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

Filing 21

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

Doc. 21

Case 5:03-cv-05340-JF

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Filed 04/16/2004

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Dockets.Justia.com

Case 5:03-cv-05340-JF

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Plaintiff Google Inc. ("Google") and Defendant American Blind & Wallpaper Factory, Inc. ("American Blind") submit the following joint case management conference statement. I. Background Google filed this action against American Blind on November 26, 2003, seeking a declaratory judgment that its current policy regarding the sale of keyword-triggered advertising does not constitute trademark infringement. American Blind contends that many of American Blind' competitors ­ with the assistance and encouragement of search engines such as Google ­ s have attempted to confuse American Blind' customers and capitalize illegally on American s Blind' goodwill and reputation by purchasing advertising keywords identical or substantially s similar to American Blind' federally registered and common law trademarks from the search s engines, including Google. Google disagrees that American Blind' customers are likely to be s confused as a result of the purchase of such keywords, or that Google assists in or encourages illegal conduct on the part of American Blind' competitors. s On January 27, 2004, American Blind filed suit in the Southern District of New York against Google, American Online, Inc., Netscape Communications Corp., Compuserve Interactive Services, Inc., Askjeeves, Inc., and Earthlink, Inc. for trademark infringement and dilution, unfair competition, and tortious interference with prospective economic advantage. On January 28, 2004, American Blind moved to dismiss this action or, alternatively, to stay proceedings based on equitable exceptions to the "first-to-file" rule. The Court denied that motion on April 8, 2004. On April 8, 2004, Google filed a motion to dismiss, or alternatively, to transfer American Blind' New York action on the ground that Google' California action had precedence under the s s "first-to-file" rule. That motion remains pending before the New York court. American Blind has yet to file an answer to Google' complaint in this case. Neither s party has yet propounded any written discovery. DESCRIPTION OF THE CASE

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B.

Principal Factual and Legal Issues Google contends the principal factual and legal issues are: (1) Whether Google' sale of keyword-triggered advertising to various of its customers s

constitutes trademark infringement; and (2) Whether the purchase by various of Google' customers of keywords that are s allegedly similar to American Blind' marks, and the appearance of the websites of those s customers as "Sponsored Links" beside the search results that Google displays in response to search queries using those keywords, is likely to cause confusion as to whether American Blind' s goods and services are associated with the goods and services of the keyword purchasers. American Blind contends that, in addition to the above, the principal factual and legal issues include: (1) Whether Google is selling terms identical or substantially similar to American Blind' federally registered and common law trademarks as part of its keyword-triggered s advertising program; (2) Whether Google' sale of terms identical or substantially similar to American Blind' s s federally registered and common law trademarks as part of its keyword-triggered advertising program constitutes trademark infringement; (3) Whether Google' sale of terms identical or substantially similar to American Blind' s s federally registered and common law trademarks as part of its keyword-triggered advertising program dilutes American Blind' trademarks; s (4) Whether Google' sale of terms identical or substantially similar to American Blind' s s federally registered and common law trademarks as part of its keyword-triggered advertising program tarnishes American Blind' trademarks; s (5) Whether customers of American Blind are actually confused by Google' sale of s terms identical or substantially similar to American Blind' federally registered and common law s trademarks as part of its keyword-triggered advertising program; (6) Whether the purchase by various of Google' customers of keywords that are s 2

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identical or substantially similar to American Blind' federally registered and common law s trademarks, and the appearance of the websites of those customers as "Sponsored Links" beside the search results that Google displays in response to search queries using those keywords, is likely to cause confusion as to whether American Blind' goods and services are associated with s the goods and services of the keyword purchasers; (7) Whether American Blind has suffered any actual damages as a result of Google' s sale of terms identical or substantially similar to American Blind' federally registered and s common law trademarks as part of its keyword-triggered advertising program; (8) Whether Google' alleged infringement of American Blind' federally registered and s s common law trademarks is willful and deliberate; (9) Whether Google' sale of terms identical or substantially similar to American Blind' s s federally registered and common law trademarks as part of its keyword-triggered advertising program has resulted in unfair competition; (10) Whether Google' sale of terms identical or substantially similar to American s Blind' federally registered and common law trademarks as part of its keyword-triggered s advertising program has resulted in tortious interference with prospective economic advantage; (11) Whether Google shares revenue from its sale of terms identical or substantially similar to American Blind' federally registered and common law trademarks as part of its s keyword-triggered advertising program with the anticipated additional defendants or others; (12) Whether Google has agreed not to permit the sale of terms identical or substantially similar to other trademark holders'trademarks as part of its keyword-triggered advertising program; (13) Whether other customers of Google have complained about Google' sale of terms s identical or substantially similar to their trademarks as part of Google' keyword-triggered s advertising program. C. Service of Process There are no unserved parties. 3

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D.

Additional Parties Google does not currently intend to join any additional parties. American Blind intends

to add American Online, Inc., Netscape Communications Corp., Compuserve Interactive Services, Inc., Askjeeves, Inc., and Earthlink, Inc. as additional defendants in this action. II. ALTERNATIVE DISPUTE RESOLUTION

The parties generally agree that private mediation may be beneficial in this case, and will meet and confer over the appropriate time frame to engage in such mediation. III. INITIAL DISCLOSURES UNDER FED. R. CIV. P. 26(a)

The parties will serve their initial disclosures upon one another on May 27, 2004. IV. A. CASE MANAGEMENT PLAN

Discovery and Trial Schedule Google proposes the following case management schedule: Cutoff of Fact Discovery Expert Reports Due Responsive Expert Reports Due Cutoff of Expert Discovery Cutoff for filing Dispositive Motions Pretrial Conference Statement Pretrial Conference Trial Date August 30, 2004 September 27, 2004 October 11, 2004 October 25, 2004 November 8, 2004 January 14, 2005 January 24, 2005 February 2005

American Blind proposes the following case management schedule: Cutoff of Fact Discovery All Parties'Expert Reports Due Rebuttal Expert Reports Due Cutoff of Expert Discovery Cutoff for filing Dispositive Motions 4 April 29, 2005 May 30, 2005 July 15, 2005 August 31, 2005 September 30, 2005

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Pretrial Conference Statement Pretrial Conference Trial Date Protective Order

December 2, 2005 December 12, 2005 January, 2006

The parties will meet and confer on an appropriate protective order and submit a proposed order to the Court by May 27, 2004. C. Trial Duration The parties estimate a trial of approximately one week. Dated: April 16, 2004 KEKER & VAN NEST, LLP

By:

/s/ Michael H. Page MICHAEL H. PAGE Attorneys for Plaintiff GOOGLE INC. HOWREY SIMON ARNOLD & WHITE, LLP

Dated: April 16, 2004

By:

/s/ Robert N. Phillips ROBERT N. PHILLIPS David A. Rammelt Susan J. Greenspon KELLEY DRYE & WARREN LLP 333 West Wacker Drive, Suite 2600 Chicago, IL 60606 Attorneys for Defendant AMERICAN BLIND AND WALLPAPER FACTORY, INC.

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ATTESTATION OF CONCURRENCE OF FILING I hereby attest that Michael H. Page has concurred in the filing of this document.

/s/ Robert N. Phillips Robert N. Phillips

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