Universal Beauty Prods., Inc. v. Morning Glory Prods., Inc., No. 10 C 3212, Slip Op. (N.D. Ill. Oct. 18, 2012) (Grady, J.).
Judge Grady denied defendant Morning Glory’s motion to transfer venue to the E.D. North Carolina in this competition-based false patent marking case. The parties agreed that venue was proper in each district. The Court, therefore, only considered the convenience factor and the public interest.
Unlike many prior false marking cases, plaintiff UBP’s choice of forum was given weight as defendant MGP’s competitor who was allegedly harmed by the false marking in this jurisdiction.
The alleged false marking decisions were made in North Carolina, but UBP’s harm allegedly occurred in this district. So, the situs of facts and access to judges were both neutral. Convenience of witnesses weighed slightly in MGP’s favor. Only MGP identified local third party witnesses. But the input of those witnesses was unclear. Convenience of the parties also weighed slightly in MGP’s favor, but the Court balanced that by requiring depositions of MGP personnel to occur where they are located.
Public Interest Factor
The public interest factors were neutral. Both districts had an interest in keeping cases related to their resident corporations. And both districts were well-versed in the law.
Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517 Slip. Op. (N.D. Ill. Sep. 1, 2011) (Grady, J.).
Judge Grady denied defendant’s motion to reconsider its preliminary injunction, for the following reasons:
The Court addressed defendant’s arguments even though they “could and should have been” brought in the original briefing.
Defendants’ argument was too narrow. Someone who linked the copyrighted material can be a direct infringer. The alleged direct infringement of defendant’s customers, therefore, can be true whether the myVidster owner saved the copyrighted file or embedded a link to it.
Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. May 10, 2011) (Grady, J.).
Judge Grady granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Flava Works’ complaint in this copyright case involving adult entertainment on the internet.
Defendant Gunter operates myVidster.com where users could post content, including the allegedly infringing videos. But, as an internet service provider ("ISP") Gunter was not liable for his user’s copying. And Flava Works did not allege that Gunter copied. The claim was, therefore, dismissed.
Flava Works could not rely solely upon its DMCA take down notices to defendants – even multiple notices – to prove either actual or constructive knowledge of the infringement. Flava Works, however, showed knowledge based upon seven notices it sent to defendants over seven months, in addition to the DMCA takedown notices. The contributory infringement count was, therefore sufficiently pled.
Flava Works did not sufficiently plead defendants’ direct financial interest in the alleged infringement. Flava Works did allege that defendants’ inexpensive storage space and video sharing attracts customers. But Flava Works did not allege that the presence of the allegedly infringing material drew customers.
The Court dismissed Flava Works’ inducement claim. It was a "formulaic recitation" of the standard void of facts showing an infringing purpose of active steps fostering infringement.
False Designation & Trademark Infringement
Defendants’ alleged posting on their website of Flava Works’ videos containing Flava Works marks did not constitute a use in commerce.