Calcar Inc. et al v. The California Cars Initiative, Inc. et al, No. 3:2008mc80083 - Document 12 (N.D. Cal. 2008)

Court Description: Memorandum in Opposition re 1 MOTION to Compel Rule 30(b)(6) Deposition Testimony From Third Party Google Inc. filed byGoogle Inc.,. (Attachments: # 1 Proposed Order Denying Plaintiff Calcar's Motion to Compel)(Herrick, Rachel) (Filed on 5/2/2008)

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Calcar Inc. et al v. The California Cars Initiative, Inc. et al Doc. 1 1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Michael T. Zeller (Bar No. 196417) 2 michaelzeller@quinnemanuel.com 865 South Figueroa Street, 10th Floor 3 Los Angeles, California 90017-2543 Telephone: (213) 443-3000 4 Facsimile: (213) 443-3100 5 Rachel M. Herrick (Bar No. 191060) rachelherrick@quinnemanuel.com 6 555 Twin Dolphin Drive, Suite 560 Redwood Shores, California 94065-213 7 Attorneys for Third-Party Google Inc.. 8 9 10 11 12 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION CALCAR, INC., a California corporation; and 13 AMERICAN CALCAR, INC., a Delaware corporation, 14 Plaintiffs, 15 vs. 16 THE CALIFORNIA CARS INITIATIVE, 17 INC., an unknown business entity; and FELIX KRAMER, and individual, 18 Defendants. 19 CASE NO. 3:08-mc-80083 MHP 20 Date: May 23, 2008 Time: 2:00 pm CTRM: 15 21 GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL RULE 30(B)(6) DEPOSITION TESTIMONY FROM THIRD PARTY GOOGLE INC. [GOOGLE INC.’S CROSS-MOTION FOR PROTECTIVE ORDER FILED CONCURRENTLY HEREWITH] [DECLARATION OF ADAM BAREA FILED CONCURRENTLY HEREWITH] 22 23 24 25 26 27 28 Case No. 3:08-mc-80083 MHP GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL Dockets.Justia.com 1 TABLE OF CONTENTS 2 Page 3 4 STATEMENT OF ISSUES TO BE DECIDED (LOCAL RULE 7-4(A)(3)) ..................................1 5 PRELIMINARY STATEMENT....................................................................................................1 6 FACTUAL AND PROCEDURAL HISTORY ..............................................................................2 7 LEGAL STANDARD ...................................................................................................................4 8 ARGUMENT................................................................................................................................5 9 I. 10 11 12 CALCAR HAS FAILED TO ESTABLISH THE RELEVANCE OF THE DEPOSITION TESTIMONY IT SEEKS ...........................................................................5 A. The Subjects Noticed For Google’s Third-Party Deposition Are Irrelevant To The Claims and Defenses In The Underlying Case. ...........................................5 B. Calcar’s Claim That Google Could Provide Relevant Testimony Regarding Consumer Confusion Fails, Because Calcar Did Not Include Such Topics In Its Rule 30(b)(6) Deposition Subpoena And Has Not Shown That Google Has Such Knowledge. ............................................................................................7 13 14 15 16 17 18 19 20 II. CALCAR HAS NOT MET ITS BURDEN UNDER LOCAL RULE 37-2 TO SHOW THAT ITS SUBPOENA MEETS THE REQUIREMENTS OF FED. R. CIV. P. 26(B)(2) ................................................................................................................9 A. Plaintiff Can Obtain The Discovery It Seeks From Defendant TCCI Directly, Or From Publicly Available Sources........................................................9 B. Plaintiff Has Failed To Show That The Burden Or Expense Of The Proposed Discovery Outweighs Its Likely Benefit................................................ 11 CONCLUSION........................................................................................................................... 13 21 22 23 24 25 26 27 28 Case No. 3:08-mc-80083 MHP -iGOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 TABLE OF AUTHORITIES 2 3 4 5 Page Cases AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)................................................................................................ 7, 8 6 Cacique, Inc. v. Robert Reiser & Co., Inc., 169 F.3d 619 (9th Cir. 1999)................................................................................................ 4, 6 7 Dart Industries Co. v. Westwood Chemical Co., 8 649 F.2d 646 (9th Cir. 1980).............................................................................................. 5, 11 9 Henry v. Med-Staff, Inc., 2007 WL. 1998653 (C.D. Cal. 2007) .......................................................................................7 10 Nemirofsky v. Seok Ki Kim, 11 523 F. Supp. 2d 998 (N.D. Cal. 2007)............................................................................ 4, 9, 11 12 Perfumebay.com Inc. v. EBAY, Inc., 506 F.3d 1165 (9th Cir. 2007)..................................................................................................8 13 Pfizer, Inc. v. Mylan Labs, Inc., 14 2003 U.S. Dis. LEXIS 24806 (S.D.N.Y. Dec. 17, 2003). ................................................. 12, 13 15 Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)..................................................................................................8 16 Unigene Laboratories, Inc. v. Apotex, Inc., 17 2007 WL. 2972931 (N.D. Cal. 2007) .......................................................................................9 18 Union Bank of California 401(K) Plan v. Hansen (In re Coan), 2007 WL. 128010 (N.D. Cal. 2007).........................................................................................9 19 20 Statutes 21 Fed. R. Civ. P. 26 ..........................................................................................................................9 22 Fed. R. Civ. P. 26(b).................................................................................................................. 4, 5 23 Fed. R. Civ. P. 26(b)(2) ............................................................................................................. 5, 9 24 Fed. R. Civ. P. 26(b)(2)(C)(iii) .............................................................................................. 11, 12 25 Fed. R. Civ. P. 26(b)(2)(C)............................................................................................................9 26 Fed. R. Civ. P. 26(c).................................................................................................................... 13 27 Fed. R. Civ. P. 30(b)(6) ........................................................................................................... 7, 10 28 Fed. R. Civ. P. 45 ........................................................................................................................ 13 Case No. 3:08-mc-80083 MHP -iiGOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 Fed. R. Civ. P. 45(c)(3) ............................................................................................................... 13 2 Local Rules 3 Civil Local Rule 37-2 ................................................................................................................ 5, 9 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 3:08-mc-80083 MHP -iiiGOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 2 Statement of Issues to Be Decided (Local Rule 7-4(a)(3)) 1. Whether non-party Google, whose only connection to the underlying litigation is a 3 philanthropic grant to the defendant TCCI in 2007, and which has no knowledge relevant to the 4 claims or defenses in the underlying trademark infringement case, should be compelled to appear 5 for a Rule 30(b)(6) deposition in such circumstances. 6 7 Preliminary Statement 8 The underlying action in this case is a trademark infringement claim by Calcar, Inc. 9 (“Calcar”) against The California Cars Initiative (“TCCI”), a non-profit organization devoted to 10 the development of fuel-efficient hybrid vehicles. Google Inc. (“Google”) is not a party to that 11 case, and its only connection to TCCI or Calcar is a philanthropic grant by Google.org to TCCI. 12 Despite Google’s lack of any relevant connection to TCCI and its lack of knowledge concerning 13 any matter relevant to the underlying action, Calcar served Google with two subpoenas. This 14 includes the deposition subpoena at issue in this miscellaneous action, by which Calcar insists that 15 Google educate a corporate representative and sit for a Rule 30(b)(6) deposition regarding the 16 grant to TCCI, and agreements and communications related thereto. Calcar’s deposition subpoena is improper, and its motion to compel should be denied. 17 18 Calcar’s trademark infringement claim against TCCI will sink or swim based on the presence or 19 absence of consumer confusion regarding use of the trademark(s) in question. Calcar has 20 categorically failed to show how a Rule 30(b)(6) deposition of Google on the noticed deposition 21 topics could possibly yield information relevant to the consumer confusion issue. Worse, the 22 relevance arguments Calcar does make have nothing to do with the deposition topics identified in 23 the subpoena itself. As Calcar already knows, aside from the grant, Google has no relationship 24 with TCCI, including any advertising relationship, nor any involvement with TCCI’s business or 25 marketing practices. The discovery Calcar seeks would be duplicative, irrelevant, burdensome, 26 and a waste of time for all parties involved. It also appears to have been pursued by Calcar for no 27 reason other than to burden philanthropic giving to TCCI by parties such as Google.org. Such 28 misuse of the subpoena power should not be accepted. Case No. 3:08-mc-80083 MHP -1GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 Calcar’s motion to compel a deposition of Google regarding Google.org's philanthropic 2 grant to TCCI should be denied. 3 Factual and Procedural History 4 Google.org is the philanthropic arm of Google Inc. and offers grants and other support to 5 6 organizations acting in the public interest. See http://www.google.org/about.html. The underlying 7 action—to which Google is not a party—is a federal trademark infringement suit pending in the 1 8 Central District of California. The plaintiff in the underlying action is Calcar, Inc., a company 9 whose publicly available website describes its “main products” as “[p]rinted brochures and 10 booklets” that “are not designed to be read, their [sic] designed to answer questions people have 11 about” their automobiles. See http://www.calcar.net/calcar/products.asp. The defendants are The 12 California Cars Initiative (“TCCI”), and its founder, Felix Kramer. TCCI is a “Palo Alto-based 13 nonprofit startup of entrepreneurs, engineers, environmentalists and consumers promoting 14 100+MPG plug-in hybrid electric vehicles (PHEVs).” See http://www.calcars.org/about.html. Per 15 Calcar’s motion to compel, Calcar has alleged trademark infringement claims against TCCI based 16 on TCCI’s alleged use of the name Calcars and domain name calcars.org, which Plaintiff contends 17 may cause consumers confusion with Plaintiff’s name. TCCI does not buy advertising from Google or sell advertising to Google. See Declaration 18 19 of Adam Barea, filed herewith, ¶ 12 (“Barea Decl.”). TCCI does not participate in any of 20 Google’s advertising programs (such as AdSense). See id. ¶ 13. Google is not involved in 21 TCCI’s business or marketing practices. See id. ¶ 14. Google is not a customer of TCCI. See id. 22 Google’s only connection to TCCI is that Google.org provided a philanthropic grant to TCCI in 23 2007. See id. ¶¶ 4, 12-14. Nevertheless, on March 18, 2008, Plaintiff served Google with 24 subpoenas for documents and deposition testimony. See Declaration of G. Warren Bleeker in 25 1 The underlying action is denominated Calcar, Inc. and American Calcar, Inc. v. The California Cars Initiative, Inc. and Felix Kramer, Civil Action Case No. 8:07-cv-00723 (C.D. 27 Cal.). Plaintiff’s Motion to Compel treats “Calcar, Inc.” and “American Calcar, Inc.” as the same entity, so this Opposition will do the same. 28 26 Case No. 3:08-mc-80083 MHP -2GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 Support of Plaintiff’s Motion to Compel, ¶ 3 (“Bleeker Decl.”). Subsequently, Google engaged in 2 several meet-and-confer efforts with Plaintiff regarding both subpoenas. See Bleeker Decl. ¶¶ 53 13; Barea Decl. ¶¶ 6-8, 11. On April 4, 2008, Google indicated that it would likely produce 4 documents responsive to the subpoena for documents, but that it did not believe a deposition of 5 Google was warranted or necessary. Bleeker Del. ¶ 5; Barea Decl. ¶ 6. Later that same day, 6 Google faxed written objections to the deposition subpoena to Plaintiff’s counsel. Bleeker Decl. ¶ 7 7. Also that same day, Google received a facsimile from Plaintiff’s counsel Warren Bleeker 8 indicating that, based on Google’s telephonic representation that it would not produce a witness 9 for the deposition, Mr. Bleeker would not travel to San Francisco, California, for a deposition. 10 Bleeker Decl. ¶ 8; Barea Decl. ¶ 7. 11 On April 9, 2008, Google confirmed with Plaintiff’s counsel that it would produce 12 documents responsive to the document subpoena. Bleeker Decl. ¶ 11; Barea Decl. ¶ 8. Google 13 further stated its belief that the documents themselves would be sufficient to give Plaintiff the 14 information he sought, especially given Google’s lack of involvement in the issues raised in the 15 underlying litigation. Barea Decl. ¶ 8. Google thus requested that the deposition issue be deferred 16 until Plaintiff had the opportunity to review the documents. Bleeker Decl. ¶ 11; Barea Decl. ¶ 8. Google produced responsive documents to Plaintiff on April 11, 2008.2 Bleeker Decl. ¶ 17 18 12. Google’s production was 47 pages, and consisted of TCCI’s initial grant proposal (dated 19 February 25, 2007), the Grant Agreement (dated March 23, 2007), the grant letter from 20 Google.org (dated April 23, 2007), a status report from TCCI (dated February 15, 2008), an 21 affidavit of Felix Kramer regarding the grant (dated February 21, 2008), and a handful of assorted 22 emails. Barea Decl. ¶ 9. Despite the clear adequacy of the documents for its purposes, and 23 Google’s lack of material connection to the matters presented by the underlying litigation, Plaintiff 24 continued to press for an unnecessary deposition under Rule 30(b)(6). Barea Decl. ¶ 11; see also 25 Bleeker Decl. ¶ 13. In subsequent meet-and-confer efforts, on April 17, 2008, Plaintiff’s counsel 26 27 28 2 Google supplemented its production with two additional responsive documents on April 28, 2008. Barea Decl. ¶ 9. Case No. 3:08-mc-80083 MHP -3GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 instructed Google’s in-house counsel not to bother filing a motion for protective order precluding 2 the deposition, because Plaintiff intended to move to compel the deposition. Barea Decl. ¶ 11; see 3 also Bleeker Decl. ¶ 13. Google’s counsel again asked Plaintiff’s counsel what relevant 4 information it believed Google had regarding the litigation. Plaintiff’s counsel declined to identify 5 anything specific, instead referring Google’s counsel to Calcar’s soon-to-be-filed moving papers. 6 Barea Decl. ¶ 11. 7 8 9 Legal Standard This Court “has discretion to determine whether to grant a motion to compel.” Nemirofsky 10 v. Seok Ki Kim, 523 F.Supp.2d 998, 1000 (N.D. Cal. 2007) (citing Garrett v. City and County of 11 San Francisco, 818 F.2d 1515, 1519 (9th Cir. 1987)). The Court’s exercise of that discretion is 12 guided by the merits of the underlying discovery sought. Under Rule 26(b), discovery is 13 constrained by relevance. If information is irrelevant, mandating that discovery be taken 14 regarding that irrelevant information is “a per se abuse of discretion.” Cacique, Inc. v. Robert 15 Reiser & Co., Inc., 169 F.3d 619, 622 (9th Cir. 1999) (vacating discovery order mandating 16 discovery of irrelevant information). The Federal Rules further require “that when determining 17 the appropriateness of discovery requests courts should consider whether the discovery is 18 duplicative or overly burdensome and whether the burden and expense of discovery outweighs the 19 benefit.” Nemirofsky, 523 F.Supp.2d at 1000 (citing Fed. R. Civ. P. 26(b)(2)). This Court’s Local 20 Rule 37-2 further requires that a motion to compel “must detail the basis for the party’s contention 21 that it is entitled to the requested discovery and must show how the proportionality and other 22 requirements of FRCivP 26(b)(2) are satisfied.” Federal courts in this District and elsewhere have long recognized that the Federal Rules 23 24 do not permit a party to utilize the discovery process to conduct a “fishing expedition.” See, e.g., 25 Sathianathan v. Smith Barney, Inc., 2007 WL 2417370, at *6 (N.D. Cal. 2007) (granting 26 protective order against document “requests [that] are nothing more than a fishing expedition”); 27 Milazzo v. Sentry Ins., 856 F.2d 321, 322 (1st Cir. 1988). 28 Case No. 3:08-mc-80083 MHP -4GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 It is also “well established that nonparties to litigation enjoy greater protection from 2 discovery than normal parties,” and “[t]he standards for nonparty discovery … require a stronger 3 showing of relevance than for simple party discovery.” Laxalt v. McClatchy, 116 F.R.D. 455, 458 4 (D. Nev. 1986). See also Dart Industries Co. v. Westwood Chemical Co., 649 F.2d 646, 649 (9th 5 Cir. 1980) (holding that discovery should be “limited” in order to “protect third parties from 6 harassment, inconvenience, or disclosure of confidential documents”) (citation omitted). 7 Argument 8 9 The Court should deny Plaintiff Calcar’s Motion to Compel for several reasons. Calcar 10 has failed to establish that the discovery it seeks from third-party Google—a philanthropic donor 11 to defendant TCCI— is even remotely relevant to Calcar’s underlying trademark infringement 12 case, or reasonably calculated to lead to admissible evidence in that case. Fed. R. Civ. P. 26(b). 13 Relying solely on attorney argument and bare assertions, Calcar provides no evidence that would 14 entitle it to discovery of the testimony it seeks. Worse, Calcar’s relevance arguments do not track 15 the deposition topics identified in the subpoena itself—in apparent recognition that the topics it 16 did notice are irrelevant. Calcar may not seek to compel testimony it never properly asked for (via 17 subpoena) in the first place. Calcar has also violated Local Rule 37-2 by failing to explain why it 18 is entitled to the requested discovery, and how it has satisfied Rule 26(b)(2)’s limitations on the 19 scope of discovery. In truth, the discovery it seeks is duplicative and overly burdensome, and the 20 burden and expense of this discovery far outweighs any tenuous benefit to Calcar. Calcar’s 21 motion should be denied. 22 I. CALCAR HAS FAILED TO ESTABLISH THE RELEVANCE OF THE 23 DEPOSITION TESTIMONY IT SEEKS 24 A. 25 26 The Subjects Noticed For Google’s Third-Party Deposition Are Irrelevant To The Claims and Defenses In The Underlying Case. Plaintiff has articulated no plausible theory of relevance of the testimony sought in its 27 deposition subpoena to the matters at issue in Calcar’s underlying trademark infringement case 28 Case No. 3:08-mc-80083 MHP -5GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 against TCCI. Plaintiff’s deposition subpoena identified the following five subject matters for 2 testimony: 3 1. Any agreements or contracts between GOOGLE and TCCI 4 2. Any agreements or contracts between GOOGLE and Felix Kramer. 5 3. Any COMMUNICATIONS between GOOGLE and TCCI. 6 4. Any COMMUNICATIONS between GOOGLE and Felix Kramer. 7 5. The Google.org grant to TCCI to promote plug-in hybrid vehicle education. 8 Barea Decl., Exh. A (Subpoena for Testimony). Plainly, none of these topics—communications 9 and agreements between Google and TCCI or Kramer and related to Google.org’s philanthropic 10 grant—has any bearing on whether TCCI has infringed Calcar’s trademarks. 11 As Google’s document production in this action confirms, Google’s connection to TCCI is 12 minimal and its connection to the issues of this case is non-existent. Google awarded a $200,000 13 philanthropic grant to defendant TCCI in 2007. Google has already produced the documents 14 related to the grant, including TCCI’s grant proposal, the grant agreement, a grant letter from 15 Google.org, a status report from TCCI, an affidavit regarding the grant, and emails. 3 See Barea 16 Decl. ¶ 9. Google has no other relationship with TCCI. Accordingly, Google should not be 17 compelled to provide testimony regarding topics (such as Google’s provision of the charitable 18 grant) that are irrelevant to whether defendants are infringing Calcar’s trademarks in their ongoing 19 business or marketing activities. See Cacique, Inc. v. Robert Reiser & Co., Inc., 169 F.3d 619, 20 622 (9th Cir. 1999). 21 22 23 24 25 26 3 Many of the documents that Google produced to Calcar had already been produced by 27 defendant TCCI earlier in this action—making this discovery both irrelevant and duplicative. See Barea Decl. ¶ 10. 28 Case No. 3:08-mc-80083 MHP -6GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 B. Calcar’s Claim That Google Could Provide Relevant Testimony Regarding 2 Consumer Confusion Fails, Because Calcar Did Not Include Such Topics In Its 3 Rule 30(b)(6) Deposition Subpoena And Has Not Shown That Google Has 4 Such Knowledge. 5 Instead of justifying the relevance of the enumerated deposition topics (including the 6 philanthropic grant) to this case, which it cannot,4 Calcar’s motion points to trademark 7 infringement jurisprudence, and strains that “Google’s deposition testimony is relevant to at least 8 three of the eight Sleekcraft factors—strength of the mark, evidence of actual confusion and 9 marketing channels used.” See Motion at 7:19-21 (referencing AMF, Inc. v. Sleekcraft Boats, 599 10 F.2d 341, 348-349 (9th Cir. 1979) (enumerating factors to be considered in a trademark 11 infringement case)). 12 Fatal to Calcar’s motion, however, none of these consumer confusion issues was identified 13 by Calcar as designated topics in its Rule 30(b)(6) deposition subpoena, and thus, none are within 14 the scope of any deposition of Google. See Barea Decl., Exh. A; see also Fed. R. Civ. P. 30(b)(6) 15 (party “must describe with reasonable particularity the matters for examination”). Calcar’s related 16 argument that Google’s testimony “will provide information regarding placement and confusion of 17 the CALCARS mark resulting from Internet searches using Google’s search engine” (Motion to 18 Compel at 7) fails for this same reason. That topic appears nowhere in Calcar’s deposition 19 subpoena. See Barea Decl., Exh. A. Likewise, Calcar’s suggestion that “Google’s deposition 20 testimony will provide evidence of the different marketing channels used by Defendants in 21 promoting the infringing mark” (Motion to Compel at 7-8) suffers from this same infirmity. 22 Indeed, the terms “consumer confusion,” “marketing channels,” “the CALCARS mark,” “search 23 results,” “search engine” and “google.com” do not appear anywhere on face of the subpoena. See 24 Barea Decl., Exh. A. Calcar’s attempt to make relevance arguments based on subject matters not 25 4 Indeed, by failing to argue for the relevance of the subject matters enumerated in its deposition subpoena, Plaintiff has effectively conceded the point. See, e.g., Henry v. Med-Staff, 27 (footnote continued) 26 28 Case No. 3:08-mc-80083 MHP -7GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 even mentioned in its deposition subpoena cannot warrant compelling Google to appear for 2 deposition and should be disregarded outright. 3 Second, even if these topics were listed on the subpoena (which they are not), CalCar has 4 made no showing that Google has such knowledge—and indeed, Google does not. As Calcar 5 stated in its moving papers, the “key issue in any trademark infringement action is ‘the likelihood 6 of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the 7 source of the products.’” Motion to Compel at 6 (citation omitted). However, Google is not a 8 customer of TCCI, nor is it engaged in any marketing for TCCI. See Barea Decl. ¶ 14. Further, 9 TCCI does not buy advertising from Google or sell advertising to Google, nor does TCCI 10 participate in any of Google’s advertising programs (such as AdSense). See id. ¶¶ 12-13. Calcar 11 has presented no contrary evidence, because it has none. 12 Finally, even if Calcar were to stick to the designated topics, as it must, Calcar fails to 13 explain how the information Google does possess regarding the private philanthropic grant to 14 TCCI by Google.org could possibly have any bearing on the three Sleekcraft factors it identified. 15 As Calcar itself states, the “key issue” regarding the strength of a mark is consumer confusion. 16 The ordinary method for demonstrating the strength of a mark and likelihood of confusion is to 17 take a survey of consumers in the relevant market. See, e.g., Playboy Enterprises, Inc. v. Netscape 18 Communications Corp., 354 F.3d 1020, 1026 n.28 (9th Cir. 2004) (“Surveys are commonly 19 introduced as probative evidence of actual confusion.”); Perfumebay.com Inc. v. EBAY, Inc., 506 20 F.3d 1165, 1172 (9th Cir. 2007) (expert developed a consumer survey for eBay “to measure the 21 extent to which the word ‘bay’ used in conjunction with a common name causes or is likely to 22 cause confusion, ... or dilution.”). Whether Google.org has given a grant to TCCI has no bearing 23 on whether consumers recognized Plaintiff’s mark or might be confused by Defendant’s mark, or 24 whether consumers are likely to associate the name of either party with any particular product or 25 service. 26 27 Inc., 2007 WL 1998653, at *7 (C.D. Cal. 2007) (“Plaintiff does not, however, address the other five Berry factors, and accordingly, concedes that these factors weigh in favor of Defendants.”). 28 Case No. 3:08-mc-80083 MHP -8GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 Calcar has failed to demonstrate why the Court should exercise its discretion to compel 2 Google, a nonparty, to give deposition testimony on information that is irrelevant to the claims and 3 defenses of the underlying case. 4 II. CALCAR HAS NOT MET ITS BURDEN UNDER LOCAL RULE 37-2 TO SHOW 5 THAT ITS SUBPOENA MEETS THE REQUIREMENTS OF FED. R. CIV. P. 6 26(B)(2) 7 Plaintiff’s motion ignores this Court’s local rule requiring any party moving to compel 8 discovery to “detail the basis for the party’s contention that it is entitled to the requested discovery 9 and [] show how the proportionality and other requirements of Fed. R. Civ. P. 26(b)(2) are 10 satisfied.” Nemirofsky v. Seok Ki Kim, 523 F.Supp.2d 998, 1000 (N.D. Cal. 2007) (citing Local 11 Rule 37-2). See also Unigene Laboratories, Inc. v. Apotex, Inc., 2007 WL 2972931, at *2 (N.D. 12 Cal. 2007) (same); Union Bank of California 401(K) Plan v. Hansen (In re Coan), 2007 WL 13 128010, at *2 (N.D. Cal. 2007) (same). Similarly, the Federal Rules require “that when 14 determining the appropriateness of discovery requests courts should consider whether the 15 discovery is duplicative or overly burdensome and whether the burden and expense of discovery 16 outweighs the benefit.” Nemirofsky, 523 F.Supp.2d at 1000 (citing Fed. R. Civ. P. 26(b)(2)). 17 Calcar ignored this rule because a balancing of these factors weighs strongly in Google’s favor. 18 Calcar’s motion should be denied for this reason as well.5 19 A. 20 Plaintiff Can Obtain The Discovery It Seeks From Defendant TCCI Directly, Or From Publicly Available Sources. 21 Under Rule 26, “the court must limit the frequency or extent of discovery otherwise 22 allowed … if it determines that (i) the discovery sought is unreasonably cumulative or duplicative, 23 or can be obtained from some other source that is more convenient, less burdensome, or less 24 25 5 Google identified the violations of these standards in its written objections. In Section C.4 26 of its Motion to Compel, Plaintiff summarily contests the validity of those objections. However, in meet and confer efforts, and indeed in this Motion to Compel, Plaintiff has not explained why 27 Google’s objections of irrelevance, overbreadth, undue burden, duplication, and availability from other sources, among others, are somehow invalid. They are not. 28 Case No. 3:08-mc-80083 MHP -9GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 expensive [or that] (ii) the party seeking discovery has had ample opportunity to obtain the 2 information by discovery in the action.” Fed. R. Civ. P. 26(b)(2)(C) (emphasis added). Plaintiff’s 3 deposition topics seek testimony on agreements, contracts, and communications between Google 4 and TCCI and/or Felix Kramer, and on the Google.org grant to TCCI. 5 First, that information can just as readily be obtained from TCCI, a party to the underlying 6 action, as from Google, which is not. Indeed, Plaintiff has already received the evidence it seeks 7 from this deposition, in the form of the documents produced by Google in April (see Barea Decl. 8 ¶ 9), and the deposition of defendant Felix Kramer, from whom Calcar obtained testimony 9 concerning the grant agreement and interactions between Google.org and TCCI. See id. ¶ 10. 10 Furthermore, as discussed above, Plaintiff may not seek an order compelling a deposition 11 of Google regarding topics outside the scope of its Rule 30(b)(6) deposition subpoena, such as the 12 consumer confusion subject matter Calcar first identified in its moving papers. But even if Calcar 13 could, that information may be obtained more readily from sources other than a deposition of 14 Google. To the extent Plaintiff wants information on the strength of TCCI’s mark and on possible 15 consumer confusion, Plaintiff should seek that information from consumers, not from Google. 16 Similarly, to the extent Plaintiff wants information on the appearance of Defendant’s mark in 17 Google search results, Plaintiff may simply go to google.com and run a Web Search.6 Lastly, to 18 19 6 Although it did not include any such topic in its deposition subpoena (and thus may not take 20 testimony on it), Calcar now claims that it needs information on “placement … of the CALCARS mark” in Google’s search results. Motion at 7. However, Google’s public website explains 21 website placement in Web Search results. See http://www.google.com/technology/ (“Google runs 22 on a unique combination of advanced hardware and software. ... The heart of our software is PageRank™, a system for ranking web pages developed by our founders.... PageRank ... us[es] its 23 vast link structure as an indicator of an individual page’s value. ... Using these and other factors, Google provides its views on pages’ relative importance. ... Google combines PageRank with 24 sophisticated text-matching techniques to find pages that are both important and relevant to your search. ... Google does not sell placement within the results themselves ….”). Google’s public 25 website also explains that such placement has nothing to do with any business or advertising 26 relationship between Google and any website. See, e.g., https://www.google.com/adsense/support/?fulldump=1 (“[Google] search results are unbiased by 27 our relationships with paying advertisers and publishers.”). To the extent Calcar is suggesting that it should be entitled to take discovery regarding how Google’s highly proprietary search 28 (footnote continued) Case No. 3:08-mc-80083 MHP -10GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 the extent Plaintiff wants information on the “marketing channels” used by TCCI, there is no 2 better source for this information than TCCI itself. Plaintiff had the opportunity to obtain such 3 information in its deposition of Felix Kramer, and should not burden third-party Google with such 4 deposition questions, regarding which Google has little to no knowledge. 5 6 7 B. Plaintiff Has Failed To Show That The Burden Or Expense Of The Proposed Discovery Outweighs Its Likely Benefit. Calcar similarly has failed to demonstrate that the benefits it might obtain from deposing 8 Google about subjects regarding which Google has little to no knowledge outweighs the burden 9 Google would face in having to prepare and sit for a Rule 30(b)(6) deposition. Under the Federal 10 Rules, the Court “must limit the frequency or extent of discovery otherwise allowed … if it 11 determines that … (iii) the burden or expense of the proposed discovery outweighs its likely 12 benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the 13 importance of the issues at stake in the action, and the importance of the discovery in resolving the 14 issues.” Fed. R. Civ. P. 26(b)(2)(C)(iii). See also Nemirofsky, 523 F. Supp. 2d at 1000 (“[W]hen 15 determining the appropriateness of discovery requests courts should consider whether the 16 discovery is duplicative or overly burdensome and whether the burden and expense of discovery 17 outweighs the benefit.”) (citing Fed. R. Civ. P. 26(b)(2)). As detailed above, Plaintiff has already 18 obtained (or at a minimum, has had the opportunity to obtain) virtually all of the information it 19 now seeks from third-party Google. Calcar has the proposal, the grant agreement and related 20 correspondence, deposition testimony regarding that grant and other topics from Felix Kramer, 21 and communications between Google and TCCI and Felix Kramer. Plaintiff knows that TCCI 22 does not advertise on Google, and that Google has no involvement in TCCI’s marketing or 23 24 technology—possibly the most valuable trade secret in the world—actually functions on an engineering level, Calcar is flat wrong. Calcar is entitled to no such thing, and has made no 25 showing that would even come close to warranting such discovery of non-party Google’s highly confidential information in this case. See, e.g, Dart Industries Co. v. Westwood Chemical Co., 26 649 F.2d 646, 649 (9th Cir. 1980) (discovery should be limited in order to “protect third parties 27 from ... disclosure of confidential documents”). To the extent that the Court is even considering (footnote continued) 28 Case No. 3:08-mc-80083 MHP -11GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 business activities. Google should not be burdened with a deposition in these circumstances, 2 given the minimal benefit (if any) to Calcar that a deposition would confer. 3 Indeed, Plaintiff’s only articulated basis for subjecting Google to such burdensome 4 discovery is corroboration. Calcar thus claims that “[i]t is important for Calcar to be able to test 5 the reliability of TCCI’s and Kramer’s testimony by learning Google’s knowledge of the 6 communications and relationship,” and that “Calcar certainly ‘has a right to seek to corroborate 7 the information given it by its party-opponent.’” Motion to Compel at 8 (citing Pfizer, Inc. v. 8 Mylan Labs, Inc., 2003 U.S. Dis. LEXIS 24806, at *6 (S.D.N.Y. Dec. 17, 2003)).7 By styling its 9 need as one for “corroboration,” Plaintiff essentially concedes that the discovery it seeks is 10 duplicative. And, under the circumstances here, any “right” to corroboration that may exist in 11 appropriate cases is far too thin a reed to support a motion to compel non-party Google to prepare 12 for and appear at a Rule 30(b)(6) deposition on topics about its philanthropic giving that are 13 immaterial to the underlying case. 14 Under Rule 26(b)(2)(C)(iii), “the burden or expense of the proposed discovery [must] 15 outweigh[] its likely benefit, considering the needs of the case” and other factors. Plaintiff argues 16 that the burden on Google is slight because Google is “a large corporate entity” and “likely keep[s] 17 records of any agreements or contracts between itself and the Defendants.” Motion to Compel at 18 9. But the burden of preparation for a Rule 30(b)(6) deposition is substantial no matter how large 19 one’s employer, and the Federal Rules expressly require balancing of burden against likely benefit 20 to the case. Plaintiff already has the agreements and contracts, has already questioned the 21 Defendants about them, and has given no reason to suspect that the evidence it has already 22 obtained is unreliable, untruthful, incomplete, or otherwise suspect. Nor has Calcar explained how 23 24 whether to order deposition testimony on this subject, Google respectfully requests the opportunity to file further briefing on the immensely valuable trade secrets such an order might implicate. 7 25 Plaintiff’s only cited authority on this point, Pfizer v. Mylan Labs, was a patent infringement action over hypertension drugs where the third party had direct involvement in the 26 subject matter of the patent infringement case, in that it both supplied the defendant with the active 27 ingredient for the drug, and developed its own drug to compete directly with both parties. Id., (footnote continued) 28 Case No. 3:08-mc-80083 MHP -12GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL 1 these topics are material to its claim for trademark infringement. In short, Plaintiff has shown no 2 possible benefit other than “corroboration,” and no reasonable need to corroborate these irrelevant 3 facts regarding the Google.org grant.8 4 Conclusion 5 6 For the foregoing reasons, Google respectfully requests that Plaintiff’s Motion to Compel 7 Google to sit for deposition pursuant to Calcar’s third-party deposition subpoena be denied. 8 9 DATED: May 2, 2008 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 10 11 12 By /s/ Rachel M. Herrick Rachel M. Herrick Attorneys for Google Inc. 13 14 15 16 17 18 19 20 21 22 2003 U.S. Dist. LEXIS 24806, at *2-4. Pfizer could not be further afield from the facts presented 23 here, where Google’s involvement is merely that of a charitable donor to one of the defendants. 8 Plaintiff claims that “Rule 45(c)(3) provides that the only mechanism by which to challenge 24 a deposition subpoena is to file a motion to quash or modify the subpoena,” and that “[w]ith the passage of the original deposition date, Google waived the right to bring either a motion to quash 25 or modify the subpoena.” Motion to Compel at 8 (citing three out-of-circuit cases and one 26 treatise). As explained in greater detail in Google’s concurrently-filed Motion for Protective Order, this is both inaccurate and a red herring. Google has not filed a motion to quash or modify 27 the subpoena under Rule 45. Instead, Google is timely opposing Plaintiff’s Motion to Compel and cross-moving for a protective order under Rule 26(c). 28 Case No. 3:08-mc-80083 MHP -13GOOGLE INC.’S OPPOSITION TO PLAINTIFF CALCAR, INC.’S MOTION TO COMPEL

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