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

Filing 216

REPLY to Response re 189 MOTION for Partial Summary Judgment filed by Weather Underground, Incorporated. (Attachments: # 1 Index of Exhibits, # 2 Exhibit OO, # 3 Exhibit PP, # 4 Exhibit QQ, # 5 Exhibit RR, # 6 Exhibit SS, # 7 Exhibit UU) (Schaefer, Enrico)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
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;

Case No. 2:09-CV-10756
Hon. Marianne O. Battani

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

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants
______________________________________________________________________
PLAINTIFF’S REPLY TO DEFENDANTS’ RESPONSE
TO PLAINTIFF’S STATEMENT OF FACTS IN SUPPORT OF
PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT
AND STATEMENT OF FACTS IN OPPOSITION THERETO

NOW COMES Plaintiff, The Weather Underground, Inc. (“Plaintiff”), by and
through its counsel, Traverse Legal, PLC, and replies to Defendants’ Response to
Plaintiff’s Motion for Partial Summary Judgment on ACPA Claims against Defendants.
Plaintiff specifically replies to Defendants’ evidentiary objections to Plaintiff’s numbered
paragraphs in its Motion as follows:
PART ONE: REPLY TO DEFENDANT’S EVIDENTIARY OBJECTIONS
AND RESPONSES TO MOTION
1.

Defendants have offered no challenge to Plaintiff’s registered trademarks

or use through the years as testified by various witnesses. Defendants have no
evidence or witness to challenge said trademark registrations. For the purposes of this
motion, the Court can take judicial notice of Plaintiff’s trademark registrations. Metro
Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637 (9th Cir. 1993), on remand 1993
WL 266786 (holding that a Court may take judicial notice of trademark registrations
from the principal register); Puerto Rico Corp. v. Torres-Caraballo, 672 F. Supp. 2d 252
(D. Puerto Rico 2009) (taking judicial notice of fact that Plaintiff had registered
trademarks in a trademark infringement suit, under the Lanham Act, where fact that
franchisor had registered trademarks was capable of accurate and ready determination
by resort to sources, including the Patent and Trademark Office's (PTO) website, whose
accuracy could not reasonably be questioned); Island Software and Computer Service,
Inc. v. Microsoft Corp., 413 F.3d 257 (2d Cir. 2005), on remand 2006 WL 1025915
(finding that the District Court was entitled to take judicial notice of copyright
infringement plaintiff's federal copyright registr, as published in Copyright Office's
2

registry); Feathercombs, Inc. v. Solo Products Corp., 306 F.2d 251 (2d Cir. 1962),
certiorari denied 83 S.Ct. 253, 371 U.S. 910, 9 L.Ed.2d 170, 135 U.S.P.Q. 503 (United
States patent may be judicially noticed in discretion of court and may be noticed on
appeal though not introduced in evidence and passed on by court below). Plaintiff’s
trademark registrations as well as Section 8, 9 and 15 maintenance filings related
thereto are attached to Plaintiff’s First Amended Complaint as Exhibits G-R. If
necessary, Plaintiff is happy to provide original self-authenticated copies of the
trademark registrations.
2.

Defendants’ frivolous objections are unfounded. Plaintiff’s trademarks are

incontestable pursuant to statute, 15 U.S.C. § 1065.
3.

Newspaper articles are self-authenticating under F.R.E. § 902(6).

Moreover, said articles are not being offered for the truth of the matter stated in those
articles but for the fact that Plaintiff has been written about in major publications. Thus,
the evidence is not considered hearsay under F.R.E. § 801. With regards to website
statistics, said information is admissible under F.R.E. § 803(17), market report and
commercial publications used or relied upon by the public or persons of particular
occupations. In fact, such statistical information is not being offered to prove the exact
number of visitors to the Plaintiff’s website but as included in the listing of popular
websites in general and thus is not hearsay. To the extent there is any doubt, Jeff
Ferguson testified that tally information collected by Plaintiff are accurate. (Exhibit OO;
Ferguson Deposition, pp. 22, 33-37, 51-53.)

3

4.

Defendants’ distinction is without substance. Plaintiff’s trademarks have

been in use since 1995, even according to Defendants.
5.

See response to Paragraph 3.

6.

Defendants failed to timely respond to Plaintiff’s First Amended Complaint,

including Paragraph 33, which affirmatively set forth the general uncontested
proposition that hundreds of thousands of internet users go to Weather Underground’s
websites each day. For Further information on Plaintiff’s traffic, see Exhibit PP,
Schwerzler Deposition, at pages 44-48, 56-57, and 73-77.
7.

Issues related to Defendants’ prior notice of Plaintiff’s trademarks, as well

as prior adverse proceedings, goes to Defendants’ notice of Plaintiff’s trademarks and
Defendants’ supposed defense of good faith. Recall, Defendants continued to register
domain names incorporating Plaintiff’s trademarks even after the UDRP arbitration was
filed and decided.
8.

See response to Paragraph 7.

9.

Defendants apparently contest the fact that they registered the domains

listed in Exhibit G, despite the fact that all parties have agreed to the admissibility of
Domain Tools WhoIS information listing Defendants as the registrant of those domains.
(See Exhibit QQ, WhoIS information for domains listed in Exhibit G and Exhibit RR,
Affidavit of Chris Schwerzler.)
10.

For the purposes of this motion, Plaintiff simply relies on the Court’s ability

to take judicial notice under FRE 201(b) that the Michigan companies identified, such as
Dow Chemical, DTE Energy, etc., are well known Michigan brands. See Garner v.
4

State of La., 368 U.S. 157, 82 S.Ct. 248, (1961)(court can take judicial notice of well
known facts). See FRE 201(b) (A judicially noticed fact must be one not subject to
reasonable dispute in that it is either (1) generally known within the territorial jurisdiction
of the trial court or (2) capable of accurate and ready determination by resort to sources
whose accuracy cannot reasonably be questioned).
a.

See above.

b.

Alexa information is being offered not for the exact traffic data or ranking

contained therein but to note that these are all websites listed as some of the top
websites in the world. Moreover, such information is self-authenticating under
F.R.E. § 902(7). Finally, the Court should take judicial notice of these websites
which can found online and the commonly known brands thereunder.
c.

The Court is entitled to take judicial notice of other complaints filed against

Defendants as found in PACER. Moreover, Defendants did not timely respond to
Plaintiff’s First Amended Complaint, thereby establishing the allegations as true.
d.

Defendants “Document Retention Policy” speaks for itself and is a party

admission.
e.

See response to Daubert motion regarding Chris Schwerzler.

f.

See response to Daubert motion regarding Chris Schwerzler.

g.

See response to Daubert motion regarding Chris Schwerzler.

11.

See Declaration of Enrico Schaefer dated August 30, 2011, Exhibit SS.

12.

Cease and desist letters are not hearsay to the extent they are used to

show notice of trademark issues. Compana, LLC. v. Aetna, Inc., 2006 WL 829111
5

(W.D.Wash. 2006) (Wipo and NAF arbitration decisions admissible under residual
hearsay exception to show notice and bad faith under ACPA). Defendants have
testified repeatedly that they turn over all domains for which they believe there is a
meritorious trademark issue. Defendant’s spreadsheet tally of trademark infringement
threat letters indicate domains that were in fact turned over to trademark owners and
will be provided to the court digitally as Exhibit TT.
13.

No response required.

14.

No response required.

15.

No response required.

16.

No response required.

17.

See attached as Exhibit UU, Seth Jacoby Deposition, p. 30.

18.

No response required.

19.

Defendants have admitted that Basic Fusion is the registrar for the subject

domains and third party trademark domains as included in their response at Paragraph
53 to Plaintiff’s initial Complaint dated January 22, 2010.
20.

No response required.

21.

See Declaration of Enrico Schaefer dated August 30, 2011, Exhibit SS.

22.

No response required.

23.

The deposition testimony included in this paragraph and attached exhibits

speak for themselves and are admissible.
24.

Defendants are objecting to the admission of their own employment

contracts? Defendants produced these documents in discovery in response to specific
6

discovery requests concerning their employees. These documents are
self-authenticating, and the deposition testimony of Mr. Jacoby speaks for itself.
25.

No response required.

26.

No response required.

27.

No response required.

28.

Irrespective of whether default was entered, Defendants’ failure to timely

respond to the First Amended Complaint results in an admission of those paragraphs.
However, such admissions are not required in order for the Court to find in Plaintiff’s
favor on it Motion for Summary Judgment under the ACPA.
29.

Defendants can articulate their defenses, to the extent they are different

than those noted below, to the Court at the hearing if necessary.
30.

No response required.

31.

No response required.

32.

No response required.

33.

Mr. Jacoby’s testimony speaks for itself.

34.

The Defendants’ countersuit against Verizon in California is highly

relevant, as all of the allegations in that countersuit are admissions. The Verizon
complaint against Navigation Catalyst Systems goes to notice and the bad faith factors
under the ACPA.
35.

See response to Paragraph 34.

36.

See response to Paragraph 34.

37.

No response required.
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38.

No response required.

39.

It is interesting that Ms. Llamas would, after her deposition, argue that

Defendants had fuzzy matching system in place as of fall 2004; however, Plaintiff will
stipulate to this fact for the purpose of the Motion. The fact that Defendants supposedly
had a fuzzy matching system in place and still registered the domain names which are
the subject of this lawsuit further supports Plaintiff’s allegation that (a) Defendants
reviewed Plaintiff’s trademarks prior to registering the subject domain names and (b)
thus acted in bad faith in registering those domain names.
40.

No response required.

41.

No response required.

42.

No response required. Again, the fact that Defendants now state that they

were reviewing trademarks, including Plaintiff’s trademarks, as early as the fall 2004
simply supports Plaintiff’s allegation of bad faith. Defendants have offered literally no
explanation as to how they could have registered the subject domain names as early as
2004 if they also had a trademark matching system in place as of that date. The only
reasonable conclusion based on Defendants own rendition of undisputed facts is that
Defendant was aware or willfully blind to Plaintiff’s trademarks at the time of registration,
use and trafficking.
43.

No response required.

44.

Mr. Jacoby’s testimony speaks for itself.

45.

Mr. Jacoby’s statement speaks for itself.

46.

No response required.
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47.

No response required.

48.

No response required.

49.

No response required.

50.

Mr. Berryhill’s deposition speaks for itself.

51.

No response required.

52.

No response required.

53.

Mr. Berryhill’s deposition speaks for itself.

54.

Mr. Jacoby’s deposition speaks for itself.

55.

Mr. Jacoby’s deposition speaks for itself.

56.

No response required.

57.

Mr. Rhee’s deposition speaks for itself, and Ms. Llamas’ deposition

speaks for itself. Exhibit CC and Exhibit EE are authenticated in the Declaration of
Enrico Schaefer attached as Exhibit SS.
58.

Mr. Jacoby’s deposition speaks for itself.

59.

Ms. Llamas’ deposition speaks for itself. The CAT Training document

was, in fact, produced by Defendants and speaks for itself as an admission.
60.

Ms. Stevenson’s deposition speaks for itself. Proof that the “real

websites” will often be trademark protected is clear from the massive number of
typosquatted domains identified in this case on Plaintiff’s trademarks and clear
violations of third party trademarks.
61.

Mr. Jacoby’s deposition speaks for itself.

62.

See Declaration of Enrico Schaefer dated August 30, 2011, Exhibit SS.
9

63.

Because the ACPA specifically includes as one of its bad faith factors the

registration of third party trademarks, it is hard to understand Defendants’ objection to
such evidence as “irrelevant”.
64.

Mr. Jacoby’s deposition speaks for itself.

65.

No response required.

66.

No response required.

67.

No response required.

68.

No response required.

69.

No response required.

70.

Mr. Jacoby’s deposition speaks for itself.

71.

See Affidavit of Chris Schwerzler, Exhibit RR.

72.

Mr. Berryhill’s deposition speaks for itself.

73.

Mr. Berryhill’s deposition speaks for itself.

74.

Mr. Berryhill’s deposition speaks for itself.

75.

No response required.

76.

Mr. Berryhill’s deposition speaks for itself.

77.

Mr. Berryhill’s deposition speaks for itself. Also, see Declaration of Enrico

Schaefer dated August 30, 2011 for authentication of Exhibit LL [sic], Exhibit SS.
78.

Prior written statements of Mr. Berryhill are appropriate for impeachment

and not hearsay.
79.

The issue of typosquatting is the fundamental issue in this case and thus

relevant.
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80.

The issue of typosquatting is the fundamental issue in this case and thus

relevant.
81.

The issue of typosquatting is the fundamental issue in this case and thus

relevant.
82.

Mr. Berryhill’s deposition speaks for itself.

83.

It is unclear why Defendants are objecting to this paragraph. Apparently

they are unaware that registration of third party trademarks is directly relevant under the
bad faith analysis of the ACPA.
84.

Mr. Berryhill’s deposition speaks for itself.

85.

Mr. Berryhill’s deposition speaks for itself.

86.

No response required.

87.

See Declaration of Enrico Schaefer dated August 30, 2011, Exhibit RR.

88.

The parties originally stipulated that Domain Tools WhoIS information

would be admissible in this case.
89.

No response required.
PART TWO: DEFENDANTS’ OPPOSITION TO DEFENDANTS’
STATEMENT OF FACTS IN OPPOSITION TO PLAINTIFF’S MSA

For its reply to Defendants’ Statement of Facts in Opposition to Plaintiff’s MSA,
Plaintiff states as follows:
1.

Plaintiff objects to Defendants’ statement that “The ACPA was enacted in

1999 to address issues that had arisen during the 1990s.” The ACPA is a statute which
only the Court is empowered to interpret. Mr. Berryhill’s attempt to tell the Court what
11

the ACPA means and does not mean it is inadmissible. Mr. Berryhill’s attempt to tell the
Court what behavior the ACPA is meant to address and whether or not certain activity is
considered “bad faith” under the statute is further inadmissible as a conclusion of law.
As noted in Basketball Marketing Co., Inc. v. Steve and Barry's University Sportswear,
WL 5586141 (E.D.Pa. 2008), where an expert attempted to testify in a trademark and
copyright case how the facts applied to the trademark and copyright statutes:
Pursuant to Federal Rules of Evidence 702 and 704, “[t]he Court of
Appeals for the Third Circuit has explicitly held that ‘it is not permissible for
a witness to testify as to the governing law,’ ... or as to legal conclusions.”
Pfizer, Inc. v. Teva Pharm. USA, Inc., Civ. A. No. 04-754, 2006 WL
3041097, at *2 (D.N.J. Oct. 26, 2006) ( quoting United States v. Leo, 941
F.2d 181, 196 (3d Cir.1991) and citing Berckeley Inv. Group Ltd. v. Colkitt,
455 F.3d 195, 218 (3d Cir.2006)). Here, Defendant's expert is expected to
testify about copyright and trademark law as it applies to the facts of this
case, including, for example, whether Plaintiff has standing to bring its
copyright infringement claims. Since such matters are legal conclusions
for the Court to determine at trial, Mr. Pokotilow's testimony is
inadmissible. See, e.g., Proctor & Gamble Co. v. Teva Pharm. USA, Inc.,
Civ. A. No. 04-940, 2006 WL 2241018, at * 1 (D.Del. Aug. 4, 2006)
(precluding expert testimony on “legal conclusions or substantive issues of
patent law”); Earle M. Jorgensen Co. v. T.I.U.S. Ltd., Civ. A. No. 90-2024,
1992 WL 331466, at *1 (E.D.Pa. Nov.3, 1992) (precluding expert
testimony because “the conclusions of law invade the province of the court
and the applications of law to facts invade the province of the jury”).”
2.

Plaintiff objects to Mr. Berryhill’s supposed effort to instruct the Court on

the plain meaning of the ACPA, without any showing of foundation. The fact that he
practices domain dispute law under the Uniform Domain Name Dispute Resolution
Policy does not qualify him as an expert as to the meaning of a statute which is
otherwise plain on its face and for the Court to instruct and apply.

12

3.

The law is for the Court to decide, as is the application of any previously

decided decision to this case. Plaintiff objects to any attempt by Mr. Berryhill to tell the
Court what the law is.
4.

Id.

5.

Plaintiff agrees with the allegation contained within Paragraph 5 which

supports Plaintiff’s Motion for Summary Judgment under the ACPA. Defendants admit
that people navigating to the domain names which are the subject of this litigation would
not do so by using a search engine, but instead go directly to the navigation bar to
engage in activity called “direct navigation”. The fact that consumers are looking for a
specific website is a harsh admission against Defendants’ business model and in favor
of a finding of bad faith cybersquatting.
6.

Plaintiff agrees with the allegations contained in Paragraph 6 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.
7.

Plaintiff agrees with the allegations contained in Paragraph 7 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.
8.

Plaintiff agrees with the allegations contained in Paragraph 8 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.

13

9.

Plaintiff agrees with the allegations contained in Paragraph 9 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.
10.

Plaintiff agrees with the allegations contained in Paragraph 10 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.
11.

Plaintiff agrees with the allegations contained in Paragraph 11 which

describe part of the monetization effort by Defendants and supporting a finding of bad
faith cybersquatting under the ACPA.
12.

Plaintiff notes that this Paragraph is an admission that Defendants know

that the advertising platform they are using will generate advertisements that will often
be in direct competition with trademark holders. Defendants’ attempt to try and place
the “blame” of placing trademark infringing advertisements on their advertising vendor is
disingenuous. No one made Defendants park these domains, put advertisements on
these domains, or register these domains.
13.

Defendants’ attempt to portray themselves as “responsible bulk domain

registrants” is fruitless on this record. Defendants’ attempt to rely on their obviously
defective filtering techniques on this record is also fruitless. Defendants’ admission that
the DNS Error Data which is spitting out the domains for possible registration presents a
“hazard” “that some of the domain names may incidentally correspond to trade or
service marks” is catastrophic to their defense. Defendants seem to think they are
entitled to register these domains despite their knowledge that they will be in some/most
14

instances engaging in trademark infringement is somewhat incredible. Defendants
have an obligation to abide by US trademark and anti-cybersquatting law. It is as
though they are saying their business model incidentally picks up thousands of stolen
cars from the parking lot and they do the best they can to return those of any
complaining owner. One only need review the list of domains typosquating Plaintiff’s
trademarks (Exhibit Q), third party Michigan companies being typosquatted by
Defendants (Exhibit H), Defendants self reporting of trademark infringemnt threat
letters, UDRP complaints and lawsuits (Exhibit K and Exhibit TT), and typosquats of
third party trademarks of well known brands (Exhibit H to Schwerzler Report included as
Exhibit M), such as Facebook, Google, Youtube, Amazon, Wikipedia, BlogSpot,
TwiTter, Craigslist, Myspace, WordPress, PhotoBucket, Comcast, Linkedin, Pandora,
Fickr, NY Times, Career Builder, Drudge Report, NetFlix, Wells Fargo, Accuweather,
Best Buy, Weather Bug, LA Times, Expedia, Overstock.com, Edmunds, Lowes, Food
Network, Ticket Master, Staples, Auto Trader, Direct TV, Fandango, Perez Hilton, Nick
Jr., TV Guide, Borders, Toys R Us, USA Today, Reuters, Gaem Stop, US Bank, Orbitz,
Skype, Consumer Reports, Pet Finder, Barack Obama, Dallas News, Cartoon Network,
Samsung, Bravo TV and virtually endless others.
14.

Defendants’ attempt to portray bulk domain registration with the “problems

of incidental trademark” issues is simply an admission of bad faith cybersquatting. If
there is no reliable way to filter out domain names which violate third party trademarks,
then their business model is unlawful in and of itself. One need only look at the 288
typographical variations of Plaintiff’s trademarks in this case to understand the full
15

magnitude of Defendants’ knowingly unlawful business model, which clearly involves a
callous indifference to trademarks. Defendants seem to think that the ACPA requires
only that they turn over infringing domains to complainants. The ACPA clearly
precludes “registration, trafficking or use” of infringing domains in the first instance.
15.

Plaintiff objects to Defendants’ unsupported allegation that PPC ads would

be shown on the subject domains if they had remained unregistered in any event
through Mozilla Firefox as lacking in foundation. No underlying support for this
statement has been provided by Mr. Berryhill or any other witness. Regardless, the
suggestion that ISPs or browser comapnies may be infringing marks, without
registering, using or trafficking in domains does not absolve Defendants acts and
omissions under the ACPA.
16.

Mr. Berryhill’s attempt to tell the Court what the ACPA says is

inadmissible.
17.

Mr. Berryhill’s attempt to tell the Court what the ACPA says is

inadmissible.
18.

Mr. Berryhill’s attempt to tell the Court what the ACPA says is

inadmissible.
19.

Mr. Berryhill’s attempt to tell the Court what the ACPA says is

inadmissible.
20.

Ms. Llamas’ testimony regarding Defendants’ business model speaks for

itself, as do the results.

16

21.

Plaintiff has no objection to Pargraph 21. Whether Defendants’ system is

designed to vet for trademarks or target trademarks is irrelevant. The simple facts are
that Defendants registered 288 variations of a single company’s incontestable
trademarks, received scores of threat letters every month from trademark owners,
optimized their infringing domains to target the business activities from the “real
website” and were engaged in institutional bad faith cybersquatting under the
undisputed facts.
22.

Ms. Llamas’ and Mr. Misino’s depositions speak for themselves. The

proof is in the pudding. Whatever Defendants say that they did in order to eliminate
trademarks is completely undermined by the domains they, in fact, registered in this
case which are typographically similar, and in many cases nearly identical, to Plaintiff’s
trademarks.
23.

Mr. Jacoby’s and Ms. Llamas’ depositions speak for themselves.

24.

Mr. Jacoby’s deposition speaks for itself.

25.

Mr. Jacoby’s deposition speaks for itself. The fact that Defendants admit

that they registered, used, and trafficked in domain names during the existence of the
Add Grace Period without doing any initial trademark review is a fact weighing heavily in
favor of summary disposition. The fact that Defendants would supposedly delete
domains which may have trademark problems after registering, trafficking, and using
those domains for four and a half days provides no relief from what is, by their own
admission, bad faith typosquatting.

17

26.

Mr. Jacoby’s deposition speaks for itself. Defendants’ argument that the

vetted for trademarks during the Add Grace Period after they registered, trafficked, and
used those domains is interesting. The fact that they supposedly deleted domains
which matched trademarks is undermined by their own portfolio riddled with third party
trademarks.
27.

Mr. Jacoby’s deposition speaks for itself.

28.

Mr. Jacoby’s and Ms. Llamas’ depositions speak for themselves.

29.

Mr. Misino’s declaration speaks for itself.

30.

Mr. Misino’s declaration speaks for itself. It is as though Defendants are

arguing that after getting thousands of threat letters, multiple UDRP arbitrations, and
near endless complaints of trademark infringement through January 2007, they decided
to try and “do better”. Even assuming that Defendants somehow put better systems in
place in 2008 and 2009 is simply an admission of the things they should have been
doing back in 2004.
31.

Mr. Misino’s declaration speaks for itself. The fact that Defendants

attempted to reduce their known liability under the ACPA by implementing a “better”
trademark system is merely an admission that prior to that date they engaged in bad
faith cybersquatting.
32.

Mr. Misino’s declaration speaks for itself.

33.

Mr. Misino’s and Mr. Jacoby’s depositions speak for themselves.

34.

Mr. Misino’s deposition speaks for itself.

35.

Mr. Misino’s and Mr. Jacoby’s depositions speak for themselves.
18

36.

Mr. Pirrone’s deposition speaks for itself.

37.

Mr. Jacoby’s, Mr. Misino’s, and Mr. Pirrone’s depositions speak for

themselves.
38.

Mr. Jacoby’s deposition speaks for itself.

39.

Mr. Misino’s declaration speaks for itself.

40.

Mr. Pirrone’s deposition speaks for itself.

41.

Mr. Pirrone’s deposition speaks for itself. The fact that Defendants, in

2008, deleted over 25,000 domains which constituted by their own determination as
infringing third party trademarks is insurmountable evidence and an admission of bad
faith cybersquatting.
42.

Ms. Llamas’ deposition speaks for itself.

43.

Mr. Korf’s declaration speaks for itself. In fact, Mr. Korf’s description of

Defendants’ business model is, in fact, an admission that their use of DNS Error Data
pulls in trademark problems which can or were not adequately vetted for trademarks.
Assuming Defendants’ efforts to vet trademarks are as testified, this only proves
Defendants’ entire business model is unlawful.
44.

Mr. Korf’s deposition speaks for itself. The fact that Defendants admit that

they are unable to develop a DNS Error driven bulk registration system which registers
the typographically variations of trademarks that we’ve seen in this case is an admission
of a knowingly unlawful business model.
45.

Ms. Llamas’ deposition speaks for itself.

19

46.

Mr. Pirrone’s deposition speaks for itself. In fact, the fact that Mr. Pirrone

transfers domains that Defendants acknowledge are violating third party trademarks
“with legitimate rights” is an admission that every domain voluntarily transferred as set
forth in Defendants’ spreadsheets (Exhibit TT) was trademark infringement.
47.

Mr. Masters’ deposition speaks for itself. Defendants admit that every

parking/landing page includes an email link which is to take and negotiate offers to sell
each and every domain.
48.

Mr. Masters’ deposition speaks for itself. Weather Underground did not

“take its name from the 1960s radical organization.”
49.

Mr. Masters’ deposition speaks for itself.

50.

Mr. Schwerzler’s deposition speaks for itself.

51.

How a magic store called “Wunderground Magic Store” lacking any

overlapping goods or services as those offered by Plaintiff is relevant to the trademarks
at issue in this case is unclear. Mr. Schwerzler’s deposition speaks for itself.
Respectfully submitted this 30th day of August, 2011.
/s/Enrico Schaefer___________________
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]
Lead Counsel for Plaintiff

20

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

21

CERTIFICATE OF SERVICE
I hereby certify that on the 30 th day of August, 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
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 (admitted pro hac)
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)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants
/s/Enrico Schaefer___________________
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]
Lead Counsel for Plaintiff

22

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
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;

Case No. 2:09-CV-10756
Hon. Marianne O. Battani

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

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants
______________________________________________________________________
PLAINTIFF’S REPLY TO DEFENDANTS’ MEMORANDUM
OF POINTS AND AUTHORITIES IN OPPOSITION
TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION

NOW COMES Plaintiff, The Weather Underground, Inc., by and through its
counsel and replies to Defendants’ Memorandum of Points and Authorities in
Opposition to Plaintiff’s Motion for Summary Adjudication as follows:
Plaintiff relies on its Motion for Partial Summary Judgment (Dkt. #205) and its
Reply to Defendants’ Response to Plaintiff’s Statement of Facts in Support of Plaintiff’s
Motion for Partial Summary Judgment and Statement of Facts in Opposition Thereto
filed contemporaneously with this Reply Memorandum.
Respectfully submitted this 30th day of August, 2011.
/s/Enrico Schaefer___________________
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]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

Page 2 of 3

CERTIFICATE OF SERVICE
I hereby certify that on the 30th day of August, 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
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 (admitted pro hac)
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)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants
/s/Enrico Schaefer___________________
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]
Lead Counsel for Plaintiff

Page 3 of 3