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

Filing 269

STATEMENT of Pretrial Conference Bench Book by Connexus Corporation, Firstlook, Incorporated, Navigation Catalyst Systems, Incorporated, Weather Underground, Incorporated (Attachments: # 1 Administrative Section, # 2 Exhibit Theory of the Case, # 3 Exhibit Plaintiff's Proposed Voir Dire, # 4 Exhibit Defendants' Proposed Voir Dire, # 5 Exhibit Witness List, # 6 Exhibit Exhibit List, # 7 Exhibit agreed Upon Jury Instructions, # 8 Exhibit Plaintiff's Additional Proposed Instructions, # 9 Exhibit Defendants' Additional Proposed Instructions, # 10 Exhibit Plaintiff's Proposed Verdict Form, # 11 Exhibit Defendants' Proposed Verdict Form, # 12 Exhibit Evidentiary Issues) (Delgado, William)

Evidentiary Issues

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
______________________________________________________________________
BENCH BOOK EVIDENTIARY ISSUES

The parties note the following evidentiary issues:
1.

Admissibility of Weather Underground‟s balance sheets and profit and loss

statements. Plaintiff states these are not relevant to any bad faith factor under 15 USC
§1125(d)(1)(B), or to the issue of damages as Plaintiff has elected statutory damages in lieu of
lost profits or disgorgement of profits. Plaintiff has not analyzed nor offered any proof of actual
damages. It is Plaintiff‟s position that Defendant has produced no discovery to support its „for
trial‟ summaries of traffic data or revenue from use of infringing domains from which
disgorgement of profits and/or loss of profits might have been possible. Balance sheets or P&L
statements don‟t have any relevance to possible loss profits, nor can Defendants show “lack of
damages” with any admissible evidence. Defendant states that Plaintiff‟s lack of damages and
harm are relevant to any analysis of statutory damages. It is Defendants‟ position that its
summaries of traffic data and domain name revenue are in themselves admissible under Fed. R.
Evid. 806 without regard to Fed. R. Evid. 1006 but that, in any event, Defendants produced the
entire database from which these numbers are derived. Plaintiff has performed other queries on
the database which they intend to introduce at trial and could just as easily query the database for
traffic and profit information.
2.

Admissibility of third party trademark registrations as a matter of judicial notice

or through Defendants witnesses. Trademark registration information is publicly available from
the USPTO, as well as through Defendants‟ USPTO Trademark Registration matching tool and
thus contained in their own trademark database. Prior to that Defendants state they searched the
publically available trademark database allegedly in order to avoid trademarks. Trademark
matching was, according to Defendants, always part of their domain name registration process.

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It is Plaintiff‟s position that what trademarks were listed as registered and as of what dates
compared to Defendants‟ domain registrations, either through public search of www.uspto.gov,
or as part of Defendants purchased databases is relevant and admissible to (a) impeach
Defendants testimony that they looked at USPTO trademark registrations prior to registering all
domains and as part of a trademark scrub of the entire portfolio in 2008, (b) compare Defendants
domain registrations against publically available trademark registration information and (c) as a
specific element of bad faith under factor 8, (“the registrant‟s registration or acquisition of
multiple domain names that are identical or confusingly similar to marks of others;”).
3.

Whether statutory damages will be assessed by the jury or the Court and whether

Defendants‟ profits and Plaintiff‟s lack of lost profits may be considered by the fact finder.
4.

How to accommodate testimony by deposition and the deadline for deposition

designations and counter-designations for completeness as well as objections to deposition
testimony.
5.

Plaintiff‟s Motions in limine:
a.

A motion to exclude any evidence/mention of Weather Underground‟s
actual losses/damages or Defendants‟ actual profits/gains because of
Plaintiff‟s election of statutory damages.

b.

A motion to obtain a jury instruction on spoliation of evidence, seeking a
presumption or alternatively an inference against Defendants on the basis
of the lack of regularly kept business records.

c.

Motion in Limine to exclude reference to Plaintiff‟s settlements with other
alleged cybersquatters.

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d.

Motion in Limine to Limit the testimony of Defendants‟ experts Korf and
Berryhill on improper legal conclusion regarding ultimate issue in the
case, relevance, foundation and Daubert criteria.

e.

Motion in Limine to Exclude attorney-client privileged emails between
Chris Schwerzler and counsel inadvertently produced as part of
Schwerzler‟s expert opinsions.

6.

Defendants‟ Motions in limine:
a.

A motion to exclude evidence and arguments abing the details of disputes
with third parties including (a) cease-and-desist letters from other parties
and (b) other lawsuits.

b.

A motion to exclude evidence of the UDRP proceeding in this case.

c.

A motion to exclude evidence of the registration of “adult” domain names.

d.

A motion to exclude argument regarding document destruction, failure to
produce documents, or other spoliation of evidence.

e.

A motion to preclude evidence and argument regarding the existence of
other corporate entities including April Sea and Metes.

f.

A motion to allow the jury to assess Defendants‟ actual profit and
Plaintiff‟s lack of profits in determining statutory damages.

Respectfully submitted this 28th day of February, 2012.
/s/William A. Delgado
William A. Delgado
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]

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

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