The Domain

During this litigation, we believe that Breaking Code Silence’s posture is that they believe that they somehow already own Mrs. McNamara’s domain. Even more stunning, Breaking Code Silence admitted, through discovery, that Mrs. McNamara purchased this domain over a year before the company was incorporated, BCS did not demand Mrs. McNamara’s domain from her after her resignation, and they did not even contact her to inform her that they believed they owned the domain before the filing of this action.

Background

From Whiteley’s Motion for Summary Judgment:

“In March 2020, to prevent anyone else from purchasing and co-opting a similar domain ending in “.org,” McNamara purchased the “breakingcodesilence.org” domain name (the “.Org Domain”), using her own personal domain registrar account (Hover.com) and her own funds. (UMF 12.) McNamara has since renewed the .Org Domain each year with her own funds, and never transferred or assigned ownership of the .Org Domain to anyone else. (UMF 13-14.) The .Org Domain has always been registered under McNamara’s personal Hover.com domain registrar account, which she has owned since 2016. (UMF 19.) Because McNamara has been verified through Google as the domain owner, she has access to all domain-related Google services for the .Org Domain through her own Google account. (UMF 20.)”

…

“At the founding of BCS, McNamara allowed the .Org Domain to direct to BCS’s WordPress website, thereby granting BCS permissions to access the domain-related services for the .Org Domain through its Google account. (UMFs 21, 23.) BCS never provided McNamara any consideration for that use of the domain. (UMF 22.) In April 2021, BCS also purchased the “breakingcodesilence.com” domain (the “.Com Domain”) and initially housed it in McNamara’s Hover account. (UMF 46.) BCS continues to own the .Com Domain, and has since moved the domain into its own Hover account.”

Below are the receipts proving that Mrs. McNamara has always maintained the domain in her own name, with her own personal funds, and in her own personal Hover.com account before Breaking Code Silence existed to the present day.

After Mrs. McNamara’s Resignation

Per Mrs. McNamara’s Declaration In Support of Whiteley’s Motion for Summary Judgment:

“After my resignation, on December 15, 2021, Rebecca Moorman, Emily Carter, and I received an email from Jennifer Magill requesting that we each execute an Intellectual Property Assignment Agreement. A true and correct copy of the December 15, 2021 email I received from Jennifer Magill with the attached draft Assignment of Intellectual Property Agreement is attached to the Index of Exhibits as Exhibit 11. I never executed the Assignment of Intellectual Property Agreement and never otherwise transferred or assigned the .Org Domain to BCS. BCS has never paid any expenses associated with the .Org Domain, either directly or to me as reimbursement. And BCS never even contacted me after my resignation to follow up about the Assignment of Intellectual Property Agreement or otherwise ask me to turn over my .Org Domain to BCS.”

Below is the email and the unexecuted Assignment of Intellectual Property that Mrs. McNamara:

In her deposition, Breaking Code Silence’s CEO, Jennifer Magill, testified to the following on November 14th, 2023:

Even in Breaking Code Silence’s Responses to McNamara’s First Set of Interrogatories, Breaking Code Silence admits “Plaintiff is not contending that McNamara transferred or assigned the domain to Plaintiff.” and “While she did not transfer or assign it, she should have and her failure to do so is a breach of her duties owed to the Plaintiff…”

See below for Breaking Code Silence’s response.

In Chelsea Papciak aka Chelsea Filer’s deposition, Ms. Papciak testified to the following:

Per Mrs. McNamara’s Declaration In Support of Whiteley’s Motion for Summary Judgment:

“After my resignation, BCS never requested that I transfer the .Com Domain that BCS purchased from Joshua Scarpuzzi out of my Hover domain registrar account. In an effort to assist BCS in migrating off of my .Org Domain, I created a separate Hover domain registrar account for the .Com Domain and authorized my attorney to reach out to counsel for BCS and provide BCS with the login credentials for the separate Hover account. On March 18, 2022, my attorney, Mandana Jafarinejad, sent a letter to DLA Piper requesting that BCS migrate its website to the .Com Domain within ten days.

…

Rather than migrating its website to its own .Com Domain within ten days as requested, on March 28, 2022, BCS/DLA Piper filed this lawsuit, falsely alleging that Whiteley and I accessed numerous BCS accounts without authorization, or exceeded authorized access to such accounts.”

A copy of the demand letter sent to BCS before they filed this action can be read here.

In Conclusion

The Ninth Circuit Court of Appeals has relied on the legislative history of the CFAA to confirm its plain reading of the statute. Specifically, the court has cited the 1984 House Report’s comparison of section 1030 of the CFAA to “breaking and entering.” Furthermore, the Ninth Circuit Court has long held that authorization has to be revoked explicitly and authorization needs to be affirmatively rescinded after initial authorization is granted for conduct to be a violation of the CFAA. Other recent cases also reflect this. There was even a recent Supreme Court Ruling related to this issue of authorized access which referred to the Ninth Circuit case authority.

In this case, Breaking Code Silence has admitted that Mrs. McNamara never completed an Assignment of Intellectual Property to transfer her domain to them.  Through their discovery responses, BCS admitted that Mrs. McNamara never transferred or assigned the domain to them, only that they believed she had a duty to. BCS admitted that Mrs. McNamara was paid no consideration for her domain. BCS did not demand the. Org domain from Ms. McNamara in the four-month gap between the time she resigned to the filing of this action, so even if its posture was that it owned the domain, it never explicitly revoked authorization.

However, Mrs. McNamara explicitly revoked Breaking Code Silence’s access to her domain on March 18th, 2022 via a demand letter. Instead of migrating to the .Com domain, Breaking Code Silence filed this action on what was supposed to be their final day to migrate away from the .Org domain.

To quote Mrs. McNamara’s Declaration in Support of Whiteley’s Motion for Summary Judgment:

“Although I could do so as the domain owner at any time, I never redirected the .Org Domain to any other website (other than BCS’s website) after my resignation or revoked BCS’s privileges with respect to the .Org Domain, initially because I wanted to give BCS some time to migrate off of the .Org Domain onto its own .Com Domain, and later because of this litigation. I elected to maintain the status quo until this action could be resolved, resulting in BCS using my .Org Domain without paying anything for it for nearly two years since my resignation. Notwithstanding, I have always understood and believed, and still believe, that I own the .Org Domain and that, as the domain owner, I was entitled to delegate ownership permissions to Whiteley, or anyone else I chose.”

At no point after Mrs. McNamara’s resignation did she redirect the domain from BCS’ WordPress site or revoke their use of her domain absent notice. Instead, BCS has been allowed the benefits of use of Mrs. McNamara’s domain for almost two additional years by filing this action while Mrs. McNamara continues to pay the renewal fees for her domain.

Like this post? Read more here: A Plot to Sue? 

INTERROGATORY NO. 4:
If YOU contend that MCNAMARA transferred or assigned the domain
to BCS:
(a) Provide the date of the assignment or transfer;
321
Case 2:22-cv-02052-MAA Document 152-64 Filed 11/22/23 Page 8 of 25 Page ID #:4891
(b) State all facts that support YOUR contention that the domain was
assigned or transferred to YOU;
(c) IDENTIFY all PERSONS with knowledge of the assignment or
transfer; and
(d) IDENTIFY all DOCUMENTS, including ESI and
COMMUNICATIONS, that RELATE TO the assignment or transfer.
RESPONSE TO INTERROGATORY NO. 4:
In addition to the General Objections set forth above and incorporated herein,
Plaintiff objects to this Interrogatory on the ground that it is compound because
subparts (b) (facts), (c) (persons), and (d) (documents) constitute three discrete
subparts. Plaintiff further objects to this Interrogatory on the ground that it is
overbroad and unduly burdensome because it requires Plaintiff to compile a list of
all documents and communications in connection with its response. Document
production has not yet begun; Plaintiff will produce documents in connection with
its response to this Interrogatory, if any exist, on a rolling basis after the entry of the
Stipulated Order Re: Joint E-Discovery Plan and Protocol for Discovery of
Electronically Stored Information.
Subject to and without waiving the foregoing objections, Plaintiff responds as
follows: Plaintiff is not contending that McNamara transferred or assigned the
domain to Plaintiff. Plaintiff is contending that it owns
the domain because McNamara was one of Plaintiff’s founders and registered the
domain for Plaintiff’s sole benefit. While she did not transfer or assign it, she
should have, and her failure to do so is a breach of her duties owed to Plaintiff and
does not establish that she rightfully holds the domain. The domain belongs to
Plaintiff for at least several reasons. First, the domain is identical to Plaintiff’s
name, is linked to Plaintiff’s website, and was only ever used for Plaintiff’s
purposes. Second, the registration of the domain coincided with the work done on
behalf of Plaintiff by Plaintiff’s founders, including McNamara. Third, since the
322
Case 2:22-cv-02052-MAA Document 152-64 Filed 11/22/23 Page 9 of 25 Page ID #:4892
time the domain was registered, Plaintiff has exercised control and influence over
the content of the website and the operation of the website, which often included
volunteers and employees all working for Plaintiff’s benefit.

2 Q Okay. And you received it on or about December
3 15th, 2021?
4 A It appears so.
510:03 Q And you understood that Ms. Moorman was telling
6 BCS that she would not be signing the assignment;
7 correct?
8 A Correct.
9 Q And you also understood that Ms. McNamara was
1010:03 refusing to sign the assignment; correct?
11 A Appears so.
12 Q Okay. Can you think of a specific writing in
13 which BCS told Ms. McNamara that BCS owned the dot org
14 domain before the complaint was filed?
1510:03 MR. GIBSON: Objection. Ambiguous as to timeframe.
16 Also, calls for speculation.
17 THE WITNESS: Well, I’m not sure I can point to an
18 exact date or exact statement at this point two and a
19 half years later.
2010:04 BY MR. TATE:
21 Q Okay. Can you recall a specific conversation
22 with Ms. McNamara before the complaint was filed, in
23 which you told her the dot org domain belongs to BCS,
24 not you?
2510:04 A I don’t believe I told her that.

Hi Katie, Emily, and Rebecca,

Hope you’re doing well. I’m attaching the assignment document from our attorneys as needed for the lawsuit.

Please let Tiffany (cc’d) and me know if you have any questions and then send the completed documents to me when ready. I will need to send them to Tiffany when complete instead of you doing so directly just so that we can maintain attorney client privilege as relates to these documents.

Thank you!

Jenny Magill, MBA

Interim Administrative Director

Breaking Code Silence, Inc.

Phone: 404-909-0629 (text/call)

www.breakingcodesilence.org

Schedule a meeting with me: https://arrangr.com/jennymagill

——– Forwarded message ———

From: Ferguson, Lisel M. <lisel.ferguson@procopio.com>
Date: Fri, Dec 3, 2021 at 2:58 PM
Subject: BCS
To: Jenny Magill

Attached is an assignment from Katie, Emily and Rebecca to BCS.  There are a couple of holes right now, but we can finalize once provided any additional information all of you have.  Please be as specific as possible with what each individual has to assign and make sure to include everything BCS related.  For instance, if images or powerpoint were created please provide title or image. Note we will need this to show ownership and we have discovery due at the end of the month as Attorney Jacobs has not surprisingly denied our request for a two week extension.

Please let us know if you have any questions or would like to set a call to discuss.  Thank you!

Sincerely,

Lisel

LISEL M. FERGUSON
PARTNER
PROCOPIO

 

ASSIGNMENT OF INTELLECTUAL PROPERTY

This ASSIGNMENT OF INTELLECTUAL PROPERTY (“Assignment”), is made and entered into by and between Katherine McNamara, Emily Carter and Rebecca Moorman, individuals, (collectively referred to as “Assignor”) and Breaking Code Silence, a California nonprofit benefit corporation, located at P.O. Box 91896, Pasadena, CA 91109 (“BCS”) 1005 E. Las Tunas Dr. Suite 104, San Gabriel CA 91776 (hereinafter “Assignee”) (Assignor and Assignee, collectively, the “Parties”).

WHEREAS, Katherine McNamara, is a co-owner of the BREAKING CODE SILENCE trademarks filed with the United States Patent and Trademark Office (“USPTO”) as Serial Numbers 90/157,154 and 90/208,204 and the sole owner of the trademark for BREAKING CODE SILENCE ACTION NETWORK, Serial Number 90/583,389.  McNamara is also the creator and user of content branded and used on social media and in the public as BREAKING CODE SILENCE and BCS, including but not limited to [describe anything else being assigned] (collectively referred to as the “Intellectual Property”).;

WHEREAS, Emily Carter, is a co-owner of the BREAKING CODE SILENCE trademarks filed with the United States Patent and Trademark Office (“USPTO”) as Serial Numbers 90/157,154 and 90/208,204, the owner and creator of survivor surveys and [describe anything else being assigned] (collectively referred to as the “Intellectual Property”).;

WHEREAS, Rebecca Moorman, is a co-owner of the BREAKING CODE SILENCE trademarks filed with the United States Patent and Trademark Office (“USPTO”) as Serial Numbers 90/157,154 and 90/208,204 and the creator of social media branded BREAKING CODE SILENCE or BCS, including but not limited to [insert handles or links to][describe anything else being assigned] (collectively referred to as the “Intellectual Property”).; and

WHEREAS, Breaking Code Silence, effective on incorporation (“Effective Date”), acquired all right, title and interest in and to the Intellectual Property, together with the goodwill of the business symbolized by the Intellectual Property, pursuant to this Assignment; and

WHEREAS, Assignor has agreed to assign the Intellectual Property to Assignee such that Assignee will own the Intellectual Property from and after the Effective Date.  NOW, THEREFORE, for good and valuable consideration, the sufficiency and receipt of which is hereby acknowledged:

  1. Pursuant to this Assignment, the Assignor, as of the Effective Date, does sell, assign, transfer and convey to Assignee all of its rights, title and interest in and to the Intellectual Property, including any causes of action relating to the Intellectual Property, claims for damages, profits and costs, both in equity and law, for any infringement or infringements of rights accruing in the Intellectual Property on, before or after the date of the Assignment, together with the good will of the business symbolized by the Intellectual Property.
  2. Assignor will assist Assignee in any reasonable manner to perfect Assignee’s right, title and interest in and to the Intellectual Property before the United States Patent and Trademark Office and the federal courts of the United States, of any matters relating to the Intellectual Property, including renewals, continuations, divisions, reissues, and substitutions, that Assignee elects to make covering the Intellectual Property.
  3. Assignor will not execute any writing nor do any act conflicting with this Assignment, and Assignor will at any time upon request, without further or additional consideration, execute such additional writings and do such additional acts, including the giving of testimony, as Assignee or its successors and assigns may deem necessary or desirable in the enjoyment of this Assignment, and in enforcing any rights relating hereto.
  4. The Commissioner for Trademarks of the United States is authorized and requested to recognize Assignee as the owner of the Intellectual Property, as applicable.
  5. This Assignment of Intellectual Property and all the terms hereof will inure to the benefit of and be binding upon Assignor and Assignee and their respective successors, assigns and legal representatives.
  6. The Parties agree that this Assignment will be governed by and construed under the internal laws of the State of California, as applicable to agreements made and to be performed in such state, without regard to principles of conflicts of law. The Parties agree that any dispute arising in connection with the interpretation or validity of, or otherwise arising out of, this Assignment, will be subject to the exclusive jurisdiction of the California State and Federal Courts in and for C  The Parties hereby agree to submit to the personal and exclusive jurisdiction and venue of such courts and agree that process may be served in the manner provided herein for the giving of notices or otherwise as allowed by applicable law.  Each party hereto waives any defense of inconvenient forum to the maintenance of any action so brought and waives any bond, surety, or other security that might be required of any other party with respect thereto.
  7. This Assignment may be executed in any number of counterparts, each of which shall be deemed an original and all of which shall constitute one agreement.

IN WITNESS WHEREOF, the Parties hereto have cause this Assignment to be duly executed as of the Effective Date set forth above.

 

Assignor                                                                      Acknowledged and Accepted by Assignee

Katherine McNamara                                                   Breaking Code Silence

 

By: __________________________________               By: __________________________________

Name: Katherine McNamara                                         Name: ________________________________

                                                                                    Title: _______________________________

Assignor

Emily Carter

 

By: __________________________________

Name: Emily Carter

Assignor

Rebecca Moorman

 

By: __________________________________

Name: Rebecca Moorman