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 MOTION FOR PROTECTIVE ORDER
Page 2 of 17

MOTION FOR PROTECTIVE ORDER

TO THIS HONORABLE COURT, ALL PARTIES, AND THEIR ATTORNEYS OF RECORD:

PLEASE TAKE NOTICE THAT, pursuant to Fed. R. Civ. P. 26(c), Defendant

Navigation Catalyst Systems, Inc. hereby moves this Court for a protective order prohibiting

Plaintiff The Weather Underground, Inc. from sending out certain subpoenas to third party

witnesses. This Motion is based on the facts and arguments set forth in the accompanying

Memorandum of Points and Authorities; to wit, that the subpoenas issued by Plaintiff to third

parties (and subpoenas to be issued) are overbroad, seek irrelevant documents, and are intended

solely to embarrass and harass NCS.

This Motion is supported by the attached Memorandum of Points and Authorities, the

Declaration of William A. Delgado filed concurrently herewith, the case file, and the arguments

of counsel that the Court would entertain at a hearing on this motion.

On February 3, 2010, there was a conference between William A. Delgado, counsel for

NCS, and Enrico Schaefer, counsel for Plaintiff, in which NCS explained the nature of the

motion, its legal basis and requested, but did not obtain, concurrence in the relief sought.

RESPECTFULLY SUBMITTED this 8th day of February, 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 3 of 17

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

______________________________________________________________________

MEMORANDUM OF POINTS AND AUTHORITIES
Page 4 of 17

Statement of the Issue Presented

Whether Plaintiff should be permitted to issue subpoenas to third parties unrelated to this

litigation where those subpoenas: (i) are overbroad, (ii) seek irrelevant documents, (iii) seek

documents in Defendant’s possession, and (iv) are intended to embarrass and harass Defendant?

Defendant Navigation Catalyst Systems, Inc. (“NCS”) respectfully submits that the answer is

“no” and asks this Court to issue an order protecting NCS from such subpoenas.
Page 5 of 17

Controlling Authority

The controlling authority for this motion is Fed. R. Civ. P. 26(c) which permits a court to

grant a protective order.
Page 6 of 17

Introduction

This is a lawsuit for trademark infringement. At issue in this motion are six nearlyidentical subpoenas issued to third parties. These subpoenas seek documents related to the third

parties’ trademarks, the third parties’ knowledge of NCS, the third parties’ communications with

NCS, etc. Put simply, the documents are silent as to the facts of this case and whether NCS has

violated this particular Plaintiff’s trademarks.

To justify these overbroad and irrelevant subpoenas, Plaintiff relies on a statutory

provision within the trademark statute. As explained below, however, even if that statutory

provision were applicable in this case, the subpoenas, as drafted, go far beyond what the statute

envisions.

Rather, the true purpose of these subpoenas is self-evident: they are suggestions to these

third parties that NCS has also violated their trademarks and invitations to file suit against NCS

as well. By maximizing the number of lawsuits against NCS, Plaintiff can deplete NCS’s limited

resources, thereby depriving it of the opportunity to defend itself in this case.

Because these subpoenas are overbroad, irrelevant, and harassing, NCS respectfully

requests that the Court issue an order protecting NCS from the issued subpoenas and subpoenas

contemplated by the Plaintiff that are similar in nature.

//

//
Page 7 of 17

Statement of Facts

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

other companies1) 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)).

At the scheduling conference in this matter on January 11, 2010, Plaintiff took the

position that extensive 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).2 Declaration of William A. Delgado, dated February 8, 2010 (“Delgado

Decl.”) at ¶ 2. Defendant 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.

Id. at ¶ 3.

Notwithstanding Defendant’s position as to the non-applicability of the Statutory Factors,

on January 14, 2010, Defendant’s counsel reached out to Plaintiff’s counsel 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)

1

These other companies—FirstLook, Basic Fusion, and Connexus Corporation—have all been

dismissed from this case because there is no personal jurisdiction over them in this judicial

district.

2

For ease of reference, NCS will refer to the factors set forth in 15 U.S.C. § 1125(d)(1)(B) as the

“Statutory Factors” and will refer to the particular factor at issue here (15 U.S.C. §

1125(d)(1)(B)(i)(VIII)) as “Statutory Factor 8.”
Page 8 of 17

without having Plaintiff send out a set of burdensome subpoenas to third parties. Id. at ¶ 4.

Defendant’s counsel received no reply whatsoever. Id.

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

Subpoena for six different companies: Facebook, Yahoo! (for the mark Flickr), Netflix, Google

(for the mark Orkut), Wikimedia Foundation (for the mark Wikipedia), and YouTube. Id. at ¶ 5.

Each of the subpoenas is essentially the same. It identifies a domain name(s) that Plaintiff

defines as a “Typo Domain” and then enumerates six (6) requests for documents:

1. Any and all Documents which reflect or establish trademark registrations related to

<third party’s domain name> and/or <third party’s trademark> and/or variations

thereof.

2. Any and all Documents reflecting permission or license granted by You to NCS,

which would (a) allow them to register/own the Typo Domains or (b) display paid

advertisements on the web pages displayed on the Typo Domains.

3. Any and all Documents indicating whether You were aware of NCS’s registration of

the Typo Domains.

4. Any and all notice, cease and desist and/or threat letters sent by You to NCS

regarding assertions or allegations of trademark rights, trademark infringement,

trademark dilution or cybersquatting concerning the Typo Domains or any other

domains registered by NCS.

5. Any and all Documents reflecting communication between you and NCS regarding

any domain name or trademark issue.
Page 9 of 17

6. Any and all lawsuits, arbitrations or other adversarial proceedings brought by You

against NCS either related or unrelated to the Typo Domains.

After receiving the Notices of Intent to Serve Subpoena, Defendant’s counsel informed Plaintiff

that it would bring this motion and met and conferred regarding same. Id. at ¶ 6.

Argument

I. NCS MERITS AN ORDER PROTECTING IT FROM THE SUBPOENAS ISSUED

BY PLAINTIFF.

A. NCS Can Seek a Protective Order Against Overbroad, Irrelevant, and

Harassing Subpoenas.

“A party...may move for a protective order in the court where the action is pending...

The court may, for good cause, issue an order to protect a party or person from annoyance,

embarrassment, oppression, or undue burden or expense, including one or more of the

following:...(D) forbidding inquiry into certain matters, or limiting the scope of disclosure or

discovery to certain matters.” Fed. R. Civ. P. 26(c)(1).

“A party can move for a protective order in regard to a subpoena issued to a non-party if

it believes its own interests are jeopardized by discovery sought from a third party and has

standing under Rule 26(c) to seek a protective order regarding subpoenas issued to non-parties

which seek irrelevant information.” In re Remec, Inc. Securities Lit., 2008 WL 2282647 *1

(S.D. Cal.)3; see also In re: Ashworth, Inc. Securities Lit., 2002 WL 33009225 *1 (S.D. Cal.)

(finding that defendants can seek “protective order against plaintiffs’ attempts to obtain

overbroad and irrelevant discovery from third parties based on their status as parties”); Auto3 Unpublished opinions have been attached as exhibits to this document.
Page 10 of 17

Owners Ins. Co. v. Southeast Floating Docks, Inc., 231 F.R.D. 426, 429 (M.D. Fla. 2005) (“As

parties, Defendants clearly have standing to move for a protective order if the subpoenas seek

irrelevant information.”).

The scope of discovery is governed by Rule 26 which allows “discovery regarding any

matter, not privileged, which is relevant to the subject matter of the litigation.” Fed. R. Civ. P.

26(b)(1). However, “[d]iscovery of matter ‘not reasonably calculated to lead to discovery of

admissible evidence’ is not within the scope of Rule 26(b)(1).” Oppenheimer Fund v. Sanders,

437 U.S. 340, 351-52, 98 S. Ct. 2380, 57 L. Ed. 2d 253 (1978). And even as to those matters

which are relevant, “[d]iscovery requests that are otherwise reasonable may also be limited for

the following reasons: (i) the discovery sought is unreasonably cumulative or duplicative, or is

obtainable from some other source that is more convenient, less burdensome, or less expensive.”

Auto-Owners, 231 F.R.D. at 430.

B. The Issued Subpoenas Are Overbroad and Irrelevant and Seek Information

More Easily Obtained Elsewhere.

Since Plaintiff’s desire for third-party discovery is premised on the Statutory Factors of

the ACPA, it is important to understand what Statutory Factor 8 actually says:

In determining whether a person has a bad faith intent described under

subparagraph (A), a court may consider factors such as, but not limited

to— (viii) the person’s registration or acquisition of multiple domain

names which the person knows are identical or confusingly similar to

marks of others that are distinctive at the time of registration of such

domain names, or dilutive of famous marks of others that are famous at
Page 11 of 17

the time of registration of such domain names, without regard to the goods

or services of the parties.

15 U.S.C. § 1125(d)(1)(B)(viii). As the statute makes clear, this is one factor that the Court

may—but is not required to—take into account in determining “bad faith” under the ACPA.

Although Defendant intends to argue that this factor is inapplicable in this case, for purposes of

this motion, Defendant will assume that this factor is applicable. Even so, Statutory Factor 8

only requires two things: (i) that NCS have registered multiple domain names and (ii) that these

domain names are identical or confusingly similar to a distinctive or famous mark of another.

Neither of these elements requires Plaintiff to send a subpoena to a third party. Plaintiff can

obtain information as to the domain names registered by NCS from NCS. And, the owner of a

registered mark is a matter of public record obtainable from the United States Patent and

Trademark Office.

Not surprisingly, therefore, the document requests in the issued subpoenas are

objectionable for a variety of reasons. Before examining each document request in turn,

however, it is important to note that for purposes of the subpoena, Plaintiff defined “NCS” to

include NCS and other companies (Connexus, Basic Fusion, and Firstlook) which have been

dismissed from this case. That fact alone creates a set of document requests that are, on their

face, overbroad and irrelevant, and merely intended to harass.

1. Document Request No. 1.

Document Request No. 1 in the issued subpoenas calls for the production of “[a]ny and

all Documents which reflect or establish trademark registrations related to <third party’s domain

name> and/or <third party’s trademark> and/or variations thereof.”
Page 12 of 17

This request is objectionable for various reasons. First, it is overbroad and irrelevant.

Plaintiff could have simply asked these third parties for documents evidencing the trademarks in

which they have rights. Instead, it has asked for “any and all” documents which reflect or

establish trademark registrations. Such a request could needlessly require the production of

irrelevant numerous documents. Second, the United States Patent and Trademark Office

maintains a public database of trademarks that have been applied for or registered, and it can be

easily searched from an internet browser. Delgado Decl. at ¶ 7. There is no need to subpoena a

third party for information that is publicly available and easily obtained. Third, the parties could

have easily worked out a stipulation as to whether a third party owns a particular mark or domain

name, as NCS suggested to Plaintiff. As stated, above, that information is public record and not

subject to dispute.

2. Document Request No. 2.

Document Request No. 2 in the issued subpoenas calls for the production of “[a]ny and

all Documents reflecting permission or license granted by You to NCS, which would (a) allow

them to register/own the Typo Domains or (b) display paid advertisements on the web pages

displayed on the Typo Domains.”

The problem with this request is obvious. Since it seeks an agreement between the third

party and NCS, NCS (a party to the lawsuit) would have that agreement. Indeed, Plaintiff has

already asked NCS for such documents in Plaintiff’s First Set of Requests for Production.

Delgado Decl. at ¶ 8. Clearly, then, this request should be prohibited because it is “unreasonably

cumulative or duplicative, or is obtainable from some other source that is more convenient, less

burdensome, or less expensive.” Auto-Owners, 231 F.R.D. at 430.
Page 13 of 17

3. Document Request No. 3.

Document Request No. 3 in the issued subpoenas calls for the production of “[a]ny and

all Documents indicating whether You were aware of NCS’s registration of the Typo Domains.”

This request is patently irrelevant. Statutory Factor 8 does not turn on whether the third party

knew of NCS’s registration of domain names. A third party’s knowledge (or lack thereof) of

these registrations is not at issue in this lawsuit, even when one considers Statutory Factor 8.

4. Document Request No. 4.

Document Request No. 4 in the issued subpoenas calls for the production of “[a]ny and

all notice, cease and desist and/or threat letters sent by You to NCS regarding assertions or

allegations of trademark rights, trademark infringement, trademark dilution or cybersquatting

concerning the Typo Domains or any other domains registered by NCS.”

This request is objectionable for various reasons. First, this request is irrelevant.

Statutory Factor 8 does not turn on whether the third party sent a letter or not, whether NCS

received the letter or not, or how, if it did receive a letter, NCS responded to that letter. Second,

to the extent that the request calls for a letter sent to NCS, Plaintiff can ask NCS for such a letter.

Lastly, to the extent that the request calls for letters sent to one of the other companies captured

by the overbroad definition of “NCS” (i.e., Connexus, Firstlook and Basic Fusion), it is even

more irrelevant since these parties not in this lawsuit.

5. Document Request No. 5.

Document Request No. 5 in the issued subpoenas calls for the production of “[a]ny and

all Documents reflecting communication between you and NCS regarding any domain name or

trademark issue.”
Page 14 of 17

Once again, this request is objectionable for various reasons. First, this request is

irrelevant. Statutory Factor 8 does not turn on whether the third party and NCS communicated

about “domain names” or “trademark issues.” Second, to the extent that the request calls for

communications with NCS, Plaintiff can ask NCS for such communication. Third, the request is

overbroad since it asks for communications as to “all domain names” and “trademark issues” and

not just the domain name that Plaintiff claims is confusingly similar to the subpoenaed party’s

mark. Lastly, to the extent that the request calls for communications between the subpoenaed

party and one of the other companies captured by the overbroad definition of “NCS” (i.e.,

Connexus, Firstlook and Basic Fusion), it is even more irrelevant since these parties not in this

lawsuit.

6. Document Request No. 6.

Document Request No. 6 in the issued subpoenas calls for the production of “[a]ny and

all lawsuits, arbitrations or other adversarial proceedings brought by You against NCS either

related or unrelated to the Typo Domains.”

This request is also objectionable for various reasons. First, this request is irrelevant.

Statutory Factor 8 does not turn on whether the third party filed a lawsuit or not. It is particularly

irrelevant if the third party has filed a lawsuit against NCS that is “unrelated to the Typo

Domains.” Second, and for the same reason, the request is overbroad. If the parties had been

involved in a breach of contract dispute, for example, this request would capture documents

related to that lawsuit even though such documents would not be useful in this lawsuit at all.

Third, to the extent that the request calls for lawsuits filed against NCS, Plaintiff can ask NCS

for such documents about such lawsuits. Fourth, lawsuits and UDRP proceedings are a matter of
Page 15 of 17

publicly record and can be researched through publicly-available databases that can be accessed

through the Internet (e.g., PACER). Lastly, to the extent that the request calls for lawsuits

between the subpoenaed party and one of the other companies captured by the overbroad

definition of “NCS” (i.e., Connexus, Firstlook and Basic Fusion), it is even more irrelevant since

these parties not in this lawsuit.

II. PLAINTIFF’S SUBPOENAS ARE ACTUALLY MEANT TO HARASS.

As noted, above, as a party to this lawsuit, NCS can prevail on its request for a protective

order by showing that Plaintiff’s subpoenas are irrelevant and/or overbroad. That is clearly the

case. But, it is also the case that Plaintiff’s subpoenas are harmful to NCS.

The true purpose of these subpoenas is to harass NCS and the related entities which have

been dismissed by the Court. Statutory Factor 8 does not care about whether the subpoenaed

parties knew of NCS, sent NCS a letter, or sued NCS. And, even if it did, Plaintiff could have,

and should have, simply asked NCS for such documents. But, doing so would have prevented

Plaintiff from achieving its true goal: instigating further lawsuits against NCS. Plaintiff did not

issue those subpoenas to aid in its search for truth. (After all, do you really need to subpoena

Facebook to determine that the company has a mark, FACEBOOK?) Rather, Plaintiff issued

those subpoenas as a “Hey, thought you might like to know...” to these third parties,

undoubtedly hopeful that at least some of them might conclude “Well, we haven’t sued NCS but

maybe we should.” If such lawsuits were filed, NCS’s limited resources would be further

consumed, thereby depriving it of its ability to defend itself in this lawsuit. And, of course, if
Page 16 of 17

Plaintiff’s counsel were asked to bring such a suit (since they are the ones that “sounded the

alarm”), then so much the better for them.

The Court should not permit this. Discovery is intended to aid in the discovery of truth,

not as a mechanism to instigate other lawsuits against your opponent or as a clever marketing

device for lawyers. Allowing these issued subpoenas to stand will unnecessarily embarrass and

harass NCS (and the entities that Judge Battani dismissed prior to the issuing of such subpoenas)

without aiding in the resolution of a single issue in this case.

Conclusion

Plaintiff has issued six subpoenas that are overbroad, irrelevant, and harassing. The

Court should issue a protective order requiring Plaintiffs to withdraw the subpoenas or, at a

minimum, limiting the subpoenas to Document Request No. 1 and further prohibiting Plaintiff

from issuing subpoenas of this nature to third parties again.

RESPECTFULLY SUBMITTED this 8th day of February, 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 17 of 17

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

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