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

Filing 231

REPLY to Response re 225 MOTION for Reconsideration re 222 Order on Motion for Summary Judgment, Order on Motion for Order,, filed by Weather Underground, Incorporated. (Attachments: # 1 Exhibit A, # 2 Exhibit B) (Schaefer, Enrico)

Case 2:09-cv-10756-MOB-VMM Document 82

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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; BASIC FUSION, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; and FIRSTLOOK, 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
______________________________________________________________________
ORDER COMPELLING DISCOVERY
The Court having reviewed documents related to Plaintiff’s Motion to Compel Discovery
(Docket No. 46), Defendant’s Motion to Compel Discovery (Docket No. 61) and Plaintiff’s
Motion to Extend Discovery (Docket No. 70), and conducting two hearings on the issues
presented on May 12 and May 19, 2010,and the Court being advised in the premises, IT IS
HEREBY ORDERED:
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With regard to Plaintiff’s Motion to Compel Discovery (Docket No. 46):
1. This Stipulated Order shall supersede and replace the Order filed May 21, 2010 (Docket
No. 80), which shall have no effect.
2. This Stipulated Order is without prejudice to either Party’s right to move the Court for a
modification of the scope of discovery at a later date.
3. The words ‘You’, ‘Your’, ‘NCS’ and ‘Defendant’ as used herein and in Plaintiff’s
discovery requests is defined to include Connexus, Firstlook, Basic Fusion and any other
affiliated companies that are involved in the registration, use or trafficking of domain
names registered by Navigation Catalyst Systems, Inc.
4. Unless otherwise indicated, the “Relevant Period” means the timeframe beginning July
22, 2004 (believed to be the date when Defendant first registered a domain alleged to
infringe Plaintiff’s trademarks) through the present.
5. With regard to production of voluminous email the following shall apply. To the extent
NCS affirms that production of email in response to specific requests is too difficult and
voluminous and as an alternative to producing all email, NCS may propose a list of
search queries to run on all relevant email databases to Plaintiff’s counsel for review.
Plaintiff’s counsel may provide any proposals for modification of the search queries
within 5 business days. The parties shall meet and confer with respect to such proposal
and NCS shall execute the queries upon which the parties agree.
6. With regard to RFP #2, NCS is ordered to look for all non privileged, communications
and supplement its response.
7. With Regard to RFP #3, RFP #4, RFP #5, RFP #6, #9, NCS, for now, is ordered to look
for and produce responsive documents for or related to NCS solely (i.e., not Connexus,
Firstlook or Basic Fusion), if any, and supplement its responses accordingly. With regard
to searching email databases, NCS is ordered to provide a document confirming that an
inquiry was conducted using the following keywords: Invest!, Capital!, Start up, Form!,
Venture capital, Prospectus.
8. With regard to RFP #7 and #8, NCS is ordered to produce its audited financial statements
including Profit and Loss and Balance Sheets from 2004 to 2008 and any subsequent
years as they become available.
9. With regard to RFP #12 and ROG #2, NCS will supplement its response and produce
employment and work-related contracts or offer letters for individuals performing work
related to domain name registration and/or monetization for the Relevant Time Period, if
any.

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10. With respect to RFP #14, NCS will supplements its response and produce responsive
documents, if any.
11. With regard to RFP # 15, NCS is ordered to produce corporate records, including bylaws,
articles, membership agreements, certificates of incorporation, stock certificates, and
license resolutions and minutes related to domain name registration, use, or trafficking.
12. With regard to RFP#16, NCS will produce all Documents related to the business
relationship between NCS and Basic Fusion, Inc, NCS and Connexus Corp. and NCS and
Firstlook, Inc., as follows:
a. All money paid to and between each company from 2004 -2009 and
b. Contracts and other agreements between the companies.
NCS shall create a database of all emails by and between NCS and each company, run a
search query defined by the parties on the database consistent with the process described
in Paragraph 5, and produce all non-privileged emails responsive to the query
13. With regard to RFP #17-19, NCS will supplement its response and produce responsive
documents, if any, but the search and production of e-mail shall be subject to Paragraph
#5.
14. With regard to RFP #21, NCS will supplement its production and produce responsive
documents.
15. With regard to RFP #22, 23, 24, 25, 26, 27, 29 NCS is ordered to look for and produce
responsive documents, if any. To the extent NCS is being asked to produce emails, NCS
shall comply with paragraph 5 for the Relevant Period.
16. With regard to RFP #28, NCS is ordered to supplement production of documents if any.
17. With regard to RFP #30, NCS is ordered to look for and produce all documents which
constitute, refer to or relate to employment policies, if any.
18. With regard to RFP # 31, 34, the parties stipulate to the admissibility of Domain Tools
archival WHOIS data subject to each parties right to contest the accuracy of that data and
subject to production of any documents in support thereof. NCS agrees that it will not
seek to calculate the difference between revenue and profits on Plaintiff’s claim of
disgorgement of profits as it relates to the Domains At Issue. NCS will produce revenue
for the Domains at Issue, to the extent that it has not already been provided. NCS shall
provide a delete date if applicable for each of the Domains At Issue. NCS shall provide
all communications, if any, received by third parties inquiring about purchase or use of
the Domains At Issue.
19. With regard to RFP# 32, and to the extent possible, NCS is ordered to produce the raw
data from which document NCS000001 was generated.
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20. With regard to RFP# 33, NCS is ordered to look for and produce or affirm, via affidavit,
that documents requested are not reasonably available and state in detail why the
documents are not reasonably available for production.
21. With regard to RFP #36, NCS shall produce a list of all domain names registered by NCS
for January 1, 2004, July 1, 2004 and each year thereafter on those same dates through
2009. NCS does not need to produce any domains registered and then dropped during the
5 day Add Grace Period (AGP). To the extent NCS alleges that prior registrations are not
available or cannot reasonably be produced, 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) deponent concerning its assertion that
information cannot be reasonably produced.
22. With Regard to RFP# 36, the parties stipulate to the admissibility of Domain Tools data
concerning WHOIS hosting, registrar, and related information. The parties reserve their
right to challenge the admissibility should their documentation reveal that the Domain
Tools data was incorrect and subject to their obligation to provide supporting documents.
23. With regard to RFP #40, NCS shall produce emails to and from the emails shown on the
bottom of all parked pages regarding the purchase or sale of domain names for the
Domains at Issue and for all domains registered by NCS during the period January 1,
2008 through January 1, 2009.
24. With regard to RFP #42, NCS shall supplement its response and provide responsive
documents if any.
25. With regard to RFP#45, NCS shall supplement it response to the extent responsive
documents exist. To the extent that NCS states information otherwise not available, it
will provide an affidavit explaining in detail why documents are no longer available.
Consistent with Paragraph 36, NCS shall ensure that no further documents responsive to
RFP #45 are destroyed from the date of this Order forward.
26. With regard to RFP#46, NCS shall supplement it response.
27. With regard to RFP #50, Plaintiff will re-submit a more specific document request.
28. With regard to RFP #52 and #53, NCS shall supplement its production by producing all
previous drafts of the Firstlook and Basic Fusion Agreement, if any.
29. With regard to RFP #57, NCS shall supplement its production and produce responsive
documents, if any.
30. With regard to RFP #58 and ROG #6, NCS shall supplement by identifying all
commercial disputes, by stating case name and number and general explanation of any
lawsuit, arbitration, or other adversarial proceeding.
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31. With regard to RFP #59, NCS shall supplement its response.
32. With regard to RFP #60, NCS shall supplement its response and produce responsive
documents, if any.
33. With regard to ROGS 3, 4, 5, NCS is ordered to supplement its response to include
version or other software identification, people who assisted in the design, development,
coding, and maintenance, and dates of use to the extent such information is available.
34. To the extent a request for production or interrogatory is not addressed herein nor raised
at the hearing on May 19, 2010, it shall be deemed resolved, and NCS shall have no
current obligation with respect to such request or interrogatory.
35. NCS shall comply with the above provisions within 25 days.
36. During the pendency of this lawsuit, NCS shall suspend any non-automated document
destruction. To the extent that automated document destruction exists, NCS will provide
a list of such automated systems to Plaintiff. Plaintiff may thereafter seek modification
of this provision of the order.
With regard to Defendant’s Motion to Compel:
1. Plaintiff shall reproduce any illegible document already identified by NCS as illegible.
Plaintiff further agrees to produce any document in color if it was originally in color. For
illegible document identified in the future, NCS agrees to specifically identify to Plaintiff
which documents require reproduction and Plaintiff shall produce those requests within
10 days of receiving the request.
2. With regard to RFP #6, 28, Plaintiff shall produce documents not available via the
USPTO website at www.uspto.gov within 10 days notice.
3. With regard to RFP #12, 27, Plaintiff shall produce Profit and Loss Statements and
Balance Sheets from 2006 to present to the extent they exist.

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With regard to Plaintiff’s Motion to Extend Discovery, all future dates, except the status
conference scheduled with Judge Battani on June 3, 2010, are extended 90 days.
Approved as to Form:

/s/Enrico Schaefer (by authorization)
Enrico Schaefer (P43506)
Lead Attorneys for Plaintiff

/s/William A. Delgado
William A. Delgado
Lead Counsel for Defendants

SO ORDERED
S/Virginia M. Morgan
Virginia M. Morgan
United States Magistrate Judge

Dated: May 25, 2010

PROOF OF SERVICE
The undersigned certifies that the foregoing document was served upon counsel of record via the Court’s
ECF System and/or U. S. Mail on May 25, 2010.
s/Jane Johnson
Case Manager to
Magistrate Judge Virginia M. Morgan

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