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

Filing 254

RESPONSE to 242 MOTION in Limine No. 3 filed by Weather Underground, Incorporated. (Schaefer, Enrico)

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

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

Plaintiff,
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,
Defendant.

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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 Counsel for Plaintiff

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

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

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants
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PLAINTIFF’S RESPONSE TO DEFENDANTS’ MOTION IN LIMINE NO. 3
REGARDING “ADULT” DOMAIN NAMES

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TABLE OF AUTHORITIES
Cases
Shields v. Zuccarini, 254 F.3d 476, 484 (3d Cir. 2001).................................................................. 2
U.S. v. Stout, 509 F.3d 796 (6th Cir. 2007)...................................................................................... 3
United States v. Dornhofer, 859 F.2d 1195, 1199 (4th Cir. 1988) .................................................. 3
United States v. Vosburgh, 602 F.3d 512 (3d Cir. 2010) cert. denied,
131 S. Ct. 1783 (U.S. 2011)................................................................................................ 3
Statutes
15 U.S.C. § 1125(d)(1)(B)(VIII)..................................................................................................... 2
Other Authorities
S. Rep. No. 106-140 (1999), 1999 WL 594571, at *15 .................................................................. 2
Rules
FRE 402 .......................................................................................................................................... 1
FRE 403 ...................................................................................................................................... 3, 4

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NOW COME Plaintiff, by and through counsel, TRAVERSE LEGAL, PLC and
HOOPER HATHAWAY, P.C., and hereby submits its response to Defendants’ Motion in
Limine No. 3 regarding “adult” domain names and states as follows:
I.

Introduction
Defendants’ Motion in Limine No. 3 regarding Defendants’ registration of domain names

that are “adult” in nature must fail because, even assuming one can definitively determine what
qualifies as “adult” in nature1, all domain names in Defendants’ portfolio are relevant. In fact,
more so than any other piece of evidence in this case, the Defendants’ domain portfolio, which
has been identified as Plaintiff’s Exhibit No. 1, a printout of the domain portfolio produced in
discovery by Defendants, namely NCS058791, must be reviewed in order to determine
cybersquatting liability.
II.

Argument
A.

Defendants’ Entire Domain Portfolio Is Relevant

Every single domain name in Defendants’ portfolio has a tendency to make it more or
less probable, as required under FRE 402, that Defendants engaged in bad faith cybersquatting.
The Anti-cybersquatting Consumer Protection Act (ACPA) specifically contemplated
pornography being implicated and considered:
[C]ybersquatters often register well-known marks to prey on consumer confusion
by misusing the domain name to divert customers from the mark owner's site to
the cybersquatter's own site, many of which are pornography sites that derive
advertising revenue based on the number of visits, or “hits,” the site receives. For
example, the Committee was informed of a parent whose child mistakenly typed
in the domain name for ‘dosney.com,’ expecting to access the family-oriented
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Tellingly, the former President of Defendant Firstlook, Seth Jacoby, commented upon the difficulty in determining
what is an offensive domain name, including pornographic-type domain names. See Exhibit A, Seth Jacoby
Deposition at pg. 233, lines 5-15.

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content of the Walt Disney home page, only to end up staring at a screen of
hardcore pornography because a cybersquatter had registered that domain name in
anticipation that consumers would make that exact mistake.
S. Rep. No. 106-140 (1999), 1999 WL 594571, at *15. The reason each domain name is relevant
is because each has a tendency to make it more or less probable that Defendants’ intent was to
register domain names in anticipation that consumers would make a mistake, thereby increasing
the number of hits received and revenue generated. See Shields v. Zuccarini, 254 F.3d 476, 484
(3d Cir. 2001) (noting that although defendant’s domain name websites did not involve
pornography, they did reveal defendant’s intent and thus were considered).
Furthermore, the clear language of the ACPA itself confirms that all domain names in a
defendant’s portfolio are relevant. See 15 U.S.C. § 1125(d)(1)(B)(VIII) (one of the bad faith
factors specifically includes “the person’s registration or acquisition of multiple domain names”).
Just because a domain name is “adult” in nature does not mean it cannot correspond to an “adult”
trademark and thus qualify as cybersquatting.
In sum, given the legislative intent and history of the ACPA, the language of the statute
itself and the necessity of the entire domain portfolio to determine the existence of bad faith
cybersquatting, all of Defendants’ domain names, including “adult” ones, are relevant.
B.

The Jury is Entitled to Defendants’ Entire Domain Portfolio, “Adult”
Domains Included

Defendants, under the guise of seeking to avoid prejudice based upon speculation that the
jury would somehow look at Defendants with particular disdain due to their registration of
“adult” domain names, are simply trying to limit the most relevant and telling piece of evidence
in the case – the domain portfolio. However, the fact that some of Defendants’ domain names
may be “adult” in nature does not substantially outweigh their probative value and does not
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justify exclusion under FRE 403. It is pure speculation that the jury would be inflamed in any
way by a domain name that is “adult” in nature. Who is to say that domain names that deal with
religion or politics could not do the same? By excluding “adult” domain names, even assuming
it is possible, this Court would begin sliding down the slippery slope of making subjective
determinations regarding what may or may not affect the jury. This would only prejudice the
Plaintiff, who is entitled to present the Defendants’ entire domain portfolio to the jury.
Defendants cite U.S. v. Stout, which deals with prior bad act evidence related to child
pornography and concludes that there are less prejudicial ways to introduce the intent of
defendant. U.S. v. Stout, 509 F.3d 796 (6th Cir. 2007). That case, however, can be distinguished
from this one for the simple reason that a factor in the ACPA statute specifically includes a
defendant’s entire domain portfolio and that the ACPA specifically contemplated the
pornographic nature of domain names and the websites that may be associated with them. Since
Defendants claim they do not have a bad faith intent to profit off the trademarks of others, the
probative value of each and every domain name in their possession warrants inclusion, regardless
of the goods or services offered in connection with such trademarks. See United States v.
Vosburgh, 602 F.3d 512 (3d Cir. 2010) cert. denied, 131 S. Ct. 1783 (U.S. 2011) (holding that
the probative value of child pornographic photographs was significant and suggested that
defendant harbored a sexual interest in children and disprove possession was by accident); see
also United States v. Dornhofer, 859 F.2d 1195, 1199 (4th Cir. 1988) (upholding admission of
child erotica evidence against Rule 403 challenge because possession of such material made
defendant’s claim that he ordered child pornography by mistake less probable).

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Should this Court remain concerned about the prejudicial affect of these “adult” domain
names, this Court could issue a limiting instruction that informs the jury that the mere possession
of “adult” related domain names is not illegal, absent such domain name constitutes
cybersquatting under ACPA. See FRE 403 Advisory Committee Note (“consideration should be
given to the probable effectiveness or lack of effectiveness of a limiting instruction.”). In the
event this Court deems it possible to identify what qualifies as “adult” in nature and allow
exclusion, the burden should be upon Defendants to redact such domain names from their
portfolio.
III.

Conclusion
For the reasons stated above, the Court should allow Plaintiff to introduce evidence of the

“adult” domain names in Defendants’ domain portfolio and elicit testimony related to the same
as it is relevant to bad faith factors under the ACPA. Moreover, any prejudicial effect is purely
speculative and does not substantially outweigh the evidence which tends to disprove
Defendants’ claim of good faith intent to avoid trademarks of others.
WHEREFORE, for all of the above-stated reasons, this Honorable Court is respectfully
asked to deny Plaintiff’s Motion in Limine No. 3 regarding “adult” domain names.
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Respectfully submitted this 27th day of February, 2012.

/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]
Co-Counsel for Plaintiff

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CERTIFICATE OF SERVICE
I hereby certify that on the 27th day of February, 2012, 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 Counsel for Plaintiff

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

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

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead 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

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