Kosten v. Kosten, No. 16 C 6666, Slip Op. (N.D. Ill. Dec. 14, 2016) (Kennelly, J.). Judge Kennelly denied in part defendant’s Fed. R. Civ. P. 12(b) motion to dismiss plaintiff’s state law claims in this case involving copyright claims and generally relating to the sale of the parties’ Garden Row sauce business. While only … Continue Reading
Kay Bros. Enters., Inc. v. Parente¸ No. 16 C 387, Slip Op. (N.D. Ill. Oct. 3, 2016) (Ellis, J.). Judge Ellis granted in part third party defendant R.A. Mifflin Architects (“Mifflin”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ third party claims against Mifflin in this copyright dispute involving custom architectural plans. According to … Continue Reading
Culver Franchising Sys., Inc. v. Steak ‘n Shake Inc., No. 16 C 72, Slip Op. (N.D. Ill. Aug. 5, 2016) (Feinerman, J.). Judge Feinerman granted defendant Steak ‘n Shake’s Fed. R. Civ. P. 12(b)(6) motion to dismiss without prejudice plaintiff Culver’s claims that Steak ‘n Shake infringed Culver’s copyrights by copying Culver’s television commercial in … Continue Reading
Great Eastern Entertainment Co. v. Naeemi, No. 14 C 4731, Slip Op. (N.D. Ill. Nov. 5, 2015) (Leinenweber, Sen. J.). Judge Leinenweber denied defendant’s Rule 11 motion in this trademark and copyright dispute regarding alleged sale of unauthorized plush toys and backpacks at anime conventions. As an initial matter, the Court held that Rule 11 … 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
Kinsey v. Jambow, Ltd., No. 14 C 2236, Slip Op. (N.D. Ill. Dec. 4, 2014) (St. Eve, J.). Judge St. Eve granted in part plaintiffs’ motion for default judgment in this music copyright case involving three reggae songs. The Court awarded plaintiffs $22,500 in statutory damages, a permanent injunction and their reasonable attorney’s fees. Of … Continue Reading
Ali v. The Final Call, Inc., No. 13 C 6883, Slip Op. (N.D. Ill. Jun. 19, 2015) (Feinerman, J.). Judge Feinerman granted defendant Final Call’s motion to strike one line of plaintiff’s errata sheet and denied plaintiff’s motion for summary judgment of liability in this copyright dispute involving plaintiff’s portrait of Minister Louis Farrakhan, titled … Continue Reading
Malibu Media, LLC v. Funderburg, No. 13 C 2614, Slip Op. (N.D. Ill. Apr. 24, 2015) (Dow, J.). Judge Dow granted plaintiff Malibu Media’s motion for default judgment in this copyright case regarding pornographic movies. Malibu Media sufficiently pled copyright infringement: 1) Malibu Media owned a copyright in the movie; and 2) defendant downloaded “bits” … Continue Reading
Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. John Wiley & Sons, Inc., No 12 C 10003, Slip Op. (N.D. Ill. Sep. 2, 2014) (Feinerman, J.). Judge Feinerman granted in part plaintiff Panoramic’s partial summary judgment motion and denied defendant Wiley’s partial summary judgment motion as to Panoramic’s fraud and contributory copyright infringement claims in … Continue Reading
Francescatti v. Germanotta p/k/a Lady Gaga, No. 11 C 5270, Slip Op. (N.D. Ill. June 17, 2014) (Aspen, Sen. J.). Judge Aspen granted defendants’ Fed. R Civ. P. 56 motion for summary judgment because no reasonable trier of fact could find defendant Lady Gaga’s song “Judas” substantially similar to plaintiff’s song “Juda.” Local Rule 56.1 … Continue Reading
John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.). Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them … Continue Reading
Woltmann v. Chicago Gridiron, LLC, No. 11 C 5994, Min. Order. (N.D. Ill. Apr. 11, 2012) (Norgle, J.). Judge Norgle awarded defendant Chicago Gridiron its costs pursuant to Fed. R. Civ. P. 68 in this copyright case. Chicago Gridiron had a right to its costs pursuant to Rule 68 because it made plaintiff a $5,000 … Continue Reading
Heartland Angels, a Chicago based, early-stage private equity capital investment network, is sponsoring a new educational series on Intellectual Property in the 21st Century.
The first in the series will be a panel discussion on February 7, 2011, starting at 6:30pm in the Chicago offices of Drinker, Biddle and Reath LLP, 191 N. Wacker Drive, Suite 3700. The panel will consider answers to the question: Are the copyright laws out of touch in the new reality of digital on-line media?
David Frey, J.D, Partner, Drinker, Biddle and Reath LLP
Ed Lee, J. D., Professor, Chicago-Kent College of Law
Daliah Saper, J.D., Saper Law
Tim McCarthy, J.D., Senior Counsel of Clark Hill (Moderator)
Space is limited and pre-registration is required. Registration and inquiries by e-mail only to: Ron@heartlandangels.com. There will be a $10 charge (payable by cash or check only) at the door.
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The Northern District of Illinois continued its historically busy intellectual property docket in 2010. The most interesting statistic is a huge jump in patent filings this year -- 250 patent cases filed this year, nearly double 2009's 137 filings. And that is after a slight dip in filings from 2008 to 2009. I will discuss the 2010 filings in more detail in a post later this month, but even correcting for false patent marking suits, not all of which are included in the 250 filings because plaintiffs did not uniformly identify false marking cases as patent cases on civil cover sheets filed with the complaints, there was a significant increase in patent filings. That fits with my prediction in late 2008 that the Northern District's new Local Patent Rules would drive cases to Chicago.*
Trademark cases continued their slow growth, showing a slight increase over 2009. Finally, copyright cases increased, after falling off sharply in 2009. This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):
Northern District IP FilingsCase Type
* Click here for much more on the Local Patent Rules in the Blog's archives.
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Donovan v. Quade, No. 05 C 3533, Slip Op. (N.D. Ill. Oct. 15, 2009) (Nolan, Mag. J.)
Judge Nolan granted in part defendants/counterplaintiffs' motion for summary judgment in this copyright suit. Initially, the Court deemed admitted all of plaintiff's properly supported supplemental statements of material fact because defendants failed to factually support their denials of the facts pursuant to Local Rule 56.1(b)(3)(B). The plaintiff and individual defendant were co-authors of the well-known play Late Night Catechism ("LNC") and its primary character "Sister" a fictional Roman Catholic nun. The individuals founded defendant QDE in 2000 as a vehicle for producing LNC. The individual defendant also made plays that were derivative works of LNC and licensed them separately from QDE. Plaintiff also made derivative works, but only licensed them through QDE.
False Designation of Origin and Deceptive Trade Practices
The Court granted summary judgment as to plaintiff's false designation of origin and deceptive trade practice claims because plaintiff did not respond to defendants' summary judgment arguments as to those claims.
Deprivation of Copyright Revenues
Because the Court held that the parties were not governed by a partnership agreement, copyright law governed any revenues from LNC. The issue, therefore, was whether plaintiff's plays were derivative of the parties' joint work LNC. First, the Court held that LNC was a joint work of the parties. The parties' copyright application identified the parties as joint authors, and plaintiff failed to put forth sufficient evidence to counter the presumption created by the application.
The Court also held that plaintiff's later plays were derivative of LNC. Defendants put forth evidence that plaintiff's plays all included the Sister character and, therefore, were based upon and derivative of LNC. Plaintiff's "answers, conclusory denials" were not sufficient to overcome plaintiff's evidence. Because the parties were joint authors of LNC and because plaintiff's subsequent plays involving the Sister character were derivative of LNC, defendant was granted summary judgment regarding the demand for an accounting.
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Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).
Judge Kocoras granted defendant Taste of Europe's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Plaintiff alleged that Taste of Europe sold a single copy of plaintiff's copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction. Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois. Plaintiff did not present any evidence of Taste of Europe's Illinois connections, but sought jurisdictional discovery. The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe's proofs.
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I have noticed that my news updates tend to be patent-focused, so today they focus on trademarks and copyrights:
IP Law & Business (subscription required to access the article) has an interesting article in the February/March 2009 issue identifying Justice Ginsburg as the Supreme Court's "champion of copyright holders" because of recent opinions supporting broader copyrights. The article also identifies Justice Breyer, based on dissents in the same cases, as leading the cause for narrower copyrights. And the article predicts that the Supreme Court is trending toward a narrower view of copyrights.
Seattle Trademark Lawyer Michael Atkins has a timely post (click here to read it) that traces the March Madness trademark back to the Illinois high school basketball playoffs, as early as the 1940s. The NCAA and the Illinois High School Association have since pooled their rights and both have a license to use the marks.
Victoria Pynchon has a great series of posts looking at laches in trademark law based upon a recent Ninth Circuit decision -- click here and here.
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2008 was another busy IP year for the Northern District of Illinois. Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far. Trademark cases were steady, with only two fewer filings than in 2007. And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country. Finally, copyright cases continued a relatively steep decline. But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York. This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):
2008 Northern District IP Case Filings
Case Type 2006 2007 2008
Patent 126 141 151
Trademark 136 130 128
Copyright 194 123 81
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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.
Defendants argued that plaintiffs' copyrighted fuel tank drawings were not original, as required for copyright ownership, because defendant John authored the drawings, not plaintiffs. The Court held that there was a question of fact as to the ownership because the parties disputed John's employment status when he made the drawings. If John was an employee, plaintiffs owned the copyrights based upon the work for hire doctrine.
The Court also found a question of fact as to the degree of creativity employed in making plaintiffs' drawings. A comparison of plaintiffs' drawings and defendants' drawings, which defendants alleged plaintiffs copied, left a question of fact as to whether plaintiffs' drawings showed sufficient differences to rise to the level of creativity.
Compute Fraud and Abuse Act ("CFAA")
The Court granted defendants summary judgment as to CFAA § 1030(a)(4) because plaintiffs did not respond to defendants' claims and, therefore, waived their defenses. But the Court found questions of fact as to the two other charged sections of the CFAA, §§ 1030 (a)(2)(c) and (a)(5). First, there was a question of fact as to whether defendant John was authorized to access the documents he allegedly misappropriated. While John may have received the documents at issue during the normal course of his employment with plaintiffs, there was a dispute as to whether John exceeded his authorization by allegedly breaching his duty of loyalty to plaintiffs.
Additionally, there was a question of fact as to whether John passively received all accused documents by email or "accessed" the documents pursuant to the CFAA actively by email or otherwise.
Illinois Deceptive Trade Practices Act ("IDTPA")
The IDTPA only provides for injunctive relief, not monetary damages. As a result, the IDTPA only addresses ongoing harms. The Court, therefore, granted defendants' summary judgment as to defendants' past acts. The Court also explained that it would not grant an IDTPA injunction to eliminate an existing commercial advantage, as courts sometimes do in trade secrets cases.
* Click here for more on this case in the Blog's archives.
** This post does not cover some of the non-IP specific state law claims.
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LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).
Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B -- click here for that post. Earlier this week, Google removed the case to the Northern District, arguing that LimitNone's Illinois Consumer Fraud and Deceptive Business Practices Act ("ICFA") claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google's removal papers).
In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform. Google allegedly assured LimitNone that it would not offer a competing product. But after receiving LimitNone's trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone's trade secrets. LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.
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The Northern District had 40 copyright cases filed during the first half of 2008. That is only about one-third of 2007's total of 129 cases -- click here to read about the 2007 case filings. So, while patent and trademark infringement filings remain strong, copyright actions have started slowly in 2008.
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Blawg Review #168 is available at Jeffrey Mehalic's West Virginia Business Litigation blog (another LexBlog blog) - click here for the post. It is another excellent review, although it is a bit light on IP. Additionally, Mehalic has a very even-handed post about the settlement of a West Virginia suit between West Virginia University and Rich Rodriguez, the new football coach of my University of Michigan Wolverines. While the subject matter of that dispute is not necessarily relevant to Chicago IP litigators (Coach Rodriguez is paying his full $4M buyout over time, much of it funded by the University of Michigan), Mehalic has an interesting side note about a contract the court reporters put on each transcript in the case requiring that no copies be made or used without paying the court reporter for them - click here for the post. My first reaction is, and always has been, that the reporters hold the copyright because the transcript is their interpretation and compilation of what was said. But Mehalic disagrees, and makes a good point. The copyright in a (usually) verbatim recitation of a proceeding has to have a very thin copyright, if any.
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Rosen v. Mystery Method, Inc., No. 07 C 5727, 2008 WL 723331 (N.D. Ill. Mar. 14, 2008) (Kocoras, J.).
Judge Kocoras granted defendants' Fed. R. Civ. P. 9(b) & 12(b)(6) motion to dismiss plaintiff Rosen's claims. Rosen, on behalf of himself and others similarly situated, alleged that defendant Mystery Method Corp. ("MMC"), in concert with various other business partners, violated the Racketeer Influenced and Corrupt Organizations Act ("RICO") by continuing to market MMC's Mystery Method dating products as endorsed or otherwise approved by the original creator of the Mystery Method, Erik Von Markovick ("EVM"). EVM created a "sophisticated system . . . to help men meet and attract women" known as the Mystery Method. EVM offered personal training in his methods and eventually partnered with MMC to administer the business of his related Mystery Method website. Eventually, EVM left MMC and started his own website www.venusianarts.com. When EVM left, MMC maintained control of the Mystery Method website.
The Court held that Rosen had not sufficiently pled the predicate act of copyright infringement.* Rosen only pled general allegations:
[T]he predicate acts alleged herein cluster around criminal copyright infringement, trafficking in certain goods bearing counterfeit marks, mail fraud and wire fraud . . . ."
The Court held that these general allegations did not meet the Fed. R. Civ. P. 9(b) heightened pleading requirements for fraud. Rosen did not allege:
That MMC owned a valid copyright for the products or services offered on its Mystery Method website;
That EVM owned a valid copyright covering products or services offered on the Mystery Method website; or
How MMC's products and services were counterfeit
Furthermore, Rosen's complaint suggested that MMC was permitted to continue using the Mystery Method name. Rosen alleged that MMC entered an agreement with EVM to develop products and services via the Mystery Method website. And Rosen alleged that MMC maintained control of the Mystery Method website after EVM left MMC.
* RICO requires that defendants have participated in at least two predicate acts. Copyright infringement was one of the predicate acts alleged by Rosen. The Court also dismissed on other RICO-specific grounds, but those will not be discussed here because they are not IP-specific.
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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, Slip Op. (N.D. Ill. Mar. 4, 2008) (Darrah, J.).*
Judge Darrah granted in part and denied in part the parties' cross-motions for summary judgment. Plaintiff and counter-defendant (collectively "NCI") developed visual eye chart software that defendants and counter-plaintiffs (collective "M&S") incorporated into their visual acuity system which was sold to ophthalmalic distributors and end users. For a period of time, the parties worked together, selling and servicing product and sharing office space. But eventually the relationship broke down and NCI began selling a competing system. The parties charged each other with various IP claims and related state law claims. Each of the IP-related claims is addressed below.
The Court held that NCI was the sole owner of the copyright and that its principal Nordstrom was the sole author of the copyrighted software. M&S argued that its principal Marino contributed to the software. But the Court held that Nordstrom wrote the software and Marino only offered direction and ideas.
The Court granted M&S summary judgment for all copyrighted software sales during the terms of the parties' agreements, but not as to sales outside of the agreement dates. And the Court granted summary judgment of non-infringement as to M&S's new software package "Sports Vision Testing" ("SVT"). NCI argued that SVT was an infringing derivative work. But NSI failed to produce evidence or expert testimony refuting M&S's evidence that it created its SVT software independent of NCI's software using clean room procedures.
Digital Millennium Copyright Act ("DMCA")
NCI alleged that M&S violated the DMCA by circumventing protections on a computer containing the software code in order to aid an NCI licensee of the code. Because the code was accessed to aid a licensee, NCI could not show that the password had been bypassed for the purpose of infringing NCI's copyright. The Court, therefore, granted summary judgment for M&S.
The Court also denied summary judgment as to M&S's claim that NCI violated the DMCA by accessing a portion of M&S's computer system for which NCI lacked authorization and passwords. Summary judgment was not appropriate because the parties disputed whether NCI accessed the computers and whether the accessed material was copyrighted.
The Court denied M&S summary judgment on NCI's Lanham Act false advertising claim and its related state law claims. M&S argued that it had not made any statements likely to cause customer confusion. But NCI countered that M&S stated in advertising that it had used the same system for five years. NCI argued that the statement must be false because M&S switched to its new SVT software during that time. Because of these disputed facts, summary judgment was not appropriate.
Illinois Trade Secret Act
The parties agreed that prior to terminating their relationship, NCI took various information from M&S's offices and computers. But the parties disagreed as to whether M&S took reasonable measures to protect the information's confidentiality. The parties agreed that M&S password protected the information. But NCI argued passwords alone were not enough and suggested other protections that allegedly could and should have been employed. The Court held that password protection alone was not per se insufficient. But the Court required more information regarding M&S's actions and the feasibility of alternative protections before it could rule on summary judgment.
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