United States District Court, D. Nebraska
IAN V. JACOBS, Plaintiff,
FAREPORTAL, INC., Defendant.
R. Zwart United States Magistrate Judge
matter is before the court on Plaintiff's motion to
compel issuance of subpoenas (Filing No. 151), and
the parties' motions which are reflected in the attached
seeks permission to serve subpoenas on Google, LLC
(“Google”), Microsoft Corporation
(“Microsoft”), Yahoo! Inc. (“Yahoo”),
and Commission Junction (“Commission)” seeking
documents and communications relating to Defendant
Fareportal, Inc.'s (“Fareportal”) purchases
of “Cheapo” as a search engine keyword, in
addition to further documents and non-privileged
communications outlined below. (Filing No. 151).
addition, Defendant renews its motion for permission to
compel third-party Secret Penguin to produce outstanding
reasons stated below, Plaintiff's motions will be granted
in part and denied in part and Defendant's motion to
compel will be granted.
1998, Jacobs purchased the domain
“www.cheapo.com” for his current
website. In September 2007, Plaintiff filed U.S. Registration
Number 3, 430, 489 for the CHEAPO mark with the Patent and
Trademark Office (“PTO”). In June 2013, the PTO
accepted Plaintiff's Declaration of Use in Commerce and
Incontestability under Sections 8 and 15. Plaintiff states he
has used the cheapo.com website to sell a variety of
services. Currently, Plaintiff maintains an affiliate
advertising agreement with travel services website
Pricline.com (“Priceline”), where users provide
their desired travel data, and it is transmitted to Priceline
which generates proposals and ultimately completes the
transaction. Plaintiff is compensated by Priceline for
completed sales, and he has allegedly generated over $7.9
million in travel-related purchases by consumers.
is a technology company that develops computer software used
to power travel-related websites, including
www.cheapoair.com. CheapoAir does approximately $4
billion in global airline ticket sales annually, and
Fareportal earns revenue from these sales. Fareportal also
owns a federally registered, incontestable
trademark-CHEAPOAIR-(No. 3, 576, 166) which has served as the
travel website's business name since July 1, 2005.
November 21, 2018, the court ordered staged discovery,
finding it the most suitable means to achieve proportionality
and efficiently and effectively dispose of the issues of the
case given the challenges facing the parties. Liability
discovery was ordered as the first phase with damages
discovery to commence only after liability is established
against either party. (See Filing No. 116). On
November 7, 2018, Jacobs filed notices of subpoena to Google,
Microsoft, and Yahoo pursuant to FRCP 45 and NECivR. 45.1.
The subpoenas commanded production of:
All documents and communications relating to any Google
AdWords activity by Fareportal, Inc. from 2009 through the
present that involves the search keyword “cheapo”
or any search phrase involving the keyword
“cheapo”, including but not limited to (1)
analytics reports, (2) correspondence, and (3) information
relating to costs, pricing, and revenues.
(Filing No. 106; Filing No. 107; Filing
addition, on November 16, 2018, Plaintiff filed a notice of
subpoena seeking “all communications between Commission
Junction and Fareportal, Inc. [sic] referencing Cheapo.com
from 2006 to the present.” (Filing No. 110).
November 21, 2018, Defendant filed objections to each of the
above subpoenas (Filing No. 114). On February 26,
2019, a telephonic hearing was held with the undersigned to
address the dispute. (See Filing No. 140). It was not
immediately resolved. Instead, Plaintiff was directed to
complete the scheduled depositions, and if the information he
wanted was not obtained, to again request to serve the
March 22, 2019, Plaintiff moved to compel issuance of the
contested subpoenas to complete liability discovery, citing
his inability to obtain the requested information through
depositions. (Filing Nos. 106-08; Filing No.
addition, on April 23, 2019, a conference was held with the
parties, with oral argument presented as to various other
discovery disputes. (Filing No. 177, audio file).
The court's ruling and analysis as to each of these
motions is discussed below.
Federal Rules of Civil Procedure allow for discovery of
“any nonprivileged matter that is relevant to
any party's claim or defense and proportional to
the needs of the case.” Fed. R. Civ. P.
26(b)(1) (emphasis added). Relevancy, for the purposes
of discovery, includes “any matter that bears on, or
that reasonably could lead to other matters that could bear
on, any issue that is or may be in the case.”
Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351
(1978). The proportionality analysis then requires the court
to weigh “the importance of the issues at stake in the
action, the amount in controversy, the parties' relative
access to relevant information, the parties' resources,
the importance of the discovery in resolving the issues, and
whether the burden or expense of the proposed discovery
outweighs its likely benefit.” Fed. R. Civ. P.
Motion to Compel Issuance of Subpoenas on Google, Microsoft,
Yahoo, and Commission (Filing No. 151).
complaint asserts various claims against Defendant. For
purposes of this motion, however, Jacobs focuses on his
trademark infringement claim under the Lanham Act.
(Filing No. 153, at CM/ECF p. 16, n. 64). To prevail
on this claim, Jacobs must establish that (1) he owns a
valid, protectable mark, (2) Defendant has used the mark in
commerce without Plaintiff's consent; and (3) there is a
likelihood of confusion between Plaintiff's mark and
Defendant's mark. 15 U.S.C. § 1114(1); B & B
Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389
(8th Cir.2009); JDR Industries, Inc. v. McDowell,
121 F.Supp.3d 872, 882 (2015).
the central issue is whether Plaintiff's third-party
subpoenas seek documents relevant to establishing the
“likelihood of confusion” element of his Lanham
Act claim. The Eighth Circuit has prescribed the following
six factors (hereafter “SquirtCo
factors”) for the court to examine in assessing whether
there is a likelihood of confusion:
(1) the strength of the owner's mark;
(2) the similarity of the owner's mark and the alleged
(3) the degree to which the products compete with each other;
(4) the alleged infringer's intent to “pass
off” its goods as those of the trademark owner;
(5) incidents of actual confusion; and
(6) the type of product, its costs and conditions of