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

vs. Hon. Marianne O. Battani

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

enrico.schaefer@traverselegal.com

brianhall@traverselegal.com

Lead Attorneys for Plaintiff

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Attorneys for Plaintiff

William A. Delgado (pro hac vice)

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)

Benjamin K. Steffans (P69712)

BUTZEL LONG, P.C.

150 West Jefferson, Suite 100

Detroit, MI 48226

(313) 225-7000

stasevich@butzel.com

steffans@butzel.com

Local Counsel for Defendants

______________________________________________________________________

NAVIGATION CATALYST SYSTEMS, INC.’S OPPOSITION TO MOTION

COMPELLING FURTHER INITIAL DISCLOSURES AND FOR SANCTIONS

Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al Doc. 3

Dockets.Justia.com
Page 2 of 6

MEMORANDUM OF POINTS AND AUTHORITIES

Introduction

The Federal Rules require that a party initially disclose: (i) the names and locations of

witnesses that the party may use to support its claims and defenses and (ii) categories of

documents that the party may use to support its claims and defenses. That is precisely the type

of disclosure that Navigation Catalyst Systems, Inc. (“NCS”) has provided. No violation of

either the letter or the spirit of the Federal Rules has been committed, no motion was necessary,

and, certainly, no sanctions against NCS should be awarded.

Statement of Facts

Plaintiff has filed this trademark infringement lawsuit alleging that Defendant NCS (and

other related companies) purposefully registered and monetized domain names that were similar

to Plaintiff’s trademarks with a bad-faith intent to profit from those domain names, in violation

of the Lanham Act and, particularly, the Anti-Cybersquatting Protection Act (“ACPA”) (15

U.S.C. § 1125(d)). To understand NCS’s defense to this allegation, it is important that one first

understand what NCS is and, more importantly, what it is not.

As NCS explained in its Motion to Dismiss, NCS is a company that registered Internet

domain namesin bulk through a computer program that sought out generic and descriptive

phrases for registration such as www.partysupplies.org. It then submits those domain names to a

domain name monetization platform offered by its parent company, Firstlook, and receives a

share of the revenue that is generated through the monetization of the domain name. That is the

extent of its business. NCS does not do any marketing and, thus, has no advertisements to

produce. NCS does not sell a product and, thus, has no samples or inventory lists to produce.
Page 3 of 6

NCS has no clients and has no accounts receivable reports to produce. NCS has no vendors and,

therefore, no accounts payable reports to produce. For those same reasons, it does not have

correspondence with either clients or vendors.

Argument

Fed. R. Civ. P. 26(a)(1)(A) requires that a party initially disclose: (i) the names and

locations of witnesses that the party may use to support its claims and defenses and (ii)

categories of documents that the party may use to support its claims and defenses. NCS has done

precisely that by identifying Seth Jacoby, the President of Firstlook, NCS’s parent company. At

trial, Mr. Jacoby will explain how the NCS automated registration system worked; to wit, that

NCS used a computer program that attempted to register generic or descriptive phrases domain

names and that it did not target trademarks. NCS will also introduce documents related to the

automated registration system and documents evidencing the paucity of revenues it received

from the domain names at issue, which is why both of those categories of documents were

disclosed.1 Copies of the documents were not produced because both of these categories of

documents comprise trade secrets, and there is no protective order in this case though the parties

have already agreed to the need for one.2Currently, NCS has no other percipient witness, and

the company has no other documents to produce to support its defenses.

It is worth bearing in mind that NCS is a defendant whose key defense is that it did not

have a “bad-faith intent to profit” as required by the ACPA. Neither a flood of witnesses or

1

Plaintiff’s motion either negligently or purposefully misleads the Court into believing that NCS

disclosed two documents as opposed to two categories of documents. Suffice it to say, NCS

identified categories of documents just as Plaintiff identified categories of documents.

2

Presumably, for the same reason, Plaintiff did not produce any documents either but simply

identified categories of documents in its Initial Disclosures.
Page 4 of 6

documents is necessary to establish that defense (especially in a case involving an automated

registration system where such witnesses and documents do not even exist). Moreover,

comparing the parties’ Initial Disclosures is an irrelevant exercise. Plaintiff, by virtue of being

the plaintiff, has the burdens of proof and persuasion on its numerous claims. As a result, it

necessarily must produce witnesses and documents to affirmatively establish its case. NCS has

no such burdens. It can simply point to a gap in the Plaintiff’s case-in-chief and argue that it has

not met the prima facie elements of the claims asserted. NCS would not need a witness or

document for that.

In light of the foregoing, sanctions—either monetary or evidentiary—would be wholly

inappropriate. NCS has identified the witnesses and categories of documents it may use to

supports its defenses; no other identification is needed. McCormick v. Brzezinski, 2008 WL

4371842 *1 (E.D. Mich. 2008) (“The 2000 advisory committee’s note also emphasizes that ‘[a]

party is no longer obligated to disclose witnesses or documents, whether favorable or

unfavorable, that it does not intend to use. The obligation to disclose information the party may

use connects directly to the exclusion sanction of Rule 37(c)(1).’”) citing Fed. R. Civ. P. 26(a)

advisory committee’s note. Once a protective order is entered, the parties can produce their

documents. And, of course, NCS will produce Mr. Jacoby for deposition prior to trial. To the

extent something unanticipated happens (e.g., a third party percipient witness with useful

testimony is later discovered), NCS will supplement its initial disclosures accordingly, as

required by Fed. R. Civ. P. 26(e). However, NCS is unaware of a single case that stands for the

proposition that sanctions are warranted simply because NCS’s anticipated presentation of
Page 5 of 6

evidence at trial does not comport with plaintiff’s trial strategy. Plaintiff certainly does not cite

any such case.

Conclusion

NCS timely produced its Initial Disclosures. In those Initial Disclosures, it identified its

witness and the categories of documents it intends to use to support its defenses. In short, NCS

is in complete compliance with Fed. R. Civ. P. 26. If anyone should be sanctioned, it should be

Plaintiff, for bringing a wholly meritless motion and forcing NCS to spend attorney time to

respond to same.

Dated this 25th day of January, 2010.

/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

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants
Page 6 of 6

CERTIFICATE OF SERVICE

I hereby certify that on January 25, 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

enrico.schaefer@traverselegal.com

brianhall@traverselegal.com

Lead Attorneys for Plaintiff

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Attorneys for Plaintiff

Nicholas J. Stasevich (P41896)

Benjamin K. Steffans (P69712)

BUTZEL LONG, P.C.

150 West Jefferson, Suite 100

Detroit, MI 48226

(313) 225-7000

stasevich@butzel.com

steffans@butzel.com

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

(213) 955-9240

williamdelgado@willenken.com

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

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants