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

Filing 268

RESPONSE to 260 MOTION for Protective Order filed by Weather Underground, Incorporated. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I) (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.

/

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 FOR PROTECTIVE ORDER

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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 for
Protective Order and states as follows:
I.

Statement of the Issue Presented

Whether the Court should issue an order to protect Defendants from a second deposition
of Seth Jacoby, on the eve of trial, for which Plaintiff did not seek leave of Court?
Defendants respectfully submit that the answer is “Yes.”
Plaintiff respectfully submits that the question is inaccurate.

As Defendants know,

Plaintiffs are taking Mr. Jacoby’s trial testimony in New York where he lives, as he allegedly no
longer works for Defendants’ companies and is outside this Court’s subpoena power to compel
him to attend trial in Detroit. Defendants’ Motion scheduled for hearing two days before
testimony is to be taken should be denied.
II.

Introduction

Defendants move to preclude Plaintiff from taking the de bene esse trial testimony of
Firstlook’s former President, Seth Jacoby. Defendants recently indicated that Mr. Jacoby, along
with all but one other witness deposed in the case, no longer works for Defendants’ companies.
His most recent contact information was only begrudgingly provided to counsel for Plaintiff on
February 7, 2012. Counsel for Plaintiff tried to contact Mr. Jacoby to arrange for his trial
testimony, but Mr. Jacoby failed to respond.

Accordingly, counsel issued a de bene esse

subpoena to take Mr. Jacoby’s trial testimony where he lives in New York on February 21, 2012,
with service by hand on February 22, 2012. (Exhibit A, Executed Subpoena.) Testimony is

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scheduled to be taken on Thursday, March 1, 2012, at 9:00 AM in New York. Defendant waited
until today, February 27, 2012, to file this motion.
On November 11, 2011, counsel for Plaintiff asked about the status of witness’
attendance at trial.

In that letter, Plaintiff’s counsel requested that contact information be

provided for any witness no longer working for Defendants or any related company. (Exhibit B,
November 11, 2012, letter to Delgado.) Counsel for Defendants responded on November 29,
2012, that only two key witnesses were still employed by Defendants for the purposes of trial.
Defendants’ counsel did not provide any contact information as previously requested. Instead,
counsel suggested that Plaintiff read in the deposition testimony of Mr. Jacoby for trial.
On February 3, 2012, counsel for Plaintiff again asked for contact information for those
witnesses which Mr. Delgado contented no longer worked for Defendants or related companies,
noting that subpoenas would need to be issued for de bene esse depositions to preserve their trial
testimony. (Exhibit C, February 3, 2012, letter to Delgado.) Over two months after Plaintiff’s
counsel’s original request, Defendants provided contact information for witnesses, including
Seth Jacoby, on February 7, 2012. (Exhibit D, February 7, 2012, letter from Delgado.) Counsel
noted “The various witnesses are all outside the subpoena power of the Eastern District of
Michigan so it is unclear what you intend to send them.” Exhibit D, February 7, 2012, letter
from Delgado.)
Clearly, Defendants don’t want certain witnesses to have their trial testimony taken de
bene esse. As of this last Sunday, and after repeated further requests, counsel is still largely noncommittal about what ‘former employees’ they intend to bring to trial. (Exhibit E, email dated
February 26, 2012.)
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A.

Federal Rule of Civil Procedure 30(a) and 32 provide for Preserving Trial
Testimony by De Bene Esse Deposition.

Under Fed. R. Civ. P. 32(a)(4), a party may use for any purpose the deposition of a
witness, whether or not a party, if the court finds that the witness is more than 100 miles from the
place of hearing or trial or is outside the United States, unless it appears that the witness's
absence was procured by the party offering the deposition or that the party offering the
deposition could not procure the witness's attendance by subpoena. In this case, Seth Jacoby
lives in New York and, according to Defendants, no longer works for Defendant companies.
In Charles v. Wade, 665 F.2d 661 (5th Cir. 1982), the court noted the difference between
a trial deposition and a discovery deposition, reversing the trial court’s refusal to allow a de bene
esse deposition to be taken for trial.
“When appellant sought the court's leave to depose Nixon, the court denied
permission on the basis that the discovery period had closed. This was clearly an
inappropriate reason for denying appellant's motion to depose. Although the
discovery period had indeed closed at the time appellant made his motion, the
requested deposition would not have been taken for purposes of discovery but as
the testimony of a witness unavailable for trial. Appellant's motion underscored
this distinction by informing the court that the deposition would “not be taken for
discovery purposes, but in lieu of Mr. Nixon's live testimony at trial.” The
distinction is a valid one. Appellant was not seeking to discover Nixon's
testimony, appellant knew what Nixon had to say, but was seeking a means for
introducing Nixon's testimony at trial. A party to a lawsuit obviously is entitled to
present his witnesses. The fact that the discovery period had closed had no
bearing on appellant's need, or his right, to have the jury hear Nixon's testimony.
We hold that the court clearly erred in denying appellant's deposition motion on
the ground stated in its order.”
Charles v. Wade, 665 F.2d 661, 664 (5th Cir. 1982). It should be noted that in Wade, the
deponent was in jail, which triggered the requirement to obtain leave of court before proceeding
under Fed R. Civ P 30(a)(“(t)he deposition of a person confined in prison may be taken only by
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leave of court on such terms as the court prescribes.”). In this case, Mr. Jacoby is simply beyond
the subpoena power of this Court and, according to Defendants, no longer an employee of a
party.
B.

Defendants Continue to Play Shell Games with Witnesses.

Mr. Jacoby allegedly now works for a company called “Flipside.” The flipside.com web
site contains extremely illusive information about what the company does, stating: “We're a
talented group of engineers and project managers who know how to create, manage, maintain,
and monetize quality user experiences on the Internet. We're particularly talented when it comes
to paid search and lead generation.” (Exhibit F, Flipside website screenshot.) Interestingly, the
Flipside home page contains a secure “Customer Login” with the flowing code from Defendants’
firstlook.com and referring specifically to “domainparking.firstlook.com.”:
<div id="clientlogin"><a href="#">Customer Login</a></div>
<div id="form_wrapper" class="form_wrapper">
<form class="login active" method="post"
action="https://domainparking.firstlook.com/Account/LogOn">
<h3><a href="#" class="close">x</a>Customer Login</h3>
<div>
<label>Username:</label>
<input id="username" name="username" type="text" />
</div>
<div>
<label>Password:</label>
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<input id="password" name="password" type="password" />
</div>
<div class="bottom">
<input type="submit" value="Login"></input>
</div>
</form>
</div>
(Exhibit G, HTML Code for flipside.com.) Flipside.com is a domain previously owned by
Navigation Catalyst Systems (or its precursor company), from 2004 until Sept, 2011, when it
was flipped to an untraceable registrant called “Corporation Service Corp.” (Exhibit H, Domain
Tools WHOIS information.)

“Flipside” was a trademark owned Navigation Catalyst Systems

according to Defendants’ counterclaims in the Verizon case. (Exhibit I, NCS Counterclaims,
pgs. 14-15.) Flipside, LLC was a company that was owned by Navigation Catalyst Systems or
“its related companies” as also noted in the NCS Counterclaims against Verizon.
By all appearances, Mr. Jacoby is working for a company using a domain name,
trademark and software code of Defendants in this case. Defendants’ representation that Mr.
Jacoby no longer works for a company related to Defendants is highly suspect.
Since late November 2011, Plaintiff has been trying to identify the availability of
witnesses for trial and has been trying to obtain contact information for supposed “former
employees” who departure from the companies was not provided as part of Defendants duty to
supplement its discovery responses. Defendants’ motives for trying to avoid trial testimony from

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Mr. Jacoby are unclear. As perhaps the most important witness in the case, the jury is entitled to
more than his deposition transcript at trial.
Any inconvenience of travel to take this deposition is born by both parties and caused by
Defendants continued tactics of obfuscation and delay. Because Mr. Jacoby is not responding
for counsel’s requests to contact us, it is not anticipated that Mr. Jacoby will cooperate in
rescheduling.
III.

Conclusion

Obtaining de bene esse trial testimony is standard procedure. In this case, virtually every
key defense witness in the case allegedly is no longer working for Defendants. Defendants’
efforts to avoid trial testimony by Mr. Jacoby and limit Plaintiff to deposition testimony are
transparent. This Court should deny Defendants’ Motion for a protective order and order (a) the
de bene esse deposition to proceed forward as scheduled or (b) on another date assuming
Defense counsel can get Mr. Jacoby to agree to a schedule change which works for everyone’s
schedule.
/
/
/
/

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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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