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

Filing 195

DECLARATION by John Berryhill re 193 Response to Motion filed by Connexus Corporation, Firstlook, Incorporated, Navigation Catalyst Systems, Incorporated (Attachments: # 1 Exhibit A) (Delgado, William)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
Case No. 2:09-CV-10756
Hon. Marianne O. Battani

vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; FIRSTLOOK, INC.,
a Delaware corporation; and EPIC MEDIA
GROUP, INC., a Delaware corporation,

Defendants.
______________________________________________________________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff

William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
BUTZEL LONG, P.C.
Anthony P. Patti (P43729)
150 West Jefferson, Suite 100
HOOPER HATHAWAY, PC
Detroit, MI 48226
126 South Main Street
[phone]
Ann Arbor, MI 48104
[e-mail]
734-662-4426
[e-mail]
[e-mail]
Local Counsel for Defendants
Attorneys for Plaintiff
______________________________________________________________________
DECLARATION OF JOHN BERRYHILL IN OPPOSITION TO
PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION

I, John Berryhill, declare as follows:
1.

I am over the age of eighteen and am a retained expert for Defendants in this

matter. I have personal knowledge of the facts stated herein except where stated on information
and belief, and, as to those matters, I believe them to be true.
2.

Attached as Exhibit A is a true and correct copy of my curriculum vitae.

3.

Prior to the mid-1990’s the internet was largely an academic and research

endeavor, originally managed under the auspices of the Defense Advanced Research Project
Agency. When the potential commercial importance of the internet was appreciated,
management of certain technical coordination functions, including domain name registration,
was transferred by Congress to the Department of Commerce. The Department of Commerce, in
turn, contracted with the Internet Corporation for Assigned Names and Numbers (“ICANN”) to
establish policies and practices for the commercial registration of internet domain names.
4.

Concurrent with developments in the 1990’s, persons anticipating use of the

internet by famous brand owners sought to register famous trademarks as domain names and
then hold these domain names for ransom. Famous brand owners would later find that domain
names corresponding to their trade or service marks had already been registered. In response,
famous brand owners would attempt to apply the 1996 Federal Anti-Dilution Act (15 U.S.C.
1125) to address this practice. The classic case of this sort is Panavision Int'l, L.P. v. Toeppen,
141 F.3d 1316 (9th Cir. 1998).
5.

While the Panavision case was successful, the intellectual property legal

community was concerned that the Anti-Dilution Act was not an appropriately targeted statute
under which to address cybersquatting, and, in response, the Anticybersquatting Consumer
Protection Act (“ACPA”) was enacted to address situations in which a domain name registrant
intentionally sought to profit from exploitation of a famous trade or service mark. The ACPA
has been successfully employed against persons who have intentionally registered trade or
service marks for the purpose of holding them for ransom or profiting by diverting visitor to
pornography. See, e.g. Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705
(E.D. Pa. 2000).

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6.

Distinct from the practice of cybersquatting, other persons recognized that domain

names could hold inherent value, apart from their association with trade or service marks. When
domain name registration became generally available on a commercial basis, such persons
sought to speculate in their value by registering and holding domain names for sale. See, e.g.
Cello Holdings v. Lawrence-Dahl Cos, 89 F. Supp. 2d 464 (S.D.N.Y. 2000); 2002 U.S. Dist.
LEXIS 1029 (S.D.N.Y. Jan. 24, 2002), vacated on other grounds, 347 F.3d 370 (2d Cir. 2003)
(“A reasonable factfinder could conclude that Storey was not trying to extort a particular (or any)
trademark holder. This was not, for example, a situation where a cybersquatter registered
‘applecomputer.com’ and then tried to extort Apple Computer into paying him money to release
the domain name. Rather, the instant case is more akin to the situation where a person registers
‘apple.com’ and then offers it to a number of parties that might be interested in the domain
name.”)
7.

As domain speculators accumulated portfolios of domain names for potential sale,

they sought ways to earn income from their domain names which remained unsold.
Concurrently, as the commercial internet expanded, methods of searching the internet for
relevant information became one of the primary activities conducted by internet users. Internet
“search engines,” such as Yahoo! and Google, partially filled this need and also sought means to
profit from the conduct of internet searches.
8.

Aside from using internet search engines, however, another manner in which

internet users find information is by what is called “Direct Navigation.” In Direct Navigation,
internet users type search queries directly into the “address bar” of web-browsing software (such
as Internet Explorer or Mozilla Firefox). Typically internet users may add “.com” to the end of a
search term, but the frequency with which the “address bar” is used as a search bar led to
browser software developers to cause the software to automatically add “.com” to the end of
searches conducted via the address bar.
9.

Internet search engine companies such as Yahoo! and Google determined that

search could be made profitable by selling “search advertising.” Search advertising operates by
inviting advertisers to submit bids for their advertisements to be displayed in response to
searches conducted by internet search engine users. For example, the search term “automobiles,”

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entered into a search engine such as Google or Yahoo! will cause the display of “sponsored
links” or a similar indication, along with a listing of prominently displayed links to advertisers
who have bid to pay a “click-through” fee to the search engine operator for each user which
clicks on a sponsored advertisement to reach the advertiser’s site through the search engine. This
type of revenue model is referred to as “pay-per click” or PPC.
10.

To capture potential visitor traffic from direct navigation, internet search engine

companies such as Yahoo! and Google also distribute PPC advertisements via syndication to
domain name registrants. For example, the registrant of a domain name such as
DatingForBusyProfessionals.com, whether the domain name was registered for resale or future
development, contract directly or indirectly to allow the domain name to be used to display PPC
ads. In such an arrangement, when an internet user visits the web page corresponding to the
domain name, the web page is automatically populated by PPC advertisements provided by the
search engine company. A share of the revenue from such PPC advertisements is paid by the
search engine company to the domain name registrant, in exchange for providing the domain
name as a platform for displaying such advertisements. Search engine companies typically refer
to this method of distributing advertisements as the “domain channel” in contrast to the “search
channel” wherein sponsored advertisements are displayed directly at the search engine site.
11.

In a typical PPC advertising arrangement, the domain name is utilized as a

publishing platform by the search engine company which populates the web page with sponsored
PPC links as if the domain name itself were entered into the search engine as a search term.
While the domain name registrant does not typically control the selection and arrangement of the
advertisements, the search engine company, in turn, also has limited control over what search
terms the advertisers select to have their advertisements displayed.
12.

The distribution of PPC advertising by search companies through the domain

channel has advanced to the point where domain names are often registered purely for their
traffic potential, instead of for resale. The ability to sell domain traffic resulting from direct
navigation has led to a number of techniques for accumulating domain names which have the
potential to generate traffic per se.

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13.

In the year 2000, ICANN instituted a standard policy under which a domain

name, once registered, could be deleted within five days of its initial registration without
incurring a fee for registration of the domain name. This period was known as the “five day
grace period” or “add grace period.”
14.

The search for direct navigation traffic for domain names, combined with the five

day grace period led to a practice known as “domain tasting.” In domain tasting, a domain name
would be registered and then monitored during the five day grace period to determine whether its
projected annual traffic value exceeded the registration fee. This process could be conducted on
a large-scale automated basis comparable to panning for gold or sifting mining fines to extract
ore. Thousands of domain names could be registered at a time and then kept or discarded on the
basis of whether the domain names generated a suitable threshold value of PPC revenue.
15.

The practice of domain tasting was conducted by a number of domain name

registration companies using a variety of sources for character strings to be used to generate
candidate domain names. It is believed that such companies had access to search data from
search engine companies themselves, as well as “error data” from internet service providers and
domain name registries, which provided character strings having potential value, as such
character strings corresponded to entries by internet users into search engines or into the address
bars of browsers for otherwise non-existent domain names.
16.

One hazard of large-scale bulk domain registration is that some of the domain

names may incidentally correspond to trade or service marks. While a character string such as
“Tide” may refer to the lunar gravitational effect on large bodies of water, it may also correspond
to a brand of laundry detergent. Since a domain name registrant does not typically control what
advertisements are displayed on a webpage used to publish advertisements generated by a search
company, there is no completely effective way for the domain name registrant to know whether a
domain name containing the string “tide” will cause the display of surfing information or laundry
information. Furthermore, the advertising results generated by any particular keywords are
determined by the collective action of those advertisers who bid on keyword placement with the
search engine company, with whom the domain name registrant has no connection or contact.

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17.

As a result, responsible bulk domain registrants address the problems of incidental

trademark correspondence in several ways. First, while there is no completely reliable method of
filtering large numbers of strings against any particular database of trademarks, bulk domain
registrants have continued to develop and deploy filtering systems on their own and in
cooperation with brand owners. Second, responsible bulk domain registrants typically maintain
staff and counsel for reviewing communications which may be sent by brand owners relating to
brand-relevant domain names which may have escaped capture by the filtering methods
employed by the bulk domain registrant. Where a domain name contains an inappropriate
character string, or may have been targeted inappropriately by the search engine company
supplying the advertising feed, responsible bulk domain registrants typically work with the brand
owner to transfer or delete such domain names at no charge, and typically at a loss, to the brand
owner, and further to update the filtering method to include variations of the asserted mark.
18.

Notably, the absence of bulk domain registrants would not eliminate the use of

otherwise nonexistent domain names for PPC advertising purposes. For example, the reason why
the second most popular internet browser, Mozilla Firefox, is distributed for “free” is that in a
default installation of that browser, traffic to “non-existent” domain names is fed to Google
Search, under an arrangement by which Google shares a portion of the resulting revenue to
Mozilla. Based on press articles, in 2007, this arrangement yielded an income of US $70 million
to the Mozilla Foundation.
I declare under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct.
Executed on this ___3rd day of August 2011 at __San Rafael_, _California__.

_________________
John Berryhill

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CERTIFICATE OF SERVICE

I hereby certify that on August 15, 2011, I electronically filed the foregoing paper
with the Court using the ECF system which will send notification of such filing to the
following:
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
BUTZEL LONG, P.C.
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
Local Counsel for Defendants

Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

/s/William A. Delgado
William A. Delgado
WILLENKEN WILSON LOH & LIEB, LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

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