No Antisuit Injunction When Suits Assert Different Countries' Intellectual Property
Zimnicki v. Neo-Neon Int'l., Ltd., No. 06 C 4879, Slip Op. (N.D. Ill. Jul. 30, 2009) (Norgle, J.).
Judge Norgle denied plaintiff's motion for an antisuit injunction. Plaintiff filed copyright, trademark and unjust enrichment claims against defendant based upon the alleged use of plaintiff's North Pole Village brand and decorative holiday lighting products. Defendant then filed a declaratory judgment action in China seeking a determination that defendant, who filed Chinese copyrights on designs similar to those covered by plaintiff's US copyrights in suit, owned the disputed designs. The Court explained that there is a circuit split on the standard for antisuit injunctions that the Seventh Circuit had not weighed in on. The First, Second, Third, Sixth and District of Columbia take the "conservative approach" requiring that the foreign action to be enjoined would prevent US jurisdiction or threaten a vital US policy, and that the domestic interests outweigh concerns of international comity. The Fifth and Ninth Circuits take the "liberal" approach which requires only that the injunction is "necessary to prevent duplicative and vexatious foreign litigation and to avoid inconsistent judgments."
Because the Seventh Circuit has not chosen an approach, most district courts in the circuit follow the more "lax" liberal approach. But in this case, the Court did not need to make that determination because plaintiff's claim did not meet either standard because the issues in suit were not the same. Plaintiff's instant suit asserted its US intellectual property. Defendant's Chinese suit, on the other hand, sought a declaratory judgment that defendant owned its Chinese intellectual property, not plaintiff. Because the Chinese suit would not make determinations about plaintiff's US intellectual property, neither litigation's outcome would be dispositive of the other. Furthermore, plaintiff did not present evidence that the relevant Chinese intellectual property laws were the same or similar to the US Copyright or Lanham Acts.
