Southall v. Force Partners, LLC, No. 20 C 3223, Slip Op. (N.D. Ill. Aug. 31, 2021) (Chang, J.).

Judge Chang granted in part defendant Force Partners’ Fed. R. Civ. P. 12(b)(6) motion to dismiss in this copyright infringement and Digital Millenium Copyright Act (“DMCA”) claims involving a picture of the inside of a restaurant bar.

Of note, the Court held as follows:

  • Force Partners’ claim that Southall never alleged that the photograph at issue was part of the deposit materials. This was a “classic example” of a defendant demanding too much and a plaintiff who could have easily avoided the issue. Having pled ownership of the copyright, Force Partners was not required to provide proof that the image was part of the copyright registration or deposit materials.
  • Whether or not Southall’s copyright registration should be given a presumption of validity because it was filed more than five years after the picture was taken, was not an issue that should be decided at the Rule 12 stage, nor was it one that would warrant dismissal if no presumption were granted.
  • Force Partners’ effort to limit Southall to actual damages and exclude attorney’s fees on a Rule 12 motion was “atypical.” Despite that, the Court dismissed Southall’s claim for statutory damages, which Southall disclaimed during briefing. The Court denied the motion as to attorney’s fees because while registration occurred some eighteen months after the alleged infringement commenced, discovery might show that Force Partners’ sought registration within thirty days of learning of the alleged infringement.
  • The Court denied Force Partners’ motion as it related to alleged removal of Southall’s copyright management information (“CMI”). While the complaint did not disclose the specific CMI that was allegedly removed, during briefing Southall identified it as a copyright notice of the webpage that displayed the photograph. That was enough to survive a motion to dismiss.

Feit Elec. Co. v. CFL Techs., LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sep. 7, 2021) (Gettleman, J.).

Judge Coleman denied declaratory judgment plaintiff Feit’s motion to certify an interlocutory appeal regarding the Court’s denial of Feit’s and granting of declaratory judgment plaintiff CFL’s cross-motion for summary judgment regarding Feit’s inequitable conduct defense in this patent dispute involving compact fluorescent lamps.

Earlier in the year, the Court rejected Feit’s argument that the patent’s inventor — the infamous Ole K. Nilssen — committed inequitable conduct by:

  • claiming small entity status;
  • not disclosing another litigation to the Patent Office;
  • falsely claiming an earlier priority date; and
  • failing to disclose certain alleged prior art to the Patent Office because Feit did not develop its argument.

Feit’s argument was essentially that the Court misapplied the Supreme Court’s Therasense but for analysis based upon the facts before the Court. The Court’s application of Therasense, however, was not a question of law. And even if the Court had misapplied the law, it would not change the result of the Court’s decision because Feit failed to prove the second element of the analysis — the inventor’s specific intent to deceive.

 

Ouyeinc, Ltd. v. BAAAAI, et al., No. 20 C 3488, Slip Op. (N.D. Ill. Sep. 13, 2021) (Coleman, J.).

Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1), (2) & (6) motion to dismiss plaintiff Ouyeinc’s Lanham Act trademark infringement, counterfeiting and false designation claims regarding Ouyeinc’s PRO-WAX100 marks for use with wax warming products.

As an initial matter, defendants’ alleged infringement, at least as pled, was done within the United States. So, there were not extraterritoriality issues that would take the claims outside the scope of the Lanham Act.

The Court held that defendants waived their argument that Ouyeinc did not plead that any consumers were aware of defendants’ alleged act, even though Ouyeinc failed to respond to it, because it was only argued in a footnote and not fully developed.

Finally, the Court denied without prejudice to refile, defendants’ personal jurisdiction challenge. Ouyeinc specifically pled that defendants’ sales using the PRO-WAX100 marks on the web were torts directed at Illinois. Defendants argued, without support, that they made no such sales in Illinois. The Court ordered limited jurisdictional discovery to resolve that dispute.

Legat v. Legat Architects, Inc., No. 20 C 6830, Slip Op. (N.D. Ill. Jun. 23, 2021) (Gettleman, J.).

Judge Gettleman granted defendant Legat Architects’ motion to stay plaintiff Legat’s Lanham Act claim pending appeal of Legat’s state law claims for breach of contract and unjust enrichment related to his LEGAT trademark for use with architectural services.

Legat alleges that he sold his architecture business to Legat Architects in 1997 and that Legat Architects have used the name without authorization since 2017. Illinois claim preclusion provides that a final judgment from a court of competent jurisdiction bars later claims between the parties or their privies on the same issues, or issues that could have been raised, to the extent that they arise from the same set of operative facts. The parties in the state court and federal court actions were identical. And the claims in both jurisdictions arise from the same set of operative facts — the use of the LEGAT trademark. “Rebranding” unjust enrichment as a Lanham Act claim cannot save Legat’s case.

Legat’s claim of an ongoing harm did not save his claims because Legat’s harm — the use of his alleged trademark — is the same. The fact that the harm allegedly continued does not avoid issue preclusion.

However, because Legat appealed the lower court’s judgment, the Court stayed the federal action pending a final determination in the state court action.

On Wednesday, November 10, 2021 from 12:00 p.m. to 1:00 p.m. CT the IPLAC’s Women in IP Committee and the Chicago Women in IP are hosting a joint webinar on Navigating Personal Development in the Workplace.  The panel will be moderated by Laura Schaefer, Leydig, Voit & Mayer.

The panel members include:

  • Erin Lothson, Uber Freight;
  • RiKaleigh Johnson, Greer, Burns & Crain;
  • Francesca Cardillo, K&L Gates; and
  • Kara E.F. Cenar, Greensfelder.

The event is free for Members and Non-Members.  Please click here to register.

On Tuesday, November 9, 2021, from 12:00 p.m. – 1:00 p.m. CT, the Membership and Mentoring Committees of the Intellectual Property Law Association of Chicago (“IPLAC”) are hosting a virtual Intro to IPLAC.  The event featured speakers include:

  • Tiffany Gehrke, IPLAC President-Elect;
  • Ritu Chander, IPLAC Board of Managers; and
  • Kenny Matuszewski, Membership Committee Chair.

The event is free for Members and $25.00 for Non-Members.  Please click here to register.

I am excited to introduce you to a new podcast series hosted by Intellectual Property partner Irena Royzman, of Kramer Levin Naftalis & Frankel LLP.  The Conversations with Women in IP podcast series features judges and leaders in law and business discussing their most memorable cases, career highlights and personal stories.

Click here to listen to the first four episodes and to subscribe to receive notifications when a new episode becomes available.

The first four guests include:

  • Judge Shira A. Scheindlin — Served as a district judge for New York’s Southern District for 22 years. She has presided over dozens of intellectual property cases and was part of the Southern District’s patent pilot program. But she is best known for her rulings that have changed the lives of New Yorkers, including her landmark ruling on stop-and-frisk. Judge Scheindlin, who had Justice Ruth Bader Ginsburg as a mentor, has been involved in gender equality issues for decades and continues to be an outspoken advocate on gender disparity in big law. Judge Scheindlin is now a mediator and arbitrator and devotes her time to many good works.
  • Judge Sue L. Robinson — Served on the district court of Delaware from 1991 to 2017. Judge Robinson has presided over more than 100 patent trials, more than 1,500 cases and has issued thousands of patent opinions. Judge Robinson now practices patent law as a mediator, arbitrator and trial consultant at Farnan LP with her colleague on the district court of many years, Judge Joseph J. Farnan, Jr. They discuss how Judge Robinson was involved in turning Delaware into one of the most important venues for patent litigation and the challenges she faced.
  • Berkeley Law Professor Molly Shaffer Van Houweling — Professor of patent law and intellectual property and associate dean at Berkeley Law, with a focus on copyright law. She’s also an American competitive cyclist who has won numerous championships and set a world record. Professor Van Houweling discusses clerking for Judge Boudin on the First Circuit, Justice Souter on the Supreme Court as well as women in IP in academics.
  • Dr. Barbara Ruskin — An eminent RNA researcher, IP lawyer, and now the general counsel and chief patent officer of Silence Therapeutics, an RNA therapeutics company. Dr. Ruskin shares stories from her career in science and law, the excitement and potential of RNA medicines, and the challenges that women in IP and the industry face.

The Intellectual Property Law Association of Chicago (IPLAC) Board of Managers is excited to present a series of speed networking events.  The first virtual speed networking event will be hosted by IPLAC Board member Karen Hwang on Wednesday, October 27, 2021 from 5:00 p.m. to 6:00 p.m. CT.

The event is free for Members and $25.00 for Non-Members.  Please click here to register.  A Zoom-Event Link will be sent after registration.

Illinois’ Senators Durbin (D) and Duckworth (D) announced that they have established a screening committee and are accepting applications from those interested in serving as a Federal District Court Judge in the Northern District. The screening committee will consist of:

  • The Honorable David H. Coar (Ret.)(committee chair):  Judge Coar served as a United States District Judge for the Northern District of Illinois for sixteen years, from 1994-2010.   He had previously served the Northern District for eight years as a United States Bankruptcy Judge and for three years as a United States Bankruptcy Trustee.  Judge Coar taught for over a decade at DePaul University College of Law as an Associate Professor of Law and additionally served as Associate Dean.  He has also worked in private practice and as an arbitrator.  Judge Coar received his B.A. from Syracuse University, his J.D. from Loyola University Law School, and his L.L.M. from Harvard Law School.  He is a veteran of the United States Marine Corps Reserves.
  • Alejandro Caffarelli: Caffarelli is the founding shareholder of Caffarelli & Associates Ltd in Chicago.  He is a former President of the National Employment Lawyers’ Association – Illinois affiliate, as well as a former Executive Board member for the Hispanic Lawyers’ Association of Illinois.  In 2014, Mr. Caffarelli was appointed by Judge Rubén Castillo to the Pro Bono Advisory Committee for the U.S. District Court for the Northern District of Illinois.  Since 2005, Mr. Caffarelli has also volunteered to help indigent workers through the ARISE-Chicago community organization, and currently serves on the ARISE Legal Advisory Board.  Mr. Caffarelli received his B.A. from the University of Michigan and J.D. from the University of Minnesota.
  • Michael Chu: Chu is a partner at the Chicago office of McDermott Will & Emery and sits as the chair of the firm’s Racial and Ethnic Diversity Subcommittee.  He is also the local head of McDermott’s Intellectual Property Litigation Practice Group. Mr. Chu is the immediate past board chair of Asian Americans Advancing Justice – Chicago (2013-2020) and is a former president of the National Asian Pacific American Bar Association (2004-2005). He received his B.S. from the University of Illinois in 1989 and his J.D. from the William and Mary Law School in 1992.
  • Kevin Conway:  Conway is a partner at the law firm Cooney & Conway in Chicago. His practice focuses on mesothelioma, mass tort, wrongful death, and catastrophic injury cases.  He is a fellow of the International Society of Barristers and the American College of Trial Lawyers, and is a past president of the Illinois Trial Lawyers Association. He is also past chairman of the Daniel Murphy Scholarship Fund, past president of the Celtic Legal Society of Chicago, and a board member for Lawyers for the Creative Arts. He received his B.A. and J.D. from Loyola University in Chicago.
  • Herschella Conyers: Conyers is the Lillian E. Kraemer Clinical Professor in Public Interest Law and the Director of the Criminal and Juvenile Justice Clinic at the University of Chicago Law School. Before joining the law school, she served as an assistant public defender, supervisor, and 6th District Deputy Chief in the Office of the Cook County Public Defender.  Her work included conflicts and capital litigation. She is also actively engaged in criminal and juvenile justice policy and is currently the Chair of the Juvenile Justice Initiative. She is emerita faculty and former board member of the National Criminal Defense College. She received her B.A. and J.D. from the University of Chicago.
  • Edward Feldman: Feldman is a partner at the Chicago law firm Miller Shakman Levine & Feldman LLP, where he has worked since 1988.  His practice focuses on complex civil litigation and professional responsibility matters.  He previously served as law clerk to U.S. District Judge Marvin E. Aspen and then worked for two years as a clinical fellow at the Northwestern University Legal Clinic.  He has served as an adjunct law professor at Northwestern since 1988 teaching trial advocacy and ethics.  He is a past Chair of the Chicago Bar Association Professional Responsibility Committee and of the Board of Directors for the Chicago Lawyers Committee for Civil Rights.  He received his B.A./B.S. from the University of Illinois and his J.D. from Harvard Law School.
  • Betty Y. Jang:  Jang is General Counsel at Tegria.  Previously, she has served as an executive at several corporations, practiced at a national law firm, was an adjunct professor at the University of Illinois College of Law, and began her career as an assistant public defender with the Office of the Cook County Public Defender. Ms. Jang has volunteered as a scholarship evaluator for the APIA Scholars program, is an alumnus of the United State of Women’s Galvanize Chicago Program, and has held numerous Board positions in local, state, and national bar associations.   She received her B.A. from the University of Illinois and her J.D. from Chicago-Kent College of Law.
  • Monica L. Llorente:   Llorente teaches at Northwestern University’s Pritzker School of Law and the Weinberg College of Arts & Sciences.  She has served as an advocate for children’s rights in several national campaigns and has represented children in need in various judicial and administrative proceedings. She is currently the Education Co-Chair of the ABA Children’s Rights Litigation Committee.  Ms. Llorente has also served as a board member of the Hispanic Lawyers Association of Illinois. Before working at Northwestern, she practiced law at Baker & McKenzie in Chicago. She received her A.B. from Duke University and her J.D. from the Northwestern Pritzker School of Law.
  • Laurie Mikva: Mikva is a clinical assistant professor at Northwestern Pritzker School of Law.  She previously worked as an attorney at the Illinois Department of Employment Security and the Land of Lincoln Legal Assistance Foundation, and also served as an assistant public defender in the Champaign County Public Defender’s Office and the Office of the Maryland Public Defender, Appellate Division. She is a Commissioner on the Illinois Court of Claims, and she also serves on the Board of Directors for the Legal Services Corporation and on the American Bar Association Standing Committee on Pro Bono and Public Service.  She received her B.A. from Beloit College and her J.D. from New York University School of Law.
  • Carlina Tapia-Ruano: Tapia-Ruano is the principal and founder of the Chicago office of Tapia-Ruano & Gunn PC. She has practiced in the field of immigration law for over thirty years, focusing on family and employment matters. She is a former president of the American Immigration Lawyers Association and former chair of the Chicago Bar Association Section on Immigration Law. Ms. Tapia-Ruano is a current adjunct professor at IIT-Chicago Kent School of Law and has also taught at DePaul University College of Law. She received her B.A. from Illinois Wesleyan University and J.D. from DePaul University College of Law.
  • Zaldwaynaka (“Z”) Scott: Scott is currently the President of Chicago State University, a position she assumed in 2018.  From 1987 to 2003, she worked as a federal criminal prosecutor in the U.S. Attorney’s Office for the Northern District of Illinois, serving in various management positions including Chief of the General Crimes Section.  After her service at the U.S. Attorney’s Office, she served as Executive Inspector General for the Office of Governor of Illinois (2003-05) and worked as a partner in the Chicago office of Foley & Lardner LLP.   She also served for four years in the Office of the Corporation Counsel for the City of Chicago (1983-87).  She has taught as an adjunct instructor at Northwestern University School of Law, the University of Chicago Law School, and The John Marshall School of Law.  She received her B.S. from the University of Illinois, Urbana-Champaign and her J.D. from the Indiana University School of Law-Bloomington.
  • Diana White: White worked at Legal Aid Chicago (formerly LAF) for more than 20 years, 10 of them as Executive Director.  She retired in July 2017. Legal Aid Chicago is the largest provider of free legal services in civil cases in the metropolitan Chicago area.  Its full-time staff of more than 100 attorneys and paralegals provides legal help that gets people living in poverty back on their feet and strengthens communities throughout Cook County.  Previously Ms. White was a partner at Jenner & Block and a law clerk to Chief Judge Walter Cummings on the U.S. Court of Appeals for the 7th Circuit.  She received her B.A. from Smith College and her J.D. from the University of Chicago.

Applicants must submit a cover letter, resume, and a completed copy of this questionnaire to applications@durbin.senate.gov by 5 p.m. CT on Monday, October 25.  Applications should be sent as a single PDF document.  In light of COVID, the questionnaire need not be notarized.

The United States Courts of Appeals along with the United States District Courts in the Seventh and Eighth Circuits are hosting the Second Annual Bill of Rights Day Contest.

The Contest is open to all students in grades 3-12 in Arkansas, Illinois, Indiana, Iowa, Minnesota, Missouri, Nebraska, North Dakota, South Dakota, and Wisconsin.  Students are encouraged to submit art (videos, visual art, poems, songs) and essays on the Importance of the Bill of Rights.

A grand prize winner from each of the three groups (3-5, 6-8 and 9-12 grade) will be awarded a $500 cash prize, take part in the virtual event on Wednesday, December 1 with Federal Judges and other legal experts on the enduring rights afforded to Americans by the Bill of Rights, and have their name and submission shared on the websites of the participating United States District Courts. Semi-finalists from each District Court will receive an electronic gift card valued at $50.

District Semi-finalists will be notified before Thanksgiving and grand prize winners will be announced at the virtual event on December 1.  Must be present to win the grand prize.

Submissions along with a completed entry form will be accepted Friday, September 17, through 5:00 p.m. on Sunday, October 31.  Click HERE to download the rules and entry form.

Email Submissions and Forms to: Education@ilnd.uscourts.gov

Everyone is encourage to join the virtual event on December 1st at 6:00 p.m. CT/7:00 p.m. ET.  Contest participation is not required for the virtual event.  There will be chances to win additional prizes!

Event registration is required. Click HERE to register.

For questions, please contact Lauren Thiel at Lauren_Thiel@ilnd.uscourts.gov or via phone at 312-435-5603.

For additional information please see below:

www.JudicialLearningCenter.org/bill-of-rights-day