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

Lorillard v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2008 WL 1775512 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).

Judge Aspen adopted Magistrate Judge Cole's Report and Recommendation, denying defendants' Fed. R. Civ. P. 59(e) motion to alter the Court's judgment against defendants – click here to read more about that Report and click here to read more about this case in the Blog's archives. The Court awarded plaintiff Lorillard $2.5M in statutory damages for defendants’ sales of counterfeit cigarettes using Lorillard's trademarks. Defendants objected to, among other things, a statutory damages award in excess of $1M. Defendants argued that 15 U.S.C. § 1117(c)(2) only allowed $1M in statutory damages per type of goods sold. Because this case only involved one type of goods, cigarettes, defendants argued statutory damages could not exceed $1M. But the Court held that the limitation was $1M per counterfeit mark per type of good. Because Lorillard alleged five counterfeit marks were used, the statutory damages limit was $5M. 

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1175577 (N.D. Ill. Apr. 20, 2007) (Aspen, J.).

Judge Aspen denied defendant Little Lady Foods, Inc.'s ("LLF") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Fast Food Gourmet, Inc.'s ("FFGI") breach of contract claim.  FFGI alleged that FFGI entered a "co-packing" relationship with LLF, essentially that LLF was to manufacture FFGI's product.  Based upon that relationship, FFGI provided LLF with its various trade secrets relating to producing "a unique stone hearth oven thin crust frozen pizza."  In addition to its formulas, recipes, methods and techniques, FFGI also provided LLF its equipment.  FFGI alleged that, in addition to making pizzas for FFGI, LLG worked with defendant Kraft Foods Global, Inc. ("Kraft") to develop a line of pizzas using FFGI's trade secrets, with substantially the same crusts as the FFGI pizzas.  FFGI brought claims for misappropriation of trade secrets against both defendants, breach of contract against LLF and unjust enrichment against Kraft.  LLF sought to dismiss FFGI's breach of contract claim to the extent it was based upon allegations that the agreement was breached by production of pizzas for Kraft with crusts nearly identical to FFGI's crusts.  LLF first argued that the agreement could not be breached because the agreement prohibits LLF from producing "pizzas with specification which are identical or . . . substantially identical to" the FFGI pizzas.  Because FFGI only pled that the crusts were identical or substantially identical, LLF argued the claim should be dismissed.  But the Court held that FFGI was only required to provide notice pleading of claims, not facts.  Because FFGI identified the parties, stated the nature of its dispute and provided "a few tidbits" LLF was sufficiently on notice.

LLF also argued that the claim should be dismissed because the FFGI and Kraft pizzas are substantially different because Kraft's sauce and/or toppings are very different than FFGI's.  But the Court refused to make factual determinations in a Rule 12(b)(6) motion and denied LLF's motion.

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2006 WL 2331148 (N.D. Ill. Aug. 10, 2006) (Aspen, J.).

Judge Aspen granted defendants’ Rule 12(b)(6) motion to dismiss plaintiff’s Lanham Act unfair competition claim for failure to meet the Rule 9(b) heightened pleading requirements.  Plaintiff’s bare allegation that the individual defendants made misrepresentations to a single customer did not satisfy Rule 9(b)’s heightened pleading requirements. 

Plaintiff failed to allege when the misrepresentations were made, alleging only that they were made during the individual defendants’s employment with plaintiff, a period of at least twenty years. The Court also held that plaintiff failed to allege that the communications were “commercial advertising or promotion,” as required by the Lanham Act § 43(a)(1)(B), because plaintiff never stated how the misrepresentations were communicated. Finally, the Court warned in a footnote that “allegations based ‘on information and belief’ generally do not satisfy the particularity requirements of Rule 9(b).”

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