TimesLines, Inc v. Facebook, Inc.

Filing 157

MEMORANDUM by Facebook, Inc. in Opposition to motion in limine 133 No. 5 to Bar Arguments or Reference to Advice of Counsel Defense (Willsey, Peter)

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

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

DEFENDANT FACEBOOK, INC.’S OPPOSITION TO PLAINTIFF’S MOTION IN
LIMINE NO. 5 TO BAR ARGUMENTS AND EVIDENCE IN SUPPORT OF
AN ADVICE OF COUNSEL DEFENSE
Plaintiff’s Motion in Limine No. 5 (“Motion”) lacks any basis and is unnecessary.
Plaintiff asks the Court to enter an order barring Facebook from “introducing evidence of, or
otherwise asserting, either directly or indirectly, an advice of counsel defense” to Plaintiff’s
claims that Facebook’s alleged trademark infringement was willful and intentional. (Pl.’s Br.,
Dkt. No. 134, at p.1.) Yet Facebook has never indicated at any point throughout the course of
this litigation that it intends to assert an advice of counsel defense. Indeed, Facebook has
steadfastly maintained that any legal advice Facebook may have obtained concerning its decision
to adopt and use the common word “timeline” to describe or identify its timeline interface
feature is protected by the attorney-client privilege, and Facebook has not produced documents
or testimony containing any such advice.
There simply is no reasonable basis for Plaintiff’s claim that it “anticipates that Facebook
will seek to introduce evidence or arguments that it acted on the advice of counsel in clearing,
adopting, and using the ‘Timeline’ term.” (Id.) Not surprisingly, Plaintiff’s Motion fails to
identify any basis for its belief in this regard. As has been conveyed to Plaintiff on numerous
occasions, Facebook does not intend to assert an advice of counsel defense at trial. Facebook is

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therefore negotiating with Plaintiff’s counsel for an appropriate stipulation that should allay
Plaintiff’s unfounded concerns.
Nevertheless, Facebook opposes Plaintiff’s Motion due to the overreaching and
somewhat nebulous relief requested by Plaintiff. Plaintiff not only seeks an order barring
Facebook from “asserting” an advice of counsel defense, but asks the Court to preclude
Facebook from “introducing evidence of . . ., either directly or indirectly,” an advice of counsel
defense. The inclusion of “or indirectly” in Plaintiff’s request for relief renders it impractically
vague and overly broad.
For the sake of clarity, Facebook does not intend to introduce into evidence any legal
advice Facebook may have obtained when it adopted the term “timeline”; nor will it introduce
argument or evidence that Facebook relied upon any such advice. On the other hand, Facebook
must be permitted to explain to the jury why it chose to go forward with its plans for “timeline”
after learning of Plaintiff’s trademark registrations – not by citing legal advice, but by explaining
the company’s business rationale.
Plaintiff in this action continues to press its trademark infringement claims under theories
of both “forward confusion” and “reverse confusion.” In cases involving a claim of “forward
confusion,” a defendant’s intent in adopting a mark is one of the factors relied up by courts in
this Circuit to assess whether the defendant’s mark is likely to cause confusion. See Packman v.
Chicago Tribune Co., 267 F.3d 628, 643 (7th Cir. 2001). Plaintiff has made clear that it plans to
make Facebook’s intent in adopting the term “timeline” an issue in this case.

(See e.g.,

Timelines, Inc.’s Mem. of Law in Opp. to Facebook, Inc.’s Mot. for Sum. Judg., Dkt. No. 95, p.
6 (which contains the wholly unsupported claim that “Facebook knew that its announcement of
“Timeline” would have a terrible impact on Timelines’ trademarks, . . .”).)

Accordingly,

Facebook must be allowed to offer testimony that, for example, it did not intend to trade on any
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goodwill associated with Plaintiff or create confusion; did not view Plaintiff as a competitor;
believed (correctly) that “timeline” is a commonly used and readily understood term; and its
purpose in choosing “timeline” as the name of its user interface feature was because the term
clearly identifies, or at most merely describes an aspect of, the feature.
CONCLUSION
For the reasons stated above, Facebook respectfully requests that the Court deny
Plaintiff’s Motion in Limine No. 5 to Bar Arguments and Evidence in Support of an Advice of
Counsel Defense.

Dated: April 15, 2013
Respectfully submitted,
COOLEY LLP
By:

/s/ Peter J. Willsey
Peter J. Willsey (pro hac vice)
Brendan J. Hughes (pro hac vice)
COOLEY LLP
1299 Pennsylvania Ave., NW, Ste 700
Washington, DC 20004-2400
Tel: [phone]
Fax: [phone]
Email: [e-mail]
[e-mail]

Steven D. McCormick (#1824260)
KIRKLAND & ELLIS LLP
300 North LaSalle
Chicago, IL 60654-3406
Tel: [phone]
Fax: [phone]
Email: [e-mail]

Michael G. Rhodes (pro hac vice)
101 California Street, 5th Floor
San Francisco, CA 94111-5800
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Counsel for Facebook, Inc.

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CERTIFICATE OF SERVICE
The undersigned, an attorney, hereby certifies that he served the foregoing
DEFENDANT FACEBOOK, INC.’S OPPOSITION TO PLAINTIFF’S MOTION IN
LIMINE NO. 5 TO BAR ARGUMENTS AND EVIDENCE IN SUPPORT OF AN ADVICE
OF COUNSEL DEFENSE by means of the Court’s CM/ECF System, which causes a true and
correct copy of the same to be served electronically on all CM/ECF registered counsel of record,
on April 15, 2013.
Dated: April 15, 2013
/s/ Brendan J. Hughes
Brendan J. Hughes (pro hac vice)
COOLEY LLP
1299 Pennsylvania Ave., NW, Ste. 700
Washington, DC 20004-2400
Tel: [phone]
Fax: [phone]
Email: [e-mail]

190552 /DC

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