August 2008

Johnson v. Cypress Hill, No. 03 C 9452, Slip Op. (N.D. Ill. Jul. 7, 2008) (Norgle, J.).
Judge Norgle struck defendants’ motion to dismiss plaintiff Johnson’s copyright infringement claim. The Court previously denied summary judgment as to the other plaintiffs, Watts and Jones – click here to read the Blog’s prior post about that opinion. Plaintiffs authored the song “Is It Because I’m Black” in 1968 and recorded a version of it in 1969 (the “Song”). Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed their copyright in the Song by using parts of it in their Black Sunday album.
Johnson’s copyright claim is based upon a 1997 registration for a compilation of songs allegedly containing the Song. But a review of a certified copy of Johnson’s compilation from the Copyright Office proved the Song was not on the deposited compilation. Because the Song was not a part of the registered work, Johnson could not show ownership of a valid copyright. The Court, therefore, dismissed the claim.
The Court also held that Johnson’s failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant because Congress deleted the Notice of Use requirement effective January 1, 1978, before any alleged infringement occurred.
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Continue Reading Court Dismisses Copyright Case for Lack of Registration

Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).
Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.
The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.
The Court determined that plaintiff’s alleged harm would be irreparable – the use of plaintiff’s trade secret documents would result in lost sales and clients. Because plaintiff had shown a likelihood of success on the merits and irreparable harm, the Court entered a TRO. The Court ordered defendant and his agents not to use, reference or copy any documents misappropriated from plaintiff, and to return any such documents to plaintiff. The Court also enjoined defendant from soliciting any of plaintiff’s customers or clients whom defendant had contact with during the previous twelve months. And the Court enjoined defendant from soliciting plaintiff’s employees. The Court also ordered defendant to produce forensic copies of any of his personal computers.
But the Court did not enjoin defendant from working for his new employer. The Court noted that a TRO was an extraordinary remedy. And based on the available evidence, the Court was unwilling to use a TRO to end defendant’s employment, even for a limited period.
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Continue Reading Court Enjoins Competition, Not Employment

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Jul. 21, 2008) (Conlon, J.).
Judge Conlon denied defendants’ motion to dismiss plaintiffs’ copyright and related state law claims based upon forum non conveniens, Colorado River abstention, and for lack of standing. Plaintiffs alleged that they were co-owners of defendants’ copyrights in the popular books and movies associated with The Secret, a self-help program. Defendants previously filed a suit in Australia seeking a declaratory judgment that defendants owned the copyright in The Secret.
Forum Non Conveniens
The Court held that the Australian Court would not be able to resolve US copyright ownership, and, therefore, was not an adequate forum. Furthermore, much of the evidence for plaintiffs’ unjust enrichment and equitable accounting claims was located in the US, as were the key witnesses.
Colorado River Abstention
Although both suits focused on the same works, the Australian case did not include and would not resolve plaintiffs’ equitable claims for unjust enrichment and the equitable accounting. Because the Australian case would not resolve all issues in the US case, abstention was no appropriate.
Standing
The Court held that plaintiffs had standing to make its copyright claims because plaintiffs alleged copyright ownership in their complaint.
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Continue Reading Abstention Not Appropriate Because Foreign Action Does Not Address All US Issues

Watts v. Cypress Hill, No. 03 C 9452 & 06 C 3348, 2008 WL 2540811 (N.D. Ill. Apr. 28, 2008) (Norgle, J.).
Judge Norgle denied defendants’ motion for summary judgment on plaintiff’s copyright infringement claim. Defendants’ motion was based upon three arguments: 1) plaintiffs did not have a valid copyright registration; 2) plaintiffs’ suit was barred by the statute of limitations; and 3) plaintiffs failed to file a Notice of Use as required by the 1909 Copyright Act. Plaintiffs authored the song “Is It Because I’m Black” in 1968, and recorded a version of it in 1969 (the “Song”). Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed plaintiffs’ copyright in the Song by using parts of it in their album titled Black Sunday.
Copyright Registration
Defendants argued that plaintiffs did not meet their burden of proving a valid copyright registration because instead of the registration certificate or a copy of the deposited CD, plaintiffs produced a printout of the Copyright Offices’ summary of their registration. Because defendants did not dispute the information in the summary, the Court denied summary judgment. The validity of the registration was a question of fact for the jury.
Statute of Limitations
As to plaintiff Watts, defendants argued that Watts’s claim fell outside the Copyright Act’s three year statute of limitations because Watts contacted the Copyright Office in April 2003 to inquire about the status of his copyright in the Song, more than three years before Watts’ June 20, 2006 filing date. During his deposition, Watts testified:
That he was not aware of the alleged infringement when he contacted the Copyright Office;
That he contacted the Copyright Office just to check on the status of his copyright; and
That his contact with the Copyright Office was prompted by learning of the alleged infringement.
The Court held that this contradictory evidence would allow a jury to draw an inference for either party, making summary judgment inappropriate. The Court also denied summary judgment as to plaintiff Jones. The court found no evidence that Jones did know or reasonably should have known of the alleged infringement in April 2003.
Notice of Use
Plaintiffs’ failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant. Congress deleted the Notice of Use requirement effective January 1, 1978, long before any alleged infringement occurred.
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Continue Reading Copyright Office Printout Suggesting Registration Sufficient to Maintain Infringement Claim

Blawg Review #174 is available at D. Todd Smith’s Texas Appellate Law Blog — click here to read it. Smith boldly went without a theme, but it is a great Review, even without a theme. Smith picks up on my coverage of the Seventh Circuit’s recent decision affirming the Northern District’s holding that the NFL is a single entity for IP licensing purposes, as well as related coverage at Sports Law Blog and Blawgletter.
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Continue Reading Blawg Review #174

Moran Indus., Inc. v. Higdon, No. 07 C 6092, Slip Op. (N.D. Ill., Jul. 26, 2008) (Guzman, J.).
Judge Guzman held that the Court had personal jurisdiction over the defendants, but dismissed plaintiff’s trademark and breach of contract case for improper venue. Defendants, various franchisees of plaintiff, were all residents of and operated their franchises in various combinations of Indiana, Kentucky and Tennessee. Each relevant franchise agreement had a forum selection clause consenting to jurisdiction in the Northern District. But the Court held that the clause was permissive, allowing defendants to challenge personal jurisdiction. While defendants were not Illinois residents, their numerous contacts with plaintiff — sending plaintiff royalty payments and reports to Illinois and attending training in Illinois, among others — created personal jurisdiction.
While defendants were subject to personal jurisdiction in Illinois, the Court held that the Northern District was not the proper venue. A substantial part of the harm alleged occurred not in Illinois, but in Indiana, Kentucky and Tennessee. Those were the states where defendants allegedly failed to make payments, not Illinois. The Courts, therefore, dismissed the case.
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Continue Reading Court has Personal Jurisdiction, but Venue is Improper

Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip Op. (N.D. Ill., Jul. 24, 2008) (Moran, Sen. J.).
Judge Moran denied plaintiff’s motion in limine to preclude defendants from arguing non-registration of plaintiff’s allegedly copyrighted works. Plaintiff argued that his certificate of registration was conclusive proof that his works were registered. But plaintiff only deposited six of his works with his applications. In response, plaintiff argued that deposit of a representative sample was all that was necessary for registration, and all that was necessary for statutory damages.
The Court, however, held that the mandatory registration requirement, and its exceptions pursuant to 17 U.S.C. § 407, was separate from the registration-deposit requirement, pursuant to 17 U.S.C. § 408. The registration-deposit requirement did not provide exceptions for works first published outside the United States, such as plaintiff’s works. Because § 408 required deposit for all of plaintiff’s works, and because plaintiff had not identified if any of the six works plaintiff deposited was at issue in this case, the Court denied plaintiff’s motion.
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Continue Reading Copyright Mandatory Registration and Registration-Deposit Requirements are Separate

Am. Needle, Inc. v. New Orleans Louisiana Saints, No. 07-4006 (7th Cir. Aug. 18, 2008) (Kanne, J.).*
Judge Kanne, writing for a unanimous panel, affirmed Judge Moran’s opinions holding that the National Football League (“NFL”) acting through its NFL Properties entity was a single entity and, therefore, dismissing plaintiff American Needle’s Sherman Act antitrust claims — click here and here to read the Blog’s post on Judge Moran’s prior opinions in this case. For more than twenty years, NFL Properties licensed American Needle to use various NFL and NFL team trademarks on American Needle’s headwear. American Needle filed this suit after NFL Properties entered an exclusive, ten year license with Reebok, ending American Needle’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (American Needle argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including American Needle, through NFL Properties).
The Seventh Circuit explained that sports leagues are difficult to classify because they display elements of a single entity, as well as elements of a joint venture made up of independent owners. The Seventh Circuit, therefore, determines whether a sports league is a single entity “one league at a time” and “one facet of a league at a time.” In this case, the NFL was a single entity because for the purpose of promoting its football product — because no one team can stage a game alone. It followed that if the NFL was a single entity for promoting football, it was also a single entity for promoting its product by selling NFL apparel. Additionally, the Court noted that the record established that the NFL teams had been acting as a single entity for IP licensing since 1963.
The opinion’s introductory paragraph is also worth discussing. It is very well crafted, engaging both legal and non-legal readers:
As the most successful and popular professional sports league in America today, the NFL needs little introduction. Indeed, the NFL has inspired countless hours of heated and in-depth discussion about the league’s 88 years of professional-football history, including its great players, championship teams, and memorable games. But the only discussion the NFL inspires here involves aspects of the league that are not as well known: the league’s corporate structure, and the nature of its relationships with its member teams and the entities charged with licensing those teams’ intellectual property.
For another perspective on the opinion, check out the WSJ Law Blog’s post
* Click here to read the Seventh Circuit’s opinion.
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Continue Reading Seventh Circuit Affirms: NFL is a Single Entity

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc, No. 05 C 4088, Slip Op. (N.D. Ill. Aug. 15, 2008) (Moran, Sen. J.).*
Judge Moran granted declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) motion for leave to use an expert witness that declaratory judgment defendant Trading Technologies (“TT”) previously met with. TT met the first prong of the test for expert disqualification. TT had established a confidential relationship with the expert, as proven by the non-disclosure (“NDA”) agreement entered into by TT and the expert.
But the NDA was not enough to meet the second prong of the test, that confidential information requiring disqualification was exchanged. The expert stated that he had two meetings with TT approximately four years before the issuance of this opinion. One meeting was held before the NDA was executed and one after. TT alleged that there were additional meetings, but only had supporting evidence of two meetings. TT also alleged that it discussed litigation strategy, prior art and a relevant court decision with the expert. But based upon an in camera review of TT’s evidence, the Court held that there was not sufficient evidence of an exchange of confidential information. The emails TT provided were one or two lines each and contained no confidential or work product information. And TT did not provide attorney notes or other evidence of confidential or work product information. The Court did acknowledge that one email discussion of a court opinion could have been work product, but the expert’s response was so brief and vague that the Court did not consider it advice.
Finally, TT did not offer evidence that it retained the expert or paid him any fees. TT did argue that it compensated the expert by having TT’s president speak to a trading group the expert owned. But there was no evidence that the speaking engagement was intended to be or was accepted as payment for the expert’s work.
* Click here to read much more about this case in the Blog’s archives and click here for a copy of this opinion.
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Continue Reading Trading Technologies: Party can Use Expert Previously Contacted by Opposing Party

Here are several stories worth checking out, but that did not warrant a separate post:
PA Tracer’s monthly patent filings report is out. The Northern District had nine new cases filed in July. That is reasonably busy for the deep summer, but nothing compared to the Eastern District of Texas’s 25 new patent cases — click here to read PA Tracer’s post.
The St. Louis Post-Dispatch ran a story recently about on Judge St. Eve — click here to read it.* The story discusses many traits that are obvious to those who have practiced before her. Judge St. Eve is very punctual and efficient, and she has absolute control of her courtroom, which she maintains with a civility and kindness that are impressive. The article also speculates, using unnamed colleagues and media as sources, that Judge St. Eve will eventually be on Supreme Court short lists. Here’s hoping she stays in the Northern District a long time before getting called up to One First Street.
Chicago Lawyer Magazine did a nice profile on Chicago IP lawyer Carol Genis of Bell, Boyd & Lloyd. Click here to read it. The article largely focuses on how Genis develops strong bonds of trust and friendship with clients.
Duane Valz, Vice President & Associate General Counsel of Yahoo!’s Global Patent Strategy, is discussing approaches for patenting Internet-related ideas in a webinar on Wednesday, September 3 from 1:30 – 3:00 CT — click here for more information.
* Hat tip to the WSJ Law Blog for pointing out the story here.
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Continue Reading IP Legal News