Symantec Corporation v. Comodo Group, Inc

Filing 26

ORDER CONTINUING 2/3/2012 CASE MANAGEMENT CONFERENCE re 25 Case Management Statement filed by Symantec Corporation. Updated Joint Case Management Statement due by 3/30/2012. Case Management Conference set for 4/6/2012 10:00 AM in Courtroom 4, 5th Floor, San Jose. Signed by Judge Edward J. Davila on 1/31/2012. (ecg, COURT STAFF) (Filed on 1/31/2012)

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JEDEDIAH WAKEFIELD (CSB NO. 178058)
[e-mail]
GUINEVERE L. JOBSON (CSB NO. 251907)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, California 94104
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
SYMANTEC CORPORATION

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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SAN FRANCISCO

ATTORNEYS AT LAW

F ENWICK & W EST LLP

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SYMANTEC CORPORATION, a Delaware
corporation,

Case No. 5:11-cv-00760-EJD
SYMANTEC CORPORATION’S
CASE MANAGEMENT
CONFERENCE STATEMENT
AND [PROPOSED] ORDER

Plaintiff,
v.
COMODO GROUP, INC., a Delaware
corporation,

Date:
Time:
Courtroom:
Judge:

Defendant.

April 6, 2012
10:00 A.M.
1, 5th Floor
Hon. Edward J. Davila

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Plaintiff Symantec Corporation (“Symantec”) submits this Case Management Statement
and respectfully requests that the Court further continue the case management conference
approximately 60 days from the date of this statement. Since Symantec filed its last CMC
statement (Dkt. No. 23), the parties have continued to be engaged in meaningful settlement
discussions, and have made significant progress in that regard. The parties have reached an
agreement in principle which is expected to resolve all issues in this litigation as well as related
opposition proceedings before the United States Trademark Trial and Appeal Board. The parties
have exchanged multiple drafts of the agreement in principle and only a few narrow issues remain
outstanding before the parties are able to finalize. Symantec therefore requests a 60-day

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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continuance of the case management conference and of the Rule 26 disclosure obligations to

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provide the parties with sufficient time to pursue their ongoing settlement efforts.

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I.

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THE PARTIES
Symantec is a Delaware corporation with its principal place of business at 350 Ellis Street,

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Mountain View, California. Symantec provides, inter alia, computer, network and Internet

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security technology, providing content and network security software and appliance solutions to

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individuals, enterprises and service providers. In August 2010, Symantec completed its

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acquisition of VeriSign’s identity and authentication business, along with related trademarks.

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Upon information and belief, Comodo is incorporated in Delaware and has a principal

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belief, Comodo operates a website at www.comodo.com and it develops internet security

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ATTORNEYS AT LAW

place of business at 525 Washington Blvd., Jersey City, New Jersey. Upon information and

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F ENWICK & W EST LLP

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solutions.

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II.

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JURSIDICTION AND SERVICE
Plaintiff Symantec served Comodo on May 18, 2011. See Dkt. No. 11. This action arises

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under the Lanham Act (15 U.S.C. §§ 1051-1127 et seq.), federal false designation of origin law

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(15 U.S.C. § 1125(a)), California Business and Professions Code Section 17200, and the common

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law. Symantec contends that this Court has jurisdiction over this subject matter pursuant to

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15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1332, 1338 and 1367. This Court has jurisdiction over

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the state law claims pursuant to 28 U.S.C. §§ 1332, 1338(b), and 1367. Venue is proper in this

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district pursuant to 28 U.S.C. § 1391(b).

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III.

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FACTS
This is a trademark infringement case. Beginning in 1995 and continuing until the sale of

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its identity and authentication business to Symantec in 2010, VeriSign, Inc. (“VeriSign”) used a

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distinctive checkmark symbol (the “Checkmark Logo”) as a trademark to identify its online

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identity and authentication security services. The Checkmark Logo is one of the most recognized

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symbols of online security, signifying to millions of consumers each day that the websites they

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interact with are authentic and that the consumers’ information will be protected when they share

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it with those sites.
SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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On May 19, 2010, Symantec announced its acquisition of VeriSign’s identity and

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authentication security business, and announced Symantec’s plans to incorporate the Checkmark

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Logo into a Symantec company logo. Shortly thereafter, on September 30, 2010, Comodo

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announced a new logo for Comodo’s Internet security services, which Symantec contends is

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confusingly similar to the well-known Checkmark Logo now owned by Symantec.

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Plaintiff filed this action on February 18, 2011, seeking relief for Comodo’s intentional

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infringement of Symantec’s registered trademarks Registration Nos. 3671293 and 3861132, and the

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associated unfair competition committed by Comodo in the adoption and use of a confusingly

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similar logo for directly competitive goods and services. Comodo was served on May 18, 2011

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and has not yet answered. The parties have stipulated on several occasions to extend the time for

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Comodo’s response to the Complaint to facilitate the parties’ settlement efforts.

SAN FRANCISCO

ATTORNEYS AT LAW

F ENWICK & W EST LLP

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The parties continue to be engaged in meaningful settlement discussions, and have made

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progress toward resolution of this matter. The parties have reached an agreement in principle

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which they are in the process of formalizing. This agreement would resolve both the instant

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litigation and the concurrently pending cancellation proceeding before the United States Patent

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and Trademark Office.

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IV.

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FACTUAL ISSUES
Currently the following factual issues presented by Symantec’s claims against Comodo:
i.

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Whether Comodo had actual notice and knowledge, or had constructive notice, of
Plaintiff’s ownership, registrations, and rights in the Checkmark Logo;

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Whether Comodo’s unauthorized use of its checkmark logo is likely to cause

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consumers to be confused as to the source, nature, and quality of the products and

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services Comodo is promoting or selling;

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iii.

Whether Comodo’s unauthorized use of its confusingly similar checkmark logo

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falsely suggests that its products and services are connected with, sponsored by,

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affiliated with, or related to Plaintiff.

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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V.

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LEGAL ISSUES
Currently the following legal issues presented by Symantec’s claims against Comodo:

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i.

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trademark under the Lanham Act or California law;

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ii.

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iii.

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ATTORNEYS AT LAW

F ENWICK & W EST LLP

Whether Comodo’s infringement was willful.

Symantec reserves the right to contest any additional factual or legal assertions in the
event Comodo is served, enters an appearance and raises such issues.
VI.

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Whether Symantec has been and continues to be irreparably harmed by Comodo’s
actions;

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Whether Comodo’s adoption and use of its checkmark logo infringes Symantec’s

MOTIONS
Neither party has yet filed any motions.

VII.

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AMENDMENT OF PLEADINGS
Plaintiff reserves the right to amend its complaint as it continues to investigate Comodo’s

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infringing acts.

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VIII. EVIDENCE PRESERVATION

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Symantec has taken reasonable steps to preserve evidence, including electronically stored

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information, as well as all relevant hard copy files.

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IX.

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DISCLOSURES
As Comodo has not yet answered the complaint, the parties believe it premature to set any

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other schedule, such as for party disclosures under Rule 26(a)(1) and other obligations under the

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Northern District’s Local Rules, and for trial.

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X.

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DISCOVERY
Neither Symantec nor Comodo has served discovery requests on any parties to the Action

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or on any third parties. Symantec anticipates that the scope of discovery will cover the factual

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and legal issues identified above, including all related, ancillary, and subsidiary factual and legal

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issues and matters.

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XI.

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CLASS ACTIONS
This matter is not a class action.

SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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XII.

RELATED CASES
There are no related cases to this action at this time.

XIII. RELIEF
As pleaded in its complaint, Plaintiff Symantec seeks:
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Entry of an order and judgment requiring that Comodo and its officers, agents,

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servants, employees, owners and representatives, and all other persons, firms or corporations in

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active concert or participation with it, be enjoined and restrained from (a) using in any manner the

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Checkmark Logo, mark or domain name that wholly incorporates the Checkmark Logo or is

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confusingly similar to, or a colorable imitation of this mark, including, without limitation, any

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to cause confusion or mistake in the minds of members of the public, or prospective customers of

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ATTORNEYS AT LAW

trademark incorporating the Checkmark Logo; and (b) doing any act or thing calculated or likely

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F ENWICK & W EST LLP

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Plaintiff’s products or services, as to the source of the products or services offered for sale,

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distributed, or sold, or likely to deceive members of the public, or prospective customers, into

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believing that there is some connection between Comodo and Plaintiff;

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ii.

A judgment ordering Comodo, pursuant to 15 U.S.C. § 1116(a), to file with this

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Court and serve upon Plaintiff within thirty (30) days after entry of the injunction, a report in

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writing under oath setting forth in detail the manner and form in which Comodo has complied

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with the injunction, ceased all use of the trademark as set forth above;

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iii.

A judgment order ordering Comodo, pursuant to 15 U.S.C. § 1118, to deliver up

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for destruction, or to show proof of said destruction or sufficient modification to eliminate the

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infringing matter, all articles, packages, wrappers, products, displays, labels, signs, vehicle

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displays or signs, circulars, kits, packaging, letterhead, business cards, promotional items,

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clothing, literature, sales aids, receptacles or other matter in the possession, custody, or under the

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control of Comodo or its agents bearing the trademark in any manner, or any mark that is

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confusingly similar to or a colorable imitation of this mark, including without limitation the

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Comodo trademark, both alone and in combination with other words or terms;

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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iv.

A judgment in the amount of Plaintiff’s actual damages, Comodo’s profits,

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Plaintiff’s reasonable attorneys’ fees and costs of suit, and pre-judgment interest pursuant to

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15 U.S.C. § 1117 in an amount to be determined at trial;

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v.

A judgment for enhanced damages under 15 U.S.C. §1117 and punitive damages

under state law as appropriate;

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vi.

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and proper.

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XIV. SETTLEMENT AND ADR

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A judgment granting Plaintiff such other and further relief as the Court deems just

With respect to ADR, the parties have not yet reached an agreement, as they are currently

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pursuing efforts at resolving the case outside of any formal ADR process.

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XV.

SAN FRANCISCO

ATTORNEYS AT LAW

F ENWICK & W EST LLP

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CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES
Symantec does not consent to a magistrate judge for all purposes.

XVI. OTHER REFERENCES

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The parties do not believe that this case is suitable for reference to binding arbitration, a

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special master, or the Judicial Panel on Multidistrict Litigation.

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XVII. NARROWING OF ISSUES

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The parties are not aware of any issues that can be narrowed at this time. However, as

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noted above the parties have reached an agreement in principle for the resolution of this litigation.

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XVIII. SCHEDULING

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In light of the parties ongoing settlement discussions, the parties request that the case

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management conference set for February 3, 2011 at 10:00 AM be continued for at least 60 days

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(subject to the convenience of the Court); and that the parties initial disclosure obligations under

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Rule 26(f) be extended to 14 days prior to the case management conference.

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XIX. TRIAL

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Symantec has requested a jury trial. Although the parties except the case to settle through

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their ongoing efforts, if the case does not settle Symantec expects the trial to require 10 court

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days.

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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XX.

DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS
On February 24, 2011, plaintiff’s filed their “Certification of Interested Entities or

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Persons” pursuant to Civil Local Rule 3-16 indicating: VeriSign, Inc. Defendant Comodo has

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not yet entered an appearance or filed their “Certification of Interested Entities or Persons”.

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Dated: January 27, 2011

FENWICK & WEST LLP

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By: /s/ Jedediah Wakefield
Jedediah Wakefield

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Attorneys for Plaintiff
SYMANTEC CORPORATION

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SAN FRANCISCO

ATTORNEYS AT LAW

F ENWICK & W EST LLP

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD

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[PROPOSED] ORDER

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The case management conference set before Judge Edward J. Davila on February 3, 2012

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April 6
March 30
at 10:00 AM is hereby continued until ______________ 2012. On or before ___________ 2012,

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the parties shall file an updated joint case management conference statement. The parties’ initial

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disclosures shall be served at least 14 days prior to the case management conference.

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IT IS SO ORDERED.

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January 31,
Dated: ________________, 2012

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_______________________________________
The Honorable Edward J. Davila
United States District Court Judge

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SAN FRANCISCO

ATTORNEYS AT LAW

F ENWICK & W EST LLP

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SYMANTEC CORPORATION’S CASE
MANAGEMENT CONFERENCE STATEMENT

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CASE NO. 5:11-CV-00760-EJD