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

LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).

Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B -- click here for that post.  Earlier this week, Google removed the case to the Northern District, arguing that LimitNone's Illinois Consumer Fraud and Deceptive Business Practices Act ("ICFA") claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google's removal papers). 

In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product.  But after receiving LimitNone's trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone's trade secrets.   LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.

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Junction Solutions, LLC v. MBS Dev., Inc., No. 06 C 1632, 2007 WL 4234091 (N.D. Ill. Nov. 20, 2007) (Gottschall, J.).*

Judge Gottschall dismissed defendant’s Lanham Act false representation and Consumer Fraud Act claims.** Both claims were based on letters allegedly sent by plaintiff to a third party containing false statements about defendant. The Court dismissed the Lanham Act claim because the allegedly false statements were not made in plaintiff’s marketing materials and were not about defendant’s products. Similarly, a letter to one third party was not the general commercial communication required by the Consumer Fraud Act.

* Click here for more on this case in the Blog’s archives.

** The Court also considered other non-IP claims.

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WMH Tool Group, Inc. v. Woodstock Int’l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Nov. 14, 2007) (Darrah, J.).*

Judge Darrah denied defendants’ Fed. R. Civ. P 12(b)(6) motion to dismiss plaintiff WMH Tool Group’s (“WMH”) Lanham Act dilution claim and its related Illinois Consumer Fraud and Deceptive Business Practices Act (“Consumer Fraud Act”) claim. WMH registered a trade dress for the color white on its woodworking and metal working products, sold under its JET brand. WMH alleged that its white trade dress was both famous and exclusively associated with WHM’s tools. WMH further alleged that defendant Woodstock International (“Woodstock”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Woodstock’s Shop Fox brand. Similarly, WMH alleged that defendant Grizzly Industrial (“Grizzly”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Grizzly’s Grizzly or Grizzly Industrial brands. 

Defendants argued that WMH did not state a claim for dilution because the complaint did not specify the date when WMH’s trade dress became famous and that defendants’ allegedly infringing sales began after that date. But the Court held that notice pleading did not require that WMH plead specific dates. It was enough that WMH pled that the trade dress had become famous and that defendants' infringement of the trade dress occurred after the fame was acquired.

Defendants also argued that WMH lacked standing to bring a Consumer Fraud Act claim because WMH was not a “person” or a “consumer” pursuant to the Act.  But the Court held that 815 ILCS 505/1(1)(c) defined “persons” to include business entities, and that a plaintiff need not be an actual consumer to bring a claim pursuant to the Consumer Fraud Act.

* Click here for a copy of the opinion.

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