Discovery Request Due Dates Must Fall Within the Discovery Period

Posted on October 24, 2007 by R. David Donoghue

Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

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

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Trademark Ownership Controlled by Contract

Posted on September 18, 2007 by R. David Donoghue

Autotech Techs. Ltd. Partnership v. AutomationDirect.com, Inc., No. 05 C 5488, 2007 WL 2388794 (N.D. Ill. Aug. 17, 2007) (Holderman, C.J.).

Judge Holderman denied the parties’ cross-motion for summary judgment regarding the parties’ opposing trademark infringement claims regarding the “EZTOUCH” and “EZTEXT” marks. For approximately five years, the parties worked together with plaintiff manufacturing and defendant exclusively distributing a line of operator interface panels using the “EZTOUCH” and “EZTEXT” marks. When the business relationship deteriorated the parties disputed ownership of the marks and each attempted to register them with the PTO, as well as filing suits which were consolidated into this suit. The Court held that in a dispute between manufacturers and distributors, trademark ownership is first governed by contract and, if not resolved by contract, then presumed to be with the manufacturer. In this case, the parties agreed by contract that the trademark ownership was disputed. The Court, therefore, looked to a series of factors to determine whether ownership could be determined. The Court held that the parties raised factual disputes and competing positions which the trier of fact must weigh to determine ownership. The parties each presented evidence that they created and first used the marks in commerce. The parties both used their names in connection with the marks and controlled the quality of the products sold. And both parties paid for advertising involving the marks. The Court, therefore, could not decide trademark ownership or summary judgment.
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