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

Filing 188

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

Doc. 188 Att. 2

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 1 of 24

.. .
.

. . ..

.. .... . ... ....
. . ..

. . . ..

.. .

.

. ;.-. . . '. :,"' : ::. ':'.: . '. ........ . '. . . '. . . .,... . '. ". ',...~', ",;' .... ". . '.. . "... ':. . . '.", . ",. " .'..... ,. ". . . ".. . '.. '.. . '. . ~. .... '. . '. '. . . . .'

... .............-ExhibitB .. .. .'..... . . . .' . .
:,' : .' . '.' -.:

", . . ; ': '. . . '. . .' .".. ......:..:.;. '. .'~ ". '".... '. '. . " _. ... . ,,. " ". .' n. ',....:.:. '". . .... : '.' .,'.

'"; ", .'. . . ". ' " -. "'. ".. -. ... ',:. . : . . ", ",: ':. . '; -:: .'. ~. ','. . \"':- . : .'. ....... :..': .... ........... :", ":' ", " .""": .... ".'....-:.....' " ."'. . -',.

. ..... . .. . ..'... . . . .. ..
.',.'.". . .
. ..

.. ..

. ...' .

. . .. . . .'. .
Dockets.Justia.com

Case 5:03-cv-05340-JF
,s'':" . i

Document 188-3

Filed 09/07/2006

Page 2 of 24

..

,

1 Rober N. Philips (SBN 120970)

Ethan B.,Andelman (SBN 209101)

2 HOWRY,LLP
525 Market Street, Suite 3600

'3 San Francisco, CA 94105
Telephone: [phone]
4 Facsie: (415)' 848-4999
5 David A Ramelt (Admtted Pro Hac Vice)
Susan J. Greenspon (Admitted

Pro Hac Vice)

6 DawnM. Bee (Admitted Pro Hac Vice)

KELLEY DRYE & WARN LLP

7 333 West

Wacker Drve, Suite 2600 Chicago, IL 60606

8- Telephone: [phone] Facsimle: [phone]

9

Attorneys for Defend.tlCounter~PlaitifI

10 AMRICAN BLIN AN WALLPAPER
FACTORY, lNC.
11

UNTED STATES DISTRICT COURT'
12

NORTH DISTRCT OF CALlFORN
Case No. C 03-5340-JF (EAI

13 GOOGLE INC., a Delaware corpration,
14
15

Plaitiff,
v.

AMRICAN BLIN & WALPAPER
FACTORY, INC.'SRESPONSES TO

16 AMRICAN BLIN & WALLPAPER
FACTORY, INC., a

GOOGLE, INe.'s FIST SET OF REQUESTS FOR PRODUCTION OF

DOCUMNTS AND THGS

17 d//a decoratetoday.com, Inc.; and DOES 1-

Delaware corporation

18 100, inclusive, Defendants.
19

20 F ACTORY~ INC.," a Delaware corpration
21 d//a decoratetoday,com, Inc.,

AMRICAN BLIN & WALLPAPER

22 23
NETS

Counter-Plaitiff
v.

24 GOOGLE, lNC., AMCA ONLIN, INC., CAPE COMMCATIONS
CORPO ,25 INTERRATION, COMPUSERVEASK ACT SERVICE, INC., 26 JEVES, INC., and EATHLIN INC.
27 28
lllLP American Blind's Response to Google's First Set of Document

Counter- Defendatsl

Requests

Cae No. C03-5340 JF (EAl
DM_US\14784.vl

Case 5:03-cv-05340-JF
'.

Document 188-3

Filed 09/07/2006

Page 3 of 24

1

Thd-Par Defendats

2

PROPOUNING PARTY: PLAI/COUNR-DEFENDAN GOOLE, INC.
REPONDlNG PARTY:

3

DEFNDAN/COUN-PLATIF AMRICAN BLIN &
WALLPAPER

4

FACTORY, INC.

5 SET NUER:

ONE

6 Defendat/Counter-Plaitiff American Blid & Wallpaper Factory, Inc. ("America Blind")
7 hereby answers PlaitiffCounter-Defendant Google, Inc.'s Firt Set Of

Requests For Production Of

8 Documents And Tbgs'From American Blid & Wallpaper Factory, Inc. as follows:
9

REQUESTS

10 REOUESTNO.l:

11 All DOCUMNTS RELAtIG TO AMRICAN BLIN's selection, adoption and cleace
of each of

the AMRICAN BLIN MAS, includig, but not limited to, searches, investigatons,

12 report ånd opinons.

13 RESPONSE TO REQUEST NO.1:
14

American Blind objects to ths reqùest because it is overbroad, unduly burdensome, and nl?t
relevant or admssible evidence. American Blind also

15 reanably calculated to lead to the discover of

16
17

objects to ths request to the extent that it cal for the production of documents protected by the

attorney client privilege or the attorney work prouct doctrne. Subject to and without ~aivíng these
18

that it wi produce any resonsive documents in its possession
19 objections, American Blind states

20 regardig the adoption and clearce of eah ofthe Amercan Blid Mar.
21 REQUEST NO.2: '

22 All DOCUS demonstratig that AMRICAN BLIN owns the AMRICAN BLIN
23

MA.

24 RESPONSE TO REOUEST NO.2: Responsive documents wil be produced. 25

26 REQUEST NO.3:

27 All DOCUMS RELATIG TO AMERICAN BLIN's fi coihercial use of each of the

AMRlCANBLlN MAR.
America Blind's Responses

28

-2to Google's Fir Set of

HO ll
Case No. C03-5340 JF (EAI
OM 1l~\Rl47R4"vl

Documents Requests

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 4 of 24

(
1 RESPONSE TO REQUEST NO.3:

2 Amencan Blid objects to ths reques because it is overbroad, unduly burdensme, and not
3 reaonably caiculated to lead to the discovery of relevant or admssible evidence. Specificaly,

4
Google's request for al documents related to America Blid's fi commercial use of

the America

5

Blind Mar is overbroad and unduly bUrdensme. 'Subject to and without waiving these objections,
resnsive documents wil be produced that ilusate the date of fist commercial use of

,6
7,
8 Blid Mars.

the Amencan

9REOUEST NO.4:'
10 Al DOCUMS RELATING TO AMRICAN BLIN's first use of each of

AMRICAN BLIN DOMA NAMS.

the

11

,RESPONSE TO REOUEST NO.4:
12

American Blid òbjects to ths request because it is vague, ambiguous, overbroad, Unduly
13

14
15

burdtmsome, and not reanably caculated to leàd to the discovery of relevant or adssible evidence. '

Specifically, the phre American Blid Domai Names is vague and ambiguous becuse Google

16 aefies the term to mean a certai lit of domain names (as set fort at page 2, pargrh 5 of Google
17 18
Inc.'s First Set Of

Requests For Production OfDocmnents And Thngs From America Blind &

Wallpaper Factory, Inc.) and then includes "any other Internet doma name owned by or on behal of
.Aerica Blind thugh which customers may purchase America Blid's prodcts or servces."

19

,20
21

American Blid owns approximately 500 Interet domai names, but at present it onl actively uses
and marets approxiately 12 domai names. Mote~ver, Amercan BlÎd does not generlly maitai

22

23 records for each individual domai name, rather information for all domai names owned b,y America

24 Blind is collected and maintaied together. To the extent that this reques Cas for the produc#on of
25 documents related to all 500 domai names owned by Amencan Blid, it is overbroad an induly

26
27

burensome. Subject to and without waiving these objections, American Blid wil produce a listig
of domain names owned by Amencan Blind. To the extent that Google waÌts detaled inormation

on

28
HOW UP
Amencan Blid's Respnses to Google's Fir Set of

-3Documents Rèquest

Ca No~ C03-5340 JF (EA
DM US\14784.vl

-.

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 5 of 24

1 eah of these domai names, that inormation is publicly avaiable thugh the Interet at

, 2 ww.enom.com.
3

REQUEST NO.5:

4

Copies of all advertsig and promotional materials featug the AMCAN BLIN

5 MA or AMRICAN BLIN DOMA'NAMS.
6 RESPONSE TO REQUEST NO.5:
7 American Blind objeCts to ths reuest because itis vague, ambiguous, overbroad unduly

8 burdensome, and not reasonably calculated to lead to tle discovery of relevant or admssible evidence.

9 As an iiitial matter, the phre American Blind Domain Names is vague and ambiguous because
10
11
Google Inc.'s First Set Of Requests For Production Of Documents And thngs From

GoogIe defies the term to mean a cer list of domai names (as set forth at page 2, pargraph 5 of
Amenca Blind

12

13 & Wallpaper Factory, Inc.) and then includes "any other Internet domai name owned by or on behaf
14 of American Blind though which customers may purchase American Blind's products or servces."

15 -.Aerican Blid own approxiately 500 Internet domai names, but at present it only actively us
16 and markets approxiately 12 domai names. Moreover, American Blid does not generaly maintain
17 18

records for each individual domain n~e, rather information for all domain names owned by America
Blind is collected and maintaed together. To the extent that ths request calls for the production of '

19
20
documents related to all 500 domain names owned by American Blind, it is overbroad and unduly

21 burdensme. Moreover, American Blind spends millons of dollar each yea adversig the

22 American Blid Marks and domai names, includig perasive advertsing in over forty national
23 magazines, on every major search engie, on national television and i:adio, and though millons of
24 diect mailings and cataogs distributed thoughout the United States. Amercan Blind has advertsed

25

the American Blind Marks and domai names since its inception, and ths reest is not limted in

26

tie. It would be extemely burensome for American Blind to produce copies of all of its adversing
27
28

-4
Amerca Blid's Respnses to Google's Fir Set of

HO lL
DM US\82147.vI

Case No. C03-5340 JF (E ,

Documents Req

Case 5:03-cv-05340-JF
'.

Document 188-3

Filed 09/07/2006

Page 6 of 24

1 and promotiona materials,

ever creaed. Subject to and without waivig these objections, Amercan

2 ßlind will produce a sample of its more rent adversing and promotional materis.
3 REQUEST NO.6:

,4
Al DOCUMETS RELATIG TO AMRICAN

BLIN's effort to defend its tremmks

5, and domai names.

6 RESPONSE TO REOUET NO.6:
, 7 Amercn Blind objects to this reques because it is overbroad unduly burdensome, and not

8 reonably caculated to lead to the discover of relevant or adssible evidence. As wrtten, ths
9, requestwould require the production of every document submitted in every lawsut brought by

10
11

American Blind to defend its trdemark rights. These litigation fies are volumous and are not liely

to lead to the discevery of rek~vant or admssible evidence in ths case. hi addition, Amerca Blind
12

13 objects to ths request to the extent that it seeks the production of attorney/client privileged

14 comnwications. Subject to and without waivig these objections, American Blid wi produce

15 copies of cease and desist letters sent to entities ingig and/or diluting American Blid's
16 trdemarks and copies of intial pleadings filed by Amer,can Blind seekig to protect its trdemark

17 rights.
18
19,

REQUEST NO.7:

, Al buses~ plans; reprt, analyses and research RELATIG TO the AMCAN BLIN 20 MA ard AMERICAN BLIN DOMA NAMS, includig, but not limted to, strtegic plans,
forecass, or

projections. ,

21

22 RESPONSE TO REQUEST NO.. 7:

23

Amerca Blid has no documents resonsive to ths request.

24 REQUEST NO.8:

25 Al of AMRICAN BLIN's quarerly and anua audited financial statements andanual
report from 1997 to the present, includig all corronding notes and schedules.
26 27

,28
HOWRUP
Amca Blid's Responses to Gooè's Fir Se of

-5-

Cae US\14784.vl '(EAl , ' DM No, C03.5340JF ,

Docuents Requests

Case 5:03-cv-05340-JF
'. '

Document 188-3

Filed 09/07/2006

Page 7 of 24

1 RESPONSE TO REQUEST NO.8:

2

3 American Blid objects to ths request because it is overroad, unduly burdensme, and not
4 reaonaly calculated to lead to the dicover of releyant or adssible evidence. Tò the extent that
5 ths request cas for the production of notes and schedes to America Blind's audited financial

6
sttements, it is overbroad and unduly burdensome. Amercan

Blind will produce its anual audited

7
8

fiancial statements from 1997 to the present. American Blid sttes that it does not prepare quaerly

9 audited ficial staements.

10 REOUEST NO.9:

11 All DOCUMS demonstrg AMCAN BLIND's monthy gross revenues from
products and serces sóld under the AMRICAN ,BLIN MA from the first use of

those marks

12 to the present.
13 RESPONSE TO REQUEST NO.9:

14 American Blind objects to th request as over, broad and unduly burdensome. Revenues from'
15

products and servces sold under the American Blind Mar is equivalent to tota company revenues
because vialy all, ifnot all, of

16
'17

the products and servces sold by American Blid are sold under the

American Blid Marks. As a result, the quantity of documents demonstrting monthy gross revenues
18

19 for Amercan Blind is extremely volumnous and would be very burdenome to ,assemble and produce.

20 In addition, American Blid has been using its Marks since at lea 1986 and it wo:uld be extemely
21 burdensome, if not impossible, to produce documents relatig to monthy gross revenues for such a
22 long tie period. Subject to and without waivig these objecons, American Blind sttes that it wil

23

produce anual audited financial statements frm 1997 'to the present.
REQUEST NO.

, 24
25

to:
'revenues from

All DOCUMS demonsttig AMCAN BLIN's monthy grss

26 products an servces sold though the AMRICAN BLIN DOMA NAMS on a monthy basis
27
28
frm the fit ,use of those domai names to the present.

-6
American Blind's Respnses to Google's Fir Set ofDocinnts Reques Ca No. C03-5340 JF (EAI)

HO uP

DM_US\814784.vl '

Case 5:03-cv-05340-JF
-.
.~.

Document 188-3

Filed 09/07/2006

Page 8 of 24

1 REPONSE TO REOUEST NO.

to:

2 ,American Blid objects to th request because it is vague, ambiguous, overbroad unduly

3 burdensome, and not reaonably calculated to lead to the dicover of relevant or adssible evidence.
4
5
, Google defies the ter to mea a certin list of domain names (as set forth at page 2, paragraph 5 of

.A an inti3I mater, the phrase America Blid Domai Names is vague and ambiguous because

6
Google Inc.'s Fir Set Of Request For Production Of

Documents And Thgs From American Blind

7

8 & Wallpaper Factory, Inc.) and then includes "any o,ther Internet doma name owned by-or on behalf
9 of American Blind though which customers may purchas American Blid's products or servces."

10 American Blid own approxiately 500 Interet domain names, but at presentit only actively uses
11 and markets approxinately 12 domai names: Moreover, Amèrican Blid does not generally maitain
12

records for each individual domai name, rather inormation for all domain names owned by American

13

Blind is collected' andn:aitained together. To the extent thaHms request calls for the production of
14

15 documents related to al 500 domai names owned by American Blid, it is overbroad and unduly

16 burdensome.' In addition, it is very diffcult for Amercan Blind to attempt with accuracy to divide
17 and/or separate revenues :fom or between its Interet domai names and its toll-free telephone

18 'numbers. For example, customers often shop for products on American Blind's website and then cal
19
its toll-fre number

to place an order. It is unclear from Google's request whether such sales would

20
21

quaify as made "through the America Blid domai naes" or not. Subject to and without waivig
these objections, American Blid states that it will produce anual audited fiancial statements frm

22

23 1997 to the present.
, 24 REOUEST NO. 11:

2,5 ,All DOCUMS demonstrting AMRICAN BLIN's monthy profits and/or losses for those mar
, products ànd servces sold under the AMRICAN BLI MA from the fi use of 26 to the

present. '
-7-

27 28
HOEY LlP
Amenca Blind's Respns to Google's,First Set of

Documents Reques

Case No. C03-5340 JF (EAI
DM US\147S4.vl

Case 5:03-cv-05340-JF
/'
Ú

Document 188-3

Filed 09/07/2006

Page 9 of 24

\,

1 RESPONSE TO REQUET NO.

11:

2, America Blid objects to tls request as over broad and unduly burdensome. Prfits and/or
3 losses from products and servces sold under the Amercan Blind Marks is equivalent to tota company
4 profits and/or losses because vially al, if not all, of the products and services sold by American

5
6'

Blid are sold under the America B1id Marks. As a result, the quatity of docunents demonstring
monthy profits and/or losses for American Blid is extremely volumnous and would be very

7

8 burdensome to assemble and produce. hi addition, Amercan Blind has been using its Marks since at
,9 leat 1986, ~d it would be extremely burenome, if not impossible, to produce documents relatg to

10 monthy profits and/or losses for such a long time period Subject to and without waivig these
11 objections, American Blid sttes that it wil produce amual audited fimincial statements from 1997 to

12
13

the present.

REQUEST NO. 12:
14

All DOCUMNTS demonsatig AMRICAN BLIN's monthy profits and/or losses for 15 products and servces sold though the AMRICAN BLIN DOMAIN NAM on a monthy basis' from the fit us~ of those domai names to the present.
16
17 RESPONSE TO REQUEST NO.

12:

, 18

American Blind objec to this request because it is vague, ambiguous, overbroad, unduly

19 burdensome, and not reasonably calculated to lead to the discover of relevant or admssble evidence.

20 As an intial matter, the phre American Blind Domain Names is vague and ambiguous becuse
21 Gogle defies the ter to mea a certai list of domai names (as set forth at,pag 2, pargrh 5 of
22
Google Inc.'s Fir Set Of Requests For Production Of

Documents And Thngs From America Blid

23
& Wallpaper Factory, hic.) and then includes "any other mtemet domai name owned by or on behal ,

24
25

of American Blid thugh which customers may purchae American Blind's products or servces."

26 American Blid own approximately 500 Internet domai names, but at present it only actively uses

27 and markets approximately 12 domai names. Moreover, Amercan Blind does not generaly maita
28
HOWREY LLP
American Blinds Respns to Google's Fir Set of

-8-

Case No. C03-5340 JF (EAI ,

OM ii~\R?147It,vl ,

Documents Reqes

Case 5:03-cv-05340-JF

. . .. _ _ _ .. ø. _.. . _ _. '..~..:. Document 188-3

Filed 09/07/2006

Page 10 of 24

1

records for each individual domai nae, rater infonntion for al domain names nwned by American
Blid is collecte and maintaed together. To the extent that ths reques

2
3

cals for the production of

documents related to al 500 domai names owned by American Blin it is overroad and unduly

4
5

burdenme. In addition, it is ver diffcult for Amercan Blid to atempt with accy tó divide
and/or separate profits and/or losses from or between its Internet domai names and its toll-free
telephone numbers. For example, cusmers often shop for products on Amercan Blind's website and

6

7

8 , then ca its toll-fre number to place 'an order. It is unclear fr~m Google's request whether such sales

9 would quaify as made "through the American Blind domain names" or not. Subject to and without
10 waivig these objections, American Blind states that it will produce anua audited fiancial
11

staements from 1997 to the ~resent

12

REQUEST NO. 13:
13

All DOCUMNTS demonstratig AMRICAN BLIN'S monthy advertsing and 14 promotiona expenditues for products or servces marketed under the AMRICAN BLIN MA
frm the first use of

15

those marIes to the present

16 RESPONSE TO REQUEST NO. 13: Since all of American Blind's prodcts and servces are marketed under the America Blind

IT

18 Marks, ths request is actuy requestig all documents demonsating America Blid's monthy
19 adversing and promotional expenditues. American Blid objects to

ths request because it is vague,

, 20 ambiguous, overroad, unduly burdenome, and not reonably calculated to lead to the discver of
21

relevant or admssible evidence. As an intial mater, the phre "advertsing and promotional expndities~ is vague and ambiguous because it is unclea what fixed anor varable expenses

22
23

24

quafy in Google's view as "expenditus," nor has Google made any distction between maketing

25 expenditues and what are properly includable as advertsinE and promotional expen~itues. In

26 addition, ths request is overbroad because American Blid began using its Mars as ealy as 1986, and
- 27 it would be too burdensome to produce documents dating from i986, assumg that they even exist

28
HOW UP
American Blinds Responses to Google's Firt Set of

-9-

C..aseA"'~A ...1 No.C03-5340 JF (E , 'n. . "~'O')1

Docuents Reqaes

-, :~

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 11 of 24

1 Subject to and without waivig these objection, American Blid states that it will produce docwnents
2, generay evidencing anual adverting expenditues.

3

REQUEST NO. 14:

4,

Al DOCUMS demonstatig AMRICAN BLIND's monthy advertsing and 5, promotional expenditues for products and servces sold though the A1RICAN BLIN DOMA
NAM from the fit use of

those domai names to the present.
14:

6
RESPONSE TO REOUEST NO.

7

Amercan Blind objects to ths request becuse it is vague, ambiguous, overbroad, 1lduly
8

9

burdensome, and not reasonably calculate to lead to the discovery of

relevant or ad,ssible evidence.

10 As an intial matter, the phrase American Blid Domain Names is vague and ambiguous because
11

Google defies the term to mea a cert list of domain names (as set fort at.page 2, pargraph 5 of
Google Inc.' s First Set Of

12 13 14
15

Requests For Production Of Documents And Thgs From American Blind

& Wallpaper Factory, Inc.) and then incllldes "any other Internet domai name oWned by or on behalf
of American Blind though wmch customers may purchase American Blind's products or services."
American Blid owns approximåtely 500 Internet domain names but at present it only

actively uses

16 17
and markets approximately 12 domai names. Moreover, American Blid doe not generally

maitan

18 rerds for each individual domai name, rather information for all domain names owned by American

19 Blid is collected and maitaned together. To the e:;tent that this reuest calls for the production of

20 documents related to all' 500 domain names owned by American Blid, it is overbroad and unduly
21

burdensme. In addition, the phrase "advéring and promotiona expenditues" is vague and
ambiguous becuse it is unclea what fied, and/or varable expenses quaify in Google's view as
"expenditu," nor has Google made any distction between marketig expenditues ànd wha are

'22
23

24
25

properly includable as advertising and promotional expenditues. In addition, this request is overbroad
because American Blind began using its domai names many yea

26

ago, and it would be too

27 bUrdenome to produce documents frm such a i~ng tie ago, asg that they even exist. Finaly,
28
-10-

HO l.

Amercan Blid's Reponses to Google's Fir Set ofDocwnents Requests

nu Ji~\inU7RdvJ '
Case No. C03-5340 JF (EA' , ,

Case 5:03-cv-05340-JF
1..

Document 188-3

Filed 09/07/2006

Page 12 of 24

1 America Blid's adverg expenditues ar not necssaly separated to reflect adversing
2 expenditues for products and serces sold thugh the Amerca Blid domai naes as opposed to
3

though other chanels. Subject to and without waiving these objections, American Blid states that it
wil produce documents generally

4
evidencig anual advertsig expenditues.

5

6 REQUET NO. 15:
Al DOCUNTS identig the weekly numl)er of 7 reachable though the AMRICAN BLIN DOMA NAMS frni the fit use of bits received by each of

the websites

those domai

present.
8 names to the

9 RESPONSE TO REQUEST NO. 15:
10
Amerca Blid objects to ths reques because it is vague,

ambiguous, overbroad, unduly

11 burdensome, and not reasonably calculated to .lead to the discovery of relevant or. adssible evidence.

12 .A an intial matter, the phrase American Blind Domai Names is vague and ambiguous because
13

Google defies the term to mean a certn 'ist of domai names (as set forth at page 2, paragraph 5 of
Google Inc.' s Firt Set Of Requests For Production Of Documents And Thgs From AIerican Blind
& Wallpaper Factory, Inc.) and then includes "any other Internet domai name owned by or on behal

14

l5
16

17 of American Blind though which cusmers may purchase American Blind's products or servces."
18 American Blind own approximately 500 Interet domai names, but at present it only actively uses

20 record of

n' ,
22
23

19 and markets approximately 12 domai names. Moreover, American Blid does not generally matan

"hits" for each individua doin name; rather inormaton for all domai names owned by'

Amerca Blind is collected and maintaed together. To the extent that ths request calls for the
production of documents related to all 500 doman names owned by Amercan Blind, it is overbroad
and unduly burensome. lì addition, America Blind has been using cer of its domai names for

24
cals for the production of document from the fit use of 25 many years and ths request, which

the

26' domai na to the prent is overbroad in its tie fre. Finally, ths request is vague and
27 ambiguous because it is unclea what exactly Google mean by the phras "number orbits received."

28
HOWRlLP

-11-

Amenca Blind's Response to Google's First Set of~uients Reques Cae No. C03-5340 JF (RA)

DM US\814784.vl '

Case 5:03-cv-05340-JF
".

Document 188-3

Filed 09/07/2006

Page 13 of 24

i REOUEST NO. 16:

2 Al DOCUS .identifyg the weekly number of unque user accessing the websites
reachale though the AMRICAN BLIN DOMA NAM from the fi use of

3 naes to the present.
4, RESPONSE TO REOUEST NO.

those domain

16:

5

American Blid objects to ths request because it is vague, ambiguous, overbroad, unduly
buren~me, and not reanably calculated to lead to the discover of relevant or adssible evidence.

Ai an intial matter, the phre American BlindDomai Names is vague and ambiguous because
Google defies the ter to mean a cer list of domai names (as' set fort at page 2, pargrph 5 of
Google Inc.' s Fir Set Of

Reques For ,Production Of Documents And Thngs From America Blind
name owned by or on behal

& Walpaper Factory, Inc.) and then includes "any other Internet domain

of American Blid though which cutomers may purchas American Blind's products or services."

American Blid owns approxiately 500 Internet domai names, but at present it only actively uses
and markets approxiately 12 domai names. Moreover, American Blid does not generly maita

records for each individual domai name; rather information for all domai names owned by America

Blid is collected and maintained together. To the extent that this request calls for the production pf
documents related to al 500 domain names owned by America Blind, it is overbroad and Unduly
burdensome. In addition, Amercan Blid has been using cerai of its domain names for many year
and ths request, which cals for the production

of document from the first us of the domai names to

tle present is overroad in its tie fre. Finally, ths request is vague and ambiguous becuse it is

unclea what exactly Google means by the phrase "uque uses." For example, if a consumer visits
the American Blind website on Monday and then again on Tuesday, does he/she only consttute one
unque, user for tht week? In contrast, if a consumer visits the American Blind website on Friday and

then aga the followig Monday, does he/she constitute a separe unque user for both weeks?

-12-

Documents Case SNo.784.vl , C03-534 JF (E , Reqes DM_U \814
American Blinds R~sponses to Google'sFir Set of

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 14 of 24

1 REQUEST

NO.

17:

2 All DOCUS RELATING TO COMMCATIONS between AMRICAN BLIN
3

AN GOLE.

4 RESPONSE TO REQUEST NO. i 7:

,5

American Blid objects to ths request becse it is over broad, unduly burdesome, and not

6 reasonably calculated to lea to the discovery of relevant or admssible evidence. Amercan Blind
7 presently is a

customer of Google and, therefore, regularly communcates with Google representatives

'8 concerng business matters, includig but not lited to America Blid's advertsig campalgn with

9 Google. In additio~, ths request is overbroad because it is not limted to any definite period of tie
10
11

and American Blid has been doing business with Google for many years. , Subject to and without

wavig these objections, American Blind will produce electronic communcations between American ,
1.2

the
13 Blind and Google re'gardig GoogIe's sae of American Blind's trademarkS as keywords as par of

14 AdWords program, as well as monthy invoices received from Google concerng American Blind's

15 parcipation in Google's AdWords progr.
16 REQUEST NO. 18:

17 All DOCUMNTS RELATING TO COMMCATIONS between AMRICAN BLIN and

18 the TH~PARTY DEFEANTS.
'19 RESPONSE TO REQUEST NO. 18: America Blid objects to ths request becuse it is over broad, unduly burdensome, and not 20
21 reasonably calculated to lead to the diovery of

relevant or admssible evidence. America Blld has

, 22 communcated with the thd-par defendants concerg busines matters, including but not limted

23

to potential advertsing camaign, which have no relevance to the curnt dispute. Subject to

and

24
without waiving these objections, American Blid states th it has no documents relatig to diret

25

communcations with the thir-par defendants regardig the sale of America Blind's tremar as
26
27 keywords.

28

-13-

HOUP

America Blid's R~ponss to GoogIe's Fir Set ofDocmnents Reques
Ca No. C03-5340 JF (EAI
OM 1I!'7,147R4 vI

Case 5:03-cv-05340-JF

~ ~ 188-3 Document ....".. - " .

Filed 09/07/2006

Page 15 of 24

1 REQUEST NO.

19:

2 Al DOCS RELATING TO any tremark, servceaIk, tre name, Internet domai
nae, or any

other application/registration owned by or on behal of AMRICAN BLIN, though

3 aSsignent or otherwse~ for any name, mark, or desgnaton comprised of or contag the

4 AMRICAN BLINMÅ, or any varaton thereof.
5 RESPONSE TO REQUEST NO. 19:
6
Resnsve documents, to the extent that they ~xis, will be prouced

7 REQUEST NO. 20:

8 All DOCUMNTS RELATIG TO any research, reports~ sureys~ investigations, or studies conducted by or on behal of AMCAN BLIN, re1atg'to consumer or cusomer perception,
9 understadig or recogntion of any name, mar or designtion comprised of or contag the
10

AMRICAN BLIN MA, or any varation thereof.

11 RESPONSE TO REQUEST NO. 20:
12 '
American

Blid objects to ths Interogatory on the grounds that it is prematue given that

13 Amercan Blind has not yet received meangf discover responses from Gogle and has not yet had
14 an opportty to tae any depsitions in ths case. American Blind fuer objects to tls'
15 Interrogatory on the ground that it seeks information that will liely be the

subject of expert testiony'

16
17

prior to the time for disclosure of-expert opinions. American Blid fuer objects to ths req'lest to the
extent it calls for the production of docuients protected by the attomey/clientprivi1ege and/or

the

18

19

atton,ey work product doctre. Subject to and without waivig these objections, American Blid wil

20 produce responsive non-privileged documents, to the extent that they exist' ~garg consuer or
21 customer perceptions of

the Amercan Blid Mars.

22 REQUEST NO. 21:
23 All DOCUNTS RELATING TO GOOOLE or any of

the TH-PARTY DEFENDANTS.

24 RESPONSE TO REQUEST NO. 21:

25 Amercan Blind objeèts to this reques beause it is over broad unduly burdensome, and not
26
reaonably calculated to lead to the dis~very of relevant or adissible evidence. Ths request is so

27
overbroad as to be without meag.

28

-14Amencan Blin's Responses to Google's First Set of

HO LL
Documents Requests

Case No. C03-5340 JF (EAI)

,"u t tC\ 1I?ld711.l v I ,

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 16 of 24

1 REQUEST NO. 22:

2 DOCUMS identiing AMRICAN BLIN's corporation sttue, includig divisions
3

and deparents. "
23:

,5

4 RESPONSE TO REOUEST NO. 22: Responsivedocents to the extent that they exist will be produced
6 REQUEST NO.

7

DOCUNTS identig AMERICAN BLIN's employees and their job descriptions.

8 RESPONSE TO REQUEST NO. 23: '

9 Americ~ Blind objects totlis request because it is over broad, unduly burdenme, and not
, 10 reasonably calculated to lead to the dicovery of relevant or admissible evidence. America Blid ha
11 more than a hundred employees, each with slightly v~gjob descriptions. To the extent tht ths
12 request seeks each employee's job description, it is overbroad. Subject to and without

waivig these

, 13

objections, American Blind wil produce an emp~oyee toster identifyK the individuals that pr~ent1y
14
work for American Blind and,the deparent in which tbeywork.
15

16 REQUEST NO. 24:

17 All DOCUMTS RELA TING TO AMRICAN BLIN's allegation tht "Defendant Google,
actively,solicits othèrs to purhas not only America Blind's registered 'and ungistered trademarks,
18 but also virtally every c9nceivable Íteration òfthese,

mars."

19 RESPONSE TO REOUEST NO. 24: '

20 America 'Blid objects to this request to the extent it calls for the producton of documents
21 protected by the,attorney/client privilege and/or th atorney work product doctre. Subjec to and

22
23

without waiving ths,objectio~ responsive dOcUIents, to the extent that they exist, will be produced.

However, Amercan Blid believes that the requested documents are largely with the poss~sion and,
Google and America Blid's competitors. Discovery and investgation contiue and th

24
25 custody of

supplemented as reUied.
26 respnse may be

27
28
-15American Blinds Rmnses to Google's Fir Set of

HO UP
~~N,~:._ÇQ?-5?40 (EAl , ,

Documents Req~

Case 5:03-cv-05340-JF
-,

Document 188-3

Filed 09/07/2006

Page 17 of 24

,-

1 REQUEST NO. 25:

2 All DOCUM RELATIG TO AMRICAN BLIN's allegaton that "Defendants have
deliberately manpulate their search engie 'results' so that, when consumers use these seach engies
3 to fid America Biind~s products and servce, the consumers are unwittgly divert to competitorS~

4 products and servces."

5 RESPONSE TO REQUEST NO. 25:
6

American Blind objects to th request to the extent it calls for the production of-documents

7 protected' by the attorney/client privilege and/or the attorney work product doctre., Subject to and
8 without waivig ths

objection, rensive documents, to the extent that they exist, will be produced.

9 However, Amercan Blind believes th the requesed documents are largely withn the possession and '
10
11
custody of Google aId American Blind's competitors. Discovery and investgation continue and ths

response may be sùpplemented as reqUied.

.12

13 REQuEST NO. 26:

All DOCUMTS RELATlG TO AMRICAN BLIN's contention that "the American
14 Blid Mars have acuied

an outsding celebrity as a source of quaity home decoratig products

15 and related servces."
16 RESPONSE TO REQUEST NO. 26:
i 7 Amercan Blind objects to ths request because it is overbroad and unduly burdensome beus

18 it would require the production of all of Arercan Blind's advertsing, marketing, and promotiona ,

19 materials. Amercan Blid fuer objects to th request on the ground that it seeks information that
20'
wil

likely be the subject of exper testimony prior to the time for disclosue of expe opinons.

,,21

Americal Blind objects to ths request to the extent it cal for the production of documents protected

22
23 ,by the attorney/client privilege and/or the' attorney work product doctre. Subject to and without
24 waivig these objections, reponsive docuents, to the extent that they exist,

will be produced.

25 REQUEST NO. 27:

26 All DOCUMS RELATIG TO AMRICAN BLIN's contention tht "(t)he public has
usd and now uses the American Blind Marks to identi Amercan Blid and its home decorating
27

28

-16Amencan Blind's Responses to Google's First Set of

ll LL
Case No. C03~5340 vI, ' " nM T1~\R?lA7lt JF (EAI

Documents Reues

.. ,.. s.... . Ca e 5:03-cv-05340-JF
.... ...._....*...........;... 1.

Document 188-3

Filed 09/07/2006

Page 18 of 24

1 products and related serves from the home decoratg products and related services offere by others(. )"

2

3 RESPONSE TO REQUET NO. 27:
,4

American Blind objects to ths reques becuse it is overbroad and undl.Y burdensme becus

, '5 it woul~ requie the producon of al of America Blind's advertsing, marketig, and promotional
6 materials. American Blid fuer objects to ths request on the ground tht it seeks

'inormation tht

7 wil liely

be th~ subject of exer testimony prior to the tie for disclosure of exper opinons.

8 American Blind objects to ths request to the extent it calls for the production of documents protected
9
10
waiving these Qnjections, resnsive documents, to the ,extent

by the attorney/client privilege and/or the attorney work product docte. Subject to and without

that they exist will be produce.

11

12 REQUEST NO. 28:

, 13 All o~red Lin' is RELATING TO AMRICAN BLIN's allegation that "(t)he designation 'Sp DOCUMS itself confsing and misleading."
14, RESPONSE TO REQUEST NO. 28:

15
16
17

" Amercan Blind objects to ths Interogatory on the ground that it seeks inormation that will

liely be the subject of expert testimony prior to the tie for disclosure of expert opinons. American
Blid objects to ths reRest to the extent it calls for the production of documents protected by the

18
19 attorny/client privilege and/or the attorney work product d,octre. Subject to and without waiving
20 these objections,

'American Blind sttes that itdoes not presently have in its possession documents that
Google's use of

'21 relate to the interpretaon of

the word "Sponsred." American Blid believes that

22 there are numerous such docmnents in the possession of Google and other thd pares.

23 24

REQUEST NO. 29:

All DOCU RELATIG TO AMRICAN BLIN's allegation tht "Google has sold
the American Blind marks, to

25 many keywords comprised, in whole or in par of

competitors of

Amercan ,Blid."
26
27

28
HO LLP
Amercan Blind's Respcmse to Google's Fir Set of

-17-

C"_. No. C03..S340 JF (EAI) , ' T ae 'JLCtO.. A'TOA ..1. .

Docments Requests

....,... .
.-.

Case 5:03-cv-05340-JF

".. .,._-,_.... ':,'. - ,'.. ~., :';.". :.:.: ".":..: .. ..Page " .'. .,:::~.:.:. . Document 188-3_......... :''09/07/2006.. _..~_.. -.'... 19 of 24 Filed

1 RESPONSE TO REQUEST NO. 29:

2 American Blind objects to ths reuest to the extent it calls for the production of docuents
3 protected by the attorney/client privilege and/or the atorney work prouct doctre. Subject to and

4
5

without waivig these objections, resonsive documents, to the extent that they ex, win be produced.
However, American Blid believes that the requested documents are largely withn the possession and

6
cusody of 'Go

7

ogle and Amerca Blind's competitors. Discovery and investigation continue and ths

8 resonse may be supplemented as required.

9 REQUEST NO. 30:
10

Al DOCUMNTS RELATING TO AMRICAN BLIN's alegation that "Google. . .
actively promotes and encourges competitors to embar on a sweeping competitive rad on the
every conceivable, though indistingushable, iteration of

i 1 Amercan Blind Mars and vially

those

12

marks."

13' RESPONSE TO REQUEST NO.,30: Amercan Blind objects to ths request to the extent it calls for the prouction of documents ,14
15 protected by the attorney/client privilege and/or the attorney work product doctrne. Subject to and

16 without waivig these objections, responsve documents, to the extent that they exist, wi be produced.
i 7 However, American Blind believes that the requested

documents are largely with the possession and

18 custody of Google and American Blind's competitors.

19

REQUEST NO.3!:
All DOCUMENTS RELATIG TO AMRICAN BLIN's allegation that "Go

20
ogle

21 intentionaly has designed its financialy lucre 'AdWords' progr to maxmie the ingement
22

and diluton of America Blinds marks."

23 RESPONSE TO REOUEST NO. 31:

24

American. Blind objects to ths request to the extent it calls for the production ofdocmnents

25 protected by the attorney/client privilege and/or the attorney work product doctrne. Subject to and

26 without waivig these obj~tions, responsive documents, to the extent that they exist, will be produced.
27
28
HOW UP
Amerca Blindiõ Responses to Gopgle's Fir Set of

-18Documents Reque,

Cae No. C03-5340 JF (EA
OM lJS\14784.vl

. Ca~."....'.5:03-cv-05340-JF se "

Document 188-3

Filed 09/07/2006

Page 20 of 24

1 However) Amerca Blid believes that the requested documents àre largely with the possession and
2 custody of Google and America Blid's competitors.

3

REQUEST NO. 32:

4

All DOCUMNTS RELATING TO AMRICAN BLIND's alegation tht "Google ha 5 knowigly sold the America Blind Marks in commerc and included them in Google's seach engie for Google's own profit and to increase the comp~titive advantae of America Blid)s competitors."
6

REPONSE TO REOUESTNO. 32:
7

American Blid objects to ths request to the extent it calls for the production of docwnents
8
9 protected by the atrney/client prilege ~d1or the attorney work product doctre. Subject to and

10 without waiving these objections, resonsive docwnents, to the extent that they exist, wiI be produce
11 However, American Blind believes that the requested documents are largely with the possession and
,12 cUsody of Go ogle and

,'

American Blid's competitors.

13 REQUEST NO. 33:
14

All DOCUMTS RELATIG TO AMRICAN BLIN)s alegation th "Google adopted
trdemar ingement or other related clais ifit did not block such purchases."
RESPONSE TO REQUEST NO. 33:

1 5 and used ths former trdemar policy because it believed it would be, or could be, found liable for
16

22 cusody of Google an American Blind) s competitors.

23 REQUEST NO. 34:
24

Al DOCUNTS RELATIG TO AMRICAN BLIN's allegation that "Defendants and
,as American Blind."

25 their advertsers are wrngflly profitig off of the goodwill, and reputation of trademark owners such

26
27 28
HOWRLLP
Amerca Blind's Respnss to Google's Fir Set of

-19Documents Requests

Ca rii;\1l71.47R4 nM No. C03-534 JF (EA vI '"

-.

Case 5:03-cv-05340-JF

Document 188-3

Filed 09/07/2006

Page 21 of 24

1 RESPONSE TO REQUEST NO. 34:

2 American Blid objects to ths reques to the extent it calls for the production of documents
3 protected by the attorney/client privilegè and/or the attorney work product doctre. Subject to and

4
5

without waiVig these objections, resonsive documents, to the extent that they exist, will be produce.

Howev~r:. Aiercan alid believes that th~ requesed documents are largely withn the posseion and
custody of Google and America Blind's competitors.

6
7

8 REQUEST NO. 35:

9 All DOCTS RELATIG TO AMCAN BLIN's allegation tht "Defendats'to website li
searh engies are deceptive and milead consumers into belieVig falsely that the

10 which they are diected via manpulated seach 'results' lin are sponsored or authori by and/or '
originat( e 1 from American Blindf.l"
11

RESPONSE TO REQUEST NO. 35:
12

Aiercan Blind objects to ths futerrogatory on the ground that it seeks inormation that will
13

14 liely be the subject of expert, tes~onyprior to the tie for disclosure of ëxpe opinions. American
15 Blid objects to ths request to the extent it cans for the production of documents proteced by the
16 attorney/client privilege andÌor the atorney work product doctne. Subject to ,and without waiving , '
, i 7 these objections, responsive documents, to the extent that they exist, wil be produced.

18 as a soure of

REQUEST NO. 36:

19

Al DOCUMS RELATING TO AMRICAN BLIN's alegation that ~'(tlhe manpulated
the American Blind Mar to identi American Blind

,20 search engie 'results,' . . . dilute the abilty of

its goods and serces." , '

21

RESPONSE TO REQUEST NO. 36:

22

American Blid objects to ths Interrogatory on the ground that it seeks inormation that will
23

24

liely be the subject of exper testiony prior to the tie for disclosure of expert opinons. Amerca

25 Blind objects to ths request to the extent ît calls for the production of documents protected by the
26 attorney/client privilege and/or the attorney work product doctre. Subject to and Without waivig
27 these objections, respnsive docwnents, to the extent that they exist, will be produced.

28

-20Amercan Blind's Rñlnss to Google's,First Set of

ll UP
Documents Reests

~~ ~~:;Snld-~l40 , (EAI , ,

Case 5:03-cv-05340-JF
;;. "

Document 188-3

Filed 09/07/2006

Page 22 of 24

1 REOUEST NO. 37:

2 All DOCUMNTS RELATIG TO AMRICAN BLIN's alegation tht "Amercan Blind's
customers have bee and will

liely continue to be confsed about the origi and sponsorship of the

3 companes other than American Blind listed by the Defendats in their deceptive search engie

4

'results. ,,,
"-

5 RESPONSE TO REQUEST NO. 37:

6 Amercan Blid objects to th& Interrgatory on the ground that It seeks inormation tht wil

7 liely be the subject of exper testiòny prior to the tie for disclosure of expert op~ons. Amercan
8 Blid objects to ths request to the extent it calls for the production of documents protected by the

9 attorney/client privilege and/or the atorney work product doctre. Subject to and without waivig
10 these objections, respnsive documents, to the extent that they exist, will be produced.

11 REOUESTNO. 38: '

12 Al DOCUMNTS RELATING TO AMRICAN BLIND's alegation that "Defendants'
actions ,stea cusmers from Amerca Blid's website, divert consers to inerior 13 servces, erode and

products and the distinctivenes of America Blind's Marks~ aid impai America Blind's hones good faith effort to promote and sell its products on the Internet."

14
15

RESPONSE TO REQUEST NO. 38: '

16

Amercan Blind objects to ths Intergatory on the ground that it seeks ìnormation that will

17 likely be the subject of expert testony prior to the time for disclosure of exper opinons. America
18 Blid objects to tbis request to the extent it calls for the production of docuents protected by the
19 attorney/client privilege and/or the attorney work product doctrne. Subject to and without waivig
20 these objections, responsive documents, ,to the ~xtent that they

exist, will be produced.

21

REOUEST NO. 39:

22

All DOCUMNTS RELATING TO AMRICAN BLIN's alegation that "Defendants' 23 actons have caused damage and irrparble injur to American Blind."
24 RESPONSE TO REOUEST NO. 39:

, 25 American Blind objects to ths Interrogatory on the ground that it seeks ìnomiation that will
26 liely be the subject of expert testiony prior to the tie fC?r disclosue of expert opinons. ' Amercan
27 Blid objects to ths requeSt to the extent it calls

tl UP

28 -21Amerca Blid's Respons to Google's First Set of

for the production of documents protected

by the

Cae No. C03-5340 JF(EA

OM T1o;lIl.4711 vI' ,

Documents Requests

Case 5:03-cv-05340-JF
,...
.rO'

: ~ ~.: 188-3 Document ..~.....~.. .......0:.:

Filed 09/07/2006

Page 23 of 24

1 atorney/client pnviege and/or the atorney work product doctre. Subject to and without waivig

t
2 these objections, responsive documents, to the extent that they exist will

,be produced.

3 REQUEST NO. 40:

4

Al DOCUMNTS identified in, RELATING TO, or which were relied upon in resondig to
Intertogatones to Amencan Blind.

5 Google's First Set of

6 RESPONSE TO REQUET NO. 40:
7 Responsive docuents will be produced

8 REQUEST NO. 41:

9 All DOCUNTS upon which AMRICAN BLIN wil rely in ths lawsut
10 'RESPONSE TO REQUEST NO. 41:
, 11

,-

Responsive documents will be produced.

12
13

Dated:
14
15

June 10, 2005

HOWR LLP

16
17 18

By:

ROBERT N. PHILIPS

~GL

ET B. ANELMA
David A. Raelt Susan J. Greenon
Dawn M. Be~ry

19

KELLEY DRYE & WAR LLP
333 West Wacker Dnve. Suite 2600

20
21

Clicago, IL 60606
, Attorneys for Defendant/Coliter-Plaintif
22 23

, AMCAN BLIN AN WALLPAPER
FACTORY,JNC.

24
25'

26 27 28
HOW UP
America Blid's Responses to Google's First Set of

-22DocUments Reqst

-,as No. C03-5340 JF (E ',' '

nM ll(¡\1l?l,47llvl ' ,

Case 5:03-cv-05340-JF
~

Document 188-3

Filed 09/07/2006

Page 24 of 24

1
2 I am a citien of

PROOF OF SERVICE
the United States and a resident of the State ofCalforna. I an employed in San Francisco County, State of Californa, in the offce of a member of the bar of ths Cour, at whose

3 diection the servce was made. I am over the age of eighteen year, and not a par to the with
4 action. My busess addres is 525.Market Street, Suite 3600, San Francisco, CA 94105. On the date set fort below, I sered the docmnent(s) desnòe4 below in the maner described below:

5

AMRICAN BLIND & WALLPAPER FACTORY, INC.'S RESPONSES TO GOOGLE, INC.'S

'6 FIT SET OF REQUESTS FOR PRODUCTION OF DOCUENTS AN TlGS
7 8

VI MESSENGER
Michael H. Page

Mak A. Leey
Ravid S. Grwal
Keker & Van Nest, LLP

9
10
11

710 Sanome Street San Fracisco, CA 94111
Facsime: [phone]

(BY FACSIME) I am personally and readily familiar with the business practce of Howrey Simon 12 Arold & Whte, LLP for collection and processing of document(s)to be trsmittd by facsimle an I cause
13 such document(s) on this date to be trsmittd by facsimile to the offces of addressee(s) at the numbers listd

below. '

14

(BY FEDERA EXRES) I am personally and readily familiar with th busiess practice ofHowry Sim Arold & Whte, LLP for collection and processing of corresndence for overnght delivei, and I 15 'caused such document(s) descrbed herein to be deposited for delivei to a facilty rew.ary matained by
16 Federl Express for overnght delive. '

, 17 XX (BY MESSENGER SERVICE) hand delivery on ths to an authorized 'courer ' and/or process serer for by consigng the document(s) date. '
18

readily failiar with the business practice of Howry (BY U.S. MAIL)' I am personally and Simon Aiold & Whte, LLP for collection and processing of corresndence for mailig with the 19 United States Postal Service, and I caused such envelope(s) with potage thereon :fly prepaid to be

20PlaGed in the United States Postal Serice at San Francisco, Calforna
21

22
23 24
25

Patrcia Craer

26 27

AALD & . Wi-F

lSII

28