Google Inc. v. American Blind & Wallpaper Factory, Inc.

Filing 104

Attachment 2

Declaration in Support of 102 MOTION to Compel ABWF to (1) Produce Documents, (2) Produce an Affidavit, and (3) Schedule Depositions filed byGoogle Inc., Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G# 8 Exhibit H# 9 Exhibit I# 10 Exhibit J# 11 Exhibit K# 12 Exhibit L# 13 Exhibit M# 14 Exhibit N)(Related document(s)102) (Krishnan, Ajay) (Filed on 6/8/2006)

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Google Inc. v. American Blind & Wallpaper Factory, Inc. Doc. 104 Att. 2 Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 1 of 24 EXHIBIT B " Dockets.Justia.com Case 5:03-cv-05340-JF , .. " Document 104-3 Filed 06/08/2006 Page 2 of 24 RECEIVED Robert N. Phillips (SBN 120970) Ethan B. Andelman (SBN 209101) !, ;t 'I I �, liu' ~YH\l I''~ .., �UH 4 " 2t\05 '". ~--1E3T 1 2 3 HOWRY, LLP 525 Market Street, Suite 3600 San Francisco, CA 94105 Telephone: (415) 848-4900 4 Facsimile: (415) 848-4999 5 David A. RameIt (Admitted Pro Hac Vice) Susan J. Greenspon (Admitted Pro Hac Vice) 6 Dawn M. Beery (Admitted Pro Hac Vice) KELLEY DRYE & WARN LLP 7 8 333 West Wacker Drive, Suite 2600 Chicago, IL 60606 Telephone: (312) 857-7070 Facsimile: (312) 857-7095 9 Attorneys for Defendant/Counter-Plaintiff 10 AMRICAN BLIN AND W ALLP APER FACTORY, INC. 11 12 13 GO UNTED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORN OGLE INC., a Delaware corporation, Plaintiff, v. Case No. C03-5340-JF (EAI) 14 15 16 AMERICAN 17 d//a decoratetoday.com, Inc.; and DOES 1- BLIN & WALLPAPER FACTORY,INe., a Delaware corporation AMERICAN BLIND & W ALLP APER FACTORY, INC.'S RESPONSES TO OGLE, INC.'S FIRST SET OF GO REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS 18 100, inclusive, Defendants. 19 AMERICAN BLIN & W ALLP APER 20 FACTORY, INe., a Delaware corporation 21 d//a decoratetoday.com, Inc., 22 23 v. Counter - Plainti ff, 24 GOOGLE, INC., AMERICA ONLIN, INC., NETS CAPE COMMUCATIONS CORPORATION, COMPUSERVE 25 INTERACTIVE SERVICES, INC., ASK 26 JEEVES, INC., and EARTHLIN, INe. 27 28 HOWREY LLP American Blind's Responses to Google's First Set of Document Counter- Defendants/ Requests Case No. C03-5340 JF (EAI) DM_US\8iI47&4.vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 3 of 24 1 Third- Party Defendants 2 3 PROPOUNING PARTY: PLAINTIFF/COUNTER-DEFENDANT GOOGLE, INe. RESPONDING PARTY: 4 DEFENDANT/COUNTER.PLAINTIFF AMERICAN BLIN & WALLPAPER FACTORY, INC. ONE 5 SET NUBER: 6 Defendant/Counter-Plaintiff American Blind & Wallpaper Factory, Inc. ("American Blind") 7 hereby answers PlaintiffCounter-Defendant Google, Inc.'s First Set Of Requests For Production Of 8 Documents And Things From American Blind & Wallpaper Factory, Inc. as follows: 9 REQUESTS 10 REQUEST NO.1: 11 All DOCUMENTS RELATING TO AMERICAN BLIND's selection, adoption and clearance of each ofthe AMERICAN BLIN MAS, including, but not limited to, searches, investigations, 12 reports and opinions. 13 RESPONSE TO REQUEST NO.1: 14 American Blind objects to this request because it is overbroad, unduly burdensome, and not 15 reasonably calculated to lead to the discovery of relevant or admissible evidence. American Blind also 16 objects to "this request to the extent that it calls for the production of documents protected by the 17 attorney client privilege or the attorney work product doctrine. Subject to and without waiving these 18 19 objections, American Blind states that it will produce any responsive documents in its possession 20 regarding the adoption and clearance of each of the American Blind Marks. 21 REQUEST NO.2: 22 All DOCUMENTS demonstrating that AMERICAN BLIN owns the AMERICAN BLIN 23 MAS. 24 RESPONSE TO REQUEST NO.2: Responsive documents wil be produced. 25 26 REQUEST NO.3: 27 28 HOWREY LLP American Blind's Responses to Google's First Set of All DOCUMENTS RELATING TO AMERICAN BLIND's first commercial use of each of the AMERICAN BLIN MAR. -2- Documents Requests Case No. C03.5340 JF (EAI) nM 1l"\R1147R4" i Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 4 of 24 1 RESPONSE TO REQUEST NO.3: 2 American Blind objects to this request because it is overbroad, unduly burdensome, and not 3 reasonably calculated to lead to the discovery of relevant or admissible evidence. Specifically, 4 5 Google's request for all documents related to American Blind's first commercial use ofthe American Blind Marks is overbroad and unduly burdensome. Subject to and without waiving these objections, 6 responsive documents will be produced that illustrate the date of first commercial useofthe American 7 8 Blind Marks. 9 REQUEST NO.4: each ofthe 10 All DOCUMENTS RELATING TO AMERICAN BLIND's first use of AMRICAN BLIN DOMAIN NAMES. 11 RESPONSE TO REQUEST NO.4: 12 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 13 14 burdensome, and not reasonably calculated to lead to the discovery afrelevant or admissible evidence. 15 Specifically, the phrase American Blind Domain Names is vague and ambiguous because Google 16 defines the term to mean a certain list of domain names (as set fort at page 2, paragraph 5 of Google 17 Inc.'s First Set Of Requests For Production Of Documents And Thngs From American Blind & 18 Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by or on behalf of 19 American Blind though which customers may purchase American Blind's products or services." American Blind owns approximately 500 Internet domain names, but at present it 'only actively uses 20 21 22 and markets approximately 12 domain names. Moreover, American Blind does not generally maintain 23 records for each individual domain name, rather information for all domain names owned by American 24 Blind is collected and maintained together. To the extent that this request calls for the production of 25 documents related to all 500 domain names owned by American Blind, it is overbroad and unduly 26 burdensome. Subject to 27 28 -3American Blind's Responses to Google's First Set of and without waiving these objections, American Blind will produce a listing of domain names owned by American Blind. To the extent that Google wants detailed information on Documents Requests HOWREY UP Case No. C03-5340 JF (EAI) DM US\8214784.vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 5 of 24 1 each of these domain names, that information is publicly available through the Internet at 2 ww.enom.com. 3 REQUEST NO.5: Copies of all advertising and promotional materials featuring the AMERICAN BLIN NAMES. AMERICAN BLIN DOMA 4 5 MARS or 6 RESPONSE TO REQUEST NO.5: 7 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 8 burdensome, and not reasonably calculated to lead to the discovery of relevant or admissible evidence. 9 As an initial matter, the phrase American Blind Domain Names is vague and ambiguous because 10 11 Google Inc.'s First Set Of Requests For Production Of Google defines the term to mean a certain list of domain names (as set forth at page 2, paragraph 5 of Documents And Thngs From American Blind 12 13 & Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by or on behalf 14 of American Blind through which customers may purchase American Blind's products or services." 15 American Blind owns approximately 500 Internet domain names, but at present it only actively uses 16 and markets approximately 12 domain names. Moreover, American Blind does not generally maintain 17 records for each individual domain name, rather information for all domain names owned by American 18 19 Blind is collected and maintained together. To the extent that this request calls for the production of documents related to all 500 domain names owned by American Blind, it is overbroad and unduly 20 Moreover, American Blind spends millons of dollars each year advertising the 21 burdensome. 22 American Blind Marks and domain names, including pervasive advertising in over forty national 23 magazines, on every major search engine, on national television and radio, and through milions of 24 direct mailings and catalogs distributed throughout the United States. American Blind has advertised 25 the American Blind Marks and domain names since its inception, and this request is not limited in 26 time. It would be extremely burdensome for American Blind to produce copies of all of its advertising 27 28 HOWREY LLP American Blind's Responses to Google's First Set of -4- Documents Requests DM US\8214784.vI " Case No. C03-5340 JF (EAI) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 6 of 24 1 and promotional materials ever created. Subject to and without waiving these objections, American 2 Blind will produce a sample of its more recent advertising and promotional materials. 3 REQUEST NO.6: All DOCUMENTS RELATING TO AMERICAN BLIND's efforts to defend its trademarks 4 5 and domain names. 6 RESPONSE TO REQUEST NO.6: 7 Americn Blind objects to this request because it is overbroad, unduly burdensome, and not 8 reasonably calculated to lead to the discovery of relevant or admissible evidence. As wrtten, this 9 request would require the production of every document submitted in every lawsuit brought by 10 11 American Blind to defend its trademark rights. These litigation files are voluminous and are not likely to lead to the discovery ofrelevant or admis~ible evidence in this case. In addition, American Blind 12 13 objects to this request to the extent that it seeks the production of attorney/client privileged 14 communications. Subject to and without waiving these objections, American Blind will produce 15 copies of cease and desist letters sent to entities infrnging and/or diluting American Blind's 16 trademarks and copies of initial pleadings filed by American Blind seeking to protect its trademark 17 rights. 18 REQUEST NO.7: All business plans, reports, analyses .and research RELATING TO the AMERICAN BLIN forecasts, or projections. 19 20 MAS and AMERICAN BLIN DOMAIN NAMES, including, but not limited to, strtegic plans, 21 22 RESPONSE TO REQUEST NO.7: American Blind has no documents responsive to this request. 23 24 REQUEST NO.8: 25 All of AMERICAN BLIND's quarterly and annual audited financial statements and annual reports from 1997 to the present, including all corresponding notes and schedules. 26 27 28 HOWREY LLP American Blind's Responses to Google's First Set of -5- Documents Requests Case No. C03-5340 JF (EAT) DM US\8214784.vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 7 of 24 1 RESPONSE TO REQUEST NO.8: 2 3 American Blind objects to this request because it is overbroad, unduly burdensome, and not 4 reasonably calculated to lead to the discovery of relevant or admissible evidence. To the extent that 5 this request calls for the production of notes and schedules to American Blind's audited financial 6 7 statements, it is overbroad and unduly burdensome. American Blind will produce its annual audited financial statements from 1997 to the present. American Blind states that it does not prepare quarterly 8 9 audited financial statements. 10 REQUEST NO.9: 11 All DOCUMENTS demonstmting AMERICAN BLIND's monthly gross revenues from products and services sold under the AMERICAN BLIN MARS from the first use of those marks 12 to the present. 13 RESPONSE TO REQUEST NO.9: 14 American Blind objects to this request as over broad and unduly burdensome. Revenues from 15 products and services sold under the American Blind Marks is equivalent to total company revenues 16 because virtally all, ifnot all, of the products and services sold by American Blind are sold under the 17 American Blind Marks. As a result, the quantity of documents demonstrating monthly gross revenues 18 19 for American Blind is extremely voluminous and would be very burdensome to assemble and produce. 20 In addition, American Blind has been using its Marks since at least 1986 and it would be extremely 21 burdensome, if not impossible, to produce documents relating to monthly gross revenues for such a 22 long time period. Subject to and without waiving these objections, American Blind states that it will 23 produce annual audited financial statements from 1997 to the present. 24 REQUEST NO.1 0: 25 All DOCUMENTS demonstrating AMERICAN BLIN's monthly gross revenues from 26 products and services sold through the AMERICAN BLIN DOMAIN NAMES on a monthly basis from the first use ofthose domain namesto the present. 27 28 HOWREY LLP American Blind's Responses to Google's First Set of -6- Documents Requests Case No. C03-5340 JF (EAI) DM,US\8Z147&4_vl , Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 8 of 24 1 RESPONSE TO REQUEST NO. 10: 2 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 3 burdensome, and not reasonably calculated to lead to the discovery of relevant or admssible evidence. 4 5 As an initial matter, the phrase American Blind Domain Names is vague and ambiguous because Google defines the term to mean a certain list of domain names (as set forth at page 2, paragraph 5 of Google Inc.'s First Set Of Requests For Production Of 6 Documents And Things From American Blind 7 or on behalf 8 & Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by 9 of American Blind through which customers may purchase American Blind's products or services." 10 American Blind owns approximately 500 Internet domain names, but at present it only actively uses 11 and markets approximately 12 domain names. Moreover, American Blind does not generally maintain 12 13 records for each individual domain name, rather information for all domain names owned by American Blind is collected and maintained together. To the extent that this request calls for the production of 14 17 and/or separate revenues from or between its hitemetdomain names and its toll-free telephone 18 numbers. For example, customers often shop for products on American Blind's website and then call 19 its toll-free number to place an order. It is unclear from Google's request whether such sales would 20 21 qualify as made "through the Amencan Blind domain names" or not. Subject to and without waiving these objections, American Blind states that it wil produce annual audited financial statements from 22 23 1997 to the present. 24 REQUEST NO. 11: 25 All DOCUMENTS demonstrating AMERICANBLIN MARS from themonthly profits and/or lossesmarks BLIND's first use of those for products and services sold under the AMERICAN 26 to the present. 27 28 HOWREY llP American Blind's Responses to Google's First Set of -7- Documents Requests DM US\82147�t4.vl Case No. C03-5340 JF (EAl) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 9 of 24 1 RESPONSE TO REQUEST NO.l1: 2 American Blind objects to this request as over broad and unduly burdensome. Profits and/or 3 losses from products and servces sold under the American Blind Marks is equivalent to total company 4 5 profits and/or losses because virtally all, if not all, of the products and services sold by Ameri�an Blind are sold under the American Blind Marks. As a result, the quantity of documents demonstrating 6 monthly profits and/or losses for American Blind is extremely voluminous and would be very 7 8 burdensome to assemble and produce. In addition, American Blind has been using its Marks since at 9 least 1986, and it would be extremely burdensome, if not impossible, to produce documents relating to 10 monthly profits and/or losses for such a long time period. Subject to and without waiving these 11 objections, American Blind states that it will produce anual audited financial statements from 1997 to 12 13 the present. REQUEST NO. 12: 14 All DOCUMENTS demonstrating AMERICAN BLIND's monthly profits and/or losses for 15 products and services sold though the AMERICAN BLIN DOMAIN NAMES on a monthly basis from the first use ofthose domain names to the present. 16 17 RESPONSE TO REQUEST NO. 12: American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 18 19 burdensome, and not reasonably calculated to lead to the discovery of relevant or admissible evidence. 20 As an initial matter, the phrase American Blind Domain Names is vague and ambiguous because 21 Google defines the term to mean a certain list of domain mimes (as set forth at page 2, paragraph 5 of Google Inc.'s First Set Of Requests For Production Of Documents And 22 23 Things From American Blind & Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by or on behalf 24 25 of American Blind though which customers may purchase American Blind's products or services." American Bliiid owns approximately 500 Internet domain names, but at present it only actively uses and markets approximately 12 domain names. Moreover, American Blind does not generally maintain -8- 26 r- 27 28 HOWREY LLP American Blind's Respnses to GoogJe's First Set of Documents Requests Case No. C03-5340 JF (EAl) DM ii~\R7T47R4,vT Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 10 of 24 1 records for each individual domain name, rather information for all domain names owned by American 2 Blind is collected and maintained together. To the extent that this request calls for the production of 3 documents related to all 500 domain names owned by American Blind, it is overbroad and unduly 4 5 burdensome. In addition, it is very diffcult for American Blind to attempt with accuracy to divide and/or separate profits and/or losses from or between its Internet domain names and its toll-free 6 7 telephone numbers. For example, customers often shop for products on American Blind's website and 8 then call its toll-free number to place an order. It is unclear from Google's request whether such sales 9 would qualify as made "though the American Blind domain names" or not. Subject to and without 10 waiving these objections, American Blind states that it will produce annual audited financial 11 statements from 1997 to the present. 12 REQUEST NO. 13: 13 All DOCUMENTS demonstrating AMERICAN BLIND'S monthly advertising and 14 promotional expenditues for products or services marketed under the AMERICAN BLIN MAKS 15 from the first use of those marks to the present. 16 RESPONSE TO REQUEST NO. 13: 17 18 Since all of American Blind's products and services are marketed under the American Blind Marks, this request is actually requesting all documents demonstrating American Blind's monthly advertising and promotional expenditues. American Blind objects to 19 this request because it is vague, 20 ambiguous, overbroad, unduly burdensome, and notreasonably calculated to lead to the discovery of 21 relevant or admissible evidence. As an initial matter, the phrase "advertising and promotional expenditures" is vague and ambiguous because it is unclear what fixed and/or variable expenses qualify in Google's view as "expenditures," nor has Google made any distinction between marketing 22 23 24 25 expenditures and what are properly includable as advertising and promotional expenditures. In 26 addition, this request is overbroad because American Blind began using its Marks as early as 1986, and 1" 27 it would be too burdensome to produce documents dating from 1986, assuming that they even exist. -9- 28 HOWRE LLP American Blind's Responses to Google's First Set of Documents Requests C."se No. C03-5340 JF (EAI) a llC\O"llA"7Q;I ",.1 nl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 11 of 24 1 Subject to and without waiving these objections, American Blind states that it will produce documents 2 generally evidencing anual advertising expenditues. 3 REQUEST NO. 14: All DOCUMENTS demonstrating AMERICAN BLIND's monthly advertising and 4 5 promotional expenditues for products and services sold though the AMERICAN BLIN DOMAIN NAMS from the first use of those domain names to the present. 6 RESPONSE TO REQUEST NO. 14: 7 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 8 9 burdensome, and not reasonably calculated to lead to the discovery of relevant or admi.ssible evidence. 10 As an initial matter, the phrase American Blind Domain Names is vague and ambiguous because 11 Google defines the term to mean a certain list of domaiii names (as set forth at page 2, paragraph 5 of 12 Google Inc.'s First Set Of Requests For Production Of Documents And Things From American Blind 13 & Wallpaper Factory, Inc.) and then includes ..any other Internet domain name owned by or on behalf 14 15 of American Blind though which customers may purchase American Blind's products or services." 19 Blind is collected and maintained together. To the extent that this request calls for the production of 20 documents related to all 500 domain names owned by American Blind, it is overbroad and unduly 21 burdensome. In addition, the phrase ..advertising and promotional expenditues" is vague and ambiguous because it is unclear what fixed and/or variable expenses qualify in Google's view as 22 23 .'expenditues," nor has GoogJe made any distinction between marketing expenditures and what are 24 25 properly includable as advertising and promotional expenditures. In addition, this request is overbroad 26 because American Blind began using its domain names many years ago, and it would be too , 27 burdensome to produce documents from such a long time ago, assuming that they even exist. Finally, 28 HOWREY LlP American Blind's Responses to Google's First Set of -10- Documents ReqUests Case No. C03-5340 JF (EAl) T'M ii.C:ISI?lil7S1il,,1 Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 12 of 24 1 American Blind's advertising expenditures are not necessarily separated to reflect advertising 2 expenditures for products and services sold through the American Blind domain names as opposed to 3 through other channels. Subject to and without waiving these objections, American Blind states that it 4 5 wil produce documents generally evidencing annual advertising expenditures. REQUEST NO. 15: 6 All DOCUMNTS identifyng the weekly number of 7 reachable through the AMRICAN BLIN DOMAI NAMES from the first use of hits received by each of the websites those domain 8 names to the present. 9 RESPONSE TO REQUEST NO. 15: 10 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly 1 1 burdensome, and not reasonably calculated to lead to the discovery of relevant or admissible evidence. 12 As an initial matter, the phrase American Blind Domain Names is vague and ambiguous because 13 GoogJe defines the term to mean a certain list of domain names (as set forth at page 2, paragraph 5 of 14 15 Google Inc.' s First Set Of Requests For Production Of Documents And Thngs From American Blind & Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by or on behalf 16 17 of American Blind through which customers may purchase American Blind's products or services." 18 American Blind owns approximately 500 Internet domain names, but at present it only actively uses 19 and markets approximately 12 domain names. Moreover, American Blind does not generally maintain 20 records of "hits" for each individual domain name; rather information for all domain names owned by 21 American Blind is collected and maintained together. To the extent that this request calls for the production 22 23 of documents related to an 500 domain names owned by American Blind, it is overbroad 24 and unduly burdensome. In addition, American Blind has been using certain of its domain names for 25 many years and this request, which calls for the production of document from the first use of the 26 domain names to the present is overbroad in its time frame. Finally, this request is vague and 27 ambiguous because it is unclear what exactly Google means by the phrase "number of hits received." 28 HOWREY LLP -llAmerican Blind's Responses to Google's F�rst Set ofDc)Cuments Requests Case No. C03-5340 JF (EA1) DM US\8214784.vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 13 of 24 1 REQUEST NO. 16: 2 All DOCUMENTS identifyng the weekly number of unque users accessing the web sites reachable though the AMERICAN BLIN DOMA NAMS from the first use ofthose domain 3 names to the present. . 4 RESPONSE TO REQUEST NO. 16: 5 American Blind objects to this request because it is vague, ambiguous, overbroad, unduly burdensome,and not reasonably calculated to lead to the discovery of relevant or admissible evidence. 6 7 As an intial matter, the phrase American Blind Domain Names is vague and ambiguous because 8 9 10 Google defines the term to mean a certain list of domain names (as set forth at page 2, paragraph 5 of Google Inc.'s First Set Of Requests For Production Of Documents And Thngs From American Blind 1i & Wallpaper Factory, Inc.) and then includes "any other Internet domain name owned by or on behalf 12 13 of American Blind through which customers may purchase American Blind's products or services." American Blind owns approximately 500 Internet domain names, but at present it only actively uses 14 15 and markets approximately 12 domain names. Moreover, American Blind does not generally maintain records for each individual domain name; rather information for all domain names owned by American 16 17 Blind is collected and maintained together. To the extent that this request calls for the production of documents related to all 500 domain names owned by 18 American Blind, it is overbroad and unduly 19 burdensome. In addition, American Blind has been using certain of its domain names for many years 20 and this request, which calls for the production of document from the first use of the domain names to 21 the present is overbroad in its time frame. Finally, this request is vague and ambiguous because it is 22 23 unclear what exactly Google means by the phrase "unique users." For example, if a consumer visits the American Blind website on Monday and then again on Tuesday, does he/she only constitute one unique user for that week? In contrast, if a consumer visits the American Blind website on Friday and 24 25 26 then again the following Monday, does he/she constitute a separate unique user for both weeks? i ,~ 27 28 HOWREY lLP American Blind's Responses to Google's First Set of -12- Case No. C03-5340 JF (EAl) , DM_US\82J4784.vl Documents Requests Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 14 of 24 1 REQUEST NO. 17: 2 All DOCUMNTS RELATING TO COMMICA nONS between AMERICAN BLIN AN GOOGLE. 3 4 RESPONSE TO REQUEST NO. 17: American Blind objects to this request because it is over broad, unduly burdensome, and not 5 6 reasonably calculated to lead to the discovery of relevant or admissible evidence. American Blind 7 presently is a customer of Google and, therefore, regularly communicates with Google representatives 8 concernng business matters, including but not limited to American Blind's advertising campaign with 9 Google. In addition, this request is overbroad because it is not limited to any definite period of time 10 11 and American Blind has been doing business with Google for many years. Subject to and without waiving these objections, American Blind will produce electronic communcations between American 12 the 13 Blind and Google regarding Google's sale of American Blind's trademarks as keywords as part of 14 AdW ords program, as wen as monthly invoices received from Google concerning American Blind's 15 paricipation in Google's AdWords program. 16 REQUEST NO. 18: 17 All DOCUMNTS RELATING TO COMMCATIONS between AMERICAN BLIN and DEFENDANTS. 18 the THIR-PARTY 18: 19 RESPONSE TO REQUEST NO. 20 American Blind objects to ths request because it is over broad, unduly burdensome, and not relevant or admissible evidence. American Blind has 21 reasonably calculated to lead to the discovery of 22 communicated with the third-party defendants concerning business matters, including but not limited 23 to potential advertising campaigns, which have no relevance to the current dispute. Subject to and 24 25 without waiving these objections, American Blind states that it has no documents relating to direct communications with the third-pary defendantsregarding the sale of American Blind's trademarks as 26 27 keywords. 28 HOWREY LLP American Blind's Responses to Google's First Set of -13- Documents Requests nM 1 J"IR� 147R4 v 1 Case No. C03-5340 JF (EAI) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 15 of 24 1 REQUEST NO. 19: 2 All DOCUMENTS RELATING TO any trademark, servicemark, trade name, Internet domain 3 assignent or otherwse, for name, or any other application/registration owned by or on behalf of AMRICAN BLIN, through any name, mark, or designation comprised of or containing the 4 AMERICAN BLIN MARS, or any variation thereof. 5 RESPONSE TO REQUEST NO. 19: 6 Responsive documents, to the extent that they exist, will be produced. 7 REQUEST NO. 20: 8 All DOCUMENTS RELATING TO any research, reports, surveys, investigations, or studies conducted by or on behalf of AMERICAN BLIN, relating to consumer or customer perception, 9 understanding or recognition of any name, mark or designation comprised of or containing the 10 AMERICAN BLIN MARS, or any variation thereof 11 RESPONSE TO REQUEST NO. 20: 12 American Blind objects t� this Interrogatory on the grounds that it is prematue given that 13 American Blind has not yet received meaningful discovery responses from Google and has not yet had 14 an opportnity to take any depositions in this case. American Blind fuer objects to this 15 Interrogatory on the ground that it seeks information that wil likely be the subject of expert testimony 16 prior to the time for disclosure of expert opinions. American Blind further objects to this request to the 17 extent it calls for the production of documents protected by the attorney/client privilege and/or the 18 attorney work product doctrne. Subject to and without waiving these objections, American Blind will 19 20 produce responsive non-privileged documents, to the extent that they exist, regarding consumer or 21 customer perceptions of the American Blind Marks. 22 REQUEST NO. 21: 23 All DOCUMENTS RELATING TO GOOGLE or any of the THIR-PARTY DEFENDANTS. 24 RESPONSE TO REQUEST NO. 21: 25 American Blind objects to this request because it is over broad, unduly burdensome, and not reasonably calculated to lead to the discovery of relevant or admissible evidence. Ths request is so 26 27 overbro�d as to be without meaning. 28 HOWREY UP American Blind's Responses to Google's First Set of -14- nlrll l1Q\2'l1.d7RLI v1 . Case No. C03-5340 JF (EAl) Documents Requests Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 16 of 24 1 REQUEST NO. 22: 2 DOCUMENTS identifying AMRICAN BLIND's corporation strctue, including divisions and departents. 3 4 RESPONSE TO REQUEST NO. 22: Responsive documents, to the extent that they exist, wil be produced. 5 6 REQUEST NO. 23: DOCUMENTS identifying AMERICAN BLIND's employees and their job descriptions. 7 8 RESPONSE TO REQUEST NO. 23: 9 American Blind objects to this request because it is over broad, unduly burdensome, and not 10 reasonably calculated to lead to the discovery of relevant or admissible evidence. American Blind has 11 more thana hundred employees, each with slightly varng job descriptions. To the extent that this these 12 request seeks each employee's job description, it is overbroad. Subject to and without waiving 13 objections, American Blind will produce an employee roster identifyng the individuals that presently \J 14 work for American Blind andthe department in which they work. 15 16 REQUEST NO. 24: 17 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Defendant Google actively solicits others to purchase not only American Blind's registered and unegistered trademarks, 18 but also virtally every conceivable iteration of these marks." 19 RESPONSE TO REQUEST NO. 24: 20 American Blind objects to this request to the extent it calls for the production of documents 21 protected by the attorney/client privilege and/or the attorney work product doctrne. Subject to and 22 23 24 without waiving ths objection, responsive documents, to the extent that they exist, wil be produced. However, American Blind believes that the requested documents are largely within the possession and custody of Google and American Blind's competitors. Discovery and investigation continue and this 25 26 response may be supplemented as required. 27 28 HOWRE llP American Blind's Responses to Google's First Set of -15- Documents Requests �_a~~ N~~.�~.?-5?40 JF (EAI) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 17 of 24 1 REQUEST NO. 25: 2 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Defendants have 3 to deliberately manpulated their search engine 'results' so that, when consumers use these search engines find American Blind's products and services, the consumers are unwittingly diverted to competitors' 4 products and services." 5 RESPONSE TO REQUEST NO. 25: 6 American Blind objects to this request to the extent it calls forthe production of documents 7 protected by the attorney/client privilege and/or the attorney work product doctrne., Subject to and 8 without waiving this objection, responsive documents, to the extent that they exist, will be produced. 9 However, American Blind believes that the requested documents are largely within the possession and 10 custody of Google and American Blind's competitors. Discovery and investigation continue and this 11 response may be supplemented as required. 12 13 REQUEST NO. 26: All DOCUMENTS RELATING TO AMRICAN BLIND's contention that "the American 14 outstanding celebrity as a source of quality home decorating products have acquired an Blind Marks 15 and related services." 16 RESPONSE TO REQUEST NO. 26: 17 American Blind objects to this request because it is overbroad and unduly burdensome because 18 it would require the production of all of American Blind's advertising, marketing, and promotional i 9 materials. American Blind furter objects to this request on the ground that it seeks information that 20 21 will likely be the subject of expert testimony prior to the time for disclosure of expert opinons. American Blind objects to this request to the extent it calls for the production of documents protected 22 23 by the attorney/client privilege and/or the attorney work product doctrine. Subject to and without 24 waiving these objections, responsive documents, to the extent that they exist, will be produced. 25 REQUEST NO. 27: 26 All DOCUMENTS RELATING TO AMERICAN BLIND's contention that "(t)he public has used and now uses the American Blind Marks to'identify American Blind and its home decorating 27 28 HOWREY lLP American Blind's Responses to Google's First Set of -16- Documents Requests Div i iC;\ll7147R4 vI Case No. C03-5340 JF (EAI) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 18 of 24 1 products and related services from the home decorating products and related services offered by others(.)" 2 4 3 RESPONSE TO REQUEST NO. 27: American Blind objects to this request because it is overbroad and unduly burdensome because 5 it would require the production of all of American Blind's advertising, marketing, and promotional 6 materials. American Blind further objects to this request on the ground that it seeksinformati�n that 7 will likely be the subject of expert testimony prior to the time for disclosure of expert opinions. 8 American Blind objects to this request to the extent it calls for the production of documents protected 9 by the attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving these objections, responsive documents, to the extentthat they exist, will be produced. 10 11 12 REQUEST NO. 28: 13 AllpDOCUMENTS itself confsingTO AMERICAN BLIND's allegation that "(t)he designation 'S onsored Link' Is RELATING and misleading." 14 15 RESPONSE TO REQUEST NO. 28: American Blind objects to this Interrogatory on the ground that it seeks information that wil likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 16 17 18 Blind objects to this request to the extent it calls for the production of documents protected by the 19 attorney/client privilege and/or the attorney work product doctrne. Subject to and without waiving 20 these objections, American Blind states that it does not presently have in its possession documents that 21 relate to the interpretation of Google's use ofthe word "Sponsored." American Blind believes that 22 there are numerous such documents In the possession of Google and other third paries. 23 REQUEST NO. 29: All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Google has sold 24 25 many keywords comprised, in whole or in part, of the American Blind marks, to competitors of American Blind:' 26 27 28 HOWREY UP American Blind's Responses to Google's First Set of -17- Documents Requests C..ase No. 1C03~5340 JF (EAI) ,,'I l' IP'\ 0.. A"7o.A ~.1 Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 19 of 24 1 RESPONSE TO REQUEST NO. 29: 2 American Blind objects to this request to the extent it calls for the production of documents 3 protected by the attorney/client privilege and/or the attorney work product doctrine. Subject to and 4 5 without waiving these objections, responsive documents, to the extent that they exist, wil be produced. However, American Blind believes that the requested documents are largely within the possession and 6 custody of Google and American Blind's competitors. Discovery and investigation continue and this 7 8 response may be supplemented as required. 9 REQUEST NO. 30: 10 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Google. . . actively promotes and encourages competitors to embark on a sweeping competitive raid on the 1 1 American Blind Marks and virtally every conceivable, though indistinguishable, iteration ofthose marks. " 12 13 RESPONSE TO REQUEST NO. 30: American Blind objects to this request to the extent it calls for the production of documents 14 15 protected by the attorney/client privilege and/or the attorney work product doctrine. Subject to and 16 without waiving these objections, responsive documents, to the extent that they exist, wil be produced. 17 However, American Blind believes that the requested documents are largely within the possession and 18 custody of Google and American Blind's competitors. 19 REQUEST NO. 31: 20 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Google 21 intentionally has designed its financially lucrative' AdWords' program to maximize the infrngement and dilution of American Blind's marks." 22 23 RESPONSE TO REQUEST NO. 31: American Blind objects to this request to the extent it calls for the production of documents 24 25 protected by the attorney/client privilege and/or the attorney work product doctrine. Subject to and 26 without waiving these objections, responsive documents, to the extent that they exist, will be produced. 27 28 HOWREY LLP American Blind's Responses to Google's First Set of -18- Documents Requests Case No. C03-5340 JF (EAI) DM lJS\l!214784.vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 20 of 24 1 However, American Blind believes that the requested documents are largely within the possession and 2 custody of Google and American Blind's competitors. 3 REQUEST NO. 32: All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Google has 4 5 knowingly sold the American Blind Marks in commerce and included them in Google's search engine for Google's own profit and to increase the competitive advantage of American Blind's competitors." 6 RESPONSE TO REQUEST NO. 32: 7 American Blind objects to this request to the extent it calls for the production of documents 8 protected by the attorney/client privilege 9 and/or the attorney work product doctrne. Subject to and 10 without waiving these objections, responsive documents, to the extent that they exist, will be produced. 11 However, American Blind believes that the requested documents are largely within the possession and 12 custody of Google and American Blind's competitors. 13 REQUEST NO. 33: 14 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Google adopted 15 and used this former trademark policy because it believed it would be, or could be, found liable for trademark infrngement or other related claims �fit did not block such purchases." RESPONSE TO REQUEST NO. 33: 16 17 American Blind objects to this request to the extent it calls for the production of documents 18 19 protected by the attorney/client privilege and/or the attorney work product doctrine. Subject to and 20 without waiving these objections, responsive documents, to the extent that they exist, will be produced. 21 However, American Blind believes that the requested documents are largely withi the possession and 22 custody of Google and American Blind's competitors. 23 REQUEST NO. 34: 24 All DOCUMENTS RELATING TO AMRICAN BLIND's allegation that "Defendants and 25 their advertisers are wrongfully profiting off of the goodwil and reputation of trademark owners such as American Blind." 26 27 28 HOWREY UP American Blind's Responses to Google's First Set of -19- Documents Requests Case No. C03-5340 JF (EAI) OM I ii;\~?ld7Rd vl Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 21 of 24 1 RESPONSE TO REQUEST NO. 34: 2 American Blind objects to this request to the extent it calls for the production of documents 3 protected by the attorney/client privilege and/or the attorney work product doctrine. Subject to and 4 5 without waiving these objections, responsive documents, to the extent that they exist, will be produced. However, American Blind believes that the requested documents are largely within the possession and custody of 6 Google and American Blind's competitors. 7 NO. 35: 8 REQUEST search engines are deceptive and mislead consumers into believing falsely that the website lins to 10 which they are directed via manpulated search 'results' links are sponsored or authorized by and/or originat(e) from American Blind(.l" 11 9 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Defendants' RESPONSE TO REQUEST NO. 35: 12 American Blind objects to this Interrogatory on the ground that it seeks information that will 13 14 likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 15 Blind objects to this request to the extent it calls for the production �f documents protected by the 16 attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving 17 these objections, responsive documents, to the extent that they exist, will be produced. 18 19 REQUEST NO. 36: All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "(t)he manipulated as a source of its goods 20 search engine 'results,' . . . dilute the ability of the American Blind Marks to identify American Blind and servces." 21 RESPONSE TO REQUEST NO. 36: 22 American Blind objects to this Interrogatory on the ground that it seeks information that will 23 24 likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 25 Blind objects to this request to the extent it calls for the production of documents protected by the 26 attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving 27 these objections, responsive documents, to the extent that they exist, wil be produced. 28 HOWREY LLP �merican Blind's Responses to Google's First Set of -20- Documents Requests Case No. C03-5340 JF (EAI) n~A TTC'\n"llA'7O'A ....1 Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 22 of 24 1 REQUEST NO. 37: 2 All DOCUMNTS RELATING TO AMERICAN BLIND's aUegation that "American Blind's customers have been and will likely continue to be confused about the origin and sponsorship of the 3 companies other than American Blind listed by the Defendants in their deceptive search engine 'results.' " 4 5 RESPONSE TO REQUEST NO. 37: 6 American Blind objects to this Interrogatory on the ground that it seeks information that will 7 likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 8 Blind objects to this request to the extent it calls for the production of documents protected by the 9 attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving 10 these objections, responsive documents, to the extent that they exist, will be produced. 11 REQUEST NO. 38: 12 All DOCUMENTS RELATING TO AMERICAN BLIND's allegation that "Defendants' actions steal customers from American Blind's website, divert consumers to inferior products and i 3 services, erode the distinctiveness of American Blind's Marks, and impair American Blind's honest and good faith efforts to promote and sell its products on the Internet." 14 RESPONSE TO REQUEST NO. 38: 15 American Blind objects to this Interrogatory on the ground that it seeks information that will 16 17 likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 18 Blind objects to this request to the extent it calls for the production of documents protected by the 19 attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving 20 these objections, responsive documents, to the extent that they exist, wil be produced. 21 REQUEST NO. 39: All DOCUMENTS RELATING TO AMERlCAN BLIND's allegation that "Defendants' 23 actions have caused damage and irreparable injur to American Blind." 24 RESPONSE TO REQUEST NO. 39: 22 25 American Blind objects to this Interrogatory on the ground that it seeks information that wil 26 likely be the subject of expert testimony prior to the time for disclosure of expert opinions. American 28 -2127 HOWREY LLP Blind objects to this request to the extent it calls for the production of documents protected by the American Blind's Responses to Google's First Set of Documents Requests Case No. C03-5340 JF (EAI) l�l\A 11~\Sl,)ld7QLf ,,1 . Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 23 of 24 1 attorney/client privilege and/or the attorney work product doctrine. Subject to and without waiving 2 these objections, responsive documents, to the extent that they exist, will be produced. 3 REQUEST NO. 40: All DOCUMENTS identified in, RELATING TO, or which were relied upon in responding to 4 5 Google's First Set ofInteITogatories to American Blind. 6 RESPONSE TO REQUEST NO. 40: 7 Responsive documents wil be produced. 8 REQUEST NO. 41: 9 All DOCUMNTS upon which AMERICAN BLIN wil rely in this lawsuit. 10 RESPONSE TO REQUEST NO. 41: 11 Responsive documents will be produced. 12 13 Dated: 14 15 June 10, 2005 HOWRY LLP 16 17 18 By: ROBERT N. PHILLIPS ~ ETH B. ANELMAN David A. Ramelt Susan J. Greenspon Dawn M. Beery 19 KELLEYDRYE & WARNLLP 20 21 333 West Wacker Drve, Suite 2600 Chicago, IL 60606 Attorneys for Defendant/Counter-Plaintiff AMERICAN BLIN AND W ALLP APER FACTORY, INC. 22 23 24 25 26 27 28 HOWREY LLP American Blind's Responses to Google's First Set of -22- Documents Requests faseT1~\Q,)1~7~" ,,1 T"M No. C03-5340 JF (EAI) Case 5:03-cv-05340-JF Document 104-3 Filed 06/08/2006 Page 24 of 24 1 PROOF OF SERVICE the United States and a resident of the State of 2 I am a citizen of California. I am employed in San Francisco County, State of Californa, in the office of a member of the bar of this Court, at whose 3 direction the service was made. I am over the age of eighteen years, and not a party to the within 4 action. My business address is 525 Market Street, Suite 3600, San Francisco, CA 94105. On the date set forth below, I served the document(s) described below in the maner described below: 5 AMERICAN BLIND & WALLPAPER FACTORY, INC.'S RESPONSES TO GOOGLE, INC.'S 6 FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS 7 8 VI MESSENGER Michael H. Page Mark A. Lemley Ravind S'. Grewal 9 10 11 Keker & Van Nest, LLP 710 Sansome Street San Francisco, CA 94111 Facsimile: (415) 397-7188 (BY FACSIMILE) I am personally and readily familiar with the business practice of Howrey Simon 12 Arold & White, LLP for collection and processing of document(s)to be transmitted by facsimile and I caused such document(s) on this date to be transmitted by facsimile to the offces of addTessee(s) at the numbers listed 13 below. 14 15 caused such document(s) described herein to be deposited for delivery to a facility regularly maintained by (BY FEDERA EXPRESS) I am personally and readily familar with the business practice ofHowrey Simon Arold & White, LLP for collection and processing of correspondence for overnight delivery, and I 16 Federal ExpTessfoT overnight delivery. 17 XX/(BY MESSENGER hand delivery by this date. ' the document(s) to an authorized courer SERVICE) on consigning and or process server for (BY U.S. MAIL) J am personally and readily familiar with the business practice of Howrey 19 SimondArold & White, LLP for collectionsuch processing of correspondence for mailing with the Unite States Postal Service, and I caused and envelope(s) with postage thereon fully prepaid to be 20 placed in the United States Postal Service at San Francisco, Californa. 21 18 Executed on June 10, 2005, at San Francisco, Califoibif ' 22 23 ... , () !_~ - /' ~ Patricia Cranmer � cctLLCOlU/0L tI ( (Signature) 24 25 26 27 28 HOWREY SIMON ARNOLD & .wl.llT~

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