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

While Judge Filip heads to Washington as Deputy Attorney General, the Northern District has reassigned his cases — click here for the Executive Committee’s Order. At least the following IP cases have been reassigned:

Judge Andersen

1:07-cv-05666             Dicam, Inc. v. United States Cellular

Judge Dow

1:07-cv-02883             Kids Hope USA, Inc. v. Kids Hope United

Judge Kennelly

1:06-cv-05611             Liquid Dynamics Corporation v. Vaughn Co.

Judge Zagel

1:07-cv-03339             Borg Warner Inc. et al. v. Hilite International, Inc. et al.

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Allen Bros., Inv. v. AB Foods LLC, No. 06 C 1269, 2008 WL 345600 (N.D. Ill. Feb. 6, 2008) (Andersen, J.).

Judge Andersen granted defendant AB Foods summary judgment of likelihood of confusion and dismissed plaintiff Allen Brothers’ Lanham Act claim and related state law trademark infringement claim. Allen Brothers, a seller of gourmet meats, argued that AB Foods infringed its AB trademark by using it to sell AB Foods’ gourmet meats. The Court held that this was the rare case that was so one-sided as to warrant summary judgment that there was no likelihood of confusion, even though AB Foods uses its AB mark in direct competition with Allen Brothers: 

• The marks were not similar because Allen Brothers always used its full name along with its AB mark;
  
• Allen Brothers’ customers are sophisticated meat purchasers, as evidenced by Allen Brothers’ high prices;
  
• The strength of Allen Brothers’ mark is in its full name, not just AB;
  
• Allen Brothers’ produced no evidence of actual confusion; and
  
• Allen Brothers produced no evidence that AB Foods intended to pass off its meats as Allen Brothers products.

The Court, therefore, granted AB Foods summary judgment and dismissed the case.

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For Your Ease Only, Inc. v. Calgon Carbon Corp., No. 02 C 7345, 2007 WL 3357631 (N.D. Ill. Nov. 13, 2007) (Andersen, J.).

Judge Andersen denied plaintiff’s motion for a turnover order regarding payments made by third party Home Shopping Network (“HSN”) to purchase defendants’ anti-tarnish jewelry boxes that infringe plaintiff’s patent. In June 2007, the Court entered a $2.1M default judgment against defendants Mark Schneider (“Schneider”) and Product Concepts Company (“PCC”). After the Court entered the judgment, Schneider transferred his supply of the infringing jewelry boxes from PCC, which he controlled, to Sevenquest, which Schneider also controlled. The Court held that this transfer evidenced a sufficient number of the “badges of fraud” set forth in 740 ILCS 160/5(b) to be presumed fraudulent. Among others, the transfer was to Schneider (an insider), Schneider retained control of the products after the transfer, Schneider concealed the transfer, Schneider was sued before he made the transfer, the transfer constituted substantially all of the assets and Schneider moved to Costa Rica after making the transfer.

But the Court held that Sevenquest’s later transfer of the jewelry boxes to Anewco, who sold the boxes to HSN, did not evidence sufficient badges of fraud. Anewco, owned by Schneider’s brother-in-law Douglas Fournier (“Fournier”), received no immediate consideration for the jewelry boxes. But Fournier testified that he had an oral contract with Schneider granting Fournier control of the jewelry box business in three years, and that Fournier performed substantial sourcing and sales work based upon the oral agreement. Because Sevenquest’s transfer of the jewelry boxes to Anewco appeared to be in good faith, the Court did not void the transfer to Anewco. And because HSN, therefore, held no assets of defendants, the Court denied the turnover order. 

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Zeidler v. A&W Restaurants, Inc., No. 03 C 5063, 2006 WL 1898056 (N.D. Ill. July 6, 2006) (Anderson, J.).

Zeidler is worth mentioning despite the absence of intellectual property issues because it makes a point that many practitioners miss:  disregarding Local Rule 56.1 Statements of Fact or slapping one together at the last minute can have real, potentially case-dispositive consequences. Judge Andersen accepted defendant's statement of facts in its entirety because plaintiff’s statement of facts and his response to defendant’s statement of facts included unsupported statements, made legal arguments, referenced unauthenticated documents, and contradicted other factual evidence.

Plaintiff started at a major disadvantage by choosing to represent himself. But even many experienced members of the N.D. Ill. bar play fast and loose with the Local Rule 56.1 requirements or just ignore them until hours or minutes before filing deadlines. This case is the most recent example that such an approach is foolish and may have case-ending consequences.

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