Apple Inc. v. Amazon.Com, Inc.

Filing 49

JOINT CASE MANAGEMENT STATEMENT filed by Apple Inc., Amazon Digital Services, Inc., Amazon.Com, Inc.. (Eberhart, David) (Filed on 6/23/2011) Modified on 6/24/2011 (vlk, COURT STAFF).

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DAVID R. EBERHART (S.B. #195474)
[e-mail]
RYAN J. PADDEN (S.B. #204515)
[e-mail]
DAVID J. SEPANIK (S.B. #221527)
[e-mail]
O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111-3823
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Plaintiff and Counter-Defendant
Apple Inc.

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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

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Attorneys for Defendants and Counter-Claimants
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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OAKLAND DIVISION

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APPLE INC., a California corporation,

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Plaintiff,

Case No. CV 11-01327 PJH
JOINT CASE MANAGEMENT
STATEMENT

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

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JOINT CASE MANAGEMENT
STATEMENT
CV 11-01327 PJH

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In accordance with Fed.R.Civ.P. 26(f) and Local Rule 16-9, Plaintiff and Counter-

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Defendant Apple Inc. (“Apple”) and Defendants and Counter-Claimants Amazon.com, Inc. and

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Amazon Digital Services, Inc. (collectively “Amazon”) respectfully submit the following Joint

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Case Management Statement in preparation for the June 30, 2011 Initial Case Management

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Conference. Counsel for the parties conducted a teleconference on June 21, 2011. David

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Sepanik participated on behalf of Apple. Clara Shin participated on behalf of Amazon.

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1.

Jurisdiction and Service: Jurisdiction is proper in this Court pursuant to 28 U.S.C.

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§§ 1331 and 1338, 15 U.S.C. §§ 1116 and 1125, and 28 U.S.C. § 1367. Venue is proper in this

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judicial district because a substantial part of the events giving rise to these claims occurred in this

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district and the parties reside in this district for purposes of 28 U.S.C. § 1391(b) and (c). This

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case is not subject to the intra-district venue provisions of Northern District of California Local

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Rule 3-2(c) because it is an intellectual property case. All parties have appeared.

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2.

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(a) Plaintiff’s Statement: Apple introduced the APP STORE service and coined the APP

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STORE trademark in 2008. This revolutionary service allows users of Apple’s iPhone, iPod, and

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iPad mobile devices, and users of computers running Apple’s iTunes software, to browse for and

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license a wide range of third party software programs. The service has experienced phenomenal

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growth and success, and is now used by over 160 million consumers worldwide who have

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downloaded more that 10 billion software programs. Apple has spent hundreds of millions of

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dollars promoting the APP STORE service and APP STORE mark and has vigorously defended

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the mark from infringement by third parties. Apple has trademark registrations in APP STORE in

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over fifty foreign jurisdictions and has a trademark registration pending in the United States

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Patent and Trademark Office. As a result of Apple’s efforts, the majority of consumers in the

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United States perceive APP STORE as a trademark.

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Facts:

In approximately January 2011, Amazon began soliciting developers to participate in a

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future mobile software download service under the infringing mark APPSTORE. On March 22,

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2011, despite multiple demands from Apple that Amazon discontinue use of the infringing mark,

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Amazon publicly launched its mobile download service under the infringing mark APPSTORE.
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JOINT CASE MANAGEMENT
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CV 11-01327 PJH

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Apple therefore brought this action for trademark infringement and dilution under state and

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federal law and unfair competition under state law.

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Amazon claims, among other things, that APP STORE is a generic term that is not subject

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to trademark protection, that its use of the mark APPSTORE is a fair use, and that Apple has

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suffered no harm. Apple disputes these contentions and has brought a motion for a preliminary

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junction which is currently pending before the Court.

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(b) Defendant’s Statement:

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Apple did not coin the terms “app” or “app store,” and does not own a federal registration

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for the term “app store.” The word “app” has been around for decades and is generic for

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“applications” that smartphone users download to their phones. For instance, in 2006, the

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company Salesforce.com announced its vision for an app store. Apple itself has used “app store”

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in its generic sense, and there is significant evidence of generic use of “app store” by the media,

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industry press, competitors, and consumers. As of March 2011, there were over 2,100 active

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registered domain names containing the term “app store.”

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Amazon went online in 1995 at www.amazon.com, starting as an online bookstore. It

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soon diversified, selling DVDs, CDs, MP3 downloads, computer software, video games,

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electronics, apparel, furniture, toys, and more. Amazon decided in 2010 to sell Android

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smartphone apps through its own online store—Amazon Appstore for Android. Amazon made

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public its intention to open an app store for Android apps in October 2010. On March 22, 2011,

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Amazon launched Amazon Appstore for Android on www.amazon.com. Amazon Appstore for

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Android is an app store that allows consumers to view and download apps for their Android

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devices. As reflected by its name and explained on Amazon’s website, apps sold at Amazon

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Appstore for Android are compatible only with Android devices. Thus, only customers who own

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Android devices and have downloaded the Amazon Appstore for Android app onto their Android

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smartphone may use Amazon Appstore for Android. Amazon Appstore for Android does not

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offer apps for use with Apple mobile devices such as the iPhone, iPad, or iPod. In other words,

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even if “app store” were not generic, there is no likelihood of confusion because apps sold

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through Amazon Appstore for Android work only on Android smartphones while apps sold
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through Apple’s App Store work only on Apple’s mobile devices. Customers who have shopped

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for and purchased expensive mobile devices are sophisticated and understand that any apps they

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acquire must be compatible with the device they own. There is likewise no likelihood of dilution

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as the term “app store” is not famous, exclusive, or distinctive; nor is it the category of mark that

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meets the statutory criteria for dilution.

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3.

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Legal Issues
(1)

Whether Apple owns a valid trademark in APP STORE or whether

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Amazon has the right to use the words “app store” in connection with Amazon’s online

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app store that provides apps for Android devices.

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(2)

the term APPSTORE infringes Apple’s mark.

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(3)

If Apple owns a valid trademark in APP STORE, whether Amazon’s use of

the term APPSTORE has caused dilution of Apple’s mark.

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If Apple owns a valid trademark in APP STORE, whether Amazon’s use of

(4)

If Apple owns a valid trademark in APP STORE, whether Amazon’s use of

the term APPSTORE is a fair use.

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(5)

Whether Apple alleged any facts to establish unlawful and/or unfair

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business practices in violation of the California Unfair Competition Law, Cal. Bus. &

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Prof. Code §§17200 et seq.

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(6)

Whether Apple is entitle to preliminary or permanent injunctions

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prohibiting Amazon from using the words “app store” in connection with Amazon’s

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online app store that provides apps for Android devices.

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(7)

Whether Apple is entitled to any damages or any form of specific relief.

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(8)

Whether Amazon is entitled to a declaration that Amazon’s use of the

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words “app store” does not infringe or dilute any trademark rights or other rights of

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Apple.

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(9)

Whether Amazon is entitled to costs and its attorneys’ fees and expenses

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incurred in this matter as an exceptional case under 15 U.S.C. §1117.

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4.

Motions:
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On April 13, 2011, Apple filed a Motion for Preliminary Injunction. (Docket No. 18.)

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That motion is fully briefed and argued and is now pending before the Court. The parties

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anticipate that summary judgment motions will likely be filed on the issues of trademark validity,

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infringement, dilution, and the fair use defense pursuant to the schedule set forth in paragraph 17.

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5.

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Apple anticipates amending its complaint to change the statute supporting its fourth cause

Amendment of Pleadings:

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of action from California Business & Profession Code § 14330 to California Business &

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Professions Code § 14247. The parties do not anticipate making any other amendments to the

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pleadings at this time.

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6.

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The parties acknowledge their obligations regarding evidence preservation and agree to

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Evidence Preservation:

abide by such obligations.

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The parties will exchange Rule 26(a)(1) initial disclosures by agreement on July 5, 2011.

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8.

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The parties anticipate discovery will be taken on at least the following topics:

Disclosures

Discovery:

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(1) trademark validity or the lack thereof; (2) Apple’s attempt to register the term “app store” in

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the United States Patent and Trademark Office; (3) consumer confusion or the lack thereof; (4)

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trademark dilution or the lack thereof; (5) Apple’s generic use of “app store,” if any; (6) Apple’s

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advertising and promotion efforts of the term “app store” and its App Store; (7) Apple’s

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communications with other companies regarding these third parties’ use of the term “app store”;

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(8) Apple’s decision to use the term “app store” in connection with its products or services; (9)

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the intent of Amazon in using "appstore," including in "Amazon Appstore for Android"; (10)

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potential market expansion or the lack thereof; and (11) damages or the lack thereof. The parties

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anticipate proposing a joint protective order to the Court. The parties also anticipate that they will

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agree to a procedure for producing electronically-stored information, if any such production is

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required. The parties currently do not believe that any changes to the limitations on discovery

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imposed by the Rules of Civil Procedure are necessary. The parties’ requested discovery

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schedule is set forth in paragraph 17 below.

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This is not a class action.

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10.

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Currently, there are no pending related cases.

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11.

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(a) Plaintiff’s Statement: Apple requests that: judgment be entered in its favor; Apple be

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Class Action:

Related Cases:

Relief:

awarded its damages and Amazon’s profits attributable to the infringement; an injunction issue

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preventing Amazon from using the APP STORE mark or any colorable variation thereof and

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preventing Amazon from causing any further dilution to Apple’s APP STORE mark; Apple be

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awarded its reasonable attorney’s fees and costs; the Court grant such other and further relief as it

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deems just and proper.

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(b) Defendant’s Statement:

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Amazon requests that: judgment be entered its favor; a declaration be issued that

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Amazon’s use of the words “app store” does not infringe or dilute any trademark rights or other

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rights of Apple; Amazon be awarded its costs and its attorney’s fees and expenses incurred in this

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matter as an exceptional case under 15 U.S.C. §1117; and any other and further relief as the Court

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deems appropriate.

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12.

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Settlement and ADR: The parties will discuss alternative dispute resolution after

sufficient discovery has been taken to permit evaluation of the claims and defenses raised.
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Consent to Magistrate Judge For All Purposes: On March 21, 2011, Apple

declined to consent to the assignment of this matter to a Magistrate Judge for all purposes.
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Other References: The parties agree that this case is not suitable for reference to

binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation.
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Narrowing of Issues: The parties have not yet identified areas where they may

narrow the issues in dispute but will revisit this issue as discovery progresses.
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Expedited Schedule: The parties agree that this case cannot be handled on an
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expedited basis with streamlined procedures.

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17.

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(a) Plaintiff proposes the following schedule:

Scheduling:

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Close of all fact discovery: December 16, 2011.

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Last day to serve expert disclosures and reports (FRCP 26(a)(2)): January 13,

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2012.

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Last day to serve rebuttal expert reports: January 27, 2012.

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Close of expert discovery: February 24, 2012.

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Last day to file dispositive motions: March 23, 2012.

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Pre-trial disclosures (FRCP 26(a)(3)): June 8, 2012.

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Final pretrial conference: July 1, 2012.

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Trial: July 9, 2012.

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(b) Defendants propose the following schedule:

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Defendants’ proposed schedule is based on a trial date beginning on July 30, 2012. Lead

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counsel for Amazon currently has an antitrust jury trial scheduled before Magistrate Judge

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Elizabeth D. Laporte (No. CV 09-5535 EDL) set to begin on May 7, 2012 and to continue for two

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to three weeks or more. As the duration of that trial is presently uncertain, a trial date set in this

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matter for July 30, 2012 is respectfully requested so that there can be proper preparation.

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Close of all fact discovery: January 20, 2012.

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Last day to serve expert disclosures and reports (FRCP 26(a)(2)): February 17,

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2012.

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Last day to serve rebuttal expert reports: March 19, 2012.

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Close of expert discovery: April 9, 2012.

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Last day to file dispositive motions: May 7, 2012.

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Pre-trial disclosures (FRCP 26(a)(3)): June 29, 2012.

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Final pretrial conference: July 23, 2012.

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Trial: July 30, 2012.

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Trial: The parties have requested that this case be tried to a jury. The parties

currently anticipate that trial of this matter will require eight days of testimony.

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19.

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Apple filed its L.R. 3-16 certification on March 18, 2011 (Docket No. 8); Amazon.com,

Disclosure of Non-Party Interested Entities or Persons:

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Inc filed its L.R. 3-16 certification on April 8, 2011 (Docket No. 12); and Amazon Digital

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Services, Inc. filed its L.R. 3-16 certification on April 18, 2011 (Docket No. 31). The parties

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disclosed no non-party interested entities or persons.

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20.

Other Matters: The parties do not have any other matters to address with the Court

at this time.

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Dated: June 23, 2011

DAVID R. EBERHART
RYAN J. PADDEN
DAVID J. SEPANIK
O’MELVENY & MYERS LLP

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By: /s/ David R. Eberhart
David R. Eberhart
Attorneys for Plaintiff
Apple Inc.

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JOINT CASE MANAGEMENT
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CV 11-01327 PJH

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Dated: June 23, 2011

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

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By: /s/ Clara J. Shin
Clara J. Shin
Attorneys for Defendants
Amazon.com, Inc and Amazon Digital
Services, Inc.

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JOINT CASE MANAGEMENT
STATEMENT
CV 11-01327 PJH