Sullivan & Survivor Music, Inc. v. Bickler, No. 18 C 3770, Slip Op. (N.D. Ill. Jan. 25, 2019) (Lee, J.). Judge Lee denied defendant Bickler’s, the former lead singer of the band Survivor, Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss plaintiffs’ (collectively “Survivor”) Lanham Act claims related to the alleged misuse of … Continue Reading
Perfect Brow Art, Inc. v. Glitzy Brows, No. 18 C 4594, Slip Op. (N.D. Ill. Nov. 15, 2018) (Guzman, J.). Judge Guzman granted defendants’ (collectively “Glitzy Brows”) Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff Perfect Brow Art’s first amended complaint for lack of personal jurisdiction in this Lanham Act trademark, trade dress, false … Continue Reading
Kapoor v. National Rifle Association of Am., No. 18 C 4252, Slip Op. (N.D. Ill. Oct. 23, 2018) (Lee, J.). Judge Lee granted in part defendant National Rifle Association’s (“NRA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction or, in the alternative to transfer to the Eastern District of Virginia … Continue Reading
TopstepTrader, LLC v. OneUp Trader, LLC, No. 17 C 4412, Slip Op. (N.D. Ill. Apr. 18, 2018) (Leinenweber, J.). Judge Leinenweber granted in part defendant OneUp Trader’s Fed. R. Civ. P. 12(b)(6) motion to dismiss and defendant Alsabah’s Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure … Continue Reading
Kroto Inc. v. Chapa, No. 17 C 1218, Slip Op. (N.D. Ill. Jun. 22, 2017) (Der-Yeghiayan, J.). Judge Der-Yeghiayan granted declaratory judgment defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction, but denied their sanctions motion in this copyright dispute. Declaratory judgment plaintiff Kroto’s jurisdictional allegation revolved around defendants’ copyright … Continue Reading
Levi Strauss & Co. v. Zhejiang Weidu Garment Co., Ltd., No. 16 C 7824, Slip Op. (N.D. Ill. Nov. 17, 2016) (Shadur, Sen. J.). Judge Shadur denied defendant yogee-mall’s Fed. R. Civ. P. 12(b)(2)&(5) motion to dismiss in this trademark dispute. The Court held that it did not improperly allow alternative service instead of requiring … Continue Reading
Johnson v. Barrier, No. 15 C 3928, Slip Op. (N.D. Ill. Jun. 28, 2016) (St. Eve, J.). Judge St. Eve granted defendant UMG Recordings’ (“UMG”) Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff’s complaint for lack of personal jurisdiction in this copyright dispute involving plaintiff’s song “I Feel an Urge.” The Court also granted … Continue Reading
Valtech, LLC v. 18th Ave. Toys, Ltd., No 14 C 134, Slip Op. (N.D. Ill. Feb. 12, 2015) (Kocoras, J.). Judge Kocoras denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction or to transfer to the E.D. New York — this Lanham Act trade dress case involving packaging for … Continue Reading
Telemedicine Sol’ns LLC v. WoundRight Techs, LLC, No. 13 C 3431, Slip Op. (N.D. Ill. Mar. 14, 2014) (Dow, J.). Judge Dow granted defendant WoundRight Technologies’ (“WoundRight”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Telemedicine Solutions’ (“Telemedicine”) & WOUND ROUNDS federal registration. … Continue Reading
Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.). Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim. Plaintiff Flava Works pointed largely to … Continue Reading
Sage Prods, Inc. v. Primo, Inc., No. 12 C 3620, Slip Op. (N.D. Ill. Mar. 5, 2013) (Coleman, J.). Judge Coleman granted defendant Primo’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trade dress case involving a boot designed to cushion and prevent heel ulcers. Primo did not … Continue Reading
Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.). Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss. As an initial matter, the court denied plaintiff Snap-On’s argument that the … Continue Reading
Labtest Int'l., Inc., d/b/a Intertek Consumer Goods N. Am. v. Centre Testing Int'l. Corp., No. 10C2897, Slip Op. (N.D. Ill. Feb. 1, 2011) (Dow, J.).
Judge Dow granted defendant CTI's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this copyright infringement action. The Court did not have jurisdiction over CTI:
CTI was a Chinese entity with no U.S. offices.
CTI's only possible contact with Illinois regarding the copyrighted subject matter was via its passive website.
Plaintiff Intertek offered no proof that anyone from Illinois downloaded the allegedly infringing chart.
CTI's only connection was work in China for an entity with a parent entity in Illinois.
The Court did not award Intertek its fees and costs for defending the case or the case filed by Intertek in Connecticut. Intertek had credible arguments for each, and it was not forum shopping even if the arguments were eventually proven wrong.
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Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).
Judge Coleman granted the individual defendants' and Aslan Financial Group's Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can's trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.
The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.
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Salud Natural Entrepreneur, Inc. v. Nutricento Internacional, Inc., No. 09 C 4417, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).
Judge Zagel denied defendant Azteca Products' ("Azteca") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case. Azteca's officer, a non-lawyer, purported to file an answer on Azteca's behalf. Azteca then hired counsel who participated in Rule 26 scheduling conferences. Azteca's officer then filed a Rule 12(b)(2) motion to dismiss without counsel, which the Court struck because it was not filed by counsel, and a corporate entity cannot act pro se. The Court then entered a default judgment and an injunction against Azteca. Azteca hired counsel and asked through counsel that the default be vacated. The Court vacated the judgment and agreed to consider whether Azteca's personal jurisdiction arguments had been waived. Noting the "bizarre posture of the case, the Court held that Azteca had not preserved its jurisdiction arguments.
The answer did not waive Azteca's arguments because as a pro se filing it was treated as never having been filed. But counsel did participate in Rule 26(f) conferences, although he filed no notice of appearance, and offered no suggestion that Azteca would challenge jurisdiction during that time. Furthermore, jurisdiction was challenged for the first time more than thirty days after the other defendants settled based upon discussions that Azteca did not participate in. Regardless of the legal impact of Azteca's filings, by the time Azteca challenge jurisdiction, plaintiff had developed a "reasonable expectation" that Azteca would defend itself in Illinois.
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Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).
Judge Dow granted defendants' Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff's "Credit Lifeline" mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants' only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants' offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant's actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff's harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs' Credit Lifeline mark, or of plaintiff, from defendant's first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.
Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with "fair play and substantial justice."
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Chicago Bd. Options Exchange Inc. v. Realtime Data, LLC d/b/a IXO, No. 09 C 4486, Slip. Op. (N.D. Ill. Jan. 8, 2009) (Lindberg, Sen. J.).
Judge Lindberg granted declaratory judgment for defendant Realtime's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. The parties agreed that the Court lacked general jurisdiction and focused their arguments on specific jurisdiction. Because plaintiff Chicago Board Options Exchange ("CBOE") brought declaratory judgment claims, the analysis focused upon whether Realtime's patent enforcement activities were directed at the jurisdiction. CBOE argued that specific jurisdiction was created by Realtime's Texas patent infringement suit against, among others, Chicago-based defendants, including eventually CBOE. But the Court held that Realtime's Texas action alone did not create specific jurisdiction, and the Court did not consider the Texas suit against CBOE because CBOE was not added to the Texas action until after the instant suit was filed.
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Guiness World Records Ltd. v. John Doe, d/b/a World Records Academy, No. 09 C 2812, Slip Op. (N.D. Ill. Oct. 20, 2009) (Shadur, Sen. J.)
Judge Shadur granted defendant World Records Academy's (Academy") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff's GUINESS WORLD RECORD and WORLD RECORD trademarks. Academy's website alone did not create specific jurisdiction because it did not allow users to purchase Academy's products, it only told them how to buy the products. Academy did have limited sales into Illinois - three sales to two customers - and sent form email solicitations to world record holders from Illinois. And the Court held that Academy's emails and de minimis sales could not create jurisdiction, either general or specific. The Court reasoned that if de minimis sales created jurisdiction, alleged intellectual property infringers could be hailed into almost any jurisdiction nationwide.
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More Cupcakes, LLC v. Lovemore LLC, No. 09 C 3555, Slip. Op. (N.D. Ill. Sep. 29, 2009) (Kocoras, J.)
Judge Kocoras denied defendants (collectively "Lovemore") Fed. R. Cir. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and Fed. R. Cir. P.12(b)(6) motion to dismiss the individual Lovemore defendants' (collectively "Lovemore individuals") based upon the fiduciary shield doctrine in this Lanham Act dispute regarding plaintiff More Cupcake's LOVE MORE mark for use on t-shirts. The Court did, however, grant Lovemore's §1404 motion to transfer the case to the Eastern District of New York.
The parties agreed that the Court lacked general jurisdiction and argued only specific jurisdiction. The Court held that it had specific jurisdiction based upon the effects test. Lovemore's alleged infringing acts were aimed at More Cupcakes in Illinois when Lovemore approved sales of allegedly infringing t-shirts to Illinois addresses after being warned of the alleged infringement in a Patent & Trademark Office proceeding and in settlement talks with More Cupcakes. Lovemore's interactive website coupled with sales to Illinois also created specific jurisdiction. The fact that Lovemore's most recent Illinois sale was to More Cupcakes' counsel did not impact the analysis. Lovemore still knowingly sold product within Illinois.
The fiduciary shield doctrine did not apply to the individual defendants, who were both owners and operators of Lovemore. The fiduciary shield doctrine denies personal jurisdiction over individuals who contact Illinois solely for the benefit of their employees and not themselves. But the doctrine does not apply to owners of a company that have discretion over whether or not they do business in Illinois. As Lovemore owners, therefore, the Lovemore individuals are not protected by the fiduciary shield doctrine.
For similar reasons, while corporate officers are generally not personally liable for corporate trademark infringement claims, More Cupcakes' claims against the Lovemore individuals survived. Both individuals were owners of Lovemore and the Complaint alleged that they personally directed the allegedly infringing acts.
Finally, the Court transferred the case to the Eastern District of New York. While More Cupcakes' chosen forum deserves deference, the material events regarding the alleged infringement all occurred in New York where the t-shirts were designed, made, offered for sale and sold. And the Court held that the convenience factors, such as locations of documents and witnesses, were all neutral.
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The Ticketreserve, Inc. v. Viagogo, Inc., No. 08 C 502, Slip Op. (N.D. Ill. Aug. 11, 2009) (Kendall, J.).
Judge Kendall denied defendants' Fed. R. Civ. P. 12(b)(3) motion in limine for improper venue and granted defendant Viagogo, Inc.'s ("Viagogo") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendants agreed that venue was improper based on an arbitration clause in a nondisclosure agreement the parties requested when they explored a joint venture. Defendants agreed that the patented technology was disclosed pursuant to the nondisclosure agreement.
But because plaintiff's international patent on the same technology as the U.S. patent, issued before the nondisclosure agreement the patent infringement claim was expressly excluded from the nondisclosure agreement and its arbitration claims.
The Court then dismissed Viagogo for lack of personal jurisdiction. Viagogo had no contract with Illinois to create personal jurisdiction. And while the viagogo.com interactive website likely created specific jurisdiction for its owner, the evidence suggested that Viagogo Ltd., which did not contest personal jurisdiction owned and operated the website, not Viagogo, Inc.
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Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).
Judge Kocoras granted defendant Taste of Europe's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Plaintiff alleged that Taste of Europe sold a single copy of plaintiff's copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction. Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois. Plaintiff did not present any evidence of Taste of Europe's Illinois connections, but sought jurisdictional discovery. The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe's proofs.
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Merrill Primack v. Pearl B. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2009) (Dow, J.).
Judge Dow granted the Polto defendants' (collectively "Polto") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act dispute regarding plaintiff's "Credit Lifeline" mark. Plaintiff alleged only specific jurisdiction, not general jurisdiction. Plaintiff's evidence of specific jurisdiction was based upon the following facts: 1) Polto's 2006 trip to Chicago to put on a Credit Lifeline seminar; and 2) Polto's interactive website. Polto, however, had not been aware of plaintiff's trademark during the 2006 trip. Plaintiff did not file for its trademark until 2008. So, when Polto made its 2006 trip there was no evidence of notice of plaintiff's mark. Furthermore, no one attended Polto's 2006 Chicago seminar and Polto returned to Philadelphia immediately after leaving the seminar site. Finally, the Court held that Polto's interactive website by itself could not confer specific jurisdiction.
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Richter v. INSTAR Enterprises Int'l, Inc., No. 08 C 50026, Slip Op. (N.D. Ill. Jan. 23, 2009) (Kapala, J.).
Judge Kapala granted defendant INSTAR's Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff's copyright infringement claims for lack of personal jurisdiction. INSTAR did not have sufficient contacts with Illinois for general jurisdiction. INSTAR did not maintain offices or otherwise regularly do business in Illinois. Its contacts with Illinois were: 1) its interactive website; and 2) INSTAR's customer's resale of its products within Illinois. Additionally, INSTAR produced undisputed evidence that less than .1% of its business came from Illinois and that none of the accused products were sold directly into Illinois.
Similarly, the Court lacked specific jurisdiction. While plaintiff was allegedly harmed in Illinois, the effects doctrine was not satisfied because INSTAR was not charged with an intentional tort and INSTAR's unrefuted evidence showed that it did not intend to infringe plaintiff's copyrights. INSTAR's website did not create specific jurisdiction either. There was no evidence that INSTAR made any sales into Illinois from its website. And the only evidence of anyone from Illinois accessing the website was based upon plaintiff's representatives accessing the site. Finally, the entry of INSTAR's products into the stream of commerce did not create specific jurisdiction because there was no evidence that INSTAR knew or expected that the stream of commerce would take its products into Illinois.
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C.S.B. Commodities, Inc. v. Urban Trend (HK) Ltd., No. 08 C 1548, Slip Op. (N.D. Ill. Jan. 7, 2009) (Dow, J.).
Judge Dow granted corporate defendant Urban Trend's ("Urban Trend") and denied the individual defendant's respective Fed. R. Civ. P. 12(b)(2) motions to dismiss plaintiff's Lanham Act unfair competition and related state law claims for lack of personal jurisdiction. Plaintiff served the individual defendant, who was Urban Trend's president, while he was representing Urban Trend at a trade show in Illinois. The Court held that personal service created jurisdiction over the individual defendant, even though the Court may not have had jurisdiction but for personal service. And while the individual defendant was in Illinois as part of his job responsibilities representing Urban Trend at the trade show, the Fiduciary Shield Doctrine did not protect him. As Urban Trend's president, the individual defendant would have gained independent economic benefit from selling Urban Trend's products at the trade show. And as president, the individual defendant had at least some control over whether to sell or promote products in Illinois.
The Court, however, held that personal service upon Urban Trend's president was not sufficient to create jurisdiction over Urban Trend. And tradeshow attendance alone was not sufficient to create specific jurisdiction over Urban Trend. There was no evidence that Urban Trend's tradeshow efforts were particularly focused on Illinois sales, or that Urban Trend completed any sales.
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