Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 62

MOTION for Leave to File Sur Reply and to Strike filed by Petroliam Nasional Berhad. Motion Hearing set for 9/8/2010 09:00 AM in Courtroom 3, 3rd Floor, Oakland. (Clark, Perry) (Filed on 9/7/2010)

Petroliam Nasional Berhad v. GoDaddy.com, Inc.

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Perry R. Clark (California Bar No. 197101) Law Offices of Perry R. Clark 3457 Cowper St. Palo Alto, CA 94306 Telephone: [phone] Facsimile: [phone] E-Mail: [e-mail] Counsel for Plaintiff PETROLIAM NASIONAL BERHAD ("PETRONAS")

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

PETROLIAM NASIONAL BERHAD ("PETRONAS") Plaintiff, v s. GO DADDY.COM, INC., Defendant.

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Case No.: C09-5939 PJH MOTION TO STRIKE AND MOTION FOR LEAVE TO FILE SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS AND FOR ATTORNEYS'S FEES AND COSTS Date: September 8, 2010 Time: 9:00 a.m. Courtroom 3 Judge: Hon. Phyllis J. Hamilton

MOTION TO STRIKE AND MOTION FOR LEAVE TO FILE SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

Dockets.Justia.com

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Defendant GoDaddy argues for the first time in its Reply that "plaintiff cannot state a claim for . . . contributory cybersquatting . . . based on GoDaddy's domain name routing function." Reply at 7:5-7. This is an entirely new argument and is mentioned nowhere in its Memorandum in Support of its Motion to Dismiss [Docket No. 50], in which GoDaddy provided only the following footnote with respect to plaintiff's cause of action for contributory cybersquatting: Plaintiff does not plead any facts that establish (or even attempt to establish) contributory liability for cybersquatting, and does not even make a conclusory statement related to contributory liability in the recitation of elements for the first claim. The mention of contributory cybersquatting is meaningless, and should be disregarded. Memorandum at 9:23-27, n. 7. "It is well accepted that raising of new issues and submission of new facts in [a] reply brief is improper." Roe v. Doe, 2009 U.S. Dist. LEXIS 59440 (N.D. Cal. June 30, 2009) (citing Schwartz v. Upper Deck Co., 183 F.R.D. 672, 682 (S.D. Cal. 1999); Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996); Contratto v. Ethicon, Inc., 227 F.R.D. 304, 309 (N.D. Cal. 2005) (citing Gold v. Wolpert, 876 F.2d 1327, 1331 n.6 (7th Cir. 1989) ("It is well settled that new arguments cannot be made for the first time in reply.") Because this argument was raised for the first time in defendant's reply brief, all of the arguments presented by GoDaddy in support of its motion to dismiss plaintiff's claim for contributory cybersquatting other than the statement at 9:23-27, n. 7 of its Memorandum (quoted above) should be stricken. Roe, 2009 U.S. Dist. LEXIS 59440 (granting in part motion to strike by striking new matter offered first time on reply); Contratto, 227 F.R.D. at 309 (same).

MOTION TO STRIKE AND MOTION FOR LEAVE TO FILE SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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To the extent this material is not stricken, plaintiff moves for leave to file the sur-reply attached hereto as Ex. A pursuant to Civil Local Rule 7-3(d).

Respectfully Submitted, Dated: September 7, 2010 Law Offices of Perry R. Clark

/S/ Perry R. Clark

MOTION TO STRIKE AND MOTION FOR LEAVE TO FILE SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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Ex. A

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Perry R. Clark (California Bar No. 197101) Law Offices of Perry R. Clark 3457 Cowper St. Palo Alto, CA 94306 Telephone: [phone] Facsimile: [phone] E-Mail: [e-mail] Counsel for Plaintiff PETROLIAM NASIONAL BERHAD ("PETRONAS")

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

PETROLIAM NASIONAL BERHAD ("PETRONAS") Plaintiff, v s. GO DADDY.COM, INC., Defendant.

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Case No.: C09-5939 PJH SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS AND FOR ATTORNEYS'S FEES AND COSTS Date: September 8, 2010 Time: 9:00 a.m. Courtroom 3 Judge: Hon. Phyllis J. Hamilton

SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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GoDaddy argues for the first time in its Reply that plaintiff's contributory cybersquatting claim should be dismissed on the grounds that, because "GoDaddy acted only as the registrar for the Domain Name, it is not liable for contributory cybersquatting" under the "safe harbor" for domain name registrars created by Lockheed Martin Corp. v. Network Sols., Inc., 194 F.3d 980 (9th Cir. 1999). Reply at 7:13-15. This argument must fail because the Lockheed decision concerned a registrar that did not provide the type of linking or "affiliation of the infringing website with the registrant-selected domain name" that GoDaddy admits it provides here. Repl y at 4:19-27. To the contrary, the record in Lockheed showed that "after a domain name is registered, [the registrar's] involvement is over. [The registrar] is not a part of the process of linking domain names with potentially infringing resources such as websites." Lockheed, 958 F.Supp. at 953 (emphasis added). The evidence cited in Lockheed showed that--unlike GoDaddy's domain name forwarding service here--the registrar did not, and could not, route or forward an internet user to a web site because "the domain name servers, which are outside of NSI's [the registrar's] control, connect domain names with internet resources such as Web sites and email systems." Lockheed, 958 F.Supp. at 953. As the Lockheed court explained, the registrar's "role in the internet is distinguishable from that of an Internet service provider whose computers provide the actual storage and communications for infringing material." Id. at 961-62 ("The services necessary to maintain a Web site, such as an IP address, communications, computer processing and storage, are provided by Internet service providers (`ISP's') who provide the host computers and connection necessary for communications on the internet.").

SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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GoDaddy's argument that the "routing of the registrants' domain names to the website of the registrant's choice" is one of "the various protected functions of a domain name registrar" under Lockheed is based on an incorrect interpretation of a statement in the Lockheed opinion. Reply at 3:10-13. Specifically, GoDaddy bases its "safe-harbor" argument on the Ninth Circuit's statement in Lockheed that "[a registrar's] role differs little from that of the United States Postal Service: when an Internet user enters a domain-name combination, [the registrar] translates the domain-name combination to the registrant's IP address and routes the information or command to the corresponding computer." Lockheed, 194 F.3d 980. GoDaddy interprets the phrase "and routes the information or command to the corresponding computer" in Lockheed to mean that the registrar routes, or links, the domain name to a specific website. A accurate reading, however, of the Ninth Circuit's opinion in Lockheed (including the "district court's in-depth discussion of the internet technology that forms the basis for this cause of action" on which it is based), shows the "information or command that is routed" by the registrar is simply the IP address of the domain name server associated with the domain name and not an actual connection or link to the website. Lockheed, 194 F.3d 980 at 981. As explained in Lockheed, "[the registrar] performs two functions in the domain name system. First, it screens domain name applications against its registry to prevent repeated registrations of the same domain name. Second, it maintains a directory linking domain names with the IP address of the domain name servers." Lockheed, 958 F.Supp. at 952. Thus, when Lockheed states that "[the registrar] translates the domain-name combination to the registrant's IP address and routes the information or command to the corresponding computer," it is simply stating that the registrar routes the IP address corresponding to the domain name to the
SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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computer that requested it. Lockheed, 194 F.3d 980. The opinion cannot be interpreted to mean, as GoDaddy contends, that the registrar actually links, "forwards," or "affiliates" a domain name with a web site. To the contrary, and as noted above, "the domain name servers, which are outside the control of [the registrar], connect the domain names with internet resources such as Web site." Id. GoDaddy's "safe harbor" argument under Lockheed is based an incorrect interpretation of what it means to "act as registrar." According to GoDaddy, it acted as a mere registrar by providing its domain name forwarding service linking a domain name to a specific website. A correct reading of Lockheed, however, shows that this goes far beyond "acting in the capacity of registrar," which involves simply translating a domain name address into the corresponding IP address. As such, GoDaddy's "safe harbor" argument should be rejected.

Respectfully Submitted, Dated: September 7, 2010 Law Offices of Perry R. Clark

/S/ Perry R. Clark

SUR-REPLY IN SUPPORT OF OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS Case No.: C09-5939 PJH

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