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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Shadur

Courtesy Copies of Complaints Required by Local Rule 5.2(f)

By R. David Donoghue on Posted in Local Rules

Eiserman & Assocs., LLC v. Rosen, No. 13 C 1315, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-33, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-60, No. 13 C 1741, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Shoppertrak RCT Corp. v. Objectvideo, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

In each of these cases, Judge Shadur entered similar orders requiring the plaintiff to provide the Court a courtesy copy of its newly filed complaint within one week of the date of the opinion.  The Clerk of the Court recently ended its practice of delivering each chambers a courtesy hard copy of any new complaints that it drew.  As such, the Court had stopped exempting counsel from its Local Rule 5.2(f) obligation to provide copies of complaints.  Going forward, counsel were required to file courtesy copies of complaints.  Courtesy copies of complaints are critical in order to allow the Court to control its docket by:

  1. Reviewing the contents of each complaint;
  2.  Issuing sua sponte orders as necessary regarding the complaint;
  3. Setting an initial status; and
  4. Creating a “bible sheet” for the binder the Court maintains as to each case before it.

 

 

 

Fees Awarded for “Egregious” Disqualification Motion

By R. David Donoghue on Posted in Local Rules

OpticsPlanet, Inc. v. Opticsale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Oct. 22, 2012) (Shadur, Sen. J.).

Judge Shadur granted plaintiff OpticsPlanet’s motion for sanctions based upon defendants’ failed attempt to disqualify OpticsPlanet’s individual counsel and its law firm.  The Court noted that the attempted disqualification was “particularly egregious,” but awarded only fees, not an additional fine to avoid any appearance of a punitive award.  The Court also “urged” the parties to use a less formal process than what is required by Local Rule 54.3 to avoid “fees on fees.”

Non-Lawyer Cannot Represent a Party in Federal Court

By R. David Donoghue on Posted in Pleading Requirements

Maclean-Fogg Co. v. Guangzhou Hotlink Hardware Co, Ltd., No. 12 C 6796, Slip Op. (N.D. Ill. Oct. 11, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendant’s answer for multiple deficiencies.  Initially, it was improperly signed by corporate defendant’s non-lawyer owner.  No non-lawyer can represent a party in federal Court.  Additionally, the answer had the following deficiencies:

  • The answer was not made in numbered paragraphs corresponding to the complaint’s paragraphs pursuant to Local Rule 10.1.
  • In several places, the answer wrongly states that no answer is necessary because statements are legal conclusions.  Answers must address even legal conclusions.
  • While lack of information and belief is deemed a denial, defendant cannot deny statements for which it lacks information and belief.

Answer to Affirmative Defenses Struck as Improper

By R. David Donoghue on Posted in Pleading Requirements

New Paradigm Enterprises, Inc., d/b/a Q101 v. Merlin Media LLC, No. 12 C 5160, Slip Op. (N.D. Ill. Oct. 12, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued this order to address deficiencies in plaintiff New Paradigm’s answer to defendant Merlin Media’s counterclaims, specifically:

  • New Paradigm’s answers to Merlin Media’s affirmative defenses were struck as improper.
  • Denials based upon a lack of information and belief were struck as improper.
  • References to “strict proof” were ordered to be removed.
  • Answers that “waffle[ed]” and did not provide a response were required to be repled.

Case Dismissed for Rule 22 Violations

By R. David Donoghue on Posted in Trial

Brown-Younger v. LULU Press, Inc., No. 12 C 1979, Slip Op. (N.D. Ill. various dates) (Shadur, Sen. J.).

Judge Shadur issued a series of opinions in this copyright case.  The following were of particular note:

  • Plaintiff’s motion for criminal sanctions was denied for failure to comply with LPR 5.2 because plaintiff’s motion was single-spaced.  Furthermore, it was the U.S. Attorney’s role to seek criminal sanctions, not the Court’s.
  • The Court ordered plaintiff to show cause why plaintiff’s complaint should not be dismissed for Rule 11 violations.
  • Because plaintiff did not meet the Court’s deadline to show cause why Rule 11 had not been violated, the Court dismissed the case.  The Court also invited defendants to seek other sanctions that they may believe were appropriate.
  • The Court would not recuse itself and was not required to by plaintiff’s request.

Motion to Dismiss Conflicting With Service Affidavit Raises “Red Flag”

By R. David Donoghue on Posted in Jurisdiction

Pyramid Packaging, Inc. v. Pyramid Packaging, LLC, No. 12 C 4420, Slip Op. (N.D. Ill. Jul. 20, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte raised several issues with defendant’s motion to dismiss in this trademark case.  Defendant’s counsel claimed that service was delayed and made upon the wrong entity.  But plaintiff’s sworn service affidavit “flatly refuted” those claims.  These and other issues would be discussed at the hearing on defendant’s motion.

Default Judgment Makes Case Exceptional

By R. David Donoghue on Posted in Trial

United States Cellular Corp. v. Hotline Wireless & More, Inc., No. 12 C 5017, Slip Op. (N.D. Ill. Jul. 25, 2012) (Shadur, Sen. J.).  

Judge Shadur entered judgment in favor of plaintiff in this Lanham Act case.  The Court converted its default judgment and temporary restraining order into a final judgment and a permanent injunction.  And the Court held that the case was exceptional, warranting an award of plaintiff’s attorney’s fees and costs.

Pro Se Answer Must Apply With Rules

By R. David Donoghue on Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Aug. 6, 2012) (Shadur, Sen. J.).

 Judge Shadur vacated a default judgment entered against defendant based upon defendant’s explanation for his non-appearance.  But the Court warned that defendant must revise his proposed answer to: 

  • Remove denials of statements for which defendant lacked information and belief; and 
  • Revised his affirmative defenses down from its list of 21. 

 

 

Pro Se Answer Must Still Comply With Rules

By R. David Donoghue on Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. July 16, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendants’ pro se answer pursuant to Local Rule 5.2(e) for failure to comply with the Local Rule 5.2(c) font and margin requirements.  The Court also identified the following non-exhaustive list of problems with the answer:

  • In violation of Fed. R. Civ. P. 8(b)(5), the defendant denied statements for which it lacked information and belief.
  • Defendants’ laundry list of 25 affirmative defenses was “unacceptable” for not providing sufficient factual notice.

Copyright Plaintiff Must Justify Doe Suit or Faces Dismissal

By R. David Donoghue on Posted in Pleading Requirements

AF Holdings LLC v. Doe, No. 12 C 4244, Slip Op. (N.D. Ill. Jun. 5, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte gave plaintiff AF Holdings ten days to provide a further showing justifying its suit against an anonymous John Doe in this copyright infringement suit.  The Court explained that Doe cases were not a new problem.  The Court saw them years before when bands such as REO Speedwagon filed Doe suits based upon anticipated sales of knock-off concert t-shirts.  The Court refused to consider those suits until there was a specified infringer.  The Court held that AF Holdings had not sufficiently explained why they should be allowed to pursue a case to unmask the owner of an IP address.  The Court also raised concerns that it would issue a subpoena that extended beyond the geographic bounds of the Court’s authority.  If AF Holdings was not able to answer the Court’s concerns, the case would be dismissed without prejudice.

Repeated Improper Filings May Lead to Dismissal

By R. David Donoghue on Posted in Jurisdiction

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 19, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order requiring pro se plaintiff to appear and answer the Court’s questions regarding whether plaintiff’s filings met the Fed. R. Civ. P. 11(b) requirement of objective good faith based upon a series of events in the case including:

  • Plaintiff brought her copyright infringement claims despite an arbitration clause in its publishing agreement with defendant Lulu.com.  And plaintiff failed to squarely answer why the arbitration claim did not govern the case.
  • Plaintiff “lash[ed]” out at Lulu.com - seeking a stay pending an FBI investigation - and plaintiff’s appointed counsel - which counsel refuted “chapter and verse.”
  • Plaintiff improperly sought continued sanctions against defendant Apple.

 

 

Default Judgment Requires Damages Prove-Up

By R. David Donoghue on Posted in Local Rules

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 15, 2012) (Shadur, Sen. J.).

Judge Shadur acknowledged that pro se plaintiff’s motion for default was timely in this copyright infringement case.  Defendant Barnes & Noble’s deadline to answer or otherwise plead had passed, but plaintiff had not provided a prove-up of damages.  The Court, therefore, sought plaintiff’s proposed schedule and procedure for the prove-up. 

Sanctions Motion Treated as Request to Terminate Counsel

By R. David Donoghue on Posted in Local Rules

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 12, 2012) (Shadur, Sen. J.).

Judge Shadur ordered that pro se plaintiff’s counsel be terminated and that counsel respond to plaintiff’s motion for sanctions to the extent it related to him.  The Court reasoned that the plaintiff’s sanctions motion evidenced a desire to fire counsel, and obliged her.  But in light of plaintiff’s charges against both of her lawyers in her two ongoing cases in the Northern District, the Court declined to appoint new counsel.

Copyright Agreement Does Not Create Federal Question Jurisdiction

By R. David Donoghue on Posted in Jurisdiction

First Classics, Inc. v. Trajectory, Inc., No. 12 C 4473, Slip Op. (N.D. Ill. June 12, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte remanded plaintiff’s breach of contract case to the Cook County state court.  Defendants removed the case arguing that it was a copyright case and was therefore subject to federal question jurisdiction, but in fact plaintiff’s claim sounded in contract.  And a breach of copyright agreement does not create federal question jurisdiction.

Party Must Speak Through Counsel

By R. David Donoghue on Posted in Pleading Requirements

Brown-Younger v. LULU, No. 12 C 1979, Slip Op. (N.D. Ill. May 15, 2012) (Shadur, Sen. J.). 

Judge Shadur denied pro se plaintiff’s various motions in this copyright case:

  • The motion seeking appointment of new pro bono was unnecessary.  Having previously held that plaintiff may proceed in forma pauperis, plaintiff’s counsel’s conflict will result in a new appointment.
  • Plaintiff’s substantive motions were denied.  Plaintiff could not have it both ways.  Having had counsel appointed, plaintiff must allow counsel to speak for her.
  • While the Court encourages settlement, the Court would not compel a settlement conference.  

Post-Discovery Close Due Dates Okay for Trial-Type Requests for Admission

By R. David Donoghue on Posted in Discovery, Trial

Kelly v. McGraw-Hill Cos., No. 10 C 4229, Slip Op. (N.D. Ill. Feb. 7, 2012) (Shadur, J.).

Judge Shadur granted plaintiff’s motion to file Fed. R. Civ. P. 36 requests for admission (“RFA”), even though the responses would be due after the close of fact discovery.  This is not an IP case, but the Court’s holding was valuable to all N.D. Illinois litigants.  First, the Court explained that while RFAs were established pursuant to Rule 36 which was within the discovery section of the Federal Rules, they could also have been put in the next section related to trials.  While RFAs could be used for discovery purposes, these RFAs were more akin to trial than discovery.  They largely sought to establish the admissibility of documents and to admit established facts. 

To require that trial-type RFAs be filed at least thirty days before the fact discovery close would move the fact discovery up at least thirty days, so that all discovery was exchanged and disputes resolved at least thirty days prior to the fact discovery close.

The Court also noted that it was not giving blanket approval to plaintiff’s RFAs.  For example, some were duplicative.  So, the Court ordered its parties to meet and confer to narrow any issues regarding the RFAs.

Defendant Must Amend Answer Without Filing A Full Amended Answer

By R. David Donoghue on Posted in Pleading Requirements

Am. Taxi Dispatch, Inc. v. Am. Cab Serv., Inc., No. 11 C 6796, Slip Op. (N.D. Ill. Nov. 17, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered defendant American Cab to file an amendment to its answer (but not an entire amended answer) removing denials of plaintiff American Taxi’s compliant based upon a lack of information and belief. While lacking information and belief acts as a denial, without information and belief, American Cab may not deny the allegations. The Court also ordered American Cab’s counsel not to charge American Cab for the amendment and to inform American Cab of that in writing, copying the Court.

Venue Questioned Sua Sponte

By R. David Donoghue on Posted in Jurisdiction

ArrivalStar S.A. v. Geo-Comm, Inc., No. 11 C 5016, Slip Op. (N.D. Ill. Jul. 27, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte challenged the sufficiency of plaintiff ArrivalStar’s venue allegations. Venue is proper in patent cares: 1) where the defendant resides; or 2) where the defendant allegedly committed the accused acts and had a regular place of business. Geo-Comm resided in Minnesota. So, only the second option was possible. ArrivalStar did plead that Geo-Comm sold accused products in the district. But ArrivalStar failed to plead that Geo-Comm had a regular and established place of business in the district. Instead of requiring immediate repleading or briefing, the Court set a status conference to discuss the issue.

Department of Clotted Nonsense: Court Rejects Jurisdiction Over Holding Company

By R. David Donoghue on Posted in Jurisdiction

Revenue Realization LLC v. H&R Block, Inc., No. 11 C 85, Slip Op. (N.D. Ill. Apr. 11, 2011) (Shadur, Sen. J.).

Judge Shadur granted defendant H&R Block’s motion to dismiss, after granting plaintiff Revenue Realization leave to file its response to the motion and fully considering it. Revenue Realization accused H&R Block of patent infringement. H&R Block moved to dismiss because it was a passive holding company for a variety of subsidiaries and, therefore, was not the proper H&R Block defendant.

H&R Block offered to identify the proper entities for Revenue Realization. But Revenue Realization refused the offer, as well as the Court’s suggestion that it file against all possible subsidiaries and narrow the defendants based upon the entities’ subsequent motions to dismiss. Instead Revenue Realization argued that the Federal Circuit’s decision in Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010) confirmed that the Court had jurisdiction over a passive parent entity in patent cases. The Court, however, held that the opinion stood for quite a different proposition and was a "weak reed to lean on." In fact, Nuance dealt with a subsidiary entity that had direct contacts with the forum. In contrast, H&R Block was a true holding company. And the fact that H&R Block defined itself as including its subsidiaries in certain SEC filings was irrelevant to the Court’s analysis.

The Court finished the opinion referring to the New Yorker’s old practice of filling the final page of an article that otherwise would have left a portion blank with a section captioned "Department of Clotted Nonsense" containing amusing quotations and reprinted errors from other publications. The Court then granted plaintiff leave to file its response brief, and noted that the Court had already fully considered it.

Naming Doe Defendants in Bit Torrent Copyright Case is Shooting First, Identifying Targets Later

By R. David Donoghue on Posted in Discovery

Boy Racer, Inc. v. Does 1-22, No. 11 C 2984, Slip Op. (N.D. Ill. May 9, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte dismissed plaintiff Boy Racer’s copyright infringement complaint without prejudice. The Court held that Boy Racer could not "shoot first and identify [its] targets later" by suing twenty-two Doe defendants. Instead, Boy Racer was free to file its suits against identifiable individuals.

Denying Statements for Which Defendant Lacks Information or Belief is “Oxymoronic”

By R. David Donoghue on Posted in Pleading Requirements

Estwing Manufacturing Co. v. CTT Tools, Inc., No. 11 C 2139, Slip Op. (N.D. Ill. May 18, 2011) (Shadur, Sen. J.).

Judge Shadur entered this order sua sponte to address deficiencies in defendant CTT’s answer, affirmative defenses and counterclaims in this Lanham Act case, as he often does. First, CTT denied plaintiff Estwing’s claims for which CTT lacked information or belief. But the Court noted that denying a statement for which one lacks information or belief was "oxymoronic." The Court, therefore, struck the denials.

The Court also struck, with leave to replead, each of CTT’s affirmative defenses that were mere recitations of a legal principle and did not put Estwing or the Court on notice of the defense, as well as those defenses which did not accept the truth of Estwing’s allegations.

Finally, the Court also struck CTT’s counterclaims with leave to replead those that were not simply the "flip side" of Estwing’s complaint, which "add nothing to the mix." For example, the Court suggested that CTT’s counterclaim for cancellation of Estwing’s mark might be replead, while declaratory judgment claims for noninfringement and invalidity should not be. Finally, the Court ordered that CTT should not be charged for its counsel’s efforts in revising the papers, and counsel should send a letter to that effect to CTT, copying the Court.

Court Orders Hearing to Quantify Fees for Defendants’ Contempt

By R. David Donoghue on Posted in Local Rules

Optics Plantet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Mar. 7, 2011) (Shadur, Sen. J.).

Judge Shadur denied defendants’ (collectively "AKYR") motion to delay the contempt proceedings against it in this Lanham Act case. AKYR had failed to post a court ordered disclaimer for about eight months, and the Seventh Circuit denied AKYR mandamus relief. The Court, therefore, ordered that the parties appear to quantify the fee-shifting required to address AKYR’s delay pursuant to 28 U.S.C. § 1927, and to discuss whether additional sanctions where warranted.

Suit Against Unidentified Defendants Was “Problematic” With Potential for “Abuse”

By R. David Donoghue on Posted in Pleading Requirements

CP Prods., Inc. v. Does 1-300, No. 10 C 6255, Slip Op. (N.D. Ill. Feb. 7, 2011) (Shadur, Sen. J.).

Judge Shadur dismissed this case without prejudice as to all defendants based upon plaintiff’s failure to serve any of the 300 Doe defendants within the required 120 days pursuant to Fed. R. Civ. P. 4(m). The Court also noted that it would be an "understatement" to call plaintiff’s copyright infringement claims against 300 unidentified defendants " problematic." The Court raised a concern that plaintiff’s use of a lawsuit to identify defendants "plainly has the potential to perpetrate the type of abuse" identified in various third party motions to quash.

“Oxymoronic” to Deny Contentions for Which You Lack Knowledge

By R. David Donoghue on Posted in Pleading Requirements

Bernina of Am., v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 18, 2011) (Shadur, Sen. J).

Judge Shadur sua sponte ordered defendant to correct its answer. Two paragraphs stated that defendant lacked information and belief sufficient to answer and, based upon that, denied the contentions. The Court explained that denying a contention for which one lacked information and belief was "oxymoronic." The Court gave defendant time to file a paper removing the relevant denials.