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

Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

Judge Darrah granted defendants summary judgment of noninfringement of plaintiff’s copyright. Plaintiff, a documentary filmmaker, filmed several residents of Chicago Housing Authority Projects. Plaintiff copyrighted his documentary film and, in early 1998, sent it to Oprah Winfrey at Harpo Productions. He requested that Winfrey and Harpo air his documentary on the Oprah Winfrey Show and that they forward it to a list of people in the film industry, several of whom are named defendants. Winfrey never responded to plaintiff and his documentary was never aired on her show. Shortly thereafter, defendants’ animated program, “The PJs” – telling the story of several fictional characters living in an urban housing project – aired on the Fox network. Plaintiff alleged that the defendants collectively infringed his copyrighted documentary by using scenes from it, as well as unique features of several of plaintiff’s subjects to make their characters.

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

Judge Coar denied defendant summary judgment on plaintiff’s trade secret and breach of contract (nondisclosure agreement) claims. The Court also granted defendant summary judgment on plaintiff’s unjust enrichment claim holding that because it was based upon the trade secret misappropriation allegations it was preempted by the Illinois Trade Secret Act (“ITSA”). Plaintiff alleged that, pursuant to a nondisclosure agreement, it disclosed to defendant its plans for its “combination tool” which consisted of a rotary saw, also called a spiral saw, which could be converted into a plunge router. But after negotiations broke down over price, defendant allegedly disclosed the idea to its Canadian subsidiary, which then allegedly disclosed the idea to another party, Choon Nang Electrical Appliance Manufacturing Ltd. (“Choon Nang”), that obtained a British design patent on the combination tool and produced it for defendant. 

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Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008, 2007 WL 487564 (N.D. Ill. Feb. 12, 2007) (Kendall, J.).

Judge Kendall denied summary judgment of invalidity for defendant in this patent dispute (you can find the Court's prior claim construction ruling here).  Defendant argued that plaintiff's public use of money-counting machines embodying the patented inventions in banks more than one year before filing of the patent application invalidated the patents pursuant to 35 U.S.C. Section 102(b).  Defendant relied upon the testimony of several bank employees that the machines were beta-tested by banks in locations that bank patrons could see without signing any confidentiality agreements.  But plaintiff put forth evidence that defendant had taken steps to keep the use confidential and that, even if the use was public, it was only an experimental use which does not create a Section 102(b) bar.  Based on the conflicting evidence, the Court held that there were questions of material fact as to the patents' validity and, therefore, denied summary judgment.

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The big news in patent law this week is the Supreme Court oral argument in Microsoft v. AT&T.  Microsoft exports software from the United States to various countries.  The software code alone cannot infringe AT&T's patents until it is combined with the hardware, which only occurs after the software has left the United States.  So, exporting the software is not an act of infringement.  The issue, therefore, is whether, pursuant to 35 U.S.C. Section 271(f), exporting the software constitutes:

suppl[y] . . . from the United States . . . [of] all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] . . . from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.

For more on the issues, you can find the briefs at Patently-O. 

The case has received substantial media attention both because it was granted cert and because the case could have effects far beyond the international exportation of software.  The oral arguments were interesting (transcript here) and both the main stream media and blogs are frantically reading the tea leaves.

 

 

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Bryant v. Gordon, No. 05 C 3066, 2007 WL 461326 (N.D. Ill. Feb. 8, 2007) (Kennelly, J).

Judge Kennelly granted summary judgment for defendants, Gordon and Mach 1 LLC ("Mach 1"), on plaintiff's, Bryant, claims of copyright infringement based upon copyrighted goods Mach 1 purchased free of encumbrances in a bankruptcy auction.  Because Bryant had notice that copies of posters including his copyrighted photograph of U.S. Army snipers in Ghillie suits (the "Bryant photo") would be sold at the auction and he did not object, he had no claim of infringement for those copies.  The Court denied summary judgment for both Bryant and defendants on their cross-motions for summary judgment regarding infringement of a picture taken by defendant, Urtis, (the "Urtis photo") which allegedly copied the Bryant photo.  The Court held that the Bryant photo was copyrightable based upon Bryant's choice of composition, lighting, camera angle and other factors, but denied summary judgment as to whether the Urtis photo copied the Bryant photo.  The Court noted that both photos were "taken from the same angle, perspective, and with the same scene and terrain."  There were differences between the photos, but the Court could not say as a matter of law that the differences would be sufficiently obvious to an ordinary person.  The Court, therefore, held that a reasonable jury could find that the Urtis photo copied the Bryant photo or that it did not and denied summary judgment.

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Manufacturing Co., No. 02 C 4048, 2007 WL 465423 (N.D. Ill. Feb. 6, 2007) (Zagel, J.).

Judge Zagel held that the Court had jurisdiction over plaintiff's trademark infringement action and ordered defendant to respond to plaintiff's summary judgment motion on the merits of the case.  In October 2002, the Court stayed the case pending resolution of contractual disputes related to ownership of the marks at issue in an Italian court.  The Court lifted the stay in May 2005.  Plaintiff distributed defendant's accordions in the United States.  In 1997, Plaintiff registered the mark at issue, which defendant claims to own.  While the contract at issue in the Italian court may play a role in determining ownership of the mark, the Court held that if plaintiff can prove ownership of the mark prior to the Agreement, then the Court can exercise jurisdiction and resolve the trademark infringement dispute.

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On the front page of yesterday's Business section, the Tribune ran a story about pharmaceutial companies developing combination drugs - Combo Pills Perk Up Firms' Profits.  The combination pills, for example a pill containing medicine to treat both high cholesterol and high blood pressure, have dual advantages:  1) patients are required to take fewer pills and the fewer the number of pills a person must take, the more likely they are to take all of their pills; and 2) patents are likely available on the combined drugs, extending patent protection.  The Tribune reported that dozens of combination pills are likely being developed, including in areas such as heart disease, asthma and depression.  For example, the article reports that Abbott Labs and AstraZeneca announced plans last year to combine their two popular cholesterol drugs, Tricor and Crestor respectively, into a single pill to lower cardiovascular disease risk (the #1 killer according to the article).

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Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).

Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks.  Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.*  Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics.  Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid.  In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.

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Over the weekend the Tribune ran two articles on trademark suits.  The first on Friday - 'March Madness' Use Approved - reported on a trademark suit in Cook County Circuit Court between Intersport, a Chicago-based sports media company, and the NCAA.  Intersport brought the action for, it appears, declaratory judgment that Intersport's license with the NCAA allowed it to use the NCAA's March Madness mark in connection with college-basketball related programming on wireless devices.  Circuit Judge Palmer held that Intersport could use the mark for distributing content "in any manner, including but not limited to distribution to video-enabled mobile wireless media devices."  The Tribune reports that Cingular Wireless, one of the NCAA's sponsors, offered wireless scores and highlights last year.  Last year, Intersport produced basketball-related wireless content for Sprint, but was barred from using the March Madness mark.  This year, it appears they will be free to use the mark.

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Clarus Transphase Scientific, Inc. v. Q-Ray, Inc., No. 06 C 4634, 2006 WL 4013750 (N.D. Ill. Oct. 6, 2006) (Cole, Mag. J.).

Magistrate Judge Cole denied plaintiff's motion for a preliminary injunction holding that plaintiff had not demonstrated a likelihood of success on its trademark, trade dress and copyright infringement claims.  Plaintiff marketed and sold pendants incorporating its "Sympathetic Resonance Technology" which it claimed enhanced the human biofield under its "Q-Link" mark.  Defendants sold a line of pendants and bracelets under the "Q-Ray" mark which they claim are "bio-magnetic ionized" which they claim enhance a person's overall well-being.  The Court held that there was no likelihood of success on the trademark infringement claims because the three most important likelihood of confusion factors -- the similarity of the marks, defendants' intent and evidence of actual confusion -- all favored defendants.  The marks, "Q-Link" and "Q-Ray" share only one letter, "Q," and a hyphen and use substantially different fonts, making even the Q's employed in each mark look different.  Plaintiff's actual confusion evidence consisted of a declaration from plaintiff's employee stating that she had added a Professional Golfers Association ("PGA") trade show at which "a number of attendees" were confused as to whether plaintiff sold the "Q-Ray" pendants.  The Court noted that the number of attendees that stated there confusion could have been as low as two.  As a result, the Court could not find a likelihood of success on the issue of actual confusion. 

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In January the House of Representatives passed a bill that would establish a pilot program in five district courts to develop district court judges with patent expertise.  The program will provide judges in the five districts the opportunity to get specialized patent training.  Cases, including patent suits, in the five districts will continue to be randomly assigned, but judges without the specialized patent training will have the option to transfer the cases to one of the patent-trained judges.  Each of the five district's will also be allowed to hire patent law clerks available to help judges on patent cases.  I assume these clerks will be like habeas clerks that many district courts already have or staff clerks/attorneys at some of the regional circuits.

I expect that many district court judges will, quite reasonably, believe they already have gained the necessary experience through their own hard work, but will also appreciate the extra law clerk help and the training.  It is a very interesting proposal which many expect to be approved by the Senate and signed into law this year.  For more on the pilot program, check out Patently-O, the Infinite Monkey Theorem Blog (a new blog affiliated with www.patentmonkey.com  - both of which are worth checking out), the IP Blawg and the WSJ Law Blog (an older post, but with some good information).

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After Hours Formalwear, Inc. v. Tuxedos, Inc., No. 06 C 2460, 2007 WL 404005 (N.D. Ill. Jan. 29, 2007) (Guzman, J.).

Judge Guzman denied plaintiff's Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants' tortious interference and antitrust claims.  Plaintiff, After Hours Formalwear ("AHF"), controls at least 50% of Chicago's formalwear market.  AHF acquired a group of formalwear stores operating under the mark "Modern Tuxedo" and converted them to its AHF mark.  Shortly thereafter, defendants, including Tuxedos, Inc., (collectively "Tuxedos") renamed its stores, "Formally Modern Tuxedo."  This renaming led to AHF's suit against Tuxedos for trademark infringement and unfair competition.  Tuxedos responded with counterclaims alleging tortious interference of various kinds, and both federal and state antitrust violations.  Basically, Tuxedos alleged that AHF was using baseless trademark infringement claims to harass Tuxedos' customers and push Tuxedos out of the market.

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Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2007 WL 328880 (N.D. Ill. Jan. 30, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez awarded plaintiff certain of its fees related to motions to compel based upon the Court's August 15, 2006, order imposing Rule 37 discovery sanctions.  The Court noted its "considerable discretion" before reducing the fees so that they only included fees directly related to the particular discovery motions at issue.  The Court also removed entries for administrative tasks performed by attorneys that could have been performed by support staff.  And finally the Court reduced the hourly rates of the attorneys because plaintiff did not justify its rates by providing the Court information regarding standard rates in the Northern District or any biographical information regarding the attorneys to support their rates based upon their respective experience levels.  Practice tip:  If you are preparing a motion for fees, this opinion is an excellent place to look for determining what information to include in your motion and how to support your rates.

 

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This afternoon is the second installment of the 2007 Chicago IP Colloquium.  Professor Margaret Chon of the Seattle University School of Law will be discussing her paper Intellectual Property "from Below": Copyright and Capability for Education,  starting at 4:00 4:00 in the Rubloff Reception Room at Loyola (25 E. Pearson).  It should be a great presentation.

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Shen Wei (USA) Inc. v. Sempermed, Inc., No. 05 C 6004, 2007 WL 328846 (N.D. Ill. Jan. 30, 2007) (Guzman, J.).

Judge Guzman granted defendant leave to amend its answer adding inequitable conduct affirmative defenses and counterclaims alleging that plaintiffs failed to disclose their prior art sale of a medical glove embodying their invention, but not regarding the existence and sale of a third party's glove of which plaintiffs were allegedly aware.  The Court held that defendant's affirmative defense and counterclaim met the Fed. R. Civ. P. 9(b) standard with respect to plaintiffs' alleged sale of their own product more than one year before their priority date because, although defendant did identify the person who intended to deceive the USPTO, it was reasonable to conclude that the inventor was charged with the intent.  With regards to the sale of the third party, Ostar, glove defendant only alleged that plaintiffs generally knew of the glove and its materiality, but failed to disclose it.  Defendant did not plead with sufficient specificity:  who knew about the Ostar glove, what they knew, when they knew it, whether the failure to disclose was intentional or why the Ostar glove was material. 

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Last Wednesday the Chicago IP Alliance held its second annual Chicago IP Day at Loyola.  It was, no surprise, an excellent program providing an information-packed day.  I do not have the time to summarize all of the presentations, but I will give some highlights.  George McAndrews, McAndrews, Held & Malloy, gave a very interesting presentation outlining his views on the Supreme Court's recent eBay v. MercExchange opinion requiring the use of the standard permanent injunction test to determine whether a permanent injunction should be granted after a patent infringement judgment.  Essentially, he argued that the Supreme Court's ruling contradicts the constitutional grant of a limited monopoly.  His presentation led to some spirited debate at various tables during the excellent lunch in Loyola's beautiful new conference room atop the law school.

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International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff's trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff's site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff's trademarks as search terms in Google's Adwords program. 

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Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney's fees.  The court also did a detailed analysis of defendants' Bill of Costs and awarded defendants some or all of their requested costs for service of process, court reporters, witnesses and experts, among others.  Of note, the Court held that expert fees, including the expert's hourly rates, were recoverable for time spent on expert reports, deposition and related preparation, and other time spent in responding to discovery, but not for time spent attending other expert depositions in the case.

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2007 WL 178318 (N.D. Ill. Jan. 22, 2007) (St. Eve, J.).

Judge St. Eve granted defendant Hotels.com summary judgment that certain of its alleged activities are protected by plaintiff Civix's covenant-not-to-sue with Hotels.com covenant-provider MapQuest and denied summary judgment as to activities that might be covered by Civix's similar covenant-not-to-sue with Hotels.com content-provider Navteq.  Another opinion on a similar issue with defendant Yahoo in the case is discussed in this post.  The Court held that both covenants prevented suits against the licensee's customers or end users with respect to or relating to the licensee's technology.  But in the case of the Navteq agreement, there was an issue of fact as to whether a third party in the stream of commerce between Navteq and Hotels.com added independent value to Hotels.com thereby giving Hotels.com more than the Navteq technology and kept Hotels.com from benefiting from the covenant-not-to-sue.  In the case of the MapQuest technology, there was no such third party in the stream of commerce and, therefore, no question that Hotels.com was protected by MapQuest's covenant-not-to-sue.

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Yesterday the Tribune ran another article on big firm associate salaries -- .Biggest Chicago Firms Boosting 1st-Year Pay.  This story only made page 3 of the Business section, not the front page like the last article.  But unlike the last Trib article which only predicted that firms were considering responses to the New York raises, this one reported that Sidley and Mayer, Brown have both raised first-year salaries from $135,000 to $145,000.  The article also predicts that other large Chicago firms will be following suit. 

The Blog is not going to get side-tracked reporting on which firms do and do not raise, so if you are looking for more updated information check out other sources such as Above The Law and the WSJ Law Blog, which does not cover the salaries obsessively but has done several posts on this round of salary raises.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2007 WL 108412 (N.D. Ill. Jan 12, 2007) (St. Eve, J.).

Judge St. Eve denied defendant's motion for a new trial, altered judgment or judgment as a matter of law in this patent dispute (more on this case and the injunction in the Blog's archives).  Defendant first argued that the jury's infringement findings on various claim elements were not supported by the facts.  The Court denied each argument, citing facts that supported the jury's infringement findings.  Defendant also argued that the jury's verdict that claim 1 of USPN 6,788,925 (the "'925 patent") was valid while the almost identical claim 2 of the '925 patent was invalid was inconsistent.  Defendant sought an altered judgment or a new trial as a remedy.  The Court first noted that several Circuits would have waived this objection because defendant did not object to the alleged inconsistency when the jury rendered its verdict.  But because the Seventh Circuit has not directly ruled on the issue (the matter is governed by region-specific law because it is a procedural matter), the Court did not waive the objection.  The Court did, however, waive any arguments Defendant first made in its reply brief.  Having addressed the procedural posture of the arguments, the Court held that the jury's validity findings on the two claims was sufficiently supported.  Because the two claims, although substantially the same, had different elements, the Court held that a rational jury could have come to different validity conclusions for each claim and denied defendant's request for a new trial. 

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The Chicago Auto Show runs from February 9-18 at the McCormick Place.  As a former IP licensing and litigation counsel for Delphi (the largest auto supplier in the world), I have a soft spot for the Auto Show and highly recommend that you check it out.  It is especially great for kids who love to climb through the cars and, after a certain age, use the backdoor child-safety locks to lock brother and sisters in the cars.  But this year's show appears to include a trademark dispute.  According to the Electronic Frontier Foundation* counsel for the Chicago Auto Show has sent this letter claiming that the Shutdown's website uses the Auto Show's trademarks in an infringing manner and demanding that any such infringement be stopped.  Shutdown and its counsel appear ready to fight, as can be seen in their response to the Auto Show's cease and desist letter.  I have not reviewed the facts or trademarks at issue and so take no position on who may be correct in this dispute, but a quick look at the banners atop the Auto Show's site and Shutdown's site, suggests that Shutdown is at least using all or much of the Auto Show's banner.

Thanks to the Cogito Ergo Teneo Blog for the heads up here.

* The EFF represents the accused infringer in this dispute.

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As a life-long Lions fan -- yes, I did say "fan" -- it pains me to say "Go Bears", but this is a Chicago-focused blog and so, with Chicago's Bears preparing for Sunday's Big Game* I feel obliged to write the post.  In order to keep this law-related, I direct you to the WSJ Law Blog's Football Hall of Fame.  The criteria is combined football and legal prowess.  Several Bears have been mentioned, including:    Bob Thomas (Chief Justice of the Illinois Supreme Court) and Chris Zorich.  My choice would be Gerald Ford, a Captain and national champion at Michigan, Speaker of the House and, albeit briefly, POTUS. 

* It is very, very dangerous to use the NFL's trademarks, as reported by The Hollywood Reporter, Esq. Blog.

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Goss Int'l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Jan. 11, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez  compelled certain foreign defendants (the "Swiss Defendants") to produce documents related to each Swiss Defendant's contacts with the United States.  After plaintiff filed its patent infringement claims against the defendants, the Swiss Defendants filed motions to dismiss the case for lack of jurisdiction.  They argued that no state had personal jurisdiction over them.  Plaintiff responded that the Court had jurisdiction pursuant to Fed. R. Civ. P. 4(k)(2), the federal long-arm statute.  Plaintiff also sought jurisdiction-related discovery to prove the necessary jurisdictional facts.  The  Court granted jurisdictional discovery and, based upon that decision, compelled the Swiss Defendants to produce documents relevant to their contacts with the United States after the Swiss Defendants refused to produce them pursuant to plaintiff's discovery requests.

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American Fam. Mutual Insur. Co. v. Roth, No. 05 C 3839, 2007 WL 63983 (N.D. Ill. Jan. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended denying defendants' motion to modify Judge Guzman's preliminary injunction for lack of jurisdiction.  Judge Guzman, following Judge Cole's recommendation, issued a preliminary injunction to prevent defendants from using a list of confidential information regarding plaintiff's policy holders.  Defendants ultimately appealed the preliminary injunction and then filed a motion to clarify seeking modifications to the injunction  equivalent to what they were asking to be overturned on appeal.  After an exhaustive analysis of the procedural rules, the Court recommended denying the motion to modify for lack of jurisdiction because once defendants appealed the injunction, the district court loses jurisdiction over the appealed issues.

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