TimesLines, Inc v. Facebook, Inc.

Filing 126

MEMORANDUM by TimesLines, Inc in support of motion in limine 125 No. 2 (Van Baren, Bruce)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TIMELINES, INC.
Plaintiff/Counter-Defendant
v.
FACEBOOK, INC.
Defendant/Counter-Plaintiff.

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Civil Action No.: 11 CV 6867
HONORABLE JOHN W. DARRAH
Jury Trial Demanded

TIMELINES’ MEMORANDUM IN SUPPORT OF MOTION IN LIMINE NO. 2
TO EXCLUDE FACEBOOK FROM MENTIONING AT TRIAL THAT FACEBOOK IS
SEEKING CANCELLATION OF THE TIMELINES MARKS
Plaintiff/Counter-Defendant Timelines, Inc. (“Timelines”), through its attorneys, Reed
Smith LLP, moves this Court in limine, pursuant to Federal Rules of Evidence 401, 402, and
403, to bar Defendant/Counter-Plaintiff Facebook, Inc.’s (“Facebook”) from mentioning at trial
or introducing any evidence at trial that Facebook filed a counterclaim seeking the cancellation
of Timelines’ TIMELINES marks. In support of its Motion In Limine No. 2, Timelines state as
follows:
INTRODUCTION
Facebook’s counterclaim to cancel Timelines’ trademark has no bearing on any issue that
the jury must decide. The jury in this case will not decide whether Facebook is successful on its
counterclaim to cancel Timelines’ trademark. Instead, the jury must address Facebook’s alleged
infringement, Facebook’s affirmative defenses, and, if appropriate, damages. Only if the Jury
finds against Timelines is Facebook then entitled to cancellation. And even then, the jury plays
no role. Instead, Facebook must file a petition for cancellation with the Trademark Trial and
Appellate Board or the Court may direct the board to cancel the marks. Because evidence of
Facebook’s counterclaim for cancellation has no probative value, its only function is to unfairly

US_ACTIVE-112506478

prejudice Timelines by legitimizing and crediting Facebook’s infringement. For these reasons,
which are discussed in detail below, the Court should exclude Facebook form presenting any
evidence at trial relating to the fact that Facebook has filed a counterclaim seeking to cancel the
TIMELINES marks.
ARGUMENT
A.

Evidence that Facebook Has Filed a Counterclaim to Cancel the TIMELINES
Marks is not Relevant under Fed. R. Evid. 401 and, Therefore, not Admissible at
Trial.
Timelines anticipates that at trial Facebook will attempt to introduce evidence that

Facebook has filed a counterclaim seeking cancellation of the trademarks in an improper attempt
to legitimize, accredit, and even justify its infringement. This evidence, however, is not relevant
under Fed. R. Evid. 401 and, therefore, is not admissible at trial. See United States v. Klebig,
600 F.3d 700, 710 (7th Cir. 2009) (“[A]ll relevant evidence is admissible, and evidence which is
not relevant is not admissible.” (citing Fed. R. Evid. 402)). Under Fed. R. Evid. 401, evidence is
relevant when it has “any tendency to make the existence of any fact that is of consequence to
the determination of the action more probable or less probable than it would be without the
evidence.” Thompson v. City of Chicago, 472 F.3d 444, 453-54 (7th Cir. 2006) (citing Fed. R.
Evid. 401).
First, Facebook’s counterclaim does not meet the admissibility requirements of Rule 401
because the fact that Facebook has filed a counterclaim has no “tendency to make the existence
of any fact that is of consequence to the determination of the action more probable or less
probable than it would be without the evidence.” See id. There are no independent elements to
Facebook’s counterclaim and the merits of this claim are not directly put to the jury. Instead, the
counterclaim’s success is subsumed in the jury’s determination of whether the TIMELINES

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marks are distinctive or generic. The real issue, therefore, that the jury must decide is whether
Timelines’ trademarks are valid. And whether or not Facebook has counterclaimed to cancel the
marks has no tendency to make the validity of the marks more or less probable. Under Rule 401,
therefore, Facebook’s counterclaim is not relevant and should be excluded from being mentioned
at trial.
B.

Evidence that Facebook Has Filed a Counterclaim to Cancel the TIMELINES
Marks is Not Admissible Under Rule 403 because it is Unfairly Prejudicial and
Confusing.
As set forth above, evidence that Facebook has filed a counterclaim seeking to cancel

Timelines’ trademarks has no probative value. But what this evidence does have, on the other
hand, is a strong potential to prejudice Timelines and confuse the jury. This evidence, therefore,
should be excluded under Rule 403, which permits a district court to “exclude relevant evidence
if its probative value is substantially outweighed by a danger of . . . unfair prejudice, confusing
the issues, misleading the jury, undue delay, wasting of time, or needlessly presenting
cumulative evidence.” United States v. Boros, 668 F.3d 901, 909 (7th Cir. 2012) (citing Fed. R.
Evid. 403).
The introduction of evidence, testimony, or argument related to the fact Facebook has
filed a counterclaim to cancel Timelines’ trademarks has a serious risk of improperly
legitimizing or validating Facebook’s infringement. A jury, for instance, may think that because
Facebook is seeking cancellation, Facebook must have had a good faith belief that the
TIMELINES marks are generic and not protectable. Or worse yet, the jury may inappropriately
infer that the TIMELINES marks are generic simply because Facebook has counterclaimed to
cancel them. Either way, Facebook’s decision to roll out a nearly identically named product will
appear excusable, perhaps even warranted. Because Facebook’s counterclaim for cancellation

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has no bearing on any issue to be decided by the jury, its only purpose would be to prejudice
Timelines.
In addition to being unfairly prejudicial, evidence related to Facebook’s counterclaim for
cancellation will also confuse the jury. The jury in this case is already faced with complex
factual and legal issues in determining the disputed issues related to Facebook’s alleged
infringement, Facebook’s affirmative defenses, and damages. On top of this, the jury should not
be presented with arguments related to a counterclaim that they will not decide or even see
referenced in the jury instructions. Given this evidence’s unfair prejudicial effect and the strong
potential to confuse the issues the jury must actually decide in this case, it is not admissible
under Rule 403.
CONCLUSION
At trial there is no proper role for evidence that Facebook has counterclaimed to cancel
the TIMELINES marks under the Federal Rules of Evidence. Its only purpose would be to
prejudice Timelines and confuse the jury’s assessment of the claims, defenses, and damages
actually at issue in this case. For these reasons and the reasons above, Rules 401, 402, and 403
require that this evidence be excluded at trial. Accordingly, this Court should grant this Motion
In Limine No. 2.
DATED:

April 8, 2013

Respectfully submitted,
TIMELINES, INC.,
Plaintiff/Counter-Defendant
By:

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/s/ Douglas A. Albritton
___________
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 6298337)
Bruce R. Van Baren (SBN 6310375)
REED SMITH LLP

10 South Wacker Drive
Chicago, IL 60606-7507
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff/Counter-Defendant
Timelines, Inc.

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CERTIFICATE OF SERVICE
I, the undersigned attorney, certify that I electronically filed TIMELINES’
MEMORANDUM
IN
SUPPORT
OF
MOTION
IN
LIMINE
NO.
2
TO EXCLUDE FACEBOOK FROM MENTIONING AT TRIAL THAT FACEBOOK IS
SEEKING CANCELLATION OF THE TIMELINES MARKS. Pursuant to Rule 5(b)(3) of
the Federal Rules of Civil Procedure and Local Rule 5.9, I have thereby electronically served all
Filing Users.
DATED: April 8, 2013

Respectfully submitted,
TIMELINES, INC.,
Plaintiff/Counter-Defendant

By: /s/ Douglas A. Albritton
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 6298337)
Bruce R. Van Baren (SBN 6310375)
REED SMITH LLP
10 South Wacker Drive
Chicago, IL 60606-7507
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff/Counter-Defendant
Timelines, Inc.

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