The Intellectual Property, Information & Privacy Law has announced the 2022 Don Dunner Leadership Award will be presented at its 66th annual IP Conference on Friday, November 11, 2022.  The inaugural 2020 Award was presented to Hon. Pauline Newman, U.S. Court of Appeals for the Federal Circuit. The 2021 Award was presented to Mr. David Kappos, former Under Secretary of Commerce and Director of the United States Patent and Trademark Office.  To be eligible for consideration, award nominations must be submitted online by Monday, October 10, 2022, using this link. And if you would like to hear my story of the time I worked for Don Dunner as a summer associate, send me a note or give me a call.

Donald R. Dunner
2016–2019 Chair,
IP Center Advisory Board
Learn More about Mr. Dunner

Viahart LLC v. Partnerships & Unincorporated Assocs. identified on schedule A, No. 19 C 8181, Slip Op. (N.D. I.. Apr. 4, 2022) (Alonso, J.).

Judge Alonso denied plaintiff Viahart’s Fed. R. Civ. P. 60(b)(6) motion to reopen its case and to permit limited jurisdictional discovery in this Doe case involving Amazon sales related to Viahart’s BRAIN FLAKES trademark.

The Court previously granted an ex parte temporary restraining order, granted Viahart’s request for service by alternate means and expedited discovery. The Court then granted a preliminary injunction followed by a default judgment. Thereafter defendant Liyunshop appeared and filed a motion to set aside the default judgment and to dismiss for lack of personal jurisdiction. The Court granted that motion, dismissing Viahart’s claim because Liyunshop lacked sufficient ties to Illinois.

Viahart’s jurisdiction argument was based upon eight Liyunshop sales to Illinois, and Liyunshop’s use of Amazon’s Fulfillment by Amazon program, which ships product to Amazon fulfillment centers around the country to allow for fast shipping.

The Court initially noted that relief pursuant to Rule 60(b)(6) was only appropriate where justified by “extraordinary circumstances.” Cases qualify for Rule 60(b)(6) consideration involve facts discovery after the judgment, and which could not have been earlier discovered. Viahart did not show that the facts it relied upon were not available before the judgment. Furthermore, Viahart made part of its argument for the first time on reply. The Court warned that “’[a] reply brief is for replying’—not sandbagging.” Quoting Hussein v. Oshkosh Motor Truck Co., 816 F.2d 348, 360 (7th Cir. 1987) (Posner, J., concurring).

Further, the Court was not convinced that jurisdictional discovery would uncover evidence supporting jurisdiction in Illinois. There was only evidence of a single sale of accused product, into Maryland. The eight sales Viahart relied upon were not relevant because they were not of accused product. And Fulfillment by Amazon did not create jurisdiction. Liyunshop utilizes the Amazon service, but has no control over where Amazon places any product, and does not own any of Amazon’s fulfillment centers, nor did Liyunshop ship directly to an Amazon fulfillment center.

Rebel Hospitality LLC v. Rebel Hospitality LLC, No. 21-cv-05132, Slip Op. (N.D. Ill. Mar. 16, 2022) (Guzman, J.).

Judge Guzman granted defendant Rebel Hospitality DE’s Fed. R.Civ. P. 12(c) motion to dismiss plaintiff Rebel Hospitality IL’s trademark infringement complaint for lack of personal jurisdiction in this case about REBEL HOSPITALITY marks.

As an initial matter, Rebel Hospitality IL waived any timeliness argument by not contesting the issue in its response brief. Rebel Hospitality DE answered the complaint and included a personal jurisdiction affirmative defense, but did not file a Rule 12(b)(2) motion at that time, as it technically should have and waited months to move to dismiss. The Court noted that, even if Rebel Hospitality IL had argued that Rebel Hospitality DE waived its jurisdictional argument, the Court would have decided the motion because it would promote form over substance to refuse to consider a jurisdictional argument in a Rule 12(c) motion filed after an answer that included personal jurisdiction as an affirmative defense.

Rebel Hospitality DE submitted an affidavit showing that it had no direct connection to Illinois. Rebel Hospitality IL focused its jurisdictional arguments on the fact that Rebel Hospitality DE’s harm was targeted at Rebel Hospitality IL in Illinois. The Court held that trademark infringement “directed” at the jurisdiction without more was not enough. The Court also noted that despite having some discovery, Rebel Hospitality IL failed to offer a competing affidavit showing any substantial connection between Rebel Hospitality DE, besides a nationally distributed interview by Rebel Hospitality DE personnel.

Finally, the Court denied Rebel Hospitality IL’s motion for jurisdictional discovery. In order to get jurisdictional discovery, Rebel Hospitality IL had an obligation to make a “colorable” showing of personal jurisdiction, which it had not done.

Benefit Cosmetics LLC, No. 20-cv-02552, Slip Op. (N.D. Ill. Mar. 28, 2022) (Wood, J.).

Judge Wood denied defendant Oxygen Ocean’s motion to set aside the parties’ settlement agreement in this trademark dispute involving plaintiff Benefit Cosmetics’

This was a Doe trademark case. Oxygen Ocean engaged with the Court and then was voluntarily dismissed allegedly based upon a settlement agreement. Oxygen Ocean, however, subsequently argued that it had not entered into the agreement alleging that the agreement was negotiated by counsel who lacked authority to settle the case or bind Oxygen Oceans. But the Court held that the agreement was valid and enforceable, refusing to set it aside:

  • The agreement is written, with definite terms and appears to be signed by both parties;
  • While Oxygen Oceans’ principle’s ID signature and agreement signature had “significant” differences, there were email exchanges that corroborated the principle’s knowledge of the agreement, its negotiations and its terms. While the principle claimed the email accounts were not his, that was belied by the fact that the principle used at least one of them to correspond with the Court’s deputy at the outset of the case.
  • While Illinois law requires that counsel have authority to settle in order for an agreement to be binding, not just the decision maker’s knowledge, that was not an issue here because of the principle’s signature on the agreement and post-execution indications of assent to the terms.

While the record did show that Oxygen Oceans lied to the Court to support its argument, the Court refused to award Benefit Cosmetics’ its fees because the lie was made after the briefing and before the fees motion. So, it was not causally connected to the fees in that it did not cause Benefit Cosmetics to incur additional fees. Additionally, as a pro se litigant, the Court felt it was more appropriate to admonish the principle for the false statement and close the case.

Art Akiane LLC v. Art & Soulworks LLC, No. 19-cv-02952, Slip Op. (N.D. Ill. Sep. 16, 2021) (Chang, J.).

Judge Chang ruled on the parties’ choice of law dispute between Colorado and Illinois law in this intellectual property dispute.

Federal courts apply the forum’s choice of law rules. Illinois uses the forum’s law, unless there is a conflict with another state’s law. Illinois also uses its own law for procedural issues. The party seeking a choice of law determination has the burden of proving that there is a conflict between the laws. Where there is a conflict, Illinois follows the Second Restatement, which holds that the state’s law that applies is the state with the most significant connection to the dispute and the parties.

Illinois generally applies its own statutes of limitation, except that if the other state’s statute would prevent filing the suit, but Illinois’s would not, the other state’s statute applies to avoid filing in Illinois to avoid other state’s statutes of limitation.

The Court reasoned that the choice of law decision was ripe for determination because knowing the state of law was required to shape discovery going forward.

Peng v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 1344, Slip Op. (N.D. Ill. Sep. 14, 2021) (Dow, J.).

Judge Dow converted the previously entered Temporary Restraining Order (TRO) into a Preliminary Injunction (PI) against the challenging defendants in this design patent dispute involving wireless earphone headbands.

As an initial matter, the Court noted that the Supreme Court’s eBay decision removed the presumption of irreparable harm where a plaintiff showed a likelihood of success as to proving patent infringement. But the Court also noted that removal of the presumption did not allow consideration of the patentholder’s right to exclude in determining whether defendant’s alleged infringement caused irreparable harm. Plaintiff showed irreparable harm because defendants’ sales of infringing product was likely to cause consumer confusion with genuine parts and harm plaintiff’s reputation. Plaintiff also raised the issue that because defendants reside in China, any monetary judgments were likely uncollectable. Plaintiff’s six month delay in filing suit and seeking an injunction did not prevent preliminary injunctive relief. During those six months, plaintiff also used Amazon’s patent dispute resolution program. Plaintiff filed this suit only a few months after instituting the Amazon action and sought a TRO and then conversion of the TRO to a PI shortly thereafter.

While defendants’ products did not have every design element of the claimed headband design, the overall look was sufficiently similar to the claimed design that “an ordinary observer could be induced to purchase Defendants’ product believing it to be Plaintiff’s.”

Defendants did not sufficiently prove that their alleged prior art was, in fact, prior art to plaintiff’s design patent. The balance of harm tilted in plaintiff’s favor because it is difficult to quantify the harm to a patentholder in terms of customer confusion over similar products in the marketplace.

The Court, therefore, granted plaintiff a PI as to the challenging defendants.

H-D U.S.A., LLC v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 3581, Slip Op. (N.D. Ill. Sep. 24, 2021) (Alonso, J.).

Judge Alonso granted plaintiff Harley-Davidson’s motion for preliminary injunction against defendant Amarzon-Automotive Parts (“AAP”) for allegedly selling counterfeit aftermarket chrome LED fog light projectors using Harley-Davidson’s HARLEY-DAVIDSON and DAYMAKER marks.

As an initial matter, the Court explained that the Seventh Circuit recently detailed how likely plaintiff’s success must be in Illinois Republican Party v. Pritzker, 973 F.3d 760, 762 (7th Cir. 2020):

It explained that a “possibility of success is not enough” and “[n]either is a better than negligible chance[,]” but the moving party “need not show that it definitely will win the case.” Id. at 762-763. “A strong showing” of a likelihood of success on the merits “normally includes a demonstration of how the applicant proposes to prove the key elements of its case.” Id. (internal citations and quotations omitted).

The parties agreed that Harley-Davidson proved the first element of both its Lanham Act claims — trademark infringement / counterfeiting and false designation of origin — because Harley-Davidson has federally registered trademarks for HARLEY-DAVIDSON and DAYMAKER.

Harley-Davidson made a sufficient showing of likelihood of success as to confusion. AAP called its product a Harley-Davidson Daymaker fog lamp. AAP’s claim that it was simply describing a generic motorcycle light was not credible. Additionally, AAP’s own name — including a slight misspelling of retailer Amazon — was suggestive of AAP’s intent to confuse.

The Court noted some disagreement as to whether the Seventh Circuit’s presumption of irreparable harm for trademark infringement claims survived the Supreme Court’s eBay decision. But whether that presumption survived or not, Harley-Davidson showed irreparable harm here in the form of risk to Harley-Davidson’s reputation from the sale of counterfeit product. The Court also noted that Harley-Davidson had spent considerable sums marketing and promoting its products using its trademarks.

The balance of harms also weighed in Harley-Davidson’s favor because of the public interest in avoiding consumer confusion. Finally, AAP did not show with sufficient particularity that freezing all of its assets was unwarranted. Despite AAP having the burden of showing that some of its assets were not related to the accused fog lamps, all AAP provided was a graph — not written in English or translated — which purportedly showed sales of different products. That was not sufficient to meet AAP’s burden.

On Friday, June 3, 2022 from 12:00 p.m. to 1:00 p.m. CT, the Diversity, Equity, and Inclusion Committee of the Intellectual Property Law Association of Chicago (IPLAC) will hold a panel discussion on Contemporary Issues in Indigenous Intellectual Property.

The program will cover the use of trademarks by Indigenous nations for economic development, the protection of cultural heritage via copyrights, and the ongoing efforts to protect genetic and traditional knowledge in the pharmaceutical industry.  The panel is moderated by Kiana Baharloo, Quarles & Brady LLP and Caleb Norris, Hobbs, Straus, Dean & Walker LLP.  Panel members include:

  • Trevor Reed, Associate Professor of Law, Arizona State University Sandra Day O’Connor College of Law
  • Victoria Sutton, Associate Dean for Digital Learning & Graduate Education; Paul Whitfield Horn Distinguished Professor, Texas Tech University School of Law
  • Katherine Belzowski, Acting Assistant Attorney General, Economic & Community Development Unit – Navajo Nation Department of Justice

The event is free for IPLAC Members and $25.00 for Non-Members.  Click here to register.

On Tuesday, June 7, 2022 from 1:00 p.m. to 4:00 p.m. CT, the P. Michael Mahoney Chapter of the Federal Bar Association and the United States District Court for the Northern District of Illinois will present People Who Care After 20 Years: Looking Back at the Landmark Rockford School Desegregation Case.

The program promises a lively panel discussion of this important school desegregation case.  Chief Judge Rebecca Pallmeyer will deliver the opening remarks and the panel members include:

  • Judge P. Michael Mahoney
  • Justino Petrarca
  • Matthew Piers
  • Tom Lester
  • Robert Fagan

In-person registration is limited to the first 70 people who register.  For those who wish to attend virtually, the event will also be available via Zoom.  Registration is required – click here to register.

Lunch will be provided from 12:00 P.M. – 1:00 P.M. courtesy of the FBA.

Pending approval, 3 hours of continued legal education are being offered.

On Thursday, April 28, 2022 from 12:00 p.m. to 1:15 p.m. CT, the IPLAC’s Copyright Committee is hosting a presentation by musicologist Judith Finell on navigating the relationship between technology, music and copyright law.

This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.