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

Filing 56

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Case 5:03-cv-05340-JF

Document 56

Filed 04/26/2005

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA GOOGLE INC., a Delaware corporation, Plaintiff, v. Case No. C 03-5340-JF (EAI) JOINT FED. R. CIV. P. 26(f) REPORT, CASE MANAGEMENT STATEMENT AND PROPOSED CASE MANAGEMENT ORDER Date: May 13, 2005 Time: 10:30 a.m. Courtroom: 3, 5th Flr. Judge: Hon. Jeremy Fogel

AMERICAN BLIND & WALLPAPER 7 FACTORY, INC., a Delaware corporation d/b/a decoratetoday.com, Inc.; and DOES 18 100, inclusive, 9 Defendants.

10 AMERICAN BLIND & WALLPAPER FACTORY, INC., a Delaware corporation 11 d/b/a decoratetoday.com, Inc., 12 13 v. Counter-Plaintiff,

14 GOOGLE, INC., AMERICA ONLINE, INC., NETSCAPE COMMUNICATIONS 15 CORPORATION, COMPUSERVE INTERACTIVE SERVICES, INC., ASK 16 JEEVES, INC., and EARTHLINK, INC. 17 18 19 20 21 22 23 24 25 26 27 28
HOWREY SIMON ARNOLD & WHITE, LLP

Counter-Defendants/ Third-Party Defendants

Plaintiff/Counter-Defendant Google Inc. ("Google"), Defendant/Counter-Plaintiff American Blind & Wallpaper Factory, Inc. ("American Blind"), and Third-Party Defendants American Online, Inc. ("America Online"), Netscape Communications Corp. ("Netscape"), Compuserve Interactive Services, Inc. ("Compuserve"), Ask Jeeves, Inc. ("Ask Jeeves"), and Earthlink, Inc. ("Earthlink") submit the following joint case management conference statement. I. DESCRIPTION OF THE CASE A. 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

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s 1 trademark infringement. American Blind contends that many of American Blind' competitors ­ with 2 the assistance and encouragement of search engines such as Google ­ have attempted to confuse s s 3 American Blind' customers and capitalize illegally on American Blind' goodwill and reputation by s 4 purchasing advertising keywords identical or substantially similar to American Blind' federally 5 registered and common law trademarks from the search engines, including Google. Google disagrees s 6 that American Blind' customers are likely to be confused as a result of the purchase of such s 7 keywords, or that Google assists in or encourages illegal conduct on the part of American Blind' 8 competitors. 9 American Blind filed counterclaims and third-party claims against Google, American Online,

10 Inc., Netscape Communications Corp., Compuserve Interactive Services, Inc., Askjeeves, Inc., and 11 Earthlink, Inc. for trademark infringement and dilution, unfair competition, and tortious interference 12 with prospective economic advantage. 13 On June 23, 2004, Google and the Third-Party Defendants filed a motion to dismiss the

14 counterclaims and third-party claims filed by American Blind. On March 30, 2005, this Court denied 15 the motion to dismiss with regard to all counts for trademark infringement and dilution and for unfair s 16 competition. The Court granted the motion to dismiss with regard to American Blind' claim for 17 tortious interference with prospective business advantage. 18 Per the Court' June 21, 2004 Order, discovery was stayed in this case until three weeks after s

19 the Court ruled on the motions to dismiss, which was April 20, 2005. Google and American Blind 20 have propounded written discovery requests on each other. 21 22 23 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

24 constitutes trademark infringement; and 25 (2) Whether the purchase by various of Google' customers of keywords that are allegedly s

s 26 similar to American Blind' marks, and the appearance of the websites of those customers as 27 "Sponsored Links" beside the search results that Google displays in response to search queries using s 28 those keywords, is likely to cause confusion as to whether American Blind' goods and services are
HOWREY SIMON ARNOLD & WHITE, LLP

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1 associated with the goods and services of the keyword purchasers. 2 American Blind contends that, in addition to the above, the principal factual and legal issues

3 include: 4 (1) Whether Google is marketing and/or selling terms identical or substantially similar to

s s 5 American Blind' federally registered and common law trademarks as part of Google' keyword6 triggered advertising program; 7 (2) Whether Google' sale of terms identical or substantially similar to American Blind' s s

s 8 federally registered and common law trademarks as part of Google' keyword-triggered advertising 9 program constitutes trademark infringement; 10 (3) Whether Google' sale of terms identical or substantially similar to American Blind' s s

s 11 federally registered and common law trademarks as part of Google' keyword-triggered advertising 12 program constitutes indirect or contributory trademark infringement; 13 (4) Whether Google' sale of terms identical or substantially similar to American Blind' s s

s 14 federally registered and common law trademarks as part of Google' keyword-triggered advertising s 15 program dilutes American Blind' trademarks; 16 (5) Whether Google' sale of terms identical or substantially similar to American Blind' s s

s 17 federally registered and common law trademarks as part of Google' keyword-triggered advertising s 18 program tarnishes American Blind' trademarks; 19 (6) Whether customers of American Blind are actually confused by Google' sale of terms s

s 20 identical or substantially similar to American Blind' federally registered and common law trademarks s 21 as part of Google' keyword-triggered advertising program; 22 (7) Whether the purchase by various of Google' customers of keywords that are identical or s

s 23 substantially similar to American Blind' federally registered and common law trademarks, and the 24 appearance of the websites of those customers as "Sponsored Links" beside the search results that 25 Google displays in response to search queries using those keywords, is likely to cause confusion as to s 26 whether American Blind' goods and services are associated with the goods and services of the 27 keyword purchasers; 28
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(8) Whether American Blind has suffered any actual damages as a result of Google' sale of s
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s 1 terms identical or substantially similar to American Blind' federally registered and common law 2 trademarks as part of its keyword-triggered advertising program; 3 (9) Whether Google' alleged infringement of American Blind' federally registered and s s

4 common law trademarks is willful and deliberate; 5 (10) Whether Google' sale of terms identical or substantially similar to American Blind' s s

6 federally registered and common law trademarks as part of it keyword-triggered advertising program 7 has resulted in unfair competition; 8 (11) Whether Google shares revenue from its sale of terms identical or substantially similar to

s s 9 American Blind' federally registered and common law trademarks as part of Google' keyword10 triggered advertising program with the Third-Party Defendants or others; 11 (12) To what extent does Google derive profits from the sale of terms identical or substantially

s s 12 similar to American Blind' federally registered and common law trademarks as part of Google' 13 keyword-triggered advertising program to purchasers other than American Blind; 14 (13) To what extent does Google derive profits from the sale of terms identical or substantially

s 15 similar to registered and common law trademarks as part of Google' keyword-triggered advertising 16 program to purchasers other than the mark holders; 17 (14) To what extent do competitors of American Blind benefit unfairly, by exposure, sales or

s 18 "click-throughs", by purchasing terms identical or substantially similar to American Blind' federally s 19 registered and common law trademarks as part of Google' keyword-triggered advertising program; 20 (15) Whether Google has agreed not to permit the sale of terms identical or substantially

21 similar to other trademark holders'trademarks as part of its keyword-triggered advertising program; 22 (16) Whether other customers of Google have complained about Google' sale of terms s

s 23 identical or substantially similar to their trademarks as part of Google' keyword-triggered advertising 24 program. 25 26 27 28
HOWREY SIMON ARNOLD & WHITE, LLP

C.

Service of Process

There are no unserved parties. D. Additional Parties

Neither Google, American Blind, nor the Third-Party Defendants currently intend to join any
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1 additional parties. 2 II. 3 ALTERNATIVE DISPUTE RESOLUTION The parties generally agree that private mediation may be beneficial in this case, and will meet

4 and confer over the appropriate time frame to engage in such mediation. 5 III. 6 INITIAL DISCLOSURES UNDER FED. R. CIV. P. 26(A) Pursuant to this Court' April 22, 2005 Order, the parties will serve their Rule 26 initial s

7 disclosures upon one another on April 27, 2005. 8 IV. 9 10 11 12 13 14 15 16 17 18 19 20 CASE MANAGEMENT PLAN A. Discovery and Trial Schedule

The parties jointly propose 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 Pretrial Conference Statement Pretrial Conference Trial Date B. Protective Order February 27, 2006 March 31, 2006 May 15, 2006 June 30, 2006 July 31, 2006 October 2, 2006 October 12, 2006 November 2006

The parties will meet and confer on an appropriate protective order and submit a proposed

21 order to the Court by May 30, 2005. 22 23 24 /// 25 /// 26 /// 27 /// 28 ///
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C.

Trial Duration

The parties estimate a trial of approximately two weeks.

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1 Dated: April 26, 2005 2 3 4 5 6 7 Dated: April 26, 2005 8 9 10 11 12 13 14 15 16 17 18 Dated: April 26, 2005 19 20 21 22 23 24 25 26 27 28
HOWREY SIMON ARNOLD & WHITE, LLP

KEKER & VAN NEST, LLP

By:

/s/ Michael H. Page MICHAEL H. PAGE Attorneys for Plaintiff/Counter-Defendant GOOGLE INC.

HOWREY LLP

By:

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

TAYLOR & COMPANY LAW OFFICES, INC.

By:

/s/ Stephen E. Taylor STEPHEN E. TAYLOR Attorneys for Third-Party Defendants AMERICA ONLINE, INC., NETSCAPE COMMUNICATIONS CORPORATION, and COMPUSERVE INTERACTIVE SERVICES, INC.

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IT IS SO ORDERED.

____________________________________________ Hon. Jeremy Fogel, United States District Court Judge

ATTESTATION AS TO CONCURRENCE I, Robert N. Phillips, under penalty of perjury of the laws of the United States of America,

11 attest that concurrence in the filing of this document has been obtained from each of the other 12 signatories to this document. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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/s/ Robert N. Phillips Robert N. Phillips

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