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

Donovan v. Quade, No. 05 C 3533, Slip Op. (N.D. Ill. Oct. 15, 2009) (Nolan, Mag. J.)

Judge Nolan granted in part defendants/counterplaintiffs’ motion for summary judgment in this copyright suit. Initially, the Court deemed admitted all of plaintiff’s properly supported supplemental statements of material fact because defendants failed to factually support their denials of the facts pursuant to Local Rule 56.1(b)(3)(B). The plaintiff and individual defendant were co-authors of the well-known play Late Night Catechism (“LNC”) and its primary character “Sister” a fictional Roman Catholic nun. The individuals founded defendant QDE in 2000 as a vehicle for producing LNC. The individual defendant also made plays that were derivative works of LNC and licensed them separately from QDE. Plaintiff also made derivative works, but only licensed them through QDE.

False Designation of Origin and Deceptive Trade Practices

The Court granted summary judgment as to plaintiff’s false designation of origin and deceptive trade practice claims because plaintiff did not respond to defendants’ summary judgment arguments as to those claims.

Deprivation of Copyright Revenues

Because the Court held that the parties were not governed by a partnership agreement, copyright law governed any revenues from LNC. The issue, therefore, was whether plaintiff’s plays were derivative of the parties’ joint work LNC. First, the Court held that LNC was a joint work of the parties. The parties’ copyright application identified the parties as joint authors, and plaintiff failed to put forth sufficient evidence to counter the presumption created by the application.

The Court also held that plaintiff’s later plays were derivative of LNC. Defendants put forth evidence that plaintiff’s plays all included the Sister character and, therefore, were based upon and derivative of LNC. Plaintiff’s “answers, conclusory denials” were not sufficient to overcome plaintiff’s evidence. Because the parties were joint authors of LNC and because plaintiff’s subsequent plays involving the Sister character were derivative of LNC, defendant was granted summary judgment regarding the demand for an accounting.

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Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).

Judge Kocoras granted defendant Taste of Europe's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction.  Plaintiff alleged that Taste of Europe sold a single copy of plaintiff's copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction.  Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois.  Plaintiff did not present any evidence of Taste of Europe's Illinois connections, but sought jurisdictional discovery.  The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe's proofs.

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I have noticed that my news updates tend to be patent-focused, so today  they focus on trademarks and copyrights:

• IP Law & Business (subscription required to access the article) has an interesting article in the February/March 2009 issue identifying Justice Ginsburg as the Supreme Court's "champion of copyright holders" because of recent opinions supporting broader copyrights.  The article also identifies Justice Breyer, based on dissents in the same cases, as leading the cause for narrower copyrights.  And the article predicts that the Supreme Court is trending toward a narrower view of copyrights.
   
• Seattle Trademark Lawyer Michael Atkins has a timely post (click here to read it) that traces the March Madness trademark back to the Illinois high school basketball playoffs, as early as the 1940s.  The NCAA and the Illinois High School Association have since pooled their rights and both have a license to use the marks. 
   
• Victoria Pynchon has a great series of posts looking at laches in trademark law based upon a recent Ninth Circuit decision -- click here and here.

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2008 was another busy IP year for the Northern District of Illinois.  Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far.  Trademark cases were steady, with only two fewer filings than in 2007.  And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country.  Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 2875007 (N.D. Ill. Jul. 23, 2008) (Aspen, Sen. J.).*

Judge Aspen granted in part and denied in part defendants’ summary judgment motion regarding plaintiffs’ copyright, Lanham Act, trade secret and related state law claims.** Plaintiffs and defendants both design, manufacture and sell flexible fuel storage tanks. Corporate defendant MIL was formed by at least individual defendants John and Lawrence, both of whom previously worked for plaintiffs in various capacities and later worked for MIL in direct competition with plaintiffs over, at least, a United States Air Force contract.

Trade Secret Misappropriation

The Court held that plaintiffs’ pricing and warranty provisions were not trade secrets and, therefore, granted summary judgment in defendants’ favor. But the Court held that there was a question of fact as to whether plaintiffs’ tank designs were trade secrets. Additionally, the Court noted that the question of whether sufficient efforts were used to maintain secrecy of the alleged trade secrets was a question of fact for jurors in all, but the most extreme cases. Because plaintiffs identified several precautions taken to protect their trade secrets, the Court denied summary judgment. The fact that tank designs were provided to plaintiffs’ independent contractors without confidentiality did not warrant summary judgment for defendants. There are circumstances where independent contractors have independent, professional duties of confidentiality regardless of whether agreements were signed.

Copyright Infringement

Defendants argued that plaintiffs’ copyrighted fuel tank drawings were not original, as required for copyright ownership, because defendant John authored the drawings, not plaintiffs. The Court held that there was a question of fact as to the ownership because the parties disputed John’s employment status when he made the drawings. If John was an employee, plaintiffs owned the copyrights based upon the work for hire doctrine.

The Court also found a question of fact as to the degree of creativity employed in making plaintiffs’ drawings. A comparison of plaintiffs’ drawings and defendants’ drawings, which defendants alleged plaintiffs copied, left a question of fact as to whether plaintiffs’ drawings showed sufficient differences to rise to the level of creativity.

Compute Fraud and Abuse Act (“CFAA”)

The Court granted defendants summary judgment as to CFAA § 1030(a)(4) because plaintiffs did not respond to defendants’ claims and, therefore, waived their defenses. But the Court found questions of fact as to the two other charged sections of the CFAA, §§ 1030 (a)(2)(c) and (a)(5). First, there was a question of fact as to whether defendant John was authorized to access the documents he allegedly misappropriated. While John may have received the documents at issue during the normal course of his employment with plaintiffs, there was a dispute as to whether John exceeded his authorization by allegedly breaching his duty of loyalty to plaintiffs.

Additionally, there was a question of fact as to whether John passively received all accused documents by email or “accessed” the documents pursuant to the CFAA actively by email or otherwise.

Illinois Deceptive Trade Practices Act (“IDTPA”)

The IDTPA only provides for injunctive relief, not monetary damages. As a result, the IDTPA only addresses ongoing harms. The Court, therefore, granted defendants’ summary judgment as to defendants’ past acts. The Court also explained that it would not grant an IDTPA injunction to eliminate an existing commercial advantage, as courts sometimes do in trade secrets cases.
 

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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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Blawg Review #168 is available at Jeffrey Mehalic’s West Virginia Business Litigation blog (another LexBlog blog) – click here for the post. It is another excellent review, although it is a bit light on IP. Additionally, Mehalic has a very even-handed post about the settlement of a West Virginia suit between West Virginia University and Rich Rodriguez, the new football coach of my University of Michigan Wolverines. While the subject matter of that dispute is not necessarily relevant to Chicago IP litigators (Coach Rodriguez is paying his full $4M buyout over time, much of it funded by the University of Michigan), Mehalic has an interesting side note about a contract the court reporters put on each transcript in the case requiring that no copies be made or used without paying the court reporter for them – click here for the post. My first reaction is, and always has been, that the reporters hold the copyright because the transcript is their interpretation and compilation of what was said. But Mehalic disagrees, and makes a good point. The copyright in a (usually) verbatim recitation of a proceeding has to have a very thin copyright, if any.

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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, Slip Op. (N.D. Ill. Mar. 4, 2008) (Darrah, J.).*

Judge Darrah granted in part and denied in part the parties' cross-motions for summary judgment. Plaintiff and counter-defendant (collectively "NCI") developed visual eye chart software that defendants and counter-plaintiffs (collective "M&S") incorporated into their visual acuity system which was sold to ophthalmalic distributors and end users. For a period of time, the parties worked together, selling and servicing product and sharing office space. But eventually the relationship broke down and NCI began selling a competing system. The parties charged each other with various IP claims and related state law claims. Each of the IP-related claims is addressed below.

Copyright Infringement

The Court held that NCI was the sole owner of the copyright and that its principal Nordstrom was the sole author of the copyrighted software. M&S argued that its principal Marino contributed to the software. But the Court held that Nordstrom wrote the software and Marino only offered direction and ideas.

The Court granted M&S summary judgment for all copyrighted software sales during the terms of the parties' agreements, but not as to sales outside of the agreement dates. And the Court granted summary judgment of non-infringement as to M&S's new software package "Sports Vision Testing" ("SVT"). NCI argued that SVT was an infringing derivative work. But NSI failed to produce evidence or expert testimony refuting M&S's evidence that it created its SVT software independent of NCI's software using clean room procedures.

Digital Millennium Copyright Act ("DMCA")

NCI alleged that M&S violated the DMCA by circumventing protections on a computer containing the software code in order to aid an NCI licensee of the code. Because the code was accessed to aid a licensee, NCI could not show that the password had been bypassed for the purpose of infringing NCI's copyright. The Court, therefore, granted summary judgment for M&S. 

The Court also denied summary judgment as to M&S's claim that NCI violated the DMCA by accessing a portion of M&S's computer system for which NCI lacked authorization and passwords. Summary judgment was not appropriate because the parties disputed whether NCI accessed the computers and whether the accessed material was copyrighted.

Lanham Act

The Court denied M&S summary judgment on NCI's Lanham Act false advertising claim and its related state law claims. M&S argued that it had not made any statements likely to cause customer confusion. But NCI countered that M&S stated in advertising that it had used the same system for five years. NCI argued that the statement must be false because M&S switched to its new SVT software during that time. Because of these disputed facts, summary judgment was not appropriate.

Illinois Trade Secret Act

The parties agreed that prior to terminating their relationship, NCI took various information from M&S's offices and computers. But the parties disagreed as to whether M&S took reasonable measures to protect the information's confidentiality. The parties agreed that M&S password protected the information. But NCI argued passwords alone were not enough and suggested other protections that allegedly could and should have been employed. The Court held that password protection alone was not per se insufficient. But the Court required more information regarding M&S's actions and the feasibility of alternative protections before it could rule on summary judgment.

The Court also denied summary judgment as to M&S's claim that NCI violated the DMCA by accessing a portion of M&S's computer system for which NCI lacked authorization and passwords. Summary judgment was not appropriate because the parties disputed whether NCI accessed the computers and whether the accessed material was copyrighted.

Lanham Act

The Court denied M&S summary judgment on NCI's Lanham Act false advertising claim and its related state law claims. M&S argued that it had not made any statements likely to cause customer confusion. But NCI countered that M&S stated in advertising that it had used the same system for five years. NCI argued that the statement must be false because M&S switched to its new SVT software during that time. Because of these disputed facts, summary judgment was not appropriate.

Illinois Trade Secret Act

The parties agreed that prior to terminating their relationship, NCI took various information from M&S's offices and computers. But the parties disagreed as to whether M&S took reasonable measures to protect the information's confidentiality. The parties agreed that M&S password protected the information. But NCI argued passwords alone were not enough and suggested other protections that allegedly could and should have been employed. The Court held that password protection alone was not per se insufficient. But the Court required more information regarding M&S's actions and the feasibility of alternative protections before it could rule on summary judgment.

*  Click here to read more about this case in the Blog's archives.

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Judge Ashman struck plaintiffs' expert report pursuant to Fed. R. Civ. P. 37(c)(1). Plaintiffs' authored the song "Is It Because I'm Black" in 1968. Plaintiffs' alleged that defendants, the musical group Cypress Hill (click here for some of the group's music on their MySpace page), infringed their copyright in the song by using parts of it in their Black Sunday album. Cypress Hill contended that plaintiffs sold the copyright pursuant to a 1969 songwriters contract. Plaintiffs argued that the contract was a fraud.

Plaintiffs submitted an expert report (the "Report") to support that the contract was fraudulent. In six paragraphs, the expert stated that he ran various tests and concluded that the 1969 contract was a fraud because it was printed and signed by an inkjet printer — inkjet printers were developed in the 1970s or 1980s. When Cypress Hill complained that the Report was incomplete, plaintiffs supplemented it with pictures of the testing.

But the Court held that the supplemented Report was not sufficient because it did not explain the expert's methodology. There was no way to know how the expert translated data into conclusions. And no reputable rebuttal expert could test the expert's methodology or opine that the data was misinterpreted. It did not matter that the missing information could likely be obtained in a deposition. Rule 26 requires that an expert report include "the basis and reasons" for the expert's opinions. Because the Report did not disclose the expert's methodology and reasoning, and because Cypress Hill was prejudiced by the late-served, incomplete Report, the Court struck the Report.

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Goss Int’l Ams., Inc. v. A-Am. Mach. & Assembly Co., No. 07 C 3248, 2007 WL 4294744 (N.D. Ill. Nov. 30, 2007) (Gettleman, J.).

Judge Gettleman denied defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff’s copyright for lack of subject matter jurisdiction. Plaintiff alleged that defendant violated plaintiff’s copyrights in its simplified machine drawings of its commercial printing machines by placing them on the internet without authorization. The Court held that plaintiff’s simplification of its drawings and addition of part numbers were sufficient to meet copyright’s originality requirement. The Court also looked to the Fifth and Eighth Circuits and held that the registration requirement was met when plaintiff filed its copyright registration, as opposed to when the Copyright Office acted on it. In this case, plaintiff filed its application in May 2007 and was waiting on registration as of the date of the opinion. The Court reasoned that because plaintiff would also have a cause of action if the registration was denied, there was no reason to make plaintiff wait until the Copyright Office acted.

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There were 129 copyright cases filed in the Northern District during 2007, a 37% decrease from the 206 patent cases filed in 2006.  2006 was an exceptionally busy copyright year for the Northern, 100-150 copyright cases is the Northern District's norm over the last several years.  Of 2007's 129 copyright cases, 81 or 63% were disposed of during 2007 -- nearly double the percentage of patent cases that were resolved within the year. The fact that substantially more copyright cases settled during the calendar year in which they were filed is not surprising as copyright cases tend to be more straightforward and less document intensive than patent cases.

A list of each case, the case number, the filing date and, where appropriate, the date the case was resolved are provided after the jump. Earlier this week, I did a similar post regarding patent filings (click here for the post). Look for a similar trademark post next week.

A hat tip to the Maryland Intellectual Property Law Blog for its 2007 IP review series that pushed me to start my own review of 2007 IP cases.

1:07-cv-00194

Sacha v. McDougal Littell et al

filed 01/10/07

1:07-cv-00223

The Ashton-Drake Galleries, Ltd. v. Kozub

filed 01/12/07   closed 09/05/07

1:07-cv-00289

Ostrowski v. 22nd Century Media, LLC et al

filed 01/17/07   closed 05/04/07

1:07-cv-00356

Gestalt, LLC v. Best Buy Co. Inc. et al

filed 01/18/07   closed 05/24/07

1:07-cv-00651

Microsoft Corporation v. Chicago Computer Broker Inc. et al

filed 02/02/07   closed 02/28/07

1:07-cv-00733

Twentieth Century Fox Film Corporation v. Perkins

filed 02/07/07   closed 10/16/07

1:07-cv-00734

Warner Bros. Entertainment Inc. et al v. Kent

filed 02/07/07   closed 12/20/07

1:07-cv-00735

Paramount Pictures Corporation et al v. Guzman

filed 02/07/07

1:07-cv-00736

Columbia Pictures Industries, Inc. et al v. Rogers

filed 02/07/07   closed 04/03/07

1:07-cv-01716

Goss International Americas, Inc. v. Central Graphic Corp.

filed 03/28/07

1:07-cv-01794

FM. Industries, Inc. v. Citicorp Credit Services, Inc., et.al.

filed 04/02/07

1:07-cv-01839

Software For Moving, Inc. v. La Rosa Del Monte Express, Inc. et al

filed 04/03/07   closed 12/07/07

1:07-cv-01863

Broadcast Music, Inc. et al v. Foundry, LLC, The et al

filed 04/04/07   closed 08/29/07

1:07-cv-02043

Warner Bros. Records Inc. et al v. Does

filed 04/12/07   closed 06/05/07

1:07-cv-02047

O'Leary v. Warner Books et al

filed 04/13/07   closed 05/25/07

1:07-cv-02089

Child Support Savings Corp. v. Wilson et al

filed 04/16/07   closed 09/07/07

1:07-cv-02105

Ashley Furniture Industries, Inc. et al v. Fisher Printing, Inc.

filed 04/16/07   closed 11/07/07

1:07-cv-02133

Broadcast Music, Inc. et al v. Triangle Inn, Inc. et al

filed 04/17/07   closed 05/23/07

1:07-cv-02242

Aftermath, Inc. v. Action Bio-Care, Inc. et al

filed 04/24/07

1:07-cv-02252

Priority Records LLC et al v. Turner

filed 04/24/07   closed 07/12/07

1:07-cv-02253

Interscope Records et al v. Rasheeduddin

filed 04/24/07   closed 07/05/07

1:07-cv-02255

Warner Bros. Records Inc. et al v. Mitchell

filed 04/24/07   closed 07/10/07

1:07-cv-02257

Virgin Records America, Inc. et al v. Mock

filed 04/24/07   closed 06/21/07

1:07-cv-02258

Warner Bros. Records Inc. et al v. Williams

filed 04/24/07   closed 07/11/07

1:07-cv-02259

Elektra Entertainment Group, Inc. et al v. Hepper

filed 04/24/07   closed 06/01/07

1:07-cv-02260

Elektra Entertainment Group Inc. et al v. Romero

filed 04/24/07   closed 10/11/07

1:07-cv-02261

Atlantic Recording Corporation et al v. Reese

filed 04/24/07   closed 07/12/07

1:07-cv-02263

Priority Records LLC et al v. Aviles

filed 04/24/07   closed 07/11/07

1:07-cv-02264

Atlantic Recording Corporation et al v. Roscoe

filed 04/24/07   closed 08/22/07

1:07-cv-02265

Elektra Entertainment Group Inc. et al v. Belk

filed 04/24/07   closed 08/10/07

1:07-cv-02267

Capitol Records Inc et al v. Campos

filed 04/24/07   closed 01/08/08

1:07-cv-02268

Atlantic Recording Corporation et al v. Phalesia Visione

filed 04/24/07

1:07-cv-02269

Elektra Entertainment Group, Inc. et al v. Baker

filed 04/24/07   closed 07/17/07

1:07-cv-02270

Virgin Records America, Inc. et al v. Younger et al

filed 04/24/07   closed 07/06/07

1:07-cv-02271

UMG Recordings, Inc. et al v. Strickland

filed 04/24/07   closed 06/26/07

1:07-cv-02273

Warner Bros. Records Inc. et al v. Roman

filed 04/24/07   closed 06/28/07

1:07-cv-02274

Elektra Entertainment Group, Inc. et al v. Mayhew

filed 04/24/07   closed 08/06/07

1:07-cv-02275

Interscope Records et al v. Farias

filed 04/24/07   closed 07/30/07

1:07-cv-02277

Virgin Records America, Inc. et al v. Lamb

filed 04/24/07   closed 07/11/07

1:07-cv-02278

Priority Records LLC et al v. Hickman

filed 04/24/07   closed 09/26/07

1:07-cv-02280

Sony BMG Music Entertainment et al v. Summers

filed 04/24/07   closed 08/22/07

1:07-cv-02285

UMG Recordings, Inc. et al v. Lapczynski

filed 04/24/07   closed 08/07/07

1:07-cv-02286

Lava Records LLC et al v. Ricobene

filed 04/24/07   closed 07/06/07

1:07-cv-02288

Atlantic Recording Corporation et al v. Hodel

filed 04/24/07

1:07-cv-02299

Elektra Entertainment Group, Inc. et al v. Belk

filed 04/24/07   closed 08/20/07

1:07-cv-02301

Warner Bros. Records, Inc. et al v. Keith

filed 04/24/07   closed 07/19/07

1:07-cv-02302

Warner Bros. Records Inc. et al v. Wagner

filed 04/24/07   closed 07/17/07

1:07-cv-02303

Warner Bros. Records Inc. et al v. White

filed 04/24/07   closed 09/07/07

1:07-cv-02305

UMG Recordings, Inc. et al v. Gordon

filed 04/24/07   closed 09/05/07

1:07-cv-02306

UMG Recordings, Inc. et al v. Garcia

filed 04/24/07   closed 07/03/07

1:07-cv-02308

UMG Recordings Inc et al v. McPartlin

filed 04/24/07

1:07-cv-02310

Virgin Records America, Inc. et al v. Ribic

filed 04/24/07   closed 07/09/07

1:07-cv-02313

Elektra Entertainment Group Inc. et al v. Guyton

filed 04/24/07   closed 06/26/07

1:07-cv-02315

Elexa Consumer Products Inc. v. Creative Concepts International LLC

filed 04/26/07   closed 07/18/07

1:07-cv-02360

Click Commerce, Inc. v. Stewart

filed 04/27/07

1:07-cv-02387

Skyline Design, Inc. v. S.A. Bendheim Company, Inc.

filed 04/30/07

1:07-cv-02421

Sony BMG Music Entertainment et al v. Does 1-9

filed 05/01/07   closed 07/20/07

1:07-cv-02485

James H. Anderson, Inc. v. Northwestern University et al

filed 05/03/07

1:07-cv-02536

Matteo v. Rubin

filed 05/07/07

1:07-cv-02665

Kammin v. SMARTPROS, Ltd.

filed 05/10/07   closed 10/09/07

1:07-cv-02935

Scholz Design, Inc. v. Iacoponi et al

filed 05/24/07

1:07-cv-03051

M.L.E. Music et al v. JJDH, Inc. et al

filed 05/31/07   closed 08/24/07

1:07-cv-03223

Broadcast Music, Inc. et al v. Hedgehogs, Inc. et al

filed 06/07/07

1:07-cv-03248

Goss International Americas, Inc. v. A-American Machine & Assembly Co.

filed 06/08/07

1:07-cv-03280

DeVry/Becker Educational Development Corp. v. Does

filed 06/11/07

1:07-cv-03335

Arista Records LLC et al v. Does

filed 06/13/07   closed 08/03/07

1:07-cv-03506

Broadcast Music, Inc. et al v. Clearwater Productions, LLC et al

filed 06/21/07

1:07-cv-03567

Goss International Americas, Inc. v. All Press Parts, Inc.

filed 06/26/07

1:07-cv-03568

Scholz Design, Inc. v. Amro et al

filed 06/26/07

1:07-cv-03596

Jewel America, Inc. v. Combine International, Inc. et al

filed 06/26/07

1:07-cv-03608

DeVry/Becker Educational Development Corp. v. Elliott

filed 06/27/07   closed 11/19/07

1:07-cv-03646

Pro Marketing Systems, Inc. v. Jim Mudd Advertising, Inc.

filed 06/28/07   closed 11/28/07

1:07-cv-03674

Fishbein et al v. Kivisto Niemira Gallery, LLC

filed 06/29/07   closed 12/27/07

1:07-cv-03709

Unicus Performance Training, LLC et al v. Advocate Health Care, Inc. et al

filed 07/02/07

1:07-cv-03819

BaliJewel, Inc. v. John Hardy Limited

filed 07/09/07

1:07-cv-03844

Kulig v. Magmedix, Inc. et al

filed 07/10/07   closed 12/11/07

1:07-cv-03854

Elektra Entertainment Group Inc. et al v. Phillips

filed 07/10/07   closed 09/24/07

1:07-cv-03859

Virgin Records America, Inc. et al v. Jenkins

filed 07/10/07   closed 09/25/07

1:07-cv-03861

Elektra Entertainment Group Inc. et al v. Bolon

filed 07/10/07

1:07-cv-03864

Capitol Records, Inc. et al v. Maciejewska

filed 07/10/07   closed 08/20/07

1:07-cv-03865

UMG Recordings, Inc. et al v. Juerez

filed 07/10/07   closed 08/30/07

1:07-cv-03867

Warner Bros. Records, Inc. et al v. Lathon

filed 07/10/07   closed 11/21/07

1:07-cv-03868

UMG Recordings, Inc. et al v. Cabrero

filed 07/10/07   closed 11/19/07

1:07-cv-03870

Elektra Entertainment Group Inc. et al v. Fasel

filed 07/10/07   closed 10/31/07

1:07-cv-03972

International Union of Operating Engineers, Local 150, AFL-CIO v. Team 150 Party Inc et al

filed 07/13/07

1:07-cv-04255

Harwin Music Corp. et al v. O'Hare Gaslight Club, Inc. et al

filed 07/30/07   closed 12/05/07

1:07-cv-04305

Ho et al v. Taflove et al

filed 07/31/07

1:07-cv-04425

Capitol Records, Inc. et al v. Maid Hajdarovic

filed 08/07/07   closed 12/03/07

1:07-cv-04484

BMG Music et al v. Doe

filed 08/09/07

1:07-cv-04485

Warner Bros. Records Inc. et al v. Does

filed 08/09/07

1:07-cv-04486

Arista Records LLC et al v. Does 1-9

filed 08/09/07   closed 11/05/07

1:07-cv-04487

Wesley Development, Inc. v. Qpack, Inc.

filed 08/09/07   closed 10/23/07

1:07-cv-04613

Broadcast Music, Inc. et al v. MSS Ventures, Inc. et al

filed 08/15/07

1:07-cv-04760

Broadcast Music, Inc. et al v. TLCC, Inc. et al

filed 08/23/07   closed 01/02/08

1:07-cv-04955

Interscope Records et al v. Velez

filed 09/04/07

1:07-cv-04956

Sony BMG Music Entertainment et al v. Gardner

filed 09/04/07   closed 10/24/07

1:07-cv-04957

Atlantic Recording Corporation et al vs. Napolitano

filed 09/04/07   closed 10/15/07

1:07-cv-04958

Sony BMG Music Entertainment et al v. Hammonds

filed 09/04/07

1:07-cv-04981

Warner Bros. Entertainment Inc. v. Foster et al

filed 09/05/07

1:07-cv-04983

Warner Bros. Entertainment Inc, v. Burns

filed 09/05/07   closed 01/08/08

1:07-cv-04984

Columbia Pictures Industries, Inc. et al v. White

filed 09/05/07

1:07-cv-04985

Warner Bros. Entertainment Inc. v. Payan

filed 09/05/07   closed 01/08/08

1:07-cv-05034

Annazach Software, Inc. v. Exelon Corporation et al

filed 09/06/07

1:07-cv-05106

Warner Bros. Records Inc. et al v. Ruddy

filed 09/11/07   closed 01/07/08

1:07-cv-05108

Elektra Entertainment Group Inc. et al v. Duenas

filed 09/11/07

1:07-cv-05180

American Medical Association v. Practice Management Information Corporation

filed 09/13/07   closed 09/27/07

1:07-cv-05529

Kasi Designs, PC v. First Step Child Care Center, Inc. et al

filed 10/01/07   closed 11/08/07

1:07-cv-05556

UMG Recordings, Inc. et al v. Avila

filed 10/02/07   closed 01/09/08

1:07-cv-05557

Sony BMG Music Entertainment et al v. Bledsoe

filed 10/02/07   closed 11/16/07

1:07-cv-05558

Interscope Records et al v. Brandon

filed 10/02/07

1:07-cv-05865

Arista Records LLC et al v. Does 1-6

filed 10/17/07   closed 01/02/08

1:07-cv-05968

Senario, LLC v. Geckler Companies, Inc.

filed 10/22/07   closed 11/12/07

1:07-cv-05971

Juris v. Jaffe et al

filed 10/23/07   closed 12/20/07

1:07-cv-06058

Cobra Fixations Cie Ltee-Cobra Anchors Co. Ltd. v. Powers Fasteners, Inc. et al

filed 10/26/07

1:07-cv-06128

Crowe Chizek and Company LLC v. Guitar Center, Inc. et al

filed 10/30/07   closed 12/17/07

1:07-cv-06261

Krueger v. Tradeguider Systems, LLC et al

filed 11/05/07   closed 11/27/07

1:07-cv-06357

Prominent Consolting, LLC v. Allen Brothers, Inc.

filed 11/08/07

1:07-cv-06369

Nova Design Build, Inc. et al v. Grace Hotels, LLC et al

filed 11/09/07

1:07-cv-06401

Windy City Marketing, Inc. v. Places Advertising, Inc.

filed 11/12/07

1:07-cv-06505

Wound Care Education Institute v. Thomas

filed 11/16/07

1:07-cv-06717

Warner Bros. Records Inc. et al v. Does

filed 11/29/07

1:07-cv-06752

Compliance Software Solutions, Corporation v. Moda Technology Partners, Inc. et al

filed 11/30/07

1:07-cv-06843

Gottlieb et al v. DDB Chicago, Inc. et al

filed 12/05/07

1:07-cv-06881

Group One Trading LP v. DeLuca et al

filed 12/06/07

1:07-cv-07043

Cornerstone Architects, Ltd. v. Lakeland Development Group, Inc. et al

filed 12/14/07

1:07-cv-07055

American Mortgage Consultants Inc., v. Opus Capital Markets Consultants, LLC et al

filed 12/14/07

1:07-cv-07288

Johnson v. Jackson et al

filed 12/28/07

3:07-cv-50030

Northgate Builders, Inc. v. Knuckey et al

filed 02/20/07   closed 12/11/07

3:07-cv-50225

Jades Creations LLC v. White

filed 11/16/07

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Krueger v. TradeGuider Sys., LLC, No. 07 C 6261, Slip Op. (N.D. Ill. Nov. 27, 2007) (Kendall, J.)*

Judge Kendall granted plaintiff Todd Krueger’s (“Krueger”) motion to remand this breach of Employment Agreement (“Agreement”) suit to Cook County Circuit Court. Krueger originally filed his Complaint in Cook County Circuit Court. Defendants (collectively “TradeGuider”) remanded the case to the Northern District, arguing that Krueger’s claim for breach of the Agreement, which governed his employment as TradeGuider’s CEO, was a federal copyright claim. TradeGuider reasoned that determining whether it had breached the Agreement required a determination of whether Krueger’s works were works for hire. The Court cited the Seventh Circuit’s narrow view of copyright preemption for contract claims – generally a contract involving copyrights is of a different scope than the copyrights because the contract is a private agreement between parties and a copyright is a right against the world. The alleged breach, therefore, was not essentially a copyright claim because it included rights beyond the copyright. Additionally, the Court reasoned that there was no evidence that suggested any copyright law would have to be interpreted to construe the contract or rule upon the alleged breach.

*Click here for a copy of the opinion.

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Bryant v. Gordon, __F.Supp.2d__, 2007 WL 2440208 (N.D. Ill. August 30, 2007) (Kennelly, Jr.).*

Judge Kennelly denied defendants James Gordon’s (“Gordon”) and Mach 1’s motions for judgment as a matter of law (“JMOL”) and entered an injunction against Gordon’s and Mach 1’s continued use of the copyrighted pictures at issue – pictures of a parachutist and a sniper used in motivational posters. Gordon and Mach 1 argued that the jury’s verdict that Gordon and Mach 1 infringed plaintiff’s copyrights was inconsistent with the jury’s verdict that defendant John Urtis (“Urtis”) – who took the infringing sniper photo – did not infringe plaintiff’s copyright. But the Court held that JMOL cannot be used to harmonize jury verdicts. Furthermore, the Court held that the infringement verdicts were supported by the facts.

Because of a threat of continued infringement, the Court granted a permanent injunction against Gordon and Mach 1. But the Court held that it could not issue the injunction against Urtis because the jury’s verdict was in Urtis’s favor. The Court did, however, caution Urtis not to aid the other defendants in violating their injunction.

* For more on this case, click here in the Blog’s archives.

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Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).

Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song.  The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted. 

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Stafford Trading, Inc. v. Lovely, No. 05 C 4868, 2007 WL 1512417 (N.D. Ill. May 21, 2007) (Coar, J.).

Judge Coar granted in part declaratory judgment plaintiffs' (collectively "Stafford") motion to dismiss and denied Stafford's summary judgment motion.  The Court dismissed defendants' fraud and unjust enrichment counterclaims after holding that they were preempted by the Illinois Trade Secret Act.  The Court also dismissed defendants' fraudulent concealment.  The material fact that Stafford allegedly failed to disclose was the opinion that Stafford owned the RIVAS electronic options trading platform outright.  But the Court held that an allegedly withheld opinion could not support a fraudulent concealment claim.

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Gencor Pacific, Inc. v. Nature's Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement case alleging that defendants used portions of plaintiff's copyrighted studies regarding the efficacy of a weight-loss and appetite suppressant containing Caralluma Fimbriata extract.  Defendants, a business and two individuals employed by the business, were residents of New Jersey and had a single sale to an Illinois customer, valued at $300.  Defendants only other contacts with Illinois were an interactive website accessible in Illinois and the fact that one or two of defendants' general solicitations may have been sent to Illinois.  Defendants did not own property in Illinois and there was no proof that any defendants sent any of the allegedly infringing information to Illinois.  The Court held these contacts were not sufficient to create either general or specific jurisdiction.  The Court also held that venue was not proper in the Northern District of Illinois because defendants were not residents of Illinois and the acts at issue in the suit did not occur in the Northern District.

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Vaughn v. Kelly, No. 06 C 6427, 2007 WL 804694 (N.D. Ill. Mar. 13, 2007) (Manning, J.).

Judge Manning denied plaintiff Vaughn's motion to remand his case to state court, but gave plaintiff leave to file an amended complaint.  Vaughn sued defendant R. Kelly ("Kelly") in Illinois state court alleging breach of contract, fraud and unjust enrichment, among other things.  Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song.  Kelly had the case removed to the Northern District based upon an argument that the claims sound in copyright law.  In his motion to remand, Vaughn argued that his case was not about copyright, but about Kelly's alleged theft of his uncopyrightable ideas and the breach of the contract governing the exchange of those ideas.  The Court noted that Vaughn's fraud and breach of oral contract claims were close questions, but held that Vaughn's unjust enrichment claim sounded in copyright.  The unjust enrichment was based upon fixed works -- Kelly's song and video -- and the unjust enrichment claim is equivalent to allegations of Kelly's infringement of Vaughn and Kelly's alleged joint work.  The Court acknowledged that Vaughn was likely to amend his complaint to force remand and gave Vaughn a deadline for filing any such amended complaint.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, 2007 WL 684047 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran held that the parties' contract was not exclusive and, therefore, granted in part and denied in part defendants' Rule 12(c) motion to dismiss.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH").  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  The Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which meant that HH was free to record other songs or records with another company during the life of the Agreement.  The Court also held that the only way HH's songs can be considered a work-for-hire owned by defendants is if HH were defendants' employees.  But the Court was unable to decide that issue on the pleadings.  As a result, the Court also could not decide HH's copyright and trademark infringement claims on the pleadings because whether defendants could have infringe requires a determination of whether HH or defendants own the marks.  The opinion also contains a very detailed analysis of Illinois choice of law issues for the related state law claims.

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Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.).

Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant's ("plaintiff") duty to defend defendants against Lanham Act and related state law claims.  Defendants were sued by third party Acushnet which accused defendants of willful and intentional violation of Acushnet's marks related to its Titlest Pro VI golf ball based upon defendants' alleged marketing of counterfeit golf balls.  Defendants sought defense and indemnification from plaintiff, their insurer.  Defendants' insurance policy covered, among other things, defendants' infringement of third party marks or copyrights in defendants' advertising so long as the infringement was not done with knowledge or intent of the infringement.  Although the Complaint charges defendants' with willful and intentional violations of the marks, the Lanham Act provides claims without regard to intent.  Because not all of Acushnet's claims require intent, plaintiff has a duty to defend defendants' against the suit.  The Court did note, however, that should Acushnet prove that defendants' acts were willful and intentional, plaintiff would have no duty to indemnify.

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Sheppard Mullin's Intellectual Property Law Blog (another LexBlog creation) has an excellent post on The Top Ten Ways Copyright Law Can Mess Up Your Transaction.  The post will go a long way towards keeping any company or individual out of the Northern District for copyright infringement issues.  But it does not address one of the biggest copyright dangers -- not addressing the use of potentially copyrighted materials within an organization.  Every modern business relies upon information, often that information is gathered from copyrighted sources, for example the internet, television, books or newsletters and magazines.  It is important to educate your employees to respect the copyrights covering their information sources and to set up corporate policies to make it clear that the company respects copyrights.  The fix for this problem is inexpensive and quick, but it can head off very expensive mistakes -- statutory damages for copyright infringement can be astronomical.

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Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

The Court granted summary judgment for defendants for several reasons. First, after reviewing the evidence, including a comparison of clips from each work, the Court held that no reasonable jury could find that plaintiff’s documentary is substantially similar to The PJs. Plaintiff’s movie is a series of interviews of people, while The PJs is an animated program telling fictional stories using fictional characters. And to the extent that any similarities existed, they were in non-copyrightable elements of the video. For example, the Court noted that plaintiff could not hold a copyright in someone else’s appearance or how a building looks.

Second, plaintiff had not established that defendants had access to plaintiff’s film. Plaintiff only provided his film to Winfrey via Harpo Studios and plaintiff provided no evidence that she or anyone at Harpo had sent the film to any third party. Additionally, Harpo Studios never aired the film and plaintiff could not even provide any evidence proving that Winfrey or Harpo Studios had actually received the film.

Third, defendants presented uncontradicted evidence that they conceived of the characters and concept of The PJs before plaintiff sent his film to Winfrey and Harpo Studios. While The PJs began airing on Fox in 1999, defendants submitted evidence that they had drafted characters and plots for The PJs by December 1997.

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Copyscape has just launched a service which it claims will scour the web to locate potential copiers of your site's content.  Combine that evidence (if copying is found) with proper registration and we just might see an increase in copyright infringement suits.  Of course, the service is not perfect.  I tried it for the Chicago IP Litigation Blog and it returned one result, suggesting that Dennis Crouch at Patently-O had copied me.  In fact, Dennis's post was highlighting a new blog.  Two days after Dennis's post, I also highlighted the new blog (here) and mentioned Dennis.  So, if one of us was copying the other, it was me copying Dennis.  Of course, I did not plagiarize Dennis, we each did short posts identifying a new blog using similar language and it was exactly the kind of cross-posting blogs thrive on.

Try it for your sites and let me know how it works for you.

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Judge Moran agreed with defendants that the complaint lacked factual support for its trademark infringement claims (specifically failing to explain the likelihood of confusion), but found that the complaint met the notice standard, citing Judge Easterbrook's recent Seventh Circuit opinion (Simpson v. Nickel, __ F.3d __, 2006 WL 1585445 (7th Cir. 2006)) reaffirming that complaints should not be dismissed because they are conclusory and that complaints need only allege the "bare minimum facts" necessary for notice. Accordingly, it was enough that plaintiff alleged that defendants used plaintiff's marks and other confusingly similar marks to continue operating a pizza business. Plaintiff's conclusory statements that defendants continued selling pizza using ingredients not supplied, and therefore not quality-controlled, by plaintiff was also sufficient for plaintiff's trademark dilution claim.

Judge Moran dismissed plaintiff's copyright claim, however, because it only alleged that defendants "ma[de] unauthorized use" of the marks, without any explanation of what those uses were. This conclusory statement did not allow Judge Moran to determine whether plaintiff was alleging that defendants made derivative works from plaintiff's copyrighted materials, used ideas from the materials, which would not be an infringement, or just kept possession of copyrighted materials, which would be a contract claim.

On the final notice pleading issue, Judge Moran discussed in detail the tension between notice pleading and the Seventh Circuit's requirement that plaintiff must identify "concrete secrets" in trade secret misappropriation claims. The court found that plaintiff's "vague and conclusory" allegations of the misappropriation of plaintiff's "Papa John's System" were sufficient, although it noted that plaintiff would need to specifically identify the secrets at issue eventually and encourage plaintiff, in a footnote, to amend the complaint to further identify the secrets.

Finally, Judge Moran refused to dismiss the individual defendant from the case. Although corporate officers are generally not personally liable for the actions of their employers, in this case the individual defendant had signed contracts which, among other things, included the individual defendant's personal guarantee of the company's debts.

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