Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Frayne v. Chicago 2016, No. 08 C 5290, Slip Op. (N.D. Ill. Oct. 2, 2009) (Kennelly, J.). 

Judge Kennelly denied defendants Chicago 2016's and the United States Olympic Committee's ("USOC") motion for summary judgment regarding its Stevens Act and Anticybersquatting Consumer Protection Act ("ACPA") claims regarding plaintiff's www.chicago2016.com website. And the Court granted defendants summary judgment as to plaintiff's federal and state constitutional claims, and plaintiff's laches defense. Plaintiff registered the Chicago2016.com domain in 2004, and after the sale, the domain registrar maintained a parking page on the site which included advertising links. Revenues for the links went to the registrar, not plaintiff.

Stevens Act*

The Court held that the parking page was commercial. But there was a question of fact as to whether plaintiff "used" the trademark, in this case the domain, for commercial purposes as required by the Stevens Act. Plaintiff did not receive revenues from the parking page and it was even unclear whether plaintiff knew of the parking page or consented to the registrar's use of the parking page.

The Court also analyzed whether Chicago 2016 was a mark that fell within the Stevens Act. While city-plus-Olympic-year combinations were not automatically protectable marks within the scope of the Stevens Act, certain city-plus-Olympic-year combinations can acquire an association with the USOC and the Olympics. Chicago 2016 likely gained that association by April 2007 when the USOC picked Chicago as a 2016 Olympic candidate. But the parties did not brief the issue of when the association occurred, so the determination required further proceedings.

ACPA

The ACPA claim was not ripe for summary judgment because it depended upon a determination that Chicago 2016 was a protected mark pursuant to the Stevens Act which the Court had held required further proceedings. Additionally, there was a question of fact as to whether plaintiff had a bad faith intent to profit from the Chicago 2016 mark.

Laches

The Court granted defendants summary judgment on plaintiff's laches claim. Plaintiff argued that if he had been aware of defendants' intent to pursue this suit, he would have challenged defendants' Chicago 2016 mark in the Patent & Trademark Office. But defendants second Chicago 2016 mark application was published concurrently with their first threat to take action against plaintiff. Plaintiff did not, however, challenge that application. No reasonable fact-finder could find plaintiff was prejudiced in those circumstances.

Constitutional Claims

The Court granted defendants summary judgment as to plaintiff's constitutional claims based upon the Noer-Pennington doctrine. Noer-Pennington protects a party's right to file a lawsuit so long as the suit is not a sham. Defendants' claims regarding their Chicago 2016 mark were backed by precedent. Defendants cited several cases in which WIPO ruled for Olympic organizations regarding city-plus-Olympic-year combination marks. 

* For more on the Steven Act, which grants the USOC absolute rights in certain Olympics-related trademarks click here. 

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

Trademark Infringement

The Court upheld plaintiffs' trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants' misspelled domains. Additionally, the Court could not rule upon Parking Defendants' arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants' particular acts constituted use would require reliance upon facts outside the complaint.

Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs' false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.

Trademark Dilution

Defendants argued that the dilution claims must be dismissed because plaintiffs' marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.

*  This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.

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Flentye v. Kathrein, __ F. Supp.2d __, 2007 WL 1175576 (N.D. Ill. Apr. 18, 2007) (Filip, J.).

Judge Filip denied defendants' motions to dismiss, except as to plaintiffs' claim for punitive damages for intentional infliction of emotional distress, because Illinois law does not allow punitives for IIED.  Plaintiffs (collectively "Flentye") promoted apartment rental services , including some properties owned by Flentye, using their family name, Flentye.  Defendants competed with Flentye promoting similar apartments, some of which were owned by defendant Kathrein LLC.  Flentye brought suit against defendants alleging violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), Lanham Act unfair competition and related state law claims.  Flentye alleges that defendants lost a dispute before the UDRP and were forced to return certain domain names to Flentye, including timflentye.com, flentye.com and flentyeproperties.com.  Flentye alleged that defendants then registered new domain name timflentye-not.com and used it to direct traffic to defendants' competing websites.  Flentye also alleged that defendants improperly used the term "Flentye" in its meta tags (key words embedded into a site's source code to director search engines to the site) to direct users seeking information regarding Flentye to defendants sites. 

Defendants first argued that Flentye failed to plead its veil-piercing claims and that, therefore, corporate defendant Kathrein LLC should be dismissed because there were not sufficient allegations against it without a veil-piercing theory.  But the Court held that notice pleading was sufficient for a veil-piercing argument and that Flentye met the notice standard.  It was sufficient that Flentye pled that individual defendant Kathrein  created defendant Kathrein LLC "for the sole purpose of holding title to local real estate through which [Kathrein] operates Lee Street Management" and that in the caption Kathrein LLC was identified as "d/b/a Lee Street Management."  The Court noted that while these allegations might not be sufficient to prove that the veil was pierced, they were sufficient for Fed. R. Civ. P. 8(a) notice pleading.  The Court also noted that a claim of corporate veil-piercing did not require Fed. R. Civ. P. 9(b) heightened pleading.

Similarly, Kathrein LLC argued that the ACPA claim should be dismissed against it because Flentye made no specific allegations regarding Kathrein LLC's use of the domain name at issue or its intent to profit from the domain allegedly including Flentye's mark.  But the Court held that the allegations that Kathrein LLC acted as the alter ego of Kathrein and that Kathrein and Kathrein LLC registered the domain names at issue as a group were sufficient to state a claim.

Defendants argued that Flentye's Lanham Act claim should be dismissed because of numerous "bold disclaimers" on defendants' websites that the site was run by Kathrein.  But because screen shots of the site were not included in or referenced by the complaint, the Court refused to consider them on a Rule 12(b)(6) motion to dismiss.

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