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Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 1 of 29 Page ID #:26436

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BOIES, SCHILLER & FLEXNER LLP


Stuart Singer (pro hac vice)
ssinger@bsfllp.com
401 East Las Olas Blvd, Suite 1200
Fort Lauderdale, FL 33301
Tel: 954-356-0011
Fax: 954-356-0022
David L. Zifkin (SBN 232845)
dzifkin@bsfllp.com
401 Wilshire Blvd., Suite 850
Santa Monica, CA 90401
Tel: 310-752-2400
Fax: 310-752-2490

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[Additional Counsel Listed On Signature Page]

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Attorneys for Plaintiff Academy of Motion Picture Arts and Sciences

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION

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ACADEMY OF MOTION PICTURE


ARTS AND SCIENCES, a California
nonprofit corporation,

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Plaintiff,

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v.
GODADDY.COM, INC., et al.,
Defendant.

Case No.: 2:10-cv-03738 AB (CWx)


[Consolidated with Case No.2:13cv-08458-AB (CWx)]
PLAINTIFFS OPPOSITION TO
DEFENDANT GODADDY.COM
LLCS MOTION FOR PARTIAL
SUMMARY JUDGMENT
Date: February 23, 2015
Time: 10:00 a.m.
Courtroom: 790

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Complaint Filed: May 18, 2010


Trial Date: June 2, 2015

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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 2 of 29 Page ID #:26437

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PRELIMINARY STATEMENT ............................................................................... 1


ARGUMENT............................................................................................................. 2
I.
GoDaddys Motion For Summary Judgment On The
ACPAs Dilutive Of Prong Is Meritless........................................... 2
A.
The Court already determined that the fame of the
Academys marks is a triable issue of fact. ................................2
B.
Even if the Court reviews the evidence again,
whether AMPAS marks are famous is a triable
issue of fact. ................................................................................ 4
II.
GoDaddy Cannot Prevail As To All Four Domain Names
That It Claims Were Not In The Parked Pages Program,
Because The Evidence Shows That Two Of Them Were. ................... 7
III. GoDaddys Motion For Summary Judgment On The
Academys UCL Claim For Injunctive Relief Is Without
Merit...................................................................................................... 8
A.
GoDaddy cannot meet its heavy burden of proving
that voluntary cessation moots the UCL claim........................... 8
B.
GoDaddys argument that the Academy lacks
standing to seek injunctive relief under the UCL is
contrary to established law. ......................................................13
IV. GoDaddys Motion For Summary Judgment Of The
Academys Request For Attorneys Fees Under 1021.5 Is
Unavailing...........................................................................................14
A.
GoDaddys assertion that its motion on 1021.5 is
not premature is contrary to law. .............................................. 14
B.
GoDaddys claim that this lawsuit does not seek to
confer a significant benefit on the public is
inaccurate. .................................................................................15
C.
GoDaddys argument about the financial burden
prong is unavailing, and its disclosure of AMPAS
settlement proposals is improper. ............................................. 18
1.
Under established law, GoDaddys motion on
the financial burden prong is premature.........................18
2.
GoDaddys reliance on the statutory damages
sought by AMPAS is inapposite. ................................... 19
3.
GoDaddys reliance on AMPAS settlement
proposals is improper and meritless...............................20
D.
GoDaddys Claim That AMPAS Was Motivated To
File This Suit By Its Own Interest Is Inapposite. .....................21
CONCLUSION........................................................................................................ 22
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 3 of 29 Page ID #:26438

TABLE OF AUTHORITIES

CASES

800JR Cigar, Inc. v. GoTo.com,


437 F. Supp. 2d 273 (D. N.J. 2006)...................................................................... 7

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Academy of Motion Pictures Arts and


Sciences v. Creative House Promotions,
944 F.2d 1446 (9th Cir. 1991).............................................................................. 6
Adidas Am., Inc., v. Payless ShoeSource, Inc.,
546 F. Supp. 2d 1029 (D. Or. 2008)..................................................................... 7
Albanese v. Menounos,
218 Cal. App. 4th 923 (2013)............................................................................... 5
Am. Auto Ins. Co. v. Grimes,
2004 WL 246989 (N.D. Tex. Feb. 10, 2004) .....................................................15
Am. Natl Fire Ins. Co. v. Kenealy,
72 F.3d 264 (2d Cir. 1995) .................................................................................15
Apple, Inc. v. Samsung Elec. Co., Ltd.,
2012 WL 2571719 (N.D. Cal. June 30, 2012). ................................................4, 7
B.V.D. Licensing Corp. v. Body Action Design, Inc.,
846 F.2d 727 (Fed. Cir. 1988) .............................................................................. 6
Barnes v. Healy,
980 F.2d 572 (9th Cir. 1992) ................................................................................ 9
Bell v. City of Boise,
709 F.3d 890 (9th Cir. 2013) .............................................................................. 10
Bouvia v. County of Los Angeles,
195 Cal. App. 3d 1075 (1987)......................................................................14, 18
Bright v. 99cents Only Stores,
189 Cal. App. 4th 1472 (2010)........................................................................... 15
Bullock v. City and County of San Francisco,
221 Cal. App. 3d 1072 (1990)............................................................................ 15
Caro v. Proctor & Gamble Co.,
18 Cal. App. 4th 644 (1993)............................................................................... 12
Cisneros v. U.D. Registry, Inc.,
39 Cal. App. 4th 548 (1995)............................................................................... 12
Coral Constr. Co. v. King County,
941 F.2d 910 (9th Cir. 1991) .............................................................................. 10
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PLAINTIFFS OPPOSITION TO
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PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 4 of 29 Page ID #:26439

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Davis v. Federal Election Commn,


554 U.S. 724 (2008) ...........................................................................................13
Delta Sav. Bank v. United States,
265 F.3d 1017 (9th Cir. 2001).............................................................................. 3
Dow Jones & Co. v. Ablaise, Ltd.,
583 F. Supp. 2d 41 (D.D.C. 2008) ..................................................................... 13
Edlestein v. City and County of San Francisco,
29 Cal. 4th 164 (2002)........................................................................................12
Ellsworth v. U.S. Bank, N.A.,
--- F. Supp. 2d ---, 2014 WL 1218833,
(N.D. Cal. March 21, 2014)................................................................................11
F.T.C. v. Sage Seminars, Inc.,
1995 WL 798938 (N.D. Cal. Nov. 2, 1995).......................................................10
Feitelberg v. Credit Suisse First Boston LLC,
134 Cal. App. 4th 997 (2005)............................................................................. 12
Friends of the Earth, Inc. v. Laidlaw
Environmental Services (TOC), Inc.,
528 U.S. 167 (2000) .................................................................................9, 12, 13
Gold v. Los Angeles Democratic League,
49 Cal. App. 3d 365 (1976) ..........................................................................12, 13
Google Inc. v. Am. Blind & Wallpaper,
2007 WL 1159950 (N.D. Cal. Apr. 18, 2007) ..................................................... 7
Graham v. DaimlerChrysler Corp.,
34 Cal. 4th 553 (2004)........................................................................................15
In re Conservatorship of Whitley,
50 Cal. 4th 1206 (2010)....................................................................14, 18, 19, 20

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In re Synchronoss Sec. Litig.,


705 F. Supp. 2d 367 (D.N.J. 2010)....................................................................... 5
Irvine Valley College Academic Senate v. Board of Trustees of South
Orange County Community College Dist.,
129 Cal. App. 4th 1482 (2005)........................................................................... 15
J. Choo Limited v. Lai Ruipao,
2011 WL 3800234 (Admin. Panel Aug. 9, 2011) ................................................ 5
Jacobsen v. Katzer,
535 F.3d 1373 (Fed. Cir. 2008) .......................................................................... 10

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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 5 of 29 Page ID #:26440

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Jada Toys Inc. v. Mattel


Inc.,
518 F.3d 628 (9th Cir. 2007) ................................................................................ 7
Jeffries v. Wood,
114 F.3d 1484 (9th Cir. 1997).............................................................................. 3
Mackey v. Whitehall Labs., Inc.,
681 F. Supp. 591 (N.D. Ind. 1987)..................................................................... 21
Madrid v. Perot Sys. Corp.,
130 Cal. App. 4th 440 (2005)............................................................................. 12
Manzon v. Stant Corp.,
202 F. Supp. 2d 851 (S.D. Id. 2002) .................................................................. 14
Marin County Bd. of Realtors, Inc. v. Palsson,
16 Cal. 3d 920 (1976). ....................................................................................9, 10
Mattel, Inc. v. Internet Dimensions Inc.,
2000 WL 973745 (S.D.N.Y. July 13, 2000)......................................................... 7
MBNA America Bank, N.A. v. Gorman,
147 Cal. App. 4th Supp. 1 (2006)....................................................................... 22
Palo Alto-Menlo Park Yellow Cab Co., Inc. v.
Santa Clara County Transit Dist.,
65 Cal. App. 3d 121 (1976) ..........................................................................12, 13
People v. First Federal Credit Corp.,
104 Cal. App. 4th 721 (2002)............................................................................. 17
Rainforest Caf, Inc. v. Amazon, Inc.,
86 F. Supp. 2d 886 (D. Minn. 1999) .................................................................. 10
Resolution Trust Corp. v. Tassos,
764 F. Supp. 442 (S.D. Tex. 1990)..................................................................... 15

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Rivera v. Bio Engineered Supplements & Nutrition, Inc.,


2008 WL 4906433 (C.D. Cal. Nov. 13, 2008) ...................................................10
Robinson v. City of Chowchilla,
202 Cal. App. 4th 382 (2011).......................................................................18, 20
Satrap v. PG&E Co.,
42 Cal. App. 4th 72 (1996).................................................................................25

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Singer v. Live Nation Worldwide,


2012 WL 123146 (C.D. Cal. Jan. 13, 2012)......................................................... 8

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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 6 of 29 Page ID #:26441

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TCPIP Holding Co. v. Haar Commcns Inc.,


244 F.3d 88 (2nd Cir. 2001) ................................................................................. 4
Times Mirror Magazines, Inc. v Las Vegas Sports News, L.L.C.,
1999 WL 124416 (E.D. Pa. Mar. 4, 1999) ........................................................... 7
Top Banana, LLC v. Doms Wholesale & Retail Center, Inc.,
2005 WL 1149774 (S.D. N.Y. May 16, 2005)...................................................15
Twitter, Inc. v. Domain Admin,
2014 WL 2926423 (Admin. Panel, June 15, 2014).............................................. 5
United Farm Workers of America, AFL-CIO v. Dutra Farms,
83 Cal. App. 4th 1146 (2000)............................................................................. 10
United States v. W.T. Grant Co.,
345 U.S. 629 (1953) .......................................................................................9, 12
Wilner v. Sunset Life Ins. Co.,
78 Cal. App. 4th 952 (2000)............................................................................... 17

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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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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 7 of 29 Page ID #:26442

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PRELIMINARY STATEMENT
GoDaddy has moved for partial summary judgment on (i) the Academys

dilutive of claim under Anticybersquatting Consumer Protection Act (ACPA),

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

Proc. 1021.5. The motion fails because it is premised on misstatements of fact

and law, and does not come close to satisfying GoDaddys initial burden of proving

the absence of a genuine issue of material fact.

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First, GoDaddy claims it is entitled to summary judgment on AMPASs

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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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evidence showing that the Academys marks are famous.

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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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implemented an AMPAS-specific keyword filter in July 2013 over three years

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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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 8 of 29 Page ID #:26443

AMPAS-specific keyword filter. 1


Third, GoDaddy argues that the Academys claim for attorney fees under

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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

established law, GoDaddys motion on 1021.5 must be denied as premature

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

upon a large group of trademark owners and consumers by preventing GoDaddys

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unlawful, unfair, and deceptive business practice of cybersquatting. Finally,

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GoDaddys argument about the financial burden prong is plainly premature,

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contrary to law, and unsupported, as detailed below. Worse, GoDaddy has used

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this premature argument as a vehicle to improperly introduce the Academys

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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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GoDaddys Motion For Summary Judgment On The ACPAs

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Dilutive Of Prong Is Meritless.

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A.

The Court already determined that the fame of


the Academys marks is a triable issue of fact.

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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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 9 of 29 Page ID #:26444

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

offered evidence in support of their competing arguments on the subject. See

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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Order) at p. 10 (emphasis added)).


Since GoDaddy has not identified any reason to disturb or reconsider this

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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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be disturbed, except in extraordinary circumstances that GoDaddys motion does

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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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applies to a district courts review of an interlocutory order of another judge in the

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same case) (citing Jeffries v. Wood, 114 F.3d 1484, 1489 (9th Cir. 1997)).4

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Accordingly, GoDaddys motion for summary judgment on this issue should be

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denied.

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CSUF refers to AMPAS Statement of Genuine Disputes of Material Fact and


Counter-Statement of Uncontroverted Facts filed concurrently herewith.
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In many instances, GoDaddys present motion copies verbatim from its 2013
opposition to the Academys motion. CSUF 26 (Compare Dkt. 606-1 (GoDaddy
2015 MSJ) at pp. 15-19 with Dkt. 381 (GoDaddy 2013 Opp. to MSJ) at pp. 5-10).
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Cf. L.R. 7-18 (No motion for reconsideration shall in any manner repeat any oral
or written argument made in support of or in opposition to the original motion.).
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PARTIAL SUMMARY JUDGMENT

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B.

Even if the Court reviews the evidence again, whether AMPAS


marks are famous is a triable issue of fact.

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In its June 21, 2013 Order, the Court correctly observed that a mark is

famous if it is widely recognized by the general consuming public of the United

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

factors that a court can assess to determine whether a mark is sufficiently

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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(ii) The amount, volume, and geographic extent of sales of goods or


services offered under the mark.

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(iii) The extent of actual recognition of the mark.

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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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DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

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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

sectors. CSUF 29. Third, as GoDaddy admits, AMPAS investment in

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

media coverage of the Academy Awards, including in newspapers and popular

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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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AMPAS marks are even reflected by references to them in court and

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administrative decisions. Id. 326

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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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agreements pursuant to which the Academy is paid significant sums by licensees of

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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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DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

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major U.S. companies, among others. Id. 28.


Both the first factor (discuss above) and third factor actual recognition of

the mark are evidenced by renown dictionaries and encyclopedias. For example,

the Oxford English Dictionary contains the following definitions:

Academy Award, n. any of various annual awards given by the

Academy of Motion Picture Arts and Sciences (Hollywood, United

States) for achievement in a field connected with cinema. CSUF

34; see also id. 36 (Encyclopedia Britannica description).

Oscar, n. . . . 1. Any of the statuettes awarded annually since 1928 in

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Hollywood, United States by the Academy of Motion Picture Arts and

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Sciences for excellence in film acting, directing, and other aspects of

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film-making; . . . 2. the Oscars: the ceremony at which these awards

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are presented. Id. 35.

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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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dictionary recognition as part of the language, we take it to be reasonably famous).

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Additionally, GoDaddys own expert relies on an article that proclaims the

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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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against infringement.) It thus comes as no surprise that GoDaddys employees are

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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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 13 of 29 Page ID #:26448

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

in an instructional video to introduce famous marks. CSUF 1, 39.

Faced with this abundance of evidence, GoDaddy is left to quibble that

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

10

AMPAS marks are famous. E.g., Apple, 2012 WL 2571719, at * 8 (The factors

11

to be established for fame are non-exhaustive, so survey results are not required. );

12

Adidas Am., Inc., v. Payless ShoeSource, Inc., 546 F.Supp.2d 1029 (D. Or. 2008)

13

(failure to conduct a fame survey is not dispositive.); Google Inc. v. Am. Blind &

14

Wallpaper, 2007 WL 1159950, at *11 (N.D. Cal. Apr. 18, 2007) (same). 8

15

II.

GoDaddy Cannot Prevail As To All Four Domain Names That It Claims

16

Were Not In The Parked Pages Program, Because The Evidence Shows

17

That Two Of Them Were.

18

GoDaddy argues the Academy cannot establish that four domain names

19

participated in the Parked Pages Program.9 The evidence shows that two of those

20
8

21
22
23
24
25
26
27
28

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,
7

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 14 of 29 Page ID #:26449

domain names 2OSCARS.COM and OSCARSMOVIES.COM were in the

Parked Pages Program or, at a minimum, that there are genuine disputes of material

fact as to them.10

First, evidence establishes that the 2OSCARS.COM domain name was in

GoDaddys Parked Pages Program because consumers who entered this domain

name in their web browser in December 2011 would be directed to a GoDaddy

parked page. CSUF 40-41.


Second, GoDaddys motion for summary judgment as to the domain name

8
9

OSCARMOVIES.COM appears to be based on an inadvertent typographical error

10

in the First Amended Complaint in AMPAS II. In particular, the letter s is

11

missing after the word Oscar and before the word Movies. CSUF 42. The

12

record evidence shows the Academy sent a cease and desist letter, along with a

13

screen shot, to GoDaddy on May 28, 2013 regarding the presence of the domain

14

name OSCARSMOVIES.COM in GoDaddys Parked Pages Program. Id. 43.

15

The First Amended Complaint should be deemed to conform to this proof, and

16

GoDaddys motion as to this domain name should be denied. See, e.g., Fed. R. Civ.

17

P. 15(b).

18

III.

GoDaddys Motion For Summary Judgment On The Academys

19

UCL Claim For Injunctive Relief Is Without Merit.

20

A.

21
22
23
24
25
26
27
28

GoDaddy cannot meet its heavy burden of proving that


voluntary cessation moots the UCL claim.

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).
11
GoDaddy also asserts that the Academy is not entitled to restitution under the
8

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 15 of 29 Page ID #:26450

unavailing because it ignores the relevant legal rules and case law, overlooks the

circumstances surrounding this litigation, relies on an insufficient and self-serving

declaration, and is predicated on citation to inapposite cases.

It is well settled that a defendants voluntary cessation of a challenged

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

10

grant injunctive relief survives discontinuance of the illegal conduct. United

11

States v. W.T. Grant Co., 345 U.S. 629, 633 (1953); accord Barnes v. Healy, 980

12

F.2d 572, 580 (9th Cir. 1992).

13

The standard announced by the Supreme Court for determining whether a

14

case has been mooted by the defendants voluntary conduct is stringent: A case

15

might become moot if subsequent events made it absolutely clear that the allegedly

16

wrongful behavior could not be reasonably expected to recur. Id. at 189

17

(emphasis added).12 The party asserting mootness i.e., GoDaddy bears the

18

heavy burden of persuading the Court that the challenged conduct cannot

19

reasonably be expected to start up. Id.13

20

This heavy burden cannot be met by a defendants claim that it has

21

voluntarily abandoned the conduct and has no intention to revive it. E.g., W.T.

22

Grant Co., 345 U.S. at 633 (Such a profession does not suffice to make a case

23
24
25
26
27
28

UCL. The Academy, however, has elected not to pursue restitution under the UCL.
Accordingly, this is a nonissue.
12
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).
13
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.).
9

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 16 of 29 Page ID #:26451

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

the government is otherwise unconstrained should it later desire to reenact the

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

proves voluntary cessation because it could easily be abandoned or altered in the

future.).15
Courts have applied these established rules to hold that alleged violations of

10
11

the UCL are not mooted by such claims of voluntary cessation. E.g., Jacobsen v.

12

Katzer, 535 F.3d 1373, 1377 n.1 (Fed. Cir. 2008) (agreeing with the California

13

district courts holding that motion for preliminary injunction was not mooted by

14

voluntarily cessation of alleged UCL violation because the court could not find as

15

a matter of law that it is absolutely clear that the alleged behavior could not recur);

16

Rivera v. Bio Engineered Supplements & Nutrition, Inc., 2008 WL 4906433, at *5

17

(C.D. Cal. Nov. 13, 2008) (holding that UCL claim for injunctive relief was not

18

mooted by Defendants changes to labels and product formula); Rainforest Caf,

19

Inc. v. Amazon, Inc., 86 F. Supp. 2d 886, 905, 907 (D. Minn. 1999) (holding that

20

UCL and Lanham Act claims for injunctive relief were not mooted by voluntary

21

cessation); United Farm Workers of America, AFL-CIO v. Dutra Farms, 83 Cal.

22

App. 4th 1146, 1165-66 (2000) (holding that voluntary discontinuance did not moot

23

UCL claim for injunctive relief because conduct could easily recur in the absence

24
25
26
27
28

14

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).
15
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).
10

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 17 of 29 Page ID #:26452

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

2011, GoDaddy admitted that it has been capable of implementing a filtering

system to prevent the placement of advertisements on domain names that contain

third party trademarks in Parked Pages Program. CSUF 44-46. Instead of

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

placing infringing domain names in its Parked Pages Program. Id.

10

After engaging in this misconduct for years, GoDaddy asserts that in July

11

2013 over three years into this lawsuit and only after the Court granted partial

12

summary judgment in the Academys favor it implemented an AMPAS-specific

13

keyword filter that it supposedly has no future plans to modify or abandon.

14

CSUF 16. In fact, GoDaddy could easily abandon this keyword filter and change

15

its plans, unless this Court issues a permanent injunction requiring it to keep a

16

keyword filter in place to protect not only the Academys marks but also other

17

registered trademarks. Id.17 Moreover, GoDaddy has even demonstrated its

18

willingness to continue with its misconduct by admittedly failing to employ the

19

keyword filter to protect other registered trademarks, which is why its motion and

20

supporting declaration are careful to mention only an AMPAS-specific keyword

21

filter. Id. 16. In other words, GoDaddy has no intention of ceasing to engage in

22

its unlawful, unfair, and deceptive business practice of cybersquatting. See

23

id. 16, 44-46. Under these circumstances, the Court should summarily deny

24
25
26
27
28

16

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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 18 of 29 Page ID #:26453

GoDaddys motion pursuant to the established law detailed above. 18

The six cases cited by GoDaddy none of which are federal cases or involve

an analysis of the Supreme Courts voluntary cessation jurisprudence do not alter

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

10

and Caro decisions involve the unremarkable rule that a claim for injunctive relief

11

does not lie where the wrongful practice ended long before the action is filed.

12

Feitelberg v. Credit Suisse First Boston LLC, 134 Cal. App. 4th 997, 1022 (2005);

13

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

14
15

doctrine of initial standing, but not mootness. In describing the distinction between

16

its standing and mootness jurisprudence, the Supreme Court has stated: The plain

17

lesson of these cases is that there are circumstances in which the prospect that a

18

defendant will engage in (or resume) harmful conduct may be too speculative to

19

support standing, but not too speculative to overcome mootness. Laidlaw, 528

20

U.S. at 190. In contrast to standing, by the time mootness is an issue, the case has

21

18

22
23
24
25
26
27
28

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).
12

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 19 of 29 Page ID #:26454

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

implement an AMPAS-specific keyword filter that it could easily abandon in the

future cannot be used to escape the type of permanent injunctive relief that

trademark holders, consumers, and the public interest require.21


B.

GoDaddys argument that the Academy lacks standing to seek

injunctive relief under the UCL is contrary to established law.

10

GoDaddy argues that AMPAS does not have Article III standing to seek

11

injunctive relief under the UCL for the same reason namely, because it claims to

12

have implemented an AMPAS-specific keyword filter in July 2013 that it has no

13

future plans to modify or abandon. Dkt. 606-1 at 16-17. This argument is

14

contrary to law because the Article III standing doctrine is focused on whether the

15

party invoking jurisdiction had the requisite stake in the outcome when the suit was

16

filed. Davis v. Federal Election Commn, 554 U.S. 724, 734 (2008); see also, e.g.,

17

Valle del Sol Inc. v. Whiting, 732 F.3d 1006, 1018 n.11 (9th Cir. 2013) (conduct

18

after a complaint is filed goes to mootness rather than standing) (citing Laidlaw,

19

528 U.S. at 190-92). GoDaddy admittedly did not implement its so-called

20

AMPAS-specific keyword filter until July 2013, which is over three years after

21

the Academy filed this lawsuit. CSUF 16. GoDaddy has not (and cannot) put

22
23
24
25
26
27
28

20

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).
13

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 20 of 29 Page ID #:26455

forth any argument or evidence to show that the Academy lacked standing when it

commenced this lawsuit in May 2010.

IV.

GoDaddys Motion For Summary Judgment Of The Academys Request

For Attorneys Fees Under 1021.5 Is Unavailing.

The operative complaints in this consolidated action request an award of the

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

10

nonpecuniary, has been conferred on the general public or a large class of people;

11

and (3) the necessity and financial burden of private enforcement are such as to

12

make the award appropriate. In re Conservatorship of Whitley, 50 Cal. 4th 1206,

13

1214 (2010). Whether a party has met these requirements for an award of fees and

14

the reasonable amount of such an award (including any enhancements) is left to the

15

Courts traditional equitable discretion. Bouvia v. County of Los Angeles, 195

16

Cal. App. 3d 1075, 1081 (1987).

17
18
19

A.

GoDaddys assertion that its motion on 1021.5 is not premature


is contrary to law.

As an initial matter, GoDaddy contends that it is appropriate for the Court to

20

dismiss the Academys request for attorneys fees under 1021.5 on summary

21

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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 21 of 29 Page ID #:26456

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)

(questions of fact and law still to be determined make summary judgment

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

F.3d 264, 270 (2d Cir. 1995).


Moreover, California courts have made it clear that a request for attorney

11
12

fees under 1021.5 should not be decided until after the court has made a

13

determination on the merits. See, e.g., Graham v. DaimlerChrysler Corp., 34 Cal.

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

determination of request for attorneys fees is premature if the action is still

19

unresolved).22

20

B.

GoDaddys claim that this lawsuit does not seek to confer a


significant benefit on the public is inaccurate.

21
22

GoDaddy argues the Academy will not be able to satisfy the significant

23

benefit prong of 1021.5 because it seeks no remedy on the publics behalf.

24

That is demonstrably false.


The operative complaints in both AMPAS I and AMPAS II specifically

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

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 22 of 29 Page ID #:26457

request relief on behalf of the public or a large class of persons. The Academy has

claimed, inter alia, that: (i) GoDaddy engages in illegal cybersquatting by

monetize[ing] parked domain names that are confusingly similar to distinctive,

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

enjoining GoDaddy from engaging in these unlawful, unfair and deceptive

12

practices. Id. 74; see also CSUF 17. The Academy has thus sought to enjoin

13

GoDaddys unlawful, unfair and deceptive cybersquatting on behalf of trademark

14

holders and the general public.

15

The Academy has adduced evidence that supports these allegations and

16

shows that GoDaddy has knowingly engaged in cybersquatting on a massive scale.

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

majority of domain names in the Parked Pages Program and in a concomitant

21

reduction in revenue. CSUF 44-46. It is therefore reasonable to infer that

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

WL 594571, at *5 (The practice of cybersquatting harms consumers, electronic

28

commerce, and the goodwill of valuable U.S. brand names, upon which consumers
16

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 23 of 29 Page ID #:26458

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

injunction to prevent GoDaddys business practice of cybersquatting by, for

example, requiring GoDaddy to implement and permanently maintain a trademark

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

aggrieved members of the public without pursuit of a class action.); Woods v.

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

15

substantial benefit upon a large group of trademark holders and consumers.


This case also seeks to establish that cybersquatting is a serious problem that

16
17

should not be tolerated even if it is being perpetrated by a company that generates

18

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

22

continued to engage in cybersquatting. For this additional reason, this litigation

23
24
25
26
27
28

23

See also, e.g., S. REP. 106-140 (1999), 1999 WL 594571, at *6 (cybersquatters


often register well-known marks to prey on consumer confusion by misusing the
domain name to divert customers from the mark owners site to the cybersquatters
own site); id. at *7 (Instances of cybersquatting continue to grow each year
because there is no clear deterrent and little incentive for cybersquatters to
discontinue their abusive practices.).
24
See also, e.g., People v. First Federal Credit Corp., 104 Cal. App. 4th 721, 73536 (2002) (courts power to grant injunctive relief to prevent future unfair business
practice is extraordinarily broad).
17

PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 24 of 29 Page ID #:26459

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.

GoDaddys argument about the financial burden prong is

unavailing, and its disclosure of AMPAS settlement proposals is

improper.

GoDaddy also argues that the financial burden of private enforcement is

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

12

confidential settlement proposals in knowing violation of Federal Rule of Evidence

13

408(a) and before the Court has ruled on the merits.

14
15

1.

Under established law, GoDaddys motion on the financial


burden prong is premature.

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The financial burden prong of 1021.5 requires the Court to determine, in its

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sound discretion, whether or not the cost of the claimants legal victory transcends

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his personal interest, and is focused not only on the costs of the litigation but also

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any offsetting financial benefits that the litigation yields or reasonably could have

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been expected to yield. In re Conservatorship of Whitley, 50 Cal. 4th 1206, 1215

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(2010). The California Supreme Court has delineated a specific method for

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performing an objective cost-benefit analysis to evaluate the financial burdens and

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incentives involved in pursuing a lawsuit. Robinson v. City of Chowchilla, 202 Cal.

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App. 4th 382, 402 (2011) (citing Whitley, 50 Cal. 4th at 1215).

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To estimate the value of the case at the time vital litigation decisions were

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being made based on objective measures, a court must consider two components.

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Id. The court first must determine the monetary value of the benefits actually

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obtained or reasonably expected to be obtained by the successful litigants


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PLAINTIFFS OPPOSITION TO
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Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 25 of 29 Page ID #:26460

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

eventually produced the successful outcome. Whitley, 50 Cal. 4th at 1215.

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

the Court rules on the merits.

After making its objective determination of the estimated value, a court must

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then turn to the actual costs of the litigation the legal fees, deposition costs,

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expert witness fees, etc. Id. The actual litigation costs involved in obtaining a

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successful outcome also cannot be determined until after the Court has reached the

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merits and there is a successful outcome. The final step of the cost-benefit analysis

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is to place the estimated value of the case beside the actual cost and make the

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value judgment whether it is desirable to offer the bounty of a court-awarded fee in

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order to encourage litigation of the sort involved in this case. Id. It will be

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desirable and appropriate except where the expected value of the litigants own

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monetary award exceeds by a substantial margin the actual litigation costs. Id.

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(emphasis added).

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Because the merits of the Academys claims have not yet been resolved, the

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Court cannot even begin to perform the required cost-benefit analysis. For this

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reason alone, GoDaddys motion for summary judgment based on the financial

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burden prong fails.

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2.

GoDaddys reliance on the statutory damages sought by


AMPAS is inapposite.

GoDaddy claims the expected value of the Academys monetary award

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exceeds by a substantial margin the actual costs of this litigation because the

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Academy seeks the maximum statutory damages of $100,000 per domain name.
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This argument is unavailing because it totally disregards the required cost-benefit

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

1215). In addition, GoDaddys argument fails to discount the probability of success

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

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name, as the court considers just). This too is required under the cost-benefit

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analysis. Furthermore, GoDaddy wholly ignores the fact that this hard fought case

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has been litigated for nearly five years, resulting in substantial actual costs that

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continue to accrue because the case has yet to be resolved. CSUF 53.

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3.

GoDaddys reliance on AMPAS settlement proposals is


improper and meritless.

GoDaddy also claims that expected value of the Academys monetary award

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exceeds by a substantial margin the actual costs of this litigation because the

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Academy made various settlement offers in 2010, 2012, and 2013. GoDaddys

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introduction of this evidence is improper because it is expressly prohibited under

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Rule 408(a) of the Federal Rules of Evidence. Rule 408(a) prohibits the admission

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of compromise offers to prove or disprove the validity or amount of a disputed

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claim. Fed. R. Evid. 408(a). That is exactly what GoDaddy has sought to do here:

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GoDaddy introduced the Academys compromise offers in an effort to prove or

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disprove the expected value of the Academys claims. See CSUF 20-23.

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Moreover, GoDaddy and its counsel knew or reasonably should have known

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that this evidence was inadmissible because, inter alia, all of the offers were

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conveyed by and to attorneys of record in this action (Dkt. 606-3 (McKown Decl.)

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at 17-20); the March 18, 2013 offer occurred during mediation (id. 19); and the
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PLAINTIFFS OPPOSITION TO
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PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 27 of 29 Page ID #:26462

October 8, 2013 offer was in a letter stating that it was a Rule 408 Confidential

Settlement Communication and was made pursuant to the Courts instruction

that the parties make additional efforts to settle the case. Id., Ex. G (emphasis in

original). Because such disclosures of compromise offers are so obviously

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

discussing settlement negotiations], sanctions under Rule 11 . . . would be in

order.); Comment to Rule 408 (2006 Amend.) (proof of statements and offers

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made in settlement would often have to be made through the testimony of attorneys,

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leading to the risks and costs of disqualification).


Even if this evidence were admissible (it is not), GoDaddys argument is

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unavailing for a number of reasons. First, GoDaddy relies on these settlement

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proposals the most recent of which is well over a year old and thus stale to

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shortcut the cost-benefit analysis required by the Court. That is simply not

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permitted under California law. See supra Section IV.B.1. (citing cases).25 Second,

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GoDaddy once again ignores the fact that this case has been pending for nearly five

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years, resulting in substantial actual costs that continue to accrue. CSUF 53.
D.

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GoDaddys Claim That AMPAS Was Motivated To File This Suit


By Its Own Interest Is Inapposite.

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Finally, GoDaddy contends that it is entitled to summary judgment on

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1021.5 because the undisputed evidence demonstrates that AMPAS was

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motivated to file this suit by its own interest. That argument fails because it is

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well established that a plaintiffs motivation for filing a lawsuit is irrelevant to the

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required 1021.5 cost-benefit analysis. E.g., MBNA America Bank, N.A. v.

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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).
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PLAINTIFFS OPPOSITION TO
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PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 28 of 29 Page ID #:26463

Gorman, 147 Cal. App. 4th Supp. 1, 10 (2006) (Even if a litigant is initially

motivated by his or her own economic interests, if the burden of litigation is

disproportionate to the individual stake . . . fees may be awarded. ). Moreover,

GoDaddy has not introduced any admissible evidence to support its contention. See

supra Section IV.A-C.


CONCLUSION

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For the foregoing reasons, the Academy respectfully requests that the Court
issue an order denying GoDaddys motion for partial summary judgment.

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Respectfully submitted,

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DATED: January 26, 2015

BOIES, SCHILLER & FLEXNER LLP

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FOOTE, MIELKE, CHAVEZ, & ONEIL LLC

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LEE, TRAN & LIANG APLC

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KUPFERSTEIN MANUEL & QUINTO LLP

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By: /s/David Zifkin


.
David Zifkin (SBN 232845)
BOIES, SCHILLER & FLEXNER LLP
Stuart Singer (pro hac vice)
ssinger@bsfllp.com
401 East Las Olas Blvd, Suite 1200
Fort Lauderdale, FL 33301
Tel: 954-356-0011
Fax: 954-356-0022
David L. Zifkin (SBN 232845)
dzifkin@bsfllp.com
401 Wilshire Blvd., Suite 850
Santa Monica, CA 90401
Tel: 310-752-2400
Fax: 310-752-2490
FOOTE, MIELKE, CHAVEZ, & ONEIL LLC
Robert M. Foote (pro hac vice)
rmf@fmcolaw.com
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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case 2:10-cv-03738-AB-CW Document 614 Filed 01/26/15 Page 29 of 29 Page ID #:26464

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Matthew Herman (pro hac vice)


mjh@fmcolaw.com
10 West State Street, Suite 200
Geneva, Illinois 60134
Tel: 630-232-7450
Fax: 630-232-7452
LEE, TRAN & LIANG APLC
James M. Lee (SBN 192301)
jml@ltlcounsel.com
Enoch H. Liang (SBN 212324)
ehl@ltlcounsel.com
601 South Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel: 213-612-8900
Fax: 213-612-3773
KUPFERSTEIN MANUEL & QUINTO LLP
David W. Quinto, Esq. (SBN 106232)
dq@kmqIitigation.com
11845 W. Olympic Boulevard, Suite 1000
Los Angeles, CA 90064
Tel: 424-248-6650
Fax: 424-248-6652
Attorneys for Plaintiff Academy of Motion Picture
Arts and Sciences

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PLAINTIFFS OPPOSITION TO
DEFENDANTS MOTION FOR
PARTIAL SUMMARY JUDGMENT