LoggerHead Tools, LLC v. Sears Holding Corp., No. 12 C 9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah denied plaintiffs LoggerHead Tools summary judgment of patent infringement in this IP dispute involving LoggerHead’s Bionic Wrench.

As an initial matter, LoggerHead’s final infringement contentions sufficiently disclosed its infringement theory to put defendant on notice of the arguments.

The Court denied summary judgment of infringement based upon the following factual disputes:

  1. Whether the accused device had an arm portion that engaged a guide and that was contiguous with a force transfer element;
  2. Whether a slot had the required first section; and
  3. Whether aligning elements were part of the first and second elements.

LoggerHead Tools, LLC v. Sears Holding Corp., No. 12 C 9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted in part defendant’s motion for summary judgment of noninfringement and invalidity in this IP case involving plaintiff LoggerHead’s Bionic Wrench. Of particular note, the Court held:

  • The Court denied summary judgment of noninfringement because the claims did not require that the gripping elements all be on an arm portion of the device, as defendants argued.
  • The Court granted summary judgment of no willful infringement because LoggerHead offered no evidence of defendant’s willful conduct pursuant to the Supreme Court’s Halo.

Culver Franchising Sys., Inc. v. Steak ‘n Shake Inc., No. 16 C 72, Slip Op. (N.D. Ill. Aug. 5, 2016) (Feinerman, J.).

Judge Feinerman granted defendant Steak ‘n Shake’s Fed. R. Civ. P. 12(b)(6) motion to dismiss without prejudice plaintiff Culver’s claims that Steak ‘n Shake infringed Culver’s copyrights by copying Culver’s television commercial in Steak ‘n Shake’s Original Steakburger commercial.

While both commercials opened in butcher shops, described using three cuts of meat with good marbling and transitioned to cooking and then assembling the burger, the Court held that the commercials were not substantially similar as a matter of law. Of particular note, the Court held as follows:

  • There is nothing unique or protectable about displaying a corporate logo at the beginning or end of a commercial.
  • Grilling a burger is not a protectable element of a burger add, noting that at least since McDonald’s 1975 “two all-beef patties, special sauce, lettuce, cheese, . . .” commercial, it was common to show a grilling burger.
  • Similarly, talking about marbling and searing is common place in burger commercials, as is pressing down with a spatula on a grilling burger.
  • It was not original for a burger commercial to describe the origins of the meat or to show a butcher shop.
  • The two commercials also display the meat differently. Culver focuses on all three cuts together, while Steak ‘n Shake shows each cut separately.
  • Culver also failed to address the two central cases cited in Steak ‘n Shake’s motion papers. The Court noted that Culver’s omission was a “tacit, yet unmistakable, admission that those two cases are fatal” to Culver.
  • The common elements of Culver’s commercial were not arranged in a way to make the combination unique such that it was protectable.

The Court allowed Culver to replead because the Seventh Circuit strongly favors at least one chance to replead. But based upon the Court’s analysis, the Court noted that repleading was likely futile. Furthermore, the Court pointed out that Culver never sought leave to replead or explained what it would add to overcome the issues.

John Marshall Law School has two excellent upcoming CLE programs coming up this month and early next. Here is some information about them:

PCT Seminar for Patent Professionals

  • October 20-21, 2016 (this Thursday and Friday) — register here
  • The event is co-sponsored by the World Intellectual Property Organization & Bloomberg Law
  • John Marshall is offering up to 12.75 CLE hours (for the full two day session, less for the half-day session that just runs the morning of October 20).
  • Here is John Marshall’s description of the event:

This two-day seminar offers an examination of current practice with regard to the PCT system for patent professionals. The half-day session will focus on an overview of the PCT system, the most recent and future developments in the PCT system, as well as some of the most important strategic decisions that need to be taken when using the PCT system. This will be followed by a day and a half looking at a detailed analysis of the PCT system, covering best practices and sophisticated tips about the procedural aspects of the PCT. It will cover the process from start to finish including the filing of the applications, preparing the international search, the preliminary examination, and eventually entering the national phase before designated Offices. This course will also offer a platform for the participants to discuss more complex and unusual scenarios and to discuss particularly interesting real-life cases put forth by the instructors or by the attendees’ own experience.

European Patent Practice Seminar

 

River Light V, L.P. v. Zhangyali, No. 15 C 5918, Slip Op. (N.D. Ill. Aug. 22, 2016) (Shah, J.).

Judge Shah granted plaintiffs (collectively “Tory Burch”) summary judgment and awarded statutory damages of $100,000, a permanent injunction and attorney’s fees in an amount to be determined in this Lanham Act dispute involving counterfeit Tory Burch product.

As an initial matter, defendant I Love You to the Moom [sic] and Back (“ILYMB”) did not respond to Tory Burch’s Local Rule 56.1 statement of undisputed material facts. Furthermore, instead of filing a statement of additional undisputed material facts, ILYMB submitted two expert reports with ten thousand pages of exhibits which it called declarations, as well as a declaration of ILYMB’s president. Because ILYMB did not dispute Tory Burch’s facts or provide its own, the Court accepted Tory Burch’s facts as undisputed and disregarded ILYMB’s declarations. The Court also excluded the expert reports pursuant to Fed. R. Civ. P. 37 because they were untimely – having been filed after expert disclosure deadlines – and prejudicial.

Because ILYMB did not dispute liability or the underlying facts, the only issue was the amount of statutory damages. Tory Burch sought $150,000, well below the allowable $2M pursuant to § 1117(c)(2). Tory Burch argued that ILYMB used text targeted to make sure its items would be found by searches for Tory Burch merchandise and that ILYMB’s online sales had a wide reach, even if there were not a large number of sales. The Court noted that ILYMB’s willfulness was somewhat mitigated by its decision to hire counsel and appear in the action instead of just defaulting. But citing the need to punish counterfeiters, the Court awarded $100,000.

ILYMB did not oppose a permanent injunction and the Court held that Tory Burch met the standard for an injunction. The public interest is served by stopping counterfeiters. ILYMB would not be harmed by the injunction because it had promised not to sell product incorporating the Tory Burch trademarks in the future. And counterfeit sales irreparably damage the Tory Burch brand. The Court, however, refused to enjoin ILYMB from using or owning any website that could be used to sell counterfeit goods. Such an injunction would be overbroad.

The Court also awarded Tory Burch its attorney’s fees, in an amount to be determined later following the Local Rules requirements.

Bodum USA, Inc. v. A Top Casting Inc., No. 16 C 2916, Slip Op. (N.D. Ill. Aug. 23, 2016) (Kennelly, J.).

Judge Kennelly granted plaintiff Bodum’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant A Top Casting’s declaratory judgment counterclaims in this trade dress dispute involving French press coffeemakers.

A Top Casting’s counterclaims sought declarations of noninfringement, invalidity or unenforceability of Bodum’s trade dress. Holding that the counterclaims were mirror images of Bodum’s claims which did not add to the case, the Court dismissed them as “add[ing] nothing to the case.” To the extent the claims were directed at allowing A Top Casting to make future products using the trade dress, even if Bodum’s claims were decided on noninfringement of A Top Casting’s accused products, they sought an improper advisory opinion.

Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted defendant Sears’ summary judgment motion regarding Loggerhead’s fraud claims in this patent, Lanham Act and trade secret case involving the Bionic Wrench.

Of particular note, the Court held as follows:

  • Loggerhead could not maintain a fraud claim based upon concealing a material fact because it could not prove the required special fiduciary relationship between Loggerhead and Sears. They were sophisticated parties operating an arms-length business relationship.
  • Loggerhead could not prove intent to defraud. The evidence showed that over months of negotiations between Loggerhead and Sears, Sears planned for contingencies in case the negotiations fell through. Contingency planning did not evidence an intent to deceive.
  • Loggerhead could not show the necessary reliance. While Loggerhead forewent soliciting Sears’ competitors, in fact Loggerhead solicited several competitors. And the parties’ agreement made clear that sales forecasts were only forecasts, not purchasing commitments.
  • In order to prove promissory fraud in Illinois, Loggerhead had to prove that the act was part of a scheme to defraud. That requires showing that Sears did not intend to fulfill its promise at the time Sears made the promise. Because Loggerhead’s claims were based upon Sears’ forecasts being promises to purchase, the claims cannot succeed. According to the parties’ agreements the forecasts were only forecasts, not commitments to purchase.
  • Loggerhead’s promissory fraud claims also failed because Loggerhead could not prove its reasonable reliance upon the forecasts. In addition to the fact that the parties’ agreement stated that the forecasts were not commitments to purchase product, Loggerhead’s emails stated that prior forecasts were not commitments: “[b]allpark estimates are great, but they are not commitments . . . .”

Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted defendant Sears’ summary judgment motion regarding Lanham Act and related state law claims directed to Sears’ internet activity in this IP case involving the Bionic Wrench.

Loggerhead stipulated to dismissal of its Lanham Act and state law trademark infringement, false designation of origin, and trademark dilution claims related to internet trademark use. Loggerhead, however, maintained the viability of its Uniform Deceptive Trade Practices Act (“UDTPA”), Illinois Consumer Fraud & Deceptive Trade Practices Act (“ICFA”) and common law unfair competition claims related to Sears’ alleged internet trademark use.

Of particular note, the Court held as follows:

  • Loggerhead’s UDTPA and ICFA claims were waived because they offered no legal arguments or facts to support them beyond the internet trademark use claims that were dismissed by Loggerhead’s stipulation.
  • While Loggerhead’s common law unfair competition claims are broadly worded and, therefore, could encompass more than just the internet trademark use allegations, it would have been unfair to Sears to expand them beyond the internet trademark use claims because Sears did not have adequate notice of those additional claims. Furthermore, the additional claims were addressed in other summary judgment decisions by the Court.

Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted defendant Sears’ summary judgment motion regarding the Lanham Act and related state law claims against it in this IP case involving the Bionic Wrench.

As to false advertising, the Court first examined defendants’ allegedly false statements, as follows:

  • The claim that defendants’ accused tool was a “unique design” was not indisputably false. Even if the defendants’ tool was patterned after Loggerhead’s Bionic Wrench, there were differences between the accused tool and the Bionic Wrench. And even if it had been indisputably false, other courts have held that calling something “unique” was mere puffery, which was not actionable. Furthermore, Loggerhead did not show any actual consumer deception.
  • Claims that the accused tool was defendants’ “latest innovation” were not literally false. Even if the tool was patterned after Loggerhead’s Bionic Wrench, the statement is at least ambiguous because it is unclear what innovation is being referenced. And again, courts have held “innovative” was also puffery.
  • Claims in a press release that defendants’ accused tool operated in a different way than the Bionic Wrench and that the tool uses a mechanism developed in the 1950s were also not demonstrably false.

Because the accused statements were not demonstrably false and because Loggerhead could not show actual consumer deception, the Court granted Sears summary judgment as to Loggerhead’s Lanham Act false advertising claims. Because there was no Lanham Act false advertising claim, there were no claims as to Loggerhead’s related state law claims.

 

The Richard Linn American Inn of Court is once again offering a $5,000 scholarship to  law students planning to pursue intellectual property careers. The scholarship will apply for fall 2017 tuition. To be eligible students must be in the second or third year of law school in the fall of 2017. Applications are due by November 23, 2016. The Linn Inn’s website has additional information, including registration information.

For those interested, here is more information about the scholarship from the Linn Inn:

Eligibility
Law students who have entered into a JD program at an ABA-accredited law school in the United States and who will continue in that program through at least the Fall semester 2017 are eligible to apply for the Mark T. Banner Scholarship.

Selection Criteria
Scholarship recipients will be selected by the Mark T. Banner Scholarship review board based on the following criteria:

  • Commitment to the pursuit of a career in IP law. An ability to demonstrate commitment to the pursuit of a career in intellectual property law is an essential requirement.
  • Commitment, qualities and actions toward ethics, civility and professionalism.
  • Academic merit (undergraduate, graduate and law school).
  • Written and oral communication skills determined in part through a telephone interview for finalists.
  • Leadership qualities and community involvement.
  • Member of a historically underrepresented group in IP law (including race, sex, ethnicity, sexual orientation and disability). The applicant should discuss how diversity has impacted his or her pursuit of a career in IP law and how the applicant has faced and overcome the challenges associated therewith. Diversity is considered, but is one element among several in the award decision. 

Financial Award
The recipient of the Mark T. Banner Scholarship will receive $5,000 payable for the Fall 2017 semester of his or her second or third year of law school.

Contact

Applications will be accepted from now through November 23, 2016.  For more information or to apply, please visit this website:  http://www.linninn.org/Pages/scholarship.shtml