE

GODADDY.COM, INC.,
12
13
14

Defendant.
___________________________________/
The parties having demonstrated that they are incapable of resolving even the most

15

minute discovery-related issues without the assistance of the court, this matter is hereby

16

referred to a Magistrate Judge pursuant to Civil Local Rule 72-1, for resolution of the

17

dispute regarding Rule 30(b)(6) discovery and regarding the production of documents, and

18

for all further discovery.

19

The parties shall contact the courtroom clerk of the assigned Magistrate Judge about

20

that judge's procedures for resolving discovery disputes. The information may also be

21

available on the court's website.

22
23

IT IS SO ORDERED.

24

Dated: November 7, 2011

25
_________________________
PHYLLIS J. HAMILTON
United States District Judge

26
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cc: Lili, Assigned M/J, counsel of record
28