Case3:14-cv-02419-LB Document32 Filed07/31/14 Page1 of 12 1 2 3 4 5 DURIE TANGRI LLP JOSEPH C. GRATZ (SBN 240676) jgratz@durietangri.com 217 Leidesdorff Street San Francisco, CA 94111 Telephone: 415-362-6666 Facsimile: 415-236-6300 Attorneys for Defendant AUTOMATTIC INC. 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 SAN FRANCISCO DIVISION 9 10 JEFFREY WILENS dba LAKESHORE LAW CENTER, 11 12 13 14 15 Plaintiff, v. AUTOMATTIC INC., GOOGLE INC., and Does 1 through 100, Defendants. Case No. 3:14-cv-02419-LB DEFENDANT AUTOMATTIC INC.’S REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT Date: Time: Ctrm: Judge: August 21, 2014 9:30 a.m. C - 15th Floor Honorable Laurel Beeler 16 17 18 19 20 21 22 23 24 25 26 27 28 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page2 of 12 1 TABLE OF CONTENTS 2 Page 3 I.  INTRODUCTION ...........................................................................................................................1  4 II.  ARGUMENT ...................................................................................................................................1  5 A.  The Lockheed Case Forecloses Secondary Trademark Liability Here ................................1  6 B.  The Complaint Does Not Allege Actionable Trademark Infringement by Anyone ............3  7 1.  The Court May Consider Printouts of the Websites in Question.............................3  8 2.  Whether or not the Court considers the printouts, the claims are subject to dismissal with prejudice. ..........................................................................................4  3.  Mr. Wilens’ unfounded speculation that Doe No. 1 might be a competitor in disguise does not affect the result. .......................................................................5  9 10 11 C.  Plaintiff Concedes That His ACPA Claim Is Foreclosed by Binding Ninth Circuit Authority ..............................................................................................................................7  12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page3 of 12 1 TABLE OF AUTHORITIES 2 Page(s) 3 Cases  4 Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) .............................................................................................................5, 6 5 6 In re Anonymous Online Speakers, 661 F.3d 1168 (9th Cir. 2011) ...........................................................................................................1, 6 7 In re Silicon Graphics Inc. Sec. Litig., 183 F.3d 970 (9th Cir. 1999) .............................................................................................................3, 4 8 9 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) ...............................................................................................................................2 10 Knievel v. ESPN, 393 F.3d 1068 (9th Cir. 2005) ...............................................................................................................3 11 12 Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999) .............................................................................................................2, 3 13 Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546 (9th Cir. 2013) .................................................................................................................7 14 15 Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308 (2007) ...............................................................................................................................3 16 Yong v. I.N.S., 208 F.3d 1116 (9th Cir. 2000) ...............................................................................................................8 17 18 19 20 21 22 23 24 25 26 27 28 ii REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page4 of 12 1 Defendant Automattic Inc. respectfully submits this reply in support of its Motion to Dismiss 2 Plaintiff’s First Amended Complaint, ECF No. 28. 3 I. 4 1 INTRODUCTION The claims against the service providers in this case are a sham designed to make it easier for Mr. 5 Wilens to learn the identity of Doe No. 1 in discovery. By naming service providers as defendants, Mr. 6 Wilens might have been able to get the identity of Doe No. 1 in exchange for dismissal, without having 7 to make the showing required by In re Anonymous Online Speakers, 661 F.3d 1168 (9th Cir. 2011), and 8 without facing the possibility a motion to quash from Doe No. 1. Unfortunately for Mr. Wilens, 9 Automattic would not take the deal, because it believes that the judiciary serves an important role in 10 protecting anonymous speech on the Internet, by acting as a gatekeeper for meritless claims designed to 11 chill online criticism. The claims should be dismissed with prejudice. 12 II. 13 ARGUMENT Mr. Wilens’ trademark claim is subject to dismissal with prejudice for two reasons. First, as 14 discussed in section II-A, his claim does not meet the standard announced by the Ninth Circuit for 15 secondary liability. Second, as discussed in section II-B, there is no underlying direct trademark 16 infringement, so there can be no liability for contributory trademark infringement. Mr. Wilens’ ACPA 17 claim is subject to dismissal because it is squarely precluded by binding Ninth Circuit authority, as 18 discussed in section II-C. 19 A. 20 Plaintiff appears to concede that the Amended Complaint does not adequately plead a claim for The Lockheed Case Forecloses Secondary Trademark Liability Here 21 direct trademark infringement against Automattic. Opp. at 5-6. He argues now that the Amended 22 Complaint contains facts that would support a claim for contributory trademark infringement. Id. The 23 Amended Complaint does not mention any claim for contributory trademark infringement, but assuming 24 that one is identified in the complaint, there can be no contributory trademark infringement claim against 25 Automattic based on a user’s choice of a website name. 26 27 28 1 This motion was filed jointly by Defendants Automattic Inc. and Google Inc. Plaintiff and Google Inc. subsequently stipulated to dismissal with prejudice. 1 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page5 of 12 1 Mr. Wilens is correct that a cause of action for contributory trademark infringement was 2 established in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). That case 3 spoke in terms of one who “supplies a product” to a known infringer, where the product is used to 4 achieve the known infringement. Id. at 854. The Ninth Circuit held in the Lockheed case that where a 5 service, rather than a physical product, is involved, the application of contributory infringement is 6 narrower. Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). Where 7 a service is involved, there cannot be contributory liability unless the defendant has “[d]irect control and 8 monitoring of the instrumentality used by a third party to infringe the plaintiff's mark.” Id. In Lockheed, 9 the defendant had accepted for registration the allegedly infringing name and “translate[d] the domain- 10 name combination to the registrant’s IP Address and route[d] the information or command to the 11 corresponding computer.” Id. at 985. Permitting that name to be chosen and routing requests containing 12 that name to the appropriate website was not direct control and monitoring of the instrumentality used for 13 infringement, because the defendant did not choose the domain name in question and to simply allowing 14 a particular name to be chosen by another is not to control an instrumentality of infringement. Id. 15 Here, Automattic’s participation in the alleged infringement is the same as the defendant’s in 16 Lockheed: Automattic did not prevent the selection by a third party of an allegedly trademarked website 17 name, and did not deactivate that name upon request. Indeed, Plaintiff emphasizes in his opposition that 18 he does not make any trademark claim based on the contents of the websites, but instead that “the 19 complaint focuses on how the website names (URL addresses) are designed to steer traffic from Plaintiff 20 to Doe Defendant No. 1.” Opp. at 3. Thus, Mr. Wilens is clear that he is alleging, for example, that his 21 trademark rights are infringed by the use of his name in the website address 22 “attorneyjeffreywilens.wordpress.com,” not the use of his name in the website contents (for example, 23 “Jeffrey Wilens is fighting for his own agenda, for greed rather than his clients agenda for justice.”) ECF 24 No. 28-3 at 1. There is no daylight, in terms of level of involvement, between Network Solutions’ role in 25 permitting the selection of “skunkworks.com” and Automattic’s role in permitting the selection of the 26 website names at issue here. 27 28 The fact that Automattic’s service is available only to those who abide by its Terms of Service does not affect the analysis. In Lockheed, defendant NSI placed conditions on the availability of its 2 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page6 of 12 1 service—it was “only available to a registrant who [had] paid NSI’s fee”—but that did not put NSI in 2 control of the allegedly infringing activity. Lockheed, 194 F.3d at 984. 3 4 5 6 7 Automattic did not choose the website names at issue. Under Lockheed, Automattic is not secondarily liable for allowing another to choose those website names through its service. B. The Complaint Does Not Allege Actionable Trademark Infringement by Anyone 1. The Court May Consider Printouts of the Websites in Question Mr. Wilens agrees that the contents of the websites in question “are clearly referenced in the 8 defamation claim” contained in the Amended Complaint. Opp. at 3. But he argues that they may not be 9 considered by the Court in adjudicating this motion, because this motion relates to other claims in the 10 complaint. That is not how the incorporation-by-reference doctrine works. That “doctrine permits a 11 district court to consider documents whose contents are alleged in a complaint . . . .” In re Silicon 12 Graphics Inc. Sec. Litig., 183 F.3d 970, 986 (9th Cir. 1999). It is not limited to documents whose 13 contents are alleged in certain sections of a complaint; it applies to the plaintiff’s complaint in its 14 entirety. See, e.g., Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007) (in deciding a 15 motion to dismiss, courts may consider “documents incorporated into the complaint by reference”) 16 (emphasis added). If Claim I of a complaint pleads a fact that dooms Claim II, a plaintiff may not avoid 17 dismissal by arguing that he pleaded that fact only in relation to Claim I. By the same token, because Mr. 18 Wilens’ defamation claim incorporates by reference documents that doom his trademark claims, Mr. 19 Wilens may not avoid dismissal of those claims by arguing that the court must blind itself to certain 20 portions of the complaint. 21 The incorporation-by-reference doctrine applies to documents attached to a motion to dismiss 22 “whose authenticity no party questions.” Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir. 2005). Mr. 23 Wilens says that he “does dispute the authenticity of the exhibits because they were printed after the 24 complaint was public record and the websites could have been altered by Doe Defendant in the interim.” 25 Opp. at 4. Speculative objections of this sort are not cognizable. The web postings contained in the 26 website printouts bear dates, and none of those dates is after the filing of this action. Mr. Wilens does not 27 describe the differences he believes exist between the website printouts and the websites that are referred 28 to in the Amended Complaint, or present any basis for thinking that any such differences exist. When the 3 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page7 of 12 1 court speaks of materials “whose authenticity no party questions,” Silicon Graphics, 183 F.3d at 986, it 2 does not invite a plaintiff to avoid dismissal simply by stating that he has some speculative or 3 metaphysical question about the documents. There must be some reason to think that the documents are 4 not what they purport to be. Mr. Wilens has not presented such a reason. 5 6 7 2. Whether or not the Court considers the printouts, the claims are subject to dismissal with prejudice. Even setting aside the material incorporated by reference into the Amended Complaint, the 8 noncommercial, critical nature of the websites in question is apparent. Each of the website excerpts 9 quoted within the four corners of the Amended Complaint demonstrate that the purpose of the website is 10 to criticize Mr. Wilens, not to impersonate him. 11 First, the Amended Complaint alleges that “Defendant stated that ‘Jeffrey Wilens is engaging in 12 the same activity that many lawyers, disbarred and/or jailed were engaged in.’” Am. Compl. ¶ 33. The 13 quoted text appears on jeffreywilens.com. See ECF No. 14-1 (Hyland Decl.) at 29. 14 Second, the Amended Complaint alleges that “[e]lsewhere on the Internet, Defendant stated: 15 ‘JEFFREY WILENS IS USING SAME TACTITS [sic] AS ATTORNEY’S [sic] WHO HAVE BEEN 16 JAILED AND DISBARRED. Many lawyers using the same unethical tactics as Jeffrey Wilens and have 17 disbarred and jailed. Jeffrey Wilens unethical moves will catch up to him and he will be next to be 18 disbarred.’” Am. Compl. ¶ 36. That text appears on lakeshorelawcenter.wordpress.com. See ECF No. 19 28-2 (Gratz Decl. Ex. A) at 2. 20 Third, the Amended Complaint alleges that “Defendant stated ‘Jeffrey Wilens gets the millions 21 while his clients the ‘victims’ get nothing.’” Am. Compl. ¶ 38. The quoted text appears on 22 jeffreywilens.com. See ECF No. 14-1 (Hyland Decl.) at 28. 23 Fourth, the Amended Complaint alleges that “Defendant stated ‘Jeffrey Wilens makes up victims 24 for his baseless class action suit.’” Am. Compl. ¶ 39. That text appears on 25 lakeshorelawcenter.wordpress.com. See ECF No. 28-2 (Gratz Decl. Ex. A) at 5. 26 27 28 Fifth, the Amended Complaint alleges: Defendant created and published a false review from supposedly an actual client of Plaintiff. In the review the supposed client stated “Jeffrey contacted me and asked me to be a victim in one of his frivolous litigation 4 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page8 of 12 1 against a major corporation (I would prefer not to name the corporation) [sic] as I’m currently working with them to cooperate in a suit against Mr. Wilens.” 2 3 Am. Compl. ¶ 40. The quoted text appears on lakeshorelawcenter.wordpress.com. See ECF No. 28-2 4 (Gratz Decl. Ex. A) at 6. 5 Sixth, the Amended Complaint alleges that “[i]n the published statements Defendant admitted his 6 goal was to cause Plaintiff to suffer ‘agony.’” Am. Compl. ¶ 42. The quoted text appears on 7 jeffreywilens.com, in the context of the sentence, “[w]e hope that you will soon have a taste of all the 8 agony you brought upon us, your victims over the years.” ECF No. 14-1 (Hyland Decl.) at 26. 9 These statements, both individually and taken together, show that the purpose of the websites in 10 question is not to “mislead consumers into buying a competing product,” but instead to criticize Mr. 11 Wilens. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 679 (9th Cir. 2005). Accordingly, because 12 “[a]ny harm to [Wilens] arises not from a competitor’s sale of a similar product under [Wilens’] mark, 13 but from [the anonymous speaker’s] criticism” of Mr. Wilens, he “cannot use the Lanham Act either as a 14 shield from [the anonymous] criticism, or as a sword to shut [the anonymous critic] up.” Id., 403 F.3d at 15 680. 16 3. 17 Mr. Wilens’ unfounded speculation that Doe No. 1 might be a competitor in disguise does not affect the result. 18 In the Opposition, Mr. Wilens concedes that “criticism or ‘gripe’ websites” are “not covered by 19 trademark law.” Opp. at 4. He argues, however, that “[i]t is quite possible that Doe No. 1 is a competitor 20 of Plaintiff or acting on behalf of a competitor and not a former client.” Id. There are two problems with 21 this line of argument: it misunderstands the Ninth Circuit’s holding in the Bosley case and, by allowing 22 any anonymous critic to be unmasked, it runs contrary to the Ninth Circuit’s policy in favor of lawful 23 anonymous speech. 24 25 a. The Bosley rule does not depend upon the identity of the speaker, but on the nature of the speech. 26 Criticism is not trademark infringement, no matter who it comes from. A competitor is as free to 27 criticize a company as a disgruntled customer, without interference from trademark law. “The Supreme 28 Court has made it clear that trademark infringement law prevents only unauthorized uses of a trademark 5 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page9 of 12 1 in connection with a commercial transaction in which the trademark is being used to confuse potential 2 consumers.” Bosley, 403 F.3d at 676. Criticism confuses no-one: when Dunkin’ Donuts posts ads 3 saying, “Friends Don’t Let Friends Drink Starbucks,” they are advertising their own coffee, and they are 4 uttering the trademark STARBUCKS, but they are not doing anything that could confuse consumers 5 about who they are. Thus, for trademark purposes, it doesn’t matter if Doe No. 1 is a disgruntled 6 opposing party or a disgruntled former client or a competitor; the point is that anyone reading 7 UnitedVictimsOfJeffreyWilens.wordpress.com or any of the other websites in question would understand 8 that, because they sharply criticize Mr. Wilens, the people who run them are not Mr. Wilens. That is all 9 that trademark law requires. 10 b. 11 Taking into account a critic’s identity in considering whether to dismiss a trademark claim would harm anonymous speech. 12 Requiring proof of an anonymous speaker’s identity in order to dismiss a trademark claim 13 relating to anonymous speech would also contravene the public policy of protecting anonymous speakers 14 against whom there is no meritorious claim. A plaintiff should not be able to use an artfully pleaded 15 trademark claim as a back door to learning the identity of his anonymous critic. But that is precisely 16 what Mr. Wilens’ theory would allow. 17 Under Mr. Wilens’ theory, anonymous online critics can always be unmasked by bringing a claim 18 for trademark infringement against the company that hosted the critical website, because the plaintiff can 19 simply insist that the anonymous critic might be a competitor in disguise. This theory contravenes the 20 policy behind the Ninth Circuit’s anonymous speech jurisprudence. The Ninth Circuit has recognized 21 “the important value of anonymous speech” and requires a showing that a claim is meritorious before 22 permitting an anonymous speaker to be unmasked. In re Anonymous Online Speakers, 661 F.3d at 1173. 23 The merits of Mr. Wilens’ claim for defamation against Doe No. 1 are not presently before the court, of 24 course—but the court should not adopt a rule that would result in the disclosure of an anonymous 25 speaker’s identity where that rule does not take into account the merits of the claim against that speaker. 26 27 28 6 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page10 of 12 1 c. There is no allegation and no basis for an allegation that Doe No. 1 is a competitor. 2 3 In arguing that his claims should not be dismissed because Doe No. 1 might be a competitor, Mr. 4 Wilens refers to the allegation in the Amended Complaint that “Doe No. 1 created the websites to divert 5 search engine traffic by clients and potential clients of Plaintiff from Plaintiff’s websites to the websites 6 controlled by Doe No. 1” and argues that “[u]ntil Doe No. 1’s identity can be uncovered, and he is shown 7 not to be a competitor, this allegations [sic] stands.” Id. But, of course, the Amended Complaint does 8 not contain any allegation that Doe No. 1 is a competitor; it alleges that Doe No. 1 created the websites in 9 order to divert people away from Mr. Wilens’ own website, which lauds Mr. Wilens, and toward Doe 10 No. 1’s websites, which criticize him. That allegation is in no way inconsistent with the idea that Doe 11 No. 1 is exactly who he claims to be: a defendant in a lawsuit in which Mr. Wilens was counsel for the 12 plaintiff, who wishes to express his views about Mr. Wilens’ conduct in litigation. 13 Mr. Wilens has previously represented to this Court, under penalty of perjury, that he believes the 14 websites to have been posted by the defendant in a lawsuit in which he was counsel for the plaintiff: 15 “There are a few former defendants I suspect might be the anonymous poster on the website, course, but 16 I am not going to name Doe without some supporting evidence. I have approached counsel for some of 17 the suspects but none of their clients would come forward and admit they are the anonymous poster.” 18 ECF No. 25 at 7 (Wilens Decl.) ¶ 7. It is curious, to say the least, for Mr. Wilens to make a legal 19 argument in a signed pleading based on the premise that Doe No. 1 might be a competitor, where he has 20 sworn that he does not believe that to be the case. 21 22 C. Plaintiff Concedes That His ACPA Claim Is Foreclosed by Binding Ninth Circuit Authority 23 Mr. Wilens concedes that his ACPA claim is foreclosed by the Ninth Circuit’s decision in 24 Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 554 (9th Cir. 2013). He argues, 25 however, that the case is wrongly decided, and requests “that the Court defer ruling as to this cause of 26 action until the Supreme Court has ruled on the certiorari petition.” Opp. at 9. Defendants disagree with 27 Plaintiff’s arguments regarding the merits of Petroliam Nasional Berhad, but we will not discuss that 28 disagreement because it does not make any difference. “[O]nce a federal circuit court issues a decision, 7 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page11 of 12 1 the district courts within that circuit are bound to follow it and have no authority to await a ruling by the 2 Supreme Court before applying the circuit court’s decision as binding authority.” Yong v. I.N.S., 208 3 F.3d 1116, 1119 (9th Cir. 2000) (vacating stay order). The Ninth Circuit has held that service providers 4 like Automattic do not perform functions that may make them liable under the ACPA; because that is the 5 binding law of the circuit, Mr. Wilens’ ACPA claim must be dismissed. 6 7 Dated: July 31, 2014 DURIE TANGRI LLP 8 9 10 11 By: /s/ Joseph C. Gratz JOSEPH C. GRATZ Attorneys for Defendant Automattic Inc. 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB Case3:14-cv-02419-LB Document32 Filed07/31/14 Page12 of 12 CERTIFICATE OF SERVICE 1 2 3 4 5 I certify that all counsel of record is being served on July 31, 2014 with a copy of this document via the Court’s CM/ECF system. /s/ Joseph C. Gratz JOSEPH C. GRATZ 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 REPLY IN SUPPORT OF MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT CASE NO. 3:14-CV-02419-LB