Black v. Irving Materials, Inc., Case No. 17-CV-06734-LHK

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
Writing for the CourtLUCY H. KOH United States District Judge
Docket NumberCase No. 17-CV-06734-LHK
PartiesJEFFERY DEAN BLACK, Plaintiff, v. IRVING MATERIALS, INC., Defendant.
Decision Date06 January 2020


Case No. 17-CV-06734-LHK


January 6, 2020


Re: Dkt. No. 201

Plaintiff and Counterdefendant Jeffery Dean Black ("Black") filed the instant lawsuit against Defendant and Counterclaimant Irving Materials, Inc. ("Irving"). Black asserted a reverse domain name hijacking claim and a declaratory relief claim to the effect that Black's use of the domain name was not unlawful, and to prevent the transfer of that domain name from Black to Irving. Irving asserted counterclaims for cybersquatting and for declaratory relief seeking to transfer the domain name from Black to Irving. Before the Court is Black's motion for attorney's fees. Having considered the parties' briefing, the relevant law, and the record in this case, the Court DENIES Black's motion for attorney's fees.


A. Factual Background

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1. Black Registers and Incorporates Internet Marketing Inc.

Since at least the mid-1990s, Black has invested significant time and money developing various internet entities, projects, and businesses. ECF No. 210 at 178-82. Black is also one of the first people to register domain names: "I was again one of the main speakers in the world going around talking about the internet is coming to get people to go online. My job was kind of, let me help convince all of the people in the world that this new thing, going from what we called the ARPAnet at the time, which only colleges used, and let's get people to go on to the internet. Something you take for granted today, back then it was all dial up. No one was doing it. My job was to make awareness to everybody in the world why they should do that." Id. at 182:20-183:4.

In March of 1994, Black acquired and registered for free the domain name at issue in this case, Id. at 183:15-184:5, 191:19-23. Black associated his home address, his home phone number, his cell phone number, and his pager with the domain name from 1994 to 2019, and all of this information was listed on WHOIS. Id.; ECF No. 211 at 281:11-14.

On April 6, 1994, Black also incorporated an entity named Internet Marketing Inc., which was the first company Black ever created. ECF No. 210 at 197:12-18, 236:20-22; BX-2 (Certificate of Incorporation of Internet Marketing Inc.). At the time Black created Internet Marketing Inc., Black was not aware of any other "IMI" business. ECF No. 210 at 191:10-14. When Black registered, Black was not aware of Irving Materials, Inc. ("Irving"): "I had no idea who Irving Materials was. I had never been out in Indiana. I've never seen any of their trucks driving here in California. I had no intent at all to profit off of their site." ECF No. 211 at 303:12-304:10.

Black testified that the first thing he did with Internet Marketing Inc. and the domain name after he registered it was that he started building some directories and spiders, which Black explained were "some software that [he] would write that would say, 'I want you to go out to every, every machine on the internet, and on your way, keep track of every little machine you bounce to, or routers.'" ECF No. 210 at 184:13-185:1, 201:9-14. Black further explained: "then I reversed that backwards and turned that into the first internet service provider listing in the world

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that would show how many people were behind each ISP at the time. An ISP is an internet service provider." Id. at 184:13-185:1.

In 1994, Black used to create a website that displayed "Internet Marketing, Inc." across the top of the page. Id. at 185:2-6; JX-5 (copy of from 1998). The Internet Archive Wayback Machine, available at, was not created until 1996 and did not start collecting websites until mid to late 1997, so the Wayback Machine did not have a copy of from 1994 to 1996. ECF No. 210 at 188:3-14. Black explained that in 1994, 1995, and maybe part of 1996, described Internet Marketing Inc. as a "data aggregator." Id. at 230:14-232:5.

Black used and Internet Marketing, Inc. to hold the data of his clients, and to create internet directories. Id. at 188:16-189:16. Black displayed the IMI mark on his website, documents, around 30 or more non-disclosure agreements, business plans for corporations, presentations and pitch decks. Id. at 189:23-190:8, 203:3-17. Black shared his IMI mark with companies, including Oracle, Microsoft, Yahoo, Digital Equipment, American Business Information, NW Ayer Incorporated, Excelsior, and Digex. ECF No. 210 at 215:1-8, 216:8-221:14. Black does not have many records left from Internet Marketing Inc. because Black sold the company to AltaVista for $25 million, and the records then became AltaVista's property. Id. at 203:17-25.

2. Black Changes the Corporate Form of Internet Marketing Inc.

Black rolled Internet Marketing Inc. into two other entities. Id. at 232:11-25. Specifically, Internet Marketing Inc. started as an S Corp that was tied to Black's social security number, but because venture capitalists would not fund S Corps, Black had to change the corporate form. Id. at 232:11-25, 236:13-22. Thus, Internet Marketing Inc. was rolled into a company called iChannel in 1996, which was then later rolled into iAtlas in 1998. Id. at 236:15-16; ECF No. 211 at 277:12-16, 312:16-314:4. Black worked with the law firm of Hale & Dorr to make sure that all of Internet Marketing Inc.'s records moved with the new companies. ECF No. 210 at 232:11-25.

3. Acquisition by AltaVista

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Black then entered into negotiations to sell iAtlas to AltaVista. Around October 1998, AltaVista specifically asked Black to take the website down to avoid any confusion about the company's name. ECF No. 210 at 241:21-25, 249:24-250:16; ECF No. 211 at 279:20-280:9. Black thus took down in October 1998. ECF No. 210 at 241:21-25, 249:24-250:16; ECF No. 211 at 279:20-280:9.

In 1999, Black sold iAtlas to AltaVista for $25 million. ECF No. 210 at 237:24-238:15; ECF No. 211 at 277:12-22, 314:5-10; BX-13.1 This transaction included all of the assets from Internet Marking Inc. going back to 1994, with the exception of the domain name, which AltaVista allowed Black to keep. ECF No. 211 at 277:12-278:21. Black then went to work for AltaVista. Id. at 314:6-9.

4. Black's Other Domain Names

In 1994, Black also registered other domain names, including "hiking, biking, scuba, tennis, recreation,, [and] Obviously, IMI was the first one I did. There might be a couple others that I did," perhaps "ten, fifteen, something like that. They're all generic terms." ECF No. 210 at 191:24-192:25. Black's plan for and was to build the first online booking reservation system in the world. Id. For, Black built a booking reservation system complete with maps, and hand coded over 40,000 hotels into the database. Id. at 193:18-194:15. Black ultimately sold in 1999 for $950,000 and in 2001 for $11 million. Id. at 195:8-21. Black gave away the hiking, biking, scuba, tennis, and recreation domain names for free. Id. at 195:22-197:11.

5. Irving Materials, Inc.

Defendant and Counterclaimant Irving is an Indiana concrete and construction materials supplier that does business in Indiana, Kentucky, Tennessee, Illinois, Ohio, Michigan, and Alabama. ECF No. 212 at 652:9-11.

At trial, the jury heard evidence about Irving's use of its IMI trademark. Jason Richmond,

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Irving's Director of Marketing and Business Development, testified that between 1965 to the present, Irving used the IMI trademark on fleet vehicles, ready mix concrete trucks, uniforms, building signage, billboards, business cards, price sheets, marketing materials, and promotional items. Id. at 635:13-636:7; D Ex.1. In 1962, Irving built the corporate office in Greenfield, Indiana and displayed the IMI trademark on the front of that office. ECF No. 212 at 643:1-9; D Ex. 1 at 85-86. Irving introduced into evidence a brochure from the 1962 original open house when Irving moved into the new corporate headquarters that displayed the IMI trademark. 6/14/19 Transcript at 647:19-24; D Ex. 1 at 45-49. In 1968, Irving displayed the IMI trademark on the company letterhead. 6/11/19 Transcript at 645:22-646:5; D Ex.1 at 266-67. In 1981, Irving displayed the IMI trademark and the goods that Irving provides—"concrete, gravel, stone, and sand"—on a brochure that Irving handed out to customers. 6/14/19 Transcript at 648:6-18; D Ex.1 at 2-5. Irving has displayed the IMI trademark on Irving's website,, since 1996. 6/14/19 Transcript at 636:21-23.

McPherson testified about Irving's registration of its IMI trademark. Irving filed its trademark registration application on September 19, 1994, and Irving's IMI trademark was registered on September 19, 1995. ECF No. 211 at 519:5-18; D Ex.11. The specific goods covered by the registration were "concrete and construction aggregates, including sand, gravel, stone, and concrete in Class 19." Id. at 519:13-19; D Ex.11. In its registration, Irving stated that Irving first used IMI on January 1, 1965, and that it first used IMI in commerce on March 1, 1991. ECF No. 211 at519:20, 525:11-17; D Ex.11. The United States Patent and Trademark Office registered the IMI trademark without requiring any proof of secondary meaning. ECF No. 199 at 7:1-7; ECF No. 211 at 519:5-18.

6. Irving Offers to Buy from Black

Jerry Howard, Irving's Vice President of IT and former Director of IT, testified that Irving's website is Id. at 397:14-20. Irving first put up its website in 1996. ECF No. 212 at 636:21-23. Howard first learned of the domain name in 1998. Id. at 402:22-24. Howard explained that from a search on WHOIS, Howard learned that Black was the owner of


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