Allegedly False Statements Not Actionable Pursuant to Lanham Act

Posted on January 28, 2008 by R. David Donoghue

Junction Solutions, LLC v. MBS Dev., Inc., No. 06 C 1632, 2007 WL 4234091 (N.D. Ill. Nov. 20, 2007) (Gottschall, J.).*

Judge Gottschall dismissed defendant’s Lanham Act false representation and Consumer Fraud Act claims.** Both claims were based on letters allegedly sent by plaintiff to a third party containing false statements about defendant. The Court dismissed the Lanham Act claim because the allegedly false statements were not made in plaintiff’s marketing materials and were not about defendant’s products. Similarly, a letter to one third party was not the general commercial communication required by the Consumer Fraud Act.

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

** The Court also considered other non-IP claims.

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Different Harms Allow Re-Litigation of Same TS Misappropriation

Posted on January 21, 2008 by R. David Donoghue

Junction Solutions, LLC v. MBS Dev., Inc., No. 06 C 1632, 2007 WL 4233995 (N.D. Ill. Nov. 20, 2007) (Gottschall, J.).*

Judge Gottschall denied defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s trade secret misappropriation complaint based upon the parties’ prior settlement agreement and resulting dismissal with prejudice by the District of Colorado. While the alleged misappropriation was the same — defendant employees leaving plaintiff to start their own competing software company — the use of the trade secrets was different. In the Colorado case, defendants allegedly harmed plaintiff by starting a competitor using plaintiff’s trade secrets. In this case, the alleged harm was developing competing software, after the Colorado settlement and dismissal. Claim preclusion, therefore, did not apply. Issue preclusion did not apply because the Colorado court did not make any substantive final judgments. The settlement agreement could have barred plaintiff’s claim, but the agreement’s release expressly excluded claims arising after the agreement’s effective date.

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

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