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Category Archives: Pleading Requirements

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Counterclaim Need Not Plead Facts to Overcome Statute of Limitations Affirmative Defense

By R. David Donoghue on Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Mar. 18, 2013) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s copyright infringement counterclaims.  The fact that defendant did not plead the dates of the alleged copyright infringement was not fatal to the counterclaims.  Flava Work’s statute of limitations argument was an affirmative defense and defendant was not required to plead facts refuting it as part of its counterclaims.

The Court also noted that pro se defendant’s periodic failure to appear for hearings has caused the case to move or not move in “fits and starts.”  The Court “cautioned [defendant] . . . that such inattention could prove costly if repeated.”

 

Court Stays Case Pending Reexam on Plaintiff’s Motion

By R. David Donoghue on Posted in Pleading Requirements

C&C Power, Inc. v. C&D Techs., Inc., No. 12 C 3376, Slip Op. (N.D. Ill. Feb. 11, 2013) (Dow, J.).

Judge Dow granted plaintiff’s motion to stay its patent infringement case pending an  inter partes review of the patent in suit initiated by defendants.  Defendants acknowledged that the reexam could simplify or moot the district court case and that there would be few wasted resources due to a stay because the case was in its early stages.  Defendants, however, argued that they would be prejudiced by the delay in deciding their Rule 12(b)(6) motion to dismiss.  But the Court held that plaintiff had not made “utterly fantastic factual allegations” that would subject it to dismissal.  And because defendants initiated the reexam, they could not claim prejudice from the reexam.

Elton John’s “Nikita” Does Not Infringe Copyright in Song “Natasha”

By R. David Donoghue on Posted in Pleading Requirements

Hobbs v. John a/k/a Sir Elton Hercules John, No. 12 C 3117, Slip Op. (N.D. Ill. Oct. 29, 2012) (St. Eve, J.).

Judge St. Eve dismissed plaintiff’s copyright and related state law claims against Elton John, Bernard Taupin and Big Pig Music (collectively “defendants”). Plaintiff argued that his copyrighted song “Natasha” inspired by his romantic involvement with a Ukranian waitress during the Cold War in the 1980s was infringed by defendants’ song “Nikita.” Copyrighted a few years later, “Nikita” allegedly describes a love affair between a Western man and an East German woman during the Cold War. Defendants argued that the songs were not substantially similar under any set of facts and, therefore, the case should be dismissed. The Court considered the lyrics of the songs pursuant to Fed. R. Civ. P. 10(c) because they were referenced in the complaint and because plaintiff did not object to the Court’s consideration of the lyrics.

The Court held that the lyrics were objectively not substantially similar for at least the following reasons:

• An impossible Cold War-era love affair, a postal theme, and references to a woman’s pale eyes were not protectable because they were “rudimentary, commonplace, and standard under the scenes a faire doctrine.”

• The Court listed several songs that included Cold War-era love affairs from the early 1980s – Devo, “Cold War,” http://www.lyricsfreak.com/d/devo/cold+war_20039646.html (“I heard it said that all is fair, In love and war so what’s life for, The boy and girl, Two separate worlds, The endless tug of war, Uh!”); David Bowie & Brian Eno, “Heroes,” http://www.lyricsfreak.com/d/david+bowie/heroes+single+version_20962708.html (“I, I can remember (I remember), Standing by the wall (By the wall), And the guns, shot above our heads (Over our heads), And we kissed, as though nothing could fall (Nothing could fall”)).

• Additionally, the postal and pale eyes themes were expressed differently in each song.

• The use of the word “never” and the phrases “to hold you”, “you’ll never know”, “you will never know” and “I need you” were not protectable because they were not unique.

• Titles are not protectable. So, the fact that both songs had “one-word, phonetically-similar title[s] consisting of a three-syllable Russian name, both beginning with the letter ‘N’ and ending with the letter ‘A’” was not relevant to the Court’s analysis. Furthermore, both names – Natasha and Nikita – were common names and a “quick search” of the Copyright Office’s registration database showed other songs titled “Natasha” and “Nikita”.

• The Court also noted that repetition of the name of a love interest in a song was common, citing Lola and, a personal favorite of mine, Roxanne.

Once the Court filtered the non-protectable elements of each song, it found no similarities between the songs. And plaintiff’s state law claims were preempted by the Copyright Act.

 

Court Does Not Dismiss “Me Too” Patent Counterclaims

By R. David Donoghue on Posted in Pleading Requirements

Trading Techs. Int’l., v. CQG, No. 05 C 4811, Slip Op. (N.D. Ill. Oct. 31, 2012) (Coleman, J.).

Judge Coleman granted in part plaintiff Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant CQG’s affirmative defenses and declaratory judgment counterclaim.  The Court dismissed CQG’s bare-bones defenses which stated in their entirety:

  •  “Plaintiff’s claims are barred by the doctrines of estoppels, acquiescence, implied license, and/or unclean hands.”
  • “Plaintiff is not entitled to any damages for the time period that it was not in compliance with the marking requirements under 35 U.S.C. § 287.”

The Court, however, gave CQG twenty-one days to amend the defenses to include sufficient factual support.

The Court denied TT’s motion to dismiss CQG’s declaratory judgment counterclaims as redundant.  While some judges in the Northern District dismiss such claims, the Court held that CQG’s counterclaims would allow the Court to retain jurisdiction if TT dismissed its claims and, therefore, were not redundant.

Lack of Detailed Allegations Dooms Patent Complaint

By R. David Donoghue on Posted in Pleading Requirements

Gharb v. Mitsubishi Elec. Automation, Inc., No. 10 C 7204, Slip Op. (N.D. Ill. June 4, 2012) (Chang, J.).

Judge Chang granted defendant Mitsubishi Electric Automation’s (“Mitsubishi”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent complaint.  With respect to direct infringement, plaintiff only accused Mitsubishi’s programmable logic controller (“PLC”), but in a previous suit on the patents-in-suit, the Federal Circuit held that a PLC alone could not infringe the patents.

The Court also dismissed plaintiff’s contributory infringement claims because plaintiff did not make sufficient allegations to show that Mitsubishi’s PLC was not a staple article.  And plaintiff’s various exhibits showed that the PLC had multiple non-infringing uses.

Finally, the Court dismissed the inducement claims.  Plaintiff only identified Mitsubishi’s PLC, not an entire security system to show direct infringement.  And the PLC’s non-infringing uses called into question the necessary intent claims.

 

Induced Infringement Claims Need Not Use the Word “Induce”

By R. David Donoghue on Posted in Pleading Requirements

Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.).

Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss.  As an initial matter, the court denied plaintiff Snap-On’s argument that the motion was an improper Rule 12(b) motion pursuant to Rule 12(g)(2) because the German Defendants previously filed a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction.  The Court ordered limited jurisdictional discovery prior to deciding that motion.  That discovery had become “highly contested.”  The German Defendants sought and received the Court’s leave to file this Rule 12(b)(6) motion because were the motion granted, it would have removed the need for that discovery.  The Rule 12(b)(6) motion, therefore, was not filed for dilatory purposes and it promoted the policies behind Rule 12(g).

Of particular note, the Court held the following with respect to the Rule 12(b)(6) motion:

  • General allegations that all defendants directly infringed were sufficient.  Snap-On was not required to make separate infringement allegations as to each defendant by name.
  • Snap-On’s claim that the German Defendants used the product in Illinois was sufficient to plead direct infringement.
  • Snap-On was not estopped from pursuing inducement claims based upon Snap-On’s statements to the Court regarding claiming direct infringement against the German Defendants.  Those statements were about direct infringement as opposed to joint infringement claims, and had no bearing upon indirect infringement claims.
  • Snap-On’s allegations were sufficient to plead inducement.  Snap-On alleged the German Defendants worked with defendant Robert Bosch USA to develop, price, and market the accused products and that Snap-On sent Bosch a warning letter prior to the US introduction of the accused product.  Snap-On’s failure to use the words “induce” or “inducement” did not doom its claim because Snap-On still pled the elements of inducement.

“Special Sharing” Allows Claims Against Corporate Officer

By R. David Donoghue on Posted in Pleading Requirements

Lang Exteriors, Inc. v. Lang Windows, Inc., No. 11 C 5517, Slip Op. (N.D. Ill. Aug. 16, 2012) (Finnegan, J.).

Judge Finnegan denied individual defendant Lang’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss this Lanham Act suit.  Lang argued that plaintiff Lang Exterior could not bring claims directly against Lang without piercing the corporate veil.  But Seventh Circuit law allows personal claims against corporate officers where there was a “special showing” that the officer acted beyond the scope of her official duties.  Plaintiff’s pleadings were sufficient to make that showing at the Rule 12(b) stage.  Specifically, plaintiff pled:

  1. Lang founded defendant Lang Windows and deliberately chose a name to confuse.
  2. Lang personally emailed contacts using a pseudonym she used for plaintiff in order to confuse customers.
  3. Lang created a website intending to confuse.

The Court also deemed waived Lang’s arguments reviewed for the first time on appeal.

Knowledge From Date of Complaint Sufficient for Indirect Infringement

By R. David Donoghue on Posted in Pleading Requirements

Radiation Stabilization Sol’ns LLC v. Accuray Inc., No. 11 C 7700, Slip Op. (N.D. Ill. Aug. 21, 2012) (Coleman, J.).

Judge Coleman granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Radiation Stabilization Solutions’ (“RSS”) claims in this patent infringement suit regarding technology for stabilizing irradiated targets.  While defendant Cancer Treatment Centers of America (“CTCA”) was not properly named because its corporate designation – Inc. – was not listed, there was no need to dismiss CTCA.  Instead, RSS was given leave to amend identifying CTCA’s correct corporate form.

RSS sufficiently pled induced infringement by making statements at least as detailed as Form 18 to the Federal Rules regarding the alleged underlying direct infringement.  The complaint need not identify a specific direct infringer.  While RSS did not allege it gave defendants notice of the infringement, the complaint itself served as notice.  Similarly, RSS’s claims of intent starting from the date of the complaint were sufficient.

The Court dismissed RSS’s contributory infringement claims without prejudice.  While RSS’s similar claims of direct infringement and intent were sufficiently pled, RSS made no statement at all that defendants’ products did not have substantial non-infringing uses.

Non-Lawyer Cannot Represent a Party in Federal Court

By R. David Donoghue on Posted in Pleading Requirements

Maclean-Fogg Co. v. Guangzhou Hotlink Hardware Co, Ltd., No. 12 C 6796, Slip Op. (N.D. Ill. Oct. 11, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendant’s answer for multiple deficiencies.  Initially, it was improperly signed by corporate defendant’s non-lawyer owner.  No non-lawyer can represent a party in federal Court.  Additionally, the answer had the following deficiencies:

  • The answer was not made in numbered paragraphs corresponding to the complaint’s paragraphs pursuant to Local Rule 10.1.
  • In several places, the answer wrongly states that no answer is necessary because statements are legal conclusions.  Answers must address even legal conclusions.
  • While lack of information and belief is deemed a denial, defendant cannot deny statements for which it lacks information and belief.

Answer to Affirmative Defenses Struck as Improper

By R. David Donoghue on Posted in Pleading Requirements

New Paradigm Enterprises, Inc., d/b/a Q101 v. Merlin Media LLC, No. 12 C 5160, Slip Op. (N.D. Ill. Oct. 12, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued this order to address deficiencies in plaintiff New Paradigm’s answer to defendant Merlin Media’s counterclaims, specifically:

  • New Paradigm’s answers to Merlin Media’s affirmative defenses were struck as improper.
  • Denials based upon a lack of information and belief were struck as improper.
  • References to “strict proof” were ordered to be removed.
  • Answers that “waffle[ed]” and did not provide a response were required to be repled.

Court Declines to Decide Speculative Motion to Strike

By R. David Donoghue on Posted in Pleading Requirements

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 19, 2012) (Holderman, C.J.).

Chief Judge Holderman denied plaintiff Fujitsu’s motion to strike defendant Tellabs’ unclean hands defense and its unfair competition claim.  Neither count was pled.  They were only identified in Tellabs’ supplemental initial disclosures.  Tellabs reasoned that it could not ascertain whether it needed to seek leave to amend adding the claims to the pleadings until after a Rule 30(b)(6) corporate deposition.  Regardless, the Court held it need not address Fujitsu’s concerns until Tellabs actually sought leave to amend its pleadings.

Pro Se Answer Must Apply With Rules

By R. David Donoghue on Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Aug. 6, 2012) (Shadur, Sen. J.).

 Judge Shadur vacated a default judgment entered against defendant based upon defendant’s explanation for his non-appearance.  But the Court warned that defendant must revise his proposed answer to: 

  • Remove denials of statements for which defendant lacked information and belief; and 
  • Revised his affirmative defenses down from its list of 21. 

 

 

Conclusory Allegations in Patent Warrant Dismissal

By R. David Donoghue on Posted in Pleading Requirements

Addiction & Detoxification Institute, LLC v. Epperly, No. 11 C 5947, Slip Op. (N.D. Ill. May 23, 2012) (Dow, J.).

Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent infringement suit without prejudice to refile within twenty one days.  Plaintiff’s complaint was “woefully deficient” asserting only that defendants “practiced one or more inventions” claimed in the patents, that defendants benefitted from the infringement and that plaintiff was harmed.  These conclusory allegations did not meet the Twombly/Iqbal pleading standard.  Plaintiff was given twenty one days to replead with facts.  And defendant’s sanctions motion was denied with leave to refile if an amended complaint was filed and remained deficient.

Pro Se Answer Must Still Comply With Rules

By R. David Donoghue on Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. July 16, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendants’ pro se answer pursuant to Local Rule 5.2(e) for failure to comply with the Local Rule 5.2(c) font and margin requirements.  The Court also identified the following non-exhaustive list of problems with the answer:

  • In violation of Fed. R. Civ. P. 8(b)(5), the defendant denied statements for which it lacked information and belief.
  • Defendants’ laundry list of 25 affirmative defenses was “unacceptable” for not providing sufficient factual notice.

Copyright Plaintiff Must Justify Doe Suit or Faces Dismissal

By R. David Donoghue on Posted in Pleading Requirements

AF Holdings LLC v. Doe, No. 12 C 4244, Slip Op. (N.D. Ill. Jun. 5, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte gave plaintiff AF Holdings ten days to provide a further showing justifying its suit against an anonymous John Doe in this copyright infringement suit.  The Court explained that Doe cases were not a new problem.  The Court saw them years before when bands such as REO Speedwagon filed Doe suits based upon anticipated sales of knock-off concert t-shirts.  The Court refused to consider those suits until there was a specified infringer.  The Court held that AF Holdings had not sufficiently explained why they should be allowed to pursue a case to unmask the owner of an IP address.  The Court also raised concerns that it would issue a subpoena that extended beyond the geographic bounds of the Court’s authority.  If AF Holdings was not able to answer the Court’s concerns, the case would be dismissed without prejudice.

Theft of Lyrics Not Relevant to Copyright Infringement Case

By R. David Donoghue on Posted in Pleading Requirements

Hobbs v. John, No. 12 C 3117, Slip Op. (N.D. Ill. Jun. 19, 2012) (St. Eve, J.).

Judge St. Eve denied a Fed. R. Civ. P. 24 motion to intervene by Romano in this copyright case.  Plaintiff alleges that he wrote the lyrics to “Natasha” and that defendant Big Pig took the lyrics and substantially reproduced them in Elton John’s song “Nikita.”  Romano sought to intervene alleging that Hobbs’ lyrics were in his diary which was allegedly stolen by Elton John.  Romano did not have a right to intervene pursuant to Fed. R. Civ. P. 24(a)(2) because he did not show a direct significant and legally protectable interest in the litigation.  Romano did not claim that he held a copyright in Natasha, just that his diary containing the lyrics was stolen.

And Romano’s motion did not meet Fed. R. Civ. P. 24(b) standards for permissive joinder either.  The alleged theft of the diary was not related to the alleged copyright infringement.

Court Evaluates Ordinary Observer Test to Dismiss Design Patent Pleadings

By R. David Donoghue on Posted in Pleading Requirements

Parker v. Kimberly-Clark Corp., No. 11 C 5658, Slip Op. (N.D. Ill. Jan. 10, 2012) (Kendall, J.).

Judge Kendall granted defendant Kimberly-Clark’s Fed. R. Civ. P. 12(b)(6) motion and dismissed plaintiff’s design patent complaint to a sanitary napkin.  Based upon a side-by-side comparison of the design patent and the accused sanitary napkin, the Court held that the differences between the two products were so significant that an ordinary observer would find the products to be sufficiently distinct so as not to infringe.  Similarly, an ordinary observer knowledgeable about the prior art would conclude that the two products were not sufficiently similar.  As a result, the Court held that no reasonable jury could find for plaintiff. 

Patent Marking Based Lanham Act Claims Require Showing of Bad Faith

By R. David Donoghue on Posted in Pleading Requirements

GL Trade Ams., Inc. v. Trading Techs Int’l., Inc., No. 11 C 1558, Slip Op. (N.D. Ill. Jan. 23, 2012) (Holderman, C.J.).

Judge Holderman granted defendant Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) and 9(b) motion to dismiss plaintiff GL Trade Americas’ (“GL”) false advertising, unfair competition and deceptive trade practices claims based upon allegedly misrepresenting the scope of TT’s patents.  GL alleged that TT falsely and misleadingly caused others to believe that its patents covered electronic trading software with automatic recentering functionality, even after Judge Moran held that TT’s patents did not cover automatic recentering.

Preemption by the Patent Act

TT argued that GL’s claims were preempted by the marking provisions of the Patent Act.  But the Court held that the Lanham Act claims were not preempted because they required an additional showing of bad faith.

Allegations of Bad Faith

 GL contended that it sufficiently pled bad faith, without using the words bad faith, by alleging that TT knew the scope of its patents, but despite that marked its products incorporating automatic recentering with its patents.  Noting that patent marking allowed for “[s]ome inexactness”, the Court held that it was legally plausible for TT to believe that its accused produts were coverd by the patents.  And the Court found no support for the proposition that a patent holder must notify users of which components in a program were covered by patents and which were not.  As such, it was enough that a single mode of the software package did not have the patented feature, and TT was not required to identify to the user which aspects might read on the patents and which might not.  Because GL had not pled bad faith, both its Lanham Act and deceptive trade practices act claims were dismissed.

** For much more on this case and related cases, check out the Blog’s archives.

 

 

 

Party Must Speak Through Counsel

By R. David Donoghue on Posted in Pleading Requirements

Brown-Younger v. LULU, No. 12 C 1979, Slip Op. (N.D. Ill. May 15, 2012) (Shadur, Sen. J.). 

Judge Shadur denied pro se plaintiff’s various motions in this copyright case:

  • The motion seeking appointment of new pro bono was unnecessary.  Having previously held that plaintiff may proceed in forma pauperis, plaintiff’s counsel’s conflict will result in a new appointment.
  • Plaintiff’s substantive motions were denied.  Plaintiff could not have it both ways.  Having had counsel appointed, plaintiff must allow counsel to speak for her.
  • While the Court encourages settlement, the Court would not compel a settlement conference.  

Defendant Granted Leave to Replead Inequitable Conduct

By R. David Donoghue on Posted in Pleading Requirements

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 1, 2012) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Sloan Valve’s (“Sloan”) inequitable conduct counterclaims and denied Zurn its request for attorneys’ fees and costs in this patent dispute involving valves.  But to the extent the Court dismissed the counterclaims, it was without prejudice to replead using facts learned during discovery.  Sloan was not prejudiced by the amendment because Sloan was on notice of the facts gleaned during the two year discovery period.

The Court acknowledged the inequitable conduct pleading requirements set forth in Exergen, and noted that they were not changed by the heightened proofs required by Therasense.  The Court also held that at the pleading stage, Zurn need not show that its alleged “intent to deceive is the single most likely explanation for non-disclosure.”   Zurn need only allege facts from which intent may be reasonably inferred.

With respect to Counterclaim III, Sloan waived its argument regarding identity and intent, by failing to challenge them in its first motion to dismiss Zurn’s original Counterclaim III, which was substantively the same as this amended counterclaim.  But even if Sloan had not waived its arguments, Zurn could have met Rule 9(b) pleading standards by amending to add information learned during discovery.

And while the Court’s original pre-Therasense ruling on Zurn’s materiality pleading was based upon the “reasonable examiner” standard, Zurn’s pleadings also met Therasense’s “but for” materiality test.  Zurn pled that but for Sloan’s counsel’s statements during prosecution regarding the size of a plunge and a bushing passage taught by the prior art, at least Claim 1 would not have been allowed.

While Counterclaim IV was not adequately pled, Zurn was given leave to replead.  Zurn’s counterclaim did not identify who withheld the prior art, but Zurn had since identified the individuals during discovery.  Zurn’s materiality pleading was also deficient, but Zurn was granted leave to replead with information learned during discovery.  And Zurn was similarly granted leave to amend its intent allegations.

Knowledge for Indirect Infringement May be Pled Based Upon Original Complaint

By R. David Donoghue on Posted in Pleading Requirements

Cascades Computer Innovations, LLC v. Sony-Ericsson Mobile Comms. (USA) Inc., No. 11 C 7223, Slip Op. (N.D. Ill. Apr. 18, 2012) (Darrah, J.).

Judge Darrah denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss in this patent case involving simplifying the process by which computer software deals with errors or exceptions.  Defendant agreed that plaintiff Cascades Computer Innovations (“Cascades”) did not sufficiently plead infringement of independent claim 15 of the patent in suit.  Cascades’ allegations that defendant used “the code in the manner required by claim 15” were sufficient.  It both complied with Form 18 (the form patent complaint accompanying the Federal Rules of Civil Procedure) and with the Twombly/Iqbal plausible pleading standard, which is satisfied by Form 18.

Regarding Cascades’ contributory infringement claims, defendant sought to hold Cascades to too high a standard.  Whether or not defendant’s accused products in fact have non-infringing use, at the pleading stage it was sufficient that Cascades pled that there were no infringing uses.  And Cascades’ allegations that defendant had knowledge of its patent in suit at least since filing of the original complaint was sufficient to show intent.

Laches Claims Generally Not Grounds for Dismissal

By R. David Donoghue on Posted in Pleading Requirements

S&A Futures, LLC — Series 2 v. Sysco Chicago, Inc., No. 11 C 7629, Slip Op. (N.D. Ill. Mar. 13, 2012) (Kennelly, J.).

 Judge Kennelly granted in part defendants’ (collectively “L&P”) motions to dismiss the plaintiffs’ claims in this Lanham Act case in this dispute regarding trademarked bratwurst:

  •  The Court denied L&P’s motion seeking to dismiss claims based upon laches.  While plaintiffs’ (collectively “S&A”) notice letter was well before the various laches periods, there was no allegation in the complaint that L&P’s infringement was continuous since the notice letter, nor was there any specific allegation of infringement before July 2010 when laches would have attached.  Furthermore, the Seventh Circuit cautions that dismissing a complaint based upon laches is an “unusual step.”
  • S&A’s claim for declaratory judgment of ownership of the Krueger Sausage Marks was dismissed.  S&A did not allege that L&P was challenging its ownership, and the claim failed to add anything to the case because the ownership issue would necessarily be decided by other claims.
  •  S&A’s Illinois anti-dilution claim was dismissed because the parties were competitors.
  •  S&A’s accounting claim was dismissed because S&A’s allegations recited the standard without showing the lack of a remedy at law or need for discovery.
  •  S&A’s civil conspiracy complaint was dismissed because the complaint only offered conclusory allegations regarding the alleged conspiracy amongst the defendants.
  •  S&A’s unfair competition claim was not duplicative of its trademark claims because it alleged facts regarding misappropriation of business information which were not alleged in S&A’s trademark claims.

DMCA False Claims Must be Tied to Copyrighted Work

By R. David Donoghue on Posted in Pleading Requirements

Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 5177, Slip Op. (N.D. Ill. Feb. 8, 2012) (Kendall, J.).

Judge Kendall granted defendant’s various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff Personal Keepsakes’ (PKI”) Digital Millenium Copyright Act (“DMCA”), Lanham Act and related state law claims in this case involving copyrighted poems.

Lanham Act

Defendants were not passing off their goods as PKI’s. The pictures PKI put in its complaint showed that “at worst” defendants copied PKI’s copyrighted poems. This was not repackaging. Defendants may have used PKI’s poem, but not the identical products.

The Court held that not identifying PKI as the author was not Lanham Act false designation. Origin refers to producers, not authors.

DMCA

PKI’s alleged copyright management information (“CMI”) was not in fact CMI. The website listed on the goods was not the owner of the copyrights, PKI was, so the website was not CMI. Similarly, the titles listed on the goods were not CMI because they were not the titles identified in the copyright registrations and could not, therefore, be used to search for the copyright registrations. Because none of the information was linkable to the copyright registrations, it was not CMI.

Defendant Pmall did place a within its allegedly infringing poems. Because that could falsely suggest that Pmall owned a copyright in the poem, PKI did state a DMCA claim against Pmall. Finally, website terms and conditions claiming an ownership in unspecified intellectual property were not false statements of ownership with respect to the poems that could support a DMCA claim.

State Law Claims

PKI’s state law claims were preempted by the Copyright Act. PKI claimed that they sounded in unfair competition, but copyright claims inherently include elements of unfair competition.

Authorship Claims Are Not False Designation of Origin

By R. David Donoghue on Posted in Pleading Requirements

M. Arthur Gensler, Jr. & Associates, Inc. v. Strabala, No. 11 C 3945, Slip Op. (N.D. Ill. Feb. 21, 2012) (Guzman, J.).

Judge Guzman granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act false designation of origin and false advertising claims, as well as plaintiff’s Illinois Deceptive Trade Practices Act claims.  Plaintiff alleged that defendant falsely claimed on his website that he designed numerous prominent buildings, including the Shanghai Tower and the Houston Ballet Center.  Citing Datastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Court held that “origin” as used in the Lanham Act referred to the producer of goods, not the author of a work.  Because plaintiff’s claims were based upon authorship, they were dismissed.