February 2012

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517 Slip. Op. (N.D. Ill. Sep. 1, 2011) (Grady, J.).
Judge Grady denied defendant’s motion to reconsider its preliminary injunction, for the following reasons:
· The Court addressed defendant’s arguments even though they “could and should have been” brought in the original briefing.
· Defendants’ argument was too narrow. Someone who linked the copyrighted material can be a direct infringer. The alleged direct infringement of defendant’s customers, therefore, can be true whether the myVidster owner saved the copyrighted file or embedded a link to it.
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Continue Reading Reconsideration Motion Denied After Careful Consideration

Akoo Int’l, Inc. v. Harris, No. 10 C 1685 Slip. Op. (N.D. Ill. Sep. 9, 2011) (Coleman, J.).
Judge Coleman denied plaintiff Akoo International (“AI”) a preliminary injunction to prevent rapper Clifford Harris from using the Akoo mark for his clothing line. The Court held that AI had not shown a sufficient likelihood of confusion:
· AI’s advertising system was very different than Harris’ clothing line.
· The parties sold in different channels.
· There was no evidence that Harris began using the mark to confuse AI’s customers.
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Continue Reading No Injunction Where Products Are Sold in Different Channels

Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164 Slip. Op. (N.D. Ill. Aug. 30, 2011) (Kennelly, J.).
Judge Kennelly denied defendant Andersen’s motion to dismiss this patent and trade secret case. The Court had personal jurisdiction over Andersen because he worked for defendant K International, an Illinois entity, and Andersen had solicited his former customers in Illinois.
Venue was also proper in the Northern District. A substantial part of the facts at issue occurred in Illinois. The parties’ prior agreement did not release plaintiff’s trade secret claims because they were not contemplated when plaintiff signed the agreement.
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Continue Reading Soliciting Illinois Customers Creates Jurisdiction

Modern Trade Comms., Inc. v. PSMJ Resources, Inc., No. 10 C 5380, Slip Op. (N.D. Ill. Aug. 19, 2011) (Pallmeyer, J.).
Judge Pallmeyer granted defendants PSMJ Resources’ (“PSMJ”) and Oser Communications’ (“Oser”) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Modern Trade Communications’ (“MTC”) rights in its Metal Construction News mark for a metal industry trade publication. At the Metalcon tradeshow in 2010, Oser distributed a daily publication entitled Metal Daily News at PSMJ’s direction. MTC alleged that the Metal Daily News title infringed its Metal Construction News mark, which MTC used to publish an official show guide at the same conference.
PSMJ was a Massachusetts company without offices or personnel in Illinois. It approximated that 3% of its revenue at the 2009 Metalcon show in Florida was from Illinois residents. PSMJ’s website was not interactive. PSMJ did produce six training seminars unrelated to Metalcon in Illinois. PSMJ’s small revenues from Illinois residents did not create general jurisdiction. While related to Metalcon, PSMJ’s contract with a third party in Illinois did not create specific jurisdiction. And PSMJ’s production of the 2002 Metalcon in Illinois did not create specific jurisdiction because the accused Metal Daily News was only distributed at the 2010 Metalcon in Las Vegas. The Court, therefore, had neither general nor specific jurisdiction over PSMJ.
Oser was an Arizona company without offices or personnel in Illinois, although Oser did distribute publications at two to three trade shows per year in Chicago. Oser’s website was passive, except that the 2010 Metal Daily News was available on the site for downloading. Attendance at two to three trade shows each year in Chicago did not create the systematic contacts necessary for general jurisdiction. Oser’s website was not sufficient to create specific jurisdiction. MTC made no allegation that the website was targeted at Illinois, and the availability of the publication as a free download was not sufficient either. And MTC did not allege how Oser’s alleged infringement in Las Vegas was tied to Oser’s Illinois activities. Furthermore, the sale of an advertisement in the Metal Daily News to an Illinois resident, even combined with the website allegations, was not sufficient to create specific jurisdiction.
The Court also denied MTC’s motion to amend because it did not allege any new facts that might create personal jurisdiction.
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Continue Reading No Personal Jurisdiction Based Upon a Passive Website and a Single Advertisement

Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted plaintiffs’ (collectively “Arcadia”) motion to dismiss defendants’ (collectively “Moderna”) counterclaims and denied Moderna’s motion to dismiss Arcadia’s claims in this Lanham Act case involving Arcadia’s TOPSHOP and Moderna’s TOP SHOP TV marks. In 2004, the parties entered a settlement agreement (the “Agreement”) pursuant to which Moderna agreed not to use TOPSHOP to sell women’s clothing in any country. Arcadia alleged that Moderna violated the Agreement beginning in 2010 when it began selling women’s clothing in the US on Moderna’s topshoptv.com website.
Moderna’s Motion
Moderna argued that Arcadia did not plausibly plead a protectable mark because Moderna was the first user of the mark. But a motion to dismiss must assume the truth of Arcadia’s allegations and Arcadia plausibly pled that it was the first user of the mark. Additionally, Moderna’s arguments ignored that Arcadia’s complaint challenged the validity of Moderna’s TOPSHELF TV registration.
Arcadia sufficiently pled fame as part of its trademark dilution claim. While Arcadia did not parrot the language of the statute, it pled its TOPSHOP brands were “world famous”, that the brand is one of the most successful in the world, that there have been millions of dollars in US sales and that the brand is regularly featured in US and international fashion and celebrity magazines and other media.
Arcadia’s Motion
The Court dismissed Moderna’s counterclaim for a declaratory judgment that it was the senior user of its TOP SHOP TV mark. Arcadia, however, had never challenged Moderna’s TOP SHOP TV mark. Arcadia’s only claims, in the suit or otherwise, were with respect to its TOPSHOP mark. As a result, any decision regarding the mark would be an impermissible advisory opinion.
The Court dismissed Moderna’s trademark misuse counterclaim because Moderna did not show that trademark misuse was an affirmative cause of action. Moderna was, however, allowed to amend its answer to add an affirmative defense of trademark misuse.
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Continue Reading Determining Senior User is Not an Issue for Motion to Dismiss