Yesterday, Chief Judge Pallmeyer entered a general order addressing the “Coronavirus COVID-19 Public Emergency.” The Court ordered as follows:

  • For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video.
  • Civil hearings, trials and settlement conferences set between March 17 and April 3 are stricken, and will be reset by the presiding judge on or after April 6.
  • The Order does not impact deadlines to appeal district court orders. But the Court held that if an extension request was timely filed, the current situation was good cause for timely motions.
  • Any party can seek relief from the Order by filing an emergency motion in the underlying case and in case no. 20 CV 1792, a specially created matter for issues related to the Order.
  • The Court will vacate, amend or extend the Order no later than April 3, 2020.
  • The Eastern Division Clerk’s office will remain open with limited staff – the Western Division Clerk’s office will close. Filings during that period can be made by ECF, deposit in the Eastern Division drop box, by mail or with the Eastern Division Clerk’s office.
  • All public gatherings at the Northern District’s courthouses are canceled during the pendency of the Order.

Republic Techs. (NA), LLC v. BBK Tobacco & Foods LLP d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jan. 14, 2020) (Harjani, Mag. J.)

Magistrate Judge Harjani denied defendant HBI’s 28 U.S.C. § 1782 motion for an order to take discovery for use in a foreign proceeding in this trademark proceeding involving the parties’ packaging for cigarette rolling papers.

Certain documents produced in this US action were allegedly relevant to a German proceeding involving plaintiffs (collectively “Republic Tobacco”) and an affiliate of HBI.

The Court held that § 1782 contemplates a party seeking US discovery for a foreign matter filing a new district court action seeking letters rogatory approving limited discovery for use in the foreign proceeding. In this case, HBI used an existing suit between parties related to the German suit as a vehicle to file a motion. This posture transforms the proceeding from one of a new party seeking foreign discovery to an existing US litigant seeking to circumvent the Court’s Protective Order by allowing it to produce documents to its foreign affiliate, beyond the bounds of the Protective Order.

The Court reasoned that the needed for a separate action was illuminated by the fact that a decision on HBI’s discovery motion would not be final and, therefore, not appealable. Whereas, courts have held that a decision in a standalone § 1782 action was final and immediately appealable. Furthermore, despite HBI’s claim to the contrary, it was not clear that a separate action filed in the Northern District would be assigned or automatically transferred to the same judge. First, the Northern District randomly assigns all cases initially. Second, a motion for a reassignment pursuant to Local Rule 40.4(b) would likely fail. It was unclear that the present Court would require less time to be educated about the German action. The issues in the instant case and those in the § 1782 proceeding were not susceptible to resolution in a single proceeding. And the parties, the law and the underlying events leading to the two litigations were all different.

On Friday, March 13, 2020, the UIC John Marshall Law School is putting on a day long – 8:45am to 4:30pm – program focused on cutting edge legal issues surrounding the Internet of Things. Here is their description:

Online platforms have become a focal point for many in the United States as well as in key jurisdictions around the world. Governments and legal advisors are struggling to understand the issues and implications these platforms raise, particularly in the areas of intellectual property, privacy, and antitrust law and practice. This Conference brings together top experts in government, industry, practice, and academia to share their cutting-edge insights on these issues as well as where things are headed.

The program promises to be very interactive between speakers and the audience. It also claims to be the only event of its kind and scope in the Midwest.

Registration is $195, with discounts to $95 for in-house lawyers and free for government lawyers.

The excellent line up of speakers includes:

  • Professor Daryl Lim – UIC John Marshall Law;
  • Professor Daniel Sokol, University of Florida;
  • Professor Matthew Spitzer, Northwestern University Center on Law, Business, and Economics;
  • Themi Anagnos, Head of IP for the Americas, Continental Automotive;
  • Kirti Gupta, Vice President, Technology & Economic Strategy, Qualcomm;
  • Grant H. Peters, Partner, Barnes & Thornburg;
  • Professor Haochen Sun, University of Hong Kong;
  • Michael Chu, Partner & IP Litigation Practice Group Leader, McDermott Will & Emery (invited);
  • Erin Lothson, Senior Counsel, Uber (invited);
  • Robert H. Newman, Co-Chair, Privacy, Security & Data Innovations, Loeb;
  • Cameron Krieger, Senior Counsel, Digital Governance, Privacy & Security, Mars;
  • Divya Mathur, Vice President and Consultant, Analysis Group;
  • Sunil Shenoi, Partner, Kirkland & Ellis LLP;
  • Liad Wagman, Senior Economic and Technology Advisor, Office of Policy Planning, Federal Trade Commission;
  • Professor Randy Robinson, UIC John Marshall Law School;
  • Christine S. Wilson, Commissioner, FTC (Keynote);
  • Professor Spencer Weber Waller, Loyola University Chicago Law;
  • Michele Lee, Senior Director and Associate General Counsel, Head of Global Litigation, Regulatory, & Competition, Twitter;
  • Rob Mahini, Senior Policy Counsel, Google;
  • Kate Patchen, Director and Associate General Counsel, Competition, Facebook;
  • Professor Dan Spulber, Northwestern University Law;
  • Aaron Yeater, Managing Principal, Analysis Group;
  • James M. Foote, President and Chief Executive Officer, CSX Corporation (keynote)

The UIC John Marshall Center for Intellectual Property, Information & Privacy Law has announced the inaugural Don Dunner Leadership Award to be presented at its 64th annual IP Conference on Friday, November 20, 2020 in Chicago. As someone who had the privilege of briefly working for Don in law school, I am excited for this award to help carrying on his legacy. The nomination process will be laid out later this year.

 

 

 

 

 

 

Feit Elec. Co., Inc. v. CFL Techs. LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Dec. 20, 2019) (Coleman, J.).

Judge Coleman granted declaratory judgment plaintiff Feit’s motion for reconsideration of the Court’s grant of summary judgement that declaratory judgment defendant CFL’s ‘464 patent was unenforceable  based upon issue preclusion from a prior inequitable conduct determination.

An interlocutory appeal was appropriate for the following reason:

  • The issue was purely legal, not requiring an extensive review of the record;
  • The issue of whether the change of law provision applied in this case was different based upon which Federal Circuit case law was applied. As such, it was contestable;
  • An interlocutory appeal would expedite the litigation because both parties agreed that settlement was stalled by a lack of clarity on the issues; and
  • The request for interlocutory appeal was timely filed because moved within about a month of the Court’s underlying decision.

Life After Hate, Inc. a/k/a Exit USA v. Free Radicals Proj., Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Sep. 30, 2019) (Kendall, J.).

Judge Kendall granted plaintiff Life After Hate a/k/a Exit USA’s (“LAH”) motion for preliminary injunction preventing defendants (collectively “Free Radicals”) from using LAH’s LIFE AFTER HATE, NO JUDGMENT. JUST HELP., and EXIT USA marks in this Lanham Act trademark infringement and cybersquatting dispute. The injunction also prevented use of LAH’s website, twitter handle, YouTube channels and videos.

As an initial matter, the Court noted that both plaintiff and defendants provide “critical” services helping people disengage from violence-based extremism, but “find themselves in an ugly trademark dispute that can only distract them from the important work they perform.”

Validity of the Marks

LAH’s LIFE AFTER HATE and EXIT USA marks were presumed valid because they were federally registered. Defendants argued that LIFE AFTER HATE was descriptive of helping people move on with their lives after leaving what are commonly referred to as hate groups. The Court held that the lack of evidence of similar organizations using the LIFE AFTER HATE mark was indicative that it was suggestive, not descriptive. The Court did note that the line between descriptiveness and suggestiveness was “difficult to draw.” The Court also employed the “degree-of-imagination” test holding that LIFE AFTER HATE required a leap of imagination to understand what services LAH offered and was, therefore, suggestion, not descriptive.

Applying the same pair of tests, EXIT USA was a closer call, but defendants were still not able to overcome the presumption of validity. A number of groups use the EXIT [country] naming internationally, including Exit Germany, Norway, U.K. and Slovakia. But even still, the use was not so widespread as to be proof of descriptiveness or genericness.

Ownership of the Marks

While the parties disputed ownership, the evidence was clear that the parties intended to create two entities using the LIFE AFTER HATE and EXIT USA marks. The parties did not intend that the marks would be used for the individual defendant’s services apart from the entities. Defendants’ claims that LAH procured its trademarks by fraud were not supported by evidence sufficient to overcome the evidence of LAH’s ownership.

Likelihood of Confusion

Regarding likelihood, the Court held as follows:

  • The parties largely did not dispute the similarity of the marks, nor did they dispute the similarity of the services. That weighs in LAH’s favor;
  • LAH and defendants primarily advertise online. That suggested direct competition, to the extent non-profits seeking to help individuals exit extremist hate groups can be said to compete. That weighed in LAH’s favor;
  • The evidence suggested that consumers exercised a high degree of care in selecting the parties’ services. That weighed in defendants’ favor;
  • The evidence suggested that the public associates the marks with LAH, weighing in LAH’s favor;
  • Weighing in its favor, LAH offered three undisputed examples of actual confusion; and
  • There was strong evidence that defendants intentionally copied LAH’s marks.

As a whole, the factors weigh in favor of an injunction.

Irreparable Harm

Lanham Act violations have a rebuttable presumption of causing irreparable harm. Defendants argued that LAH’s fourteen month delay in filing suit and seeking injunctive relief precluded a finding of irreparable harm. While it was a close call, the Court held that the delay was not sufficient to overcome the presumption because LAH presented evidence that it quickly hired counsel to look into how to handle the trademark issues at the Trademark Office and other lawyers to send cease and desist letters to defendants. Those actions overcame the delay.

Balancing Harms

Because LAH had a strong likelihood of success, it was not critical that the balance of harm be in LAH’s favor. Regardless, defendants did not offer any evidence that they would be harmed by an injunction. Defendants argued that they would lose goodwill and reputation, but defendants did not sufficiently explain how such damage would result from the injunction itself.

Public Interest

The public interests were served by enforcing trademarks and reducing consumer confusion. Furthermore, the injunction would not prevent defendants from performing their important work.

Bond

Because neither party addressed the issue of a bond for the preliminary injunction, the Court ordered defendants to submit a bond request within seven days of the preliminary injunction order.

Checksum Ventures, LLC v. Dell Inc., No. 18 C 6321, Slip Op. (N.D. Ill. Sep. 30, 2019) (Dow, J.).

Judge Dow granted defendant Dell’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Checksum’s patent as invalid as unpatentable pursuant to 35 U.S.C. Section 101, with leave to amend in this patent dispute regarding a checksum data identifier – used to identify whether data is identical.

Of particular note, the Court held as follows:

  • The ‘906 patent claimed abstract ideas because it did “nothing more than ‘recite generalized steps to be performed on a computer using conventional computer activity.” Citing Enfish, 822 F.3d at 1338.
  • It was not enough to require that the writer enter the data such that it can be disaggregated and read apart from the metadata.
  • The claims taught only the result of having different readers analyze the same data in different ways. The claims did not require that readers read data differently, or that they use new methods for writing data;
  • The claims were written in functional terms, only claiming the results, not how the data was read or processed.
  • The Federal Circuit had previously ruled that writing and reading different types of data in different ways are abstract ideas, absent something more.
  • Also, the ‘906 patent’s claims would potentially preempt entire fields because of their breadth.
  • Dismissal was appropriate even in light of Berkheimer and Aatrix because the ‘906 patent itself raised no factual issue as to inventiveness of the checksum computation and writing technology.
  • Court construction was not required to decide patentability because even accepting Checksum’s construction, the Court held the ‘906 patent’s claims were invalid.

Seven Oaks Millwork Inc. d/b/a Royal Corinthian v. Royal Foam US, LLC, No. 19 C 6234, Slip Op. (N.D. Ill. Dec. 13, 2019) (Kocoras, J.).

Judge Kocoras granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and denied as moot defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim in this copyright dispute over a copyrighted product catalog.

Plaintiff Royal Corinthian’s operation of an interactive website with sales capabilities did not alone create personal jurisdiction in Illinois. Furthermore, defendants’ use of targeted advertising was not sufficient to create specific jurisdiction because it was done after Royal Corinthian filed suit, not before. Finally, a single sale into Illinois did not create specific jurisdiction. And even limited jurisdictional discovery to identify additional sales was not warranted because Royal Corinthian had not met its burden to show a colorable claim of jurisdiction before discovery should be allowed. Finally, Royal Corinthian’s alleged injury did not arise from defendants’ alleged contacts with Illinois.

Having held that the Court lacked jurisdiction, there was no reason to consider whether Royal Corinthian had sufficiently stated its claims.

The Chicago chapter of the Federal Bar Association is hosting a CLE program designed to introduce the Northern District of Illinois’ newest magistrate judges on Tuesday, February 25, 2020 from 12pm until 1:30pm. Lunch will be provided, along with 1.25 hours of credit, pending approval. The event is being hosted at the Chicago Bar Association, 321 S Plymouth Court, in Chicago. The magistrates (identified below) will speak and answer questions about settlement conference advocacy, arguing discovery issues and other essential tips. Register here for the event.

 

Hon. Jeffrey I. Cummings
U.S. Magistrate Judge
Northern District of Illinois
  Hon. Sunil R. Harjani
U.S. Magistrate Judge
Northern District of Illinois
     
 
Hon. Gabriel A. Fuentes
U.S. Magistrate Judge
Northern District of Illinois
  Hon. Lisa A. Jensen
U.S. Magistrate Judge
Northern District of Illinois

 

TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.).

Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses in this Lanham Act case involving the THIS WE’LL DEFEND mark.

TWD brought a Lanham Act trademark infringement claim pursuant to the Lanham Act § 1114 and sought injunctive relief pursuant to § 1116. Grunt Style argued that the Court should dismiss the § 1116 claim because injunctive relief requires counterfeiting and TWD had made no counterfeiting allegations. The Court, however, held that § 1116 did not state a separate cause of action. Instead, it was a potential remedy for a § 1114 infringement claim. Because the claim merely sought a potential remedy and was not a separate claim, it could not be dismissed.

The Court dismissed TWD’s Lanham Act § 1125 unfair competition claim because it was based solely upon Grunt Style’s use of a ® with its unregistered mark. It was “devoid” of any claim of consumer confusion or that Grunt Style’s action harmed TWD’s reputation or sales. TWD, therefore, lacked standing because it did not plead injury and did not sufficiently plead its claim because it did not allege actual or likely confusion.

The Court struck TWD’s affirmative defenses because they were either a single sentence stating the legal standard for the defense without any tie to factual support, or because they were merely a statement of the defense, without factual or legal basis. While the Seventh Circuit had not ruled on whether Twombly / Iqbal plausible pleading applied to affirmative defenses, the Court reasoned that it did. The Court, therefore, struck each affirmative defense.