Case3:09-cv-05085-CRB Document50 Filed06/18/10 Page1 of 5

1 COLBY B. SPRINGER (SBN 214868)

cspringer@carrferrell.com
2 CARR & FERRELL LLP
2200 Geng Road
3 Palo Alto, California 94303
Telephone: (650) 812-3400
4 Facsimile: (650) 812-3444

5 Of Counsel:
RONALD D. COLEMAN (Admitted Pro Hac Vice)
6 RColeman@goetzfitz.com
GOETZ FITZPATRICK LLP
7 One Penn Plaza—Suite 4400
New York, New York 10119
8 Telephone: (212) 695-8100

9 Attorneys for Defendant

AMERICAS NEWS INTEL PUBLISHING, LLC
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11 UNITED STATES DISTRICT COURT

12 NORTHERN DISTRICT OF CALIFORNIA

13 SAN FRANCISCO DIVISION

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INTEL CORPORATION, CASE NO. CV 09-05085 CRB
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Plaintiff,
16 DEFENDANT’S REPLY IN SUPPORT
v. OF MOTION TO DISMISS INTEL
17 CORPORATION’S FIRST AMENDED
AMERICAS NEWS INTEL PUBLISHING, COMPLAINT
18 LLC,
Date: July 2, 2010
19 Defendant. Time: 10:00 a.m.
Courtroom: 8, 19th Floor
20 Judge: Hon. Charles R. Breyer
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Defendant America’s News Intel Publishing, LLC (“ANIP”) hereby submits its
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memorandum of points and authorities in further support of its motion to dismiss the amended
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complaint pursuant to Fed. R. Civ. P. 12(b)(6).
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Defendant’s Reply In Support Of Motion To Dismiss Intel Corporation’s First Amended Complaint
(Case No. CV 09-05085 CRB)
 Case3:09-cv-05085-CRB Document50 Filed06/18/10 Page2 of 5

1 Dated: June 18, 2010 CARR & FERRELL LLP

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By:/s/ Colby B. Springer
4 COLBY B. SPRINGER
Attorneys for Defendant
5 AMERICAS NEWS INTEL PUBLISHING, LLC
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RONALD D. COLEMAN
7 GOETZ FITZPATRICK LLP
Of Counsel for Defendant
8 AMERICAS NEWS INTEL PUBLISHING, LLC
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Defendant’s Reply In Support Of Motion To Dismiss Intel Corporation’s First Amended Complaint
(Case No. CV 09-05085 CRB)
 Case3:09-cv-05085-CRB Document50 Filed06/18/10 Page3 of 5

1 SUMMARY OF ARGUMENT

3 Plaintiff Intel Corporation (“Intel”) argues, in its opposition to Americas News Intel

4 Publishing, LLC (“ANIP”)’s motion to dismiss Intel’s First Amended Complaint, that the reed-thin

5 amendments of the First Amended Complaint pass muster under Federal Rule of Civil Procedure

6 (12)(b)(6). While Plaintiff Intel may have changed the wording, the First Amended Complaint still

7 presents a patently implausible claim: that the mark LATIN INTEL for consulting on the Latin

8 Americas and a newsletter for the same infringes the INTEL trademarks associated with computer

9 hardware and related services. Intel’s opposition is entirely casuistic and addresses none of the

10 fundamental flaws in reasoning or defensibility (or lack thereof) of the legal result sought by way

11 of Intel’s initial complaint. That complaint was dismissed in that the result sought by Intel through

12 its pleading was one that the law does not, and should not, provide. The Court should similarly end

13 this matter—once and for all—by dismissing the First Amended Complaint and the present action

14 with prejudice.

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LEGAL ARGUMENT
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A. MOTIONS TO DISMISS UNDER RULE 12(b)(6) ARE NOT DISFAVORED AND
17 ARE PROPERLY GRANTED TO DISMISS PATENTLY MERITLESS CLAIMS
SUCH AS THOSE IN THE FIRST AMENDED COMPLAINT.
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Intel’s argument that the Court should be disinclined to dismiss this action based on broad
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statements in the cases about the low standard of notice pleading does not succeed at remedying the
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fact that the First Amended Complaint does not, as set forth in ANIP’s moving papers, even meet
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that purported standard.
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Most of the points raised in the Intel opposition do not require further reply and have been
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sufficiently addressed in ANIP’s initial moving papers seeking dismissal of the First Amended
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Complaint. Among those few arguments by Intel that warrant additional commentary in that they
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actually address the merits of the present motion is the contention that “the applicable law here
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does not prevent anyone from use of a word, but it does preclude use of a trademark that is likely to
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dilute or confuse, regardless of a defendant’s intent in selecting a mark.” In fact, this formulation is
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Defendant’s Reply In Support Of Motion To Dismiss Intel Corporation’s First Amended Complaint
(Case No. CV 09-05085 CRB)
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1 no more than a distraction, because (a) the First Amended Complaint still fails to set out a plausible

2 case that there could be a likelihood of confusion or dilution here, and (b) ANIP never suggested

3 that its “intent” in any way affects the legal issues of likelihood of confusion or of dilution.

4 That is because ANIP never used the INTEL trademark. ANIP used the English word

5 “intel.” This is not sophistry. It is the fundamental problem with each and every one of Intel’s

6 claims.

7 Intel states, “[d]efendant also argues that ‘government officials, journalists and pundits’

8 freely use the term ‘intel’ to refer to military intelligence. Again, this assertion is not relevant to

9 whether Intel has properly pled its claim.” Intel could not be more wrong. This so-called

10 “irrelevance” is wishful thinking by Intel as this use, which Intel does not and cannot dispute, has

11 everything to do with whether Intel has properly pled its claim. This is not because there is a

12 question of whether Intel knows how to prepare a lawsuit, but because within the ambit of a

13 “properly pled claim” lies not only artfulness in draftsmanship but the existence of a cognizable

14 legal claim. This, Intel does not have.

15 Intel relegates its response to the substantive legal claims to a footnote, using examples of

16 trademarks that are common dictionary terms. This mischaracterizes ANIP’s argument and utterly

17 fails to wrestle with the four-square applicability of cases such as Mattel, Inc. v. MCA Records,

18 Inc., 296 F.3d 894 (9th Cir. 2002) and Miller Brewing Co. v. G. Heileman Brewing Co., Inc., 561

19 F.2d 75 (7th Cir. 1977), cert den., 444 U.S. 1102 (1980) as to when a non-competitive or even

20 competitive use is made of a word from the language that coincides with a trademark used in an

21 entirely different context. Intel relies on Professor McCarthy, but ignores this passage from

22 ANIP’s moving brief, and worthy of being repeated here because it so fundamentally addresses the

23 only real issue in this case:

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This policy of allowing parallel “generic” use of a trademark in a different context
25 acknowledges the dynamic nature of modern language: the meaning of a word or
symbol is not necessarily fixed for all time as it is first used, or as it is defined in the
26 dictionary, but may grow and develop new meaning and nuances according to its
use. Although a word may have developed a new, generic meaning in a non-
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to identify the good will of its source, it has meaning as a trademark and that
28 meaning will be judicially protected against confusingly similar commercial use. . . .
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Defendant’s Reply In Support Of Motion To Dismiss Intel Corporation’s First Amended Complaint
(Case No. CV 09-05085 CRB)
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1 The trademark owner does not have the right to control public discourse
whenever the public imbues his mark with a meaning beyond its source-
2 identifying function.

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4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:3 (4th ed.2004)
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(emphasis added). Nothing in Intel’s opposition brief, including its insufficient legal responses to
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ANIP’s legal arguments respecting the specific legal issues and its “implausible” attempts to
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enunciate legally cognizable confusion or dilution, addresses this entirely dispositive and
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fundamental legal issue.
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CONCLUSION
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Accordingly, this Court should grant defendant’s Motion to Dismiss Intel’s First Amended
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Complaint.
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Respectfully submitted,
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Dated: June 18, 2010 CARR & FERRELL LLP
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17 By:/s/ Colby B. Springer

COLBY B. SPRINGER
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Attorneys for Defendant
19 AMERICAS NEWS INTEL PUBLISHING

20 RONALD D. COLEMAN
GOETZ FITZPATRICK LLP
21 Of Counsel for Defendant
AMERICAS NEWS INTEL PUBLISHING
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Defendant’s Reply In Support Of Motion To Dismiss Intel Corporation’s First Amended Complaint
(Case No. CV 09-05085 CRB)