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

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Mar. 18, 2013) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s copyright infringement counterclaims.  The fact that defendant did not plead the dates of the alleged copyright infringement was not fatal

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

Radiation Stabilization Sol’ns LLC v. Accuray Inc., No. 11 C 7700, Slip Op. (N.D. Ill. Aug. 21, 2012) (Coleman, J.).

Judge Coleman granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Radiation Stabilization Solutions’ (“RSS”) claims in this patent infringement suit regarding technology for stabilizing irradiated targets.  While defendant Cancer

Judge Darrah denied plaintiff’s application to proceed in forma pauperis and dismissed plaintiff’s complaint for failure to state a claim. Courts are required to dismiss a complaint when plaintiff seeks in forma pauperis status along with a complaint that fails to state a claim. Plaintiff’s complaint appears to sound in patent, trademarks and copyright. But it was “devoid of any substantive allegations” and, therefore, had to be dismissed.

Continue Reading Lack of Substantive Allegations Requires Dismissal

Porritt v. MacLean Power Sys., LP, No. 10 C 6128 Slip. Op. (N.D. Ill. Sep. 6, 2011) (Lefkow, J.).
Judge Lefkow granted defendants’ (collectively “MacLean”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s false patent marking case involving allegedly expired patents marked upon MacLean’s Square Shank Barbed Staples. Plaintiff’s intent allegations were “nearly identical” to those held inadequate in BP Lubricants. The Court, therefore, dismissed plaintiff’s claim.
The decision was issued about one week before the America Inventory Act was signed into law. But, McLean could not have challenged plaintiff’s claim because they were based upon expired patents. The Court refused to consider MacLean’s constitutional challenge to the False Marking Act.

Continue Reading Intent Allegations “Nearly Identical” to BP Lubricants Dismissed

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.

Continue Reading Determining Senior User is Not an Issue for Motion to Dismiss

SCI Ill. Servs., Inc. v. Mitzvah Memorial Funerals, Inc., No. 10 C 6111, Slip Op. (N.D. Ill. Apr. 27, 2011) (Holderman, C.J.).
Judge Holderman denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act false designation of original claim in this trademark dispute involving funeral home trademarks – Lloyd Mandel Levayah Funerals (plaintiff) and Lloyd Mandel Mitzvah Memorial Funerals (defendant). Plaintiff properly pled that it had a protectable mark and that there was a likelihood of confusion as to defendants’ funeral services. The Court could not find the marks so dissimilar that plaintiff could not demonstrate a likelihood of confusion between the marks as a matter of law. The Court refused to consider defendants’ motion as to other claims because defendant did not argue or support its motion as to the other claims in its briefing.

Continue Reading Funeral Home False Designation of Origin Case Survives

Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).
Newt alleged that defendant Graphic Packaging (“GPI”) falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.
Further, all defendants were dismissed because Newt only made generalized intent allegations — e.g., that defendants were “sophisticated companies.”
Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.

Continue Reading False Patent Marking Requires Particular Allegations That Each Defendant Marked