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

Yes! Following the rules, all of them, matters – federal and local, substantive and procedural, big and small. Regular readers will not be surprised by my answer. I have repeatedly reminded people, as do the Northern District judges (click here for examples of both), to comply with Local Rule 56.1.

But I also think it matters for more “minor” rules, such as the newly revised Fed. R. Civ. P. 11 & 26, which now require that counsel include an e-mail address along with a physical address and phone number (click here for my previous post on the December 1, 2007 Fed. R. Civ. P. amendments.)

My experience since December 1 is that most attorneys are not following the e-mail address requirement. It is unlikely that courts will sanction counsel for failure to provide an e-mail address, but to me, and I presume to at least some judges and clerks, it signals sloppy lawyering. It says that counsel is not staying current with changes in the profession. And it makes me wonder what else counsel is not current with. Have they explored the significant codification of electronic discovery rules from December 1, 2006? At least it is unprofessional, and at most it is an indication of a lack of knowledge of the current state of the law — a significant advantage to those of us that keep current.

Am I overreacting because these are "minor" rules that likely are not sanctionable? Comment to this post or send me an e-mail with your thoughts. I will post about whatever feedback I receive (without names, of course).

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As promised last week, here are highlights of the substantive changes to the Federal Rules of Civil Procedure that went into effect last Saturday, December 1st:*

• New Rule 5.2 Privacy Protection  This rule limits what personal information can be left in public pleadings without redaction, unless a court orders the information to be publicly filed. Public filings may only include:  the last four digits of a social security number, tax identification number or other financial account number; the year of a person’s birth; and the initials of known minors (not whole names). All other information must be redacted or left out of the papers.

• Rule 11 Signing Pleadings  Signature blocks on all filings must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 11 note that inclusion of an email address is a courtesy and is not an automatic consent to email service. For that, you still have to get a separate agreement with the opposing party.

• Rule 26 Discovery  As with Rule 11, signature blocks on all discovery papers must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 26 note that if a party lacks an email address, a physical address or a telephone number, the party need not supply the nonexistent information. So, at least Rule 26 does not require that counsel get email accounts.  But Rule 11 does not have the same exception, so arguably Rule 11 does require that counsel have email accounts.

* This is only a summary of the substantive changes that I found most interesting or important. It is not a detailed explanation of all substantive changes.  For example, I did not explain the changes to Fed. R. Civ. P. 4 regarding summonses. If you want detailed advice regarding the Federal Rules, please consult your attorney or dig in to your copy of the Federal Rules.

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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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