Petroliam Nasional Berhad v., Inc.

Filing 166

See document 168 for corrected entry.NOTICE by, Inc. re 165 Order on Motion for Extension of Time to File, Order on Stipulation Administrative Motion for Entry of Final Judgment on Petronas's Claims and Voluntary Dismissal of Go Daddy's Counterclaim Without Prejudice (Attachments: # 1 Declaration David Lansky Declaration, # 2 Exhibit A to D Lansky Declaration, # 3 Exhibit B to D Lansky Declaration, # 4 Proposed Order)(Lansky, David) (Filed on 1/27/2012) Modified on 1/31/2012 (vlk, COURT STAFF).

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1 2 3 4 5 6 JOHN L. SLAFSKY, State Bar No. 195513 DAVID L. LANSKY, State Bar No. 199952 HOLLIS BETH HIRE, State Bar No. 203651 WILSON SONSINI GOODRICH & ROSATI PROFESSIONAL CORPORATION 650 Page Mill Road Palo Alto, CA 94304 Telephone: (650) 493-9300 Fax: (650) 493-6811 7 8 Attorneys for Defendant / Counterclaimant GODADDY.COM, INC. 9 UNITED STATES DISTRICT COURT 10 NORTHERN DISTRICT OF CALIFORNIA 11 12 PETROLIAM NASIONAL BERHAD, 13 Plaintiff, 14 vs. 15 GODADDY.COM, INC., 16 Defendant. 17 18 GODADDY.COM, INC., 19 Counterclaimant, 20 vs. 21 PETROLIAM NASIONAL BERHAD, 22 Counterclaim Defendant. 23 24 25 26 27 28 ADMIN. MOTION FOR FINAL JUDGMENT AND FOR DISMISSAL OF COUNTERCLAIM W/O PREJUDICE Case No. 4:09-cv-05939-PJH ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) CASE NO.: 09-CV-5939 PJH ADMINISTRATIVE MOTION FOR ENTRY OF FINAL JUDGMENT ON PETRONAS’S CLAIMS AND VOLUNTARY DISMISSAL OF GO DADDY’S COUNTERCLAIM WITHOUT PREJUDICE Honorable Phyllis J. Hamilton Defendant and Counterclaimant, Inc. (“Go Daddy”) hereby moves for entry 1 2 of final judgment as to all claims asserted by Plaintiff and Counterclaim Defendant Petroliam 3 Nasional Berhad (“Petronas”) in the above-captioned litigation (“Petronas’s claims”), and for 4 voluntary dismissal without prejudice of Go Daddy’s counterclaim for cancellation of Petronas’s 5 PETRONAS AND DESIGN trademark registration, Reg. No. 2969707 (the “Trademark claim”). 6 As discussed with the Court at the January 19, 2012 Case Management Conference, Go Daddy 7 maintains that the Court should now allow for trial of the Trademark claim before the Trademark 8 Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office. Go Daddy 9 previously asserted a substantially identical claim currently pending in an action before the TTAB 10 entitled, Inc., v. Petroliam Nasional Berhad, No. 92052741 (the “TTAB 11 proceeding”). See Exhibit A to the Declaration of David L. Lansky, filed concurrently herewith 12 (the “Lansky Decl.”). The TTAB proceeding is suspended in deference to this litigation. Lansky 13 Decl., Ex. B. By way of background, on January 3, 2012, the Court granted Go Daddy’s motion for 14 15 summary judgment as to Petronas’s claims and denied Go Daddy’s motion for summary judgment 16 as to the Trademark claim. Accordingly, the only claim now pending in this lawsuit is the 17 Trademark claim.1 18 At the January 19 Case Management Conference, the parties and the Court discussed 19 whether, in view of the dismissal of Petronas’s claims, it would now be most efficient to litigate 20 the remainder of the Trademark claim in the TTAB proceeding as opposed to in this Court. Go 21 Daddy indicated that it would be willing to go forward with a trial of the Trademark claim before 22 the TTAB based on the discovery to date. In particular, Go Daddy suggested that the parties could 23 now request that the TTAB lift the current suspension of the TTAB proceeding.2 The Court 24 1 25 26 Petronas is reserving its right to appeal the Court’s dismissal of its claims, which are based, in part, on its federal trademark registration. Accordingly, at this time, Go Daddy is not willing to withdraw the Trademark claim with prejudice. 2 27 28 Go Daddy, or preferably the parties together, would file a motion with the TTAB to lift the stay, making clear that the Court has no plans to try the Trademark claim and that the basis for the stay is now moot. ADMIN. MOTION FOR FINAL JUDGMENT AND FOR DISMISSAL OF COUNTERCLAIM W/O PREJUDICE Case No. 4:09-cv-05939-PJH -1- 1 indicated that it was open to such disposition of the Trademark claim and also stated that if the 2 TTAB for some reason declined to lift its suspension, the parties could report back to the Court 3 and seek to reschedule trial of the Trademark claim. On January 19, 2012 the Court issued a 4 minute order (Dkt. 162) directing the parties to “meet and confer and submit a proposed stipulated 5 judgment covering the summary judgment order and either a voluntary dismissal of the 6 counterclaim without prejudice or proposed order remanding the case back to the trial board[.]” 7 Go Daddy subsequently proposed a series of stipulations and orders, but Petronas has not agreed 8 to any them. Lansky Decl., ¶ 6. 9 In response to Go Daddy’s proposed stipulation following the Case Management 10 Conference, Petronas initially insisted on obtaining “final judgment” it its favor on the Trademark 11 claim. Contrary to the discussion at the Case Management Conference, Petronas no longer 12 acknowledges that it would be most efficient for the parties to litigate the Trademark claim in the 13 TTAB proceeding. Petronas is likewise unwilling to stipulate to Go Daddy’s reservation of the 14 right, as suggested by the Court at the Case Management Conference, to seek revival of the 15 Trademark claim in this Court in the unlikely event that the TTAB refuses to lift its suspension. 16 Under the circumstances of this lawsuit, with a single remaining trademark cancellation 17 claim, it clearly would not be efficient to proceed to trial before the Court. A TTAB trial, in 18 contrast, is based on submission of documentary evidence and transcripts of trial testimony 19 depositions (typically without an oral hearing) and thus can proceed much less expensively and, 20 relatively speaking, at the convenience of the parties. Certainly, the TTAB has considerable 21 substantive expertise as to claims such as the Trademark claim. 22 Under the doctrine of primary jurisdiction, the Court has discretion to remand the 23 Trademark claim now to the TTAB, either by dismissing the Trademark claim without prejudice 24 (for the purpose of continued prosecution before the TTAB) or staying the lawsuit pending 25 disposition of the TTAB proceeding. “If a district court action involves only the issue of whether 26 a mark is entitled to registration and if subject matter jurisdiction is available, the doctrine of 27 primary jurisdiction might well be applicable. … In such a case the benefits of awaiting the 28 decision of the [TTAB] would rarely, if ever, be outweighed by the litigants’ need for prompt ADMIN. MOTION FOR FINAL JUDGMENT AND FOR DISMISSAL OF COUNTERCLAIM W/O PREJUDICE Case No. 4:09-cv-05939-PJH -2- 1 adjudication.” Goya Foods, Inc. v. Tropicana Products, Inc., 846 F. 2d. 848 (2nd Cir. 1988). Here 2 the Court should exercise its discretion to dismiss the Trademark claim without prejudice, 3 allowing Go Daddy to ask the TTAB to lift its suspension and to schedule a trial of the Trademark 4 claim. The Court should also allow -- as discussed specifically at the Case Management 5 Conference -- for the procedural safeguard of Go Daddy being able to return to this Court in the 6 unlikely event the TTAB declines to lift its stay. The alternative of burdening the parties and the 7 Court now with a District Court trial of the Trademark claim is inefficient and unnecessary. 8 9 Accordingly, Go Daddy respectfully submits the proposed order filed concurrently herewith. 10 11 Dated: January 27, 2012 WILSON SONSINI GOODRICH & ROSATI PROFESSIONAL CORPORATION 12 13 By: /s/ David L. Lansky JOHN L. SLAFSKY DAVID L. LANSKY HOLLIS BETH HIRE 14 15 16 17 Attorneys for Defendant and Counterclaimant GODADDY.COM, INC. 18 19 20 21 22 23 24 25 26 27 28 ADMIN. MOTION FOR FINAL JUDGMENT AND FOR DISMISSAL OF COUNTERCLAIM W/O PREJUDICE Case No. 4:09-cv-05939-PJH -3-

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