Woltmann v. Chicago Gridiron, LLC, No. 11 C 5994, Min. Order. (N.D. Ill. Apr. 11, 2012) (Norgle, J.).

Judge Norgle awarded defendant Chicago Gridiron its costs pursuant to Fed. R. Civ. P. 68 in this copyright case.  Chicago Gridiron had a right to its costs pursuant to Rule 68 because it made plaintiff a

Judge St. Eve granted in part plaintiff/counter-defendant Morningware’s motion to compel the deposition of defendant/counter-plaintiff’s employee that conducted pre-suit, Rule 11 testing in this Lanham Act and patent infringement case involving convection ovens. The Court held that the witness at issue – Kim – was involved in the testing. In fact, Hearthware produced a video showing Kim performing tests. Furthermore, not all of Kim’s actions were privileged. Communications with counsel were privileged, while testing was not. And even as to communications, Morningware was entitled to information regarding the date of the communication, the parties in the communication, their titles and the subject matter of the communications. The Court also granted Morningware its fees related to the motion.

Continue Reading Fees Awarded for Deposition Related to Rule 11 Investigation

Judge Conlon entered an award of plaintiff Lucasfilm’s attorney’s fees and costs in this trademark dispute. The Court previously entered a default judgment and permanent injunction against defendant Skywalker Outdoor. Skywalker objected to Lucasfilm’s 21 hours spent drafting its complaint. The Court, however, held that 21 hours was not unreasonable to fashion a complaint, nor was having three attorneys prepare or revise the complaint unreasonable.

Continue Reading Lucasfilms Strikes Back Getting Attorney’s Fees

OFA Royalties LLC v. Apne, No. 10 C 4237, Slip Op. (N.D. Ill. Jun. 17, 2011) (Dow, J.).
Judge Dow awarded plaintiffs (collectively “Quizno’s”) their attorney’s fees of approximately $28k in this franchise and trademark case involving Quizno’s restaurants. The Court held that the parties’ franchise agreement required that a defaulting party pay the attorney’s fees of the other party. Because Quizno’s won its preliminary injunction motion and later won a final judgment against defendants, the agreement required that defendants pay Quizno’s attorney’s fees. And the Court awarded Quizno’s its full fees request because defendants did not contest Quizno’s motion for fees or its specific fees.

Continue Reading Successful Trademark Plaintiff Awarded its Attorney’s Fees Pursuant to a Franchise Agreement

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Feb. 23, 2011) (Coleman, J.).*
Judge Coleman granted defendant/counter-plaintiff Trading Technologies’ (“TT”) motion for evidentiary sanctions and default judgment. Judge Moran previously dismissed plaintiff/counter-defendant Rosenthal Collins Group’s (“RCG”) motion for summary judgment regarding the alleged prior art Buist trading program for discovery abuse, ordered RCG to produce additional documents and things related to the Buist program, and ordered RCG to pay certain of TT’s attorney’s — click here for the Blog’s post on that decision. Initially, the Court the severity of a default judgment as a sanction, calling it “extreme,” and noted that the Seventh Circuit required a showing of willfulness, bad faith or fault by a preponderance of the evidence in order to justify dismissing a case.
The Court held that the high standard was met in this case, for at least the following reasons:
During his deposition, Buist admitted modifying and overwriting source code in 2006 that he and by extension RCG held out as having been created in 1998 or 1999. And in the face of clear evidence of these facts, RCG continued to deny them, even calling the claims “libelous,” “audacious,” and “Oliver Stone-esque.”
Buist later admitted “wiping” or erasing six of seven zip disks that originally contained the relevant source code and that were later produced by RCG because they allegedly contained the code. The seventh was also wiped, although there was a dispute regarding whether Buist or others had access to it when it was wiped. But the Court held that it was “impossible to believe that it is merely coincidence that the seventh disk happened to be wiped on May 2, 2006, which just happened to be the same day that TT was scheduled to inspect it.”
There was evidence that “virtually every piece of media ordered produced by the Court in May 2007 and July 2008 was wiped, altered, or destroyed after those orders were entered . . . .” (emphasis in original).
Even if RCG and its counsel had no knowledge of the destruction of the evidence, the destruction might have been avoided if RCG had timely complied with the Court’s orders to produce the materials. And regardless, RCG and its counsel should have preserved the evidence by taking custody of it.
Buist was RCG’s agent and, therefore, RCG was bound by Buist’s behavior and actions.
Based upon these determinations, the Court found clear and convincing evidence that “RCG, and its counsel, acted in bad faith and with willful disregard for the rules of discovery and this Court’s orders.” And because a monetary sanction alone was not sufficient, the Court entered a default judgment in favor of TT and dismissed RCG’s complaint and struck its defenses to TT’s counterclaim. The Court also fined RCG $1,000,000 for “egregious conduct before the Court” and ordered RCG’s counsel to pay TT the attorney’s fees and costs related to TT’s motion for default judgment.
* I have a few earlier opinions from the Trading Technologies cases, but this one was significant enough that I moved it up. Click here for more on the case in the Blog’s archives.

Continue Reading Trading Technologies: “Willful and Intentional” Evidence Fabrication Leads to $1M Fine & Default Judgment

Callprod, Inc. v. GN Netcome, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Nov. 1, 2010) (Kendall, J.).
Judge Kendall granted in part plaintiff Callprod’s motion to stay determination regarding attorney’s fees pending appeal of the underlying patent issues and the Court’s determination as to whether the case was exceptional. The Court held that the Court’s and the parties’ resources were best preserved if all proceedings regarding attorney’s fees were stayed until the Federal Circuit ruled on Callprod’s appeal of the Court’s grant of summary judgment of noninfringement. The Court, however, ordered Callprod to respond to defendants’ bill of costs.

Continue Reading Court Stays Attorney’s Fees Determination Pending Appeal

Trading Techs. Int’l, Inc. v. Speed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Sep. 8, 2010) (Schenkier, Mag. J.).
Judge Schenkier recommended denying plaintiff Trading Technologies’ (“TT”) motion to enforce the final judgment and for sanctions. The Court also recommended correcting the final judgment to reflect the jury verdict and the remitted damages award. A jury previously awarded TT $3.5M in damages and found defendant’s infringement willful. The Court later overturned the willfulness finding and ordered a remittitur of damages to $2.5M, which TT accepted. The Court then granted a permanent injunction and entered a final judgment, but that judgment did not reflect the damages award.
Defendant argued that, despite the jury award and remittitur, there was no damages award because it was not reflected in the final judgment and after the Federal Circuit had decided to appeal it was too late to revise the final judgment.
The Court agreed that the first judgment should have included the award, but not that it was too late to fix it. The Court noted that the most likely explanation for the omission was “the fallibility of human beings (judges included).” The Court also noted that TT should have sought to correct the final judgment immediately. But despite the imprecise judgment, the Federal Circuit ruled upon several issues related to the jury verdict, although not the award itself. And neither TT nor defendants disputed the fact or the amount of the damages award. Based upon those facts, the Court recommended that revising the final judgment to reflect the award would merely “correct a clerical mistake or a mistake arising from oversight or omission” pursuant to Fed. R. Civ. P. 60(a). Finally, the Court recognized TT’s frustration over not having received payment 34 months after the jury verdict and 6 months after the Federal Circuit’s decision. But the Court recommended not awarding TT its fees because TT’s failure to promptly get the judgment corrected was the only reason there was a delay in paying the judgment.

Continue Reading Trading Technologies: Court Reconnect Altering Judgment to Reflect Jury Award

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 95 C 4088, Slip Op. (N.D. Ill. Jun. 29, 2010) (Kim, Mag. J.).
Judge Kim granted declaratory judgment defendant Trading Technologies (“TT”) approximately $290,000 of $375,000 requested in fees and costs pursuant to Fed. R. Civ. P. 37(b)(2) in this patent case.* On March 14, 2007, the Court held that declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) summary judgment motion was “misleading,” “disingenuous” and “prematurely filed” – click here to read more about the opinion in the Blog’s archives. The Court, therefore, found RCG’s conduct sanctionable, struck the motion without prejudice, struck the supporting Buist declaration, and ordered RCG to pay costs for TT’s software consultants, and attorney’s fees and costs related to the sanction motion.
On July 17, 2008, the Court denied RCG’s motion to vacate the sanction order and again ordered RCG to pay: 1) TT’s consultant; 2) TT’s deposition of the Buists; and 3) TT’s prosecution of the sanctions motions. The Court also ordered the parties to comply with Local Rule 54.3 by trying to come to agreement on the issues.
Initially, the Court observed that “contentiousness and obvious material distrust” demonstrated by both sides had “leached” into the parties briefing. The Court awarded TT the full amount of its expert fees and costs because those fees and costs were specifically awarded by Judge Moran and because TT showed that all of the expert’s work was impacted by or resulted from the misconduct. Those fees were approximately $52,000.
The Court also awarded TT’s attorney’s fees and costs of approximately $157,000 related to the depositions of the experts at issue. The only reduction was for a series of identical, cryptic time entries for “preparation of Buist witness kit”. The court could not determine whether the fees were justified. The Court awarded TT its actual costs, instead of limiting the costs to the Fed. R. Civ. P. 54(d) limits because this sanction award was pursuant to Fed. R. Civ. P. 37 and, therefore, was not limited by Rule 54(d). The Court finally awarded $86,000 in fees and costs related to TT’s sanctions motion. The Court generally found TT’s fees and expenses reasonable, with limited exceptions. The Court limited fees for writing a “simple” two-page motion to two hours. The Court also deleted approximately $11,000 in apparently duplicative time entries.

Continue Reading Trading Technologies: Court Awards Rule 37 Discovery Sanctions