Purzel Video GmbH v. Does 1-99, No. 13 C 2501, Slip Op. (N.D. Ill. Aug. 16, 2013) (Gottschall, J.).
Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action. This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.” Of particular interest, the Court held as follows:
- The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Purzel Video was entitled to the information sought in the subpoenas and that the Doe defendants were not unduly burdened by the third-party subpoenas. The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
- The Court ordered Purzel Video not to publish any Doe’s identity without leave of Court. And to further limit “potential for harassment,” the Court held that only the bill payer and mailing address related to the IP address were discoverable. Purzel Video was not entitiled to phone numbers or email addresses. Purzel was also required to communicate with Does via their respective counsel to the extent that they had counsel.
- Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work. The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred during the same month.
- The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date. In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense. It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases.
- Purzel Video’s civil conspiracy claim was preempted by copyright law because it seeks to vindicate the same rights as a copyright claim.
- Purzel Video’s Local Rule 3.2 corporate disclosure was deficient because it did not list all of the members of Purzel Video. A GmbH is a German LLC, and Local Rule 3.2 requires disclosure of all members of LLC’s.
Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims.
As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:
- Many of both parties’ statements were not properly supported with admissible evidence or contained legal argument instead of factual statements. Any such “facts” were not deemed true.
- The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements. That practice was not helpful to the Court.
These deficiencies resulted in a “very brief” recitation of uncontested facts.
Lanham Act False Representation & False Advertising
There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading. As such, summary judgment was not proper.
Deceptive Trade Practices Act
Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim. As such, summary judgment was denied for the same reason.
Common Law Misappropriation
Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial. This claim was preempted by the Copyright Act. The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act. The Court, therefore, granted Morningware summary judgment on this claim.
Persis Int’l, Inc. v. Burgett, Inc., No. 09 C 7451, Slip Op. (N.D. Ill. Sep. 26, 2011) (Guzman, J.).
Judge Guzman granted in part plaintiffs’ (collectively “Persis”) motion to dismiss defendant Burgett’s counterclaim in this Lanham Act case involving the SOHMER mark. The Court dismissed Burgett’s cancellation proceeding because it was based upon the submission of an allegedly fraudulent document in a separate trademark proceeding.
The Court dismissed two declaratory judgment claims related to a separate mark because they were unrelated to the case and were duplicative of claims in another ongoing case. The Court also dismissed a declaratory judgment claim regarding the SOHMER mark as duplicative of the existing claims and answer.
The Court allowed Burgett’s trademark infringement claim because it alleged that it owned the mark and the relevant tire and even if it later assigned the mark, its right to pursue past damages did not necessarily flow with the assignment. The Court also allowed Burgett’s unfair competition claim. Illinois unfair competition is not preempted by the Lanham Act, although it can be proven with the same or similar facts.