Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Chicago-Kent Professor Graeme B. Dinwoodie, an associate dean and director of the program in Intellectual Property Law, is receiving the 2008 Pattishall Medal for Teaching Excellence from the International Trademark Association ("INTA").  Professor Dinwoodie will also receive the 2008 Ladas Memorial Award for his  law review article with University of Iowa Professor Mark D. Janis, Confusion Over Use: Contextualism in Trademark Law, published last year in the Iowa Law Review. The awards will be presented May 17 at INTA’s 130th Annual Meeting in Berlin.

Congratulations on both honors Professor Dinwoodie.

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The Chicago Tribune's Ameet Sachdev reported that an ongoing copyright dispute may be coming to a head at the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades he originally used.  The work is now back on display at the corner of Michigan and Randolph, and Agam is headed to Chicago this weekend to view the restored, or as he calls it "reconstructed," work.

In a previous Tribune article,** Agam's counsel admits that VARA, the Visual Artists Rights Act, did not protect Agam's position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claimed to hold the copyright in the work and argued that the copyright allowed him to prevent the current owner from creating a derivative work, which Agam believed the restored or reconstructed work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad that the wooden stump that stood in the work's place has been replaced by some restored version of the work.

*  Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street. 

**  Click here to read the blog's post about that article.

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488 2008 WL 783301 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part defendant Automationdirect.com's ("ADC") motion to compel additional records from plaintiff Autotech's database. The parties agreed that an ADC expert would be allowed to develop queries which Autotech would run on its database. After a dispute regarding how to produce the results of the search, the Court ordered production of the documents, which related to records of, among other things, customer confusion. Upon review of the records, ADC demanded that Autotech supplement them with information such as the date of the communication and the identity of the Autotech employees involved. Autotech eventually supplemented the documents with an index identifying, among other things, the identity of the Autotech employee involved in each communication, but not the dates of the communications. ADC moved to compel the production of all fields in Autotech's database for each entry identified by ADC's query. But Autotech countered that it had produced all fields generated by ADC's expert's query. Had the query generated all available fields, they, presumably, would have been produced them all. Because Autotech produced the information generated by ADC's search and supplemented that production with an index, sanctions were not warranted. But the Court did order production, at ADC's expense, of the dates of each communication. The Court also ordered the parties to meet and confer to determine how to produce the dates in a useful format.

*Click here for more of this case in the Blog's archives.

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

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Since writing my May Carnival of Trust post (click here for the post), several others have commented on Web Strategy by Jeremiah's post suggesting that people do not trust bloggers.  Of course, the real point of the studies Owyang cites is that people do not trust an unspecified blogger as much as their family or other unspecified news sources.  As I said before, that should be an expected result and it shows good judgment.  But it is easy to get caught up in the survey and miss the fact that people trust "their" bloggers -- those that they have entered a conversation with, read regularly and, therefore, have developed a trust with.  Several others have picked up on Owyang's post and the surveys, with similar comments.  I am posting them in an Addendum to avoid breaking the Carnival of Trust ten post rule (although I will update that post with a link to this one).  Here are some of the commentaries:

• Kevin O'Keefe at LexBlog and Real Lawyers Have Blogs says that he must be trusted, there is no explanation for his site traffic and speaking engagements except trust -- click here for Kevin's post:

People put their butts on the line at least once a month asking me to speak in front of large groups. Just received invites to speak at the Texas Bar Annual Conference and to keynote at a Wisconsin Bar Association Conference. I don't know any of the people who invite me. They're reading my blog. If they didn't trust what I was writing, would I get an invite?

Law firms, from solo's to the largest in the country, call me for advise on blogging. The same firms subscribe to LexBlog's blog service. No other way those folks know me than my blogging.

And for the record, Kevin is wrong, he is pretty funny.  But he is correct in that the legal community would not keep reading his blog for the humor alone, it is for his insights coupled with his delivery.

• Kevin also cited Bill Ives at the Fast Foward Blog who had similar comments, arguing that blogs (as opposed to MSM sources) require more work on the part of readers to determine whether they should trust the blogger and on the part of the blogger to cultivate and earn that trust -- click here for the post:

Blogs are conversations and they do put more responsibility on the reader to judge the material than say, the New York Times, with its army of fact checkers. But even the NYT gets it wrong some times and everyone has some type of bias. Blogs are also a medium. The NYT also has many of them. Do you trust a magazine article more than television? In each case, the answer would be it depends on the person. This is not say that communication channels do not have their own properties. Naturally, seeing someone on TV gives you more information than a magazine article. Blogs are usually the voice of a single person or a group of individuals and not an editorial board. However, a blogger has to build the trust of his or her audience by being consistent and transparent as the first commenter wrote above.

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Welcome to the May 2008 Carnival of Trust.  For regular Blog readers, this will be a slight departure from the case analysis format you have come to expect.  But I promise you the trust-related links will still be valuable reading for IP litigators and IP litigants.  And in the spirit of the Carnival, I will now proceed to build your trust in me by following through on that promise.

The Carnival of Trust is a monthly, traveling review of ten of the last month's best posts related to various aspects of trust in the business world.  It is much like the weekly Blawg Reviews that I post links to and have hosted, but those generally contain far more than ten links.  My job this month was to pick those ten posts for you and provide an introduction to each post that makes you want to click through and read more. 

Do you trust me?  Jeremiah Owyang at Web Strategy by Jeremiah says you do not , unless you are related to me.  But the real point of Owyang's post and the studies he cites is that people do not trust an unspecified blogger as much as their family or other unspecified news sources.  That is not surprising and even shows good judgment.  As Anne Reed at the Deliberations blog points out, choosing blogs is about developing trust.  You find a few that you like and trust, trust developed by entering that blogger's conversation and developing confidence in that person's posts, and based on your trust in those blogs, you begin to find other quality blogs:

I learned the territory one or two blogs at a time, first coming to like and trust a few blogs (and bloggers) and then following their links and blogrolls to others. 

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In addition to the new regional IP blogs, here are several new legal resources:

• Startup guru Guy Kawasaki has started the Alltop project which categorizes blogs by subject matter and aggregates blog content  for each subject on a single page.  The law Alltop site is excellent, although I would suggest adding the Chicago IP Litigation Blog.  It is like having someone else set up and update feed readers for you.  This is how Alltop describes itself:

We help you explore your passions by collecting stories from “all the top” sites on the web. We’ve grouped these collections — ”aggregations” — into individual Alltop sites based on topics such as environment, photography, science, celebrity gossip, fashion, gaming, sports, politics, automobiles, and Macintosh. At each Alltop site, we display the latest five stories from thirty or more sites on a single page — we call this “single-page aggregation.”

• The Patent Appeal Tracer follows patent cases from filing of a Federal Circuit appeal, after many of the regional IP blogs stop following them, until an opinion issues, when Patently-O and others take over.  It is an interesting idea and a well written blog.  As an example of what they do, check out this recent post on the Federal Circuit appeal of Northern District case Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684 (N.D. Ill.) (Der-Yeghiayan, J.) -- click here or here for coverage of the case in the Blog's archives.

[UPDATE]:  The Chicago IP Litigation Blog has been added to Alltop's law page.  Thanks Guy.  Now, if I could just get Kawasakied.

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On Monday, the Blog will host the May Carnival of Trust.  The Carnival of Trust is a monthly compendium of blog postings related to trust in business, trust in selling, trust in society at large.  It is kept interesting by the vibrant and varied commentary of each month's host, and by the ten post limit for each month.  Click here to submit your trust-related posts for the Carnival.

Click here to check out the April Carnival at the True Colors Consulting Blog, and click here for the March edition at Duncan Bucknell's IP Thinktank Blog.

Read more about the Carnival of Trust here at Charles Green's Trust Matters Blog.

And while I am discussing blog carnivals, do not miss this week's Blawg Review #157 hosted by Thoughts from a Management Lawyer.

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Genender Int'l, Inc. v. Skagen Designs, Ltd., No. 07 C 5993, Slip Op. (N.D. Ill. Apr. 14, 2008) (Grady, J.).

Judge Grady denied defendant Skagen's Fed. R. Civ. P. 12(b)(3) motion to dismiss plaintiff Genender's declaratory judgment ("DJ") case. The Court also granted in part Skagen's Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing Genender's tortious interference claim. Skagen argued that Genender's DJ suit should be dismissed in favor of Skagen's later-filed suit for design patent and trade dress infringement filed in the District of Nevada. Skagen argued that dismissal was required by the Seventh Circuit's standard as set forth in Tempco Elec. Heater Corp. v. Omega Eng., Inc., 819 F.2d 746 (7th Cir. 1987). The Court, however, held that Federal Circuit law controlled because of the design patent claims. And the Federal Circuit explicitly rejected Tempco in Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993) (abrogated on other grounds). Instead, the Federal Circuit required that Skagen provide a "sound reason" that proceeding with the DJ would be unjust or inefficient. Skagen provided no such reason and, in fact, Skagen's counsel agreed at argument that it did not matter whether the case was tried in the Northern District or in the District of Nevada.

The Court dismissed without prejudice Genender's tortious interference claim. Genender alleged that Skagen interfered with Genender's business relationship with customer Sears by copying Sears personnel on cease and desist letters. But the claim was deficient because Genender did not allege that it lost any Sears business because of Skagen's actions.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*

I have received several emails asking about the status of this case and, specifically, when the inequitable conduct portion of the case will be decided.  The post-trial inequitable conduct briefing appears to be complete -- if you want to read the briefs, they are largely available on Pacer.  So, unless the Court asks for further briefing or an additional hearing either of which seem unlikely, the Court will consider the evidence and the parties' post-trial papers, and then write an opinion deciding the inequitable conduct issues.  There is not any way to accurately predict when the opinion will issue.  The timing is governed by numerous factors, including the complexity of the case and the size of the Court's current docket. 

Additionally, the parties have filed other motions which the Court will also have to decide.  For example, Trading Technologies ("TT") filed a motion for a protective order sealing certain evidence that was produced as "Highly Confidential," but which was put into evidence and used without immediate restriction or objection, as to confidentiality, during the public trial.  I will keep you updated as the Court issues any decisions regarding inequitable conduct or any other issues in the case.

* Click here to read much more about this case in the Blog’s archives.

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488, 2008 WL 783303 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part plaintiff Autotech's motion to compel communications between defendant Automationdirect.com, Inc. ("ADC") and any third party regarding ADC's competing C-More touch screen panel. The Court held that ADC need not produce documents related to source code for the C-More product. The Court previously denied Autotech's motion to amend its complaint adding claims related to that source code. But the Court held that ADC's third party communications could be relevant to show whether ADC has complied with its contractual obligation to use its best efforts to sell Autotech's product, or if its C-More sales efforts interfered with sales of Autotech's products. The Court also held that any communication evidencing customer confusion must be produced.

Practice Tip: Do not employ new arguments in reply briefs. The Court did not consider Autotech's reply brief because it changed the scope of its argument on reply. Autotech's opening brief sought ADC's third party communications with the exception of those regarding ADC's source code because claims regarding ADC's software were not in the case. But on reply, Autotech also sought the source code related communications.

*Click here for more about this case in the Blog's archives.

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Shortly after my Friday post updating the list of regional IP blogs, Mark Walters, of the Washington State Patent Law Blog, pointed out that I had left him off the list.  The mistake was unintentional and I have remedied it in the original post and the list that follows this paragraph.  In the process of gathering links to revise my list, I came across the Georgia Patent Law Blog in the Washington State Patent Law Blog's blogroll.  So, now I have two blogs to update:

Australian Trademarks Law Blog*

Canadian Trademark Blog

Delaware IP Law Blog

E. D. Texas Blog

Florida IP Blog*

Georgia Patent Law Blog (N.D. Georgia)

Illinois Trial Pratice Weblog (okay, it is not IP specific, but it is regional and provides excellent content)

IP Dragon(China) 

IP Legal Lounge

Las Vegas Trademark Attorney

Los Angeles Intellectual Property Trademark Attorney Blog

Maryland Intellectual Property Law Blog*

Patent Trademark Blog(some Orange County focus) 

Seattle Trademark Lawyer Blog

Tech Law Forum Blog (N.D. Cal.)

Washington State Patent Law Blog

If you know of other regional IP blogs, post a comment or send me an email and I will add them to the list. 

*These are blogs developed and hosted by LexBlog just like this Blog.

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Magistrate Judges Geraldine Soat Brown and P. Michael Mahoney were each reappointed for an additional eight year term -- click here for the Northern District's press release.*    Judge Brown's reappointment was for her second 8-year term. 

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Since my last post listing the Blog's "cousin" blogs -- regional IP blogs – another has joined the family. The Los Angeles Intellectual Property Trademark Attorney Blog, published by Milord & Associates.  Welcome to the family. Here is the revised list:

Australian Trademarks Law Blog*

Canadian Trademark Blog

Delaware IP Law Blog

E. D. Texas Blog

Florida IP Blog*

Georgia Patent Law Blog (N.D. Georgia)

Illinois Trial Pratice Weblog (okay, it is not IP specific, but it is regional and provides excellent content)

IP Dragon(China) 

IP Legal Lounge

Las Vegas Trademark Attorney

Los Angeles Intellectual Property Trademark Attorney Blog

Maryland Intellectual Property Law Blog*

Patent Trademark Blog(some Orange County focus) 

Seattle Trademark Lawyer Blog

Tech Law Forum Blog (N.D. Cal.)

Washington State Patent Law Blog

[UPDATE]:  I was quickly reminded that I forgot the excellent Washington State Patent Law Blog, which has been added to this post, and in that process I discovered the Georgia Patent Law Blog, also added, thanks to Mark Walter's (Washington State Patent Law Blog) blog roll.

If you know of other regional IP blogs, post a comment or send me an email and I will add them to the list.  A hat tip to Mike Atkins for pointing out the new blog at his Seattle Trademark Lawyer blog.

*These are blogs developed and hosted by LexBlog just like this Blog.

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Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2008 WL 839993 (N.D. Ill. Mar. 27, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants' (collectively "Limited Brands") motion for reconsideration regarding the Court's claim construction opinion and its summary judgment opinions of infringement, validity and damages – click here to read more about those opinions in the Blog's archives. The Court previously construed the claims of plaintiff Ball Aerosol's ("BASC") patent covers a candle tine. The Court granted BASC summary judgment of infringement and validity, pre-KSR. When KSR revised the obviousness standard, the Court sua sponte ordered supplemental briefing regarding obviousness in light of KSR. Based upon that briefing, the Court again granted summary judgment of validity. The Court then granted BASC summary judgment on damages awarding it 20% royalties and finding Limited Brand's infringement willful.

The Court held that its original claim construction, validity and infringement holdings were correct and that Limited Brands had been given ample opportunities to defend itself. The Court also denied Limited Brands' argument that reasonable royalties could not be decided on summary judgment. Limited Brands' Seventh Amendment right to a jury trial regarding damages had not been violated. There is no right to a jury without a material question of fact.

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