Victory Records, Inc. v. Kalnoky, No. 15 C 9180, Slip Op. (N.D. Ill. Jun. 8, 2016) (Zagel, J.). Judge Zagel denied defendant Kalnoky’s Fed. R. Civ. P. 12(b)(6) motion to dismiss contract claims against him personally in this contract and copyright dispute regarding Kalnoky and the band Streetlight Manifesto. Kalnoky was a member of the … Continue Reading
Ariel Investments, LLC v. Ariel Capital Advisors, LLC, No. 15 C 3717, Slip Op. (N.D. Ill. May 16, 2016) (Kennelly, J.). Judge Kennelly granted plaintiff Ariel Investments’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Ariel Capital’s fraud on the Patent & Trademark Office and abuse of process claims in this Lanham Act dispute … Continue Reading
Nalco Co. v. Chem-Mod, LLC, No. 14 C 2510, Slip Op. (N.D. Ill. Oct. 15, 2015) (Darrah, J.). Judge Darrah granted defendants’ motion to dismiss defendants’ motion to dismiss plaintiff Nalco’s Third Amended Complaint pursuant to Fed. R. Civ. P. 12(b)(6) in this patent case involving a method for reducing mercury emission from flue gasses … Continue Reading
Porter v. Team One Lacrosse LLC, No. 15 C 523, Slip Op. (N.D. Ill. May 15, 2015) (Lee, J.). Judge Lee denied defendants (collectively “Team One”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright infringement claims as barred by the three year statute of limitations, 17 U.S.C. § 507(b). Plaintiff and Team One … Continue Reading
Ferris Mfg. Corp., v. Curaline, Inc., No 14 C 4663, Slip Op. (N.D. Ill. Jan. 21, 2015) (Tharp, J.). Judge Tharp denied defendant’s (collectively “Curaline”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Ferris’ Lanham Act and related state law claims regarding DevraSorb wound care products. The Court held as follows: Ferris pled sufficient … Continue Reading
Nalco Co. v. Chem-Mod, LLC, No 14 C 2510, Slip Op. (N.D. Ill. Feb. 4, 2015) (Darrah, J.). Judge Darrah granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Nalco’s patent infringement regarding a method for reducing mercury emissions from coal gas by injecting a bromide compound into flue gas. The Court held … Continue Reading
Slep-Tone Ent. Corp. v. Elmwood Enterprises, Inc., No. 13 C 7346, Slip Op. (N.D. Ill. Apr. 21, 2014) (Lefkow, J.). Judge Lefkow denied defendant Elmwood’s Fed. R. Civ. P. 12(b)(6) & (7) motion to dismiss plaintiff Slep-Tone’s Lanham Act claims related to its SOUND CHOICE marks used in connection with its karaoke accompaniment tracks. Of … Continue Reading
Slep-Tone Enter. Corp. v. Teddy O’Brian’s, Inc., No. 14 C 3570, Slip Op. (N.D. Ill. Sep. 24, 2014) (Guzman, J.). Judge Guzman granted in part plaintiff Slep-Tone’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s declaratory judgment of trademark invalidity, cancellation, antitrust and related Lanham Act and state law claims in this trademark dispute … Continue Reading
Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 05177, Slip Op. (N.D. Ill. Sept. 24, 2013) (Tharp, J.). Judge Tharp granted Defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss Counts I and II for failure to state a claim under which relief can be granted. Count I alleged copyright infringement and Count II … Continue Reading
Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.). Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim. Plaintiff Flava Works pointed largely to … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
Judge Darrah denied plaintiff's application to proceed in forma pauperis and dismissed plaintiff's complaint for failure to state a claim. Courts are required to dismiss a complaint when plaintiff seeks in forma pauperis status along with a complaint that fails to state a claim. Plaintiff's complaint appears to sound in patent, trademarks and copyright. But it was "devoid of any substantive allegations" and, therefore, had to be dismissed.
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Porritt v. MacLean Power Sys., LP, No. 10 C 6128 Slip. Op. (N.D. Ill. Sep. 6, 2011) (Lefkow, J.).
Judge Lefkow granted defendants' (collectively "MacLean") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's false patent marking case involving allegedly expired patents marked upon MacLean's Square Shank Barbed Staples. Plaintiff's intent allegations were "nearly identical" to those held inadequate in BP Lubricants. The Court, therefore, dismissed plaintiff's claim.
The decision was issued about one week before the America Inventory Act was signed into law. But, McLean could not have challenged plaintiff's claim because they were based upon expired patents. The Court refused to consider MacLean's constitutional challenge to the False Marking Act.
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Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted plaintiffs' (collectively "Arcadia") motion to dismiss defendants' (collectively "Moderna") counterclaims and denied Moderna's motion to dismiss Arcadia's claims in this Lanham Act case involving Arcadia's TOPSHOP and Moderna's TOP SHOP TV marks. In 2004, the parties entered a settlement agreement (the "Agreement") pursuant to which Moderna agreed not to use TOPSHOP to sell women's clothing in any country. Arcadia alleged that Moderna violated the Agreement beginning in 2010 when it began selling women's clothing in the US on Moderna's topshoptv.com website.
Moderna argued that Arcadia did not plausibly plead a protectable mark because Moderna was the first user of the mark. But a motion to dismiss must assume the truth of Arcadia's allegations and Arcadia plausibly pled that it was the first user of the mark. Additionally, Moderna's arguments ignored that Arcadia's complaint challenged the validity of Moderna's TOPSHELF TV registration.
Arcadia sufficiently pled fame as part of its trademark dilution claim. While Arcadia did not parrot the language of the statute, it pled its TOPSHOP brands were "world famous", that the brand is one of the most successful in the world, that there have been millions of dollars in US sales and that the brand is regularly featured in US and international fashion and celebrity magazines and other media.
The Court dismissed Moderna's counterclaim for a declaratory judgment that it was the senior user of its TOP SHOP TV mark. Arcadia, however, had never challenged Moderna's TOP SHOP TV mark. Arcadia's only claims, in the suit or otherwise, were with respect to its TOPSHOP mark. As a result, any decision regarding the mark would be an impermissible advisory opinion.
The Court dismissed Moderna's trademark misuse counterclaim because Moderna did not show that trademark misuse was an affirmative cause of action. Moderna was, however, allowed to amend its answer to add an affirmative defense of trademark misuse.
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SCI Ill. Servs., Inc. v. Mitzvah Memorial Funerals, Inc., No. 10 C 6111, Slip Op. (N.D. Ill. Apr. 27, 2011) (Holderman, C.J.).
Judge Holderman denied defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's Lanham Act false designation of original claim in this trademark dispute involving funeral home trademarks - Lloyd Mandel Levayah Funerals (plaintiff) and Lloyd Mandel Mitzvah Memorial Funerals (defendant). Plaintiff properly pled that it had a protectable mark and that there was a likelihood of confusion as to defendants' funeral services. The Court could not find the marks so dissimilar that plaintiff could not demonstrate a likelihood of confusion between the marks as a matter of law. The Court refused to consider defendants' motion as to other claims because defendant did not argue or support its motion as to the other claims in its briefing.
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Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)
Judge Coleman denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).
Newt alleged that defendant Graphic Packaging ("GPI") falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.
Further, all defendants were dismissed because Newt only made generalized intent allegations -- e.g., that defendants were "sophisticated companies."
Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.
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Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).
Judge Coleman granted the individual defendants' and Aslan Financial Group's Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can's trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.
The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.
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Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).
Judge Zagel granted in part defendants' motion to dismiss plaintiff Healix Infusion Therapy's ("Healix") complaint, which included copyright infringement, trademark infringement and tortious interference claims, all related to the parties' competition for medical infusion services, as follows:
The Court dismissed Healix's claims for statutory damages on its copyright claims. The record showed that Healix filed for its copyright registrations after defendants began the alleged infringements, and more than three months after first publication. As a result, statutory damages were not recoverable. Healix could only receive actual damages. Furthermore, the Court denied Healix's request to amend its pleadings to include a demand for actual damages because Healix had already filed four complaints in the case and never sought actual damages.
Although sparse, Healix's trademark claims were sufficiently plead. Defendants argued that Healix had not pled use in commerce. But it was sufficient that Healix pled that Defendants displayed Healix's marks to the public and that Defendants allegedly copied Healix's marks with intent to use them in selling Defendants services to the consuming public.
The Court took Defendants' motion to dismiss Healix's tortious interference claim under advisement, in favor of a fully briefed summary judgment motion on the issue that more fully set out the relevant facts.
The Court denied the defendant's motion to dismiss defendant Metro Infectious Disease Consultants ("Metro"). Defendants argued that Metro was never specifically accused to have committed any acts in the complaint. Instead, Healix defined as a single entity three defendants, including Metro. But the Court held that it was sufficient in this instance for Healix to group Metro with two other defendants and make all allegations against Metro as part of the defined entity.
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Golden v. Nadler Pritikin & Mirabelli, No. 05 C 283, Slip Op. (N.D. Ill. Dec. 21, 2010) (Gottschall, J.).
Judge Gottschall denied plaintiff Golden's motion to dismiss or for a more definite statement pursuant to Fed. R. Civ. P. 12(b)(6) & (e) in this copyright dispute over real estate listings. Golden was not required to attach a copy of its copyright registration to its complaint. And while it was an "extraordinarily close question whether Golden's "bare-bones" amended complaint satisfied Twombly, it did plead ownership of a registered copyright and it did plead that defendant allegedly copied the work without consent. Because Golden's complaint was so bare-bones, defendant's motion to dismiss was not in bad faith. The Court, therefore, denied Golden's Fed. R. Civ. P. 11 motion regarding the motion to dismiss.
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Avery Dennison Corp. v. Continental Datalabel, Inc., No. 10 C 2744, Slip Op. (N.D. Ill. Nov. 30, 2010) (Kennelly, J.).
Judge Kennelly granted plaintiff Avery Dennision's ("ADC") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Continental Datalabel's ("CDI") inequitable conduct, Walker Process fraud and sham litigation counterclaims in this patent dispute regarding labels with a tear off liner to expose a portion of a label column for easy removal.
CDI alleged two bases of inequitable conduct. First, ADC allegedly intentionally failed to tell the examiner that certain limitations outlined in a series of bullet points were from a particular prior art reference. That claim filed because ADC had previously disclosed the prior art reference at issue to the examiner - once a reference is before an examiner, it cannot be found to have been withheld from the examiner. Second, ADC allegedly intentionally failed to disclose to the examiner that curling up of labels is an inherent characteristic of adhesive labels. But ADC had disclosed the inherent curling up by disclosing various prior art references regarding adhesive labels that taught the inherent curling up, combined with the examiner's presumed experience in the art.
Walker Process Fraud Claim
Because CDI's Walker Process claim was premised upon the alleged inequitable conduct, CDI's Walker Process claim failed. The Court further noted that because inequitable conduct is a broader concept than Walker Process fraud, a party that fails to make its case for inequitable conduct, cannot make a Walker Process fraud claim.
CDI's sham litigation claim was based upon allegations that ADC knew the patent was invalid based upon the Brady prior art reference, which was before the examiner, and because had ADC tested CDI's accused labels, ADC would have realized its suit was baseless. Because the Brady reference was before the examiner, however, the Court could not find that the claim was "objectively baseless" as required for sham litigation. ADC could have reasonably believed that after the examiner considered Brady and granted ADC's patent, ADC's patent was in fact valid over Brady.
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Optics Planet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Jul. 14, 2010) (Shadur, Sen. J.).
The Court granted in part Plaintiff Optics Planet's Fed. R. Civ. P. 12(b)(6) motion to dismiss. Initially, the Court noted that defendants' tortuous interference with prospective business relationships and with prospective economic advantage were not separate counts, but at most separate theories of recovery for a single court, calling the claims "Tweedledum and Tweedledee."
But the claims, whether single or multiple counts did not survive the competitor's privilege. Defendants offered no evidence showing that plaintiff was doing anything except "feathering its own competitive nest". Defendants' attempted monopolization claims were also dismissed because there was no evidence that plaintiff did anything but compete, and there was no indication that plaintiff would or could acquire power over market pricing.
Finally, the Court dismissed defendant's accounting counterclaim to the extent the claim was based upon the dismissed counterclaims.
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