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

Filing 201

DECLARATION by William A. Delgado re 193 Response to Motion filed by Connexus Corporation, Firstlook, Incorporated, Navigation Catalyst Systems, Incorporated (Attachments: # 1 Exhibit K, # 2 Exhibit L, # 3 Exhibit M, # 4 Exhibit N, # 5 Exhibit O, # 6 Exhibit P, # 7 Exhibit Q, # 8 Exhibit R, # 9 Exhibit S, # 10 Exhibit T, # 11 Exhibit U, # 12 Exhibit V, # 13 Exhibit W) (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)
Anthony P. Patti (P43729)
BUTZEL LONG, P.C.
HOOPER HATHAWAY, PC
150 West Jefferson, Suite 100
126 South Main Street
Detroit, MI 48226
Ann Arbor, MI 48104
[phone]
734-662-4426
[e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiff
Local Counsel for Defendants
______________________________________________________________________
DECLARATION OF WILLIAM A. DELGADO IN OPPOSITION TO
PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION

I, William A. Delgado, declare as follows:
1.

I am over the age of eighteen and am lead counsel 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 K is a true and correct copy of a printout from the USPTO

database at http://www.uspto.gov which shows that Plaintiff started using THE WEATHER
UNDERGROUND in 1995.
3.

Attached as Exhibit L is a true and correct copy of a printout from the USPTO

database at http://www.uspto.gov which shows that Plaintiff started using
WUNDERGROUND.COM in 1995.
4.

As lead counsel in this matter, I was responsible for overseeing NCS’s responses

and document production throughout the discovery process. Although NCS initially believed
that it had not retained the cease-and-desist letters it had received over the years, Lily Stevenson
had, in fact, retained them. She provided me with various cease-and-desist letters and UDRP
complaints that were produced. The sum total of pages produced for that particular set of
documents exceeded 20,000 pages.
5.

I attended the deposition of Seth Jacoby as well as all other depositions in this

matter. Attached as Exhibit M is a true and correct copy of page 30 from the deposition of Seth
Jacoby.
6.

During the course of discovery, I was informed by Mavi Llamas that she

discovered an old, out-of-commission laptop that she had in her house from her early days
(2004-2005) at the predecessor company of Connexus Corporation. The contents of that laptop

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were reviewed for responsiveness to Plaintiff’s requests for production, and responsive
documents, which included e-mails and registration spreadsheets from that time frame, were
produced.
7.

Attached as Exhibit N are true and correct copies of relevant excerpts from the

deposition transcript of John Berryhill, taken January 11, 2011.
8.

Attached as Exhibit O are true and correct copies of relevant excerpts from the

deposition transcript of Mavi Llamas, taken September 27, 2010.
9.

Attached as Exhibit P are true and correct copies of relevant excerpts from the

deposition transcript of Donnie Misino, taken November 30, 2010.
10.

Attached as Exhibit Q are true and correct copies of relevant excerpts from the

deposition transcript of Seth Jacoby, taken September 15, 2010.
11.

Attached as Exhibit R are true and correct copies of relevant excerpts from the

deposition transcript of Chris Pirrone, taken May 3, 2011.
12.

During the discovery process, NCS provided me with a spreadsheet containing

each and every domain names that was deleted as a result of the 2008 scrub. That document was
produced as NCS89277-89963 and contained over 25,400 entries.
13.

Attached as Exhibit S are true and correct copies of relevant excerpts from the

deposition transcript of Richard Korf, taken December 8, 2010.
14.

Attached as Exhibit T are true and correct copies of relevant excerpts from the

deposition transcript of Jeffrey Masters, taken August 3, 2010.
15.

Attached as Exhibit U are true and correct copies of relevant excerpts from the

deposition transcript of Chris Schwerzler, taken April 29, 2010.

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16.

Attached as Exhibit V is Exhibit 58 to the Deposition Transcript of Jeff Ferguson

and the relevant excerpts from the Ferguson Transcript authenticating the exhibit.
17.

In its First Set of Requests for Production (“First Request”), Plaintiff defined

“Domain Names at Issue” as including the domain names in the complaint and any other domain
name “registered now or at any time by NCS incorporating all or some of Plaintiff’s
trademarks.” The First Request also asked for numerous documents related to the “Domain
Names at Issue.”
18.

In short, as Plaintiff’s counsel made clear at the May 19, 2010 hearing before

Magistrate Judge Morgan regarding this issue, Plaintiff was asking NCS to identify “the other
domain names that infringe [Plaintiff’s] marks.” A true and correct copy of the relevant excerpts
from the Hearing Transcript from May 19, 2010 is attached as Exhibit W. Mr. Schaefer’s
statement appears at 33:9-13.
19.

NCS’s Responses to the First Set of Requests for Production contained various

general and specific objections. The problems with responding to Plaintiff’s request for “other
infringing domain names” were self-evident: (i) any answer would implicitly concede that NCS
had, in fact, registered a domain name that infringed Plaintiff’s marks, (ii) even if NCS was
willing to make that concession, it could not know what Plaintiff considered to be an
“infringing” domain since the parties clearly disagreed on that point, and (iii) to the extent I was
involved in analyzing the request and the response thereto, any response would have waived the
attorney work product privilege because it would reveal my mental impressions as to what I
believed was an infringing domain.

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20.

As a result, NCS stood on its objections and offered to conduct an unlimited

number of character string searches (e.g., “eather”, “wund,” etc.) against its domain name
portfolio so that Plaintiff could see what the results were and select domain names at issue from
those results. In fact, that offer was repeated in open court. See Hearing Transcript at 34:1035:16.
21.

Ultimately, the parties’ disagreement on this issue became irrelevant because the

Connexus Defendants were able to provide a database of all past and present domain names
which Plaintiff could examine and select the domain names it wanted to put at issue.
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 15th day of August 2011 at Los Angeles, California.

/s/William A. Delgado
William A. Delgado

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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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