MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).
Judge Darrah granted defendants’ 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff’s choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff’s home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants’ employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff’s four witnesses were in its home country – Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants’ documents were largely in California.
The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff’s inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.
The interests of justice weighed slightly in favor of transfer because defendants’ employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.
AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).
Judge Darrah granted in part defendants’ bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog’s archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs – $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges.
The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants’ trial exhibits, excluding shipping costs.
Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).
Judge Darrah granted in part defendants’ and denied plaintiffs’ summary judgment motions in this Lanham Act case over the use of the name "Eva’s Bridal." The Court granted defendants’ summary judgment as to plaintiffs’ trademark infringement claim because plaintiffs presented no evidence that they federally registered the "Eva’s Bridal" trademark.
Plaintiffs’ Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark. Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs’ business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive.
Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.
Defendants’ argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants’ argument that the Eva’s Bridal mark was not famous failed because it was not developed. Defendants’ argument was a single sentence without elaboration or support.
There was also a question of fact as to defendants’ laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.
Finally, the Court denied plaintiffs’ summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs’ statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs’ motion without analyzing it on the merits.