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

Zojo Sol'ns., Inc. v. Cooper Tools, Inc., No. 10 C 1504, Slip Op. (N.D. Ill. Jun. 15, 2011) (Norgle, J.).

Judge Norgle entered final judgment as part of an agreed settlement that had been approved by the Department of Justice in this false patent marking case, which was entered before President Obama signed the America Invents Act. Of particular interest:

• Any litigation involving alleged false marking before the date of the judgment was barred.
   
• Defendant Cooper Tools was free to sell existing inventory with the accused markings as of the Effective Date until such product was fully depleted.
   

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Rude d/b/a ABT Sys., LLC v. Lux Prods. Corp., No. 09 C 6957, Slip Op. (N.D. Ill. Jan. 12, 2011) (Norgle, J.).

Judge Norgle granted defendant Emerson Climate Technologies' ("ECT") motion to sever plaintiffs' claims against ECT for improper joinder, and granted ECT's motion to transfer the case to the Eastern District of Missouri in this patent dispute regarding an air distribution fan recycling control. ECT sought dismissal because each defendant's accused system, generally a thermostat, was a different product and, therefore, there was no common transaction or occurrence as required for Fed. R. Civ. P. 20 joinder. The Court agreed, holding that sales of similar products by unrelated defendants did not meet Rule 20(a)'s common transaction or occurrence requirement, noting agreement from several other judges in the Northern District. Furthermore, allegations that unrelated defendants design and sell similar products does not satisfy Rule 20(a). Similarly, the fact that the defendants' defenses and counterclaims were "nearly identical" was irrelevant to the joinder analysis. Having held that ECT was misjoined, the Court declined to consolidate the two cases for pretrial proceedings pursuant to Fed. R. Civ. P. 42(a). And the Court severed ECT's case pursuant to Fed. R. Civ. P. 21.

The Court then transferred the severed case to the Eastern District of Missouri, where ECT was located. Plaintiffs' choice of forum was given less than normal deference because plaintiffs were not Illinois residents. The situs of material events was irrelevant, as in many patent cases.

The ease of access to the proofs weighed strongly in favor of transfer. ECT's relevant entities were headquartered in St. Louis, within the Eastern District of Missouri. ECT identified at least five key party witnesses within the Eastern District of Missouri. And that district could more easily compel non-party witnesses also likely to be resident in St. Louis. Additionally, while ECT would gain significant convenience from transfer, plaintiffs would be inconvenienced either way, as they were not residents of either contemplated district. So, relative convenience of the parties weighed in favor of transfer. And the speed of the districts to trial slightly favored transfer.
 

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DH Holdings, LLC v. MeridianLink. Inc., No. 10 C 2351, Slip Op. (N.D. Ill. Aug. 23, 2010) (Kennelly, J.).

Judge Kennelly denied defendant MeridianLink's motion for sanctions pursuant to Fed. R. Civ. P. 11, § 1927 and the Court's inherent powers. Plaintiff DH Holdings originally filed its Northern District patent infringement case in 2008, and Judge Norgle entered a default against MeridianLink when it failed to answer the complaint. MeridianLink later got the judgment overturned for improper service in the Central District of California, and then filed a declaratory judgment action in that district. DH Holdings responded by filing the instant case and simultaneously asking Judge Norgle to reopen the 2008 case. MeridianLink claimed that DH Holding unnecessarily multiplied the litigation by seeking to reopen the 2008 case and filing the instant case. But the Court held that DH Holding simply took prudent actions to maintain the status quo. DH Holding could not be certain that its original case would be reopened. So, filing a new case was a reasonable precaution.
 

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Zimnicki v. Neo-Neon Int'l., Ltd., No. 06 C 4879, Slip Op. (N.D. Ill. Jul. 30, 2009) (Norgle, J.).

Judge Norgle denied plaintiff's motion for an antisuit injunction.  Plaintiff filed copyright, trademark and unjust enrichment claims against defendant based upon the alleged use of plaintiff's North Pole Village brand and decorative holiday lighting products.  Defendant then filed a declaratory judgment action in China seeking a determination that defendant, who filed Chinese copyrights on designs similar to those covered by plaintiff's US copyrights in suit, owned the disputed designs.  The Court explained that there is a circuit split on the standard for antisuit injunctions that the Seventh Circuit had not weighed in on.  The First, Second, Third, Sixth and District of Columbia take the "conservative approach" requiring that the foreign action to be enjoined would prevent US jurisdiction or threaten a vital US policy, and that the domestic interests outweigh concerns of international comity.  The Fifth and Ninth Circuits take the "liberal" approach which requires only that the injunction is "necessary to prevent duplicative and vexatious foreign litigation and to avoid inconsistent judgments."

Because the Seventh Circuit has not chosen an approach, most district courts in the circuit follow the more "lax" liberal approach.  But in this case, the Court did not need to make that determination because plaintiff's claim did not meet either standard because the issues in suit were not the same.  Plaintiff's instant suit asserted its US intellectual property.  Defendant's Chinese suit, on the other hand, sought a declaratory judgment that defendant owned its Chinese intellectual property, not plaintiff.  Because the Chinese suit would not make determinations about plaintiff's US intellectual property, neither litigation's outcome would be dispositive of the other.  Furthermore, plaintiff did not present evidence that the relevant Chinese intellectual property laws were the same or similar to the US Copyright or Lanham Acts.

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Johnson v. Cypress Hill, No. 03 C 9452, Slip Op. (N.D. Ill. Jul. 7, 2008) (Norgle, J.).

Judge Norgle struck defendants’ motion to dismiss plaintiff Johnson’s copyright infringement claim. The Court previously denied summary judgment as to the other plaintiffs, Watts and Jones - click here to read the Blog's prior post about that opinion. Plaintiffs authored the song “Is It Because I’m Black” in 1968 and recorded a version of it in 1969 (the “Song”).  Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed their copyright in the Song by using parts of it in their Black Sunday album.
 

Johnson’s copyright claim is based upon a 1997 registration for a compilation of songs allegedly containing the Song. But a review of a certified copy of Johnson’s compilation from the Copyright Office proved the Song was not on the deposited compilation. Because the Song was not a part of the registered work, Johnson could not show ownership of a valid copyright. The Court, therefore, dismissed the claim.
 

The Court also held that Johnson’s failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant because Congress deleted the Notice of Use requirement effective January 1, 1978, before any alleged infringement occurred.

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Watts v. Cypress Hill, No. 03 C 9452 & 06 C 3348, 2008 WL 2540811 (N.D. Ill. Apr. 28, 2008) (Norgle, J.).

Judge Norgle denied defendants’ motion for summary judgment on plaintiff’s copyright infringement claim. Defendants’ motion was based upon three arguments: 1) plaintiffs did not have a valid copyright registration; 2) plaintiffs’ suit was barred by the statute of limitations; and 3) plaintiffs failed to file a Notice of Use as required by the 1909 Copyright Act. Plaintiffs authored the song “Is It Because I’m Black” in 1968, and recorded a version of it in 1969 (the “Song”). Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed plaintiffs’ copyright in the Song by using parts of it in their album titled Black Sunday.

Copyright Registration

Defendants argued that plaintiffs did not meet their burden of proving a valid copyright registration because instead of the registration certificate or a copy of the deposited CD, plaintiffs produced a printout of the Copyright Offices’ summary of their registration. Because defendants did not dispute the information in the summary, the Court denied summary judgment. The validity of the registration was a question of fact for the jury.

Statute of Limitations

As to plaintiff Watts, defendants argued that Watts’s claim fell outside the Copyright Act’s three year statute of limitations because Watts contacted the Copyright Office in April 2003 to inquire about the status of his copyright in the Song, more than three years before Watts’ June 20, 2006 filing date. During his deposition, Watts testified:

• That he was not aware of the alleged infringement when he contacted the Copyright Office;
   
• That he contacted the Copyright Office just to check on the status of his copyright; and
   
• That his contact with the Copyright Office was prompted by learning of the alleged infringement.

The Court held that this contradictory evidence would allow a jury to draw an inference for either party, making summary judgment inappropriate. The Court also denied summary judgment as to plaintiff Jones. The court found no evidence that Jones did know or reasonably should have known of the alleged infringement in April 2003.

Notice of Use

Plaintiffs’ failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant. Congress deleted the Notice of Use requirement effective January 1, 1978, long before any alleged infringement occurred.

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Judge Norgle dismissed plaintiff’s copyright infringement case for lack of personal jurisdiction, pursuant to Fed. R. Civ. P. 12(b)(2). The Court agreed with plaintiff that the alleged injury was suffered in Illinois because plaintiff was an Illinois resident. But that was not enough to create personal jurisdiction. Plaintiff identified no supported facts showing that defendants intended to impinge upon an Illinois interest or otherwise purposely availed themselves of Illinois.

And the individual defendants’ contract with plaintiff in Illinois did not create personal jurisdiction either. All of the individual defendants’ contracts occurred before the corporate defendant was incorporated. And after incorporation, the defendants did no business in Illinois or with Illinois residents. Defendants did maintain a website, but plaintiff’s evidence regarding the website was insufficient.

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Mitchell v. First Northern Credit Union, No. 07 C 1891, 2007 WL 2948374 (N.D. Ill. October 4, 2007) (Norgle, J.).

Judge Norgle granted defendant Arizona State Credit Union’s ("ASCU") motion to transfer to the District of Arizona pursuant to 28 U.S.C. Section 1404 in this patent dispute. The Court acknowledged that plaintiff’s chosen forum was given significant weight. But the ease of access to the evidence in Arizona dictated that the case be transferred. Plaintiff was an Arizona resident, at least as of his filing date. And ASCU, all of its documents and all of its employees were in Arizona.

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Chicago Architecture Foundation v. Domain Magic LLC, No. 07 C 764, Slip Op. (N.D.Ill. October 12, 2007) (Norgle, J.).

Judge Norgle denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Although defendant was a Florida corporation, defendant’s website – www.chicagoarchitecturefoundation.com – played upon plaintiff Chicago Architecture Foundation’s (“CAF”) name and only included links to other Chicago businesses. The Court, therefore, held that defendant’s website targeted the Northern District creating general personal jurisdiction.

Additionally, as a Fed. R. Civ. P. 37 sanction for failing to answer interrogatory responses as the Court ordered, the Court held that defendant generated revenue from the use of CAF’s trademark. 

Practice tip: Answer discovery requests on time and, if you cannot for some reason, at least answer them by the Court ordered deadline. 

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Metropolitan Life Ins. Co. v. Guardian Life Ins. Co. of Am., No. 06 C 5812, 2007 WL 1169704 (N.D. Ill. Apr. 17, 2007) (Norgle, J.).

Judge Norgle denied defendants' motion to stay based upon Colorado River abstention, which the Court noted was more properly referred to as Colorado River deference since it is not strictly abstention.  This case had a tortured procedural history: 

• Plaintiff Metropolitan Life Insurance ("MetLife") initially filed an action against corporate defendant Guardian Life Insurance ("Guardian") and certain former MetLife employees that had taken positions with Guardian based upon claims that the former employees had breached covenants in their employment agreements and stolen certain MetLife information to start a competing office for Guardian.  The state court dismissed those claims, but on appeal the the Illinois appellate court held that MetLife had voluntarily dismissed the claims. 
• MetLife also brought a related arbitration claim against Guardian and various former MetLife employees before the National Association of Security Dealers (the "NASD").  That action is still pending, but Guardian is no longer a party. 
• MetLife also sued Guardian and defendant O'M Associates (the "corporate defendants") and various former MetLife employees twice in the Northern District.  The first case was dismissed based upon a common arbitration provision in MetLife's employment agreement.
• The second case, which is the instant case, was brought only against the corporate defendants.

Defendants motion to stay argued that the Court should stay the case based upon the related, co-pending state court matter.  But the Court held that Colorado River deference was not applicable because the Illinois Supreme Court had already denied Guardian's petition for leave to appeal which was a final resolution of the state court case. 

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