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

Mike Atkins at the Seattle Trademark Lawyer has an interesting post -- click here for the post -- about a pending Chinese trademark infringement suit, in which plaintiff seeks monetary damages and a public apology to be published in newspapers.  IP Dragon follows up Atkins's post, explaining that an apology is a Chinese trademark remedy and that an apology is a punishment in a "face saving culture," as IP Dragon describes China and Japan, the nationalities of the two entities involved in the suit.  Click here for IP Dragon's post.

But punishment or not, this raises an interesting question for US trademark law.  It seems to me that a public apology (or acknowledgement of the infringement) would be a more powerful tool for the consumers that trademark law intends to protect than just monetary damages and an injunction.  An acknowledgement of the infringement would warn consumers who might still unwittingly purchase items based upon the infringing marks after the injunction is in place.  Maybe it is time to amend the Lanham Act.

 

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The Northern District had 72 trademark cases filed during the first half of 2008.  That is well on the way to meeting or exceeding 2007's total of 138 cases -- click here to read about the 2007 case filings.  So, it looks like, as with patents, the Northern District continues to have an active trademark infringement docket.  A difficult economy is not slowing the Northern District's IP cases.

Thanks to Mike Atkins at the Seattle Trademark Lawyer for the idea of a mid-year status report.  Expect a similar copyright mid-year report shortly.

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Blawg Review #155 is up at the California Blog of Appeal.  It focuses on (bad) poetry in honor of National Poetry Month and takes a look at stress in the legal profession.

Also, the excellent Las Vegas Trademark Attorney has a detailed post -- click here for the post -- about the Roscoe's v. Rosscoe's Chicago chicken and waffle restaurant trademark suit that I posted about last week -- click here for the post.

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There were 138 trademark cases filed in the Northern District during 2007, a 9% decrease from the 151 patent cases filed in 2006.  Of those 138 cases, nearly half, 66, were disposed of during 2007. 

A list of each case, the case number, the filing date and, where appropriate, the date the case was resolved are provided after the jump. Earlier this week, I did a similar post regarding patent filings (click here for the post). Look for a similar trademark post next week.

A hat tip to the Maryland Intellectual Property Law Blog for its 2007 IP review series that pushed me to start my own review of 2007 IP cases.

1:07-cv-0059

Concord Brands, ULC et al v. Taste of Nature, Inc.

filed 01/04/07   closed 10/30/07

1:07-cv-00085

Midwest Canvas Corp. v. Commonwealth Canvas, Inc.

filed 01/08/07

1:07-cv-00167

Gencor Pacific, Inc. v. Nature's Thyme, LLC et al

filed 01/10/07   closed 04/24/07

1:07-cv-00168

Gencor Pacific, Inc. v. Federal Laboratories Corporation et al

filed 01/10/07

1:07-cv-00273

Aquascape Designs, Inc. v. Savio Engineering, Inc.

filed 01/16/07   closed 06/05/07

1:07-cv-00458

Jensen Reporting, Inc. v. Gillani et al

filed 01/24/07

1:07-cv-00523

Habersham Plantation Corporation v. Habersham Home Interiors, LLC et al

filed 01/26/07   closed 03/15/07

1:07-cv-00657

Maclean Power, LLC v. PDEX USA, Corp. et al

filed 02/02/07

1:07-cv-00668

Steiner Industries, Inc. et al v. Auburn Manufacturing, Inc.

filed 02/02/07

1:07-cv-00695

L.C. Industries, Inc. v. Mahco, Inc.

filed 02/05/07   closed 08/16/07

1:07-cv-00757

Double Eagle Brands, N.V. et al v. Domingo et al

filed 02/08/07   closed 05/02/07

1:07-cv-00764

Chicago Architecture Foundation v. Domain Magic, LLC

filed 02/08/07   closed 10/31/07

1:07-cv-00774

Americash Loans, LLC et al v. Americash Advance, LLC et al

filed 02/08/07   closed 10/16/07

1:07-cv-00865

Chicago Tribune Company v. Fox News Network, LLC

filed 02/14/07   closed 06/18/07

1:07-cv-00909

Essex Realty Group, Inc. et al v. Essex Real Estate Group, LLC et al

filed 02/16/07   closed 07/12/07

1:07-cv-00917

Koon Chun Hing Kee Soy & Sauce Factory Ltd. vs. Midwest Global Food Distributors LLC

filed 02/16/07   closed 07/25/07

1:07-cv-00946

American Taxi Dispatch, Inc. v. American Eagle Taxi & Limo Service, Inc.

filed 02/20/07   closed 07/26/07

1:07-cv-00948

American Taxi Dispatch, Inc. v. AAA American Taxi & Limo

filed 02/20/07   closed 05/02/07

1:07-cv-01086

Golden Golf Lighting, Inc. et al v. Greenwich Industries, L.P.

filed 02/23/07

1:07-cv-01092

Harris N.A. v. First National Mortgage Sources, LLC et al

filed 02/26/07   closed 07/25/07

1:07-cv-01111

Playboy Enterprises International, Inc. v. 3E Trading, LLC

filed 02/26/07   closed 01/03/08

1:07-cv-01216

GLJ, LLC v. Excalibur Electronics, Inc.

filed 03/02/07   closed 06/28/07

1:07-cv-01249

Ram International I, LLC v. The Ram Restaurant and Bar, Inc., et al

filed 03/05/07   closed 06/26/07

1:07-cv-01295

Tangerine Promotions, Ltd. v. Treasure Island Corporation

filed 03/07/07   closed 11/13/07

1:07-cv-01318

Clarence J. Venne, L.L.C.

filed 03/08/07   closed 05/10/07

1:07-cv-01545

Gloria Jean's Gourmet Coffees Franchising Corp. v. Alia Bros Group et al

filed 03/20/07   closed 08/17/07

1:07-cv-01558

Brownstone Publishing, LLC v. Gross et al

filed 03/20/07

1:07-cv-01588

The Monarch Beverage Company, Inc. et al v. Rush Beverage Company

filed 03/21/07   closed 06/01/07

1:07-cv-01668

Eva's Bridal Ltd. v. Halanick Enterprises, Inc.

filed 03/26/07

1:07-cv-01675

A. Hardy/U.S.A., Ltd. v. V&S Vin & Spirit Aktiebolag

filed 03/26/07

1:07-cv-01735

Superfund Unternehmensbeteiligungs-AG et al v. Super Fund Financial Group, Inc.

filed 03/28/07   closed 07/09/07

1:07-cv-01762

Red Bull North America Inc. et al v. Selective Publishing, Inc et al

filed 03/29/07

1:07-cv-01771

Varitalk, LLC v. Lahoti et al

filed 03/30/07   closed 08/27/07

1:07-cv-01784

Canadian Thermal Windows, Inc. et al v. Magic Window Company

filed 03/30/07   closed 06/05/07

1:07-cv-01874

Executive Image Limousine, Inc. et al v. Exotic Limousines, Inc. et al

filed 04/05/07

1:07-cv-01875

Firefly Energy, Inc. v. Firefly Solar Store, LLC

filed 04/05/07   closed 05/21/07

1:07-cv-01878

Videojet Technologies Inc. v. Matrixx Fixx, Inc.

filed 04/05/07   closed 06/21/07

1:07-cv-01934

Private Management Group v. Wild Oats Markets, Inc. et al

filed 04/09/07

1:07-cv-01956

T 7 Group, LLC v. Sutton

filed 04/09/07

1:07-cv-02025

Motorola, Inc. v. Power Cell International, Inc.

filed 04/12/07   closed 07/11/07

1:07-cv-02046

HMC Holdings, LLC v. Perito et al

filed 04/13/07

1:07-cv-02054

Sikder Holdings, Inc. et al v. R & B Resturant Group, Ltd. et al

filed 04/13/07   closed 12/18/07

1:07-cv-02159

True Value Company v. Trainor et al

filed 04/18/07   closed 06/28/07

1:07-cv-02208

Columbian Home Products, LLC v. Chen et al

filed 04/20/07   closed 09/06/07

1:07-cv-02287

Pasatiempos Gallo, S.A. de C.V. et al v. Hebron Wholesale, Inc. et al

filed 04/25/07   closed 10/12/07

1:07-cv-02307

Fellowes, Inc. v. Valiunas et al

filed 04/26/07   closed 09/19/07

1:07-cv-02420

Flavorchem Corporation v. Flavorchem International

filed 05/01/07

1:07-cv-02523

Pasatiempos Gallo, S.A. de C.V. et al v. Martinez et al

filed 05/04/07   closed 10/18/07

1:07-cv-02602

American Taxi Dispatch, Inc. v. American Metro Taxi & Limo Co.

filed 05/09/07

1:07-cv-02643

American Taxi Dispatch, Inc. v. All American Taxi & Limo, Inc.

filed 05/10/07   closed 08/16/07

1:07-cv-02644

World Kitchen, LLC et al v. Robinson Home Productts, Inc

filed 05/10/07   closed 10/31/07

1:07-cv-02736

Advantage Human Resourcing, Inc. v. Advantage Professionals LLC

filed 05/15/07

1:07-cv-02739

DBS Communications, Inc. v. First Ecorp Investors Group LLC et al

filed 05/15/07   closed 07/27/07

1:07-cv-02783

Medline Industries, Inc. v. Strategic Commercial Solutions, Inc. et al

filed 05/17/07

1:07-cv-02813

Meyer Company, The v. Brightway Industry Co., Ltd.

filed 05/18/07   closed 07/31/07

1:07-cv-02844

Cosmetic Warriors Limited v. Lush, Inc.

filed 05/22/07   closed 08/09/07

1:07-cv-02845

Argus Camera Company, LLC v. Eastern Europe, Inc. et al

filed 05/22/07   closed 09/12/07

1:07-cv-02883

Kids Hope USA, Inc. v. Kids Hope United, Inc.

filed 05/23/07

1:07-cv-02906

American Taxi Dispatch, Inc. v. American Star Taxi, Corp.

filed 05/24/07   closed 07/23/07

1:07-cv-02965

Thomas M. Steffan, Inc. v. Iovate Health Sciences U.S.A. Inc.

filed 05/25/07   closed 09/12/07

1:07-cv-03012

Six Continents Hotels, Inc. et al v. Hillside Hospitality, Inc. et al

filed 05/30/07

1:07-cv-03080

Federal Express Corporation v. Fedex Lending Corporation

filed 06/01/07   closed 10/23/07

1:07-cv-03121

Kimberly-Clark Corporation et al v. Medline Industries, Inc.

filed 06/04/07

1:07-cv-03124

Israel v. Amaru Entertainment, Inc.

filed 06/04/07

1:07-cv-03227

E! Entertainment Television, Inc. v. Barker et al

filed 06/07/07

1:07-cv-03334

Pizzeria Uno Corporation v. Numero Uno Pizzeria, Inc. et al

filed 06/13/07   closed 11/15/07

1:07-cv-03388

Zec S.p.A. v. Gang Yan Diamond Products, Inc.

filed 06/15/07   closed 07/16/07

1:07-cv-03389

Rieke Corporation v. American Flange & Manufacturing Co. Inc.

filed 06/14/07

1:07-cv-03422

Nashua Corporation v. Seibt

filed 06/18/07   closed 07/25/07

1:07-cv-03426

Allied Van Lines, Inc. v. Yachini et al

filed 06/18/07   closed 10/10/07

1:07-cv-03776

Lee & Lee Enterprise, Inc. v. Kabir et al

filed 07/05/07

1:07-cv-03885

WMH Tool Group, Inc. v. Woodstock International, Inc. et al

filed 07/10/07

1:07-cv-03894

American Taxi Dispatch, Inc. v. A AAA American Limo & Taxi Service, Inc. et al

filed 07/11/07   closed 09/11/07

1:07-cv-03897

Square D Company v. Gaffney-Kroese Supply Corporation

filed 07/11/07

1:07-cv-03993

Aguila Records, Inc. v. Federico

filed 07/17/07

1:07-cv-04056

American Taxi Dispatch, Inc. v. Olinska et al

filed 07/19/07   closed 08/28/07

1:07-cv-04085

Four Seasons Heating & Air Conditioning, Inc. v. Four Seasons Heating & Air Cooling, Inc.

filed 07/20/07

1:07-cv-04086

Aller-Caire, Inc. v. American Textile Company

filed 07/20/07

1:07-cv-04094

Lettuce Entertain You Enterprises, Inc. v. Lettuce Planet, Inc. et al

filed 07/20/07   closed 01/07/08

1:07-cv-04148

Jimmy John's Enterprises, LLC et al v. Dotmenu, Inc.

filed 07/23/07   closed 09/06/07

1:07-cv-04248

Valbia S.r.1. v. AVK Carbo-Bond, Inc.

filed 07/30/07   closed 10/22/07

1:07-cv-04271

Palantir.net, Inc. v. Palantir Technologies, Inc.

filed 07/30/07   closed 11/27/07

1:07-cv-04327

Lucifer Lighting Company v. Luziferlamps SL. et al

filed 08/01/07

1:07-cv-04334

Wade v. Power et al

filed 08/01/07   closed 12/20/07

1:07-cv-04467

Fergon Architects LLC. v. Normandy Construction Co Inc et al

filed 08/08/07   closed 10/17/07

1:07-cv-04620

American Taxi Dispatch, Inc. v. American O'Hare Limousine, Inc.

filed 08/16/07   closed 10/02/07

1:07-cv-04621

American Taxi Dispatch, Inc. v. Sultana et al

filed 08/16/07   closed 09/20/07

1:07-cv-04645

American Automobile Association v. AAA Muffler & Brakes IV, Inc. et al

filed 08/17/07   closed 10/18/07

1:07-cv-04673

American Taxi Dispatch, Inc. v. Chia

filed 08/20/07   closed 11/26/07

1:07-cv-04691

Chanel, Inc. v. Foster et al

filed 08/20/07

1:07-cv-04718

Bobak Sausage Company v. A&J Seven Bridges Inc et al

filed 08/21/07

1:07-cv-04752

Maxxsonics USA Inc v. Sam's Electronics Corporation

filed 08/22/07

1:07-cv-04808

Gino's East Services LLC v. Inserra et al

filed 08/24/07

1:07-cv-04977

SMW Autoblok Spannsysteme GmbH et al v. Clausing Industrial, Inc.

filed 09/04/07

1:07-cv-05012

Reproductive Options Of Illinois, Inc v. Conceivable Solutions, INC

filed 09/06/07   closed 11/20/07

1:07-cv-05033

CCO Entertainment, LLC v. CCO Arenas, LLC et al

filed 09/06/07

1:07-cv-05075

Auburn Manufacturing, Inc. v. W.W. Grainger, Inc. et al

filed 09/10/07

1:07-cv-05090

Diners Club International Ltd. v. Scarano et al

filed 09/10/07   closed 12/21/07

1:07-cv-05227

Brown's Chicken and Pasta, Inc. v. Independent Me, Inc.

filed 09/14/07   closed 12/17/07

1:07-cv-05288

Siemens A.G. v. Marketnet, Inc. et al

filed 09/19/07

1:07-cv-05292

Third Base Inn Inc v. Wideboy Inc

filed 09/19/07

1:07-cv-05303

Bodum USA, Inc. et al v. Starbucks, Corp.

filed 09/19/07

1:07-cv-05402

Las Asadas Inc. v. Barraza, Inc. et al

filed 09/25/07   closed 12/18/07

1:07-cv-05508

Spartan Tool, L.L.C. v. Edwards

filed 09/28/07   closed 12/10/07

1:07-cv-05717

Touch Automation, LLC v. Dynapace Acquisition, LLC

filed 10/09/07   closed 11/07/07

1:07-cv-05828

Garcia v. City of Chicago

filed 10/15/07

1:07-cv-05870

TY, Inc. v. Wal-Mart Stores, Inc.

filed 10/17/07   closed 12/13/07

1:07-cv-06057

MBA Exchange, Ltd. et al v. MBA Consultant Exchange

filed 10/26/07   closed 01/09/08

1:07-cv-06092

Moran Industries Inc v. Higdon et al

filed 10/29/07

1:07-cv-06118

Microsoft Corporation v. Cyber Cycle, Inc. et al

filed 10/30/07

1:07-cv-06150

Saputo Cheese USA Inc. v. Societe De La Fromagerie Boursin

filed 10/31/07

1:07-cv-06225

Vans Inc. v. Cut Flowers Wholesale, Inc.

filed 11/02/07

1:07-cv-06294

Square D Company

filed 11/06/07

1:07-cv-06300

Briefing.com, Inc. v. Market Valuaton Insitute, LLC

filed 11/06/07

1:07-cv-06302

Bodum USA, Inc. v. LaCafetiere, Inc.

filed 11/06/07

1:07-cv-06352

Bodum USA Inc. v. Epoca Inc

filed 11/08/07

1:07-cv-06389

Calumet Carton Company v. Box Packaging, Inc.

filed 11/09/07

1:07-cv-06518

TS Merchandising Ltd. et al v. Hollings et al

filed 11/16/07

1:07-cv-06528

BlueStar Energy Services, Inc. v. BlueStar Energy, Inc.

filed 11/16/07

1:07-cv-06552

DM Systems Inc v. DeRoyal Industries Inc

filed 11/19/07

1:07-cv-06597

Tranzact Technologies, Inc. v. Freedom Logistics, Inc. LLC

filed 11/21/07

1:07-cv-06682

True Value Company v. Popp Hardware, Inc.

filed 11/28/07

1:07-cv-06718

Ready Set Service, LLC et al v. Greenwood et al

filed 11/29/07

1:07-cv-06785

Racing Speed Associates, L.L.C. v. Varney et al

filed 12/03/07

1:07-cv-06803

GMAC Real Estate, LLC v. Garrow Real Estate, LLC et al

filed 12/04/07

1:07-cv-06825

Tiger Accessory Group, L.L.C. v. Pilot Automotive, Inc.

filed 12/04/07

1:07-cv-06847

Safran LLC v. Safran S.A. et al

filed 12/05/07

1:07-cv-06895

Clark et al v. De Doncker

filed 12/06/07

1:07-cv-06908

BBS of America, Inc. v. Raderwerks L.L.C.

filed 12/07/07

1:07-cv-06987

Custom Accessories, Inc. v. Ford Motor Company

filed 12/12/07

1:07-cv-07110

GZ Gourmet Food and Beverage, Inc. v. Radioactive Energy of Illinois, LLC et al

filed 12/18/07

1:07-cv-07113

Viridian Spirits LLC v. New Holland Brewing Company LLC

filed 12/18/07

1:07-cv-07176

Best Vacuum Inc v. MH Vacuum & Sewing Machine

filed 12/21/07

1:07-cv-07193

Grow Modern Kids LLC v. Robertson et al

filed 12/21/07

1:07-cv-07236

HRFC Corporation v. Meridian Capital Group, LLC

filed 12/26/07

1:07-cv-07286

Jimmy John's Enterprises, LLC et al v. Ynot Advertising, LLC

filed 12/28/07

3:07-cv-50211

Thirty Eight Street, Inc. et al v. Pebco, Inc.

filed 10/19/07

3:07-cv-50220

Ultrasonic Power Corporation v. Crest Ultrasonics Corp

filed 11/06/07

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Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2728754 (N.D. Ill. Sep. 13, 2007) (Guzman, J.).

Judge Guzman conducted a Fed. R. Civ. P. 72 de novo review of Magistrate Judge Cole’s report which recommended that the Court hold defendant in contempt for violating the Court’s permanent injunction limiting defendant’s use of plaintiff’s Coilcraft mark (click here for further discussion in the Blog’s archive). The Court adopted Judge Cole’s Report in its entirety and gave plaintiff fourteen days to submit a proposed order and proof of its attorneys' fees and costs related to this motion. The Court also held that Judge Cole was not required to hold an evidentiary hearing before issuing the Report because there were no genuine issues of material fact. The dispute was governed by the language of the Court’s injunction which was not disputed. And the only issue was whether defendant’s advertisements, the contents of which were not disputed, violated the injunction – a matter of law.

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Sunstar, Inc. v. Alberto-Culver Co., No. 01 CV 736 & 5825, 2007 WL 2410069 (N.D. Ill. Aug. 22, 2007) (Guzman, J.).

Judge Guzman denied defendants’ Fed. R. Civ. P. 59 motion for a new trial and Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and granted plaintiff’s motion for a permanent injunction, among other things assigning all trademarks at issue to plaintiff and enjoining defendants from using plaintiff’s trademarks. The Court held that the jury’s verdict of a breach of contract without a damages award was not inconsistent and, therefore, did not warrant a new trial. The jury was free to find that the contract was breached and to award nominal damages. But because plaintiff did not argue for nominal damages an award of no damages was warranted. Defendants also argued that the jury’s verdict was not supported by the evidence because plaintiff’s survey was not sufficient proof actual confusion. But the Court held that plaintiff’s breach-by-infringement claim only required proof of likely confusion. The jury could have considered the survey sufficient to prove likely confusion. Furthermore, plaintiff introduced fact evidence in addition to the survey which supported the jury’s findings, including the similarity of the marks at issue and the sale of similar products using the marks in the same areas as plaintiff’s trademarked products.

Finally, the Court enjoined defendants from, among other things using plaintiff’s trademarks and required that defendants assign any interest in the marks at issue to plaintiffs. Defendants argued that the Court could not require assignment of the marks to plaintiff because plaintiff never sought transfer of the marks in its complaint. But the Court held that plaintiff was seeking equitable relief that was appropriate in light of the jury’s verdict.

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According to Interbrand Ronald is worth more than Mickey.  Interbrand has just published its 2007 Best Global Brands, ranking the top 100 brands that:  1) derive at least a third of earnings outside of the brand’s home country; 2) are recognized beyond the brand's customer base; and 3) have public marketing and financial data.  Interbrand also excludes brands that are hard to identify as having brand value separate from their products or services. For example, pharma brands are excluded because Interbrand has determined that consumers focus on products rather than the overarching company branding. That leaves Northern District companies like Abbott Labs out of the running.  But the Northern District is still very well represented.  For example, McDonald's jumped one spot this year, surpassing Disney in brand value.  Here are the Northern District companies (or at least those very near the Northern District) on the list:

Northern District Top Global Brands

07 Rank	06 Rank	Company	07 Brand Value (in USD Millions)
8	9	McDonald's	29.398
59	59	Wrigley's	5.777
77	69	Motorola	4.149
86	79	Kraft	3.732

Thanks to the Seattle Trademark Lawyer for identifying the ranking.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).

Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s "Beef Stick" and "Turkey Stick" marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”

The Court also held that plaintiff’s evidence of its advertising investment and market share had not effect on the Court’s ruling that the marks were generic. A company’s marketing and advertising expenditures cannot make a mark less generic. Additionally, the fact that there is another generic term (summer sausage) for beef sticks and turkey sticks does not mean that beef stick and turkey stick cannot also be generic.

Practice Tip:  If you think you need evidence to survive summary judgment make your Rule 56(f) motion before or with your response brief.  Do not wait for a motion for reconsideration.

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Papa John's Int'l, Inc. v. Rezko, No. 04 C 3131, 2007 WL 1521472 (N.D. Ill. May 21, 2006) (Moran, J.).

Relying on its prior opinion, which included a detailed analysis of the Complaint and notice pleading standards (you can read discussion of that opinion in the Blog's archives), the Court denied defendants' various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff's trade secret and trademark infringement claims.  Defendants argued that plaintiff did not sufficiently which defendants were alleged to have performed the acts at issue.  But the Court reasoned that defendants had notice of plaintiff's claims and that notice is all the Federal Rules require.  The Court pointed out that it had "covered much of this same ground in much greater detail" in its prior opinion and cautioned that "this case will not go away for any defendant by a motion to dismiss . . . ."

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs' right to record new music with producers or record labels of plaintiffs' choice.  The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH") -- in addition to clicking on "Hawthorne Heights" to go to the band's website, you can also read about them on Wikipedia, listen to them online or see them live June 12th in Urbana, Illinois's Canopy Club.  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  In a prior opinion (discussed in the Blog's archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement.  Based upon the Court's ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH's efforts to record new music with a third party.  Defendants cross-moved to prevent HH from working with anyone but defendants.  The Court held that HH showed a likelihood of success on the merits based upon the Court's prior ruling that the Agreement was not exclusive.  Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling.  Because defendants had no likelihood of success, their motion for a PI was denied.  Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.

The Court found that HH would suffer irreparable harm without an injunction.  The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction.  The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants "within a reasonable time."

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Super Wash, Inc. v. Allen, No. 06 C 50169, Slip Op. (N.D. Ill. Apr. 20, 2007) (Mahoney, Mag. J.).

Magistrate Judge Mahoney recommended dismissing one group of defendants' ("Genecor defendants") motion to enforce the settlement agreement and the other group's ("MJR defendants") motion for judgment and sanctions.  Plaintiff alleged that defendants infringed its trademarks related to its "Super Wash" car washes, engaged in Lanham Act unfair competition, falsely designated its origins pursuant to the Uniform Deceptive Trade Practices Act and related state law claims.  Shortly after the case was filed, it was stayed to allow settlement discussions and a settlement conference was held by the Court.  At that conference the parties agree that an agreement was reached, but disagree as to its scope and power.  Plaintiff alleged that a settlement had been reached on some terms subject to resolving the remaining terms and memorializing the agreement in writing.  The defendants, on the other hand, all agree that a binding settlement was agreed to and read aloud by the Court.  Defendants agreed that they were required to:  1) pay plaintiff a sum of money; 2) stop using plaintiff's marks; 3) provide plaintiff reasonable assistance in removing the marks from the internet, phone books, etc. and 4) were not required to admit liability.  But the Genecor defendants believe the agreement stipulated that neither the settlement agreement or any discovery from the case could be used in a pending state court case.  The MJR defendants believe there was no limitations on the use of information from or about the instant case in the pending state court case.  The Court, therefore, held that it could not grant defendants' motions to enforce the agreement or enter sanctions related to it.  There was no evidence of a meeting of the minds as to the use of information from the case in the state court case, which was a material term of the agreement.  And Illinois law required a meeting of the minds on a settlement's major terms in order to have an enforceable oral settlement agreement.

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GMAC Real Estate, LLC v. E.L. Cutler & Assocs., Inc., 472 F. Supp.2d 960 (N.D. Ill. Oct. 20, 2006) (Bucklo, J.).

Judge Bucklo held that the Court lacked personal jurisdiction over defendant and dismissed plaintiff's complaint.  Plaintiff, a franchiser of residential real estate brokerages, brought this suit alleging that defendant, a former franchisee, breached its agreement with plaintiff and after the breach continued using plaintiff's trade and service marks.  The Court held that defendant's continued business relationship with plaintiff after plaintiff moved from New Jersey to Illinois was not sufficient to create specific jurisdiction.  While defendant had exchanged some communications with plaintiff in Illinois and come to Illinois for business meetings on one or more occasions, the Court lacked jurisdiction because the parties negotiated the underlying agreement in New Jersey (plaintiff's prior main office) and Ohio (defendant's location); defendant paid its franchising fees to plaintiff's Pennsylvania office; defendant's post-termination obligations which it allegedly did not meet were to have been performed in Ohio; and plaintiff's letter to defendant terminating the franchise agreement had a New Jersey return address.  Furthermore, the Court held that the location of defendant's alleged trademark infringement and cybersquatting was in Ohio, not Illinois.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, 2007 WL 684047 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran held that the parties' contract was not exclusive and, therefore, granted in part and denied in part defendants' Rule 12(c) motion to dismiss.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH").  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  The Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which meant that HH was free to record other songs or records with another company during the life of the Agreement.  The Court also held that the only way HH's songs can be considered a work-for-hire owned by defendants is if HH were defendants' employees.  But the Court was unable to decide that issue on the pleadings.  As a result, the Court also could not decide HH's copyright and trademark infringement claims on the pleadings because whether defendants could have infringe requires a determination of whether HH or defendants own the marks.  The opinion also contains a very detailed analysis of Illinois choice of law issues for the related state law claims.

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Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.).

Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant's ("plaintiff") duty to defend defendants against Lanham Act and related state law claims.  Defendants were sued by third party Acushnet which accused defendants of willful and intentional violation of Acushnet's marks related to its Titlest Pro VI golf ball based upon defendants' alleged marketing of counterfeit golf balls.  Defendants sought defense and indemnification from plaintiff, their insurer.  Defendants' insurance policy covered, among other things, defendants' infringement of third party marks or copyrights in defendants' advertising so long as the infringement was not done with knowledge or intent of the infringement.  Although the Complaint charges defendants' with willful and intentional violations of the marks, the Lanham Act provides claims without regard to intent.  Because not all of Acushnet's claims require intent, plaintiff has a duty to defend defendants' against the suit.  The Court did note, however, that should Acushnet prove that defendants' acts were willful and intentional, plaintiff would have no duty to indemnify.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement. 

Defendants did not challenge plaintiff's evidence on its trademark, IDTPA or other related state law claims and, it appears, did not fully respond to plaintiff's Local Rule 56.1 statement.  In fact, defendants' only defense was LPH's argument that they were not liable because the alleged infringement and related acts occurred after LPH sold the hotel to GCI.  But the Court denied this defense because LPH did not challenge plaintiff's statement of fact paragraph 37 which stated that at the time of sale LPH was aware that GCI intended to operate the hotel using the Days Inn Marks.  Paragraph 37 also stated that LPH neither removed the Days Inn Marks from the hotel themselves,  nor obligated GCI to remove them.  The Court held that LPH's actions as detailed in, at least, paragraph 37 "far surpass[ed]" the "willful blindness standard of contributory infringement.

Practice tip:  Make sure that you fully respond to each issue raised in every paragraph of your opponent's Local Rule 56.1 statements of material fact. 

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Papa John's Int'l, Inc. v. Rezko, __ F. Supp.2d __, 2006 WL 1843121 (N.D. Ill. June 29, 2006) (Moran, J.).

In partially granting Rezko's Motion to Dismiss, Judge Moran looked at notice pleading standards across a variety of intellectual property and addressed the individual defendant's personal liability for the acts of his company.

Judge Moran agreed with defendants that the complaint lacked factual support for its trademark infringement claims (specifically failing to explain the likelihood of confusion), but found that the complaint met the notice standard, citing Judge Easterbrook's recent Seventh Circuit opinion (Simpson v. Nickel, __ F.3d __, 2006 WL 1585445 (7th Cir. 2006)) reaffirming that complaints should not be dismissed because they are conclusory and that complaints need only allege the "bare minimum facts" necessary for notice. Accordingly, it was enough that plaintiff alleged that defendants used plaintiff's marks and other confusingly similar marks to continue operating a pizza business. Plaintiff's conclusory statements that defendants continued selling pizza using ingredients not supplied, and therefore not quality-controlled, by plaintiff was also sufficient for plaintiff's trademark dilution claim.

Judge Moran dismissed plaintiff's copyright claim, however, because it only alleged that defendants "ma[de] unauthorized use" of the marks, without any explanation of what those uses were. This conclusory statement did not allow Judge Moran to determine whether plaintiff was alleging that defendants made derivative works from plaintiff's copyrighted materials, used ideas from the materials, which would not be an infringement, or just kept possession of copyrighted materials, which would be a contract claim.

On the final notice pleading issue, Judge Moran discussed in detail the tension between notice pleading and the Seventh Circuit's requirement that plaintiff must identify "concrete secrets" in trade secret misappropriation claims. The court found that plaintiff's "vague and conclusory" allegations of the misappropriation of plaintiff's "Papa John's System" were sufficient, although it noted that plaintiff would need to specifically identify the secrets at issue eventually and encourage plaintiff, in a footnote, to amend the complaint to further identify the secrets.

Finally, Judge Moran refused to dismiss the individual defendant from the case. Although corporate officers are generally not personally liable for the actions of their employers, in this case the individual defendant had signed contracts which, among other things, included the individual defendant's personal guarantee of the company's debts.

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