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1 QUINN EMANUEL URQUHART & SULLIVAN, LLP Margret M. Caruso (Bar No. 243473) 2 margretcaruso@quinnemanuel.com Cheryl A. Berry (Bar No. 252262) 3 cherylberry@quinnemanuel.com 555 Twin Dolphin Drive, 5th Floor 4 Redwood Shores, CA 94065-2129 Telephone: (650) 801-5000 5 Facsimile: (650) 801-5100 Attorneys for Defendant 6 Google Inc. 7 UNITED STATES DISTRICT COURT 8 EASTERN DISTRICT OF CALIFORNIA 9 SACRAMENTO DIVISION 10 11 DANIEL JURIN, an Individual, 12 Plaintiff, 13 vs. CASE NO. 2:09-cv-03065-MCE - CKD Date: October 4, 2012 Time: 2:00 p.m. Judge: Morrison C. England, Jr. JURY TRIAL DEMANDED

14 GOOGLE, INC., 15 Defendant. 16 17 18 19 20 21 22 23 24 25 26 27 28

DEFENDANT GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, MOTION TO DISMISS UNDER RULE 41(b) FOR FAILURE TO PROSECUTE

Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS Page

3 INTRODUCTION ............................................................................................................................. 1 4 PROCEDURAL BACKGROUND ................................................................................................... 1 5 STATEMENT OF UNDISPUTED FACTS ..................................................................................... 2 6 STANDARD OF REVIEW .............................................................................................................. 3 7 ARGUMENT .................................................................................................................................... 4 8 I. 9 10 B. 11 1. 12 13 14 (a) 15 (b) 16 (c) 17 (d) 18 (e) 19 (f) 20 (g) 21 (h) 22 3. 23 C. 24 D. 25 E. 26 II. 27 28 III. THIS CASE SHOULD BE DISMISSED FOR LACK OF PROSECUTION UNDER FEDERAL RULES OF CIVIL PROCEDURE RULE 41(B) .............................. 16 CONCLUSION ................................................................................................................... 18 -iCase No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

GOOGLE IS ENTITLED TO SUMMARY JUDGMENT ................................................... 4 A. Jurin Cannot Prove Direct Trademark Liability For Trademarks as Keywords .................................................................................................................. 4 Jurin Cannot Prove Direct Trademark Liability for Trademarks in Ad Text............ 4 Google Cannot Be Held Directly Liable for the Actions of Third Parties ............................................................................................................ 5 Jurin Cannot Prove a Likelihood of Confusion from the Accused Uses of STYROTRIM ................................................................................... 5 No Evidence the Trademark is Strong .............................................. 6 The Goods are Not Related ............................................................... 7 Similarity of the Marks ..................................................................... 7 Jurin Has No Proof of Actual Confusion .......................................... 7 Marketing Channels .......................................................................... 9 Type of Goods and Purchaser Care ................................................... 9 No Evidence of Bad Intent .............................................................. 10 Likelihood of Expansion ................................................................. 10

2.

Use of the STYROTRIM Mark in Ad Text is a Fair Use ........................... 10

Jurin Cannot Prove False Endorsement or False Advertising ................................. 12 Jurin Cannot Prove Dilution .................................................................................... 14 Jurins State Law Claims Fail With His Lanham Act Claims................................. 15

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TABLE OF AUTHORITIES Page Cases

4 AMF v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ........................................................................................................7 5 Anderson v. Liberty Lobby, Inc., 6 477 U.S. 242, 106 S. Ct. 2505 (1986) ..........................................................................................4 7 Apple, Inc. v. Amazon.com Inc., 2011 WL 2638191 (N.D. Cal. July 6, 2011) ................................................................................6 8 Avery Dennison Corp. v. Sumpton, 9 189 F.3d 868 (9th Cir. 1999) ......................................................................................................14 10 Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir. 2000) ......................................................................................................9 11 Brookfield Commissions, Inc. v. West Coast Entertainment, 12 174 F.3d 1036 (9th Cir. 1999) ......................................................................................................6 13 Cambridge Electronics Corp. v. MGA Electronics, Inc., 227 F.R.D. 313 (C.D. Cal. 2004) ...........................................................................................8, 17 14 Celotex Corp. v. Cattrett, 15 477 U.S. 317, 106 S. Ct. 2548 (1986) ..........................................................................................4 16 Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999) ........................................................................................................5 17 Cleary v. News Corp., 18 30 F.3d 1255 (9th Cir. 1994)....................................................................................................15 19 Cohn v. Petsmart, 281 F.3d 837 (9th Cir. 2002) ........................................................................................................7 20 E.&J. Gallo Winery v. Pasatiempos Gallo, S.A., 21 905 F. Supp.1403 (E.D. Cal. 1994) ..............................................................................................6 22 Echo Drain v. Newsted, 307 F. Supp. 2d 1116 (C.D. Cal. 2003) ........................................................................................8 23 Fonseca v. City of Red Bluff, 24 2011 WL 3502395 (E.D. Cal. Aug. 8, 2011) .............................................................................16 25 Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007) ......................................................................................................12 26 Goddard v. Google, Inc., 27 640 F. Supp. 2d 1193 (N.D. Cal. 2009) .......................................................................................5 28 -iiCase No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 Groupion, LLC v. Groupon, Inc., 2012 WL 1655728 (N.D. Cal. May 8, 2012) ...........................................................................3, 9 2 Heartbrand Beef, Inc. v. Lobel's of New York, LLC, 3 2009 WL 311087 (S.D. Tex. Feb. 5, 2009) ................................................................................13 4 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 102 S. Ct. 2182 (1982) ..........................................................................................5 5 Jack Russell Terrier Network of Northern California v. American Kennel Club, Inc., 6 407 F.3d 1027 (9th Cir. 2005) ....................................................................................................13 7 Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242 (11th Cir. 2002) ..................................................................................................11 8 Johnson v. Kriplani, 9 2008 WL 2620378 (E.D. Cal. July 2, 2008) ................................................................................8 10 Jurin v. Google Inc., 695 F. Supp. 2d 1117 (E.D. Cal. 2010) ........................................................................................5 11 Kournikova v. General Media Commc'ns, Inc., 12 278 F. Supp. 2d 1111 (C.D. Cal. 2003) ......................................................................................13 13 M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005) ..........................................................................................8, 10, 15 14 Nabisco, Inc. v. PF Brands, Inc., 15 191 F.3d 208 (2d Cir. 1999) .........................................................................................................7 16 Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) ............................................................................................ passim 17 New Kids on the Block v. News America Publ'g, Inc., 18 971 F.2d 302 (9th Cir. 1992)........................................................................................10, 11, 12 19 Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) ....................................................................................................14 20 Omega, S.A. v. Giftland, Co., 21 2005 WL 1925791 (D.N.J. Aug. 11, 2005) ..................................................................................5 22 One Industries, LLC v. Jim O'Neal Distributing, Inc., 578 F.3d 1154 (9th Cir. 2009) ......................................................................................................6 23 Parker v. Google, Inc., 24 422 F. Supp. 2d 492 (E.D. Pa. 2006) ...........................................................................................5 25 Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) ......................................................................................................11 26 Prestonettes, Inc. v. Coty, 27 264 U.S. 359, 44 S. Ct. 350 (1924) ............................................................................................11 28 -iiiCase No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir. 2003) ....................................................................................................13 2 Roybal v. Trans Union, 3 2008 WL 5329986 (E.D. Cal. Dec. 19, 2008) ......................................................................16, 17 4 Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, 680 F. Supp. 2d 1107 (N.D. Cal. 2010) .......................................................................................8 5 Smith v. Chanel, Inc., 6 402 F.2d 562 (9th Cir. 1968) ......................................................................................................11 7 Star Industrial, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) .........................................................................................................9 8 Surfvivor Media, Inc. v. Survivor Productions, 9 406 F.3d 625 (9th Cir. 2005) ....................................................................................................3, 4 10 Thane Int., Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) ......................................................................................................14 11 Thompson v. Housing Authority of the City of Los Angeles, 12 782 F.2d 829 (9th Cir. 1986) ......................................................................................................16 13 Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) ..........................................................................................9, 11, 12 14 Walter v. Mattel, Inc., 15 210 F.3d 1108 (9th Cir. 2000) ....................................................................................................12 16 Statutes 17 15 U.S.C. 1114 ............................................................................................................................1, 4 18 15 U.S.C. 1125(a) ................................................................................................................1, 12, 13 19 15 U.S.C. 1125(c) ....................................................................................................................14, 15 20 California Business & Professions Code 17200 ...........................................................................15 21 Federal Rules of Civil Procedure 26(a) ............................................................................................17 22 Federal Rules of Civil Procedure 37(c) ........................................................................................8, 17 23 Federal Rules of Civil Procedure 41(b)..................................................................................1, 16, 18 24 E. Dist. Local Rule 183(a) ..........................................................................................................16, 17 25 26 27 28 -ivCase No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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Defendant Google Inc. (Google) respectfully submits this brief in support of its Motion

2 for Summary Judgment or, in the Alternative, Motion to Dismiss under Rule 41(b). 3 4 INTRODUCTION Daniel Jurin has no viable trademark infringement or dilution claims against Google.

5 Trademark law does not grant an absolute monopoly on the use of trademarks; it prohibits only 6 confusing uses of trademarks to protect consumers. Jurin lacks any evidence that any of Googles 7 actions are likely to cause consumer confusion, or any evidence that his alleged STYROTRIM 8 trademark is sufficiently famous to qualify for dilution protection. Accordingly, his claims 9 should be dismissed as a matter of law. 10 In the nearly three years this case has been pending, Jurin has served no initial disclosures,

11 propounded no discovery, taken no depositions, and provided no expert reports. He has refused 12 to respond to Googles interrogatories asking for facts relating to the elements of his claims and 13 damages. And he has failed to produce any evidence sufficient prove his claims. The discovery 14 and expert disclosure deadlines have now passed, and Jurin has no evidence that confusion is 15 likely, that the STYROTRIM trademark is famous, or that dilution is likely. In sum, he has no 16 more to support his claims than he did at the outset of the caseconclusory allegations. Unlike 17 the pleading stage, however, those allegations are no longer sufficient to sustain a case. Because 18 Jurin cannot identify any admissible evidence that would create a triable issue of fact, summary 19 judgment is appropriate. Alternatively, this case should be dismissed under Federal Rules of 20 Civil Procedure Rule 41(b) for Jurins failure to prosecute his case. 21 22 PROCEDURAL BACKGROUND Daniel Jurin originally filed this case against Google in the Central District of California

23 on June 2, 2009. Statement of Undisputed Facts (SUF) 1. Jurin voluntarily dismissed the 24 action on July 23, 2009, before Google answered, only to re-file his complaint in the Eastern 25 District of California on October 21, 2009. SUF 2, 3. After Googles multiple successful 26 partial motions to dismiss, Jurin filed his Second Amended Complaint on September 29, 2010. 27 SUF 4, 5. Jurin alleges violations of 15 U.S.C. 1114, 15 U.S.C. 1125(a) and (c), common 28 law trademark infringement and California unfair competition. SUF 6. -1Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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STATEMENT OF UNDISPUTED FACTS Googles AdWords Program Googles mission is to provide useful and relevant information to millions of people

4 around the world. SUF 7. Its flagship product is one of the worlds most popular search 5 engines, which enables people to locate information on the Internet for free. In response to users 6 typed search queries, Google returns results pages displaying links to websites (organic links) 7 that its search engine algorithmically determines to be relevant. SUF 8. Adjacent to the 8 organic links, Googles results pages may also display a limited number of paid advertisements. 9 Once identified as Sponsored Links, Google now labels these simply as Ads. 10 Google does not show ads on every search results page. SUF 9. Instead, Googles

11 philosophy is to provide its users with only organic links and ads that users will find relevant. 12 SUF 10. One of the factors that Google takes into account in algorithmically determining 13 which, if any, ads to display is what keywords an advertiser has chosen to bid on. To advertise 14 through Googles AdWords program, advertisers create a Google AdWords account, agree to 15 Googles Advertising Program Terms, create ad text, and bid for how much they will pay for each 16 click of an ad triggered by a keyword corresponding to a users search for a certain word or 17 combination of words. SUF 11. If a user enters a selected keyword as a search term, 18 corresponding ads that comply with Googles policies are eligible to be displayed. 19 Googles policies do not prohibit the use of trademarks as keywords, but, as confirmed by

20 Googles Advertising Program Terms, each advertiser is solely responsible for all . . . ad 21 targeting options and keywords . . . . and all ad content, ad information, and ad URLs. SUF 22 12. Advertisers contractually commit to Google not to choose keywords that violate third-party 23 intellectual property rights. Id. When choosing keywords to bid on to trigger display of their 24 ads, advertisers may input their own terms or may select from ideas displayed by Googles 25 Keyword Tool in response to the advertisers typed identification of a product name or genre. 26 SUF 13. 27 Advertisers are also responsible for ensuring that the text of their ads do not violate third-

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1 trademarked terms in ad text if advertisers use the trademarks for a referential purpose. The 2 advertiser must: (1) resell legitimate products bearing the trademark; (2) sell components, 3 replacement parts or compatible products corresponding to the trademark; or (3) provide non4 competitive information about the goods or services corresponding to the trademark term. SUF 5 15. No matter how high the advertisers bid, these policies restrict the ads that can be 6 displayed. SUF 16. 7 8 Jurins Complaints Regarding Googles AdWords Program Jurin alleges that he uses that STYROTRIM trademark to sell his Styrofoam building trim

9 product. SUF 17. Jurin has complained about Googles general advertising policies and the 10 possibility that advertisers may bid on styrotrim as a keyword or use it in ad text in certain 11 referential situations. SUF 18. But he has not accused any specific advertisements of 12 infringement. SUF 19. From January 2006 until March 2012, a small number of advertisers 13 other than Jurin paid Google a total of $75.62 for users clicking on their ads after bidding on the 14 keyword styrotrim. SUF 20. Those advertisers include Shopzilla and Bizrate, both price 15 comparison sites. Id. During that same period, Jurin paid Google $160.73 for his Styrotrim 16 advertisements. SUF 21. Jurin has pointed to no instances of confusion from any of the third17 parties uses. SUF 22. On December 9, 2009, after filing his complaint against Google, Jurin 18 contacted Shopzilla, also known as BizRate, to ask them to discontinue bidding on the word 19 styrotrim; on December 10, 2009, Shopzilla informed him that, as a courtesy, they would 20 comply. SUF 23. There is no evidence that Jurin contacted any other third parties to request 21 that they refrain from bidding on the keyword styrotrim. Nor is there any evidence that any 22 third party use of STYROTRIM in Googles AdWords program caused any confusion. 23 24 STANDARD OF REVIEW Summary judgment in a trademark case is appropriate where no genuine issue of material

25 fact exists. Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 630 (9th Cir. 2005). 26 A principal purpose of the summary judgment procedure is to identify and dispose of factually 27 unsupported claims. Groupion, LLC v. Groupon, Inc., -- F. Supp. 2d --, 2012 WL 1655728, *1 28 (N.D. Cal. May 8, 2012). An issue of fact is genuine only if there is sufficient evidence for a -3Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 reasonable fact finder to find for the non-moving party. A fact is material if it may affect the 2 outcome of the case. Id. If the non-moving party fails to point to evidence precluding summary 3 judgment, the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Cattrett, 4 477 U.S. 317, 323-24, 106 S.Ct. 2548, 2552-53 (1986). If the evidence is merely colorable, or is 5 not significantly probative, summary judgment may be granted. Anderson v. Liberty Lobby, 6 Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2511 (1986) (internal citations omitted). 7 8 I. 9 10 To prove direct trademark infringement, Jurin must prove that a reasonably prudent 11 consumer in the marketplace is likely to be confused as to the origin of the good or service bearing 12 one of the marks. Surfvivor, 406 F.3d at 630 (quoting Dreamwerks Prod. Group, Inc. v. SKG 13 Studio, 142 F.3d 1127, 1129 (9th Cir. 1998)). Under the Lanham Act, direct liability for 14 trademark infringement can only be found when a person uses a registered mark in commerce 15 where the use is likely to cause confusion, mistake or to deceive. 15 U.S.C. 1114(1). Jurin has 16 no evidence showing that there is any likelihood of confusion from advertisers use of the 17 STYROTRIM mark as a keyword. SUF 22. 18 For uses in the keyword context, the consumer does not confront two distinct 19 trademarks. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 20 1151 (9th Cir. 2011). The process of allowing advertisers to select keywords does not confuse 21 consumers. Indeed, consumers performing internet searches do not see the keywords on which an 22 advertiser has bid. Only the advertiser sees the keyword on which he bids. Jurin has produced 23 no evidence that any advertiser choosing a keyword is confused as to whether he or Google have 24 an affiliation with Jurin or his Styrotrim product. 25 B. 26 Jurin also has no evidence showing that there is any likelihood of confusion from 27 advertisers use of the STYROTRIM mark in ad text. SUF 22. 28 -4Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

ARGUMENT GOOGLE IS ENTITLED TO SUMMARY JUDGMENT A. Jurin Cannot Prove Direct Trademark Liability For Trademarks as Keywords

Jurin Cannot Prove Direct Trademark Liability for Trademarks in Ad Text

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1.

Google Cannot Be Held Directly Liable for the Actions of Third Parties

Google cannot be held directly liable for the actions of third parties. As this Court

3 previously held, Google is not responsible in whole or in part, for the creation or development of 4 information provided through the Internet because Google does not provide the content of the 5 . . . advertisements. It provides a space and a service and thereafter charges for its service. Dkt. 6 19 at p. 11, Jurin v. Google Inc., 695 F.Supp.2d 1117, 1122-23 (E.D. Cal. 2010); see also 7 Goddard v. Google, Inc., 640 F. Supp. 2d 1193, 1198 (N.D. Cal. 2009) (holding that the selection 8 of the [advertising] content is left exclusively to AdWords advertisers). Direct trademark 9 liability does not arise in a situation where a defendants activities are merely related to the 10 infringing acts and the defendant is not the moving force in the decision to engage in the 11 infringing acts. Parker v. Google, Inc., 422 F.Supp.2d 492, 503 (E.D. Pa. 2006) (quoting Omega, 12 S.A. v. Giftland, Co., 2005 WL 1925791 *3 (D.N.J. Aug. 11, 2005)). Google has no such 13 involvement; therefore, Google may not be held directly liable for allegedly infringing ads merely 14 because it provides space on which third-parties may advertise.1 15 16 Even if Google could be held directly liable for the actions of third parties, Jurin cannot 17 prove that a reasonably prudent consumer is likely to be confused by the use of STYROTRIM 18 in the text of an advertisement. Traditionally, eight factors are analyzed when determining a 19 likelihood of confusion: (1) strength of the mark; (2) proximity or relatedness of the goods; (3) 20 similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; 21 (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. E.g., Network 22 23 24 25 26 27 28 Jurins complaint makes no mention of contributory infringement in his complaint. He does not allege that Google has intentionally induced a third party to infringe his mark or continued to supply a third party with actual or constructive knowledge that the product is being used to infringe the mark. Cf. Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 983 (9th Cir. 1999) (citing Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 853-54, 102 S. Ct. 2182, 2188 (1982)). Nor does Jurin allege any facts showing direct infringement by third parties, which is a necessary predicate to a contributory infringement claim. Id. In addition, as a matter of law, use of a third-party trademark as a keyword by an advertiser is not inherently a trademark violation. E.g., Networks Automation, 638 F.3d at 1137 (vacating preliminary injunction against competitors use of third-party trademark as a keyword to trigger ads on Google and Yahoo!). -5Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
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2.

Jurin Cannot Prove a Likelihood of Confusion from the Accused Uses of STYROTRIM

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1 Automation, 638 F.3d at 1145 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 2 1979)). These factors are not exhaustive, however, and are intended as an adaptable proxy for 3 consumer confusion, not a rote checklist. Id. They should therefore be applied flexibly, 4 particularly in the context of Internet commerce. Id. at 1149. Depending on the facts of each 5 specific case arising on the Internet, other factors may emerge as more illuminating on the 6 question of consumer confusion. Id. at 1148. Analysis of these factors confirms that Jurin 7 cannot establish a likelihood of confusion. 8 9 (a) No Evidence the Trademark is Strong

The STYROTRIM mark is not strong either conceptually or commercially. See Network

10 Automation, 638 F. 3d at 1149. Commercial strength is based on actual marketplace 11 recognition, and thus advertising expenditures can transform a suggestive mark into a strong 12 mark. Id. (quoting Brookfield Commns., Inc. v. West Coast Entertainment, 174 F.3d 1036, 13 1058 (9th Cir. 1999). Jurin has provided no information about his total advertising expenditures, 14 the level of consumer recognition of STYROTRIM, or any other evidence to demonstrate that 15 STYROTRIM is a strong mark. Googles own records show that Jurin has spent only $160.73 on 16 AdWords advertising with Google from January 2006 to March 2012. SUF 21. This amount 17 of money does not demonstrate commercial strength of the STYROTRIM trademark. See, e.g., 18 Apple, Inc. v. Amazon.com Inc., 2011 WL 2638191, **5, 7 (N.D. Cal. July 6, 2011) (finding that 19 hundreds of millions of dollars in advertising expenditures alone was insufficient to demonstrate 20 commercial strength of a mark). There is also no evidence that consumers regard STYROTRIM 21 as designating a single source of origin, as opposed to a category of Styrofoam trim. See, e.g., 22 E.&J. Gallo Winery v. Pasatiempos Gallo, S.A., 905 F.Supp.1403, 1413 (E.D. Cal. 1994). In a 23 crowded field of similar marks, each member of the crowd is relatively weak in its ability to 24 prevent use by others in the crowd. One Industries, LLC v. Jim ONeal Distributing, Inc., 578 25 F.3d 1154, 1164 (9th Cir. 2009) (citation omitted). As reflected in one of the documents Jurin 26 produced, an opinion letter from Lisa Nixon at Downey Brand, a mark combining Styro with 27 another word may be merely descriptive, especially because many other products in the building 28 industry do the sameincluding Styro Flex, Sytro Solve, Styro Glue, and Styro-Loc, -6Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 which is specifically used in connection with fabricated foam decorative moldings, cornices, 2 dentils and sconces. Berry Decl. 25. Therefore, this factor favors Google. 3 4 (b) The Goods are Not Related

If goods are totally unrelated, there is no infringement because confusion is unlikely.

5 AMF v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). According to Jurins complaint, he 6 sells Styrofoam building trim. In contrast, Google offers a free Internet search engine service, as 7 well as other free web and cloud-based services, including maps, photos, and email. SUF 25. 8 Google does not offer any products in the building industry, let alone products relating to 9 Styrofoam trim. Id.. Therefore, this factor favors Google. 10 11 (c) Similarity of the Marks

Under Googles policies, consumers would see a trademark in ad text on Google.com only

12 if it meets the referential use limitations required by Googles trademark policy. When assessing 13 a likelihood of confusion based on internet search results, the appearance of the advertisements 14 and their surrounding context are highly relevant. Network Automation, 638 F.3d at 1154. In 15 the keyword advertising context the likelihood of confusion will ultimately turn on what the 16 consumer saw on the screen and reasonably believed, given the context. Id. at 1153 (internal 17 citation omitted). Here, third party advertisers identify themselves in their ads and make clear 18 what services they offer. Moreover, Google has partitioned [its] search results pages so that the 19 advertisements appear in separately labeled sections for ads. Id. at 1154. Therefore, this factor 20 weighs in favor of Google. 21 22 (d) Jurin Has No Proof of Actual Confusion

Jurin has not offered a single piece of evidence that there has been any actual confusion

23 resulting from the use of STYROTRIM as either a keyword or in the text of an advertisement on 24 Google. Because Jurin is alleging that Google has used his trademark in the same market for a 25 period of six years, the fact that there is no evidence of actual confusion is especially probative of 26 the lack of a likelihood of confusion. Cohn v. Petsmart, 281 F.3d 837, 842-43 (9th Cir. 2002) 27 (finding lack of evidence of actual confusion after operating in the same area for six years to be 28 highly probative of no likelihood of confusion). See also Nabisco, Inc. v. PF Brands, Inc., 191 -7Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 F.3d 208, 228 (2d Cir. 1999) (lack of evidence about actual confusion after ample opportunity 2 for confusion can be [a] powerful indication that the junior trademark does not cause a 3 meaningful likelihood of confusion.), overturned on other grounds. Indeed, courts in this circuit 4 have granted summary judgment of no trademark infringement even where there is some possible 5 evidence of actual confusion. See, e.g., M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 6 1073, 1083 (9th Cir. 2005); Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, 680 F. Supp. 2d 7 1107, 1121(N.D. Cal. 2010); Echo Drain v. Newsted, 307 F. Supp. 2d 1116, 1126 (C.D. Cal. 8 2003). 9 Jurin also failed to provide an expert report relating to confusion and did not conduct a

10 user survey. His lack of a survey further weighs against any finding of actual or likely confusion. 11 See, e.g., Network Automation, Inc. v. Hewlett-Packard Co. 2009 WL 5908719, *10 (C.D. Cal. 12 Sept. 14, 2009) (Plaintiff failed to submit a survey or expert report demonstrating confusion, 13 which weighs against a finding of actual confusion.) (citing Merriam-Webster, Inc. v. Random 14 House, Inc., 35 F.3d 65, 72 (2d Cir. 1994)). 15 In opposition to this motion, Jurin cannot provide any other evidence of confusion. He

16 provided no initial disclosures and refused to respond to Google interrogatories requesting he 17 identify all instances known to you of confusion, including mistake, or deception relating to the 18 Jurin mark (No. 1) and each ad that you contend may lead or has led to confusion with Jurin or 19 otherwise infringed your trademark rights (No. 6). SUF 27. If a party fails to provide 20 information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use 21 that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the 22 failure was substantially justified or is harmless. F.R.C.P. 37(c)(1). See also Johnson v. 23 Kriplani, 2008 WL 2620378 *2 (E.D. Cal. July 2, 2008) (refusing to allow plaintiff to bring new 24 evidence on summary judgment when plaintiff had not provided any initial disclosures); 25 Cambridge Electronics Corp. v. MGA Electronics, Inc., 227 F.R.D. 313, 320-325 (C.D. Cal. 2004) 26 (refusing to allow plaintiffs to bring new evidence on summary judgment that should have been 27 disclosed in interrogatory responses because that would be unfair surprise for defendants). Where 28 not even a scintilla of confusion evidence exists, this factor weighs strongly in favor of Google. -8Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 2

(e)

Marketing Channels

Both Jurin and Google use the internet to market their goods. However, this fact has little

3 effect, if any, on the likelihood of confusion analysis. Today, it would be the rare commercial 4 retailer that did not advertise online, and the shared use of a ubiquitous marketing channel does 5 not shed much light on the likelihood of consumer confusion. Network Automation, 638 F.3d at 6 1151. See also Groupion, LLC v. Groupon, Inc., 2012 WL 1655728 at *6. This factor weighs in 7 favor of neither party. 8 9 (f) Type of Goods and Purchaser Care

The more careful a consumer is expected to be in his purchase of the products at issue, the

10 less likely confusion generally is. When the trademarked goods are expensive, the buyer can be 11 expected to exercise greater care in his purchases. Network Automation, 638 F.3d at 1152 12 (quoting Sleekcraft, 599 F.2d at 353). Jurin has produced little information relating to the cost of 13 his Styrotrim product. However, common sense suggests that consumers exercise care in making 14 purchases that will affect the exterior appearance of their homes. Courts have found a high 15 degree of care even where the cost of the goods is $20 or less. See, e.g., Star Indus., Inc. v. 16 Bacardi & Co. Ltd., 412 F.3d 373, 390 (2d Cir. 2005) (affirming sophistication of consumers of 17 $12 liquor store items); Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1045 (7th Cir. 18 2000) (affirming sophistication of consumers of a $20 meal). According to documents Jurin 19 produced, a 48 x 48 inch curved step quatrefoil costs $306.00 plus shipping. SUF 28. A 20 1.5 x 4 piece of flat trim with a stucco coat costs $22.03 plus shipping. SUF 29. The precise 21 dimensions of these building materials suggest that these products are for serious home 22 improvement projects and are not impulse purchases. In addition, according to Jurins 23 documents, customers typically buy multiple pieces at a time. SUF 30. Further, as the Ninth 24 Circuit has recognized, [c]onsumers who use the internet for shopping are generally quite 25 sophisticated. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010). 26 Accordingly, this factor weighs in favor of Google. 27 28 -9Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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(g)

No Evidence of Bad Intent

[T]he defendants intent may be relevant . . . only insofar as it bolsters a finding that the

3 use of the trademark serves to mislead consumers rather than truthfully inform them of their 4 choice of products. Network Automation, 638 F.3d at 1153. See also M2 Software, 421 F.3d at 5 1085 (finding that a companys knowledge of a mark when adopting its own similar mark does not 6 alone evidence intent without evidence that the defendant had any intention of capitalizing on M2 7 Softwares trademark.) Jurin has submitted no evidence showing that Google has any intention 8 of misleading potential Styrotrim consumers or consumers generally. Jurin also has no evidence 9 that Google has attempted to capitalize on the STYROTRIM mark by adopting the STYROTRIM 10 mark for its own use or attempting to pass off its own goods as Jurins. On the contrary, the 11 purpose of Googles service is to facilitate users ability to find information on the internet; 12 therefore, it is in Googles interest not to confuse its users. Google wants to create a good user 13 experience for people viewing ads on Google and wants advertisements to follow all applicable 14 laws in the countries where they appear. SUF 31. This factor weighs in favor of Google. 15 16 (h) Likelihood of Expansion

Because a trademark owner receives greater protection against competing goods, a strong

17 possibility that either party may expand his business to compete with the other will weigh in 18 favor of finding that the present use is infringing. Network Automation, 638 F.3d at 1153 19 (quoting Sleekcraft, 599 F.2d at 354). There is no evidence that Google is likely to begin offering 20 competing home Styrofoam trim products, or that Jurin is likely to begin operating an internet 21 search engine. Therefore, this factor weighs in favor of Google. 22 Weighing the various likelihood of confusion factors, there can be no material issue of

23 disputed fact that no likelihood of confusion is caused by Googles advertising policies. Jurins 24 trademark infringement claim must therefore fail. 25 26 3. Use of the STYROTRIM Mark in Ad Text is a Fair Use

Under the Lanham Act, a person may use anothers mark in referential situations. In

27 classic fair use, the defendant has used the plaintiffs mark to describe the defendants own 28 product. New Kids on the Block v. News America Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. -10Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 1992). Under the nominative fair use doctrine, the Ninth Circuit has held that certain referential 2 uses of anothers trademark cannot be found liable of infringement under the Lanham Act. 3 First, the product or service in question must be one not readily identifiable without use of the 4 trademark; second, only so much of the mark or marks may be used as is reasonably necessary to 5 identify the product or service; and third, the user must do nothing that would, in conjunction with 6 the mark, suggest sponsorship or endorsement by the trademark holder. Playboy Enterprises, 7 Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002). See also Prestonettes, Inc. v. Coty, 264 U.S. 8 359, 368, 44 S.Ct. 350, 351 (1924) (there is no such sanctity in the word as to prevent its being 9 used to tell the truth. It is not taboo.). 10 Under the Lanham Act, infringement may only be found for a particular use. Johnson &

11 Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1248 (11th Cir. 2002) (vacating 12 preliminary injunction where district court failed to assess likelihood of consumer deception on an 13 ad-by-ad basis and had instead viewed ad campaign as a whole). See also Network Automation, 14 638 F.3d at 1146-47 (noting that different Sleekcraft factors will be more relevant than others 15 depending upon the context in which the trademark has been used). Jurin, however, is claiming 16 infringement generally against Googles policies. This alone should cause Jurins claims to fail. 17 If it does not, however, an analysis of Jurins claims against Googles policies as a whole also 18 demonstrates no infringement. Under Googles trademark policy, advertisers may only include a 19 trademark in their ad text if they sell the trademarked goods or services; they sell components, 20 replacement parts, or compatible products corresponding to the trademark; or they provide 21 information about the goods or services corresponding to the trademark term. SUF 15. 22 Therefore, under Googles policy, even if a third partys use of a mark could be considered

23 Googles own use, any uses of the STYROTRIM mark in ad text refer to Jurins goods and cannot 24 support a finding of liability against Google. See also Toyota Motor Sales, U.S.A., Inc. v. Tabari, 25 610 F.3d 1171, 1179 (9th Cir. 2010); New Kids on the Block , 971 F.2d at 309; Smith v. Chanel, 26 Inc., 402 F.2d 562 (9th Cir. 1968). To assess nominative fair use, courts analyze whether the 27 product was readily identifiable without use of the mark; the defendant used more of the mark than 28 -11Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 necessary, or defendant falsely suggested he was sponsored or endorsed by the trademark holder. 2 New Kids, 971 F.2d at 308-09. 3 Ads placed by price comparison website Shopzilla, for example, which state Save on

4 Styrotrim reflect nominative fair uses. SUF 20. The Styrotrim product is not readily 5 identifiable without use of the STYROTRIM trademark. Therefore, an advertiser selling the 6 Styrotrim product, related products, or providing information about Styrotrim must make use of 7 that trademark in order to identify the product or information that its website provides. Further, 8 the ads on Googles website are clearly demarcated as Ads, eliminating any suggestion that the 9 other product is sponsored by Jurin, and nothing in the text of these ads affirmatively suggests any 10 sponsorship or affiliation with Styrotrim. See e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 11 610 F.3d 1171, 1178 (9th Cir. 2010) (distinguishing between defendants nominative use of 12 plaintiffs trademark and domains like official-trademark-site.com or we-are-trademark.com 13 [that] affirmatively suggest sponsorship or endorsement by the trademark holder and are not 14 nominative fair use). These uses are protected as fair uses, and cannot be infringing. 15 16 C. Jurin Cannot Prove False Endorsement or False Advertising

To prove his claim under 15 U.S.C. 1125(a), Jurin must show that Google has (1) used

17 in commerce (2) any word, false designation of origin, false or misleading description, or 18 representation of fact, which (3) is likely to cause confusion or misrepresents the characteristics of 19 his or another persons goods or services. Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902 20 (9th Cir. 2007). The test for false designation under the Lanham Act is whether there is a 21 likelihood of confusion. Walter v. Mattel, Inc., 210 F.3d 1108, 1110-1111 (9th Cir. 2000). 22 Determining whether there is a likelihood of confusion for false designation of origin requires 23 analysis of the same factors as for trademark infringement. Id. When an analysis of those 24 factors shows that the plaintiff cannot establish any likelihood of confusion, summary judgment is 25 appropriate. Id. (upholding summary judgment of false designation of origin claim because 26 plaintiff could not prove likelihood of confusion). As discussed above in Section I.B., Jurin has 27 no evidence that could allow a reasonable factfinder to determine any likelihood of confusion 28 -12Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 resulting from the ads displayed on Googles website. Therefore, Jurins false designation of 2 origin claim must fail. 3 To the extent that Jurins 1125(a) claim is one for false advertising, it also fails. Jurin

4 does not even have standing to bring such a claim, as he has not established that he and Google are 5 competitors. To have standing, Jurin must show (1) a commercial injury based on a 6 misrepresentation about a product; and (2) that the injury is competitive, or harmful to the 7 plaintiffs ability to compete with defendant. Jack Russell Terrier Network of Northern 8 California v. American Kennel Club, Inc., 407 F.3d 1027, 1037 (9th Cir. 2005). The parties are 9 not competitors. Jurin is in the building trim business, while Google is in the internet search 10 engine business; the two do not vie for the same dollars from the same consumer group. 11 Kournikova v. Gen. Media Commcns, Inc., 278 F. Supp. 2d 1111, 1117 (C.D. Cal. 2003). 12 Even if Jurin does have standing, he cannot prove the necessary elements of a false

13 advertising claim, which requires proof that (1) a false statement of fact by the defendant in a 14 commercial advertisement about its own or anothers product; (2) the statement actually deceived 15 or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, 16 in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement 17 to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of 18 the false statement, either by direct diversion of sales from itself to defendant or by a lessening of 19 the goodwill associated with its products. 15 U.S.C. 1125(a)(1)(B); Rice v. Fox Broadcasting 20 Co., 330 F.3d 1170, 1180-81 (9th Cir. 2003). 21 Jurin has specified no false statement of fact by Google in any advertisement. Moreover,

22 Google itself does not make any statements in advertisements, as third party advertisers choose 23 what text to include in their ads. SUF 12. See Heartbrand Beef, Inc. v. Lobels of New York, 24 LLC, 2009 WL 311087, *2 (S.D. Tex. Feb. 5, 2009) (holding that plaintiffs allegation that 25 Yahoo! placed a link to an advertisement on its page at the direction of other parties was 26 insufficient to meet the element of identifying an actual statement made by Yahoo!). Nor does 27 Jurin have any evidence that any statement has a tendency to deceive consumers, that any 28 -13Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 deception is material, or that Jurin has been harmed in any way. SUF 27. With no evidence 2 supporting any key element of this claim, Jurins false advertising claim must fail. 3 4 D. Jurin Cannot Prove Dilution

To withstand summary judgment on his dilution claim, Jurin must identify evidence from

5 which a jury could find that (1) his mark is famous; (2) Google is making a commercial use of the 6 mark in commerce; (3) Googles use began after the mark became famous; and (4) Googles use 7 of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and 8 distinguish goods and services. 15 U.S.C. 1125(c). Jurin has no such evidence. 9 The initial element for a dilution claimwhether the mark is famousrequires a very high

10 threshold of fame. Dilution is a cause of action invented and reserved for a select class of 11 marksthose marks with such powerful consumer associations that even non-competing uses can 12 impinge on their value. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999). 13 [A] mark is famous if it is widely recognized by the general consuming public of the United 14 States as a designation of source of the goods or services of the marks owner. 15 U.S.C. 15 1125(c)(2)(A). The level of recognition required is exceptionally high; the trademark must be so 16 famous that it is a household name. See Thane Int., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 17 911 (9th Cir. 2002), overturned by statute on other grounds. The Ninth Circuit has rejected 18 evidence of awareness of even 65% of the general consuming public as sufficient to show fame 19 and rejected that Nissan and Avery Dennison are famous marks. Nissan Motor Co. v. Nissan 20 Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004); Avery Dennison, 189 F.3d at 868. To 21 prevail on his dilution claim, therefore, Jurin must first be able to prove that his STYROTRIM 22 mark is famous. He cannot. 23 Jurin has offered no evidence at all to show that STYROTRIM has the degree of

24 distinctiveness and strength beyond that needed to serve as a trademark sufficient to qualify it 25 as famous among the general public. Avery Dennison, 189 F.3d at 875. Nor did he answer 26 Googles interrogatory regarding fame. SUF 27. Jurins complaint does not even allege fame 27 under current law, among the general consuming public. 15 U.S.C. 1125(c)(2)(A). Instead, 28 he claims only niche fame, which is insufficient for dilution. Second Amended Complaint, -14Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 88(C) (Styrotrim is widely recognized, particularly among Plaintiffs market of homeowners, 2 contractors, construction workers, and remodelers.). With only a conclusory statement of niche 3 fame and no facts supporting widespread fame, Jurin has not even stated a claim for dilution, 4 much less raised a material issue of fact sufficient to defeat summary judgment on his dilution 5 claim. 6 In any event, Google is statutorily exempt from liability for dilution in connection with the

7 display of ads on its website that refer to Jurins Styrotrim product, whether by competitors 8 comparing their goods and services to Jurins Styrotrim product, by informational services and 9 reviews about Jurins Styrotrim product, or by critics of Jurins Sytrotrim product. The Lanham 10 Act provides: 11 12 13 14 15 16 17 18 15 U.S.C. 1125(c)(3) (emphasis added). As described above in Section I.B.3 any use of the 19 STYROTRIM mark in ad text constitutes fair use. Jurins dilution claim therefore fails. 20 E. 21 Jurins state law claims rise and fall with his federal trademark claims and therefore also 22 fail. The same likelihood of confusion test applies to both common law trademark claims and the 23 Lanham Act. M2 Software, 421 F.3d at 1073. Jurin has failed to provide any evidence of a 24 likelihood of confusion resulting from use of the STYROTRIM mark. In addition, actions 25 pursuant to California Business & Professions Code 17200 are substantially congruent to 26 claims made under the Lanham Act. Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 27 28 -15Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the persons own goods or services, including use in connection with (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

Jurins State Law Claims Fail With His Lanham Act Claims

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1 1994). Therefore, Jurins common law trademark infringement claim and his California unfair 2 competition claim fail for the reasons outlined above in Section I.A-B. 3 II. 4 As an alternative to summary judgment, this case should be dismissed under Federal Rules 5 of Civil Procedure Rule 41(b) because Jurin failed to prosecute his case, which has been pending 6 for nearly three years. Rule 41(b) allows a court to dismiss an action [i]f the plaintiff fails to 7 prosecute or to comply with these rules or a court order . . . . F.R.C.P. 41(b); see also E. Dist. 8 Local Rule 110. This is true even where a plaintiff is proceeding pro se. E. Dist. Local Rule 9 183(a) (Any individual representing himself or herself without an attorney is bound by the 10 Federal Rules of Civil or Criminal Procedure, these Rules, and all other applicable law. All 11 obligations placed on counsel by these Rules apply to individuals appearing in propria persona. 12 Failure to comply therewith may be ground for dismissal, judgment by default, or any other 13 sanction appropriate under these Rules.). In determining whether to dismiss a case, a district 14 court must weigh five factors: 1) the publics interest in expeditious resolution of litigation; 2) 15 the courts need to manage its docket; 3) the risk of prejudice to the defendants; 4) the public 16 policy favoring disposition of cases on their merits; and 5) the availability of less drastic 17 sanctions. Roybal v. Trans Union, 2008 WL 5329986 at *4 (E.D. Cal. Dec. 19, 2008) (quoting 18 Thompson v. Housing Auth. of the City of Los Angeles, 782 F.2d 829, 831 (9th Cir. 1986)). 19 Review of these factors confirms Jurins claims should be dismissed. 20 In Fonseca v. City of Red Bluff, this Court granted defendants motion to dismiss for 21 failure to prosecute under Rule 41(b). 2011 WL 3502395, **1-2 (E.D. Cal. Aug. 8, 2011). The 22 Court found that dismissal was warranted because the plaintiff had failed to respond to written 23 discovery, has failed to obey the Court orders to respond . . . [and] made no apparent attempt to 24 prosecute her case for many months. Id. In Roybal, this Court dismissed an action under Rule 25 41(b) even though the plaintiffs were proceeding pro se, because plaintiffs failed to provide 26 discovery, failed to meet and confer with opposing counsel, and ignored court orders. 2008 WL 27 5329986 at *3. 28 -16Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

THIS CASE SHOULD BE DISMISSED FOR LACK OF PROSECUTION UNDER FEDERAL RULES OF CIVIL PROCEDURE RULE 41(B)

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Like the plaintiff in Roybal, Jurin has made no apparent attempt to prosecute his case over

2 a lengthy period of time. In the nearly three years this case has been pending, Jurin has taken no 3 action to disclose or discover information to support his claims of trademark infringement, false 4 designation of origin, dilution, and related state law claims relating to his trademark 5 STYROTRIM. The discovery and expert disclosure deadlines have passed, and Jurin has 6 propounded no discovery, taken no depositions, served no initial disclosures, and provided no 7 expert reports. Berry Decl. 27, 33. He also has refused to respond to Googles interrogatories 8 asking for facts relating to the elements of his claims and damages. Jurin has never served any 9 initial disclosures, although they were due on May 2, 2011, and has therefore not complied with 10 Federal Rules of Civil Procedure Rule 26(a). Berry Decl. 27; Dkt. 54. Jurin refused to answer 11 Googles interrogatory requests. Berry Decl. 33. Jurin did not submit any expert reports, 12 which were due on June 11, 2012. Berry Decl. 33; Dkt. 54. Through all of this inaction, he 13 has failed to comply with the scheduling order set in this case. Dkt. 54. The fact that Jurin has 14 had at least three different lawyers during the pendency of this case and has now chosen to 15 proceed pro se does not alter the requirement that Jurin follow the rules of the Eastern District of 16 California and the Federal Rules of Civil Procedure. E. Dist. Local Rule 183(a); Berry Decl. 17 34. Jurins inaction prejudices Google because Google has not been provided information 18 about any alleged facts underlying Jurins claims, which Google must know to defend against 19 them. Since amending his complaint for the second time in September 2010, Jurin has done 20 nothing to substantiate his claims other than produce a small number of largely irrelevant 21 documents the day after discovery closed. 22 While public policy may favor disposition of cases on their merits to the extent the lack of

23 merit is not yet conclusively established, such a disposition is not possible in this case. Jurin has 24 failed to establish his claims beyond conclusory allegations from his complaint, and he has no 25 relevant evidence to bring to a trial. Jurin cannot now provide any new evidence, because he has 26 failed to provide initial disclosures and answer Googles interrogatories. F.R.C.P. Rule 37(c); 27 Johnson, 2008 WL 2620378 at *2; Cambridge Electronics, 227 F.R.D. at 320-325; Berry Decl. 28 27, 33. The Courts need to manage its docket and the publics interest in an expeditious -17Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

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1 resolution of matters outweigh any other factors. Less drastic sanctions are not available here 2 without severely disrupting the case schedule and allowing the litigation to draw out longer than it 3 already has. Google has been required to defend itself against Jurins unsubstantiated allegations 4 for nearly three years; it should not have to do so any longer. Jurin has had every opportunity to 5 prosecute his case, but he has failed. Dismissal is therefore appropriate under Rule 41(b). 6 III. 7 CONCLUSION For the foregoing reasons, Google respectfully requests that this Court grant its Motion for

8 Summary Judgment, or, in the alternative, grant its Motion to Dismiss for Failure to Prosecute. 9 10 11 DATED: August 9, 2012 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -18Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

QUINN EMANUEL URQUHART & SULLIVAN, LLP

/s/ Margret M. Caruso Margret M. Caruso Attorneys for Defendant Google Inc.

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1 2

PROOF OF SERVICE

I am employed in the County of San Mateo, State of California. I am over the age of eighteen years and not a party to the within action; my business address is 555 Twin Dolphin 3 Drive, 5th Floor, Redwood Shores, California 94065-2139. 4 5 6 7 8 9 10 11 PROPOSED ORDER. 12 13 14 15 on the interested parties in this action as follows: Daniel Jurin 7732 Fair Oaks Blvd. Carmichael, CA 95608 On August 9, 2012, I served true copies of the following document(s) DEFENDANT GOOGLE INC.S NOTICE OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, MOTION TO DISMISS UNDER RULE 41(b) FOR FAILURE TO PROSECUTE; DEFENDANT GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, MOTION TO DISMISS UNDER RULE 41(b) FOR FAILURE TO PROSECUTE; STATEMENT OF UNDISPUTED FACTS; DECLARATION OF CHERYL A. BERRY (AND ACCOMPANYING EXHIBITS);

16 BY MAIL: I enclosed the foregoing into sealed envelope(s) addressed as shown above, and I deposited such envelope(s) in the mail at Redwood Shores, California. The envelope was mailed 17 with postage thereon fully prepaid. 18 19 Executed on August 9, 2012, at Redwood Shores, California. 20 21 22 23 24 25 26 27 28 -19Case No. 2:09-cv-03065-MCE-CKD GOOGLE INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

I declare that I am employed in the office of a member of the bar of this Court at whose direction the service was made.

/s/ Cheryl A. Berry Cheryl A. Berry