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

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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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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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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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 Pasternak 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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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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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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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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Here are several Chicago-area, or close, continuing legal education programs worth your time if you are looking for CLE credit:

• 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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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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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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Eazypower Corp. v. Jore Corp., No. 04 C 6372, 2008 WL 3849921 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)

Judge Zagel construed the claims of plaintiff Eazypower’s patent to a portable screwdriver with a flexible shaft. Of particular interest, the Court held that despite Eazypower’s Jepson claim format, its preamble was not limiting. 

Jepson claiming is a drafting style – common in Europe, but relatively rare in the United States – in which the prior art is described in the preamble and the claimed improvements over the prior art are described in the body of the claim. The Court acknowledged that Jepson claims carry a rebuttable presumption that the claim’s preamble is limiting. But the Court held that the Eazypower rebutted the presumption in this case. The claim’s preamble, therefore, was not limiting. First, the Court relied upon two 2003 Northern District opinions, by Judges Guzman and St. Eve, holding that the preambles of the claims at issue overcame the presumption and were not limiting. While these opinions were not controlling, the Court found them well-reasoned and persuasive. The Court explained that the preambles were not limiting because they were “not necessary to give life to the claims,” citing Judge Guzman’s decision. Eazypower v. Vermont Am. Corp., No. 01 C 3252, 2003 WL 1720024, at *10 (N.D. Ill. Mar. 28, 2003).

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Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

• Consumer Law & Policy Blog -- considering the merits of the claims.
   
• [UPDATE]:  Las Vegas Trademark Attorney -- pointing out that individuals could avoid being the subject of a Blockshopper story by purchasing through a trust.
   
• Legal Blog Watch -- questioning the PR ramifications of the suit.
   
• [UPDATE]:  MediaPost -- noting that Blockshopper's Florida stories also run in the South Florida Sun-Sentinel based on a deal with the Tribune company.
   
• Techdirt

While I generally save my commentary for the opinions, there is one point that needs to be made.  Many bloggers are using an alleged quote from Judge Darrah (I did not hear it and have not seen a transcript of the hearing, so cannot confirm it) warning Blockshopper that defending the suit would be very expensive.  Unless the comment was made in a hostile or aggressive manner, which I very much doubt and which has not been suggested in the posts I have seen, that is simply a statement of legal reality.  Defending federal intellectual property cases has become expensive, very expensive.  And defense costs are a factor in the calculus of every defendant's business decisions about  a law suit.

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The Seventh Circuit's Judge Posner is scheduled to begin a bench trial this morning on the issue of inequitable conduct in New Medium Technologies LLC v. Barco NV, No. 05 C 5620.  The trial is scheduled to last today and tomorrow, but could go as long as Wednesday.  I represented a party that was in the case, but settled and was dismissed from the case last year.  As a result, I have not covered any opinions from the case, previously before Judge St. Eve.  But I am going to observe some of the trial, and I may blog about the trial if I find some interesting things to say that relate more to the trial techniques of counsel or Judge Posner's courtroom than the facts of the case.

But if you are interested in watching Judge Posner hear a patent case or what I expect to be some excellent advocacy from the Niro firm, for plaintiffs, and Baker & McKenzie, for defendants, the bench trial is being heard in Judge St. Eve's courtroom.

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Patent Appeal Tracer has run a provocative series of posts discussing the process for and practice of sealing documents in the Eastern District of Texas cases, focused of course on patent disputes.  The first post details the procedures as they understand it and questions whether parties should be allowed to file sealed documents without the court's review -- click here to read it. 

The second post includes the comments of Michael Smith from his E.D. Texas Weblog -- click here to read it.  Smith explains that the sealing rules have changed since those quoted by Patent Tracer, but that it is still possible for pre-approval to be granted in cases giving the parties initial control over what is sealed.  Smith acknowledges that too much may be filed under seal, but explains that the E.D. Texas Rules Committee is balancing the public right to information with a workable process:

Now the question of whether too much is being filed under seal is a valid one - I've seen a couple of cases recently where it seemed everything was under seal, and it wasn't immediately apparent that anything confidential was involved. But that is definitely the exception in my experience. . . . But I can say that our principal concern, at least on the ED Tex's rules committee when the issue has come up, was coming up with a mechanism to make filing under seal as easy as possible where the reason for the filing was that confidential documents were attached.

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John Marshall's Summer 2008 edition of its Review of Intellectual Property Law is on bookshelves everywhere, plus it is online (click here for the table of contents of the current edition with links to pdfs of each article).  Some of the highlights in:

• The text of Chief Judge Michel's address to the Federal Circuit Judicial Conference in which he discussed the state of the Circuit and asked Congress to add a fourth law clerk for each appellate judge to speed the Federal Circuit's output;
   
• An article by R. Mark Halligan arguing for the addition of a trade secret misappropriation cause of action to be added to the Economic Espionage Act of 1996; and
   
• Hal Wegner's discussion of the impact of the Supreme Court's patent exhaustion decision in Quanta v. LG; and
   
• Daniel Sullivan's student arguing that an Article I patent tribunal should be created and that patents should know longer be subject to trial by jury.

Whether you agree or disagree with the authors, this edition has some provocative arguments.

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Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

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Yesterday, LexMonitor featured me as its blogger of the day -- click here for LexMonitor's page on the Blog and me.  That leads to a thank you, an apology and some disclosure.  Thanks to LexMonitor for highlighting the Blog and for all of the work the LexMonitor team does aggregating legal blog content in one place.  Next, I apologize for not posting specifically about LexMonitor when it debuted earlier this year.  In my defense, I did immediately add them to my blog roll.  LexMonitor is a great resource for identifying new legal content to follow.  They take a process that, on your own, is like drinking from a fire hose and make it manageable to find the legal blogs in your areas of interest.  Finally, full disclosure:  LexMonitor was created and is run by the great people at LexBlog who run this site for me and who I routinely credit for the great job they do on this blog and so many others.

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Liquid Dynamics Corp. v. Vaughan Co., No. 06 C 5611, 2008 WL 3007996 (N.D. Ill. Aug. 4, 2008) (Kennelly, J.).

Judge Kennelly construed “approximately” as used in plaintiff Liquid Dynamic’s (“LD”) patent for wastewater treatment tanks, and denied defendant Vaughan Co.’s (“Vaughan”) motion for summary judgment.  The claim at issue required that flow generators were located “between approximately 30 percent and 70 percent” of the radial distance from the center to the inside wall of the tank.  LD argued that approximately was defined by industry standard tolerances of 10%.  Vaughan argued that approximately was limited to 5% based upon the broadest range of 25%-75%.

The Court held that the intrinsic evidence – patent’s specification and prosecution history – made clear that 25%-75% were not the outer limits of flow generator placement.  But the intrinsic evidence did not clarify what those outer limits were or what approximately meant.  The Court, therefore, relied upon the extrinsic evidence – plaintiff’s expert’s affidavit – and held that 10% was an industry standard.

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Integrated Cards, L.L.C. v. McKillip Industries, Inc., No. 06 C 2071, 2008 WL 3286981 (N.D. Ill. Aug. 8, 2008) (Kendall, J.).

Judge Kendall denied defendant’s motion for summary judgment of laches and equitable estoppel, and set a bench trial on the two defenses. Plaintiff charged defendant with infringing its patent covering a card (such as an ID card) integrated with a letter – Illinois attorneys get their ARDC cards in a similar form.

Defendant made and sold versions of the accused product for at least nine to ten years. Defendants argued that plaintiffs had actual constructive knowledge of the accused product beginning in 1998 or 1999, longer than the six years before the filing date required for a presumption of laches pursuant to 35 U.S.C. § 282. That presumption would have shifted the burden of proof from defendants to plaintiffs.

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Blawg Review #176 is hosted by Legal Literacy -- click here for the Review -- on the United Nations' International Literacy Day. Literacy is worthy of far more than a single day of focus, and it turns out that the United Nations agrees.  Apparently, we are halfway through the Literacy Decade (running from 2003 until 2012).

Legal Literacy's Review is full of great content, including some interesting IP-related topics.  Thomas Colson at  Securing Innovations (another LexBlog site) has a very interesting post (click here) on a new series of commercials by the PTO and Invent Now, among others, aimed at encouraging 8 - 11 year old boys and girls to invent.  Colson is concerned that the commercials feed gender stereotypes and links to A Girl Named Pants his series of children's books that motivate young girls to overcome gender stereotypes. 

I can see the stereotype concerns to a degree, but the ads that I found were pretty powerful and funny.  Click here for the LA Times article Colson links to containing a video of one add -- I would love to add a suction bike to my bike collection.  And to the extent that there is stereotyping, I think it is far outweighed by the potential good of the program.  Having said that, I am impressed by Colson's books and vision.  When my daughter is old enough, I will be reading to her about the adventures of Pants. 

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 2875007 (N.D. Ill. Jul. 23, 2008) (Aspen, Sen. J.).*

Judge Aspen granted in part and denied in part defendants’ summary judgment motion regarding plaintiffs’ copyright, Lanham Act, trade secret and related state law claims.** Plaintiffs and defendants both design, manufacture and sell flexible fuel storage tanks. Corporate defendant MIL was formed by at least individual defendants John and Lawrence, both of whom previously worked for plaintiffs in various capacities and later worked for MIL in direct competition with plaintiffs over, at least, a United States Air Force contract.

Trade Secret Misappropriation

The Court held that plaintiffs’ pricing and warranty provisions were not trade secrets and, therefore, granted summary judgment in defendants’ favor. But the Court held that there was a question of fact as to whether plaintiffs’ tank designs were trade secrets. Additionally, the Court noted that the question of whether sufficient efforts were used to maintain secrecy of the alleged trade secrets was a question of fact for jurors in all, but the most extreme cases. Because plaintiffs identified several precautions taken to protect their trade secrets, the Court denied summary judgment. The fact that tank designs were provided to plaintiffs’ independent contractors without confidentiality did not warrant summary judgment for defendants. There are circumstances where independent contractors have independent, professional duties of confidentiality regardless of whether agreements were signed.

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On Tuesday, September 16 the John Marshall Law School is putting on an impressive conference looking at the legacy of the Federal Circuit's Chief Judge Markey.  For those that never had the opportunity to know or experience Judge Markey, here is part of Judge Michel's tribute to Judge Markey in the Legal Times after he passed in 2006:

Leadership for Howard Markey began with setting a vigorous example. He simply heard more appeals, wrote more opinions, gave more speeches, drafted more articles, taught more law school classes, and judged more moot courts than any other member of the court. And he did so despite all his administrative duties. Meanwhile, he chaired both the board of directors of the American Inns of Court and the Committee on Codes of Conduct of the Judicial Conference of the United States. He traveled constantly and sat with every regional circuit court, the first and only judge to do so.
 

Despite a life in overdrive, he was the happiest and funniest man I ever met, routinely reeling off five or six successive jokes without pausing to recollect, or even to breathe. Family members report that he had a perfect memory, an asset especially helpful to a tireless storyteller, which he was.

(Click here for a link to the article and more on Judge Markey). If Judge Michel's description of Markey is not enough to get you to the event, Supreme Court Justice Antonin Scalia will be giving the keynote address.  I have had the privilege of hearing Justice Scalia speak a couple of times.  He is an excellent speaker and should not be missed. 

Click here for John Marshall's conference brochure and here for Patent Docs' description of the event, they are a seminar sponsor.  The registration deadline is this Friday, September 12.  I hope to see you there.

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Jones Day v. BlockShopper.com, No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*

Judge Darrah entered the parties stipulated temporary restraining order ("TRO").  Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog's earlier post on the case.

The Court entered the parties' stipulated TRO, ordering defendants not to:

1. Use reproductions or imitations of plaintiff's service mark;
    
2. Use any content from or link to plaintiff's website; or
    
3. reference plaintiff in its headlines.

Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry. 

As you would expect, other blogs and mainstream media have noticed the case.  At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week's National Law Journal -- click here (subscription required).  According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:

Bending to the law firm's demands to stop coverage of the firm's lawyers would strangle the company's business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.

Ambrogi sums up the issue at the heart of the dispute well:

In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: "We like our public records to be public -- just not too public.

*  Click here for the Order.

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Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., No. 08 C 526, 2008 WL 236610 (N.D. Ill. Jun. 6, 2008) (Nolan, Mag. J.).

Judge Nolan granted plaintiff’s motion to quash defendants’ subpoenas of plaintiff’s counsel – who represented: 1) plaintiffs and perhaps individual defendants in plaintiffs’ earlier trademark prosecution; and 2) plaintiffs in this case. The Court denied defendants’ motions to compel production of communications between plaintiffs and plaintiffs’ counsel and to pierce the privilege.

Defendants argued that plaintiffs committed fraud on the PTO, and therefore inequitable conduct, when plaintiffs’ counsel allegedly knowingly submitted false declarations during prosecution of plaintiffs’ trademarks. Defendants based their claims on an allegedly privileged communication between plaintiff and its counsel (Exhibit L) that plaintiffs claimed was inadvertently produced.

The Court held that Exhibit L was inadvertently produced – it was just one document among 22,000 pages and plaintiffs requested its return immediately after discovering its production. Furthermore, Exhibit L was essentially a list of questions from counsel to plaintiffs, by which counsel was making sure he had sufficient information to file the declarations in question – evidence supporting plaintiffs’ defense of defendants’ inequitable conduct claims.

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Blawg Review #175 is up at Jamie Spencer's Austin DWI Lawyer (another LexBlog site) -- click here to read the Review.  Fitting with Ed.'s sense of humor, a DWI lawyer was chosen to host the Labor Day Review, instead of a more traditional pick, like a labor lawyer.  Of course, there are lots of interesting DWI posts, and a few good IP links.  Spencer links to Victoria Pynchon's post at the IP ADR Blog about the arrest of a blogger who posted new Guns N' Roses tracks before the group released its new album -- click here to read it.  In a "teeny tiny" act of civil disobedience, Pynchon posted the entire text of the LA Times story on the arrest.  While I will admit to one or two acts of civil disobedience in my day, today you are just getting a link to the Chicago Tribune's story by Michelle Quinn and Swati Pandey on the arrest and the increasing use of criminal copyright infringement prosecutions -- click here.

September's Carnival of Trust is up at Compensation Force -- click here for the Carnival.  There are no specific legal or IP posts this month, but lots of great stuff on building and maintaining relationships with trust.

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Midtronics, Inc. v. Aurora Performance Prods. LLC, No. 06 C 3917, 2008 WL 2745941, (N.D. Ill., Jul. 11, 2008) (Shadur, Sen. J.).

Judge Shadur construed the disputed terms of plaintiffs’ electronic battery tester patent. The patent taught a form of “dynamic” battery testing and each disputed term revolved around the meaning of “dynamic.” The Court adopted plaintiffs’ definition – varying over time – without limiting dynamic to require an AC current (a current that varies regularly over time). The Court held that requiring an AC current was an unnecessary limitation. Not all currents that vary over time are AC, and requiring an AC current would have read a preferred embodiment out of the claims.

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Wausau Business Ins. Co. v. Fisher Printing Co., No. 07 C 3732, 2008 WL 2704874. (N.D. Ill. Jul. 8, 2008) (Kennelly, J.).

Judge Kennelly granted in part defendant’s motion for summary judgment of insurance coverage and denied plaintiff’s cross motion. Defendant-insured was charged with copyright and trademark infringement for allegedly using a third party’s trademarks in various advertisements the insured printed. Insured sought defense and indemnity from plaintiff-insurer based upon the advertising injury clause in the parties’ insurance policy. Insurer contended that a prior publication exclusion denied coverage insured’s case because the accused infringement began before the policy’s effective date and was allegedly knowing and intentional. But because the complaint alleged that some of insured’s infringement commenced after the policy’s effective date, the exclusion did not preclude coverage. All that is required to trigger coverage is that one allegation falls within the policy.

Insurer also argued that a knowing violation exclusion denied coverage because the complaint alleged willful and intentional copyright and trademark infringement. But because copyright infringement could be proven without regard to insured’s intent, the exclusion did not apply.

Finally, the Court denied summary judgment as to insured’s bad faith litigation claim. The Court held that there was at least a question of fact as to whether insurer had a plausible defense to the coverage.

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I hope the long weekend finds you enjoying family and basking in the return of college football, like me.  No Labor Day-related patent this year, just a thank you to all those working hard every day to make our lives safer and more comfortable.

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