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

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

• Consumer Law & Policy Blog -- considering the merits of the claims.
   
• [UPDATE]:  Las Vegas Trademark Attorney -- pointing out that individuals could avoid being the subject of a Blockshopper story by purchasing through a trust.
   
• Legal Blog Watch -- questioning the PR ramifications of the suit.
   
• [UPDATE]:  MediaPost -- noting that Blockshopper's Florida stories also run in the South Florida Sun-Sentinel based on a deal with the Tribune company.
   
• Techdirt

While I generally save my commentary for the opinions, there is one point that needs to be made.  Many bloggers are using an alleged quote from Judge Darrah (I did not hear it and have not seen a transcript of the hearing, so cannot confirm it) warning Blockshopper that defending the suit would be very expensive.  Unless the comment was made in a hostile or aggressive manner, which I very much doubt and which has not been suggested in the posts I have seen, that is simply a statement of legal reality.  Defending federal intellectual property cases has become expensive, very expensive.  And defense costs are a factor in the calculus of every defendant's business decisions about  a law suit.

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Jones Day v. BlockShopper.com, No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*

Judge Darrah entered the parties stipulated temporary restraining order ("TRO").  Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog's earlier post on the case.

The Court entered the parties' stipulated TRO, ordering defendants not to:

1. Use reproductions or imitations of plaintiff's service mark;
    
2. Use any content from or link to plaintiff's website; or
    
3. reference plaintiff in its headlines.

Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry. 

As you would expect, other blogs and mainstream media have noticed the case.  At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week's National Law Journal -- click here (subscription required).  According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:

Bending to the law firm's demands to stop coverage of the firm's lawyers would strangle the company's business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.

Ambrogi sums up the issue at the heart of the dispute well:

In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: "We like our public records to be public -- just not too public.

*  Click here for the Order.

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Tomorrow is the first anniversary of the “new” electronic data discovery (“EDD”) rules.* In fact, the EDD rules were not new, they were intended to be a codification of the basic rules already in use by the various district courts. Despite that, a study conducted by LexisNexis at the October Association of Corporate Counsel 2007 Annual Meeting in Chicago found that corporate counsel continue to struggle with implementation of the rules and confusion about what the EDD rules required. For example, 70% of respondents believed that electronic files had to be produced in their native formats. In fact, you simply must work with opposing counsel to decide what format to produce the files in, either their native formats or some chosen standard format. This confusion should not have surprised anyone. Even in IP circles, lawyers rarely fully understand a company’s IT infrastructure and the IT people rarely understand the legal process. This disconnect can be very dangerous when it comes to meeting EDD obligations.

If your company is still struggling with the EDD rules or, worse, avoiding them completely, you can solve your problems with some relatively simple actions. First, take a breath, open your copy of the Federal Rules and read them thoughtfully and then set up a meeting with the head of your company’s IT infrastructure, the head of your company’s legal department or litigation staff and an outside counsel with EDD experience. Working together, come up with a general plan for gathering and preserving the appropriate information as cases arise. Pay special attention to how your plan fits with the company’s overall data retention policies (yes, your company should have data retention policies and the policy should be followed carefully) and how to suspend any periodic or automatic data removal when a litigation hold needs to be instituted. Once you have a plan, meet periodically to update it and to ensure that it is being followed. If you are prepared for EDD, it is an excellent litigation tool. If you are not, it is a potential disaster.

For more on EDD, check out these blogs:

Alextronic Discovery

Dennis Kennedy

EDD Update

E-Discovery Team

E-discovery 2.0

Electronic Discovery Blog

Electronic Discovery Law (another LexBlog blog)

Ride the Lightning

Sound Evidence

Hat tip to the EDD Blog Online via Legal Blog Watch for identifying the LexisNexis survey..

* Tomorrow is also the date that the next set of changes to the Federal Rules becomes effective. Fortunately, these changes are largely focused on making the rules more readable instead of adding or changing obligations. But once you are prepared for the EDD rules, you should still turn back to your copy of the Federal Rules and read through the revisions.  Look for a blog post next week highlighting some of the substantive changes.

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The Seventh Circuit has launched a wiki.  The Wiki is intended to focus on the most difficult portion of practice for those not regularly practicing in a particular jurisdiction -- procedure.  The site is largely broken down by the Seventh Circuit's Rules and allows for practitioners to create an account and add their insights into the implementation of each rule.  It is already an excellent resource.  Much of the early content focuses on briefing requirements.  For example, after the break is a portion of the wiki regarding the formatting of headings that gives insight into what the Seventh Circuit judges might prefer.

Perhaps the Northern District should consider a wiki.

One common use of all-caps text in briefs is argument headings. Please be judicious. Headings can span multiple lines, and when they are set in all-caps text are very hard to follow. It is possible to make heading attractive without using capitals. Try this form:

This form is harder to read:

If you believe that italics and underscores are important to getting your idea across, try something like this (replacing underlining with a rule line beneath the text):

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In January, Cisco's General Counsel Mark Chandler gave a speech at Northwestern's Securities Regulation Institute that made major headlines.  Because several in-house friends and colleagues have mentioned it to me recently, I thought it was worth a post.  Anyone involved in the private practice of law should take the time to read it.  It highlights an issue that is critical to achieving a client's desired results and to developing a strong relationship between a client and its outside counsel -- aligning the interests of the counsel to those of the client.  Chandler's speech resonates with me because when I was in-house, I struggled to align my outside counsel's interests with those of my company.  It seems that it should be an easy task, but many outside counsel do not get it. 

Here is an excerpt from the speech:

From the law firm think perspective, “sales” too often means a one to one relationship with a lawyer who bills by the hour. As a client, I can tell you what I want to buy is access to information, strategy, and negotiation, and, in the case of litigation, to courtroom skill as well.

There’s a fundamental misalignment at work here. Law firms cannot afford to own the business risks of their clients, have a lot of employees to pay and also have to allocate the limited resources of extraordinary star partners. On the other hand, we clients want access to information and counseling and want to pay for value received. Put most bluntly, the most fundamental misalignment of interests is between clients who are driven to manage expenses, and law firms which are compensated by the hour.

                                                                 * * *

F]irst, winners will be those who are able to standardize services to meet clients’ cost management and predictability needs where very good is good enough. Second, those who can differentiate themselves by providing the top notch of customized services, where that is needed, will also win. 

As you can see, it is very provactive.  Private practitioners should read the speech, I can assure you your clients are reading it.  For further discussion and analysis check out:

WSJ Law Blog

Legal Blog Watch

shlep:  the Self-Help Law ExPress

My Shingle

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The new blog Trial Lawyer Resource Center looks like it will be a great resource and it represents many of the best aspects of legal blogging -- experts in a field gathering to share their insights and to engage readers in conversation.  It has no specific relation to IP, but appears to be worth reading on general litigation and trial issues.

For more commentary on the Trial Lawyer Resource Center, check out Legal Blog Watch and Evan Schaeffer at his sites Legal Underground and Illinois Trial Practice Weblog.

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Mader v. Motorola Inc., No. 92 C 8089, 1999 WL 519020 (N.D. Ill. Jul. 14, 1999) (Manning, J.).

This opinion intersects with IP only to the extent that you consider the opinion a derivative work based on its use of Beatles and Pink Floyd song titles and quotes.  But it does highlight a fun area of legal writing -- the use of song lyrics in judicial opinions.  A recent law review article,  [Insert Song Lyrics Here]: The Uses and Misuses of Popular Music Lyrics in Legal Writing, by Professor Alex Long analyzes the use of music in legal writing (Bob Dylan is the most cited artist in judicial opinions, followed by Paul Simon and Bruce Springsteen). (Note: If my wife were a federal district judge, you might see a sharp increase in judicial citations to Judas Priest and KISS. Thankfully – at least for the sake of good musical taste – she is not, although she would otherwise make a great judge.)

Prof. Long is not a fan of Judge Manning’s citations to the Beatles and Pink Floyd, in part because of an admitted distaste for Pink Floyd.  I, however, enjoyed the references.  Here is the section of the opinion quoted in Prof. Long's article:

The Beatles once sang about the long and winding road. This 1992 case has definitely walked down it, but at the end of the day, the plaintiffs and their counsel were singing the Pink Floyd anthem "Another Brick in the Wall" after consistently banging their collective heads against a popular procedural wall - Northern District of Illinois Local Rule 12 governing the briefing and submission of summary judgment motions.

You can argue that the analogy is weak because “Another Brick in the Wall” was about breaking down the wall, not just banging into it. But I still like it (the opinion itself breaks down the wall). 

My favorite music-referencing judicial opinion, however, remains Judge Enslen's opinion in Hirt v. Richardson, 127 F. Supp.2d 833 (W.D. Mich. 1999).  If memory serves, Judge Enslen has a few others, but this is one I remember from my W.D. Michigan clerking days (I clerked for Judge Quist, not Judge Enslen, but this opinion made the rounds while I was clerking because it was cleverly written and a high-profile issue).  Because I cannot link to it without permission from Westlaw, here is an excerpt from it:

As for the future--whatever will be will be.  Since the future is not ours to see,[6] however, and in the absence of something approaching a concrete plan by either the United States or Russia, no meaningful [Environmental Assessment] or [Environmental Impact Study] could even be conducted . . . .

---

[6] Happy Holidays, Doris Day, wherever you may be.

Thanks to Legal Blog Watch and The Volokh Conspiracy for bringing the article to my attention.

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