Академический Документы
Профессиональный Документы
Культура Документы
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WESTERN DIVISION
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Plaintiff,
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v.
GODADDY.COM, INC., et al.,
Defendant.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
TABLE OF AUTHORITIES
CASES
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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Woods v. Corsey,
89 Cal. App. 2d 105 (1948) ................................................................................17
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STATUTES
15 U.S.C. 1117...................................................................................................... 20
15 U.S.C. 1125.................................................................................................... 1, 4
Cal. Bus. & Prof. Code 17200, et seq................................................................... 1
Cal. Code Civil Proc. 1021.5.................................................................................. 2
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OTHER AUTHORITIES
S. REP. 106-140 (1999), 1999 WL 594571 ......................................................16, 17
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v
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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PRELIMINARY STATEMENT
GoDaddy has moved for partial summary judgment on (i) the Academys
15 U.S.C. 1125(d); (ii) the Academys claim for injunctive relief under
Californias Unfair Competition Law (UCL), Cal. Bus. & Prof. Code 17200,
et seq.; and (iii) the Academys claim for attorney fees under Cal. Code of Civil
and law, and does not come close to satisfying GoDaddys initial burden of proving
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dilutive of claim under the ACPA solely based on its mistaken indeed,
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astounding argument that the Academys marks are not famous as a matter of law.
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As an initial matter, GoDaddys motion fails to mention that the Court already
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determined that the question of whether the Academys marks are famous is a
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disputed fact that needs to be tried. Under the law of the case doctrine, GoDaddys
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motion on the dilutive of claim thus fails. Even if the Court reconsiders the
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evidence on fame, the results remain unchanged because there is substantial record
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Second, GoDaddy asserts the Academys UCL claim for injunctive relief is
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moot, and that the Academy lacks Article III standing to assert it, because GoDaddy
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into this hard fought litigation. GoDaddys mootness argument fails because it is
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well settled that this type of voluntary cessation of a challenged practice does not
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deprive a federal court of its power to determine the legality of the practice.
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GoDaddys Article III standing argument fails because the standing doctrine
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focuses on whether the Academy had the requisite stake when it filed this lawsuit in
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May 2010, which was long before GoDaddy purportedly implemented its
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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Cal. Code Civil Proc. 1021.5 may be decided on summary judgment because the
Academy cannot demonstrate that this litigation will confer a significant benefit
upon a large group of people and cannot satisfy the financial burden prong. Under
because the Court has not yet decided this action on the merits. Even if that were
not the case, the Academy has from the outset sought to confer a significant benefit
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contrary to law, and unsupported, as detailed below. Worse, GoDaddy has used
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settlement offers in this action in blatant violation of Federal Rule of Evidence 408
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and before the Court has reached the merits or ruled on damages.
ARGUMENT
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I.
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A.
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GoDaddy argues that AMPAS cannot establish the domain names at issue are
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dilutive of its marks under the ACPA because AMPAS has disclosed no
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evidence to establish that any of the AMPAS Marks are famous. Dkt. 606-1 at
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14 of 33. The Court, however, decided that the issue of fame is a triable issue of
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fact in its June 21, 2013 Order, and GoDaddy provides no basis to disturb that
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decision.
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Since the Academy has elected not to seek restitution under the UCL, it does not
address GoDaddys argument on that subject.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
In 2013, the parties extensively briefed the issue of the fame of AMPAS
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marks in connection with AMPAS motion for partial summary judgment, and each
CSUF,2 24 (citing Dkt. 430 (AMPAS MSJ); Dkt. 381, p. 5-10 (GoDaddy
Opposition); Dkt. 410, p. 10-13 (AMPAS Reply)).3 In June 2013, the Court
concluded that the question of whether the Academys marks are famous is a
disputed fact that needs to be tried. In so ruling, the Court stated: Having
reviewed the evidence in light of the foregoing factors [(i.e., the non-exclusive list
of four factors that a court can assess to determine whether a mark is sufficiently
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recognized as famous)], the Court finds that whether the Academys five marks are
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famous is a triable issue of fact. CSUF, 25 (citing Dkt. 491 (June 21, 2013
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decision and simply regurgitates its earlier argument the June 21st Order
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remains the law of the case and precludes GoDaddys attempt to have a second bite
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at the apple. Under the law of the case doctrine, the Courts earlier decision cannot
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not address and that are, in fact, not present here. See Delta Sav. Bank v. United
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States, 265 F.3d 1017, 1027 (9th Cir. 2001) (holding that law of the case doctrine
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same case) (citing Jeffries v. Wood, 114 F.3d 1484, 1489 (9th Cir. 1997)).4
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denied.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
B.
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3
In its June 21, 2013 Order, the Court correctly observed that a mark is
States. Dkt. 491, pp. 10-11 (quoting 15 U.S.C. 1125(c)(2)(A)). The Court
also correctly stated that the Lanham Act provides a non-exclusive list of four
recognized to be famous:
(i) The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the owner
or third parties.
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(iv) Whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register.
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Id. (quoting 15 U.S.C. 1125(c)(2)(A)). As the Court concluded in June 2013, the
evidence presented by AMPAS on these factors demonstrates that there is a triable
issue of fact.
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AMPAS has introduced substantial evidence regarding the first factor, which
concerns the duration, extent, and geographic reach of advertising and publicity of
AMPAS marks. First, AMPAS has requested judicial notice of self-authenticating
news articles which establish, inter alia, that approximately 40 million viewers
watch the Academy Awards each year in the United States, which prominently
feature AMPAS marks. CSUF 27. These press accounts about the popularity of
the marks, or pop-culture references involving the marks, are properly considered
evidence of fame under the cases upon which GoDaddy relies. E.g., TCPIP
Holding Co. v. Haar Commcns Inc., 244 F.3d 88, 99 (2nd Cir. 2001).5 Second, the
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See also, e.g., Apple, Inc. v. Samsung Elec. Co., Ltd., 2012 WL 2571719, at *7
(N.D. Cal. June 30, 2012).
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
European Unions equivalent of the USPTO agrees that the Academys OSCAR
mark is highly valued due to its worldwide popularity, that it has become the
icon of the top achievement one can get in the motion picture field, and that it has
a financial value that third parties have tried to spoil by trying to transfer it to other
advertising using its marks averaged over $2 million a year from 2007 through
2010, and totaled over $4 million in 2011. Id. 3; see also Dkt. 606-1 at 11 of 33.
Fourth, the reach and fame of the Academys marks is evidenced by the extensive
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magazines such as, for example, People, U.S. Weekly, Entertainment Weekly, and
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Vogue. CSUF 31. Fifth, the reach and fame of the Academy Awards and
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With respect to the second statutory factor the amount, volume, and
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geographic extent of sales of goods or services offered under the mark AMPAS
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has introduced evidence that, between 2006 and 2010, it entered into license
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its marks. CSUF 33.7 GoDaddys own expert admits that this is true. Id.
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Moreover, the evidence shows that each 30-second ad spot run during the Academy
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Awards ceremony garners a significant price, and that these spots are purchased by
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See, e.g., In re Synchronoss Sec. Litig., 705 F. Supp. 2d 367, 374 n.4 (D.N.J.
2010) (The first advertisement for the iPhone was aired . . . during the 79th
Academy Awards); Albanese v. Menounos, 218 Cal. App. 4th 923, 929 (2013) (in
summarizing a case, the court noted that Marlon Brando won two Academy
Awards for best actor); Twitter, Inc. v. Domain Admin, 2014 WL 2926423, at *2
(Admin. Panel, June 15, 2014) (describing an example of Twitters fame by
referring to the wide dissemination of Oscars host Ellen DeGeneres tweet); J.
Choo Limited v. Lai Ruipao, 2011 WL 3800234, at *2 (Admin. Panel Aug. 9, 2011)
(noting that complainants products receive loyal support from celebrities,
including musician and television and film stars, who are often seen wearing
Complainants products at world famous occasions and award ceremonies, such as
the Academy Awards (Oscars).).
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The amount of these payments is reflected in documents that have been filed with
the Court under seal, which are cited in CSUF 33.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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the mark are evidenced by renown dictionaries and encyclopedias. For example,
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This is strong evidence of fame. E.g., B.V.D. Licensing Corp. v. Body Action
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Design, Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) (When a trademark attains
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Oscar trademark is identified as one of the fifteen most recognizable marks in the
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world, which is consistent with the observations of the Ninth Circuit. CSUF 37;
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see Academy of Motion Pictures Arts and Sciences v. Creative House Promotions,
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944 F.2d 1446, 1455 (9th Cir. 1991) (in case about the Academys famous Oscar
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statuette, the Ninth Circuit stated that the Academy Awards has been televised
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annually since 1953, and is seen across the United States and throughout the world;
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that the district court correctly ruled that the Oscar could be considered a
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relatively strong mark because it enjoys recognition among many members of our
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society; and that [t]he mark should be given the strongest possible protection
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admittedly familiar with the Academy Awards and the Oscars. CSUF 38.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
Finally, not only are AMPAS marks registered with the USPTO in
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satisfaction of the fourth factor, but the USPTO has actually used AMPAS marks
AMPAS did not provide a fame survey, and suggests that such a survey is required
to establish fame, (Dkt. 606-1 at 17 of 33), under what this Court has described as
the non-exclusive list of four factors. Dkt. 491 at pp. 10-11 (emphasis added).
GoDaddy is simply wrong: A fame survey is not required, and its absence is not a
basis for granting summary judgment in the face of the substantial evidence that
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AMPAS marks are famous. E.g., Apple, 2012 WL 2571719, at * 8 (The factors
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to be established for fame are non-exhaustive, so survey results are not required. );
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Adidas Am., Inc., v. Payless ShoeSource, Inc., 546 F.Supp.2d 1029 (D. Or. 2008)
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(failure to conduct a fame survey is not dispositive.); Google Inc. v. Am. Blind &
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Wallpaper, 2007 WL 1159950, at *11 (N.D. Cal. Apr. 18, 2007) (same). 8
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II.
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Were Not In The Parked Pages Program, Because The Evidence Shows
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GoDaddy argues the Academy cannot establish that four domain names
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participated in the Parked Pages Program.9 The evidence shows that two of those
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See also Jada Toys Inc. v. Mattel Inc., 518 F.3d 628, 635 (9th Cir. 2007) (a
reasonable jury could find that HOT WHEELS was a famous mark after thirtythree years of use, 350 million dollars spent on advertising, and sales of 3 billion
units); 800JR Cigar, Inc. v. GoTo.com, 437 F. Supp. 2d 273, 294 (D.N.J.2006)
(finding mark famous based on trademark registration, sales, and third-party
recognition without requiring fame survey); Mattel, Inc. v. Internet Dimensions
Inc., 2000 WL 973745, at *3 (S.D.N.Y. July 13, 2000) (holding the term Barbie,
describing the well-known doll, was famous based on, inter alia, its broad exposure
to the American public, Mattels advertising expenditures, Mattels litigation
against would-be violators, and the marks registration with the USPTO); Times
Mirror Magazines, Inc. v Las Vegas Sports News, L.L.C., 1999 WL 124416, at *5
(E.D. Pa. Mar. 4, 1999), aff'd, 212 F.3d 157 (3d Cir. 2000) (The SportingNews is
a famous mark based on its federal registration, duration of use, and financial
investment in advertising and promotion).
9
The Academy notes it first learned of this argument when GoDaddy filed the
present motion because GoDaddys counsel failed to disclose it in his January 2,
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
Parked Pages Program or, at a minimum, that there are genuine disputes of material
fact as to them.10
GoDaddys Parked Pages Program because consumers who entered this domain
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missing after the word Oscar and before the word Movies. CSUF 42. The
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record evidence shows the Academy sent a cease and desist letter, along with a
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screen shot, to GoDaddy on May 28, 2013 regarding the presence of the domain
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The First Amended Complaint should be deemed to conform to this proof, and
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GoDaddys motion as to this domain name should be denied. See, e.g., Fed. R. Civ.
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P. 15(b).
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III.
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A.
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GoDaddy has moved for summary judgment on the Academys UCL claim
for injunctive relief by arguing that the claim is moot. 11 This argument is
2015 communication about this motion. CSUF 54; see L.R. 7-3 (requiring the
movant to advise the non-movant of the substance of the contemplated motion at
least seven days before filing); see also Singer v. Live Nation Worldwide, 2012 WL
123146, at *2 (C.D. Cal. Jan. 13, 2012) (summarily denying summary judgment for
failure to comply with L.R. 7-3).
10
The Academy is no longer pursing the other two domain names in this action
(i.e., INTERNETACADEMYAWARDS.COM and OSCAR-2011.COM).
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GoDaddy also asserts that the Academy is not entitled to restitution under the
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
unavailing because it ignores the relevant legal rules and case law, overlooks the
practice does not deprive a federal court of its power to determine the legality of
the practice. [I]f it did, the courts would be compelled to leave [t]he defendant
free to return to his old ways. Friends of the Earth, Inc. v. Laidlaw
Environmental Services (TOC), Inc., 528 U.S. 167, 170 (2000) (emphasis added)
(citations omitted). Along with its ability to hear the case, the courts power to
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States v. W.T. Grant Co., 345 U.S. 629, 633 (1953); accord Barnes v. Healy, 980
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case has been mooted by the defendants voluntary conduct is stringent: A case
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might become moot if subsequent events made it absolutely clear that the allegedly
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(emphasis added).12 The party asserting mootness i.e., GoDaddy bears the
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heavy burden of persuading the Court that the challenged conduct cannot
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voluntarily abandoned the conduct and has no intention to revive it. E.g., W.T.
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Grant Co., 345 U.S. at 633 (Such a profession does not suffice to make a case
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UCL. The Academy, however, has elected not to pursue restitution under the UCL.
Accordingly, this is a nonissue.
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The California Supreme Court has adopted the same standard. E.g., Marin
County Bd. of Realtors, Inc. v. Palsson, 16 Cal. 3d 920, 929-30 (1976).
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See also Laidlaw, 528 U.S. at 190 (As just noted, a defendant claiming that its
voluntary compliance moots a case bears a formidable burden of showing that it is
absolutely clear the allegedly wrongful behavior could not reasonably be expected
to recur.).
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
moot)14 It also cannot be met where the defendant would remain free to return to
its old ways. E.g., Coral Constr. Co. v. King County, 941 F.2d 910, 928 (9th Cir.
1991) (even if the government [which is afforded far more deference than a private
defendant] is unlikely to reenact the provision, a case is not easily mooted where
provision). Bell v. City of Boise, 709 F.3d 890, 901 (9th Cir. 2013) (Defendants
have failed to establish . . . that the new policy is the kind of permanent change that
future.).15
Courts have applied these established rules to hold that alleged violations of
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the UCL are not mooted by such claims of voluntary cessation. E.g., Jacobsen v.
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Katzer, 535 F.3d 1373, 1377 n.1 (Fed. Cir. 2008) (agreeing with the California
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district courts holding that motion for preliminary injunction was not mooted by
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voluntarily cessation of alleged UCL violation because the court could not find as
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a matter of law that it is absolutely clear that the alleged behavior could not recur);
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(C.D. Cal. Nov. 13, 2008) (holding that UCL claim for injunctive relief was not
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Inc. v. Amazon, Inc., 86 F. Supp. 2d 886, 905, 907 (D. Minn. 1999) (holding that
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UCL and Lanham Act claims for injunctive relief were not mooted by voluntary
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App. 4th 1146, 1165-66 (2000) (holding that voluntary discontinuance did not moot
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UCL claim for injunctive relief because conduct could easily recur in the absence
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Federal courts have consistently rejected bald assertions by defendants that they
would not return to a challenged practice as a basis for denying injunctive relief.
F.T.C. v. Sage Seminars, Inc., 1995 WL 798938, at *6 n.5 (N.D. Cal. Nov. 2, 1995)
(citing cases).
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See also, e.g., Marin County Bd. of Realtors, Inc. v. Palsson, 16 Cal. 3d at 929-30
(holding that action was not moot because there is no assurance that the board will
not reenact it [the alleged unlawful conduct] in the future).
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
of injunctions).16
Here, GoDaddy has not satisfied its heavy and formidable burden. The
Academy filed this lawsuit in May 2010. Dkt. 1 (Complaint). In discovery taken in
implementing that system which it could have done by at least 2007 GoDaddy
has proceeded with (and continues to proceed with) bad faith intent to profit by
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After engaging in this misconduct for years, GoDaddy asserts that in July
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2013 over three years into this lawsuit and only after the Court granted partial
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CSUF 16. In fact, GoDaddy could easily abandon this keyword filter and change
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its plans, unless this Court issues a permanent injunction requiring it to keep a
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keyword filter in place to protect not only the Academys marks but also other
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keyword filter to protect other registered trademarks, which is why its motion and
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filter. Id. 16. In other words, GoDaddy has no intention of ceasing to engage in
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id. 16, 44-46. Under these circumstances, the Court should summarily deny
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See also Ellsworth v. U.S. Bank, N.A., --- F. Supp. 2d ---, 2014 WL 1218833, at
*1, 12, 14-16, 23 (N.D. Cal. March 21, 2014) (finding that UCL claim was not
moot).
17
Despite its reliance on this filter, GoDaddy has refused to respond to most of the
Academys discovery requests about it on privilege grounds. CSUF 48. Not only
is this improper, but it creates additional doubt about GoDaddys unverified claims
concerning the filter.
11
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
The six cases cited by GoDaddy none of which are federal cases or involve
this conclusion. The only one to involve the mootness doctrine even marginally
reflects a decision by the California court of appeal to give deference to the lower
courts conclusion after a full trial that there was no need to make its preliminary
injunction a permanent one. Cisneros v. U.D. Registry, Inc., 39 Cal. App. 4th 548,
557-58, 573-74 (1995). That is nothing like the situation. Furthermore, the other
cases that GoDaddy contends relate to mootness, in fact, do not. The Feitelberg
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and Caro decisions involve the unremarkable rule that a claim for injunctive relief
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does not lie where the wrongful practice ended long before the action is filed.
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Feitelberg v. Credit Suisse First Boston LLC, 134 Cal. App. 4th 997, 1022 (2005);
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Caro v. Proctor & Gamble Co., 18 Cal. App. 4th 644, 660 (1993).19
If Feitelberg and Caro were federal court cases, they might implicate the
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doctrine of initial standing, but not mootness. In describing the distinction between
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its standing and mootness jurisprudence, the Supreme Court has stated: The plain
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lesson of these cases is that there are circumstances in which the prospect that a
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defendant will engage in (or resume) harmful conduct may be too speculative to
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support standing, but not too speculative to overcome mootness. Laidlaw, 528
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U.S. at 190. In contrast to standing, by the time mootness is an issue, the case has
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The public interests at stake in this lawsuit, described in Section IV.B. infra,
provide further supports for why this case is not moot. E.g., W.T. Grant Co., 345
U.S. at 632-33 (holding that the case was not moot since there was a public interest
in having the legality of the practices settled and since the defendant was free to
return to his old ways); Edlestein v. City and County of San Francisco, 29 Cal. 4th
164, 172 (2002) (holding that the mootness doctrine should not be applied in cases
involving an issue of broad public interest).
19
The other decisions cited by GoDaddy have nothing to do with the mootness
doctrine. Madrid v. Perot Sys. Corp., 130 Cal. App. 4th 440, 462 (2005) (affirming
dismissal because the complaint failed to state a claim); Gold v. Los Angeles
Democratic League, 49 Cal. App. 4th 3d 365, 373 (1976) (same); Palo Alto-Menlo
Park Yellow Cab Co., Inc. v. Santa Clara County Transit Dist., 65 Cal. App. 3d
121, 132-33 (1976) (affirming finding that compensatory damages were calculable,
making injunction to force purchase of assets unnecessary).
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
been brought and litigated, often (as here) for years. To abandon the case at an
advanced stage may prove more wasteful than frugal. Id. at 191-92.20
In sum, GoDaddys half-hearted decision over 3 years into this lawsuit and
only after the Academy prevailed on its motions for partial summary judgment to
future cannot be used to escape the type of permanent injunctive relief that
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GoDaddy argues that AMPAS does not have Article III standing to seek
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injunctive relief under the UCL for the same reason namely, because it claims to
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contrary to law because the Article III standing doctrine is focused on whether the
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party invoking jurisdiction had the requisite stake in the outcome when the suit was
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filed. Davis v. Federal Election Commn, 554 U.S. 724, 734 (2008); see also, e.g.,
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Valle del Sol Inc. v. Whiting, 732 F.3d 1006, 1018 n.11 (9th Cir. 2013) (conduct
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after a complaint is filed goes to mootness rather than standing) (citing Laidlaw,
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528 U.S. at 190-92). GoDaddy admittedly did not implement its so-called
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AMPAS-specific keyword filter until July 2013, which is over three years after
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the Academy filed this lawsuit. CSUF 16. GoDaddy has not (and cannot) put
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The other cases cited by GoDaddy are simply irrelevant to voluntary cessation
during a pending lawsuit. See Madrid, 130 Cal. App. 4th at 462 (complaint failed to
state a claim); Gold v. Los Angeles Democratic League, 49 Cal. App. 4th 3d 365,
373 (1976) (same); Palo Alto-Menlo Park Yellow Cab Co., Inc. v. Santa Clara
County Transit Dist., 65 Cal. App. 3d 121, 132-33 (1976) (affirming trial courts
finding that compensatory damages were calculable, making injunction to force
purchase of assets unnecessary).
21
It is well established that the legal system should be protected against
manipulation by a party who might contrive to moot cases that otherwise would be
likely to produce unfavorable precedents. Dow Jones & Co. v. Ablaise, Ltd., 583
F. Supp. 2d 41, 44 (D.D.C. 2008).
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
forth any argument or evidence to show that the Academy lacked standing when it
IV.
Academys costs and attorneys fees pursuant to, inter alia, California Code of
Civil Procedure 1021.5. Section 1021.5 entitles a prevailing party to costs and
attorneys fees where (1) the litigation resulted in the enforcement of an important
right affecting the public interest; (2) a significant benefit, whether pecuniary or
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nonpecuniary, has been conferred on the general public or a large class of people;
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and (3) the necessity and financial burden of private enforcement are such as to
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1214 (2010). Whether a party has met these requirements for an award of fees and
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the reasonable amount of such an award (including any enhancements) is left to the
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A.
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dismiss the Academys request for attorneys fees under 1021.5 on summary
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judgment, before the Court has fully and finally resolved any of the Academys
22
claims on the merits and before the Academy has even moved for those fees and
23
costs. To support this meritless argument, GoDaddy relies on decisions that either
24
undermine its argument or are inapposite. For example, GoDaddy cites to an Idaho
25
decision in which the court found that plaintiff was entitled to attorney fees after it
26
had concluded that Plaintiff has prevailed [on the merits], at least with respect to
27
liability. Manzon v. Stant Corp., 202 F. Supp. 2d 851, 863 (S.D. Id. 2002); see
28
also Top Banana, LLC v. Doms Wholesale & Retail Center, Inc., 2005 WL
14
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
1149774, at *2-3 (S.D. N.Y. May 16, 2005) (after finding claimants prevailed on
the merits, court concluded the parties contract entitled claimants to fees); Am.
Auto Ins. Co. v. Grimes, 2004 WL 246989, at *17 (N.D. Tex. Feb. 10, 2004)
inappropriate on the issue of attorney fees); Resolution Trust Corp. v. Tassos, 764
F. Supp. 442, 443 (S.D. Tex. 1990) (after merits decision, court could determine the
amount of fees to award based on declarations or experience). The other case cited
by GoDaddy is inapposite because it simply stands for the proposition that attorney
fees are not available in admiralty suits. Am. Natl Fire Ins. Co. v. Kenealy, 72
10
11
12
fees under 1021.5 should not be decided until after the court has made a
13
14
4th 553, 583 (2004) (Generally speaking, by the time of the commencement of fee
15
litigation in section 1021.5, the first and perhaps most substantial component of
16
risk, that of not being a successful party, has been eliminated.); Bullock v. City and
17
County of San Francisco, 221 Cal. App. 3d 1072, 1094 (1990) (finding that
18
19
unresolved).22
20
B.
21
22
GoDaddy argues the Academy will not be able to satisfy the significant
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24
25
26
27
28
22
See also, e.g., Bright v. 99cents Only Stores, 189 Cal. App. 4th 1472, 1482 n.9
(2010) (finding request for attorney fees premature before decision on the merits);
Irvine Valley College Academic Senate v. Board of Trustees of South Orange
County Community College Dist., 129 Cal. App. 4th 1482, 1492 (2005) (same).
15
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
request relief on behalf of the public or a large class of persons. The Academy has
famous and valuable marks (Dkt. 170 (Second Amended Complaint) 30); (ii)
GoDaddy knew that these business practices were harming trademark holders;
(id. 32); (iii) GoDaddy had the ability to protect against this illegal conduct, but
did not (id. 31, 32); (iv) these business practices offend established public
policy and are substantially injurious to business owners and commerce within
the State of California (id. 70, 73); (v) [t]he general public has been damaged
10
by these business practices (id. 72); and (vi) the Academy seeks an order
11
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practices. Id. 74; see also CSUF 17. The Academy has thus sought to enjoin
13
14
15
The Academy has adduced evidence that supports these allegations and
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17
This evidence demonstrates that GoDaddys illicit business practice is the bread and
18
butter of its profitable Parked Pages Program. Indeed, GoDaddy elected not to
19
implement a trademark filter because it would have resulted in the removal of the
20
21
22
GoDaddys widespread misconduct has harmed and will continue to harm (i) a
23
large number of trademark owners whose marks are being unlawfully used in
24
domain names in GoDaddys Parked Pages Program; and (ii) members of the
25
general public who are inconvenienced and confused as a result of being directed to
26
infringing parked pages. See id 44-46, 49-51; S. REP. 106-140 (1999), 1999
27
28
commerce, and the goodwill of valuable U.S. brand names, upon which consumers
16
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
increasingly rely to locate the source of genuine goods and services on the
Internet.).23
At the conclusion of this lawsuit, the Court will be able to issue a permanent
3
4
filter to protect against the inclusion in its Parked Pages Program of any domain
names that are confusingly similar to any and all registered trademarks. See, e.g.,
Wilner v. Sunset Life Ins. Co., 78 Cal. App. 4th 952, 969 (2000) (UCL claim for
injunctive relief is valid not only on behalf of plaintiff but on behalf of all
10
11
Corsey, 89 Cal. App. 2d 105, 113 (1948) (under the UCL, courts are entitled to
12
restrain acts of the same type or class as those unlawful acts which it found had
13
been committed, and whose commission in the future, unless enjoined, would be
14
clearly violative of the public interest).24 This type of injunction would confer a
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over a billion dollars in revenue and has the resources to make litigation both time
19
consuming and costly. As reflected by the nearly five years that this case has been
20
pending, GoDaddy which had $1.1 billion of revenue in 2013 (CSUF 52) has
21
made it difficult for this important issue to be fully and finally resolved while it has
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
seeks to confer a substantial benefit on the general public. See, e.g., Bouvia v.
County of Los Angeles, 195 Cal. App. 3d 1075, 1084 (1987) (It is well established
that the enforcement of existing rights, as well as the creation of new rights, may
serve as a basis for awarding fees under the private attorney general doctrine.).
C.
improper.
insufficient, as matter of law, to allow the Court to award attorneys fees to the
10
Academy under 1021.5. This argument is premature and without merit. Worse
11
yet, GoDaddy has exploited this premature argument to disclose the Academys
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13
14
15
1.
16
The financial burden prong of 1021.5 requires the Court to determine, in its
17
sound discretion, whether or not the cost of the claimants legal victory transcends
18
his personal interest, and is focused not only on the costs of the litigation but also
19
any offsetting financial benefits that the litigation yields or reasonably could have
20
21
(2010). The California Supreme Court has delineated a specific method for
22
23
24
App. 4th 382, 402 (2011) (citing Whitley, 50 Cal. 4th at 1215).
25
To estimate the value of the case at the time vital litigation decisions were
26
being made based on objective measures, a court must consider two components.
27
Id. The court first must determine the monetary value of the benefits actually
28
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
themselves. Whitley, 50 Cal. 4th at 1215. Once the court determines the value of
the gains actually attained it must discount these total benefits by some estimate of
the probability of success at the time the vital litigation decisions were made which
Because the gains attained and the vital litigation decisions that produced the
successful outcome cannot be identified until after there has been a successful
outcome, the benefit side of the cost-benefit analysis cannot be assessed until after
After making its objective determination of the estimated value, a court must
10
then turn to the actual costs of the litigation the legal fees, deposition costs,
11
expert witness fees, etc. Id. The actual litigation costs involved in obtaining a
12
successful outcome also cannot be determined until after the Court has reached the
13
merits and there is a successful outcome. The final step of the cost-benefit analysis
14
is to place the estimated value of the case beside the actual cost and make the
15
16
order to encourage litigation of the sort involved in this case. Id. It will be
17
desirable and appropriate except where the expected value of the litigants own
18
monetary award exceeds by a substantial margin the actual litigation costs. Id.
19
(emphasis added).
20
Because the merits of the Academys claims have not yet been resolved, the
21
Court cannot even begin to perform the required cost-benefit analysis. For this
22
reason alone, GoDaddys motion for summary judgment based on the financial
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25
26
2.
27
exceeds by a substantial margin the actual costs of this litigation because the
28
Academy seeks the maximum statutory damages of $100,000 per domain name.
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
analysis. Indeed, the first component of the benefit side of this analysis is based
on the gains actually attained and not on the gains sought. Robinson v. City of
Chowchilla, 202 Cal. App. 4th 382, 402 (2011) (quoting Whitley, 50 Cal. 4th at
either on liability for each domain name or on obtaining the maximum amount of
statutory damages as opposed to the minimum amount of $1,000 per domain name.
See 15 U.S.C. 1117(d) (under the ACPA, the court may award statutory damages
in the amount of not less than $1,000 and not more than $100,000 per domain
10
name, as the court considers just). This too is required under the cost-benefit
11
analysis. Furthermore, GoDaddy wholly ignores the fact that this hard fought case
12
has been litigated for nearly five years, resulting in substantial actual costs that
13
continue to accrue because the case has yet to be resolved. CSUF 53.
14
15
16
3.
GoDaddy also claims that expected value of the Academys monetary award
17
exceeds by a substantial margin the actual costs of this litigation because the
18
Academy made various settlement offers in 2010, 2012, and 2013. GoDaddys
19
20
Rule 408(a) of the Federal Rules of Evidence. Rule 408(a) prohibits the admission
21
22
claim. Fed. R. Evid. 408(a). That is exactly what GoDaddy has sought to do here:
23
24
disprove the expected value of the Academys claims. See CSUF 20-23.
25
Moreover, GoDaddy and its counsel knew or reasonably should have known
26
that this evidence was inadmissible because, inter alia, all of the offers were
27
conveyed by and to attorneys of record in this action (Dkt. 606-3 (McKown Decl.)
28
at 17-20); the March 18, 2013 offer occurred during mediation (id. 19); and the
20
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
October 8, 2013 offer was in a letter stating that it was a Rule 408 Confidential
that the parties make additional efforts to settle the case. Id., Ex. G (emphasis in
improper, they can even expose a party to sanctions and its counsel to sanctions and
disqualification. See Mackey v. Whitehall Labs., Inc., 681 F. Supp. 591, 591-92
(N.D. Ind. 1987) (If a lawyer were to attempt such a tactic [of filing letters
order.); Comment to Rule 408 (2006 Amend.) (proof of statements and offers
10
made in settlement would often have to be made through the testimony of attorneys,
11
12
13
14
proposals the most recent of which is well over a year old and thus stale to
15
shortcut the cost-benefit analysis required by the Court. That is simply not
16
permitted under California law. See supra Section IV.B.1. (citing cases).25 Second,
17
GoDaddy once again ignores the fact that this case has been pending for nearly five
18
years, resulting in substantial actual costs that continue to accrue. CSUF 53.
D.
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20
21
22
23
motivated to file this suit by its own interest. That argument fails because it is
24
well established that a plaintiffs motivation for filing a lawsuit is irrelevant to the
25
26
27
28
25
GoDaddys citation to Satrap is plainly distinguishable because (i) the trial court
there conducted a cost-benefit analysis after trial; (ii) the trial court there relied on
settlement demands made at the commencement of and during the last week of trial
which is nothing like the situation here; and (iii) a state court decision does not
preempt Rule 408. Satrap v. PG&E Co., 42 Cal. App. 4th 72, 76, 79-80 (1996).
21
PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
Gorman, 147 Cal. App. 4th Supp. 1, 10 (2006) (Even if a litigant is initially
GoDaddy has not introduced any admissible evidence to support its contention. See
6
7
8
For the foregoing reasons, the Academy respectfully requests that the Court
issue an order denying GoDaddys motion for partial summary judgment.
9
Respectfully submitted,
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT