Trademark Claims Sounding in Unjust Enrichment Not Entitled to a Trial by Jury

Posted on October 26, 2009 by R. David Donoghue

SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Aug. 19, 2009) (Darrah, J.).*

Judge Darrah granted plaintiff SPSS's motion to strike defendants' jury demand on their counterclaim. Defendants' claims for an injunction and destruction of items bearing the trademark were equitable and, therefore, not triable by a jury. And defendants' claim for attorney's fees is also not triable by a jury. 

The remaining claims for an accounting of SPSS's profits and a trebling of actual damages could be legal claims warranting a jury trial, but defendants had repeatedly characterized their claims as equitable unjust enrichment claims. And defendants could not claim actual damages from a breach of contract claim because the license that governed the parties' relationships was royalty-free. Defendants' counterclaims were, therefore, equitable and not triable to a jury.

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

 

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Alleged TM Owner's State of Mind is a Question of Fact

Posted on June 8, 2009 by R. David Donoghue

SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Apr. 2, 2009) (Darrah, J.).

Judge Darrah denied the parties' cross-motions for summary judgment.  Plaintiff SPSS sought a declaratory judgment that defendants, SPSS's founders and former officers, were estopped from asserting any rights pursuant to the parties' Trademark Agreement.  Defendants countersued for trademark infringement.  While still officers of SPSS, defendants entered a Trademark Agreement with SPSS by which defendants gave SPSS rights to use the SPSS trademark.  Defendants argue that SPSS's continued use of the SPSS mark is an infringement.  SPSS argued that it owns the mark and, as proof, cited various documents signed by a defendant when SPSS went public.  In those documents, defendants allegedly made assurances that SPSS owned its trademarks and otherwise failed to disclose the Trademark Agreement. 

The Court denied plaintiff's summary judgment motion because the parties disputed defendant's state of mind when the documents at issue were signed.  Because  estoppel required a finding as to defendant's intent when he signed the documents, summary judgment was not appropriate.  Similarly, the Court denied the parties' cross-motions regarding SPSS's trademark infringement claim.  There were factual disputes regarding defendant's conduct during the public offering, which party made the first sale using the SPSS mark, and SPSS's knowledge of the Trademark Agreement.

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IP in the Sun-Times and Tribune

Posted on January 4, 2008 by R. David Donoghue

The Chicago papers had a few IP-related articles this week. First, the Chicago Tribune reported – click here for the story -- that Chicago software company SPSS is in a trademark dispute with its co-founder and former chairman, Norman Nie. Nie has informed SPSS that he believes he owns SPSS’s trademark, which he licensed to SPSS beginning in 1976. Nie is reportedly offering to sell SPSS the mark for $20M.

Second, the Tribune reported – click here for the story – that Motorola and Metrologic Instruments settled their patent disputes regard bar code scanning and mobile computing technology for an undisclosed amount and a limited-term cross-licensing agreement. The Chicago Sun-Times ran a similar story – click here to read it -- and reported that Motorola entered the dispute with Metrologic based upon its 2006 acquisition of Symbol Technologies.

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