Overstock v. Smartbargains

1 A pop-up is “an online advertisement that is displayed in
a new browser window.” Riddle v. Celebrity Cruises, Inc., 2004
UT App 487, ¶ 2.1, 105 P.3d 970 (internal quotation marks
omitted).
2008 UT 55
This opinion is subject to revision before final
publication in the Pacific Reporter.
IN THE SUPREME COURT OF THE STATE OF UTAH
----oo0oo----
Overstock.com, Inc., a Delaware No. 20061149
corporation,
Plaintiff, Appellant,
and Cross-Appellee,
v.
SmartBargains, Inc., a Delaware
corporation, F I L E D
Defendant, Appellee,
and Cross-Appellant. August 19, 2008
---
Third District, Salt Lake
The Honorable Timothy R. Hanson
No. 040909525
Attorneys: John P. Ashton, Stephen K. Christiansen, Nicole M.
Deforge, Salt Lake City, for plaintiff
David Jordan, David L. Mortensen, Salt Lake City,
for defendant
---
DURHAM, Chief Justice:
INTRODUCTION
¶1 This case comes before us on appeal from the Third
District Court. Plaintiff Overstock.com, Inc., (Overstock)
appeals (1) the district court’s grant of summary judgment to
defendant SmartBargains, Inc. (SmartBargains) holding that
SmartBargains’ use of Internet pop-up advertisements (pop-ups)1
is not unfair competition and is not tortious interference with
Overstock’s prospective business relations, and (2) the district
court’s denial of Overstock’s rule 56(f) motion for additional
discovery. Because we conclude that (1) there are no material
facts in dispute in this case that would require a trial on the

2 The eleven-month period from the time when SmartBargains
filed its motion to reconsider to when the court denied such
motion appears to have been caused by a variety of factors,
including Overstock’s supplemental memorandum questioning the
court’s jurisdiction to reconsider the motion, the reassignment
of the case to several different judges, and the parties’
stipulations to extend the time for filing responses.
3 The first version of the Utah Spyware Control Act was
(continued...)
No. 20061149 2
merits, and (2) the district court did not abuse its discretion
in denying Overstock’s Rule 56(f) motion, we affirm.
BACKGROUND
¶2 Overstock is a company that sells brand-name consumer
products through its Internet website at
http://www.overstock.com. SmartBargains is a company that also
sells consumer products through its Internet website at
http://www.smartbargains.com. On May 7, 2004, Overstock filed a
complaint against SmartBargains. Overstock complained that pop-
ups advertising SmartBargains unlawfully appeared when customers
accessed Overstock’s website and that these pop-ups were intended
to and did confuse and deceive customers, trade upon Overstock’s
goodwill, blur Overstock’s trademarks, dilute Overstock’s
trademarks’ ability to identify Overstock as the source of goods
and services, erode the attractiveness of shopping on Overstock’s
website, disrupt Overstock’s efforts to create a user-friendly
site, and steal customers from Overstock. Overstock alleged
three causes of action: (1) violation of the 2004 Utah Spyware
Regulation Act, (2) common law unfair competition, and
(3) tortious interference with prospective economic advantage.
I. SUMMARY JUDGMENT MOTION
¶3 SmartBargains filed a motion for judgment on the
pleadings on August 17, 2004, which was denied on January 27,
2005. SmartBargains filed a motion to reconsider the court’s
denial on February 25, 2005, which was denied on February 15,
2006.2 On March 31, 2006, SmartBargains filed a motion for
summary judgment. This motion was granted on December 5, 2006.
¶4 In its ruling on the motion for summary judgment, the
district court determined that the Utah Spyware Control Act, as
adopted by the 2004 legislature and codified at Utah Code
sections 13-40-101 to -401 (Supp. 2004), was an unconstitutional
burden on interstate commerce that violated the Dormant Commerce
Clause.3 The Utah Spyware Control Act made it illegal for

3 (...continued)
signed by the Governor on March 23, 2004, and scheduled to go
into effect on May 2, 2004. Before the Act went into effect, on
April 12, 2004, a company called WhenU.com challenged the
constitutionality of the Act. On July 8, 2004, the court in the
WhenU case granted a preliminary injunction, finding
“[d]efendants, their officers, agents, employees, and attorneys,
together with all persons in active concert or participation with
them, are hereby enjoined and restrained during the pendency of
this action, from enforcing or placing into effect the Utah
Spyware Control Act . . . which was enacted as House Bill No. 323
in the 2004 General Session of the Utah Legislature . . . .”
Preliminary Injunction at 2-3, WhenU.com, Inc. v. Utah,
No. 040907578 (Utah 3d Dist. July 8, 2004). After the State’s
motion for reconsideration of the preliminary injunction was
denied, both parties abandoned the litigation, and the State
adopted a new Utah Spyware Control Act. Compare Utah Code Ann.
§ 13-40-101 to 401 (Supp. 2004), with Utah Code Ann. § 13-40-101
to 401 (2005).
3 No. 20061149
SmartBargains’ pop-ups to appear when customers visited the
Overstock website. The Utah Spyware Control Act provided:
(1) A person may not:
(a) install spyware on another person’s
computer;
(b) cause spyware to be installed on
another person’s computer; or
(c) use a context based triggering
mechanism to display an advertisement that
partially or wholly covers or obscures paid
advertising or other content on an Internet
website in a way that interferes with a
user’s ability to view the Internet website.
Utah Code Ann. § 13-40-201(4) (Supp. 2004). In the statute,
spyware is defined to include “software residing on a computer
that . . . displays or causes to be displayed an advertisement in
response to the computer’s usage if the advertisement . . . uses
a federally registered trademark as a trigger for the display of
the advertisement.” Utah Code Ann. § 13-40-102(4). Overstock
does not appeal the district court’s decision that the Act was
unconstitutional.
¶5 The court also determined that the pop-ups did not
constitute common law unfair competition. The court held that

4 The stipulated discovery schedule was amended on November
29, 2005, and on June 9, 2006. The parties stipulated to amend
it again if necessary after the motion for summary judgment was
decided.
5 Earlier, on February 25, 2005, SmartBargains filed a
motion for a protective order requesting postponing discovery
until after SmartBargains’ motion for reconsideration was
(continued...)
No. 20061149 4
SmartBargains’ pop-ups appear in separate and distinct windows
from Overstock’s website, bear SmartBargains’ name, and are not
labeled as being affiliated with Overstock’s website. The court
determined that “as other courts have recognized, computer users
are not confused by pop-up advertisements that appear in a window
that is separate and distinct from the underlying website.
Accordingly, the advertisements do not deceive customers as to
their source as a matter of law.” The court further determined
that “Overstock has presented no evidence that SmartBargains has
used Overstock’s trademarks to lure away customers. Thus,
SmartBargains’ pop-up advertisements do not create initial
interest confusion with Overstock’s website, goods, or services.”
¶6 The court concluded that the pop-ups did not constitute
tortious interference with Overstock’s existing or prospective
economic relations because the pop-ups were not deceptive,
confusing, or misleading, nor was their purpose to deceive
customers. Rather, the court held that Overstock and
SmartBargains are competitors and that the purpose of the pop-ups
was to compete for customers.
¶7 Overstock appeals the summary judgment ruling with
respect to both the claim for relief for unfair competition and
the claim for relief for tortious interference with existing or
prospective economic relations.
II. RULE 56(f) MOTION
¶8 Although SmartBargains’ dispositive motions were
pending for a significant portion of the district court’s
proceedings, the parties still exchanged discovery. On January
27, 2005, the court signed the parties’ stipulated discovery
schedule.4 On February 11, 2005, Overstock provided its initial
disclosures to SmartBargains, and on February 15, 2005,
SmartBargains provided its initial disclosures to Overstock. On
January 7, 2005, Overstock served its first set of
interrogatories, requests for admissions, and requests for
production of documents on SmartBargains. SmartBargains
responded to these discovery requests on March 1, 2005,5 and

5 (...continued)
resolved. The court denied this motion for a protective order on
July 13, 2005.
6 Overstock responded to SmartBargains’ discovery requests
one day after Overstock filed its rule 56(f) motion and its
opposition to SmartBargains’ summary judgment motion.
5 No. 20061149
supplemented its responses on August 25, 2005. SmartBargains
served its first set of discovery on Overstock on September 22,
2005, to which Overstock responded on May 11, 2006.6 Neither
party filed more than one set of discovery requests.
¶9 Overstock opposed SmartBargains’ motion for summary
judgment and also filed a rule 56(f) motion and memorandum in
support. The rule 56(f) motion and memorandum in support claimed
that although SmartBargains had responded to Overstock’s
discovery requests, SmartBargains designated much of the
information it provided as “attorneys eyes only” and barred
Overstock’s attorneys from revealing the information to their
client. Further, Overstock argued that summary judgment was
premature because depositions had not been taken, no documents
had been produced, and no testimony had been received. In its
moving papers, Overstock did not identify what discovery it
needed to oppose the summary judgment motion. After
SmartBargains pointed out deficiencies in Overstock’s moving
papers, Overstock identified the discovery it needed in
Overstock’s reply memorandum and accompanying affidavit. In its
affidavit and reply memorandum, Overstock argued that it needed
to know: when, if ever, SmartBargains’ pop-ups were delivered to
a computer user on Overstock’s webpage; various types of pop-ups
and examples of pop-ups; the total number of pop-ups placed by
third parties; the pop-ups and compensation paid to vendors for
the pop-ups; the number of pop-ups placed; the number of Internet
users accessing pop-ups; the sales associated with the pop-ups;
whether SmartBargains intentionally directed advertising to
Overstock’s website and targeted Overstock’s customers, the
context of such advertising, and the extent of such advertising;
an explanation of part of SmartBargains’ responses to Overstock’s
discovery requests; the specific type of pop-ups utilized; and
the websites targeted.
¶10 The district court heard oral argument on Overstock’s
rule 56(f) motion. During oral argument, counsel for Overstock
admitted that Overstock had not requested additional discovery or
filed a motion to compel discovery from SmartBargains because
Overstock was waiting for the district court’s determination of
the constitutionality of the Utah Spyware Control Act.
Overstock’s counsel stated, “And so, as a practical matter, I

No. 20061149 6
have not pushed the discovery because, if the Utah statute is
constitutional, if the Utah statute is enforced here, it’s a very
different process of discovery than it would be if we’re dealing
with the common law claims.” During oral argument, the district
court denied Overstock’s rule 56(f) motion.
¶11 Overstock appeals the denial of its rule 56(f) motion.
We have jurisdiction pursuant to Utah Code section 78A-3-
102(3)(j) (2008).
ANALYSIS
I. SUMMARY JUDGMENT
¶12 We review the district court’s grant of a motion for
summary judgment for correctness. See Waddoups v. Amalgamated
Sugar Co., 2002 UT 69, ¶ 21, 54 P.3d 1054. Summary judgment is
appropriate when “the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any
material fact and that the moving party is entitled to a judgment
as a matter of law.” Utah R. Civ. P. 56(c). Although we
consider the facts in the light most favorable to the nonmoving
party, to defeat a motion for summary judgment, any alleged issue
of fact must be material. See Norton v. Blackham, 669 P.2d 857,
859 (Utah 1983); see also Brigham Truck & Implement Co. v.
Fridal, 746 P.2d 1171, 1173 (Utah 1987) (“[B]are contentions,
unsupported by any specifications of facts in support thereof,
raise no material questions of fact.”); Reagan Outdoor Adver.,
Inc. v. Lundgren, 692 P.2d 776, 779 (Utah 1984) (“A major purpose
of summary judgment is to avoid unnecessary trial by allowing the
parties to pierce the pleadings to determine whether there is a
genuine issue to present to the fact finder. In accordance with
this purpose, specific facts are required to show whether there
is a genuine issue for trial. The allegations of a pleading or
factual conclusions of an affidavit are insufficient to raise a
genuine issue of fact.” (citations omitted)).
A. Unfair Competition
¶13 Pursuant to Utah common law, unfair competition
includes--but is not limited to--passing off, palming off,
imitating, and causing or likely causing confusion or deception.
See Allen’s Prods. Co. v. Glover, 414 P.2d 93 (Utah 1966); Budget
Sys., Inc. v. Budget Loan and Fin. Plan, 361 P.2d 512 (Utah
1961); Hi-Land Dairyman’s Ass’n. v. Cloverleaf Dairy, 151 P.2d
710 (Utah 1944); Beard v. Bd. of Educ., 16 P.2d 900 (Utah 1932);
Rocky Mountain Bell Tel. Co. v. Utah Indep. Tel. Co., 88 P. 26
(Utah 1906). In Rocky Mountain, we declared:

7 Overstock effectively demonstrated to the district court
and this court that not all of SmartBargains’ pop-ups contained a
disclaimer. However, the district court did not rely on the
presence of a disclaimer in declaring that the pop-ups did not
constitute unfair competition.
8 See, e.g., 1-800 Contacts, Inc. v. WhenU.com, Inc., 414
F.3d 400 (2d Cir. 2005) (reversing district court’s issuance of a
preliminary injunction to enjoin company from placing pop-ups
over websites); Wells Fargo v. WhenU.com, Inc., 293 F. Supp. 2d
734 (E.D. Mich. 2003) (refusing to grant preliminary injunction
against company’s pop-ups); U-Haul Int’l, Inc. v. WhenU.com,
Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003) (granting summary
judgment in favor of company supplying pop-ups).
7 No. 20061149
Unfair competition as we understand it,
consists in one person imitating by some
device or designation the wares made and sold
by another for the purpose of palming off or
substituting his wares for those of the
other, and in that way misleading the
purchaser by inducing him to buy the wares
made and sold by the first instead of those
by the second.
88 P. at 28; see also Beard, 16 P.2d at 902 (“Unfair competition
consists in passing off or attempting to pass off, upon the
public, the goods or business of one person as and for the goods
or business of another.” (citations omitted)). We have also
declared, “It is enough if it be shown that there is the
probability of confusion or deception.” Hi-Land Dairyman’s
Ass’n., 151 P.2d at 717.
¶14 In granting summary judgment, the district court relied
on the absence of evidence of consumer confusion, passing off, or
deception, and the nature of pop-ups, in finding that there was
no unfair competition. With regard to the nature of the pop-ups,
in its summary judgment grant, the district court found that
SmartBargains’ pop-ups appear in separate and distinct windows
from Overstock’s website, bear SmartBargains’ name, and are not
labeled as being affiliated with Overstock’s website.7 The
district court used the analysis contained in federal cases (the
“WhenU cases”)8 to grant summary judgment in favor of
SmartBargains that “computer users are not confused by pop-up
advertisements that appear in a window that is separate and
distinct from the underlying website. Accordingly, the
advertisements do not deceive customers as to their source as a
matter of law.”

No. 20061149 8
¶15 We do not adopt a per se rule holding that all pop-ups
do not violate Utah unfair competition law. The WhenU cases are
of limited value in our analysis because they interpret federal
laws, including the Lanham Act, trademark statutes, and copyright
statutes. For example, in Wells Fargo v. WhenU.com, Inc.,
plaintiffs sought a preliminary injunction arguing that WhenU’s
pop-ups violate federal trademark or copyright law. 293 F. Supp.
2d 734, 736 (E.D. Mich. 2003). In U-Haul Int’l, Inc. v.
WhenU.com, Inc., the court determined that the WhenU pop-ups did
not infringe on U-Haul’s registered trademark or alter U-Haul’s
copyrighted advertisements, and therefore did not violate the
Lanham Act or the trademark infringement statute. 279 F. Supp.
2d 723, 725, 727 (E.D. Va. 2003) (“Because the computer software
at issue does not copy or use U-Haul’s trademark or copyright
material the Court concludes that WhenU’s pop-up advertising does
not constitute trademark or copyright infringement or unfair
competition; therefore, the Court grants WhenU’s motion for
summary judgment.”). 1-800 Contacts, Inc. v. WhenU.com, Inc.
addressed “whether the placement of pop-up ads on a [computer
user’s] screen contemporaneously with either the 1-800 website or
a list of search results obtained by the [computer user’s] input
of the 1-800 website address constitutes ‘use’ under the Lanham
Act.” 414 F.3d 400, 409-10 (2d Cir. 2005). None of these WhenU
cases addresses common law claims for unfair competition.
¶16 We agree with the district court that in this case
Overstock failed to show that SmartBargains’ pop-ups, labeled
with the SmartBargains’ logo and appearing in a separate window
on top of Overstock’s website, are deceptive, infringe a
trademark, pass off SmartBargains’ goods as those of Overstock’s
goods, or are likely to cause confusion. A party disputing a
summary judgment motion has the burden of disputing the motion
with material facts. See Norton, 669 P.2d at 859.
When a motion for summary judgment is made
and supported as provided in this rule, an
adverse party may not rest upon the mere
allegations or denials of the pleadings, but
the response, by affidavits or as otherwise
provided in this rule, must set forth
specific facts showing that there is a
genuine issue for trial.
Utah R. Civ. P. 56(e). “An affidavit that merely reflects the
affiant’s unsubstantiated opinions and conclusions is
insufficient to create a genuine issue of fact.” Dairy Prod.
Servs., Inc. v. City of Wellsville, 2000 UT 81, ¶ 54, 13 P.3d
581. “[A]n affidavit on information and belief is insufficient
to provoke a genuine issue of fact.” Treloggan v. Treloggan, 699

9 No. 20061149
P.2d 747, 748 (Utah 1985). In its affidavit to oppose summary
judgment, Overstock failed to provide evidence of any material
fact that was based upon more than unsubstantiated opinions and
conclusions. Overstock had the capability to conduct its own
investigation into the types of pop-ups that affected Overstock’s
website and the customers it lost due to SmartBargains’ pop-ups.
Overstock could have conducted surveys of its customers and
presented the district court with evidence that consumers were
confused by SmartBargains’ pop-ups. Such survey evidence was
performed in the WhenU cases. See Wells Fargo, 293 F. Supp. 2d
at 755 (“[P]laintiffs have failed to come forward with concrete
evidence of even a single customer or potential customer who
failed to purchase products or services from them because of
WhenU.”); 1-800 Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d 467,
499 (S.D.N.Y. 2003) (“Proof of actual confusion, in the form of
market research survey evidence, is highly probative of the
likelihood of consumer confusion, subject to the condition that
the survey must have been fairly prepared and its results
directed to the relevant issues.” (internal quotation marks and
ellipsis omitted) rev’d, 414 F.3d 400 (2d Cir. 2005). Absent
such evidence, the court is entitled to assume that pop-ups
appearing in a separate window and labeled with the sponsor’s
name are not unfairly competitive.
¶17 Overstock has failed to demonstrate “specific facts”
beyond the allegations of the pleadings “to show whether there is
a genuine issue for trial” that SmartBargains unfairly competed
with Overstock through the use of its pop-ups. See Reagan
Outdoor Adver., 692 P.2d at 779. We therefore affirm the
district court’s grant of SmartBargains’ motion for summary
judgment for unfair competition.
B. Tortious Interference with Prospective Business Relations
¶18 In Leigh Furniture & Carpet Co. v. Isom, this court
recognized a “common-law cause of action for intentional
interference with prospective economic relations.” 657 P.2d 293,
304 (Utah 1982). “[I]n order to recover damages, the plaintiff
must prove (1) that the defendant intentionally interfered with
the plaintiff’s existing or potential economic relations, (2) for
an improper purpose or by improper means, (3) causing injury to
the plaintiff.” Id. “Improper purpose is established by a
showing that the actor’s predominant purpose was to injure the
plaintiff.” St. Benedict’s Dev. Co. v. St. Benedict’s Hosp., 811
P.2d 194, 201 (Utah 1991).
Improper means are present where the means
used to interfere with a party’s economic
relations are contrary to law, such as

No. 20061149 10
violations of statutes, regulations, or
recognized common law rules. Improper means
include violence, threats or other
intimidation, deceit or misrepresentation,
bribery, unfounded litigation, defamation, or
disparaging falsehood. Means may also be
improper or wrongful because they violate an
established standard of a trade or
profession.
Id. (internal quotation marks and citations omitted).
¶19 As in St. Benedict’s, Overstock has failed to present a
material fact that would satisfy the second prong of the Leigh
test. See St. Benedict’s, 811 P.2d at 2001 (citing Leigh
Furniture, 657 P.2d at 304). SmartBargains’ pop-ups do not
present an improper purpose or an improper means. SmartBargains’
pop-ups indisputably exist to compete with Overstock.
Competition is not an improper purpose, even though other by-
products of competition may exist. See Leigh Furniture, 657 P.2d
at 307 (“In the rough and tumble of the marketplace, competitors
inevitably damage one another in the struggle for personal
advantage. The law offers no remedy for those damages--even if
intentional--because they are an inevitable by-product of
competition.”); see also St. Benedict’s, 811 P.2d at 201 (“An
immediate intent to injure a competitor may be motivated and
outweighed by a legitimate long-range interest in furthering
one’s own economic condition.”); Beard v. Bd. of Educ., 16 P.2d
at 902 (“The intent of a party to draw custom from a competitor
is not actionable unless his acts are unlawful.”). Overstock has
likewise failed to demonstrate that pop-ups are an improper means
of competition. See St. Benedict’s, 811 P.2d at 201 (“Improper
means are present where the means . . . are contrary to law
. . . .” (internal quotation marks omitted)). Overstock has
failed to present evidence that the pop-ups violate common law.
Overstock has not alleged in this appeal that SmartBargains’ pop-
ups violate statutory law. We therefore affirm the district
court’s grant of SmartBargains’ motion for summary judgment for
tortious interference.
II. RULE 56(f)
¶20 We review the denial of a rule 56(f) motion for an
abuse of discretion. See Crossland Sav. v. Hatch, 877 P.2d 1241,
1243 (Utah 1994). We will not reverse the district court’s
decision to grant or deny a rule 56(f) motion for discovery
unless it “exceeds the limits of reasonability.” Id. (internal
quotation marks omitted); see also Price Dev. Co. v. Orem City,
2000 UT 26, ¶ 9, 995 P.2d 1237.

11 No. 20061149
¶21 The “limits of reasonability” standard is based on the
specific circumstances of each case--there is not a “bright line”
test for determining whether the district court abused its
discretion. See Crossland, 877 P.2d at 1243-44. Some of the
relevant factors in determining whether a rule 56(f) motion is
warranted include, but are not limited to: (1) an examination of
the party’s rule 56(f) affidavit to determine whether the
discovery sought will uncover disputed material facts that will
prevent the grant of summary judgment or if the party requesting
discovery is simply on a “fishing expedition,” (2) whether the
party opposing the summary judgment motion has had adequate time
to conduct discovery and has been conscientious in pursuing such
discovery, and (3) the diligence of the party moving for summary
judgment in responding to the discovery requests provided by the
party opposing summary judgment. See Callioux v. Progressive
Ins. Co., 745 P.2d 838, 841 (Utah Ct. App. 1987) (citing Cox v.
Winters, 678 P.2d 311, 312–14 (Utah 1984)).
¶22 In Crossland Savings, the plaintiff sued the defendant
for failure to pay a debt. 877 P.2d at 1242. Four months after
filing the complaint, the plaintiff moved for summary judgment.
Id. The defendant opposed the motion by filing a rule 56(f)
motion, memorandum in support, and an affidavit. Id. The
defendant argued: (1) he needed time to understand the
inconsistencies between the amount he allegedly owed as
represented in the plaintiff’s complaint and the amount he
allegedly owed as represented in the plaintiff’s motion for
summary judgment, (2) the plaintiff was “abusing the summary
judgment process,” (3) the defendant was entitled to confirm the
plaintiff’s sources to determine the accuracy of the amount the
defendant owed, (4) one of the affidavits supporting the motion
for summary judgment did not provide enough detail, and (5) the
related bankruptcy proceedings initiated by the defendant had
prevented him from pursuing discovery in the case. Id.
¶23 The district court denied the defendant’s rule 56(f)
motion. Id. at 1243. In affirming the district court’s denial
of the rule 56(f) motion, this court considered the “individual
circumstances of [the] case.” Id. at 1244. This court found
that the district court could have reasonably concluded that the
defendant was dilatory in failing to initiate or pursue
discovery, and although four months was a relatively short period
of time, the case was simple enough that the defendant should
have conducted discovery. Id. at 1243–44. More importantly, the
defendant had failed to identify any facts that he could discover
that would preclude the court from granting summary judgment.
Id. at 1244. This court noted that the defendant had access to
relevant discovery, including material in his possession and

No. 20061149 12
information in the public record, and had sufficient resources to
determine if any material facts existed that were in dispute and
would preclude summary judgment. Id. The defendant had a duty
to seek out and alert the district court to such issues of
material fact. Id. His failure to identify any discovery that
would preclude the grant of summary judgment made his rule 56(f)
motion futile. Id.
¶24 In this case, Overstock also has failed to identify in
its rule 56(f) motion or its opposition to SmartBargains’ motion
for summary judgment any discovery that would create a material
issue of fact which would preclude the granting of a summary
judgment motion. Overstock had a period of two years to conduct
discovery. During this time, Overstock sent only one set of
discovery requests to SmartBargains. In addition, Overstock was
capable of accessing public records and compiling survey evidence
to present to the court. Overstock conducted very little
discovery. During the summary judgment hearing, when the
district court questioned Overstock about its pursuit of
discovery, Overstock responded, “[A]s a practical matter, I have
not pushed the discovery because, if the Utah statute is
constitutional, if the Utah statute is enforced here, it’s a very
different process of discovery than it would be if we’re dealing
with the common law claims.”
¶25 At the time of summary judgment, Overstock planned on
receiving the generous recovery that the 2004 Utah Spyware
Control Act’s statutory damages would provide. Overstock
admittedly did not pursue discovery relevant to its common law
claims of unfair competition and tortious interference because it
made a calculated decision to pursue the now-defunct statutory
claims.
¶26 The more fundamental problem with Overstock’s rule
56(f) motion is that it failed to identify any discovery requests
that, if answered, would affect the outcome of the summary
judgment motion. All of the discovery Overstock identified in
its rule 56(f) motion either related to damages in lost profits
or to the nature of the pop-ups delivered. None of the discovery
could shed light on whether SmartBargains’ pop-ups are unfairly
competitive or tortiously interfere with Overstock’s business
relations. See Washingtonpost.Newsweek Interactive Co. v. The
Gator Corp., Civ. No. 02-909-A, 2002 US Dist. LEXIS 20881, at *3
(E.D. Va. Sept. 17, 2002) (holding that “almost all of the
discovery in issue is either unnecessary, inappropriate, or both”
when “there is no significant dispute about the relevant facts”
that “[d]efendant uses its technology to cause pop-up ads to
appear on computer screens over and/or under pages from web sites
owned by plaintiffs, without permission from plaintiffs”).

13 No. 20061149
Overstock requested discovery related to damages, including the
total number of pop-ups, compensation paid, identity of vendors,
the number of Internet users accessing pop-ups, the sales
associated with the pop-ups, and the websites targeted.
Overstock also sought discovery about when SmartBargains’ pop-ups
were delivered to a computer user on Overstock’s webpage, and
various types and examples of pop-ups. However, for purposes of
summary judgment, SmartBargains admitted that pop-ups bearing the
SmartBargains logo and sponsored by SmartBargains appeared over
the Overstock website.
¶27 In its rule 56(f) motion, Overstock failed to identify
any discovery in SmartBargains’ possession that would have
provided a material factual dispute to preclude summary judgment.
The district court did not abuse its discretion in denying
Overstock’s rule 56(f) motion.
CONCLUSION
¶28 Overstock failed to identify any material facts that
demonstrate unfair competition or tortious interference with
prospective economic relations. Overstock also failed to
identify any discovery that it could receive from SmartBargains
to allow Overstock to identify a material fact in dispute. We
therefore affirm.
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¶29 Justice Wilkins, Justice Parrish, Justice Nehring, and
District Court Judge Morris concur in Chief Justice Durham’s
opinion.
¶30 Associate Chief Justice Durrant did not participate
herein. District Court Judge John R. Morris sat.