ExactLogic, Inc. v. Xactlink, LLC, No. 11 C 50038, Slip Op. (N.D. Ill. Aug. 18, 2011) (Reinhard, J.).
Judge Reinhard granted in part plaintiff ExactLogic’s motion to dismiss defendant Xactlink’s counterclaims. The Court dismissed Xactlink’s declaratory judgment copyright infringement counterclaim. Xactlink agreed to dismiss the claim so long as Xactlink was free to challenge the validity of ExactLogic’s registration. Because the registration’s validity was at issue based upon Xactlink’s affirmative defenses, the Court dismissed the counterclaim.
The Court allowed Xactlink’s declaratory judgment trademark infringement claim. While ExactLogic did not directly allege trademark infringement, its Lanham Act claims would require a determination of the likelihood of confusion between the marks. As such, the trademark was as issue and Xactlink had a right to its declaratory judgment claim.