CNG Financial Corporation v. Google Inc

Filing 41

RESPONSE to Motion re 38 MOTION to Compel The Production of Documents filed by Plaintiff CNG Financial Corporation, Counter Defendant CNG Financial Corporation. (Attachments: # 1 Exhibit A - CNG's website home page# 2 Exhibit B - sample search page generated by a Google search# 3 Exhibit C - CNG's Financial Corporation's Response to the Motion by Google to Compel the Production of Documents# 4 Declaration of Barry D. Hunter in Support of CNG Financial Corporation's Response to the Motion by Google to Compel the Production of Documents# 5 December 1, 2006 correspondence from Barry D. Hunter to Eugene M. Paige, Esq.)(Hunter, Barry)

CNG Financial Corporation v. Google Inc

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO WESTERN DIVISION

CNG FINANCIAL CORPORATION
Case No. 1 :06-cv-040

Plaintiff/Counterc1aimDefendant,
vs.

Chief Judge Sandra S. Beckwith Magistrate Timothy S. Black

GOOGLE INC.
Defendant/Counterc1aim- :

Plaintiff.

CNG'S FINANCIAL CORPORA TION' S RESPONSE TO THE MOTION BY GOOGLE TO COMPEL THE PRODUCTION OF DOCUMENTS

CNG Financial Corporation ("CNG") has sued Google for trademark infringement and
related causes of action. Google is selling, over CNG's objections, CNG's federally registered

"Check 'N Go" trademark as a keyword search term to advertisers on Google's search engine

website. As a result of this practice, internet users seeking to reach CNG's website by typing

"Check 'N Go" into Google's search window are presented with "sponsored links" to the
web

sites of numerous of CNG's competitors that have paid Google to appear on the search

results page triggered by the "Check 'N Go" search. i

As a remedy for this unauthorized diversion of CNG's business, CNG seeks to: (1)
enjoin Google's further sale of CNG's Check 'N Go trademark and (2) require disgorgement of

the profits earned by Google from its sale of same. Because of the diffculty of proving the
quantum of lost sales (here, lost loans), and because the principle motive behind this case has

1 A copy of CNG's website home page is attached as Exlbit A. A copy of a sample search page generated by a
Google search of the term Check 'N Go is attached as Exlbit B. Copies of the websites to which the "sponsored

links" appearing in Exhibit B are linked, none of which is sponsored or otherwise authorized by CNG, are attached
as Exhibit C.

Dockets.Justia.com

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always been to stop Google's continued infringement and misappropriation ofCNG's trademark,

CNG has decided to forego its claim for compensatory damages. Yet, despite the fact that CNG
is not suing Google for its lost profits or for any other measure of compensatory damage, Google

still claims that it needs CNG to produce: (1) all ofCNG's quarterly and annual audit financial

statements and annual reports from January 1, 2001 to the present; (2) all corresponding notes
and schedules; (3) all documents demonstrating CNG's monthly gross revenues from products
and services sold under the Check 'N Go marks from the first use of those marks to the present;

and (4) all documents demonstrating CNG's monthly profits and/or losses from products and
services sold under the Check 'N Go marks from the first use of those marks to the present. 2

Google has failed to establish the relevance of its extensive requests for CNG's financial

documents and, despite a generally liberal granting of discovery requests, courts have often
denied discovery of sensitive financial information where such discovery has no relevance to the
pending claims. See, e.g., Medtronic Sofamor Danek, Inc. v. Michelson, No. 01-2373-M1V,

2003 WL 21946594, at *2 (W.D. Tenn. July 23, 2003) (stating that "unnecessary disclosure of
financial information should be avoided"). Google's burdensome discovery requests in this case,

seeking to require CNG to produce not only its audited financial statements but also each and
every accounting document in CNG's possession relating to each and every item of revenue and
expense recognized by CNG in its business operations, make no sense in the context of this case
and should be denied.

2 CNG has produced, both before and afer Google's filing of its Motion to Compel, the financial information
pertining to Avante TelAvance, Inc., CNG's operating subsidiar that rus its internet lending operation. (Hunter
Decl., irir 2, 5) In addition, undersigned counsel telephoned Google's counsel to attempt to get Google to place some limit on its request for additional financial documents; however, Google's counsel refused. (Id., ir 6.)

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PROCEDURAL BACKGROUND
The merits of

this case are extensively set forth in the papers addressing Google's Motion

for Judgment on the Pleadings, which this Court denied by its November 21, 2006, Order. As
such, CNG will not respond to the one sided and self-servicing characterization of

the "facts" that

Google recites as a prelude to its discovery motion.3
On the other hand, Google's blatant mischaracterization of

the parties' efforts to resolve

their discovery differences does warrant a response. Back on June 26, 2006, five full months

before Google first communicated any concern with CNG's objection to producing its
consolidated financial information, CNG plainly asserted that objection. Indeed in its response to
Google's discovery requests CNG agreed to produce its documents reflecting the financial results

of its online subsidiary (because it was at the time reserving its right to assert a lost profits claim
based on the internet loans lost by that subsidiary), but it objected to producing any further

financial information-including the consolidated financial information that Google now seeks.
(Google's Memorandum, pp. 4-5; see also Hunter Dec1, c.3.)
After six months of

apparent acquiescence to CNG's position in this regard, on November

27, 2006, Google's counsel suddenly complained about perceived deficiencies in CNG's initial
financial production and abruptly demanded immediate production of the consolidated financial
information to which CNG had long objected.4 Rather than discussing this position with CNG's

counsel, who on November 27 and for days thereafter was in their presence in California taking

Google's witnesses depositions, they instead faxed their November 27 discovery demands to

the beneficial information it claims to provide to its internet users searching for payday lenders though the use of non-trademarked search terms such as "cash advance", "payday loan", and the like. And it is notable that other major search engines, such as Yahoo, are able to service their internet users without sellng competitor's trademarks to their advertsing customers. 4 The financial information about which Google first complains in its November 27 correspondence was already
produced in early June, 2006, along with CNG's initial Rule 26(a) disclosures. (Hunter Decl. ir3.)

3 Plainly, Google could provide all of

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CNG's counsel's Kentucky offces-where they knew he was not present. (Hunter Decl., iJ3.)

On December 6, upon his return from California, CNG's counsel undertook to promptly provide

additional financial information concerning the internet loans, and he reiterated his objection to

Google's requests for additional consolidated financial information. (Exhibit K to Google's
counsel's Declaration; see also Hunter Dec1, iJ4.) In addition, CNG's counsel attempted to reach

a compromise, based on his withdrawing of CNG's claim for lost profits, to limit the scope of
Google's requests for additional financiaL. This attempt was flatly rejected by Google's counseL.

(Hunter Decl. iJ6.)

According to Google's counsel's Declaration, "(CNG indicated that it) planned to wait

until the Friday before the scheduled depositions to produce such documents." In fact, what
CNG's counsel told Google's counsel was that, unlike Google, who produced to CNG's counsel

thousands of pages of critically relevant documents on the last business day preceding CNG's
depositions of Google, CNG would not reciprocally engage in such discovery abuse. (Hunter

Dec1, iJ4.)s Indeed, as promised, CNG has already produced its supplementation of the

discovery which Google prematurely nit-picked in its initial moving papers, thereby rendering
moot much of

the petty criticisms contained in that Motion. (Hunter Dec1, iJ5.)

In addition, apart from the governing legal principles that, as demonstrated below, render

CNG's profits wholly irrelevant to the equitable relief CNG seeks in this case, simple common
sense demonstrates the speciousness of Google's claims. According to the public policy

argument advanced by Google in its moving papers, "CNG may actually lose money on the
services it seeks to provide over the internet... (or it may)... make so minimal an amount from
5 CNG took Google's depositions on the Monday, Tuesday, and Wednesday following the Thansgiving holidays.

At noon on the Wednesday preceding Thansgiving, Google delivered a CD containing thousands of pages of
documents reflecting that, contrar to what Google had sworn in its interrogatories answers and of obvious relevance to CNG's claim for contributory infingement, Google had encouraged the payday lending companies appearng on its "Check 'N Go" search page to purchase "Check N Go" as a keyword search term from Google.Id.

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transactions coming through its website that it has not really suffered any substantial

losses as a

result of Google's alleged actions... .,,6 However, in making this argument Google wrongly

assumes that the only business CNG seeks to promote over the internet is the online lending
operation run out of its wholly-owned subsidiary, Avante TelAvance, Inc. (which is a new,
developing line of

CNG's business).

Google's professed reason for wanting to review all documents in CNG's possession
pertaining to any and all items of its financial results is to determine whether all of CNG's

overhead and consolidated expenses have been properly assigned to CNG's online subsidiary's

normal course financial statements, which have been produced by CNG and which show a
substantial profit. However even if, as posited by Google, these ordinary course financial

statements have overstated the profitability of CNG' s online lending operation, such a fact would
not be probative of anything in this case. This is so because, in addition to the online lending

operations, CNG's website also advertises and promotes the brick and mortar operations (1400+

stores) that serve as the bedrock of CNG's financial enterprise. (Exhibit A) And while
substantial criticism has been leveled against CNG's operating subsidiaries' payday lending

operations (as it has been leveled against all participants in that industry), CNG is not aware that
anyone has ever questioned the profitability of those operations.

Google does not suggest that it needs to see CNG's financials to determine the

profitability of CNG's overall operations-all of which are promoted in the CNG website from
which Google has diverted away traffc. Thus, even if the profitability of those operations were
relevant in this case (which as demonstrated below they are not), and even if Google could

6 Google claims that if CNG's competitors are wiling to pay more money to Google then CNG loses as a result of
Google's infringement, then that is a basis for denying injunctive relief. This extraordinar assertion, that an

infringer should be permitted to continue to infringe another's trademark if it derives sufficient profit from the
wrongdoing is, not surrisingly, directly contravened by the governing legal authorities discussed below.

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represent to this Court that it doubts the profitability of CNG' s overall operations (which plainly

it cannot), Google's avowed concerns about whether CNG is making money from its payday
lending operations could be disabused by a simple review of CNG's audited income statement.

Google would still have no need for the further extensive financial disclosures that it has
stubbornly demanded in this case-a case where CNG zs not asserting any clazm for lost profits.

ARGUMENT

A. CNG's FinancIals Are Not Relevant to CNG's Request for an Injunction.
CNG is not required to show any actual economic harm in order for this Court to enjoin
Google from continuing to infringe on CNG's trademark. Thus, CNG's financial statements are
not relevant to its request for an injunction, and Google's motion should be denied.

When seeking an injunction, a plaintiff must demonstrate irreparable injury and no
adequate remedy at law, and the court must balance the hardship to the plaintiff if the relief is not

granted, that to the defendant if granted, and the public's interest in the issuance of the
injunction. See Audz AG v. D 'Amato, No. 05-2359, 2006 U.S. App. LEXIS 29127, at *35 (6th

Cir. Nov. 27, 2006). Google attempts to present this balancing as a purely economic analysis in other words, which party stands to lose more money. However, it is well-established in this

Circuit that once the owner of a mark has established a likelihood of or actual confusion, harm or
damage is presumed for purposes of entering an injunction. See Abercrombze & Fitch v. Fashzon

Shops of Ky., Inc., 363 F. Supp. 2d 952, 966 (S.D. Ohio 2005) (granting plaintiffs motion for a
preliminary injunction after finding that "(i)rreparable injury is presumed as a result of a finding

of a likelihood of confusion for purposes of the Lanham Act"); OmnzAmerzca v. St. Gold
Records, Ltd, 916 F. Supp 672, 680 (N.D. Ohio 1996) (entering a preliminary injunction and

stating "if the court agrees with OmniAmerica that it can show... consumer confusion, the Court

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may presume irreparable injury"); Cent. Benefits Mut. Ins. Co. v. Blue Cross & Blue Shield
Assoc., 711 F. Supp. 1423, 1434 (S.D. Ohio 1989) ("Trademark infringement by nature is

generally irreparable and the showing of a high probability of confusion almost invariably gives

rise to irreparable harm."). Thus, although this Court should balance the equities before issuing
an injunction, in the trademark infringement context this analysis does not include a comparison
of economic impact. Google's failure to cite a case stating otherwise is telling.

Despite Google's repeated insinuations that CNG decided to forego its claim for
compensatory damages because of some grand scheme to conceal its finances, in actuality courts,

including those in the Sixth Circuit, have long-recognized the diffculty of proving such
damages. See Vining Indus., Inc. v. ME. Walton, Inc., Case No. C-3-96-314, 1997 US. Dist.
LEXIS 23763, at *29-*30 (S.D. Ohio March 20, 1997) (finding that "(t)he Plaintiff will suffer
irreparable harm if the Defendant is not enjoined, because it will be diffcult (if not impossible)

for the Plaintiff to prove damages"). Because of this diffculty of proving damages and the
inevitable "impairment of intangible values" that occurs when a party's trademark is infringed,
see Vining Indus., 1997 US. Dist. LEXIS 23763, at *28-*29 (noting that "a finding of

irreparable

harm will normally flow from a finding of likelihood of confusion" because of "the diffculty in
proving damages and from the impairment of intangible values"), the presumption of harm arises

regardless of any showing of economic loss. Thus, CNG does not have to show any economic
harm to obtain an injunction. See, e.g., Intl Kennel Club of

Chicago, Inc. v. Mighty Star, Inc.,

846 F.2d 1079, 1091 (7th Cir. 1988) (balance of the equities favored the plaintiff, even though
the plaintiff failed to establish loss of business or profits as a result of the defendant's

infringement, because "the owner of a mark is damaged by a later use of a similar mark which
placers) the owner's reputation beyond its control, though no loss in business is shown.")

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(citation omitted). Because CNG need not make any showing of economic loss to obtain an
injunction, Google's motion to compel production of CNG's financial documents should be
denied as irrelevant to any of CNG' s claims or defenses.

B. CNG's FinancIals Are Not Relevant to CNG's Request for Disgorgement of
Profits.
Preliminarily, even if Google were correct in its assertion that a plaintiff needs to prove
that it lost sales to an infringing defendant in order to recover a disgorgement of the defendant's

profits, Google would still not be entitled to discovery into CNG's financials, in a case where

CNG is not seeking to prove lost profits. Instead, if Google is correct here, it only means that

CNG cannot require Google to disgorge its profits from its sale of CNG's trademark-not that
CNG's financials are relevant to this case. In any event, Google is not correct. Google can be

required to disgorge the profits it has earned by its wrongful sale of CNG's "check n go"
trademark without any showing that CNG has lost profits as a result of Google's willful
infringement.

Google's only cited case for its argument that CNG's financials are relevant to its request
for disgorgement is one out of the District of

HawaiI. See Sugai Prods., Inc. v. Kona Kai Farms,

Inc., No. 97-00043 SPK, 1997 US. Dist. LEXIS 21503 (D. Haw. Nov. 19, 1997). In Sugai
Products, the court discussed the plaintiffs' disgorgement claim in the context of deciding

whether to grant class certification. The court thus made its statement concerning the need to

evaluate specific injuries and damages for each plaintiff as part of its decision to deny such
certification in light of too many individualized issues. Id at *44-*47. This case is clearly

distinguishable in light of the fact that the court was not directly speaking to a request for
disgorgement, and because the court was discussing Ninth Circuit law. Id at *45 ("Under Ninth

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Circuit law, plaintiffs may seek disgorgement where... ") (emphasis added). In fact, even under
Ninth Circuit law, where the defendant infringer is not a direct competitor of the plaintiff,

disgorgement is appropriate "to prevent unjust enrichment," not just as compensation for lost

profits. Id
Courts in this Circuit have not conditioned disgorgement of profits of a willful infringer

on a showing of economic harm to the party so infringed. The only generally-stated standard is
that "(a)n element of

bad faith or willfulness is usually necessary." Frisch's Rests., Inc. v. Elby's

Big Boy, 849 F.2d 1012 (6th Cir. 1988)? In fact, the Sixth Circuit has cited with approval cases

holding that the owner of a mark need not prove the infringement caused him to lose any sales.

See Wynn Oil Co. v. Am. Way Servo Corp., 943 F.2d 595, 606 (6th Cir. 1991). Any risk of a
windfall or speculative award falls on the infringer, because "both common sense and the statute
suggest that the burden of apportioning the profits should be placed on the defendants." Id 8
This Court has further recognized that "an accounting under Section 35(a) of

the Lanham

Act is appropriate under three alternative situations: (1) if the plaintiff sustained damage from
the infringement, (2) if the infringer is unjustly enriched, and (3) if necessary to deter a willful

infringer from doing so again." Frisch's Rest., Inc. V. Elby's Big Boy, 661 F. Supp. 971, 989

(S.D. Ohio 1987); see also Wynn Oil, 943 F.2d at 607 ("Profits are awarded under different
rationales including unjust enrichment, deterrence, and compensation.") (citation omitted). Thus,
Google's assertion that, absent a showing of economic harm, "plainly CNG would not be entitled

to receive a windfall award of whatever monies Google has obtained," is clearly not the law in
7 Even this requirement is questionable. See J-Rich Clinic, Inc. V. Cosmedic Concepts, Inc., No. 02-CV-74324-DT,

2006 WL 2473478, at *3 (E.D. Mich. Aug. 25, 2006) (in light of 1999 amendments to the Lanhan Act, certifying

for interlocutory appeal the question, "Is a finding of wilfulness or bad faith a mandatory prerequisite to an
8 Moreover, Balance Dynamics V. Schmitt Industries, 204 F.3d 683, 695 n.6 (6th Cir. 2000), makes it clear that a
accounting for profits under § 35(a) of

the Lanan Act?").

plaintiff can recover a defendant's profits, without any showing that it has lost profits, where it can show that the defendant gained its profits as a result of its wrongfl conduct. CNG can easily make such a showing in ths case, where CNG's competitors are paying Google to use CNG's trademark on Google's AdWords Program.

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this Circuit. Preventing unjust enrichment and deterrence provide two other situations in which
CNG could recover. Because CNG need not show lost profits or other economic harm in order to
obtain disgorgement of Google' s profits, Google's request for CNG's financials is irrelevant, and
its motion should be denied.

C. CNG's Claim For Punitive Damages Does Not Make CNG's FinancIals
Discoverable.

Here, again, if CNG is correct that it can recover punitive damages without proving the

quantum of damage it has suffered from Google's wrongful conduct in this case, then CNG's
financials are irrelevant. Alternatively, if Google is correct that proof of compensatory damage is

the sine qua non of a punitive damages claim, then CNG cannot recover punitives in this case,

where it is not seeking to prove its compensatory damages. Either way, CNG is still not
requesting any lost profits or other compensatory damages, and discovery into CNG's financials
is thus not warranted.

CONCLUSION

In sum, for all of the foregoing reasons, Google's Rule 37 Motion should be denied.
Alternatively, if this Court determines that Google is entitled to confirm that CNG is making
money from the activities it promotes on its website, i.e. its entire payday lending operation, then
the Court should limit Google's discovery to CNG's audited financial statements.
Respectfully submitted,

/s/ Barry D. Hunter Ann Gallagher Robinson Frost Brown Todd, LLC 2200 PNC Center 201 East Fifth Street
Cincinnati,OH 45202-4182
Tel. [phone]
Fax: [phone]

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Barry D. Hunter Medrith Lee Norman Frost Brown Todd LLC 250 West Main Street, Suite 2700 Lexington, Kentucky 40507 [phone] (859) 231-001 I-fax
Attorneys for CNG FINANCIAL CORPORATION

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CERTIFICA TE OF SERVICE

I certify that a copy of the foregoing was electronically fied with the Clerk of the Courts
using the CM/CF, system which will send notification of such fiing to the following, this 8th
day of January, 2007:

Kenneth F. Seibel, Esq. Jacobs, Kleinman, Seibel & McNally 2300 Kroger Building 1014 Vine Street Cincinnati, OH 45202

Michael H. Page, Esq. Klaus H. Hamm, Esq. Keker & Van Nest LLP 710 Sansome Street San Francisco, CA 94107

/s/ Barry D. Hunter Attorney for Plaintiff/Counter Defendant

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