Hangingout, Inc. v. Google, Inc.

Filing 12

MOTION for Preliminary Injunction by Hanginout, Inc. (Attachments: # 1 Memo of Points and Authorities, # 2 Declaration of Justin Malone, # 3 Notice of Lodgment of Non-Electronic Exhibits Submitted, # 4 Table of Exhibits to Declaration of Justin Malone, # 5 Exhibit 1 , # 6 Exhibit 2, # 7 Exhibit 3, # 8 Exhibit 4 , # 9 Exhibit 5 , # 10 Exhibit 6 , # 11 Exhibit 7, # 12 Exhibit 8, # 13 Exhibit 9, # 14 Exhibit 10, # 15 Exhibit 11, # 16 Exhibit 12, # 17 Exhibit 13, # 18 Exhibit 14, # 19 Exhibit 15, # 20 Exhibit 16, # 21 Exhibit 17 , # 22 Exhibit 18 , # 23 Exhibit 19 , # 24 Exhibit 20, # 25 Exhibit 21, # 26 Exhibit 22, # 27 Exhibit 23, # 28 Exhibit 24 , # 29 Exhibit 25, # 30 Exhibit 26, # 31 Exhibit 27, # 32 Exhibit 28, # 33 Exhibit 29, # 34 Exhibit 30, # 35 Exhibit 31, # 36 Proof of Service)(Skale, Andrew) (Modified to remove excess text on 1/24/2014) (cge).

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Andrew D. Skale (SBN 211096)
[e-mail]
Justin S. Nahama (SBN 281087)
[e-mail]
MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C.
3580 Carmel Mountain Road, Suite 300
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
HANGINOUT, INC.

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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HANGINOUT, INC., a Delaware
corporation,
Plaintiff,

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vs.
GOOGLE, INC., a Delaware
corporation,

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Defendant.

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Case No. 3:13-cv-02811-AJB-NLS
DECLARATION OF JUSTIN
MALONE IN SUPPORT OF
PLAINTIFF HANGINOUT, INC.’S
MOTION FOR PRELIMINARY
INJUNCTION
Date:
March 13, 2014
Time:
2:00 p.m.
Courtroom 3B
The Honorable Anthony Battaglia

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I, JUSTIN MALONE, DECLARE AS FOLLOWS:

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1.

I am the founder and CEO of Hanginout, Inc. (“Hanginout”). I have

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personal knowledge of the facts set forth in this declaration and could and would

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competently testify as to the same.

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2.

As founder and CEO of Hanginout, I am readily familiar with

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Hanginout’s business operations, including the research, marketing, and product-

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development of Hanginout’s social-media based platforms and iTunes applications

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(“app”).

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CASE NO. 3:13-cv-02811- AJB -NLS

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3.

Hanginout developed the HANGINOUT interactive video-response

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platform and apps to give users the ability to easily build and publish engaging video

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profiles.

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One of the HANGINOUT application’s distinguishing features is a

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question and answer capability giving users the unique ability to field questions from

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other users, by recording and publishing video responses, then sharing them from

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anywhere at any time.

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The Hanginout Pro application also provides real-time analytic solutions

that analyze website demographics, usage, and audience interests.
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Hanginout adopted the HANGINOUT logo and word mark in November

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2008. Attached as Exhibit 1 is a true and correct copy of a Wayback Machine

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screen capture retrieved from archive.org on January 15, 2014, depicting Hanginout’s

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November 2008 use of the Hanginout logo. “Archive.org” alleges to provide a

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method of viewing content on a domain page’s webpage as it existed at various points

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in the past. On information and belief, the website is run by the Internet Archive, a

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501(c)(3) non-profit that was founded in 1996 to build an Internet library, with the

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purpose of offerings permanent access to historical collections that exist in digital

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format.

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7.

Hanginout began developing its social-media based platforms with an

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ultimate goal of providing celebrities, politicians, businesses, and everyday people

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with a platform to organize their social media connections and connect with others

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through a highly-interactive video question and answer (“Q&A”) format.

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In early 2009, we began creating a free mobile platform allowing

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consumers to engage each other through interactive video and empower brands to

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engage their consumers in a more compelling, interest-driven way.

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By March 2010, to promote our product, Hanginout began partnering

with celebrities and professional athletes to create HANGINOUT profiles for its
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CASE NO. 3:13-cv-02811- AJB -NLS

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interactive social-media platform. Attached as Exhibit 2 is a true and correct copy of

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a screen capture of a Hanginout Facebook promotion with NFL athlete Shawne

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Merriman, from the day of the first video shoot.

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From March 2010 through the present, the following non-exhaustive list

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of celebrities and public figures have created Hanginout accounts and published

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content on the HANGINOUT platform:

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

Kassim Osgood ( NFL )

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Shawne Merriman ( NFL )

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

Mitchie Brusco ( X-Games )

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DJ Chuckie ( DJ )

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Eric Griggs ( Music Producer )

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Miles McPhereson ( Pastor, The Rock Church, former San Diego

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Charger )

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Mike Hill ( ESPN )

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Daphne Joy ( Actress/Model )

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Jessica Burciaga ( Model )

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Amanda Cerny ( Model )

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Da Internz ( Music Producers )

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Belmont Lights ( Band )

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In March and April 2011, consumers began registering HANGINOUT

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Profiles and endorsing the product on social-media platforms such as Twitter and

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Facebook. Attached as Exhibit 3 is a true and correct copy of the Hanginout

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endorsements on Twitter that announced the release of our beta and demo platforms.

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From April 1, 2011 to April 20, 2011, we invited hundreds of contacts to

register profiles for the HANGINOUT Platform.
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On May 4, 2011, Hanginout began its broader marketing campaign for

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its Q&A video platform. Hanginout launched several social-media advertising

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initiatives to promote the application. For example, a preview of the HANGINOUT

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platform was posted on LinkedIn. Attached as Exhibit 4 is a true and correct copy of

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the May 4, 2011 LinkedIn announcement regarding the HANGINOUT platform.

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On May 4, 2011, a YouTube video was uploaded explaining the

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HANGINOUT platform and an overview of its general capabilities. Attached as

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Exhibit 5 is a true and correct copy of the Promotional YouTube video for the

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HANGINOUT platform on a CD. Exhibit 5 can also be seen at:

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http://www.youtube.com/watch?v=BWo_x5YviAM&list=FLhZUDGwy0dK7qAClds

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Huidg&index=3

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On May 23, 2011, Tech Cocktail endorsed Hanginout’s “Interactive

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Video Q&A Platform” on Facebook. Attached as Exhibit 6 is a true and correct copy

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of the Tech Cocktail endorsement on Facebook.

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On the same day, Tech Cocktail released an online article endorsing the

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HANGINOUT platform. Attached as Exhibit 7 is a true and correct copy of the May

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23, 2011 Tech Cocktail Article.

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By the end of May 2011, over 200 customers had registered for and used

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Version 1.0 of the HANGINOUT Q&A platform. Presently, there are nearly 8,000

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registered customers.

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On June 1, 2011, Hanginout, Inc. was officially formed as a corporation.

I assigned the rights and goodwill in the HANGINOUT brand to the company.
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On June 9, 2011, Hanginout released another YouTube video detailing

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some key elements of the HANGINOUT platform with celebrities including NFL

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athlete Shawne Merriman. Attached as Exhibit 8 is a true and correct copy of the

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Promotional YouTube video for the HANGINOUT platform on a CD. Exhibit 8 can

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also be seen at:

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http://www.youtube.com/watch?v=18sSmlp9lJY

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On October 24, 2011, San Diego Mayoral candidate Carl DeMaio utilized

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HANGINOUT to create a “virtual town hall” for his campaign. Attached as Exhibit

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9 is a true and correct copy of Carl DeMaio’s website utilizing the HANGINOUT

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platform on a CD. Exhibit 9 can also be seen at:

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http://www.thecampaignsolutionsgroup.com/virtual-townhall/

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On April 10, 2012, Hanginout offered the Hanginout Pro Application to

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provide additional capabilities to its existing customers. The Hanginout Pro

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application permitted users to build an interactive profile to receive questions and

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publish video response instantly. Attached as Exhibit 10 is a true and correct copy of

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the AppAnnie overview of the Hanginout Pro Application.
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On, July 6, 2012, working with Hanginout, popular professional

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skateboarder Mitchie Brusco launched an application utilizing the HANGINOUT

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platform to stay in touch with his friends and fans. Attached as Exhibit 11 is a true

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and correct copy of the App Details for Mitchie Brusco’s HANGINOUT App.

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ESPN ran an article about the Mitchie Brusco application and

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HANGINOUT platform on July 19, 2012, in conjunction with the upcoming X-

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Games. Attached as Exhibit 12 is a true and correct copy of the ESPN article.

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On September 16, 2012, Hanginout officially launched the

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HANGINOUT iOS App in the iTunes Application Store. Apple chose to feature the

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HANGINOUT App.

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On September 18, 2012, iSnoops endorsed the HANGINOUT platform.

Attached as Exhibit 13 is a true and correct copy of iSnoops endorsement.
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On September 28, 2012, AppAnnie ranked the HANGINOUT

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Application fourth in the United States and first in Sweden in the featured social-

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media category. Attached as Exhibit 14 is a true and correct copy of the September

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28, 2012 AppAnnie rankings.

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On November 1, 2012, celebrity and recording artist Sean “Puff Daddy”

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Combs wished me happy birthday on Twitter while referencing the HANGINOUT

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app. Attached as Exhibit 15 is a true and correct copy of the Twitter message from

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Sean Combs.

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As part of Hanginout’s efforts to police its Mark, Hanginout learned that

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the Mark HANGOUT (Reg. No. 3857338) existed. Hanginout filed a petition to

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cancel the HANGOUT registration. The petition was granted and the HANGOUT

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registration was canceled on May 6, 2013. Attached as Exhibit 16 is a true and

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correct copy of the USPTO Cancelation Notice for the HANGOUT Mark.

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I consistently monitored Google Analytics Reports (“Google Reports”)

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from October 2012 through December 23, 2013, to monitor traffic through the

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HANGINOUT iOS Application.

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Attached as Exhibit 17 is the Google Analytic Report for Hanginout’s

Audience Overview between September 15, 2012 and December 23, 2013.
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Attached as Exhibit 18 is the Google Analytic Report for Hanginout’s

International usage between September 15, 2012 and December 23, 2013.
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Attached as Exhibit 19 is the Google Analytic Report for Hanginout’s

United States usage between September 15, 2012 and December 23, 2013.
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Attached as Exhibit 20 is the Google Analytic Report for Hanginout’s

California usage between September 15, 2012 and December 23, 2013.
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The Google Analytic Reports confirm that the Hanginout Application

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was viewed over 1,000,000 times since October 2012; viewed by consumers in 112

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countries throughout the world; and viewed by consumers throughout the United

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States with the largest quantity of consumers in California, specifically Los Angeles

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and San Diego counties.

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Since the HANGINOUT platform’s September 12, 2012 launch through

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December 23, 2013, the HANGINOUT Application was viewed 1,047,549 times.

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Additionally, 87.5 percent of visitors have returned to view the app.

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CASE NO. 3:13-cv-02811- AJB -NLS

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As of December 23, 2013, the HANGINOUT Application was viewed

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by at least one consumer in 112 countries. The U.S. ranks highest among all these

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countries. As of December 23, 2013, the top five states with the most visits are

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California (29,985 visits), New York (7,056 visits), Florida (3,506 visits), Michigan

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(2,701 visits) and Texas (2,629 visits).

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As a result, of the 29,985 visits from California consumers, the three

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cities with the most visits were Los Angeles (4,456 visits), Carlsbad (4,191 visits) and

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San Diego (3,726 visits). In total, there were 347 California cities with at least one

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Application view.

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On December 17, 2013, the USPTO Publication & Issue Review was

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completed for the Hanginout applications, with a publication date of January 21,

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2014. Attached as Exhibit 21 is a true and correct copy of the USPTO’s Notice of

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Publications for Hanginout’s Serial Nos. 85674801 and 85674799.

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Attached as Exhibit 22 is a true and correct copy of Google’s Official

Blog article introducing +Hangouts.
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Attached as Exhibit 23 is a true and correct copy of an AppAnnie

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printout detailing the release and upgrade dates of Google’s “Hangouts” Application.

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AppAnnie collects information on applications (apps that can be downloaded on

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“smart devices” such as smart phones), and provides statistics for those applications.

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Attached as Exhibit 24 is a true and correct copy of the screen capture

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for the top Google search-engine results for “What is Google Hangouts,” retrieved

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January 17, 2014.

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On April 26, 2013, Google filed a federal trademark application to

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register the mark “Hangouts,” Application Serial No. 85916316. Attached as Exhibit

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25 is a true and correct copy of Google’s Application for “Hangouts.”

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On July 30, 2013, the USPTO suspended Google’s Hangouts

application because of the HANGINOUT mark. Attached as Exhibit 26 is a true and

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