September 2008

WMS Gaming Inc. v. WPC Gaming Prods. Ltd., No. 07-3585, Slip Op. (7th Cir. Sep. 8, 2008) (Wood, J.).*
Judge Wood delivered the Seventh Circuit’s opinion reversing and revealing Judge Manning’s damages award. Plaintiff-Appellant WMS Gaming (“WMS”) alleged that defendants (collectively “PartyGaming”) infringed its JACKPOT PARTY and SUPER JACKPOT PARTY marks. Defendants chose not to participate in the suit. The Northern District, therefore, entered a default judgment for WMS and a permanent injunction. WMS sought $287M in damages, an amount equal to PartyGaming’s reported U.S. revenues during the relevant period. The Court, however, held that WMS was entitled to damages, not an equitable accounting of all of defendants revenues and awarded approximately $900K per year, or $2.7M total. As an initial matter, the Seventh Circuit held that Fed. R. Civ. P. 54(c) requires that in the case of a default judgment the award cannot differ from or exceed the type and amount of requested damages. Because WMS’s complaint and its subsequent pleadings all requested both an equitable accounting and actual damages, either were an allowable damages award.
Having determined that an equitable accounting was an appropriate remedy, the Court explained that WMS was entitled to an award of PartyGaming’s revenues attributable to PartyGaming’s trademark infringement. Further, WMS’s burden was only to prove PartyGaming’s revenue. WMS did that by proving PartyGaming’s $287M of U.S. revenues during the relevant period. The burden then shifted to PartyGaming to prove which portions of its revenue were not attributable to its infringement. The Seventh Circuit, therefore, reversed and remanded to the Northern District.
* Click here for the opinion and click here for a podcast of the oral argument.
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Continue Reading Trademark Plaintiff Entitled to All Defendants’ Revenue

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).
As I have described in earlier posts (click here, here and here) plaintiff Jones Day sued defendants, BlockShopper LLC and two individuals associated with the website (collectively “Blockshopper”), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”). The parties stipulated to a TRO which the Court entered ordering defendants not to: 1) use Jones Day’s service mark; 2) use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines.
Last Friday, Blockshopper filed a motion to dismiss. And several public interest groups — the Electronic Frontier Foundation, Public Knowledge and the Citizen Media Law Project — has sought leave to file this amicus brief supporting Blockshopper’s motion to dismiss. Jones Day opposed the motion, arguing that the three groups and their arguments do not meet any of the Seventh Circuit’s standards for amicus filings. I will keep you posted about the case generally and as to whether the Court enters the amicus brief.
And the case continues to draw fairly strong legal blog interest:
The Prior Art
Real Lawyers Have Blogs (LexBlog’s Kevin O’Keefe)
Public Citizen at its Consumer Law & Policy blog (acknowledging that he was incorrect as to the timing of an alleged quote from Judge Darrah, which he also did in a comment to my post discussing the alleged quote)
Las Vegas Trademark Attorney
Citizen Vox
Ars Technica (and here, discussing the amicus brief)
The legal blog commentary continues to run heavily against Jones Day and in favor of Blockshopper.
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Continue Reading Jones Day v. Blockshopper: Amicus Filing

Blawg Review #178 is up at Peter Black’s Freedom to Differ — click here to read it. Black also cross-posted each link in this week’s Review on Twitter. I admit that I have not grasped the full power of Twitter, but I am working on it. And I do grasp the power of Black’s Review. It is well done and contains lots of interesting links.
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Continue Reading Blawg Review #178

Joint defense agreements are an increasingly common part of big patent litigaitons, in the Northern District and across the country. Having been involved in numerous joint defense groups, my colleague Thomas Paternak and I wrote an article that was published in the most recent edition of the ABA’s Litigation magazine about best practices for joint defense groups and dealing with joint defense agreements — click here to for a pdf of the article, with permission from the ABA of course.
Probably the most important tip is one I have discussed before — communication, including live meeetings, is critical to building and maintaining relationships among the joint defense group:
The number of members of the [joint defense group] will have some bearing on how it is organized and managed, but regardless, communication is the key. Weekly, short conference calls once the case is running hot are important, however painful that is, to keep everyone looped in. For important strategy decisions, live meetings are going to be necessary. At the same time, try to put as few communications between co-defendants in writing as possible. Discovery of those communications can and does happen, despite all best legal efforts to prevent it, and you will be particularly embarrassed if you disparage opposing counsel or the judge in venting in an e-mail to your codefendant and that e-mail ends up being produced.
Click here for my previous discussion of the importance of live meetings for building relationships during litigations and click here for Victoria Pynchon’s IP ADR blog post that sparked my comments.
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Continue Reading Making Joint Defense Agreements Work

BorgWarner, Inc. v. Hilite Int’l., Inc., No. 07 C 3339, 2008 WL 3849908 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)
Judge Zagel denied defendant Hilite’s 23 U.S.C. §1404(a) motion to transfer. Plaintiff BorgWarner filed this patent infringement suit over variable camshaft timing (“VCT”) in June 2007. Hilite answered and counterclaimed in March 2008. Five days after answering, Hilite filed a suit in the District of Delaware alleging that BorgWarner infringed Hilite’s VCT patent. Hilite reasoned that its VCT case was related to a prior Delaware patent case filed by BorgWarner on the patent currently at issue in the Northern District, and, therefore, by the transitive property this suit and BorgWarner’s closed Delaware case were related.
While the Seventh Circuit does not strictly follow the first-to-file rule, its use was warranted in this case. BorgWarner’s choice of forum deserved some deference. And the Northern District, while equivalent to Delaware in terms of time to trial, was significantly faster for average disposition without court actions – 6.2 months in the Northern District to 12.5 months in Delaware. Convenience factors were neutral, and therefore weighed in favor of keeping the case in the Northern District.
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Continue Reading Motion to Transfer Filed 11 Months After the Complaint is Denied

Personified, LLC v. Sales Consultants of Cary, LLC, No. 08 C 3123, 2008 WL 3200842 (N.D. Ill. Aug. 8, 2008) (Der-Yeghiayan, J.)
Judge Der-Yeghiayan granted declaratory judgment (“DJ”) defendant Sales Consultants of Cary’s (“SCC”) Fed. R. Civ. P. 12(b)(6) motion to dismiss DJ plaintiff Personified’s trademark case in favor of SCC’s later-filed District of North Carolina action. Shortly after its parent registered the trademark “Personified,” Personified began using the name and allegedly received a cease and desist letter from SCC who offered staffing services using the name “Personified.” SCC’s letter allegedly demanded that Personified immediately change its name and pay SCC damages. In response, Personified filed this suit seeking a declaratory judgment that it had not violated trademark laws or engaged in unfair competition. SCC countersued in the District of North Carolina several days later.
The Court had federal question jurisdiction because of the Lanham Act issues. Personified was the first to file, but the Court noted that the Seventh Circuit did not strictly follow the first-to-file rule. And the Court exercised its “wide discretion,” declining to exercise jurisdiction over the declaratory action. SCC was the natural plaintiff. Instead of filing suit after receiving the cease and desist letter, Personified could have gone to SCC to resolve the dispute. Additionally, Personified was already preparing a motion to transfer the North Carolina action to the Northern District. The Court also denied a motion to stay its ruling pending a decision by the District of North Carolina. If the North Carolina Court transferred the case to the Northern District, Personified would not face substantial hardship by having to replead its DJ claim.
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Continue Reading No Declaratory Judgment Jurisdiction Because Defendant is Natural Plaintiff

O’Leary v. Mira Books, No. 08 CV 8, 2008 WL 3889867 (N.D. Ill. Aug. 18, 2008) (Gettleman, J.)
Judge Gettleman granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff alleged that defendant – the author and publisher of the novel The Good Liar – infringed plaintiff’s copyright in plaintiff’s novel, What If, by publishing The Good Liar. The Court dismissed the copyright claim because plaintiff did not identify specific copied passages of her work or show substantial similarities between the works. What If was about a relationship between a paralegal and a rockstar. The Good Liar was about a counter-terrorist organization. The similarities between the works were references to common places or things – both were set in Chicago and had blonde-haired characters.
The Court also dismissed plaintiff’s state law unfair trade practices and unfair competition claims. Both were preempted by the Copyright Act because they were based upon publishing and marketing of the allegedly infringing novel.
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Continue Reading Novels With Different Plots Not Substantially Similar

Northwestern’s Law School is hosting an Advocacy and Ethics Film Series. There are three sessions, each built around a classic legal movie, offering 1.5 ethics credits (everyone needs ethics credits) per session. Once you sign up, they mail you a DVD of the movie, watch it before the session and then discuss it with a distinguished Northwestern professor, over popcorn. Each session costs $175 ($500 for all three) with early registration, or $225 ($600 for all three) after the deadline. This looks like a great CLE series, but I have to question the decision not to include my favorite legal movie, Anatomy of a Murder. Maybe they are saving it for the 2009 series. Here is the information for each session:
To Kill a Mockingbird, presented by Steve Lubet – October 3, 5:30-6:30 p.m. Registration and popcorn: 5:00 p.m.
12 Angry Men, presented by Bob Burns – October 22, 5:30-6:30 p.m. Registration and popcorn: 5:00 p.m.
Judgment at Nuremberg, presented by David Scheffer – November 13, 5:30-6:30 p.m. Registration and popcorn: 5:00 p.m.
Notre Dame’s Law School is offering CLE programs on home football Saturdays this year. Each session includes a continental breakfast, two hours of CLE programming before the game and the opportunity to buy tickets for the day’s game (tickets must be picked up at the CLE session). The only session still open is Syracuse on November 22, could be a bit chilly. But Domers should keep their eyes open for next year. Great excuse to get to a game.
On September 23, Loyola University is hosting Attorney General Lisa Madigan speaking as part of the Albert Schweitzer Fellows for Life Lecture Series. The title of Madigan’s presentation is, Leadership by Example: Idealists Creating Change. No CLE credit for this one, but it looks very interesting. It is free, but RSVPs are recommended to either rsvp@hmprg.org or 312.372.4292 ext. 24.
* Hat tip to Fastcase for pointing me to the the Advocacy and Ethics Film Series.
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Continue Reading Watch Movies, Get CLE

Here are several posts related to IP litigation that are worth a read:
Anne Reed at Deliberations has a fascinating post discussing a study about the differences between city and suburban or rural juries — click here to read it. The study is focused on criminal cases, but it has value for civil juries as well. It is no surprise to anyone involved in trials across the country that city jurors act differently than suburban or rural jurors. But the real message of Reed’s post is that you have to be careful to draw overly strong conclusions about one factor (juror’s home addresses) from a study of a massive, complex system like a trial. The outcomes are also dependent upon the sophistication of the court as to the subject matter and type of law of the case, the volume of the court’s docket, etc. And there might be more important ways to classify jurors. For example, relative wealth and level of education may be more important factors than where they live. But Reed points out that the real value of the study for lawyers, consultants and litigants is that it makes us think about how juries are influenced and challenges our preconceived notions. Reed challenges us to Reed the study and use it as a springboard, instead of as an answer.
At his The Prior Art blog, Joe Mullin has an update on Scott Harris and his patent portfolio, after his settlement with his former firm, Fish & Richardson — click here for the post. Harris and Memory Control Enterprise recently filed a patent infringement suit in the Northern District involving GPS navigation technology. I will post about those cases as opinions and orders are issued.
Here is a useful white paper on taking cross-cultural depositions from the All Language Alliance. Hat tip to Evan Schaeffer at his Illinois Trial Practice Weblog for the link in a post about depositions using interpreters.
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Continue Reading IP Litigation News

Blawg Review #177 is up at Small Business Trends — click here to read it. Small Business Trends is a business blog and, so focuses its review on legal angles on business issues. The Review covers a number of intellectual property issues, including UsefulArt’s post about India’s first trademark on a sound. There is also considerable coverage of a hot legal blog topic, the use of Twitter by lawyers and businesses for marketing.
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Continue Reading Blawg Review #177 — Back to Business