Apple Inc. v. Amazon.Com, Inc.

Filing 28

RESPONSE (re 25 MOTION to Shorten Time TO HEAR MOTION FOR PRELIMINARY INJUNCTION ) filed byAmazon Digital Services, Inc., Amazon.Com, Inc.. (Glick, Martin) (Filed on 4/18/2011)

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MARTIN R. GLICK (No. 40187)
email: [e-mail]
CLARA J. SHIN (No. 214809)
email: [e-mail]
SARAH J. GIVAN (No. 238301)
email: [e-mail]
HOWARD RICE NEMEROVSKI CANADY
FALK & RABKIN
A Professional Corporation
Three Embarcadero Center, 7th Floor
San Francisco, California 94111-4024
Telephone: [phone]
Facsimile:
415/677-6262
Attorneys for Defendants
AMAZON.COM, INC., a Delaware corporation,
and AMAZON DIGITAL SERVICES, INC., a
Delaware corporation

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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APPLE INC., a California corporation,

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Plaintiff,
v.
AMAZON.COM, INC., a Delaware corporation,
and AMAZON DIGITAL SERVICES, INC., a
Delaware corporation,

No. 11-cv-01327 PJH
Action Filed: March 18, 2011
DEFENDANTS’ OPPOSITION TO
MOTION TO SHORTEN TIME TO HEAR
MOTION FOR PRELIMINARY
INJUNCTION

Defendants.

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DEFENDANTS’ OPP TO MTN TO SHORTEN TIME

11-cv-01327 PJH

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Plaintiff Apple Inc. (“Apple) asks this Court to shorten the time on hearing its Motion for

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Preliminary Injunction (“Motion to Shorten Time”), claiming that it is suffering “irreparable harm”

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from Defendants Amazon.com, Inc. and Amazon Digital Services, Inc.’s (collectively, “Amazon”)

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use of the generic term “app store.” Apple does not specify the requested date for the hearing, but

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no exigent circumstances exist to justify an expedited schedule.

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Amazon opposes Apple’s Motion to Shorten Time for two reasons. First, if Apple believed

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that it was suffering such irreparable harm that it could not wait until this Court’s next potentially

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available hearing date on June 22, then Apple could have filed its Motion for Preliminary Injunction

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(“PI Motion”) months ago. Apple has known of Amazon’s plans to open an app store for the

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Android smartphone platform since October 2010. Glick Declaration ¶¶3-4 & Ex. 1 (October 8

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article), Ex. 2 at p. 5 (Apple’s CEO Steve Jobs’ noting on October 19 that “Amazon, Verizon and

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Vodaphone have all announced that they are creating their own app stores for Android”). Apple’s

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own Complaint alleges that “Amazon began unlawfully using the APP STORE mark in or about

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[January of 2011].” Complaint, ¶21 (Docket No. 1). Apple also alleges that on January 19,

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February 9, and March 14, 2011, it demanded that Amazon cease use of “app store,” but that

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Amazon did not respond to these demands. Id. ¶24.

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Apple filed its Complaint on March 18, but it chose not to move for an injunction at that time,

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despite knowing that the Amazon Appstore for Android would be launching “soon.” Id. ¶28. The

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Amazon Appstore for Android launched on March 22, and Amazon informed Apple on March 25

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that it would not cease use of the generic term “app store” to identify its app store. See Amended

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Complaint, ¶¶27-28 (Docket 16). Still, Apple chose to wait until April 13 to file its PI Motion. In

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short, the delay is Apple’s responsibility.

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Second, shortened time would unfairly prejudice Amazon’s ability to oppose Apple’s PI

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Motion. Apple had several months to generate the voluminous declarations that accompany its PI

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Motion. Indeed, Apple’s PI Motion borrows heavily from fact discovery, expert discovery, and

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motion practice already conducted in connection with Microsoft Corporation v. Apple Inc.,

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Opposition No. 91195582, a proceeding before the Trademark Trial and Appeal Board in which

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Microsoft opposes registration by Apple of the term “app store” on the ground that it is generic.
DEFENDANTS’ OPP TO MTN TO SHORTEN TIME

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11-cv-01327 PJH

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That proceeding began on July 6, 2010, and Microsoft’s summary judgment motion is currently

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pending. Glick Declaration ¶5 & Ex. 3. Fairness requires that Amazon be given more than a few

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weeks to rebut arguments and evidence that Apple has had many months to amass.

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Finally, this Court’s Calendar indicates that the Court is occupied or otherwise unavailable for

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hearing dates prior to June 22, 2011. See Glick Declaration ¶2. Apple’s attempt to preliminarily

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enjoin Amazon from using the generic term “app store” raises important public policy issues, and

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this matter deserves the Court’s full and careful consideration. See Advertise.com, Inc. v. AOL

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Advertising, Inc., 616 F.3d 974, 978 (9th Cir. 2010) (“To allow trademark protection for generic

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terms, . . . even when [they] have become identified with a first user, would grant the owner of the

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mark a monopoly, since a competitor could not describe his goods as what they are”) (quoting

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Surgicenters of Am., Inc. v. Med. Dental Surgeries Co., 601 F.2d 1011, 1017 (9th Cir. 1979)).

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Amazon will demonstrate decisively when the time comes that the Amazon Appstore for Android

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infringes no rights belonging to Apple. Not only is “app store” generic, but also there is no

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possibility of confusion because—as Apple must admit—Apple’s App Store can only be used by

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customers who own Apple products such as the iPhone, iPad, or iPod, while the Amazon Appstore

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for Android can only be used by customers who own Android smartphones. Northcott Declaration,

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¶¶2-4. Moreover Apple, having now lodged its challenge to the Amazon Appstore for Android,

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cannot be harmed by waiting for a hearing that accords with this Court’s published schedule and

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which allows Amazon to properly prepare. If Apple loses, there is obviously no harm; and, even if

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Apple persuades the Court that it alone should be allowed to use “app store,” it will lose no rights if

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Amazon’s use is enjoined a few weeks later than the time its request might otherwise be heard.

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DEFENDANTS’ OPP TO MTN TO SHORTEN TIME

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CONCLUSION

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In light of the foregoing, Amazon requests that the Court deny Apple’s Motion to Shorten
Time.

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DATED: April 18, 2011.

Respectfully,

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MARTIN R. GLICK
CLARA J. SHIN
SARAH J. GIVAN
HOWARD RICE NEMEROVSKI CANADY
FALK & RABKIN
A Professional Corporation

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By:

/s/ Martin R. Glick
MARTIN R. GLICK

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Attorneys for Defendants AMAZON.COM, INC., a
Delaware corporation, and AMAZON DIGITAL
SERVICES, INC., a Delaware corporation

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DEFENDANTS’ OPP TO MTN TO SHORTEN TIME

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11-cv-01327 PJH