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

Light Speed Media Corp. v. Does 1-1000, No. 10 C 5604, Slip Op. (N.D. Ill. Mar. 31, 2011) (Manning, J.).

Judge Manning dismissed without prejudice 999 of the 1,000 Doe defendants in this copyright infringement suit accusing unknown individuals of using BitTorrent to download copyrighted material without sufficient permissions. As in prior cases in the Northern District (click here for similar decisions), the Court held that the Doe defendants were not properly joined pursuant to Fed. R. Civ. P. 20(a)(2)(A) because the use of a common internet service provider or network does not create sufficient commonality of action or transaction to warrant permissive joinder. The Court also held that joinder did not serve judicial interests or economy. A case with 1,000 Doe defendants could generate hundreds of factually dissimilar motions, just at the initial phase of the litigation.

The Court's decision to sever was bolstered by its concerns about whether venue was proper. There was nothing to indicate that plaintiff or any Doe had contacts with Illinois. The Court, therefore, dismissed without prejudice each of the Does except the one individual who had been identified, although not yet named. Plaintiff was given seven days from the Order to notify the parties and their Internet Service Providers. Finally, the Court denied as premature the identified individual's motion to dismiss for lack of personal jurisdiction. The motion was premature until the individual was actually named in the suit.

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Millennium TGA, Inc. v. Does 1-800, No. 10 C 5603, Slip Op. (N.D. Ill. Nov. 30, 2010) (Manning, J.).

Judge Manning sua sponte severed each Doe defendant in this copyright suit over alleged use of copyrighted materials via BitTorrent, except for one Doe IP address. And the Court granted that Doe's motion to quash the subpoena.

The Court previously granted plaintiff leave to subpoena Internet Service Providers ("ISP") to obtain identities associated with certain IP addresses - unique strings of numbers that can often be associated with a single computer or location. Plaintiff had met the Fed. R. Civ. P. 20(a)(2)(A) joinder requirements because it could not show that the Does acted in concert. Furthermore, the case in its current position could leave the Court with dozens or hundreds of factually unique motion to dismiss, quash or sever. And there was no indication that venue was proper. Plaintiff had no connection to Illinois, and it was not clear that any Doe did either.
 

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Wayne Cable v. Agence France Presse, No. 01 C 8031 (N.D. Ill. July 20, 2010) (Manning, J.).

Judge Manning denied defendant Agence France Presse's ("AFP") motion to dismiss plaintiff's copyright, Lanham Act, Digital Millennium Copyright Act ("DMCA") and related state law claims. Plaintiff took a series of photos of a Chicago-area home for a realtor that included images of the home next-door owned by President and Mrs. Obama. AFP allegedly reproduced those images and distributed them over the internet after first removing plaintiff's copyright notice and an embedded link to plaintiff's website.

The Court held that the alleged removal of plaintiff's copyright notice and website link could fall within the scope of altering "copyright management information" in violation of the DMCA.
Plaintiff's Lanham Act claim, allegedly a reverse passing-off claim, was not preempted by the Copyright Act pursuant to the Supreme Court's decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court held that the Lanham Act claim would have been sustained if defendant had repackaged plaintiff's videos as its own. That is what plaintiff alleged AFP did with plaintiff's photographs. Similarly, the Court did not dismiss plaintiff's state law claims which allegedly rose and fell with plaintiff's Lanham Act claim.
 

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Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 18, 2010) (Manning, J.).

Judge Manning, having granted in part plaintiff's motion for reconsideration, decided to maintain supplemental jurisdiction over plaintiffs' remaining state law claims despite having granted defendants summary judgment as to plaintiffs' federal patent infringement and Computer Fraud and Abuse Act ("CFAA") claims. Plaintiffs' state law claims - trade secret, tortious interference and breach of fiduciary duty claims - were "loosely" connected to plaintiffs' CFAA claim because they were based upon the alleged theft of plaintiffs' confidential information by a former employee.
 

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Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 3, 2010) (Manning, J.)

Judge Manning granted in part plaintiffs' motion to reconsider the Court's opinion granting defendants summary judgment on plaintiffs' patent claims and dismissing plaintiffs' related state law claims for lack of supplemental jurisdiction.

The Court reversed its supplemental jurisdiction decision because Illinois law barred the refiling more than once of a claim that was voluntarily dismissed. Presented with the "new" fact that plaintiffs had previously filed suit in state court, the Court vacated its prior decision and ordered plaintiffs to brief whether the Court should retain jurisdiction over the state law claims.

The Court, however, did not reverse its summary judgment of noninfringement. On that Plaintiffs agreements were a "rehash" of its prior agreements.

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Von Holdt v. A-1 Tool Corp., No. 04 C 4123, Slip Op. (N.D. Ill. May 17, 2010) (Manning, J.).

Judge Manning granted defendants (collectively "A-1 Tool") summary judgment as to plaintiff's (collectively "Plas-Tool") patent claims based upon a lack of notice and as to the plaintiff's Computer Fraud and Abuse Act ("CFAA") claims, and chose not to exercise supplemental jurisdiction over the remaining state law claims. A-1 Tool sought summary judgment of a lack of pre-suit notice of the alleged patent infringement. The issue was dispositive because Plas-Tool's patent expired before the suit was filed. So, pre-suit-notice – actual or constructive – was required in order for Plas-Tool to have any damages.

Plas-Tool's general statements that they would sue A-1 Tool if it ever infringed Plas-Tool's patents did not create actual notice. And the alleged patent knowledge of Plas-Tool's former employee who joined A-1 Tool could not be imputed to A-1 Tool for purposes of actual notice. A-1 Tool's burden was to make an evidentiary showing that could lead a reasonable person to find that Plas-Tool complied with the marking requirements by marking substantially all of Plas-Tool's relevant product. Plas-Tool did not meet its burden of proof. Plas-Tool's only evidence of marking compliance was testimony from Plas-Tool's 30(b)(6) witness. The witness testified that Plas-Tool's policy was to mark its products, but had no recollection of what specifically was marked. And the Court held that evidence of a company policy to mark without any other evidence of marking compliance was insufficient to overcome summary judgment. Beyond the 30(b)(6) testimony, Plas-Tool's only marking evidence was having sent a customer two molds including patent markings. But when the molds were returned, one of them had the patent marking covered up, suggesting the product was made from the mold had not been marked. The Court, therefore, granted A-1 Tool summary judgment on Plas-Tool's patent claims for lack of notice.

The Court also granted A-1 Tool summary judgment on Plas-Tool's CFAA claim. Plas-Tool alleged that its former employee improperly accessed and damaged CAD files related to the patented products. But Plas-Tool was not able to identify any damage to the allegedly accessed files and the CFAA was not designed to deal with disgruntled former employees that took electronic files as they left. Also, Plas-Tool was unable to show the required $5,000 in damages within one year of the alleged damage. The loss Plas-Tool was able to show was not related to fixing damaged files, as required by the CFAA. Plas-Tool's alleged damage was related to a forensic review that allegedly showed that the former employee tampered with the files.

Having granted summary judgment on the federal patent claim and the CFAA claim, the Court declined to exercise supplemental jurisdiction over Plas-Tool's state law claims.

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Von Holdt v. A-1 Tool Corp., No.. 04 C 4123, Slip Op. (N.D. Ill. Jun. 19, 2009) (Manning, J.).

Judge Manning adopted Magistrate Judge Brown's claim construction Report and Recommendation over defendants' objections in this patent infringement case involving molded buckets with stacking strength.  Of particular interest:

• "Side-by-side" meant "one beside the other."  The Court refused to hold that nothing could be between the ribs of the buckets because doing so would be construing the terms in reference to the accused devices.
   
• "[A] relatively large radius" meant a single large radius, despite the fact that "a" or "an" following comprising language generally means one or more.  In this case, one or more would not make sense.  Multiple radii would require one or more radius to be smaller than the others.  Additionally, the strongest bucket configuration was a single radius, as shown in the patent figures.
   
• "In alignment" meant in a "straight line with," not "parallel."  Requiring the alignment to be parallel was an unnecessary restriction.

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Compliance Software Sol’ns. Corp. v. MODA Tech. Partners, Inc., No. 07 C 6752, 2008 WL 2960711 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted defendants’ (collectively “MODA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. MODA was a Pennsylvania resident, as were its employees. Its alleged Illinois contacts were: 1) attendance at an Illinois trade show, Pittcon, where it demonstrated its software – software that allegedly infringed plaintiff CSSC’s patent and copyright covering CSSC’s environmental monitoring software; and 2) signing a contract with an Illinois choice of law provision.

MODA’s Pittcon attendance did not create specific jurisdiction because MODA just presented its software and tried to generate interest in it. MODA did not sell its software or “use” it. Pittcon attendance, therefore, did not create jurisdiction. Similarly, MODA’s alleged offer to sell its software in Illinois did not create jurisdiction. The offer did not include a price term, a requirement for a legal offer to sell.

Finally, MODA’s execution of a contract governed by Illinois law did not create jurisdiction. While Illinois law governed the contract, it did not include a forum selection clause making Illinois the exclusive forum. Without the exclusive forum selection clause, the contract did not create jurisdiction.

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WMS Gaming Inc. v. WPC Gaming Prods. Ltd., No. 07-3585, Slip Op. (7th Cir. Sep. 8, 2008) (Wood, J.).*

Judge Wood delivered the Seventh Circuit’s opinion reversing and revealing Judge Manning’s damages award. Plaintiff-Appellant WMS Gaming (“WMS”) alleged that defendants (collectively “PartyGaming”) infringed its JACKPOT PARTY and SUPER JACKPOT PARTY marks. Defendants chose not to participate in the suit. The Northern District, therefore, entered a default judgment for WMS and a permanent injunction. WMS sought $287M in damages, an amount equal to PartyGaming’s reported U.S. revenues during the relevant period. The Court, however, held that WMS was entitled to damages, not an equitable accounting of all of defendants revenues and awarded approximately $900K per year, or $2.7M total. As an initial matter, the Seventh Circuit held that Fed. R. Civ. P. 54(c) requires that in the case of a default judgment the award cannot differ from or exceed the type and amount of requested damages. Because WMS’s complaint and its subsequent pleadings all requested both an equitable accounting and actual damages, either were an allowable damages award.

Having determined that an equitable accounting was an appropriate remedy, the Court explained that WMS was entitled to an award of PartyGaming’s revenues attributable to PartyGaming’s trademark infringement. Further, WMS’s burden was only to prove PartyGaming’s revenue. WMS did that by proving PartyGaming’s $287M of U.S. revenues during the relevant period. The burden then shifted to PartyGaming to prove which portions of its revenue were not attributable to its infringement. The Seventh Circuit, therefore, reversed and remanded to the Northern District.

*  Click here for the opinion and click here for a podcast of the oral argument.

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Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

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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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Goss Int'l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).

Judge Manning construed the terms of plaintiff's patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez's Report and Recommendation ("Report") construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.

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The Northern District of Illinois and Chicago's Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.

The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates.  Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.

Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:

• Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
  
• Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
  
• Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
  
• Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
  Judge Brown);
  
• Catherine Caporusso and Margot Klein, of the Federal District Court's Self-Help Assistance Program (presented by Judge Hibbler);
  
• David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
  by Magistrate Judge Schenkier);
  
• Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
  
• Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

Trademark Infringement

The Court upheld plaintiffs' trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants' misspelled domains. Additionally, the Court could not rule upon Parking Defendants' arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants' particular acts constituted use would require reliance upon facts outside the complaint.

Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs' false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.

Trademark Dilution

Defendants argued that the dilution claims must be dismissed because plaintiffs' marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.

*  This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).*

In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s ("Bosch") declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in this case to allege infringement of the Old Patents.  In response, Bosch added declaratory judgment counterclaims regarding a third set of B&D patents (the “Smith patents”) which B&D had never asserted against Bosch. Bosch argued that an actual controversy existed because of the history of litigation between the parties and B&D’s prior testimony that it placed a high value on the exclusivity its patents provided in the workplace radio marketspace. B&D countered that, despite filing two suits against Bosch, B&D had never asserted the Smith patents against Bosch, or any other party. B&D also argued that St. Eve had already dismissed similar counterclaims in the last case for lack of actual controversy. But St. Eve’s decision was based upon the Federal Circuit’s old reasonable apprehension test, which the Supreme Court’s MedImmune decision overruled. Looking at “all of the circumstances,” as required by MedImmune, the Court held that an actual controversy existed. Among other reasons, the Court noted that the wide-ranging dispute between the parties regarding the workplace radios, suggested that it was in the parties’ best interests to resolve any dispute regarding the Smith patents.

*  You can read a copy of the Minute Order here.

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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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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).

Judge Manning granted defendant's, Robert Bosch Tool Corp. ("Bosch") Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff's, Black & Decker ("B&D"), patent infringement claims against Bosch's new product regarding B&D's previously asserted patents were barred by res judicata.  In the prior case before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before trial before Judge St. Eve, B&D brought the instant suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in the instant case to allege infringement of the Old Patents.  Bosch then argued that res judicata barred B&D's claims based upon the Old Patents.  Judge Manning held that res judicata applied because the trial before Judge St. Eve resulted in a final verdict, the parties to that case were identical to those in the instant case and the claims had "identity" with each other.  Judge Manning noted that B&D admitted that the causes of action had "identity"  when it sought to reassign the instant case to Judge St. Eve and stated that:  both cases involve the same patents; both cases involve the same product, the Power Box; both cases involve the same facts; and both cases involve the same issues of law. 

B&D argued res judicata should not apply because Bosch had sought to have the New Power Box claims litigated in a separate case.  But Judge Manning denied the argument, noting that Bosch had argued that B&D should not be able to bring its claims late in the suit before Judge St. Eve and also that res judicata should preclude any future B&D suit based upon the New Power Box.  Additionally, Judge Manning held that B&D could have litigated the New Power Box in Judge St. Eve's case because B&D was aware of the product throughout the suit and that at least some sample products had been made by or for Bosch. 

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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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Adventus Ams. Inc. v. Innovative Envtl. Techs., Inc., No. 06 CV 3267, 2007 WL 704938 (N.D. Ill. Mar. 5, 2007) (Manning).

Judge Manning dismissed one plaintiff for lack of standing and transferred the case to the Eastern District of Pennsylvania.  Plaintiff EnviroMetal Technologies ("EnviroMetal") had an exclusive license to the patent-in-suit from the University of Waterloo in Canada.  The Court held that EnviroMetal's license was sufficiently exclusive to create standing because, among other things, it expressly gave the right to make use or sell and EnviroMetal had exclusive sublicensing rights.  Plaintiff Adventus Americas ("Adventus"), however, was a non-exclusive sublicensee of EnviroMetal and the Court held it had no standing.  Defendant also argued that the Court lacked personal jurisdiction, but the Court held that defendant's sales contacts with Illinois were sufficient to create personal jurisdiction.

Having decided the standing and jurisdictional issues, the Court transferred the case to the Eastern District of Pennsylvania.  Although EnviroMetal had chosen Illinois as a form, that choice was given little weight because of Illinois's relatively weak connection to the facts of the case.  And the Court held that the convenience of the parties was best served by transfer because EnviroMetal had to travel regardless of which district the case was in, but defendant's employees would not have to travel if the case were transferred.  Additionally, the case would likely be resolved more quickly in Pennsylvania -- the median time to trial in the N.D. Ill. is 26.4 months, compared to 18.0 in the E.D. Pa.

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Big Dipper, Inc. v. Wells' Dairy, Inc., No. 05 C 5395, 2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) (Manning, J.).

In this trademark action, Judge Manning denied defendant's Rule 11 motion without considering it on the merits because defendant failed to comply with Rule 11's "safe harbor period."  Rule 11(c) requires that before filing a Rule 11 motion, the party serve the motion on its opponent and give the opponent at least 21 days to correct the issues raised in the motion.  Defendant's Rule 11 motion was also defective because defendant combined its Rule 11 motion with its response to plaintiff's motion to strike. As the Court noted, a Rule 11 motion must be filed as a separate, standalone motion. 

Defendant had ample opportunity to notify plaintiff of the Rule 11 issue. Plaintiff filed a motion to dismiss defendant's counterclaims.  The counterclaims challenged the validity of plaintiff's marks.  In response to the counterclaims, plaintiff served defendant a proposed motion to strike them.  Defendant responded to the proposed motion with a faxed letter objecting to the motion and asking plaintiff not to file it, but did not mention Rule 11 in the letter. 

Plaintiff then filed the motion to strike.  Defendant did not file a separate response to plaintiff's motion, but instead addressed plaintiff's substantive arguments in its motion to strike and in its reply to plaintiff's responsive briefing.  The Court held that, in addition to failing to meet the Rule 11(c) safe harbor requirement, defendant's motion was also defective because it was not filed separate from its response to plaintiff's underlying motion to strike.

In addition to Rule 11 issues, the Court's opinion also considered substantive trademark issues.  Specifically, the Court considered whether it lacked jurisdiction over defendant's invalidity counterclaim because defendant had not exhausted its invalidity challenge within the PTO (defendant had a pending cancellation proceeding before the TTAB).  The Court held that where the unexhausted validity issues are related to a claim with independent federal jurisdiction (in this case, plaintiff's trademark infringement claims) both the infringement and the validity challenge should be heard together.

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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 . . . .

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[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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Richmond v. National Inst. of Certified Estate Planners, No. 06 C 1032, 2006 WL 2375454 (N. D. Ill. Aug. 15, 2006) (Manning, J.).

This is a trademark action regarding defendants' use of the term "certified estate planner" ("CEP").  In addition to trademark claims, plaintiff also brought claims for civil conspiracy, conversion and trespass to chattel.  Plaintiff alleged that defendants' use of the CEP mark constituted conversion and trespass to chattel.  Plaintiff also alleged that the individual defendants engaged in civil conspiracy by taking the CEP mark for the benefit of NICEP and for their own individual uses.

Judge Manning dismissed the conversion and trespass claims, noting that Illinois conversion and trespass claims typically require that the chattel exist independently (e.g., a television signal or a car), as opposed to a trademark which is solely a creation of federal statute.  The Court further noted that the conversion and trespass claims were "just a different and unnecessary restatement of [plaintiff's] federal trademark infringement claims," citing McCarthy on Trademarks. Call a trademark infringement claim whatever you want, but the Court is still going to resolve it as a trademark infringement claim.

The Court dismissed the civil conspiracy claim for lack of personal jurisdiction based upon the fiduciary shield doctrine (courts have no personal jurisdiction over a non-resident corporate official where the official's only contacts with Illinois come in the official's corporate capacity).

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