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

Filing 241

MOTION in Limine No. 2 by Connexus Corporation, Firstlook, Incorporated, Navigation Catalyst Systems, Incorporated. (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
______________________________________________________________________

DEFENDANTS CONNEXUS CORPORATION, FIRSTLOOK, INC., AND
NAVIGATION CATALYST SYSTEMS, INC.’S MOTION IN LIMINE NO. 2

NOTICE OF MOTION AND MOTION
TO THIS HONORABLE COURT, PLAINTIFF, AND ITS ATTORNEYS OF RECORD:
Connexus Corporation, Firstlook, Inc., and Navigation Catalyst Systems, Inc.
(collectively the ―Defendants‖) hereby move this court in limine for an order excluding any
reference, insinuation, questioning, argument, or evidence (testimony or documents) regarding
the prior National Arbitration Forum UDRP proceeding between Plaintiff and Navigation
Catalyst Systems, Inc.
The bases for this Motion are set forth in the Memorandum of Points and Authorities; to
wit, that such argument and testimony are irrelevant to this matter pursuant to Federal Rule of
Evidence Nos. 402, 801, and 802. Even if such evidence was relevant and admissible, the
prejudicial effect of such evidence substantially outweighs its probative value, and, therefore, the
Court should exercise its discretion to exclude such argument and testimony under Federal Rule
of Evidence No. 403.
Counsel for Defendants have explained the nature of this Motion and its legal basis and
requested, but did not obtain, concurrence in the relief sought.
RESPECTFULLY SUBMITTED this 24th day of February, 2012 (Pacific Time).
/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

2

MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION
With this motion in limine, Defendants seek to exclude any argument and/or evidence

related to the prior Uniform Dispute Resolution Policy (―UDRP‖) proceeding between Plaintiff
and Navigation Catalyst Systems, Inc. This Court is not bound by the UDRP panel‘s decision,
nor are the parties here obligated to present the same evidence or arguments to this Court that
they did to the UDRP panel. A lawsuit in federal court is substantially and procedurally different
from an arbitration dispute – otherwise it would be a needless waste of time (and likely
prohibited) to proceed with both.
This is a lawsuit about whether Defendants‘ registration of various domain names
violated Plaintiff‘s trademark rights. It is not a lawsuit about the merits of prior decisions, nor is
this a trial of the UDRP panel. What the panel decided—based on the prima facie elements of a
UDRP and not the ACPA—is irrelevant. In addition, the panel‘s decision and statements are
hearsay. Introducing them would accomplish nothing but to inflame the jury.
II.

ARGUMENT

A.

EVIDENCE OF THE UDRP PROCEEDING IS IRRELEVANT TO THIS
LAWSUIT.

Federal Rule of Evidence 402 specifically provides that ―[e]vidence which is not
relevant is not admissible.‖ Rule 402 defines relevant evidence as ―evidence having any
tendency to make the existence of any fact that is of consequence to the determination of the
action more probable or less probable than it would be without the evidence.‖

3

Here, the existence of the prior UDRP proceeding between Plaintiff and Navigation
Catalyst Systems, Inc. is patently irrelevant to this lawsuit. The UDRP proceeding evidences
nothing except what a panel of arbitrators concluded regarding this dispute under the guiding
principles of a UDRP, not the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)
(―ACPA‖). The instant lawsuit is a separate, unique proceeding governed by different
substantive law (the ACPA not the UDRP) and different rules of evidence (i.e., the Federal Rules
of Evidence). It must be treated as such.
Notably, this Court is not bound by the UDRP decision, and in fact does not even owe
the decision deference with regards to the merits of this case. See e.g., Eurotech, Inc. v. Cosmos
European Travels Aktieng-Esellschaft, 213 F. Supp. 2d 612, 618 n.10 (E.D. Va. 2002) (―Worth
noting here is that the result reached in the WIPO proceeding is neither admissible nor entitled to
any deference, with respect to the merits present in this suit.‖); Dynamis, Inc. v. Dynamis.com,
780 F. Supp. 2d 465, 472 (E.D. Va. 2011) (―[I]t is well settled that ‗any decision made by a
panel under the UDRP is no more than an agreed-upon administration that is not given any
deference under the ACPA.‘‖). Nothing about the existence or conclusion of the UDRP
proceeding proves or disproves any disputed fact of consequence in this case. As such, it is
inadmissible.

B.

EVIDENCE OF THE UDRP PROCEEDING IS INADMISSIBLE AS
HEARSAY.

Evidence of the UDRP proceeding should also be excluded as hearsay. Federal Rule of
Evidence 801 defines hearsay as a statement that ―the declarant does not make while testifying at
the current trial or hearing; and a party offers into evidence to prove the truth of the matter

4

asserted in the statement.‖ Proceedings that took place outside of this Court would fall under
this definition. Dynamis, Inc., 780 F. Supp. 2d at 473 (―[G]enerally speaking, the UDRP panel‘s
conclusion is inadmissible as hearsay that cannot be considered in resolving this case.‖). They
must therefore be excluded under Federal Rule of Evidence 802.

C.

EVEN IF RELEVANT, EVIDENCE OF THE UDRP PROCEEDING SHOULD
BE EXCLUDED FROM TRIAL AS PREJUDICIAL AND A WASTE OF TIME.

Pursuant to Federal Rule of Evidence 403, ―evidence may be excluded if its probative
value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or
misleading the jury, or by considerations of undue delay, waste of time, or needless presentation
of cumulative evidence.‖ The Sixth Circuit has granted trial courts broad discretion to exclude
evidence whose prejudicial effect outweighs its probative value. See, e.g., U.S. v. Fisher, 648
F.3d 442, 449 (6th Cir. 2011) (upholding district court‘s decision to exclude documentary
evidence that would have ―a high likelihood of misleading and confusing the jury‖). Where, as
here, the evidence is only marginally – if at all – relevant, the trial judge has wide latitude to
restrict or completely exclude it. U.S. v. Mack, 258 F.3d 548, 555 (6th Cir. 2001) (concluding
that the district court erred in admitting evidence of prior acts, where the evidence had little
probative value and would prejudice the jury as to defendant‘s ―bad character‖) .
Here, there is nothing probative about the existence of the UDRP proceeding. This is
particularly true given that Navigation Catalyst elected not to mount a defense to the UDRP
proceeding but, rather, stipulated to the transfer of the domain names. See Exhibit A hereto. The
findings by the arbitration panel were, therefore, made on the basis of submitted documents (not
live testimony), without applying the rules of evidence that govern in federal court, and in the

5

absence of any evidence or argument submitted by Navigation Catalyst. That is a far cry from
this case where Defendants intend to mount a vigorous defense against the claims levied against
them.
On the other hand, the danger that such evidence would unfairly prejudice the jury is
substantial. Plaintiff will undoubtedly seek to introduce evidence of the UDRP proceeding to
show the jury that a prior panel resolved this dispute in Plaintiff‘s favor, and that the jury should
do the same, irrespective of their own determinations of credibility or the instructions of law
from the Court. And, as if the prejudicial danger to Defendants was not sufficient, evidence of
the UDRP proceeding is likely to consume a vast amount of time and result in a ―trial within a
trial‖ as the parties begin to evaluate the merits of the UDRP‘s decision, the similarities to the
lawsuit at hand, etc. This is a needless distraction which will take up an undue amount of time
and confuse the jury.
//
//

6

III.

CONCLUSION
The existence of the UDRP proceeding is irrelevant to this trial, which is unique and

separate from the UDRP proceeding. And, even if it could somehow be relevant, the danger of
prejudice and confusion, and the unnecessary delay such evidence would cause, mitigates in
favor of exclusion. For these reasons, this Court should exclude all arguments, evidence, and
references to the existence of the UDRP proceeding.
RESPECTFULLY SUBMITTED this 24th day of February, 2012 (Pacific time).
/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

7

CERTIFICATE OF SERVICE
I hereby certify that on February 24, 2012, Pacific Time, 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

8