Trade Secret Claims May Be Pled Solely Upon Information and Belief

Posted on May 28, 2010 by R. David Donoghue

Adams v. Pull'R Holding Co., LLC, No. 09 C 7170, Slip Op. (N.D. Ill. Apr. 20, 2010) (Gettleman, Jr.).

Judge Gettleman granted defendants' motion to dismiss as to plaintiff's civil conspiracy claim and granted in part plaintiff's motion to dismiss defendants' trade secret and related state law counterclaim in this case involving hoists, fence installation tools and other do it yourself tools. The Court dismissed plaintiff's civil conspiracy claim because it was not based upon an underlying tort claim. The purpose of a civil conspiracy is to extend tort liability to members of a conspiracy. 

The Court denied plaintiff's motion to dismiss as to defendants' breach of contract counterclaim.  The motion was premised upon plaintiff's argument that he was not a party to the agreement. But plaintiff was not allowed to make that argument after having pled in his complaint that he was a party to the agreement. 

The Court also denied plaintiff's motion as to defendants' trade secret misappropriation claim. It did not matter that defendants' allegations were all pled on information and belief. Defendants' pleading sufficiently provided plaintiff the what, where, when, why and how required by the pleading standards. 

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No Heightened Pleading for Trademark-Based Unjust Enrichment Claim

Posted on September 12, 2008 by R. David Donoghue

Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

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A Trademark Claim By Any Other Name is Still a Trademark Claim

Posted on September 3, 2006 by R. David Donoghue

Richmond v. National Inst. of Certified Estate Planners, No. 06 C 1032, 2006 WL 2375454 (N. D. Ill. Aug. 15, 2006) (Manning, J.).

This is a trademark action regarding defendants' use of the term "certified estate planner" ("CEP").  In addition to trademark claims, plaintiff also brought claims for civil conspiracy, conversion and trespass to chattel.  Plaintiff alleged that defendants' use of the CEP mark constituted conversion and trespass to chattel.  Plaintiff also alleged that the individual defendants engaged in civil conspiracy by taking the CEP mark for the benefit of NICEP and for their own individual uses.

Judge Manning dismissed the conversion and trespass claims, noting that Illinois conversion and trespass claims typically require that the chattel exist independently (e.g., a television signal or a car), as opposed to a trademark which is solely a creation of federal statute.  The Court further noted that the conversion and trespass claims were "just a different and unnecessary restatement of [plaintiff's] federal trademark infringement claims," citing McCarthy on Trademarks. Call a trademark infringement claim whatever you want, but the Court is still going to resolve it as a trademark infringement claim.

The Court dismissed the civil conspiracy claim for lack of personal jurisdiction based upon the fiduciary shield doctrine (courts have no personal jurisdiction over a non-resident corporate official where the official's only contacts with Illinois come in the official's corporate capacity).

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