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

Filing 243

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

Doc. 243 Att. 11

Case 5:03-cv-05340-JF

Document 243-12

Filed 12/26/2006

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EXHIBIT K

Dockets.Justia.com

Case 5:03-cv-05340-JF

Document 243-12
LAW OFFICES

Filed 12/26/2006

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KEKER & VAN NEST
LLP
710 SANSOME STREET SAN FRANCISCO, CA 94111-1704

TELEPHONE [phone] FAX [phone]
AJAY 5. KRISHNAN AKRISHNAN(!KVN.COM
WWW.KVN.COM

May 12, 2006

VIA FACSIMILE
Caroline C. Plater, Esq. Kelley Drye & Waren LLP Wacker Drive, Suite 2600 333 West Chicago, IL 60606

Re: Google Inc. v. American Blind & WallpaperFactory, Inc.
Dear Caroline:

This letter addresses several outstanding issues regarding the documents produced by American Blind & Wallpaper Factory ("ABWF") in response to Goog1e Inc.'s First Set of American Blind & Wallpaper Factory, Requests for Production of Documents and Things from
Inc. (the "Document Requests"). .

First, despite agreeing to do so, ABWF has not produced product-specific financial information in response to Google's Document Requests 9 -12. In my March 16th letter to Requests 9 - 12 require ABWF to produce monthly financial David Ramelt, I made clear that price per unit, gross revenues, and profits or losses) for units sold, information (i.e., number of
"each product." See Letter to David Ramelt, March 16, 2006 at 3 (emphasis in original). In

your letter of April 10th letter, the entirety of your response to my Marčh 16th letter was "with regard to the finančIal documents requested in your March 16, 2006 letter, we will produce responsive, non-privileged documents." The two pages of purortedly responsive documents that were produced-ABWF002889 and ABWF002890-were insufficient. First, these documents break down the monthly sales information by "product category," not by product. is a See ABWF002888. Second, the only monthly information given for each product category units bare number-there are no units, and no indication whether this number is the number of or something else entirely; Moreover, whatever this number sold, gross revenues, profits, signifies, it is stil only one number. The financial information requested, which you stated you units sold, price per unt, would produce, covered at least four items ofinformation-tiurber of information, it wil product-specific. gross revenues, and profits or losses. Without this level of be impossible to compute the alleged damages for the period over which ABWF alleges injury.

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Case 5:03-cv-05340-JF
Caroline C. Plater, Esq.

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May 12,2006
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Please advise me as to whether and when ABWF wil produce this product-specific financial information (including number of units sold, price per unit, gross revenues, and profits or losses) responsive to Requests 9-12.
Second, ABWF has not produced all responsive documents "relating to" ABWF's first commercial use of each of its claimed marks. See Document Request 3. Both in its response to Document Request 3, and in your April 10th letter, ABWF states that it will produce documents "ilustrating" the first commercial use of each of its claimed marks. That is insufficient. Google
requires all documents "relating to" ABWF's first commercial use of each of

its claimed marks

to evaluate whether these claimed marks were actually used in commerce in some substantial manner during the asserted time period. This means that Goog1e requires all documents relating to advertising or any other communications to consumers or potential consumers constituting each of ABWF's claimed marks. first commercial use for

Please advise me as to whether and when ABWF wil produce these documents responsive to Request 3.
Third, ABWF has not responded adequately to Google's repeated request for information concerning selection of ABWF's claimed marks. See Document Request 1. In your April 10th
letter and again in an email to myself and Klaus Ham on April .18, 2006, you took the position
that ABWF has no documents concernng the selection

Blind name. This does not explain why there are no documents concerning the selection of American Blind's other claimed marks, namely "American Blinds," "American Blind & Wallpaper Factory, "American Blind Factory," and "Decoratetoday." You stated in your April 18,2006 email that you might be trademark these claimed marks "in the able to find responsive documents about the selection of fies" and that you would follow up on this. For one thing, to my knowledge, you have not followed up on this issue. Moreover, unless ABWF's maintains meticulous "trademark fies" marks, a that includes every internal communcation, including e-mail, concerning selection of mere search of ABWF's "trademark fies" would not constitute a sufficiently dilgent search
of the American

under the Federal Rules. Goog1e is entitled to all internal communications and any other

documents relating to the selection of ABWF's claimed marks.

Please advise me as to whether and when ABWF wil produce these documents
responsive to Request 1.

Fourth, please produce all non-privileged documents in the ABWF "trademark fies" to which you refer in your April 18, 2006 emaiL. All documents in these trademark fies are likely
responsive to one or more of

the following Document Requests: 1-7, 17-21,26,27,36-38, and

41.

If you are of the position that the trademark files coritain non-privileged documents that Document Requests, and that ABWF need not are not responsive to any of Google's First Set of produce such documents absent a formal document request, please represent that this is the case, and I wil draft and serve a formal document request.

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Fifth, ABWF has not produced the detailed information aboutABWF's advertising and promotional expenditues that you stated ABWF would produce. See Document Requests 13 & 14. In my March 28th letter, I put forth a detailed, Jour-paragraph response to ABWF's objections. In your April 10th letter, you responded that "ABWF wil produce responsive, nonprivileged documents regarding its advertising expenditures." ABWF never produced this information. Additionally, ABWF's obligation is to produce documents relating to advertising and promotional expenditures, not merely advertising expenditues.
Please advise me as to whether and when ABWF wil produce these documents
responsive to Requests 13 and 14.

Sixth, ABWF has produced no documents responsive to Requests 20,26, and 27. These requests pertain to documents relating to consumer recognition and perception of ABWF's things, any research reports, consumer marks. Such documents would include, among other
studies or sureys, or any internal discussion of actual and anticipated consumer recognition or
perception of witness work

the ABWF marks. Obviously, these requests do not require production of expert this litigation. But ABWF has produced no responsive documents. It is difficult to believe that ABWF-a company that spends substantial effort protecting its trademarks, purchasing rights to other trademarks, and purchasing hundreds of
product in furtherance of

domain names-has never thought to study how consumers perceive their trademarks (especially

since ABWF has alleged its marks "have acquired an outstanding celebrity"). Presumably some such work would have been done in the course ofproducingABWF's advertisements. it is truly ABWF's position that it possesses no documents relating to consumer Nonetheless, if recognition and perception of ABWF's marks (other than ones that are privileged or the work this litigation), please confirm that this is so. product of expert witnesses in fuherance of

Otherwse, please advise me as to whether and when ABWF wil produce these documents responsive to Requests 20, 26, and 27.
which I am aware that relate to Seventh, ABWF has not produced any documents of ABWF's allegations about trademark dilution, consumer confusion, and website diversion. See Document Requests 36-39. These would include documents about actual consumers who were , confsed by Google's advertising practices, brand recognition surveys, or any internal analysis
of lost sales or lost internet traffic.

requests do no require production of expert witness work product in furtherance of this litigation. But to the extent an expert relies on facts or documents that were business, such facts and obtained from ABWF'and that developed in the normal course of documents are not beyond the proper scope of discovery simply because they were submitted to
Again, these the expert. The language of ABWF's objections

to Requests 36-39-that the document request

"seeks information that willikeiy be the subject of expert testimony prior to the

time for disclosure of expert opinions"-therefore suggests an incorrect statement of the law.

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Please advise me as to whether and when ABWF wil produce these documents that
relate to ABWF's allegations about trademark dilution, consumer confion, and website

diversion (such as documents about actual consumers who were confed by Google's
advertising practices, brand recognition sureys, or any internal analysis of lost sales or lost

,internet traffc) and that are responsive to Request 3.
Eighth, ABWF has improperly withheld documents responsive to Requests 15 and 16. hits receiv~d on ABWF's number of unique users to ABWF's website. Although ABWF's sites and the weekly number of web and 16 border on frivolous, I address them here simply to avoid further objections to Requests 15 delay in obtaining these documents.
As an initial matter, ABWF has represented that it maintains information for all of its not all, of ABWF's domain names to ABWF's primary website, which is curently located at simply redirect visitors ww.decoratetodav.com. If that is indeed the case, and ABWF does not possess individualized information as to how much internet traffic AB WF receives from each of its domain names, its domain names. However, if information for all of ABWF need only produce aggregated visits each, individual ABWF ABWF is able to determine, by domain name, the number of domain name receives, that information is covered by Requests 15 and 16 and must therefore be produced.
As for time frame, this request dates back to the time when ABWF first used its website. It is ABWF that placed at issue in this litigation the popularity of its website from its inception. See Defendant American Blind & Wallpaper Factory's Answer, Affrmative Defenses, and a distinctive Counterclaims, ir 27-34 ("Since 1997, American Blind has continuously operated thirty thousand website," and "The company estimates, each day, it receives in excess of customers or potential customers to its Internet website"). Moreover, this (30,000) visits by information is necessary to track and understand web traffc to ABWF's website over time so as to determine whether there was a decline in traffic during the times alleged by ABWF.
The phrase "number of

These requests cover documents relating to the weekly

domain names together. This appears to be because most, if

hits received"-as used in Request l5-means the number of
unique users." This is the objection that
unque users accessing ABWF's website.

visits to ABWF's destination website (i.e., the one to which ABWF's other domain names redirect visitors). As for request 16, ABWF's objection does not question what a "unique" user
is, so much as how to calculate the "weekly number of most clearly stands

out as frivolous. First, this objection is irrelevant because Google requested

. all documents pertining to the weekly number of

Thus, Request 16 would cover documents pertaining to any method for determining the weekly
number of unique users. Second, the alleged ambiguities begins on Monday, a consumer who visits the website once on Monday

are non-existent. Assuming the week

and once on Tuesday would count as one unique user for that week. Similarly, a consumer who visits the website once on Friday and then once the following Monday would clearly count as a unique user for each week. Of course, any method used for delineating weeks (e.g., Monday to Sunday, Wednesday to Tuesday) would be responsive to Request 16.

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Please advise me as to whether and when ABWF wil produce these documents that relate to the number of weekly hits and weekly number of unique users on ABWF's website(s)
and that are responsive to Requests 15 and 16.

Ninth, ABWF has failed to produce documents identifying ABWF's corporate structure despite stating that it would produce such documents. See Document Request 22. If ABWF has
produced these documents-and my review of ABWF's original production suggests ABWF has

not produced them-please identify the Bates numbers of these documents.
Otherwise, please advise me as to when ABWF wil produce these documents that identify ABWF's corporate structure and that are responsive to Request 22.
Tenth, ABWF has failed to produce documents responsive to Request 23, concerning' ABWF's employees and their job descriptions. First, in its response to Request 23, ABWF stated that it would produce an employee roster identifying the individuals that presently work
for American Blind and the deparment in which they work. My review of ABWF' s production

did not reveal these documents. If ABWF has produced them, please identify them by Bates number. Second, such an employee roster is insufficient. Producing the job descriptions of
roughly 100 employees is not an overly burdensome task, and in

any event, Google requires this

information in order to independently evaluate who at ABWF will have relevant information
concerning this lawsuit.

me as to whether and when ABWF wil produce the job descriptions of all of ABWF's employees, in response to Request 23.
Please advise

Eleventh, please update ABWF's production in response to Request 41, which covers
"All documents upon which American Blind wil rely in this lawsuit." Please advise me as when ABWF wil produce these

to

documents.

Finally, as a general matter, there has been a serious disparity in the willngness of Google and ABWF to produce responsive documents in this litigation. Google has produced well over a hundred thousand pages of documents in response to ABWF's document requests, has refrained from witholding documents based on objections that will ultimately be overrled. By contrast, ABWF has produced relatively few documents and consistently claims it wil
produce responsive documents without actually doing so. There are also serious questions-

based on the paucity of documents ABWF has produced-as to whether ABWF has actually performed a dilgent search, as required by the Federal Rules, and whether ABWF is actually producing all responsive documents when it claims to do so.
I am more than wiling to engage in fuher dialogue about ABWF's production

obligations, based on reliable representations as to what wil be produced. I am unwiling, however, to entertain another iterationofletter-writing in which ABWF ignores issues that I raise, narows the scope of Google' s discovery requests without providing any justification, or claims that it wil produce documents without doing so.

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Please respond to each of

the issues raised

in this letter by Thursday, May 18,2006.

Than you for your attention to ths importt matter. Please also feel free to contact me by telephone or email to discuss any ofthe issues raised in this letter.

ASK/rw
cc: David A. Ramelt, Esq.

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