Hangingout, Inc. v. Google, Inc.

Filing 50

ANSWER to 14 Amended Complaint by Google, Inc.(Caruso, Margaret) (cge).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Margret M. Caruso (Bar No. 243473)
[e-mail]
2
Cheryl A. Galvin (Bar No. 252262)
[e-mail]
3
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, California 94065
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Telephone: [phone]
Facsimile: [phone]
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Attorneys for Google Inc.
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7

UNITED STATES DISTRICT COURT

8

SOUTHERN DISTRICT OF CALIFORNIA

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10

HANGINOUT, INC,, a Delaware
11 corporation,
Plaintiff,

12
13

vs.

14 GOOGLE, INC., a Delaware
corporation,
15
Defendants.
16

CASE NO. 3:13-CV-02811-AJB-NLS
GOOGLE INC.’S ANSWER AND
AFFIRMATIVE DEFENSES TO
PLAINTIFF HANGINOUT, INC.’S
FIRST AMENDED COMPLAINT
AND DEMAND FOR JURY TRIAL

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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

Defendant Google Inc. (“Google”), through its counsel, answers the First

2 Amended Complaint (“Complaint”) of Plaintiff Hanginout, Inc., (“Hanginout”) as
3 set forth below. Unless specifically admitted, Google denies each of the allegations
4 of Hanginout’s Complaint.
THE PARTIES

5
6

1.

Google lacks knowledge or information sufficient to form a belief as to

7 the truth or falsity of the allegations in Paragraph 1 and therefore denies those
8 allegations.
9

2.

Google admits that it is a corporation organized and existing under the

10 laws of the State of Delaware with its principal place of business located at 1600
11 Amphitheatre Parkway, Mountain View, California 94043.
3.

12

Google lacks knowledge or information sufficient to form a belief as to

13 the truth or falsity of the allegations in Paragraph 3 and therefore denies those
14 allegations.
JURISDICTION AND VENUE

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4.

16

Google admits that Hanginout is attempting to assert claims under the

17 Lanham Act, 15 U.S.C. §§ 1051, et seq., and that the Court has federal question
18 jurisdiction over such claims. Google admits that the Court has supplemental
19 jurisdiction over the remaining California state law claims.
20

5.

Google admits that Hanginout is attempting to assert claims under the

21 Lanham Act, 15 U.S.C. § 1051, et seq., and that the Court has jurisdiction over such
22 claims.
23

6.

Google admits that the court has supplemental jurisdiction over

24 Hanginout’s California state law claims.
25

7.

Google admits that Google conducts business in California and that it

26 has its principal place of business in California. Google denies the remaining
27 allegations in Paragraph 7.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

8.

For purposes of this action, Google admits that venue in this district is

2 proper.
3

GENERAL ALLEGATIONS

4

Hanginout’s Background and Products

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9.

Google lacks knowledge or information sufficient to form a belief as to

6 the truth or falsity of the allegations in Paragraph 9 and therefore denies those
7 allegations.
8

10.

Google lacks knowledge or information sufficient to form a belief as to

9 the truth or falsity of the allegations in Paragraph 10 and therefore denies those
10 allegations.
11.

11

Google lacks knowledge or information sufficient to form a belief as to

12 the truth or falsity of the allegations in Paragraph 11 and therefore denies those
13 allegations.
12.

14

Google lacks knowledge or information sufficient to form a belief as to

15 the truth or falsity of the allegations in Paragraph 12 and therefore denies those
16 allegations.
13.

17

Google lacks knowledge or information sufficient to form a belief as to

18 the truth or falsity of the allegations in Paragraph 13 and therefore denies those
19 allegations.
20

14.

Google lacks knowledge or information sufficient to form a belief as to

21 the truth or falsity of the allegations in Paragraph 14 and therefore denies those
22 allegations.
23

15.

Google lacks knowledge or information sufficient to form a belief as to

24 the truth or falsity of the allegations in Paragraph 15 and therefore denies those
25 allegations.
16.

26

Google lacks knowledge or information sufficient to form a belief as to

27 the truth or falsity of the allegations in Paragraph 16 and therefore denies those
28 allegations.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

17.

Google lacks knowledge or information sufficient to form a belief as to

2 the truth or falsity of the allegations in Paragraph 17 and therefore denies those
3 allegations.
4

18.

Google lacks knowledge or information sufficient to form a belief as to

5 the truth or falsity of the allegations in Paragraph 18 and therefore denies those
6 allegations.
7

19.

Google lacks knowledge or information sufficient to form a belief as to

8 the truth or falsity of the allegations in Paragraph 19 and therefore denies those
9 allegations.
10

20.

Google lacks knowledge or information sufficient to form a belief as to

11 the truth or falsity of the allegations in Paragraph 20 and therefore denies those
12 allegations.
Federal Trademark Applications for Hanginout

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21.

14

Google lacks knowledge or information sufficient to form a belief as to

15 the truth or falsity of the allegations in Paragraph 21 and therefore denies those
16 allegations.
22.

17

Google admits that Exhibit A is a document showing assignment of

18 Serial No. 85674801 to the HANGINOUT word mark application. Google admits
19 that Exhibit B is a document showing assignment of Serial No. 85674799 to the
20 HANGINOUT design mark application. Google lacks knowledge or information
21 sufficient to form a belief as to the truth or falsity of the remaining allegations in
22 Paragraph 22 and therefore denies those allegations.
23

23.

Google admits that the quoted language appears on Exhibit A. Google

24 lacks knowledge or information sufficient to form a belief as to the truth or falsity of
25 the remaining allegations in Paragraph 23 and therefore denies those allegations.
26

24.

Google admits and avers that the HANGINOUT application has been

27 published for opposition by the USPTO. Google denies the remaining allegations of
28 the first sentence of Paragraph 24. Google lacks knowledge or information
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1 sufficient to form a belief as to the rest of the allegations in Paragraph 24 and
2 therefore denies those allegations.
Google Launches Google Hangouts

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4

25.

Google admits that on June 28, 2011, Google’s official blog contained

5 an announcement for the Google+ project, including an announcement of Google’s
6 new messaging platform, “Hangouts,” and a “Field Test” of Google+. Google
7 denies the remaining allegations in Paragraph 25.
8

26.

Google denies that Google officially launched its “Hangouts”

9 messaging platform on May 15, 2013, and denies that it first used the HANGOUTS
10 mark on May 15, 2013. Google avers that it officially launched the “Hangouts”
11 platform on June 28, 2011 and that its first public use date of the HANGOUTS mark
12 is June 28, 2011.
27.

13

Google lacks knowledge or information sufficient to form a belief as to

14 the truth or falsity of the number of viewers and downloads of the HANGINOUT
15 app and therefore denies those allegations. Google denies the remaining allegations
16 in Paragraph 27.
28.

17

Google admits that Hangouts is a video-conferencing and instant

18 messaging service that enables both one-on-one and group chats. Google admits the
19 allegations of the second sentence of Paragraph 28, but denies the implication that
20 those are the only means of accessing Hangouts. Google denies the remaining
21 allegations in Paragraph 28.
22

29.

Google admits that on April 26, 2013 it filed an application to register

23 the mark HANGOUTS, which was assigned Serial No. 85916316.
24

30.

Google admits that the word HANGINOUT has some similarity in

25 appearance, sound, and meaning to the word HANGOUTS. Google denies that the
26 two marks are nearly identical and denies the implication that the parties’ marks
27 appear the same in the marketplace.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

31.

Google admits that the quoted words in Paragraph 31 can be found on

2 Google’s trademark application for HANGOUTS. Google denies the remaining
3 allegations in Paragraph 31.
4

32.

Google admits that its Hangouts app is available at the iTunes store.

5 Google lacks knowledge or information sufficient to form a belief as to the truth or
6 falsity of the remaining allegations in the first sentence of Paragraph 32 and
7 therefore denies those allegations. Google denies the remaining allegations in
8 Paragraph 32.
9

33.

Google admits that on July 30, 2013, the U.S. Patent and Trademark

10 Office sent an office action to Google giving notice that it was suspending Google’s
11 HANGOUTS application because of the HANGINOUT applications. Google
12 admits that a copy of the office action is attached as EXHIBIT C.
13

34.

Google admits that the office action stated that if the HANGINOUT

14 marks register, HANGOUTS may be refused registration because of a possible
15 likelihood of confusion between the marks. Google denies the remaining allegations
16 of Paragraph 34.
17

35.

Google admits and avers that on or around September 12, 2013 it

18 introduced the Live Q&A app for its Hangouts On Air product. Google denies the
19 remaining allegations of Paragraph 35.
20

36.

Google admits that it markets its Hangouts products. Google denies the

21 remaining allegations of Paragraph 36.
22

37.

Google admits and avers that it has described the product capabilities of

23 Hangouts to include:
24

a.

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“Bring your conversations to life with photos, emoji, and even
group video calls for free.”

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b.

“Turn any Hangout into a live video call with up to 10 friends or

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simply search for a contact to start a voice call from your

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computer.”
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

c.

2

“Hangouts works on computers, Android and Apple devices, so
you can connect with everyone, and no one gets left out.”

3 Google denies the remaining allegations of Paragraph 37.
4

FIRST CAUSE OF ACTION

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TRADEMARK INFRINGEMENT

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(15 U.S.C. § 1125 et seq.)

7

38.

Google incorporates by reference its responses in each and every

8 paragraph of this Answer with the same force and effect as if fully set forth herein.
9

39.

Google lacks knowledge or information sufficient to form a belief as to

10 the truth or falsity of the allegations in Paragraph 39, and therefore denies those
11 allegations.
40.

12

Google lacks knowledge or information sufficient to form a belief as to

13 the truth or falsity of the allegations in Paragraph 40, and therefore denies those
14 allegations.
41.

15

Google lacks knowledge or information sufficient to form a belief as to

16 the truth or falsity of the allegations in the first sentence of Paragraph 41, and
17 therefore denies those allegations. Google denies that its HANGOUTS mark was
18 ever infringing and denies that HANGINOUT had market penetration before Google
19 first used HANGOUTS.
20

42.

Google admits that the word HANGOUTS has some similarity in

21 appearance, sound, and meaning to the word HANGINOUT. Google admits that
22 HANGOUTS and HANGINOUT have the same order of “hang” and “out.” Google
23 denies the remaining allegations of Paragraph 42 and denies the implication that the
24 parties’ marks appear the same in the marketplace.
25

43.

Google denies the allegations in Paragraph 43.

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44.

Google denies the allegations in Paragraph 44.

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45.

Google denies the allegations in Paragraph 45.

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46.

Google denies the allegations in Paragraph 46.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

47.

Google denies the allegations in Paragraph 47.

2

48.

Google denies the allegations in Paragraph 48.

3

49.

Google denies the allegations in Paragraph 49.

4

50.

Google denies the allegations in Paragraph 50.

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SECOND CAUSE OF ACTION

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FEDERAL UNFAIR COMPETITION

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(15 U.S.C. § 1125 et seq.)

8

51.

Google incorporates by reference its responses in each and every

9 paragraph of this Answer with the same force and effect as if fully set forth herein.
10

52.

Google denies the allegations in Paragraph 52.

11

53.

Google denies the allegations in Paragraph 53.

12

54.

Google denies the allegations in Paragraph 54.

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THIRD CAUSE OF ACTION

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STATUTORY (Cal. B&P 17200 et seq.) AND COMMON LAW UNFAIR
COMPETITION

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17

55.

paragraph of this Answer with the same force and effect as if fully set forth herein.
56.

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Google denies the allegations in Paragraph 60.
PRAYER FOR RELIEF

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Google denies that Hanginout is entitled to any relief from Google.

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FURTHER ANSWER AND AFFIRMATIVE DEFENSES

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Google denies the allegations in Paragraph 59.

60.

21

Google denies the allegations in Paragraph 58.

59.

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Google denies the allegations in Paragraph 57.

58.

19

Google denies the allegations in Paragraph 56.

57.

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Google incorporates by reference its responses in each and every

By way of further Answer and affirmative defenses, Google denies that it is
liable to Plaintiff on any of the claims alleged and denies that Plaintiff is entitled to

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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1 damages, treble or punitive damages, equitable relief, attorney’s fees, costs, pre2 judgment interest or to any relief whatsoever from Google, and states as follows:
3

FIRST AFFIRMATIVE DEFENSE

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(FAILURE TO STATE A CLAIM)

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61.

The Complaint, on one or more counts set forth therein, fails to state a

6 claim upon which relief can be granted.
7

SECOND AFFIRMATIVE DEFENSE

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(LACK OF OWNERSHIP OF VALID TRADEMARK RIGHTS)

9

62.

Plaintiff’s claims fail because Plaintiff does not own valid rights in the

10 alleged trademarks.
11

THIRD AFFIRMATIVE DEFENSE

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(LACK OF SENIOR TRADEMARK RIGHTS)
63.

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Plaintiff’s claims fail because Plaintiff does not have trademark rights

14 in HANGINOUT that are senior to Google’s trademark rights in HANGOUTS.
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FOURTH AFFIRMATIVE DEFENSE

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(NON-INFRINGEMENT)

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Google has not infringed any applicable trademarks under federal or state law.

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FIFTH AFFIRMATIVE DEFENSE

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(INNOCENT INFRINGEMENT)

20

64.

The claims made in the Complaint are barred, in whole or in part,

21 because any infringement, if any, was innocent.
22

SIXTH AFFIRMATIVE DEFENSE

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(NO WILLFUL CONDUCT)

24

65.

Plaintiff’s claims for enhanced damages and an award of fees and costs

25 against Google have no basis in fact or law and should be denied.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

SEVENTH AFFIRMATIVE DEFENSE

2

(NO DAMAGE)

3

66.

Without admitting that the Complaint states a claim, there has been no

4 damage in any amount, manner or at all by reason of any act alleged against Google
5 in the Complaint, and the relief prayed for in the Complaint therefore cannot be
6 granted.
7

EIGHTH AFFIRMATIVE DEFENSE

8

(LACK OF IRREPARABLE HARM)

9

67.

Plaintiff’s claims for injunctive relief are barred because Plaintiff

10 cannot show that it will suffer any irreparable harm from Google’s actions.
11

NINTH AFFIRMATIVE DEFENSE

12

(ADEQUACY OF REMEDY AT LAW)
68.

13

The alleged injury or damages suffered by Plaintiff, if any, would be

14 adequately compensated by damages. Accordingly, Plaintiff has a complete and
15 adequate remedy at law and is not entitled to seek equitable relief.
16

TENTH AFFIRMATIVE DEFENSE

17

(FAILURE TO MITIGATE)
69.

18

The claims made in the Complaint are barred, in whole or in part,

19 because of a failure to mitigate damages, if such damages exist.
20

ELEVENTH AFFIRMATIVE DEFENSE

21

(DUPLICATIVE CLAIMS)

22

70.

Without admitting that the Complaint states a claim, any remedies are

23 limited to the extent that there is sought an overlapping or duplicative recovery
24 pursuant to the various claims for any alleged single wrong.
25

TWELFTH AFFIRMATIVE DEFENSE

26

(WAIVER, ACQUIESCENCE, ESTOPPEL)

27

71.

Each of the purported claims set forth in this Complaint is barred by the

28 doctrines of waiver, acquiescence, and estoppel.
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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT

1

THIRTEENTH AFFIRMATIVE DEFENSE

2

(LACHES)

3

72.

Plaintiff’s claims are barred in whole or in part by laches, in that

4 Plaintiff has unreasonably delayed to enforce its rights, if any, despite its full
5 awareness of Google’s actions.
6

FOURTEENTH AFFIRMATIVE DEFENSE

7

(UNCLEAN HANDS)

8

73.

Plaintiff’s claims are barred in whole or in part by the doctrine of

9 unclean hands.
ADDITIONAL DEFENSES

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74.

11

Google reserves the right to assert additional defenses.
JURY DEMAND

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13

A jury trial is demanded on all issues so triable.

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WHEREFORE, Google prays for judgment as follows:

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1.

That Hanginout takes nothing by way of its Complaint;

16

2.

That the Complaint, and each and every purported claim for relief

17 therein, be dismissed with prejudice;
3.

18

That Google be awarded its costs of suit incurred herein, including

19 attorneys’ fees and expenses; and
20

4.

For such other and further relief as the Court deems just and proper.

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22 DATED: June 25, 2014
23

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

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By /s/ Margret M. Caruso
Margret M. Caruso
Attorneys for Google Inc.

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GOOGLE INC.’S ANSWER TO HANGINOUT’S FIRST AMENDED COMPLAINT