Osbourne v. Google LLC
MEMORANDUM OPINION AND ORDER by District Judge Judith C. Herrera denying 2 Plaintiff's Notice to the Court & Request for Corrective Action by the Court Concerning a Subpoena from Applicant Federal Rules of Civil Procedure Rule 45(a)(2) (baw)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
MORGAN K. OSBORNE,
No. 18-mc-32 JCH
MEMORANDUM OPINION AND ORDER
On November 13, 2018, Morgan K. Osborne (“Osborne”) filed a “Notice to the Court &
Request for Corrective Action by the Court Concerning a Subpoena from Applicant Federal Rules
of Civil Procedure Rule 45(a)(2)” (ECF No. 2) (hereinafter “Notice”). Google, Inc., (“Google”)
filed a “Response in Opposition to Mr. Morgan K. Osborne’s Request for Corrective Action” (ECF
No. 3). In reply, Osborne filed a “Response in Support of Motion” (ECF No. 7). The Court, having
considered the Notice, Google’s response, Osborne’s response in support, the evidence, the
applicable law, and otherwise being fully advised, concludes that Osborne’s request for corrective
action should be denied.
On March 4, 2016, Google filed a U.S. trademark application with the United States Patent
and Trademark Office (“PTO”) for an animated motion trademark in which the GOOGLE mark
transforms into a series of colors and then back to the GOOGLE mark. Focarino Decl. ¶ 2, ECF
No. 3-1. Osborne is the owner of U.S. Registration No. 4,941,027, a mark consisting of a series of
four colored dots enclosed by gray lines (hereinafter “Osborne mark”). See Focarino Decl. ¶¶ 6-7
& Ex. C, ECF No. 3-1. On February 14, 2017, Osborne filed a Notice of Opposition with the
Trademark Trial and Appeal Board (“TTAB”) against the application to register the GOOGLE
motion mark, asserting that the GOOGLE motion mark is likely to cause confusion with the
Osborne mark. Id. ¶ 4 & Ex. B, ECF No. 3-1. On March 27, 2017, Google asserted a counterclaim
in the Opposition seeking cancellation of Osborne’s registration for the Osborne mark, arguing
that it is not entitled to registration because the mark was not in use in U.S. interstate commerce at
the time Osborne filed a Statement of Use with the PTO and because the Osborne mark is
functional in nature and cannot serve as a trademark. Focarino Decl. ¶¶ 8-9 & Ex. D, ECF No. 31. As part of the discovery in the case, Google requested documents regarding whether Osborne
has made bona fide use of the Osborne mark in interstate commerce. See Focarino Decl. ¶¶ 10-12
& Ex. E-F, ECF No. 3-1.
In an initial disclosure Osborne served, Osborne identified The Mobile Observatory Project
as a customer/witness. See Focarino Decl. ¶ 13 & Ex. G, ECF No. 3-1. Per a request by Google,
on November 7, 2018, a deputy clerk of this Court signed a Subpoena to Produce Documents,
Information, or Objects or to Permit Inspection of Premises in a Civil Action (hereinafter
“Subpoena”). See Subpoena, ECF No. 1. The Subpoena commanded The Mobile Observatory
Project c/o Ben Davidson & Kat Davidson to produce documents described in Exhibit A on
November 21, 2018 10:00 am. Id. As relevant here, Exhibit A described the OSBORNE DESIGN
MARK as “OPPOSER’s alleged trademark cited in the ACTION and identified in U.S.
Registration No. 4,941,027.” See “Exhibit A Document Subpoena”, ECF No. 3-1 at 38 of 49
(italics added). Exhibit A also stated in the “Document Requests” section that Google wanted
certain documents “sufficient to show” certain information, for example, “DOCUMENTS
sufficient to show YOUR relationship to OPPOSER, including copies of any contracts, agreements,
….” Id., ECF No. 3-1 at 39 of 49 (italics added).
On November 7, 2018 at 3:38 pm EST, Brian Focarino, counsel for Google, sent an email
to Osborne stating: “Please see the attached notice regarding subpoenas to be served today.” See
id. ¶¶ 1, 15-16, & Ex. H, ECF No. 3-1. The email had as an attachment a copy of the Subpoena.
See Focarino Decl. ¶¶ 15-16 & Ex. H, ECF No. 3-1. Service of the Subpoena on The Mobile
Observatory Project occurred on November 7, 2018 at 6:00 pm EST (4:00 pm MST). See Focarino
Decl. ¶ 17-18 & Ex. I, ECF No. 3-1.
On November 13, 2018, Osborne filed the Notice at issue here seeking corrective action
for alleged violations of Federal Rule of Civil Procedure 45(a)(2). Osborne contends that Google,
Inc. (“Google”) did not give Osborne the required “notice and a copy” of the subpoena before it
served it on the person to whom it was directed, as required by Rule 45(a)(2). Osborne also asserts
that Google made misrepresentations in the subpoena when it (i) described the OSBORNE
DESIGN MARK as an “alleged trademark” when it is an officially registered trademark with the
United States Patent & Trademark Office, and (ii) used the term “sufficient to show” in Document
Subpoena Nos. 1, 3, 4, 7, 8, 9, 10, and 11, which Osborne argues “has misled the third-party
(recipient of the subpoena) to believe that its responses must be ‘sufficient’ in some way to
Applicant’s Counsel bias or expectations rather than simply responsive to a demand for
production.” Notice 2, ECF No. 2.
Section 24 of Title 35 of the United States Code states:
The clerk of any United States court for the district wherein testimony is to be taken
for use in any contested case in the Patent and Trademark Office, shall, upon the
application of any party thereto, issue a subpoena for any witness residing or being
within such district, commanding him to appear and testify before an officer in such
district authorized to take depositions and affidavits, at the time and place stated in
the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the
attendance of witnesses and to the production of documents and things shall apply
to contested cases in the Patent and Trademark Office.
35 U.S.C. § 24. Rule 45(a)(4) provides: “If the subpoena commands the production of documents,
electronically stored information, or tangible things or the inspection of premises before trial, then
before it is served on the person to whom it is directed, a notice and a copy of the subpoena must
be served on each party.” Fed. R. Civ. P. 45(a)(4). The intent of Rule 45(a)(4) is “to achieve the
original purpose of enabling the other parties to object or to serve a subpoena for additional
materials.” Fed. R. Civ. P. 45, Advisory Committee Notes, 2013 Amendment.
Osborne received notice by email on November 7, 2018 at 3:38 pm EST, prior to service
of the Subpoena on The Mobile Observatory Project the same day at 6:00 pm EST. Although the
notice was a mere hours before service of the Subpoena, the notice nonetheless occurred before
service, and Osborne received notice of the Subpoena well in advance of the November 21, 2018
10:00 a.m. production date with enough time to object to the Subpoena prior to the date set forth
in the Subpoena. Accordingly, the Court finds that Osborne received notice under Rule 45(a)(4)
to satisfy the purpose of the rule and will not quash the Subpoena. Compare Butler v. Biocore
Medical Technologies, Inc., 348 F.3d 1163, 1173 (10th Cir. 2003) (“Further, the 1991 Advisory
Committee Notes to Rule 45 indicate that the purpose of the notice requirement is to provide
opposing parties an opportunity to object to the subpoena. For an objection to be reasonably
possible, notice must be given well in advance of the production date….We therefore agree that
Rule 45(b)(1) requires notice to be given prior to service of a subpoena.”); Kemper v. Equity Ins.
Co., 1:15-cv-2961-TCB, 2016 WL 7428215, at *6 (N.D. Ga. April 29, 2016) (“The Court agrees
with the latter approach given the plain language of the rule, which expressly provides that notice
must be served on the other parties ‘before [the subpoena] is served on the person to whom it is
directed.’ Fed. R. Civ. P. 45. But Kemper does not cite to any cases requiring a specific amount of
notice to comply with Rule 45, and the Rule does not specify the amount of notice that is required.
It simply requires advance notice, and the record indicates that Equity provided this.”); with
Florida Media, Inc. v. World Publications, LLC, 236 F.R.D. 693, 694-95 (M.D. Fla. 2006) (“For
an objection to be reasonably possible, notice must be given well in advance of the production
date. This Court rules that ‘prior notice’ to other parties is satisfied when notice is given
simultaneously with the service of the subpoena.”) (internal quotations and citation omitted).
Additionally, the Court finds that the language of the Subpoena was not misleading by
referring to the Osborne mark as an “alleged” mark or by requesting certain enumerated documents
that are “sufficient to show” specific information. Nor does the use of “alleged” mark infuse bias
warranting corrective action. Although Exhibit A referred to “alleged mark,” it also noted the
Osborne mark was “identified in U.S. Registration No. 4,941,027.”
IT IS THEREFORE ORDERED that Osborne’s Notice to the Court & Request for
Corrective Action by the Court Concerning a Subpoena from Applicant Federal Rules of Civil
Procedure Rule 45(a)(2) (ECF No. 2) is DENIED.
UNITED STATES DISTRICT JUDGE
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?