Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Filing 115

RESPONSE to 102 MOTION to Compel Discovery filed by Navigation Catalyst Systems, Incorporated. (Attachments: # 1 Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D) (Delgado, William)

Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Doc. 115 Att. 4

Exhibit C

Dockets.Justia.com

1 2 3 4 Plaintiff, 5 v 6 7 8 9 Ordered By: 10

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION WEATHER UNDERGROUND, INCORPORATED, Case No. 09-CV-10756 U.S. Magistrate Judge Virginia M. Morgan Detroit, Michigan May 19, 2010 2:29 p.m.

NAVIGATION CATALYST SYSTEMS, INCORPORATED, Defendant. ___________________________/ ENRICO SCHAEFER, ESQ. MOTION HEARING

11 APPEARANCES: 12 For the Plaintiff: 13 14 15 16 17 18 19 Court Recorder: 20 Transcriber: 21 22 23 24 25 Proceedings recorded by electronic sound recording, transcript produced by transcription service. Deborah Kremlick N/A For the Defendants: (By Phone): ENRICO SCHAEFER, ESQ. (P43506) Traverse Legal 810 Cottageview Drive Suite G-20 Traverse City, MI 49684 231-932-0411 WILLIAM DELGADO, ESQ. Willeken, Wilson, Loh & Lieb 707 Wilshire Boulevard Suite 3850 Los Angeles, CA 90017 213-955-9240

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 this list. 38 here? MR. SCHAEFER:

27

Thirty-eight is the ­- what -­ what

is the web ­- is the advertisements that were shown on those pages which I think he's going to tell us they can't get and that may be fine. Thirty-five is the list of domains. So

Thirty-eight asks for what were those domains used for.

for instance is it a derivation of Facebook, was it showing social media ads on that page. THE COURT: So NCS is ordered to produce all domain

names registered by NCS during the relevant period whether privacy protected or not. MR. SCHAEFER: THE COURT: Is that consistent with 35? Yes.

To the extent NCS alleges that prior

registration are not available or cannot reasonably be produced, NCS is ordered to show -­ I'm sorry, NCS is ordered to provide an affidavit stating in detail the specific reasons as to why it cannot produce any such list of domain names. NCS will further provide a Rule 30(b)(6) dep -­ dep of deponent concerning the assertion that information cannot be reasonably produced. MR. SCHAEFER: Mr. Delgado says they can't produce

So this is the language that I proposed to say

okay, well, put it in an affidavit, give us a 30(b)(6) if you can't otherwise produce them. THE COURT: Well, you can just do ­- yeah. Well, I

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

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Well, guess what, that sounds like a lot as an absolute number, but when you compare it to 16,000,000, can you really say that -- oh, that that's our business, or ­- the answer is no. I mean you had to look at absolute versus relevant. MR. SCHAEFER: MR. DELGADO: THE COURT: And, Your Honor, that's -And that gets back to my point. Let him finish. Okay. What's that? Could I --

MR. SCHAEFER: MR. DELGADO: MR. SCHAEFER: THE COURT: MR. DELGADO:

Go ahead finish, Mr. Delgado. Okay. Going back to my point. For

the earlier periods of time that data is no longer available. I mean it's just -- it was either kept in cases that were deleted long ago before this lawsuit even started. You know,

for more ­- you know, for the kind domain portfolio, yes, we had that. But it is still a significant effort to put

together the kinds of information that you're looking for and we're still talking about hundreds of thousands of domain names and data for those domain names for a trademark case involving you know, 51 domain names. Let's not get away from

the fact that this is a trademark case about 51 domain names. And I know Mr. Schaefer likes to talk about statutory factor number eight. But I think, you know, in looking at the

legislative history of the ACPA and I've got, you know, about

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

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ten cases in front of me all of which look at this bad faith intent factor. In all the cases, and the legislative history all say the same thing which is it is not ­- this determination of bad faith intent is not a general bad faith ­- in fact it is a specific bad faith intent with respect to the mark that is in the lawsuits. And with regard to statutory factor number eight, and I think Mr. Schaefer is divorcing that from what the legislative history indicates that that factor is really intended to go at which is a phenomenon that would be turning back in 1999 at a time when what we're talking about here didn't even exist, and it wasn't even on the horizon for Congress. THE COURT: MR. DELGADO: THE COURT: Okay. It was not -Okay, okay. Mr. ­- Mr. ­- Mr. Delgado, Factor number eight talks

let me interrupt you for a moment.

about I mean -- and I'm -­ I'm sure that you're reading from something that talks about the domain names at issue. But

factor number eight as -­ as I see it in the excerpt which is before me, says the person's registration or acquisition of multiple domain names, that would be you, the person, which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 problem.

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are famous at the time of registration of such domain names without regard to the goods or services of the party. So your position that it would be limited only to ones that are confusingly similar to the 51 domain names or whatever at issue here, I think reads out the clear language of -- of eight. So what I'm -­ I'm willing to do is ask him

to give you say another 50 names and then you give us all the domain names that are registered like that. MR. SCHAEFER: Well, here's what -­ here's the

Part of it is we asked them for the other domains They said zero. We just So

that infringe our trademarks, okay.

by kind of random searching just last week found 11 more. if we can't get the data base -MR. DELGADO: MR. SCHAEFER: MR. DELGADO: MR. SCHAEFER: No, that's not true. If we can't get the ­That's not true. -- if we can't get the data base,

Your Honor, we aim to identify the domains at issue in this case. These are examples of the ones we found last week. Keep in mind our trademark is

Thewunderground.com. wunderground.

So this is registered to them. So without the data base for

Tropicalweatherunderground.com.

us to search on, it's impossible for us to ­- and they refuse to tell us what other domains they have of ours and they've said none and we know it's not true.

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 say. The other thing is, Your Honor, it's just data.

34 They

have affidavits from their people Seth Jacoby that said they had 300,000 domain names as of two years ago. And now they're

down to something like 70,000 domain names as of this year. So there's -THE COURT: I thought they had 16,000,000. Well, that's what he said, but I got

MR. SCHAEFER:

an affidavit that says completely otherwise as of -­ as of a couple years ago. MR. DELGADO: Your Honor, can I respond to that? I

disagree with a lot of what Mr. Schaefer is -MR. SCHAEFER: grace Co. names. number. THE COURT: already on the phone. he can't be heard. Okay. All right. Stop talking. He's I think he was talking about the ad

Because that blossoms -­ that blossoms the

If you don't stop and give him a break,

It's already frustrating enough without Mr. Delgado. So here's what I was going to

the telephone line, okay? MR. DELGADO:

Okay.

Mr. Schaefer made the statement that they asked us to That is not the

identify other domain names and we said zero. case.

What happened was there is -­ there was a good faith

dispute as to how domain names at issue would be defined from these requests. I have proposed to Mr. Schaefer and to If you want me to identify other domain

resolve this dispute.

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Honor. Schaefer.

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names that you know, are possibly violative of your client's mark, I will do that. I will run, you know, as many searches

for as many ­- as many strings to capture as many possible names to -- to basically disclose to them what it is that we think that might arguably even be close to that. You know, so for example, if he wants to run a search for under, you know, we'll disclose any domain name that has the phrase under. If he wants to run it for you know what I would

call the string eather, E-a-t-h-e-r which would capture Weather, you know, Qeather, and it's the Q next to the W on the keyboard. an issue. Will be do that. That -- you know, that is not The question or the

We will happily do that.

problem for us has always been you know, to go back six years and divulge statistics for ­- you know, for 16,000,000 and that 16,000,000 number is essentially from 2004 forward, that's why that number is as high as it is. THE COURT: MR. DELGADO: down the system. THE COURT: Okay. You have some choices here, Mr. Okay. Here's what -­ here's --

And we can't do that without shutting

You can have fewer domain names with all this crap

in 38, or you can just have a list of domain names without any of this crap. MR. SCHAEFER: We'll take the domain names, Your

And I think I'm -- I'm entitled to them under that

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 affidavit. Paragraph 8. And I will make it simpler.

36

Just run a query

for dates two times a year, January 1 and July 1 for each year. names. And so they don't have to provide us all the domain Let's do some snapshots of twice a year for the

relevant years. THE COURT: nothing on 38. MR. SCHAEFER: MR. DELGADO: And nothing on 38. And, Your Honor, I would just point 2004 through 2009, that's ten runs. And

out that I don't -- like I said, we filed a declaration saying why data from like 2004 to July 2010 is not available, I will provide a -- an affidavit, a second one verifying that. we've already, you know, in part with this motion, we did submit a declaration explaining that data from the earlier years is just not available anymore. MR. SCHAEFER: MR. DELGADO: But again -But

That's our proposal. I can provide them with a second

I just wanted to make sure that the Court is aware

of that and it's not like you know, later on you know when we don't produce it for 2004 and the Court's looking at me but I'm telling you right now we just don't have it from the earlier years. THE COURT: MR. DELGADO: we do have. Okay. But we will produce it for as early as

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 THE COURT: All right.

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So 17, produce all domain

names registered during the relevant period whether privacy protected or not and not dropped under the ad grace period. And then to the extent that you say that you don't have them, provide an affidavit stating why don't you have them and then they'll have a 30(b)(6) deponent if necessary concerning its assertions. So those will be back in. Okay. And I would just say since Mr.

MR. SCHAEFER: MR. DELGADO:

Schaefer said snapshots, I think we need the work in this concept of, you know, for the relevant time periods as of January 1st or July 1st. THE COURT: All right. Produce snapshot, January

1st, 2004, July 1st, 2004 and each year you can through 2009. MR. SCHAEFER: All right. And snapshot means your

domain portfolio for that date, not just whatever domains you want to identify. MR. DELGADO: MR. SCHAEFER: No, I understand. Okay. The next one, Mr. Delgado, is

­- is it's all the same issue, but it's request for production 40, 41, 43, and 47. And you -­ I had proposed that you

supplement those responses and you struck that language. Forty, Your Honor, is the ­- on the bottom of all these web sites there are parking software that shows the ads, it says make an offer by the domain. And there's a single email in

PAGE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 /s/Deborah L. Kremlick, CER-4872 Dated: 6-14-10

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I certify that the foregoing is a correct transcript from the electronic sound recording of the proceedings in the above-entitled matter.