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

Filing 37

DECLARATION by William A. Delgado re 36 MOTION for Protective Order filed by Navigation Catalyst Systems, Incorporated (Attachments: # 1 Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H) (Delgado, William)

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

Doc. 3

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN THE WEATHER UNDERGROUND, INC., a Michigan corporation, Plaintiff, v s. 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 (pro hac vice) WILLENKEN WILSON LOH & LIEB LLP 707 Wilshire Boulevard, Suite 3850 Los Angeles, CA 90017 [phone] [e-mail] Lead Counsel for Defendants Case No. 2:09-CV-10756 Hon. Marianne O. Battani

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 ______________________________________________________________________ DECLARATION OF WILLIAM A. DELGADO

Dockets.Justia.com

I, William A. Delgado, declare as follows: 1. I am an attorney duly licensed to practice in the State of California and have been

admitted to this Court for purposes of this case. I make this declaration in support of Defendant Navigation Catalyst Systems, Inc.'s Motion for Protective Order. Except where otherwise indicated, I have personal knowledge of the facts stated herein and, if called as a witness, I could competently testify hereto. 2. I attended the scheduling conference in this matter on January 11, 2010. There,

Plaintiff took the position that third party discovery is required because one of the statutory factors that can be evidence of "bad faith" for purposes of the ACPA is the registration of multiple domain names that are identical or confusingly similar to the mark of others, citing 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). 3. At the time, I disagreed with the application of the Statutory Factors in a case

such as this one where the domain name registration was the result of an automated computer system. 4. Notwithstanding Defendant's position as to the non-applicability of the Statutory

Factors, on January 14, 2010, I reached out to Plaintiff's counsel, Enrico Schaefer, to offer a plan by which Defendant could provide the information Plaintiff sought for purposes of Statutory Factor 8 (either because it was in NCS's possession, custody, and/or control or easily stipulated to) without having Plaintiff send out a set of burdensome subpoenas to third parties. A true and correct copy of my letter to Mr. Schaefer is attached as Exhibit A. I received no reply whatsoever.

Page 2 of 4

5.

On February 1, 2010, Plaintiff served Defendant with a Notice of Intent to Serve

Subpoena for six different companies: Facebook, Yahoo! (Flickr), Netflix, Google (Orkut), Wikimedia Foundation (Wikipedia ), and YouTube. True and correct copies of each Notice of Intent to Serve Subpoena are attached as Exhibits B -G, respectively. 6. After receiving the Notices of Intent to Serve Subpoena , I informed Mr. Schaefer

that Defendant would bring a motion for protective order. A true and correct copy of my e-mail to Mr. Schaefer is attached as Exhibit H. Mr. Schaefer and I met and conferred regarding the motion on February 3, 2010, but no agreement was reached. 7. The United States Patent and Trademark Office contains a publicly accessible

database of trademarks that have been applied for and registered called TESS (Trademark Electronic Search System) which can be accessed from the Office's website at http://www.uspto.gov. 8. Plaintiff's Request for Production No. 46 in its First Set of Requests for

Production reads: "Produce all Documents reflecting authorization or permission from a third party trademark or service mark owner to NCS register a domain name incorporating the third party trademark or service mark, or anything confusingly similar thereto ." I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on this 8th day of February 2010 at Los Angeles, California.

/s/William A. Delgado William A. Delgado

.

Page 3 of 4

CERTIFICATE OF SERVICE I hereby certify that on February 8, 2010, 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 Anthony P. Patti (P43729) HOOPER HATHAWAY, PC 126 South Main Street Ann Arbor, MI 48104 734-662-4426 [e-mail] 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 William A. Delgado (admitted pro hac vice) 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 (admitted pro hac vice) WILLENKEN WILSON LOH & LIEB, LLP 707 Wilshire Boulevard, Suite 3850 Los Angeles, CA 90017 [phone] [e-mail] Lead Counsel for Defendants

Page 4 of 4