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.
Schrock v. Learning Curve Int’l, Inc., No. 04 C 6927, Slip Op. (N.D. Ill. Sep. 29, 2010) (Kocoras, J.)
Judge Kocoras denied defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction and Rule 56 motion for summary judgment in this copyright and contract dispute involving photographs of Thomas & Friends characters – trains from the island of Sodor well-known to those like me with young children.
First, plaintiff’s claims sounded in copyright regardless of whether the Court used the "face of the complaint" test or the "principal and controlling issue" test both of which have been used by the Seventh Circuit. The complaint and the issues expressed in it made clear that copyrights were at the heart of the dispute. The Complaint alleged that plaintiff authored photographs and copyrighted them, entered an agreement with defendants, and that defendant’s use of the photographs violated the agreement.
Second, the Court denied summary judgment as to the contract claim because there was a question of material fact as to whether a binding agreement was formed between the parties and the Court held that in the event the trier of fact determined a valid contract exists, the agreement was not barred by the statute of frauds because plaintiff had fully performed his obligations pursuant to the agreement.
More Cupcakes, LLC v. Lovemore LLC, No. 09 C 3555, Slip. Op. (N.D. Ill. Sep. 29, 2009) (Kocoras, J.)
Judge Kocoras denied defendants (collectively “Lovemore”) Fed. R. Cir. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and Fed. R. Cir. P.12(b)(6) motion to dismiss the individual Lovemore defendants’ (collectively "Lovemore individuals") based upon the fiduciary shield doctrine in this Lanham Act dispute regarding plaintiff More Cupcake’s LOVE MORE mark for use on t-shirts. The Court did, however, grant Lovemore’s §1404 motion to transfer the case to the Eastern District of New York.
The parties agreed that the Court lacked general jurisdiction and argued only specific jurisdiction. The Court held that it had specific jurisdiction based upon the effects test. Lovemore’s alleged infringing acts were aimed at More Cupcakes in Illinois when Lovemore approved sales of allegedly infringing t-shirts to Illinois addresses after being warned of the alleged infringement in a Patent & Trademark Office proceeding and in settlement talks with More Cupcakes. Lovemore’s interactive website coupled with sales to Illinois also created specific jurisdiction. The fact that Lovemore’s most recent Illinois sale was to More Cupcakes’ counsel did not impact the analysis. Lovemore still knowingly sold product within Illinois.
The fiduciary shield doctrine did not apply to the individual defendants, who were both owners and operators of Lovemore. The fiduciary shield doctrine denies personal jurisdiction over individuals who contact Illinois solely for the benefit of their employees and not themselves. But the doctrine does not apply to owners of a company that have discretion over whether or not they do business in Illinois. As Lovemore owners, therefore, the Lovemore individuals are not protected by the fiduciary shield doctrine.
For similar reasons, while corporate officers are generally not personally liable for corporate trademark infringement claims, More Cupcakes’ claims against the Lovemore individuals survived. Both individuals were owners of Lovemore and the Complaint alleged that they personally directed the allegedly infringing acts.
Finally, the Court transferred the case to the Eastern District of New York. While More Cupcakes’ chosen forum deserves deference, the material events regarding the alleged infringement all occurred in New York where the t-shirts were designed, made, offered for sale and sold. And the Court held that the convenience factors, such as locations of documents and witnesses, were all neutral.