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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Rosen v. Mystery Method, Inc., No. 07 C 5727, 2008 WL 723331 (N.D. Ill. Mar. 14, 2008) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 9(b) & 12(b)(6) motion to dismiss plaintiff Rosen's claims. Rosen, on behalf of himself and others similarly situated, alleged that defendant Mystery Method Corp. (“MMC”), in concert with various other business partners, violated the Racketeer Influenced and Corrupt Organizations Act (“RICO”) by continuing to market MMC's Mystery Method dating products as endorsed or otherwise approved by the original creator of the Mystery Method, Erik Von Markovick (“EVM”). EVM created a “sophisticated system . . . to help men meet and attract women” known as the Mystery Method. EVM offered personal training in his methods and eventually partnered with MMC to administer the business of his related Mystery Method website. Eventually, EVM left MMC and started his own website www.venusianarts.com. When EVM left, MMC maintained control of the Mystery Method website.

The Court held that Rosen had not sufficiently pled the predicate act of copyright infringement.* Rosen only pled general allegations:

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Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2007 WL 2580491 (N.D. Ill. Sep. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended awarding plaintiff $2.5M in statutory damages. The Court had previously entered a Fed. R. Civ. P. 37(b) default judgment against defendants for sales of counterfeit Newport cigarettes in violation of the Lanham Act.* The Court recommended that a damages hearing was not necessary because of defendants’ four year pattern of avoiding discovery obligations leading to a default judgment, including failing to produce damages documents. Having actively avoided producing the information for four years, defendants were not now entitled to seek opportunities to present evidence in their defense. Furthermore, the Court reported that a $2.5 M award was reasonable. $2.5M was half of plaintiff’s estimate of defendants’ infringing sales and it was half of the potential $1M statutory award for each of the five marks defendants infringed.

* For more on this case, see the Blog’s archives.

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