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

International Tax Advisors, Inc. v. Tax Law Assocs., LLC, No. 08 C 2222, Slip Op. (N.D. Ill. Feb. 15, 2011) (Valdez, Mag. J.)

Judge Valdez denied plaintiffs' (collectively "ITA") motion for summary judgment, and granted defendants' (collectively "TLA") motion for summary judgment as to ITA's copyright claim, and chose not to retain supplemental jurisdiction over ITA's remaining state law claims. While ITA may have had evidence to support its copyright claim, it did not properly cite to that evidence via its Local Rule 56.1 statement of uncontested material facts. And to the extent ITA cited directly to evidence it did so generally by description, without exhibit numbers or specific page cites.

The Court granted TLA summary judgment of noninfringement because ITA did not properly cite to facts in its Local Rule 56.1 statement showing a question of material fact.

The Court also granted TLA summary judgment as to ITA's RICO claim because ITA only alleged one of the required two predicate acts. 

Finally, the Court declined to exercise supplemental jurisdiction over the remaining claims.

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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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Valley Entertainment, Inc. v. Friesen, No. 08 C 3470, Slip Op. (N.D. Ill. Feb. 17, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendants summary judgment of noninfringement regarding plaintiff Valley Entertainment's ("Valley") copyright infringement claim regarding certain songs by the artist Raphael. The Court also granted defendants' motion to strike Valley's newly identified copyright, SR 107-850. Finally, the Court declined to exercise supplemental jurisdiction over Valley's remaining state law claims. Valley's asserted copyright covered only words and arrangement of sheet music, but defendants' alleged infringement was based upon the use of sound recordings of the songs at issue. Valley did not challenge this analysis, instead identifying a new copyright, SR 107-850, that covers sound recordings. But the Court struck that copyright because it was not identified until briefing of the summary judgment motion. The copyright was not identified in Valley's complaint or in any of Valley's numerous discovery responses as a basis for Valley's copyright infringement claims. The Court noted that Valley was no longer free to update its discovery pursuant to Fed. R. Civ. P. 26(a) because the update would no longer be timely.

Having resolved Valley's federal claims, the Court declined to exercise supplemental jurisdiction over Valley's related state law claims.

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Strom v. Strom Closures, Inc., No. 06 C 7051, 2008 WL 489363 (N.D. Ill. Feb. 20, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted plaintiff Victoria Strom’s (“Strom”) motion to dismiss defendants’ (collectively “SCI”) counterclaims. SCI filed an earlier suit charging Strom with patent infringement. The parties settled that suit pursuant to a Settlement Agreement (“Agreement”). SCI alleged that Strom breached the Agreement and was once again, therefore, infringing SCI’s patents. But the Court held that once a district court dismisses a case with prejudice, it cannot reopen the case for enforcement of a related agreement without independent jurisdiction. SCI’s appropriate claim was for breach of the Agreement, not patent infringement. Because breach of the Agreement was a state law claim and because there was no diversity (SCI pled that all parties were Illinois residents), the Court lacked jurisdiction. Finally, the Court held that there was not supplemental jurisdiction based upon Strom’s federal employment claims. Strom’s claims and the breach of the Agreement were not sufficiently related.

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Schrock v. Learning Curve Int’l, Inc., No. 04 C 6927, Slip Op. (N.D. Ill. Jan. 29, 2008) (Shadur, J.).*

Judge Shadur granted defendants’ motion for summary judgment of non-infringement and dismissed plaintiff’s related state law claims. Plaintiff took a series of photographs of defendants’ Thomas & Friend toy trains, each pursuant to a provision that defendants could only use the photographs for two years. Plaintiff argued that defendants infringed plaintiff’s copyrights by using the photographs after the two years were up. 

But the Court held that plaintiff had no copyright. The photographs were derivative works based upon defendant’s copyrighted Thomas & Friends train engines and cars. The party making a derivative work must have the copyright holder’s permission to copyright the derivative work. While plaintiff had the right to make the derivative works, plaintiff was not granted the right to copyright them. Plaintiff, therefore, had no copyright. And because plaintiff’s state law claims were based on supplemental jurisdiction, they were dismissed without prejudice.

The Court also noted that President Abraham Lincoln, a month before his assassination, signed the bill making photographs copyrightable for the first time.

*  Click here for a copy of the opinion.

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