Wednesday, September 18, 2013
In the context of a plaintiffs’ motion for summary judgment on contributory infringement claims, denial is particularly appropriate where there are disputed facts and inferences regarding the ability of a “marketplace” to monitor and control the activities of third party alleged counterfeiters based on the size of the marketplace, “number of security personnel, the alleged scope of the infringing activity” as a portion of the marketplace, and the defendants’ ability to identify infringing products. Adobe Sys. Inc. v. Canus Prods., Inc., 173 F. Supp. 2d 1044, 1053-55 (C.D. Cal. 2001) (applying Fonovisa v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996) to deny summary judgment for contributory infringement claim against trade show promoter that did “not possess the practical right and ability to control the sale of infringing products”). Denial of summary judgment on such a contributory claim is all the more appropriate because “amount of control necessary to support a finding of [contributory] liability is fact-specific.” Canus, 173 F. Supp. 2d at 1053.
Trademark infringement defense attorneys would be well-advised to study the Canus case and apply it in opposition to plaintiff summary judgment motions.
Friday, September 6, 2013
Reputation management attorneys will want to review Professor Eric Goldman's excellent recent analysis of court orders commanding the removal or de-indexing of defamatory internet postings. In the past, despite not being a party to litigation, many search engines including Google reflexively de-indexed postings covered by such orders. Professor Goldman is spot on in his analysis that such orders are typically overbroad and obtained via default judgment or stipulation. Furthermore, such orders usually violate a search engine's due process rights. Nonetheless, industry practice evolved to simply comply with such orders. Apparently, that may be changing as search engines view such orders with greater scrutiny.
Thursday, September 5, 2013
Many times companies or individuals file John Doe defamation lawsuits against anonymous defendants for internet based criticisms. Inevitably, the plaintiff must serve subpoenas to various Internet Service Providers seeking information that may identify an anonymous consumer. Such action should be considered carefully as a consumer who successfully files a motion to quash such subpoenas is often able to recover significant attorney fees. In the case of Mad Catz Interactive, Inc. v. John Doe, San Diego Superior Court Case #37-201 3-00030075-CU-BT-CTL, the Court awarded my client over $36,000 in attorney fees after our motion to quash was granted.
Pursuant to California’s Code of Civil Procedure section 2023.030, the Court “may impose a monetary sanction ordering that one engaging in the misuse of the discovery process, or any attorney advising that conduct, or both pay the reasonable expenses, including attorney's fees, incurred by anyone as a result of that conduct.” Cal. Civ. Proc. Code § 2023.030(a). Moreover, when the Civil Discovery Act authorizes monetary sanctions, the Court “shall impose that sanction unless it finds that the one subject to the sanction acted with substantial justification or that other circumstances make the imposition of the sanction unjust.” Id. Such misuses of the discovery process include, but are not limited to “(a) Persisting, over objection and without substantial justification, in an attempt to obtain information or materials that are outside the scope of permissible discovery… (c) Employing a discovery method in a manner or to an extent that causes unwarranted annoyance, embarrassment, or oppression, or undue burden and expense… [and] (h) Making or opposing, unsuccessfully and without substantial justification, a motion to compel or to limit discovery.” Cal. Civ. Proc. Code § 2023.010.
In addition to the general authorization and mandate to impose monetary sanctions set forth in sections 2023.010, et seq., the Civil Discovery Act specifically requires monetary sanctions against persons acting without substantial justification that unsuccessfully:
· oppose motions for orders to protect privileged information (Cal. Civ. Proc. Code § 2017.020);
· oppose motions to sustain objections to written deposition inquiries (Cal. Civ. Proc. Code § 2028.040); and
· oppose motions to quash deposition notices (Cal. Civ. Proc. Code § 2025.410).
Fee awards on discovery type disputes are to be imposed in an amount representing “the reasonable expenses, including attorney's fees, incurred by anyone as a result” of a party's misuse of the discovery process. (Cal. Civ. Proc. Code § 2023.030(a)). Such fees include reviewing discovery documents, “attempting to meet and confer “and “preparing and reviewing” motions. Parker v. Wolters Kluwer U.S., Inc., 149 Cal. App. 4th 285, 294, 57 Cal. Rptr. 3d 18, 25 (2007). On motions seeking attorneys’ fees, attorneys are entitled to be compensated at rates that reflect the reasonable market value of their services. See, e.g., Serrano v. Unruh 32 Cal.3d 621, 643 (1982).
Like the fee awards available under the Civil Discovery Act, Code of Civil Procedure section 1987.2 subdivision (a), provides that for a motion to quash a subpoena, the “court may award the amount of reasonable expenses incurred in making or opposing the motion, including reasonable attorneys' fees, if the motion was made or opposed in bad faith or without substantial justification or if one or more of the subpoena requirements was oppressive.” 2 Witkin, Cal. Evid. 5th (2012) Discovery, § 229, p. 1221 (citing Cal. Civ. Proc. Code § 1987.2(a)). Although not expressly applicable to underlying actions filed in California, Section 1987.2 subdivision (c) can serve as persuasive authority for California litigants. Under that subdivision, a court must award reasonable expenses and attorneys’ fees to a prevailing movant on a motion to quash a subpoena served on an Internet Service Provider for personally identifying information of a user where the underlying action arises from the exercise of free speech and the respondent fails to make a prima facie showing of a cause of action. Cal. Civ. Proc. Code § 1987.2(c). Often, each of those elements is met for California litigation, such that the only factor separating a motion by a California litigant is that the case was brought in California, otherwise all of the factors which led the Legislature to protect anonymous internet speech are also present.
The law puts the unsuccessful and speculative plaintiff in a tough spot. In the context of discovery related sanctions “the phrase “substantial justification’ has been understood to mean that a justification is clearly reasonable because it is well-grounded in both law and fact.” Doe v. U.S. Swimming, Inc., 200 Cal. App. 4th 1424, 1434, 133 Cal. Rptr. 3d 465, 473 (2011). Where sanctions are authorized by the Civil Discovery Act, the burden shifts to the party “against whom sanctions are sought to show substantial justification to avoid the imposition of sanctions.” Kohan v. Cohan, 229 Cal. App. 3d 967, 971, 280 Cal. Rptr. 474, 477 (Cal. Ct. App. 1991); see also Doe v. U.S. Swimming, Inc., 200 Cal. App. at 1434.
Internet anonymity has strong protection rooted in free speech rights. “Judicial recognition of the Constitutional right to publish anonymously is a longstanding tradition.” Krinsky v. Doe 6, 159 Cal. App. 4th 1154, 1163 (2008). Due to that recognition, longstanding California precedent clearly sets forth the requirement that a plaintiff “make a prima facie showing of the elements of libel in order to overcome a defendant's motion to quash a subpoena seeking his or her identity.” Id. at 1172. Plaintiffs in anonymous internet defamation cases often proceed in a speculative fashion on claims that lack substantive factual or legal support. This is often due to an exploratory desire to unmask individual(s) who are critical of the plaintiff. As discussed herein, the speculative defamation plaintiff risks substantial financial downside as a result of the hunt for personally identifiable information.