Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. et al

Filing 82

Memorandum in Opposition re 73 Supplemental MOTION for Summary Judgment ; Declaration and Exhibits in Support filed byLouis Vuitton Malletier, S.A.. (Coombs, J.) (Filed on 8/18/2008)

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. et al

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J. Andrew Coombs (SBN 123881) [e-mail] Annie S. Wang (SBN 243027) [e-mail] J. Andrew Coombs, A Prof. Corp. 517 E. Wilson Ave., Suite 202 Glendale, California 91206 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff Louis Vuitton Malletier, S.A. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE) Louis Vuitton Malletier, S.A., v. Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. C 07 3952 JW OPPOSITION OF PLAINTIFF LOUIS VUITTON MALLETIER, S.A. TO DEFENDANTS' SUPPLEMENTAL MOTION FOR SUMMARY JUDGMENT; DECLARATION AND EXHIBITS IN SUPPORT Date: September 8, 2008 Time: 9:00 a.m. Court: Hon. James Ware

Akanoc Solutions, Inc., et al. Defendants.

Plaintiff Louis Vuitton Malletier, S.A. ("Plaintiff" or "Louis Vuitton") submits this Opposition to the Supplemental Motion for Summary Judgment of Defendants Akanoc Solutions, Inc. ("Akanoc"), Managed Solutions Group, Inc. ("MSG") (collectively the "ISP Defendants") and Steven Chen ("Chen"). The ISP Defendants and Chen are collectively referred to herein as Defendants.

Louis Vuitton v. Akanoc, et al.: Opposition to Defendants' Supplemental Motion for Summary Judgment

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INTRODUCTION Defendants' belated "supplemental" motion (the "Supplemental Motion") should be denied. 1 Like Defendants' initial motion for summary judgment, the Defendants' Supplemental Motion is predicated upon an inaccurate statement of applicable legal principles, an incomplete statement of the record and is properly denied based on the Defendants' own failure to meet its prima facie burden (which is nonetheless rebutted for additional reasons set forth in the attached supporting declaration of J. Andrew Coombs ­ the "Supp. Coombs Decl."). STATEMENT OF FACTS Plaintiff notified Defendants of infringing websites directly and through counsel before the lawsuit, and after the lawsuit, through counsel only. See Declaration of Nikolay Livadkin in Support of Plaintiff's Opposition to Motion for Summary Judgment ("Livadkin Decl.") at ¶¶ 1719; Exhibit 1507 to Declaration of James A. Lowe in Support of Defendants' Supplemental Motion for Summary Judgment (Deposition of Nikolay Livadkin ("Livadkin Depo.")) at p. 181:2. During the Parties' Rule 26(f) conference which took place on October 23, 2007, 2 Defendants' counsel requested that future notifications of infringing activity hosted on Defendants' services be directed to them so that Defendants could "take action instantly." Supp. Coombs Decl. at ¶ 2. Plaintiff then notified Defendants of a number of infringing sites prior to Defendants' "Interim Designation" of an agent to accept complaints with the Copyright Office, most of which
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Defendants bring this so-called Supplemental Motion to address additional Websites added in the First Amended Complaint (FAC) for which leave to file was granted after the Defendants' initial motion was filed. It does not purport to alter grounds asserted in the initial motion as they pertain to the underlying contributory and vicarious infringement alleged in the original Complaint, only to insert additional grounds as they relate to the added websites alleged in the FAC. Louis Vuitton therefore submits this Supplemental Opposition to try and help maintain clarity with respect to those separate issues alleged in the "Supplemental" Motion for Summary Judgment. Of course, if the Court denies the underlying motion, this Supplemental Motion should also be denied for all reasons set forth in Louis Vuitton's Opposition to the underlying motion.

An example of Defendants' misstatement of the record is clearly demonstrated in a footnote that the Parties' Rule 26 early meeting took place on December 6, 2007. Proof of this clearly erroneous statement is that the Case Management Conference Statement and Proposed Order was filed with the Court on November 8, 2007. Supplemental Motion, 3:27-28 n. 3.
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were among the additional websites listed in the FAC. Id. at ¶ 3. 3 Still more websites listed in the FAC were first identified in discovery requests served on Defendants' counsel on January 3, 2008. Id. at ¶ 4. Notification protocol of letters to counsel continued until the settlement conference which took place on June 6, 2008, when Defendants' counsel indicated a Digital Millennium Copyright Act ("DMCA") format was necessary for notification letters. Id. at ¶¶ 3-4. Plaintiff thereafter sent DMCA formatted letters to counsel as the Defendants are represented parties, and Defendants' counsel sent responses to two, evidencing that complained of websites included in the FAC were hosted by Defendants. Id. at ¶¶ 6-8, Exs. C-D. Furthermore, Defendants forwarded a number of emails which show that complained of websites listed in the FAC were hosted by Defendants. Id. at ¶ 5. Contrary to Defendants' incomplete quote from the testimony of Robert L. Holmes, Plaintiff's investigator found "many dozens" of websites hosted by Defendants which were selling or offering goods that are purported to be counterfeit. Coombs Decl. at ¶ 10, Ex. G at p. 167:17- 168:13 (Deposition of Robert L. Holmes). More recently, Defendants' Objections to Magistrate Judge Lloyd's Order Compelling Discovery and their inapplicable argument as to the Stored Communications Act were overruled and compliance with the discovery order is expected to follow. Id. at Ex F. Plaintiff anticipates additional documents to be produced. ARGUMENT A. Defendants' Own Produced Documents, However Minimal, Show Unequivocally That They Hosted Infringing Websites Listed in the First Amended Complaint Defendants' argument that Louis Vuitton has no admissible evidence concerning the added websites listed in the FAC us flatly contradicted by the record. Supplemental Motion, p. 10:11-12. Defendants' corollary assertion that the allegations should be rejected for failure to disclose counsel of record as the "only" competent witness on these issues is accordingly, irrelevant. . The ISP Defendants state they registered agents to receive complaints with the Copyright Office in compliance with the DMCA on November 30, 2007. See Exhibits 1505 and 1506 to the Declaration of Steve Chen in Support of Defendants' Supplemental Motion for Summary Judgment. Plaintiff's notifications which included most of the additional websites listed in the FAC, began at least as of November 26, 2007, pre-dating Defendants' belated registration.
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Aside from the admissible evidence attached to Plaintiff's Opposition to Defendants' Motion for Summary Judgment, this contention is also flatly false given Defendants' own records of contacting their "customers" in response to complaints by Louis Vuitton of websites listed in the FAC. Coombs Decl. ¶ 5 and Exs. A-D. The Defendants' own testimony and documents evidencing receipt of these demands and their stated protocol (to ping and forward complaints) corroborates their hosting of the sites. Declaration of Steven Chen in Support of Summary Judgment, ¶¶ 11-15. In other words, Louis Vuitton can prove up Defendants' receipt of the various demands without calling counsel of record (or defense counsel of record as a witness) given Mr. Chen's testimony and Defendants' documents evidencing activity taken in response to Louis Vuitton's post-litigation demands. Defendants' contention is simply unsupported by their own record and the Supplemental Motion is properly denied. B. Counsel for Plaintiff Does Not Make Himself a Witness By Acting on Behalf of a Client Defendants' strategy of somehow characterizing Plaintiff's counsel as a necessary witness is unfounded and, given Defendants' own request for notices to defense counsel of record, Defendants are properly estopped from making any such assertion. Plaintiff's witness clearly stated in the excerpt chosen by Defendants to include in support of their Supplemental Motion that later notices to Defendants were sent "through counsel." Livadkin Depo at p. 181:2. Plaintiff's same witness later declared that Plaintiff identified numerous other websites, some of which were the subject of letters sent by Plaintiff's counsel to Defendants. Livadkin Decl. at ¶¶ 17-19. Plaintiff is not familiar with any rule that automatically requires an attorney to be a necessary witness for sending letters on behalf of a client. Plaintiff properly identified its witnesses in its initial disclosures and Plaintiff's counsel is neither a necessary or appropriate witness in this case.

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C. Notices Sent by Louis Vuitton are Admissible in Light of Defendants' Counsel's Requests and Subsequent Responses as well as Defendants' Failures to Comply with the DMCA On October 23, 2007, Defendants' specifically requested that notices of additional infringing websites be forwarded to counsel for immediate handling. Coombs Decl. at ¶ 2. Plaintiff complied with this request. Id. at ¶¶ 3-4. After Defendants' counsel requested DMCA formatted letters in June 2008, Plaintiff complied with this request, and Defendants' counsel responded to two such letters. Id. at ¶¶ 6-8. In addition, Plaintiff sent to defense counsel a list of websites in connection with discovery, and Defendants were represented parties. Thus, communications from Plaintiff's counsel were not and could not be sent directly to Defendants. 4 Therefore, all of Plaintiff's notifications of infringing websites, including those listed in the FAC were proper and are admissible. The irony of Defendants' reliance upon the technical requirements for notice under the Digital Millennium Copyright Act are record-breaking - even were it not for Defendants' counsels' express request during the early meeting of counsel and acquiescence in the various notices transmitted in reliance upon that request. First, Louis Vuitton also claims infringement of trademarks which are in no way implicated by the DMCA which only applies to copyright infringement. Second, the requirement of notice under the DMCA does not speak to all liability but only to specified relief from which the ISP is given immunity. Third, the Defendants' own testimony in support of the motion demonstrates that they, themselves, were non-compliant with key elements of the DMCA, specifically including Defendants' own failure to designate an agent for receipt of complaints with the Copyright Office until after November 30, 2007, well after the complaint was filed, after several letters to Defendants concerning infringing websites went unanswered and after the November 26 demand raising issues with many of the additional websites listed in the FAC. Supp. Coombs Decl., Ex. A. Rules of Professional Conduct 2-100(A) states: "While representing a client, a member shall not communicate directly or indirectly about the subject of the representation with a party the member knows to be represented by another lawyer in the matter, unless the member has the consent of the other lawyer."
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Defendants' have no excuse for their failure to adequately respond to notices both properly formatted under the DMCA or requested by Defendants', and actually received by Defendants or their attorneys. CONCLUSION For the foregoing reasons, Plaintiff respectfully requests the Court deny Defendants' supplemental motion for summary judgment. Dated: August 18, 2008 J. Andrew Coombs, A Professional Corp. ___/s/ J. Andrew Coombs_______________________ By: J. Andrew Coombs Annie S. Wang Attorneys for Plaintiff Louis Vuitton Malletier, S.A.

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DECLARATION OF J. ANDREW COOMBS I, J. Andrew Coombs, declare as follows: 1. I am an attorney at law duly admitted to practice before the Courts of the State of

California and the United States District Court for the Northern District of California. I am counsel of record for Plaintiff Louis Vuitton Malletier, S.A. ("Plaintiff" or "Louis Vuitton") in an action styled Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., et al., Case No. C 07 3952 JW. I submit this declaration in support of Plaintiff's Opposition to Defendants' Supplemental Motion for Summary Judgment. Except as otherwise stated to the contrary, I have personal knowledge of the following facts and, if called as a witness, I could and would competently testify as follows. 2. On or about October 23, 2007, the Parties conducted their early meeting of counsel

pursuant to Fed. R. Civ. P. 26(f) telephonically. During this meeting, Defendants' counsel, James A. Lowe requested notifications be directed to them of additional infringing websites so that Defendants could "take action instantly." 3. On November 26, 2007, my office sent to Defendants' counsel a letter on behalf of

Louis Vuitton which included a number of websites, the majority of which constituted the additional websites listed in the First Amended Complaint ("FAC"). Attached hereto as Exhibit A is a true and correct copy of my letter from November 26, 2007. 4. Most of the remaining additional websites listed in the First Amended Complaint

were included in discovery requests which were served on Defendants' counsel on January 3, 2008. An additional website listed in the FAC was the subject of a telephone and email follow up notification to Defendants' counsel on or about February 19, 2008. Some of the websites listed in the discovery requests and other additional newly discovered websites were the subject of additional notification to Defendants' counsel by letter on behalf of Louis Vuitton on March 3, 2008, March 31, 2008, April 7, 2008, and June 2, 2008. Attached collectively hereto as Exhibit B
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are true and correct copies of the list of websites attached to Plaintiff's discovery requests as well as Plaintiff's letters (without exhibits) to Defendants' counsel from March 3, 2008, March 31, 2008, April 7, 2008, and June 2, 2008. 5. I received production of documents on behalf of Defendants from Defendants'

counsel and also an optical disc with various emails post-dating the lawsuit concerning some of the websites listed in the Exhibit A letter and now included in the FAC. (These emails were produced in a <.pst> format. Defense counsel provided instructions on accessing the content by importing the folder into Microsoft Outlook. Although this enabled Louis Vuitton to access the text content, the format prints out in "native" format so the Defendants' own production appears printed with "Andy Coombs" headers which have been redacted.) Attached as Exhibit E to my declaration in support of the Opposition to Defendants' Motion for Summary Judgment includes true and correct copies of some of the documents forwarded by Defendants to me showing correspondence between Defendants' and their "customers" regarding some of the additional websites listed in the FAC. 6. At the settlement conference, on June 6, 2008, counsel for Defendants', James A.

Lowe indicated to me that Plaintiff's notices to Defendants' counsel needed to conform to the DMCA. On or about June 20, 2008, my office sent to Defendants' counsel a DMCA format letter on behalf of Louis Vuitton regarding one of the additional websites listed in the FAC because Defendants are represented Parties. On or about June 24, 2008, Defendants' counsel responded and stated that Louis Vuitton's complaint was reported to Defendants' "customer". Attached collectively hereto as Exhibit C are true and correct copies of Plaintiff's letter dated June 20, 2008, and Defendants' response of June 24, 2008. 7. On or about June 24, 2008, my office sent to Defendants' counsel a DMCA format

letter on behalf of Louis Vuitton regarding one of the additional websites listed in the FAC because Defendants are represented Parties. On or about June 27, 2008, Defendants' counsel responded
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and stated that Louis Vuitton's complaint was reported to Defendants' "customer". Attached collectively hereto as Exhibit D are true and correct copies of Plaintiff's letter dated June 24, 2008, and Defendants' response of June 27, 2008. 8. More recently, on or about July 25, 2008, my office sent to Defendants' counsel a

DMCA format letter on behalf of Louis Vuitton regarding recidivist and additional websites, some of which were the subject of one or two prior complaints by Louis Vuitton. Attached hereto as Exhibit E is a true and correct copy of Plaintiff's letter dated July 25, 2008. 9. Attached hereto as Exhibit F is a true and correct copy of the Court's Order

Overruling Defendants' Objections to Magistrate Judge Lloyd's Order Compelling Discovery entered August 7, 2008. 10. Attached Exhibit G is a true and accurate copy of portions of the transcript from the

deposition testimony of Robert L. Holmes which I attended. I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct. Executed this 18th day of August, 2008, at Glendale, California. _________/s/ J. Andrew Coombs__________ J. ANDREW COOMBS

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